Cambridge University Press, et al v. J.L. Albert, et al

Filing 114

Reply Brief filed by Appellants Cambridge University Press, Oxford University Press, Inc. and Sage Publications, Inc.. Service date: 05/20/2013 email - Attorney for Amicus Curium: Ablin, Aistars, Chapman, Dove, Joseph, Lerner, Meloy, Pequignot, Rasenberger, Schultz, Steinman, Stoltz, Tonsager, Wasoff; Attorney for Appellees: Askew, Bates, Gentry, Harbin, Levie, Miller, Moffitt, Quicker, Schaetzel, Volkert, Whiting-Pack. (ECF: John Rains)

Nos. 12-14676-FF & 12-15147-FF
(Consolidated Appeals)
_____________________________________
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
_____________________________________
Cambridge University Press,
Oxford University Press, Inc.,
and Sage Publications, Inc.,
Plaintiffs-Appellants,
v.
Mark P. Becker, in his official capacity as
Georgia State University President, et al.,
Defendants-Appellees.
_____________________________________
On Appeal from the United States District Court
for the Northern District of Georgia
D.C. No. 1:08-cv-1425 (Evans, J.)
_____________________________________
REPLY BRIEF OF APPELLANTS
CAMBRIDGE UNIVERSITY PRESS, OXFORD UNIVERSITY
PRESS, INC., AND SAGE PUBLICATIONS, INC.
_____________________________________
Edward B. Krugman
John H. Rains IV
BONDURANT, MIXSON &
ELMORE, LLP
1201 West Peachtree Street NW
Suite 3900
Atlanta, Georgia 30309
Telephone: [phone]
Facsimile: [phone]

R. Bruce Rich (pro hac vice)
Randi W. Singer
Jonathan Bloom
Todd D. Larson
WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
New York, New York 10153
Telephone: [phone]
Facsimile: [phone]
Attorneys for Appellants

TABLE OF CONTENTS
Page
TABLE OF CONTENTS............................................................................................ i
TABLE OF AUTHORITIES .................................................................................... iii
TABLE OF RECORD REFERENCES IN THE BRIEF ........................................ vii
PRELIMINARY STATEMENT .............................................................................. 1
ARGUMENT ............................................................................................................ 6
I.

THE COURSEPACK PRECEDENTS ARE DISPOSITIVE
AND NOT DISTINGUISHABLE ................................................................ 6

II.

APPELLEES’ DEFENSE OF THE DISTRICT COURT’S
FAIR-USE ANALYSIS HAS NO MERIT ................................................ 11
A. Factor One: Appellees’ Reliance on GSU’s Nonprofit
Educational Status Is Wrong as a Matter of Law ............................... 11
B.

Factor Two: Appellees Misstate the Law and the
Facts in Seeking To Render the “Informational”
Nature of the Works Legally Dispositive .......................................... 17

C.

Factor Three: Appellees Fail to Justify Wide
Latitude for Nontransformative Educational Copying ...................... 21

D. Factor Four: Appellees Cannot Negate the Undisputed
Market Harm Caused by the Nontransformative Copying ................. 26
III. THE INJUNCTION SOUGHT BY THE PUBLISHERS IS
NOT BARRED BY THE ELEVENTH AMENDMENT........................... 30
A. Appellees Failed To Preserve Their
Eleventh Amendment Argument ....................................................... 30

1093817.1

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Page

B.

The District Court Correctly Rejected
Appellees’ Eleventh Amendment Argument ..................................... 31

C.

Appellants’ Proposed Injunction is Necessary and Reasonable ........ 34

IV. APPELLEES’ DEFENSE OF THE DISTRICT COURT’S
ATTORNEYS’ FEE RULING HAS NO MERIT ...................................... 36
CONCLUSION ........................................................................................................ 40
CERTIFICATE OF COMPLIANCE....................................................................... 42
CERTIFICATE OF SERVICE ................................................................................ 43

1093817.1

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TABLE OF AUTHORITIES
CASES

PAGE(S)

A&M Records, Inc. v. Napster. Inc.,
239 F.3d 1004 (9th Cir. 2001) ..................................................................... 9
Am. Geophysical Union v. Texaco Inc.,
60 F.3d 913 (2d Cir. 1994) ............................................................ 28, 29, 38
Artisan Contractors Ass’n of Am., Inc. v. Frontier Ins. Co.,
275 F.3d 1038 (11th Cir. 2001) ................................................................. 39
Basic Books, Inc. v. Kinko’s Graphics Corp.,
758 F. Supp. 1522 (S.D.N.Y. 1991) ................................................ 2, 36, 38
BellSouth Adver. & Publ’g Corp. v. Donnelly Info. Publ’g, Inc.,
719 F. Supp. 1551 (S.D. Fla. 1988),
aff’d, 933 F.2d 952 (11th Cir. 1991) .......................................................... 24
Cable News Network v. Video Monitoring Servs. of Am.,
959 F.2d 188 (11th Cir. 1992) ................................................................... 38
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) ............................................................................ passim
Campbell v. Wainwright,
726 F.2d 702 (11th Cir. 1984) ................................................................... 31
Cariou v. Prince,
__F.3d __, 2013 WL 1760521 (2d Cir. Apr. 25, 2013) ............................. 12
City of Mesquite v. Aladdin’s Castle, Inc.,
455 U.S. 283 (1983) ............................................................................. 34, 35
Data Gen. Corp. v. Grumman Sys. Support Corp.,
825 F. Supp. 361 (D. Mass. 1993) ............................................................. 40
1093817.1

iii

CASES

PAGE(S)

Eldred v. Ashcroft,
537 U.S. 186 (2003) ..................................................................................... 4
Ex parte Young,
209 U.S. 123 (1908) ............................................................................. 31, 32
Grizzle v. Kemp,
634 F.3d 1314 (11th Cir. 2011) ................................................................. 33
Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539 (1985) ............................................................................ passim
Lawhorn v. Allen,
519 F.3d 1272 (11th Cir. 2008) ........................................................... 30, 31
Lil’ Joe Wein Music, Inc. v. Jackson,
No. 06-20079-CIV, 2008 U.S. Dist. LEXIS
112730 (S.D. Fla. June 6, 2008) .......................................................... 39, 40
Luckey v. Harris,
860 F.2d 1012 (11th Cir. 1988) ..................................................... 31, 32, 33
Majette v. O’Connor,
811 F.2d 1416 (11th Cir. 1987) ................................................................. 31
Marcus v. Rowley,
695 F.2d 1171 (9th Cir. 1983) ................................................................... 20
Maxtone-Graham v. Burtchaell,
631 F. Supp. 1432 (S.D.N.Y. 1986),
aff’d, 803 F.2d 1253 (2d Cir. 1986) ..................................................... 24, 25
Pac. & S. Co. v. Duncan,
744 F.2d 1490 (11th Cir. 1984) ..................................................... 15, 19, 38
Pennington Seed, Inc. v. Produce Exchange No. 299, L.L.C.,
457 F.3d 1334 (Fed. Cir. 2006) ................................................................. 33
1093817.1

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CASES

PAGE(S)

Peter Letterese & Assocs. v. World Inst. of Scientology Enters.,
533 F.3d 1287 (11th Cir. 2008) ........................................................... 19, 20
Pinkham v. Camex, Inc.,
84 F.3d 292 (8th Cir. 1996) ....................................................................... 40
Princeton Univ. Press v. Mich. Document Servs., Inc.,
99 F.3d 1381 (6th Cir. 1996) ....................................................... 2, 9, 15, 38
Richardson v. Ala. State Bd. of Educ.,
935 F.2d 1240 (11th Cir. 1991) ................................................................. 11
Rogers v. Koons,
960 F.2d 301 (2d Cir. 1992) ................................................................ 18, 21
Salerno v. City Univ. of N.Y.,
191 F. Supp. 2d 352 (S.D.N.Y. 2001) ....................................................... 33
SCQuARE Int’l, Ltd. v. BBDO Atlanta, Inc.,
455 F. Supp. 2d 1347 (N.D. Ga. 2006) ...................................................... 20
Sikes v. Teleline, Inc.,
281 F.3d 1350 (11th Cir. 2002) ................................................................. 31
Soc’y of the Holy Transfiguration Monastery, Inc. v. Gregory,
689 F.3d 29 (1st Cir. 2012) .......................................................................... 9
Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984) ............................................................................. 14, 27
Summit Medical Associates, P.C. v. Pryor,
180 F.3d 1326 (11th Cir. 1999) ................................................................. 33
SunTrust Bank v. Houghton Mifflin Co.,
268 F.3d 1257 (11th Cir. 2001) ................................................................. 12

