Authors Guild, Inc. v. Hathitrust

Filing 132

AMICUS BRIEF, on behalf of American Library Association, Association of College and Research Libraries, and Association of Research Libraries, FILED. Service date 06/03/2013 by CM/ECF. [954697] [12-4547]--[Edited 06/04/2013 by DH]

12-4547-cv
______________________________________________________________________________
IN THE UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT
THE AUTHORS GUILD, INC., THE AUSTRALIAN SOCIETY OF AUTHORS
LIMITED, UNION DES ECRIVAINES ET DES ECRIVAINS QUEBECOIS,
ANGELO LOUKAKIS, ROXANA ROBINSON, ANDRE ROY, JAMES
SHAPIRO, DANIELE SIMPSON, T.J. STILES, FAY WELDON,
THE AUTHORS LEAGUE FUND, INC., AUTHORS’ LICENSING AND
COLLECTING SOCIETY, SVERIGES FORFATTARFORBUND, NORSK
FAGLITTERAER FORFATTERO OG OVERSETTERFORENING,
THE WRITERS’ UNION OF CANADA, PAT CUMMINGS, ERIK
GRUNDSTROM, HELGE RONNING, JACK R. SALAMANCA,
Plaintiffs-Appellants,
(For Continuation of Caption See Inside Cover)
______________________________________________________________________________
On Appeal from the United States District Court for the Southern District of New York
______________________________________________________________________________
BRIEF AMICI CURIAE OF AMERICAN LIBRARY ASSOCIATION, ASSOCIATION
OF COLLEGE AND RESEACH LIBRARIES, AND ASSOCIATION OF RESEARCH
LIBRARIES IN SUPPORT OF APPELLEES AND AFFIRMANCE
_____________________________________________________________________________
Jonathan Band
Jonathan Band PLLC
21 Dupont Circle NW, 8th Floor
Washington, D.C., 20036
202-296-5675
[e-mail]
Counsel for Amici
June 3, 2013

______________________________________________________________________________
v.
HATHITRUST, CORNELL UNIVERSITY, MARY SUE COLEMAN, President,
University of Michigan, MARK G. YUDOF, President, The University of California,
KEVIN REILLY, President, The University of Wisconsin System, MICHAEL MCROBBIE,
President, Indiana University,
Defendants-Appellees,
NATIONAL FEDERATION OF THE BLIND, GEORGINA KLEEGE,
BLAIR SEIDLITZ & COURTNEY WHEELER,
Intervenor Defendants-Appellees.
______________________________________________________________________________

CORPORATE DISCLOSURE STATEMENT
Pursuant to Rule 26.1 of the Federal Rules of Appellate Procedure, amici
curiae the American Library Association, the Association of College and Research
Libraries, and the Association of Research Libraries state that none of these entities
has a parent corporation and no publicly held corporation has an ownership stake
of 10% or more in any entity.

i

TABLE OF CONTENTS
CORPORATE DISCLOSURE STATEMENT ......................................................... i
INTEREST OF AMICI AND INTRODUCTION .................................................... 1
ARGUMENT ............................................................................................................ 3
I.

APPELLANTS’ READING OF SECTION 108 WOULD
OUTLAW WELL-ESTABLISHED LIBRARY PRACTICES ........... 