1093817.1

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CASES

PAGE(S)

United States v. American Ry. Express Co.,
265 U.S. 425 (1924) ................................................................................... 31
United States v. Concentrated Phosphate Export Ass’n.,
393 U.S. 199 (1968) ................................................................................... 35
Wall Data, Inc. v. L.A. Cty. Sheriff’s Dep’t.,
447 F.3d 769 (9th Cir. 2006) ....................................................................... 8

STATUTES AND LEGISLATIVE MATERIAL
17 U.S.C. § 505 .................................................................................... 36, 39
17 U.S.C. § 107 ................................................................................... passim
28 U.S.C. § 1821 .................................................................................. 39, 40
28 U.S.C. § 1920 .................................................................................. 39, 40
H.R. Rep. No. 94-1733, 94th Cong., 2d Sess. (1976) ............................... 23
H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. (1976) ............................... 23

OTHER
4 Patry, William F., PATRY ON COPYRIGHT § 10.13 (2013) .................. 8, 15

1093817.1

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TABLE OF RECORD REFERENCES

DOCKET/
TAB #
167

DESCRIPTION

BRIEF PAGE #

Deposition of James Daniel Palmour taken on April 23,
2009 (excerpts)

8

261

Transcript of Proceedings

37

276

Attachment E to Pretrial Order – Stipulated Facts
Filed Under Seal

7, 32

300-1

Proposed Injunctive Relief

35

300-3

Attachment 3 to Proposed Injunctive Relief –
Amended Judgment and Permanent Injunction
Princeton University Press, et al. v. Michigan Document
Services, et al. Case No. 92-CV-60464-AA (BKH)

36

316

Deposition of Mark P. Becker, Ph.D taken August 22,
2011 (excerpts)

32

349

Notice of Introducing Deposition Testimony of James D.
Palmour

8

358

Notice of Introducing Deposition Testimony of Mark P.
Becker

32

393

Transcript of Proceedings held on May 31, 2011
Volume 10

8, 19

394

Transcript of Proceedings held on June 1, 2011
Volume 11

8, 19

395

Transcript of Proceedings held on June 2, 2011
Volume 12

10

1093817.1

vii

DOCKET/
TAB #
396

DESCRIPTION

BRIEF PAGE #

Transcript of Proceedings held on June 3, 2011
Volume 13

35

399

Transcript of Proceedings held on May 17, 2011
Volume 1

20

400

Transcript of Proceedings held on May 18, 2011
Volume 2

20

401

Transcript of Proceedings held on May 19, 2011
Volume 3

20, 27

404

Transcript of Proceedings held on May 24, 2011
Volume 6

19-21

405

Transcript of Proceedings held on May 25, 2011
Volume 7

19

406

Transcript of Proceedings held on May 26, 2011
Volume 8

33

407

Transcript of Proceedings held on May 27, 2011
Volume 9

8

423

Order with the Court’s Findings of Fact and Conclusions
of Law following non-jury trial

432

Defendants’ Opposition to Plaintiffs’ Request for
Injunctive Relief

34

436

Plaintiffs’ Reply to Defendants’ Opposition to Plaintiffs’
Request for Injunctive Relief

35

462

Order

34

PX 975

32

1093817.1

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7, 11, 18, 21-22,
27-28, 31, 37

DOCKET/
TAB #

DESCRIPTION
DX 906

BRIEF PAGE #
25

1093817.1

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PRELIMINARY STATEMENT
Although Appellees’ briefing seeks to avoid it, the issue presented in
this appeal is whether a nonprofit educational institution enjoys a safe harbor
from copyright infringement liability under the doctrine of fair use where its
faculty systematically compile unlicensed digital coursepacks containing
complete chapters of copyrighted scholarly books. As a matter of law, the
answer is “no.” The wholesale, indisputably nontransformative copying
engaged in by Georgia State University (GSU) is but a technological variant
of a practice that has long been condemned by the courts in connection with
paper coursepacks and that has the identical effect of depriving academic
publishers of license fees and other revenue necessary to their commercial
viability. To sanction GSU’s practices under the rubric of fair use on the
grounds urged by Appellees – GSU’s nonprofit status and the importance of
Appellants’ works as teaching tools – would undermine fundamental tenets
of copyright law by effectively dedicating the works of scholarly publishers
to the public domain.
The unquestionable importance of higher education does not justify
GSU’s exploitation of digital technology at the expense of the publishers and
authors of scholarly books. Appellants (the “Publishers”) serve the needs of
higher education by producing and disseminating important works of

1093817.1

1

scholarship that fuel the learning process, including by offering content
through new digital media in response to evolving market demand. Having
“risked their capital to achieve dissemination,” Princeton Univ. Press v.
Mich. Document Servs., Inc., 99 F.3d 1381, 1391 (6th Cir. 1996) (en banc)
(citation omitted), the Publishers and their authors are entitled to protection
from unlicensed takings of their works that so plainly exceed the bounds of
fair use.
Fair use does not permit systematic, nontransformative takings of
academic works simply because the works serve an educational purpose.
Rather, it imposes on the proponent of fair use the burden of demonstrating
the limited nature of the unauthorized use and that it does not simply
supersede the originals but instead “adds something new, with a further
purpose or different character . . . .” Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569, 579 (1994). GSU’s widespread digital copying of Appellants’
works in connection with ERes and uLearn clearly fails this test.
The coursepack cases – Princeton University Press, 99 F.3d 1381, and
Basic Books, Inc. v. Kinko’s Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y.
1991) – firmly establish that the copying in which GSU has engaged
requires consent of the book publishers whose works are used. That GSU is
a nonprofit educational entity and now undertakes this copying in electronic
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rather than paper form makes no difference as a matter of law. The
reasoning of the prior coursepack cases, grounded in established principles
of copyright law, together with the doctrine of media neutrality dictate the
same outcome here.
Appellees’ fair-use defense cannot survive the concession by GSU
administrators and faculty that ERes readings substitute directly for
coursepacks. In compliance with the coursepack cases, GSU pays
permissions fees when the campus bookstore assembles excerpts from
copyrighted books into paper coursepacks. Now, however, to avoid these
fees, GSU urges faculty to place course readings on ERes or uLearn, for
which GSU pays no permission fees to book publishers, on the fallacious
premise that the same copying, now in electronic form, is fair use. This
blatant end-run of copyright law not only threatens to undermine the
established legal norms that have long governed coursepack copying, but it
comes at a time when Appellants and other academic publishers are
investing heavily in publishing and delivering content in digital form. These
publishers cannot hope to recoup their investments if institutions like GSU
are permitted to make exact digital copies of their works, semester after
semester, for entire classes of students across the university, without
compensation to the works’ authors and publishers.
1093817.1

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Appellees are not entitled to the unprecedented fair-use latitude they
seek on the ground that GSU is engaged in “disseminating knowledge.”
Copyright law does not encourage the dissemination of knowledge by any
means; it aims to do so through the creation and dissemination of new works
of authorship. See Eldred v. Ashcroft, 537 U.S. 186, 219 (2003) (copyright
“spur[s] the creation and publication of new expression”). Consistent with
this policy, the Supreme Court has placed transformative value at the heart
of fair use and rejected the proposition that the alleged social or cultural
benefits of disseminating knowledge suffice to make a nontransformative
use “fair.” See Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S.
539, 569 (1985) (“[a]ny copyright infringer may claim to benefit the public
by increasing public access to the copyrighted work”). GSU has implicitly
conceded the error in its position by paying the requisite permission fees for
paper coursepacks, which serve the same educational purpose for the same
nonprofit educational user as the digital coursepacks for which Appellees
claim sweeping fair-use protection.
Also baseless is Appellees’ suggestion that being required to pay
reasonable and customary compensation to publishers in connection with
digital course readings will bring higher education to its knees. GSU’s
experience with paying permissions fees for paper coursepacks without any
1093817.1

4

disruption to its educational mission belies this claim. What is more, the
estimated levels of license fees that would afford GSU, its faculty, and
students widespread access to well over a million copyrighted works
(including on ERes and uLearn) – some $3.75 per student per year – pales in
comparison to the more than $800 per semester GSU students already pay to
cover, among other items, library, technology, and football program support
fees.
The Court should not be distracted from the legal principles and
undisputed facts that properly control this case by Appellees’ unduly narrow
focus on the fair-use status of specific acts of copying in connection with
unlicensed digital coursepack creation at GSU. In any event, as addressed in
Appellants’ opening brief and further in Point II below, the district court’s
work-by-work fair use determinations are marred by numerous reversible
errors.
For these reasons, explained further below as well as in Appellants’
opening brief, the district court’s ruling should be reversed and judgment
entered in Appellants’ favor.

1093817.1

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ARGUMENT
I.

THE COURSEPACK PRECEDENTS ARE DISPOSITIVE AND
NOT DISTINGUISHABLE
Appellees pay scant attention to the pattern and practice of copying

that gave rise to this litigation, focusing instead on the asserted fair use of
each work in suit viewed in isolation. Consistent with this blindered
approach, they devote only passing attention to the coursepack cases, which
should control the outcome of this case. These cases addressed the
unauthorized creation of hardbound university coursepacks, and both cases
held that such copying is not fair use. Neither the district court nor
Appellees contend these cases were wrongly decided, nor were they: the
courts applied well-established fair use principles to conclude that
mechanical, nontransformative copying for university coursepacks is not fair
use, especially where there is an existing permissions market for such
copying.
This case, involving nearly identical material facts, should be resolved
identically. As in those cases, there is no dispute that GSU’s digital copying
of the original works is nontransformative, see Appellees’ Br. 35, 37; that
ERes and uLearn are used by faculty to create digital compilations of
excerpts from copyrighted books and other works, typically a chapter or
more in length, see Appellants’ Br. 15-18, 23-26; that these anthologies are
1093817.1

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distributed to entire classes of students, see id.; that no permissions fees are
paid, see id. 18-19; that the academic market is the core market for the sale
and licensing of Appellants’ works, see id. 28-30, 78-79; Dkt#276 SF12;
that GSU’s unlicensed copying substitutes for licensed uses and thereby
threatens what is for Appellants a “significant revenue stream,” Dkt#276
SF15; and that there exist multiple convenient license options for GSU’s use
of Appellants’ works, see Appellants’ Br. 29-35, Dkt#423 at 74-75.
Appellees, in line with the district court, cite two immaterial factual
distinctions in purporting to distinguish the coursepack cases: (i) that GSU is
a nonprofit entity, not a commercial copyshop, and (ii) that GSU’s copying
is digital. Appellants have explained why neither distinction has any bearing
on the fair-use analysis, see Appellants’ Br. 44-46, 67, and reprise that
discussion only briefly here.
Concerning the first asserted distinction, it is stipulated that when
GSU produces paper coursepacks, it pays permissions fees for copyrighted
content. Dkt#276 SF52. Outside this case, therefore, GSU has recognized
that its nonprofit status does not immunize it from the coursepack
precedents. That recognition is consistent with the case law, which
establishes that the fair-use inquiry turns on the nature of the use, not on the
commercial or nonprofit identity of the copier. See Campbell, 510 U.S. at
1093817.1

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584-85; Appellants’ Br. 51-54; 4 William F. Patry, PATRY ON COPYRIGHT §
10.13 (2013) (noting that transformative-use inquiry “focuses on the use, not
the user”). Moreover, the commercial/nonprofit distinction is not as literal
as Appellees suggest; the relevant inquiry is not whether the defendant
charges for the copies but whether it benefits by failing to pay for the use.
See Appellants’ Br. 56 n.14. GSU plainly so benefits.
James Palmour, who was responsible for clearing permissions for
coursepacks at GSU, testified that GSU students are its “customers,”
Dkt#349 (introducing Dkt#167 at 144-145), and both Mr. Palmour and
several GSU professors testified that a major impetus to provide course
readings online was the desire to cut costs and to spare students the expense
of paying for course readings. See id. at 144:13-24.1 Unauthorized copying
to “save the expense of purchasing authorized copies,” Wall Data, Inc. v.
L.A. Cnty. Sheriff’s Dep’t., 447 F.3d 769, 779 (9th Cir. 2006), even by a
1

See, e.g., Dkt#393, Tr. 10/75:5-11 (Professor Kruger: “I try to make [the]
graduate experience as comfortable and doable for them as possible. . . .”);
Dkt#407, Tr. 9/166:16-19 (Professor Moloney testifying that she tries to
“find ways for [the students] . . . to get what they need without paying any
extra money that they don’t have to”); Dkt#394, Tr. 11/107:20-23 (Professor
Duffield testifying he stopped using coursepacks because he was
“concerned” that as a result of the cost students “might have been deterred
from purchasing coursepacks and as a result not doing readings”); Dkt#407,
Tr. 9/22:21-23:5 (Professor Gabler-Hover testifying that providing assigned
readings to students in a coursepack “would have been prohibitively
expensive” for the students).
1093817.1

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nonprofit or government entity, is no less a commercial use for purposes of
fair-use analysis than were the activities of the copyshops in the coursepack
cases. See A&M Records, Inc. v. Napster. Inc., 239 F.3d 1004, 1015 (9th
Cir. 2001) (“repeated and exploitative copying of copyrighted works, even if
the copies are not offered for sale, may constitute a commercial use”); see
also Soc’y of the Holy Transfiguration Monastery, Inc. v. Gregory, 689 F.3d
29, 61 (1st Cir. 2012) (holding that first factor weighed against fair use
where Archbishop “profited” from posting near-verbatim copies of religious
texts on his website “by being able to provide, free of cost, the core text of
the Works to members of the Orthodox faith”).
Even if GSU’s use were deemed noncommercial, that label should
have no bearing on the outcome of this case, as it does not change the
nontransformative, market-usurping nature of the copying. The Sixth
Circuit’s observation that “[i]f copyshops across the nation were to start
doing what the defendants have been doing here, [the publishers’
permissions] revenue stream would shrivel and the potential value of the
copyrighted works of scholarship published by the plaintiffs would be
diminished accordingly,” Princeton Univ. Press, 99 F.3d at 1387, applies
with at least equal force to GSU’s copying, whether or not it is technically
deemed “commercial.” See also id. at 1386 (noting that even if the
1093817.1

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copyshop’s actions were considered noncommercial, the publishers had
established a diminution in the potential market value of their works).
As for the second asserted distinction – digital versus paper –
Appellants have explained that there is no legally material difference
between digital and paper course-reading compilations. See Appellants’ Br.
55-56. Appellee Seamans, GSU’s head librarian who sat on the committee
that promulgated GSU’s 2009 copyright policy, conceded that it is
“immaterial what form those coursepacks might take paper versus electronic
in terms of permission requirements.” Dkt#395, Tr. 12/109.
Indeed, numerous GSU witnesses testified that GSU professors are
providing students with free electronic course reading materials that are
functionally identical to –and substitutes for – paper coursepacks.
Appellants’ Br. 17-18. The facts that the electronic readings are not spiral
bound and that students themselves print them out rather than having the
copies made by the university bookstore have no legal significance. If
anything, the distribution of high-quality, readily replicated digital copies
magnifies the deleterious impact of the systematic unlicensed copying on
Appellants and other similarly situated publishers.

1093817.1

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In short, the coursepack precedents, applied to undisputed material
facts, dictate a holding that Appellees’ copying practices are not fair use. 2
II.

APPELLEES’ DEFENSE OF THE DISTRICT COURT’S FAIRUSE ANALYSIS HAS NO MERIT
A.

Factor One: Appellees’ Reliance on GSU’s Nonprofit
Educational Status Is Wrong as a Matter of Law

With respect to the purpose and character of the use, the district court
found, and Appellees concede, that GSU’s copying is not transformative.
See Appellees’ Br. 35, 37; Dkt#423 at 55, 65. 3 This alone should be
virtually dispositive of the fair-use inquiry. Appellees’ effort to minimize
the significance of transformativeness by ascribing decisive weight to the
“teaching” and “nonprofit educational” purpose of the copying is contrary to
law.
The Supreme Court has repeatedly made clear in addressing fair use
that the purpose of copyright law is advanced primarily by new works – in
particular by transformative new works – not by the dissemination of

2

Appellees’ analogy to the library reserve desk, see Appellees’ Br. 8, is
inapt: GSU professors are providing permanent copies of multiple readings
simultaneously to every member of the class, not single copies available
only temporarily to one student at a time.

3

In addition to having no merit, the assertion by several of Appellees’ amici
that electronic course reserves can be transformative has not been raised by
Appellees on appeal and thus is not property considered. See Richardson v.
Ala. State Bd. of Educ., 935 F.2d 1240, 1247 (11th Cir. 1991).
1093817.1

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existing works for their intended purpose. As the Court has explained, a
“central purpose” of the fair-use inquiry is an evaluation of “whether the
new work merely ‘supersede[s] the objects’ of the original creation . . . or
instead adds something new, with a further purpose or different character,
altering the first with new expression, meaning, or message.” Campbell, 510
U.S. at 579 (emphasis added); see also Cariou v. Prince, __F.3d __, 2013
WL 1760521, at *5 (2d Cir. Apr. 25, 2013) (“to qualify as a fair use, a new
work generally must alter the original with ‘new expression, meaning, or
message”) (quoting Campbell, 510 U.S. at 579)). The use is inherently
unfair where, as here, it consists of nontransformative copying that “merely
supplants or supersedes another [and] is likely to cause a substantially
adverse impact on the potential market of the original.” SunTrust Bank v.
Houghton Mifflin Co., 268 F.3d 1257, 1274 n.28 (11th Cir. 2001) (citation
omitted).
These principles compel the conclusion that although supplying
students with free digital copies of book excerpts may disseminate
knowledge, it does not advance the purpose of copyright law (and thus is not
fair use) because it is not transformative. Although the Supreme Court in
Harper & Row acknowledged that copyright “is intended to increase and not
to impede the harvest of knowledge,” see Appellees’ Br. 29 (quoting Harper
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& Row, 471 U.S. at 545), the Court held that the court of appeals, in
erroneously finding fair use, had failed to give sufficient deference to “the
scheme established by the Copyright Act for fostering the original works
that provide the seed and substance of this harvest.” 471 U.S. at 545-46
(emphasis added). The district court made the same basic error here.
Appellees, citing Campbell, suggest that emphasizing
transformativeness (and the market harm arising from nontransformative
use) amounts to an impermissible “presumption[]” that conflicts with the
court’s obligation to consider and weigh all four statutory factors. See
Appellees’ Br. 30-33. This misstates Campbell: the Court rejected a
presumption that the commercial nature of a transformative use tips either
the first or fourth factors against fair use. See 510 U.S. at 584, 591. The
Court did not identify ascribing significant weight to transformative value or
to market harm as a “presumption” or otherwise indicate that recognizing
their importance is inconsistent with proper consideration of the statutory
factors.
Appellees also point to the dictum in Campbell that
transformativeness is “not absolutely necessary for a finding of fair use,”
510 U.S. at 579 (quoted in Appellees’ Br. 37). But that dictum does not help
Appellees here, where there is a pattern of wholesale nontransformative use
1093817.1

13

designed to avoid paying permission fees. In Sony Corp. of America v.
Universal City Studios, Inc., 464 U.S. 417 (1984) – the only example
Appellees cite – the Supreme Court found fair use despite a lack of
transformative value because the copying involved private taping of free
broadcast television programs which the viewer “had been invited to witness
in [their] entirety free of charge.” Id. at 449. By simply “time-shifting”
consumption of such programs, no discernible harm was caused to the
copyright owners. This case, by contrast, involves making multiple copies
available to a multitude of students who do not already possess lawful
copies. Such copying directly replaces copies for which payment is
customarily required.
Appellees’ statutory argument also fails. Neither the preamble of
section 107, which identifies “teaching” as the sort of activity that may be
fair use, nor the language in section 107(1) directed to whether the use is “of
a commercial nature or is for nonprofit educational purposes,” justifies the
district court’s conclusion that factor one “strongly” favors GSU. See
Appellants’ Br. 51-54.
First, the illustrative fair uses set forth in section 107 are not, as
Appellees claim, “at the forefront of the fair use analysis,” “pre-eminent,”
“at the heart of the right of fair use,” or a “favored purpose under the
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14

statute.” See Appellees’ Br. 34, 36. As Campbell explained, the illustrative
fair uses provide “only general guidance about the sorts of copying that
courts and Congress most commonly had found to be fair uses.” 510 U.S. at
577-78 (emphasis added); see also Harper & Row, 471 U.S. at 561 (the
illustrative examples “give some idea of the sort of activities the courts
might regard as fair use under the circumstances”) (emphasis added); Pac.
& S. Co. v. Duncan, 744 F.2d 1490, 1495 (11th Cir. 1984) (“[t]he preamble
merely illustrates the sorts of uses likely to qualify as fair uses” should an
analysis of all four factors warrant that result). They do not provide per se
or even presumptive protection for entire categories of uses. See Princeton
Univ. Press, 99 F.3d at 1385 (“This language does not provide blanket
immunity for ‘multiple copies for classroom use.’”). 4
Instead, the statute requires “case-by-case analysis” of the four
statutory factors. Harper & Row, 471 U.S. at 561. Specifically, section 107
4

As two former U.S. Registers of Copyright and a former General Counsel
of the U.S. Copyright Office explain in their amicus brief, Congress devoted
particular attention to the issue of photocopying for classroom use and
determined that exempting from copyright control reproductions of
copyrighted works for educational and scholarly purposes in section 107 was
“not justified.” See Brief of Marybeth Peters, Ralph Oman and Jon
Baumgarten (“Registers Brief”) 6-9 (quoting H.R. Rep. No. 94-1476, 94th
Cong., 2d Sess. 66-67 (1976)). Congress “rejected requests that nonprofit
uses be presumptively fair or otherwise more favorably treated.” 4 William
F. Patry, PATRY ON FAIR USE § 10:18 (2013) (quoted in Registers Brief 7)
(emphasis added).
1093817.1

15

provides that the illustrative uses must be shown to be “fair uses,” a
determination that “shall” include an analysis of the four statutory factors.
See 17 U.S.C. § 107. This point was driven home in Harper & Row, where
the Court rejected the analogous argument that a news reporting purpose –
another illustrative fair use – justified finding unauthorized copying from
President Ford’s memoir to be fair use based on “the substantial public
import of the subject matter.” 471 U.S. at 556. The Supreme Court held
that “[i]t is fundamentally at odds with the scheme of copyright” to “accord
lesser rights in those works that are of greatest importance to the public.” Id.
at 559.
By the same logic, neither the importance of the Publishers’ works for
teaching, nor the “loss of convenience and access for students” that
Appellees claim would result from requiring permissions payments,
Appellees’ Br. 42, warrants the infringement of the Publishers’ copyright
rights. To the contrary, the importance of these works for teaching – their
intended purpose – militates strongly against the district court’s expansive
conception of fair use. The scope of copyright protection is defined
primarily by the need to preserve the incentives of the copyright owner, not
by the convenience of the secondary user or the social value of the
secondary use. See Harper & Row, 471 U.S. at 558 (“it should not be
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16

forgotten that the Framers intended copyright itself to be the engine of free
expression” by “suppl[ying] the economic incentive to create and
disseminate ideas”). The decisions the Publishers have cited involving
nonprofit educational and/or religious uses demonstrate that a nonprofit
educational purpose does not, by itself, override a lack of transformative
value. See Appellants’ Br. 53-54.
Likewise, the directive in section 107(1) to consider whether the use is
“of a commercial character or for nonprofit educational purposes” does not
mean that a nonprofit educational purpose is favored without regard to the
specific circumstances of the use. To the contrary, the statute identifies the
commercial or nonprofit educational purpose as “only one element of the
first factor enquiry,” Campbell, 510 U.S. at 584, and, as the cases Appellants
have cited illustrate, “the mere fact that a use is educational and not for
profit does not insulate it from a finding of infringement.” Id. (emphasis
added). Accordingly, the district court’s factor-one analysis, and Appellees’
defense of it, is flawed as a matter of law.
B.

Factor Two: Appellees Misstate the Law and the Facts in
Seeking To Render the “Informational” Nature of the
Works Legally Dispositive

The district court concluded that the second fair-use factor favors fair
use on the ground that all of the books at issue are “informational in nature.”

1093817.1

17

Dkt#423 at 52. Appellants showed in their opening brief that the
acknowledged creativity in their scholarly works warranted finding this
factor to be at least neutral and not to weigh in favor of fair use. See
Appellants’ Br. 58-59. Appellees’ tortured effort to show otherwise does not
withstand scrutiny.
Appellees assert that GSU faculty chose the excerpts in suit “for their
factual content – not their expressive content.” Appellees’ Br. 42. This
implausible claim fails to advance their argument for multiple reasons. First,
GSU’s mechanical copying involves reproducing the selected excerpts in
their entirety – facts, ideas, and original creative expression alike. See, e.g.,
Rogers v. Koons, 960 F.2d 301, 311 (2d Cir. 1992) (“Koons went well
beyond the factual subject matter of the photograph to incorporate the very
expression of the work created by Rogers.”) Appellees cite no authority for
the proposition that wholesale copying can be excused if the copier
assertedly was only “really interested in” the uncopyrightable aspects of the
content taken.
Second, the record refutes Appellees’ claim that the works were of
value to the GSU faculty only for their facts. In attempting to justify their
copying as pedagogically necessary, several professors acknowledged the

1093817.1

18

obvious: they chose the Publishers’ works because of their interpretative
originality and significance:
• Professor Esposito testified that the article she assigned from the
SAGE Handbook of Qualitative Research was “considered seminal in
the field” and that the author “does a critique of how we write about
the people that we research.” Dkt#404, Tr. 6/84:24-85:7.
• Professor Davis testified that she chose her readings in part because
they “will help . . . to think about different ways of doing history.”
Dkt#405, Tr. 7/106:12-19.
• Professor Kruger testified that the chapter she assigned contained a
“unique argument” that “isn’t found anywhere else.” Dkt#393, Tr.
10/61:15-62:22.
• Professor Duffield testified that he had not identified another work
that “did a better job of introducing that perspective” than the chapter
he assigned. Dkt#394, Tr. 11/97:18-98:11.
As a matter of law, moreover, endorsing wholesale copying based on
reductively branding scholarly works as “informational” ignores this Court’s
warning against allowing too wide a berth for fair use of factual works, and
it reflects a failure to appreciate the singular contribution of the Publishers’
scholarly works to GSU’s educational mission. See Pac. & S. Co., 744 F.2d
at 1497 (noting that courts should “take care not to discourage authors from
addressing important topics for fear of losing their copyright protections”).
The law in this Circuit does not support the district court’s binary
informational/creative framework. In Peter Letterese & Assocs. v. World
Inst. of Scientology Enters., 533 F.3d 1287, 1312-13 (11th Cir. 2008), the
1093817.1

19

court found the “informational” character of a manual on sales techniques
insufficient on its own to tip factor two in favor of fair use. The court cited
Harper & Row for the proposition that the category of factual works
contains “gradations as to the relative proportion of fact and fantasy,”
ranging from directories to “elegantly written biography” that warrant
consideration in assessing the second fair use factor. Id. at 1312 (quoting
Harper & Row, 471 U.S. at 563). The Publishers’ works, many of which are
standards in their field and winners of scholarly and literary awards, see
Dkt#399, Tr. 1/53-54; Dkt#400, Tr. 2/110; Dkt#401, Tr. 3/48, 63; Dkt#404,
Tr. 6/84-85, are surely nearer the “elegantly written biography” end of the
spectrum.
In any event, there is no legally cognizable basis for Appellees’
suggestion, see Appellees’ Br. 45-46 & n.9, that Appellants’ scholarly works
are entitled to less weight under factor two than the cake decorating manual
at issue in Marcus v. Rowley, 695 F.2d 1171 (9th Cir. 1983), or the
instructional business manual at issue in SCQuARE Int’l, Ltd. v. BBDO
Atlanta, Inc., 455 F. Supp. 2d 1347, 1363 (N.D. Ga. 2006). In both cases,
the courts found that the informational nature of the publications did not tip
factor two in favor of fair use. See Appellants’ Br. 58.

1093817.1

20

C.

Factor Three: Appellees Fail To Justify Wide Latitude for
Nontransformative Educational Copying

In their opening brief, Appellants demonstrated that the district court’s
analysis of factor three – the amount and substantiality of the portion used –
was wrong as a matter of law in several respects. See Appellants’ Br. 60-67.
Appellees fail to refute any of these arguments.
The district court grounded the significant leeway it afforded GSU
faculty to copy book excerpts in its determination that the copied materials
“further[ed] the legitimate educational purposes of the course curriculum”
and that most of the copies were “narrowly tailored to accomplish that
purpose.” Dkt#423 at 71. This rationale, loosely derived from Campbell,
has no application to nontransformative copying and would have startling
implications if it did. Campbell recognized the need for a parodist to
“‘conjure up’ at least enough” of the original as needed to make his parodic
purpose clear, 510 U.S. at 588, but this concept does not apply to GSU’s
nontransformative copying. See Appellants’ Br. 62-63; Rogers, 960 F.2d at
311 (holding that because a sculpture copied from the plaintiff’s photograph
was not a parody, the defendants “cannot avail themselves of . . . heightened
tolerance under a parody defense”).
Contrary to Appellees’ suggestion, the proposition that “the extent of
permissible copying varies with the purpose and character of the use,”
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21

Appellees’ Br. 52 (quoting Campbell, 510 U.S. at 586-87), does not support
providing wide fair-use latitude to an indisputably nontransformative use
that (unlike a parody) does not advance the purpose of copyright. To adopt
the district court’s premise would be tantamount to excusing all manner of
unlicensed, market-harming copying on the ground that the copying
furthered the teacher’s educational purpose – which will be true of any
assigned course reading. This would, in effect, adopt the very educational
safe harbor Congress rejected. See supra.16 n.4.
The amount of copying the district court deemed “fair” is excessive as
a matter of law. To characterize the district court’s allowance of, at a
minimum, the copying of one chapter or 10% of the work as merely “a
starting point” (see Appellees’ Br. 47) scarcely aids Appellees’ position.
This so-called “starting point” – let alone the even larger (20%) takings the
district court allowed where it found no digital license available (see
Dkt#423 at 253) – is far beyond what Congress had in mind and what the
courts have, accordingly, allowed. See Appellants’ Br. 63-66. Moreover,
because copyright owners are not obliged to license their works, see id. 7476, and do not control the licensing rights to all of the contributions to their
works, see Dkt#423 at 29, the purported lack of availability of a license is

1093817.1

22

not a legitimate basis for any unauthorized copying, let alone copying in
excess of what the court otherwise (wrongly) found to be reasonable.
Appellees attack the Classroom Guidelines on the grounds that they
are (i) not legally binding and (ii) set forth only minimum standards of fair
use. See Appellees’ Br. 49-51. They fail to note, however, that the
Guidelines were developed at Congress’s behest 5 and were expressly
endorsed by Congress. See H.R. Rep. No. 94-1733, 94th Cong., 2d Sess. 70
(1976) (noting that the conferees “accept [the Guidelines] as part of their
understanding of fair use”); Appellants’ Br. 63. Courts, accordingly,
consistently have found no fair use where the copying far exceeds the
Guideline parameters. See Appellants’ Br. 63-64. The district court stands
alone in giving the Guidelines no weight and thereby substituting its
judgment for that of Congress as to the limits on unlicensed classroom
copying needed to protect educational publishers.
Appellees’ claim that relying on the Guidelines “would effectively
eviscerate the use of scholarly works for educational purposes,” Appellees’
Br. 48, is baseless. GSU professors remain free to use them on ERes, just as

5

See H.R. Rep. No. 94-1476, 94th Cong., 2d Sess., at 67 (1976) (noting that
in June 1975 members of the House Judiciary Committee urged the parties
to arrive at a “meeting of the minds as to permissible educational uses of
copyrighted material”).

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23

they formerly used them in paper coursepacks, and to discuss, analyze, and
quote from them; they just cannot give away free copies to students semester
after semester in violation of Appellants’ copyright rights. There is,
moreover, no record support for the assertion that payment of modest
permission fees will have any adverse effect on GSU. On the other hand,
depriving the Publishers of much-needed permissions fees, at a time when
usage of their works is shifting to digital formats, will deprive them of
revenue that enables them to continue to publish works on which the
academic enterprise depends. See Appellants’ Br. 33-35.
Appellees contend that the district court’s 10%/one-chapter rule is
supported by the record, see Appellees’ Br. 52-56, by which they mean
current practice at GSU. Even if true, this does not make it compatible with
fair use. Calibrating fair-use safe harbors to avoid disrupting the alleged
infringing conduct is circular reasoning that amounts to rubber-stamping the
defendant’s reason for the unauthorized copying. Settled law is otherwise.
See, e.g., BellSouth Adver. & Publ’g Corp. v. Donnelly Info. Publ’g, Inc.,
719 F. Supp. 1551, 1561 (S.D. Fla. 1988), aff’d, 933 F.2d 952 (11th Cir.
1991) (standard industry practice is “not relevant to the fair use defense”);
Maxtone-Graham v. Burtchaell, 631 F. Supp. 1432, 1436 (S.D.N.Y. 1986),

1093817.1

24

aff’d, 803 F.2d 1253 (2d Cir. 1986) (fair use “cannot be subject to definition
or restriction as a result of any . . . trade custom or practice”).
As a last gasp, Appellees fall back on what they call the “Categorical
Imperative” as a brake on faculty copying. See Appellees’ Br. 55-56. But
this argument – which relies on unsupported assertions concerning the
economics of book publishing and the hollow assurance that the faculty will
“do the right thing” – has no legal grounding and, if anything, bespeaks the
weakness of Appellees’ legal position. 6
Finally, as for the issue of whether a separately authored, separately
copyright-protected chapter in a compilation should be treated as a “work”
for purposes of factor three, Appellees argue only that Appellants should
have raised the argument earlier. See Appellees’ Br. 17-18, 48 n.11.
6

Appellees’ attempt to portray non-party CCC as endorsing current practice
at GSU (see Appellees’ Br. 54) is also unavailing. Indeed, the CCC “White
Paper” Appellees cite undermines Appellees’ effort to justify unlimited onechapter takings. DX906. The text, which Appellees misquote and then
truncate, advises the opposite of what the district court did. After stating
that most experts advise “using a single article or chapter, or less, of a
copyrighted work” (emphasis added) – the “or less” being omitted by
Appellees – the document advises that “even brief excerpts must be viewed
in the overall context of other readings offered for a course. If the total
effect is to create a compilation or ‘digital coursepack’ of unlicensed
materials, the case for treating individual excerpts as fair use is significantly
weakened and permission should be sought.” Id. (emphasis added). The
paper also states that it “violates the intent, spirit, and letter of the law to use
e-reserves as a substitute for the purchase of books, subscriptions, or other
materials.” Id.
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25

Appellees identify no prejudice arising from a legal argument that was raised
at trial and to which they had ample opportunity to respond both during the
trial and in post-trial briefing. See Appellants’ Br. 67 n.18. 7
D.

Factor Four: Appellees Cannot Negate the Undisputed
Market Harm Caused by the Nontransformative Copying

Appellants’ opening brief demonstrates the multiple legal flaws
infecting the district court’s analysis of factor four – the effect of the use on
the potential market for or value of the copyrighted work. See Appellants’
Br. 74-81. Nothing in Appellees’ brief overcomes that showing.
As an initial matter, the issue of which party has the burden of proof
with respect to market harm is not one on which the Court need dwell
because the undisputed facts as to market harm are overwhelming. There is
no dispute as to the direct substitution of Appellees’ unauthorized copies for
copies that can be readily licensed at minimal cost from the Copyright
Clearance Center (CCC) or purchased or licensed from the Publishers
directly. Determining that GSU’s unauthorized use will affect “the potential
market for or value of the copyrighted work,” 17 U.S.C. § 107, follows

7

Properly deeming a chapter in a compilation to be a “work” for purposes of
factor three would moot the question of whether the “heart of the work” was
taken. In any event, while taking the heart of the work counts against fair
use, the converse is not true: taking something other than the heart of the
work does not favor fair use, as Appellees imply. See Appellees’ Br. 18.
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26

logically from the fact that GSU’s copying usurps market transactions. See
Appellants’ Br. 68-71; Dkt#423 at 79 (“If available permissions are not paid,
the value of the copyright is less than it otherwise would be.”). This is how
both courts in the coursepack cases analyzed factor four. See Appellants’
Br. 69-70. Appellants are not obliged to prove specific lost book sales or
permissions revenue to establish market harm, as Appellees suggest, see
Appellees’ Br. 59-61, let alone demonstrate lost revenues meeting an
arbitrary standard of materiality. 8 Straight market substitution, with its
foreseeable adverse impact on Appellants’ businesses if it were allowed to
become widespread, see Appellants’ Br. 32-34, 79-81, tips factor four
decisively against fair use. In short, Appellants’ showing of a “meaningful
likelihood of future harm,” Sony, 464 U.S. at 451, is irrefutable without
regard to whether GSU’s practices are deemed noncommercial.
With respect to license availability, see Appellees’ Br. 61-63,
Appellants have shown that whether any of these works was available for
licensing in 2009 is irrelevant; the relevant question is whether a licensing

8

The court’s dismissive assessment of Appellants’ lost revenues is refuted
by the testimony of Appellants’ witnesses, see Appellants’ Br. 32-34,
including that of Oxford’s Mr. Pfund, who testified that permissions fees are
particularly important to publishers in that they represent “heavy money”
that drops right to their bottom lines because there are no associated costs.
See Dkt#401, Tr. 3/83:17-22.
1093817.1

27

market exists that would be threatened were the copying at issue to become
widespread. See Appellants’ Br. 74-75. The various convenient license
options offered by CCC, see Dkt#423 at 24-30, show that GSU’s use is “less
fair,” Appellants’ Br. 70 (quoting Am. Geophysical Union v. Texaco Inc., 60
F.3d 913, 931 (2d Cir. 1994)), by demonstrating the lack of any justification
for GSU’s rampant unauthorized copying. This argument is not “circular,”
Appellees’ Br. 64, for the reasons explained in Texaco. See 60 F.3d at 930
and n.17.
It is worth noting, moreover, that not a single GSU professor
investigated the possibility of licensing digital book excerpts or considered
lost licensing fees as an element of market harm, nor did GSU budget a
penny for permissions fees for digital course readings, see Appellants’ Br.
18-20, 22, 75-76 – all of which reveals Appellees’ license-availability
critique to be completely disingenuous. In any event, license availability of
particular works in 2009 has no logical bearing on Appellants’ entitlement to
a prospective injunction prohibiting GSU’s continued market circumvention.
The “adamant” testimony of several professors that they would not
have used Appellants’ materials if permissions fees were required, see
Appellees’ Br. 63, cannot justify unauthorized takings, nor does it negate a
finding of market harm. What matters legally is not the likelihood that
1093817.1

28

professors will forego readings based on cost but the right of the Publishers
to be compensated should professors choose to copy their works – the
market in question indisputably being an existing market that the Publishers
have the right to exploit. See Texaco, 60 F.3d at 930.
Similarly breathtaking is the assertion that “because the students have
already paid hundreds of dollars for textbooks,” Appellees’ Br. 63,
professors ought to be able to provide copies of the Publishers’ works for
free. Id. Copyright law allows no such arbitrary determinations by users as
to which – or how many – copyright owners deserve compensation for
exploitation of their works.
Nor does the record support Appellees’ assertion that GSU’s
educational mission will be impaired if it is not allowed to continue current
practice. The undisputed evidence is that GSU faculty and students could
access (including via ERes) some 1.3 million copyrighted works for an
annual student fee of some $3.75 (or some $114,000 per annum across
GSU’s student body). See Appellants’ Br. 32, 34. These modest sums
contrast starkly with student assessments of more than $800 per semester for
library, technology, and football program fees and a more than $11 million
GSU library acquisitions budget, including some $4 million for
subscriptions to online journals. Id. 34-35. These facts underscore the
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29

impermissibility of GSU’s ongoing discrimination against book publishers
and their authors.
***
Under a correct application of the fair-use factors, as described above
and in Appellants’ opening brief, the challenged copying practices at GSU
are not fair use either as to each work or considered in the aggregate. Three
of the four statutory factors weigh heavily against fair use, and the fourth
(factor two) is at worst neutral and, in any event, not determinative. The
district court’s contrary conclusion is wrong as a matter of law and should be
reversed.
III.

THE INJUNCTION SOUGHT BY THE PUBLISHERS IS NOT
BARRED BY THE ELEVENTH AMENDMENT
A.

Appellees Failed To Preserve Their Eleventh Amendment
Argument

Appellees argue that injunctive relief in this case is barred by the
Eleventh Amendment. See Appellees’ Br. 77-78. However, because this
argument is outside the scope of Appellants’ brief and was not raised by the
Appellees on cross-appeal, it is not properly preserved for appeal. As this
Court explained in Lawhorn v. Allen, 519 F.3d 1272, 1285 n.20 (11th Cir.
2008),
although a party may raise any argument in support of a
judgment, a party who has not appealed may not bring an
1093817.1

30

argument in opposition to a judgment or attack the judgment in
any respect, United States v. American Ry. Express Co., 265
U.S. 425, 435-36 (1924), or “hitch a ride on his adversary's
notice of appeal” to “enlarge his rights under the judgment or
diminish those of the opposing party.” Campbell v.
Wainwright, 726 F.2d 702, 704 (11th Cir. 1984). By failing to
file a cross-appeal, Lawhorn failed to preserve these issues for
appeal.
See also Sikes v. Teleline, Inc., 281 F.3d 1350, 1367 n.44 (11th Cir. 2002),
overruled on other grounds by 553 U.S. 639 (2009).
The Eleventh Amendment is no exception to the cross-appeal rule.
The Court need not consider (and should ignore) Eleventh Amendment
arguments not properly raised on cross-appeal. See Majette v. O’Connor,
811 F.2d 1416, 1419 n.3 (11th Cir. 1987) (refusing to consider sovereign
immunity defense “[b]ecause th[e] issue was not raised as a cross-appeal”).
B.

The District Court Correctly Rejected Appellees’ Eleventh
Amendment Argument

Even if Appellees’ Eleventh Amendment defense were properly
before the Court, it has no merit for the reasons stated by the district court.
See Dkt#423 at 10-18. All that is required to obtain prospective injunctive
relief under the Ex parte Young exception to Eleventh Amendment
immunity is that “‘by virtue of his office, [the named official] has some
connection’ with the . . . conduct complained of.” Luckey v. Harris, 860

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31

F.2d 1012, 1015-16 (11th Cir. 1988) (quoting Ex parte Young, 209 U.S. 123,
157 (1908)). The district court correctly found this standard met here.
Appellees admit they have the authority and/or duty to ensure that
GSU complies with federal copyright law. See Dkt#358 (introducing Becker
deposition testimony, Dkt#316 at 26:15-27:6, 88:6-15) (GSU President
testifying that the Provost and Board of Regents are responsible for ensuring
that use of the electronic reserves systems complies with federal copyright
law and that it is within his authority to “direct the faculty at the university
to comply with federal copyright law”); Dkt#276 SF42 (GSU Provost is
responsible for, inter alia, “correcting noncompliance with federal copyright
law”); id. at SF45, 47; PX975 at Nos. 9, 18-19. Appellees also concede their
authority to direct library staff to block access to or remove specific
infringing materials on the ERes system if required to do so by court order
and otherwise to ensure compliance with an injunction. See Dkt#276 SF4749; PX975 at Nos. 3, 6-9, 12, 25-28, 59-61.
Appellees claim that “[n]one of them personally scanned, copied, or
distributed the . . . works at issue” and “were not involved in selecting the
professors’ course reading materials” or “completing the professors’ fair use
checklists,” Appellees’ Br. 76, but such personal involvement “is not a
necessary condition of injunctive relief against state officers in their official
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32

capacity.” Luckey, 860 F.2d at 1015. Rather, “[a]ll that is required is that
the official be responsible for the challenged action.” Id. at 1015-16.
As the district court found, Appellees “are in a position to do
something meaningful to stop the violation” of federal law. Dkt#406,
Tr.8/53. That is all the law requires. See Grizzle v. Kemp, 634 F.3d 1314,
1319 (11th Cir. 2011) (holding that a state official is subject to suit in his
official capacity “when his office imbues him with the responsibility to
enforce the law or laws at issue in the suit”); Summit Med. Assocs., P.C. v.
Pryor, 180 F.3d 1326, 1341 (11th Cir. 1999) (holding that plaintiffs properly
sued Alabama’s Governor and Attorney General and the District Attorney
because they were authorized to enforce the criminal liability provisions of
the challenged statute); Salerno v. City Univ. of N.Y., 191 F. Supp. 2d 352
(S.D.N.Y. 2001).9

9

Pennington Seed, Inc. v. Produce Exch. No. 299, L.L.C., 457 F.3d 1334
(Fed. Cir. 2006), does not bind this Court and does not, in any event, support
a contrary result. That case was decided on a motion to dismiss, and the
court found that the plaintiffs’ attempt to establish the defendants’
connection to patent infringement was marred by reliance on materials and
argument outside the four corners of the complaint. 457 F.3d at 1342 n.4.
Here, the pertinent facts concerning the role of each Appellee in overseeing
ERes are conceded.

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33

C.

Appellants’ Proposed Injunction Is Necessary and
Reasonable

The injunction entered by the district court – which merely requires
GSU to maintain copyright policies consistent with the court’s orders,
Dkt#462 at 11 – will not adequately ensure compliance with copyright law.
GSU’s gamesmanship throughout this litigation in seeking to avoid a ruling
on the merits confirms the need for judicial supervision. After having
adopted a new policy in 2009 in an effort to moot the case and then relying
on a groundless Eleventh Amendment defense to evade liability for the
continued infringement fostered by the new policy, GSU responded to the
district court’s request that the Publishers submit a proposed injunction
consistent with the court’s May 2012 order by adopting yet another revised
copyright policy and arguing again that it mooted the need for an injunction.
See Dkt#432 at 13. The “revised” policy (which the district court implicitly
endorsed) consists of superficial tweaks to GSU’s Fair Use Checklist,
notably the inclusion under “Factor 3” of the court’s 10%/one-chapter rule –
which, even if followed, will permit continued rampant infringement of the
Publishers’ works in the form of unauthorized digital coursepacks. See id.
Ex. B.
As the Supreme Court recognized in City of Mesquite v. Aladdin’s
Castle, Inc., 455 U.S. 283, 289 (1983), it is “well settled that a defendant’s
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34

voluntary cessation of a challenged practice does not deprive a federal court
of its power to determine the legality of the practice.” For a court to decline
to enter an injunction on mootness grounds, the defendant must present
evidence that makes “it absolutely clear that the allegedly wrongful behavior
could not reasonably be expected to recur.” United States v. Concentrated
Phosphate Export Ass’n, 393 U.S. 199, 203 (1968). The evidence here
shows the opposite. The slight changes made by GSU do not alter either the
flawed design of the checklist or the proven inevitability with which the
checklist produces erroneous affirmative fair-use determinations. See
Appellants’ Br. 19-22. Indeed, even works found to be infringing by the
district court would be deemed fair use under Appellees’ modified checklist.
See Dkt#436 at 4-6.10
An injunction like that proposed by the Publishers (Dkt#300-1) is
plainly warranted. The Publishers proposed injunction incorporates the
brevity and “cumulative effect” sections of the Classroom Guidelines – thus
10

The district court failed to address the efficacy of the Fair Use Checklist
notwithstanding the voluminous trial testimony demonstrating the futility of
faculty efforts to apply it. Indeed, Appellees’ copyright compliance expert
Kenneth Crews testified that he would never advise using such a checklist as
the sole litmus test for fair-use determinations. See Dkt#396, Tr. 13/104:25105:14. Dr. Crews also acknowledged a number of salient differences from
the copyright policies at Columbia University which render Appellees’
implication that they were mirroring Columbia’s practices materially
misleading. See id. at 98:15-123:21.

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limiting GSU’s ability to replace licensed coursepacks with unlicensed (but
otherwise identical) digital compilations of course reading material – while
pragmatically dispensing with the “spontaneity” requirement. Id. It is less
restrictive than the injunctions entered in the coursepack cases, which
limited unlicensed copying to a single page. See, e.g., Basic Books, Inc. v.
Kinko’s Graphics Corp., No. 89 Civ. 2807, 1991 WL 311892 (S.D.N.Y.
Oct. 16, 1991); Dkt# 300-3. It also includes provisions for monitoring and
certifying GSU’s copyright compliance – elements absent from GSU’s
current policy yet essential given Appellees’ history and stated desire to
assign responsibility for copyright compliance to the faculty. See Appellees’
Br. 76.
IV.

APPELLEES’ DEFENSE OF THE DISTRICT COURT’S
ATTORNEYS’ FEES RULING HAS NO MERIT
The predicate for the district court’s award of attorneys’ fees and costs

to Appellees – the finding that they were the “prevailing party” under
section 505 of the Copyright Act, 17 U.S.C. § 505 – disappears if the court’s
erroneous merits ruling is reversed. However, Appellants have identified
additional errors relating to the fee award which the Court could reach. See
Appellants’ Br. 84-86. Appellees’ response on these points misrepresents
the proceedings below as well as the law concerning recovery of expert
witness fees.
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Putting aside (i) the inappropriateness of using a tally of successful
versus unsuccessful claims rather than whether an injunction was obtained
as the measure of success and (ii) the district court’s clear legal error in
finding only five infringements, see Appellants’ Br. 84-85, it is deliberately
misleading for Appellees to hold up those five infringements relative to
thousands of course offerings at GSU as a gauge of either GSU’s copyright
compliance or of the Publishers’ success. See Appellees’ Br. 72. The
infringement claims that were tried involved works by only three publishers,
suing on behalf of an entire academic publishing industry whose copyrights
were being systematically trampled at GSU. The suggestion that all of the
copying that was not specifically litigated was fair use ignores the express
understanding that the litigated claims were representative of ongoing
conduct, see Dkt#261, Tr. 9-10, 13-14, and it flies in the face of a record
showing that GSU has never paid permissions fees for the use of book
excerpts on ERes or uLearn. See Appellants’ Br. 18. Moreover, many of
Appellants’ claims were rejected for reasons such as the inability to produce
a contributor contract that had nothing to do with the fairness of the use.
See, e.g., Dkt#423 at 142.
Appellees accuse the Publishers of a “dogged refusal to limit the
scope of their claims” that “needlessly and significantly increas[ed] GSU’s
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costs.” Appellees’ Br. 74. In fact, the Publishers proposed trying a much
more limited sample of infringement claims as illustrative of the systematic
infringement of the Publishers’ copyrights through the use of unlicensed
digital coursepacks. 11 It was Appellees, seeking to deflect this focus in
favor of work-specific infringement claims, who refused to adopt this more
efficient approach, and the district court adopted GSU’s position. See
Appellants’ Br. 10. In the end, the court’s entry of an injunction based on its
finding of only five infringements implicitly validated the Publishers’
proposed approach.
Within the framework of a case quite different than the one the
Publishers brought (including the court-ordered 2009 time frame, for which
the Publishers were required to identify all claimed infringements under a
policy adopted after they sued), the Publishers vigorously pursued the claims
they deemed valid and conscientiously dropped those they reasonably

11

Such an approach has been common in copyright infringement litigation.
See, e.g., Pac. & S. Co., 744 F.2d at 1499 n.17 (rejecting argument that
injunction could not sweep more broadly than the single work named in the
suit); Cable News Network v. Video Monitoring Servs. of Am., 959 F.2d 188
(11th Cir. 1992) (upholding injunction over all plaintiff works based on
single infringed work); Texaco, 60 F.3d at 915 (case tried based on copying
of eight articles by a single Texaco scientist); Princeton University Press, 99
F.3d at 1384-85 (addressing infringement of six representative scholarly
books); Basic Books, 758 F. Supp. at 1526 (twelve instances of infringement
alleged).

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determined would be difficult to prove. They could not have ascertained in
advance the success rate of these claims under the district court’s novel
approach to matters such as copyrightability and license availability, as
Appellees, with the benefit of hindsight, suggest. Good-faith defense of
copyright rights should not be burdened with the fear of being penalized by
such second-guessing.
Finally, Appellees’ attempt to justify the district court’s determination
that Dr. Crews’ expert witness fees were properly awarded as “necessary
and incidental” to the attorney’s fees, see Appellees’ Br. 75, fails. The
court’s ruling is plainly contrary to Artisan Contractors Ass’n of Am., Inc. v.
Frontier Ins. Co., 275 F.3d 1038 (11th Cir. 2001), which held that section
505 does not override the limits on recovery of expert witness fees specified
in 28 U.S.C. §§ 1920 and 1821. Artisan Contractors cannot be
circumvented by simply relabeling Dr. Crews’ work as an element of
attorneys’ fees.
Appellees state misleadingly that “[s]uch ‘necessary and incidental’
fees are routinely awarded” as part of attorneys’ fee awards, Appellees’ Br.
75, but none of the cases they cite held that expert witness fees can be
awarded as part of attorneys’ fees. To the contrary, in Lil’ Joe Wein Music,
Inc. v. Jackson, No. 06-20079-CIV, 2008 U.S. Dist. LEXIS 112730 (S.D.
1093817.1

39

Fla. June 6, 2008), the court held that litigation expenses incurred by
attorneys and normally charged to the client, such as phone charges, should
be awarded as part of the attorney’s fee award. The court cited Pinkham v.
Camex, Inc., 84 F.3d 292 (8th Cir. 1996), in which the Eighth Circuit held
that it was harmless error to award attorney out-of-pocket expenses as costs
under section 1920 “since these expenses, unlike the expert witness fees,
were properly compensable as part of the attorney’s fees.” 2008 U.S. Dist.
LEXIS 112730, at *44 (emphasis added); see also Data Gen. Corp. v.
Grumman Sys. Support Corp., 825 F. Supp. 361, 366 (D. Mass. 1993)
(noting parties’ agreement that expert witness fees in excess of the statutory
minimum established by 28 U.S.C. §§ 1920 and 1821 “are not recoverable
under federal law”) (emphasis added).
CONCLUSION
For the reasons explained above and in Appellants’ opening brief, the
district court’s rulings as to (i) appropriate fair-use parameters for online
course reading systems at GSU and (ii) Appellees’ entitlement to attorneys’
fees and costs must be reversed and the case remanded for the limited
purpose of ordering an injunction consistent with that proposed by
Appellants below.

1093817.1

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Dated: May 20, 2013.
s/ John H. Rains IV
Edward B. Krugman
[e-mail]
Georgia Bar No. 429927
John H. Rains IV
[e-mail]
Georgia Bar No. 556052
BONDURANT, MIXSON & ELMORE, LLP
1201 West Peachtree St. NW, Suite 3900
Atlanta, Georgia 30309
Telephone: [phone]
Facsimile: [phone]
R. Bruce Rich
Randi W. Singer
Jonathan Bloom
Lisa R. Eskow
Todd Larson
WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
New York, New York 10153
Telephone: [phone]
Facsimile: [phone]
Attorneys for Appellants

1093817.1

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CERTIFICATE OF COMPLIANCE
I certify that this Brief complies with the type-volume limitation set
forth in FRAP 32(a)(7)(A). This Brief contains 8,957 words.
I further certify that this Brief will be promptly uploaded in electronic
format to the Court’s website, pursuant to 11th Cir. R. 31-5(c).
This 20th day of May, 2013.

s/ John H. Rains IV
John H. Rains IV

1093817.1

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that, on this 20th day of May, 2013,
I have electronically filed the foregoing APPELLANTS’ REPLY
BRIEF with the Clerk of the Court using the CM/ECF system, which will
automatically send e-mail notification of such filing to the following
attorneys of record:
Anthony B. Askew
Stephen M. Schaetzel
Robin L. Gentry
Walter Hill Levie, III
MEUNIER CARLIN & CURFMAN, LLC
817 W. Peachtree Street, NW, Suite 500
Atlanta, GA 30308
Samuel S. Olens
W. Wright Banks, Jr.
Denise Whiting-Pack
Mary Jo Volkert
OFFICE OF THE GEORGIA ATTORNEY GENERAL
40 Capitol Square, SW
Atlanta, GA 39334
John W. Harbin
Natasha H. Moffitt
Mary Katherine Bates
KING & SPALDING LLP
1180 Peachtree Street
Atlanta, GA 30309
Katrina M. Quicker
Richard W. Miller
BALLARD SPAHR LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309-3915
1093817.1

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Lois F. Wasoff
LAW OFFICE OF LOIS F. WASOFF
258 Sudbury Road
Concord, MA 01742
(Amici – Marybeth Peters, Ralph Oman, Jon Baumgarten)
Ronald Gene Dove, Jr.
Lindsey Lori Tonsager
COVINGTON & BURLING, LLP
1201 Pennsylvania Avenue, NW
Washington, D.C. 20004
(Amicus – Copyright Alliance)
Sandra Aistars
COPYRIGHT ALLIANCE
1224 M Street, NW, Suite 101
Washington, D.C. 20005
(Amicus – Copyright Alliance)
Mary Eleanor Rasenberger
COWAN DEBAETS ABRAHAMS & SHEPPARD
41 Madison Avenue, Suite 34
New York, NY 10533
(Amicus – Text and Academic Authors Association)
Linda Steinman
DAVIS WRIGHT TREMAINE, LLP
1633 Broadway Fl 27
New York, NY 10019-6708
(Amicus – Association of American University Presses, Inc.)
Jack I. Lerner
USC INTELLECTUAL PROPERTY AND
TECHNOLOGY LAW CLINIC 425
699 Exposition Boulevard, Suite 425
Los Angeles, CA 90089-0040
(Amici – American Association of University Professors, et al.)

1093817.1

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Karyn Kay Ablin
Bruce Gary Joseph
Floyd Brantley Chapman
WILEY REIN, LLP
1776 K Street, NW
Washington, D.C. 20006-2332
(Amici – American Council on Education, et al.)
Ada Meloy
NYU OFFICE OF LEGAL COUNSEL
1 Dupont Circle, NW
Washington, D.C. 20036
(Amici – American Council on Education, et al.)
Mitchell Stoltz
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
(Amici – Electronic Frontier Foundation, et al.)
W. Andrew Pequignot
KILPATRICK TOWNSEND & STOCKTON, LLP
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4528
(Amicus – Association of Southeastern Research Libraries,
Inc.)
Jason Michael Schultz
SAMUELSON LAW, TECHNOLOGY & PUBLIC POLICY
CLINIC
396 Simon Hall
Boalt Hall
UC Berkeley School of Law
Berkeley, CA 94720-7200
(Amicus – Text and Academic Authors Association)

s/ John H. Raines IV
John H. Rains IV
1093817.1

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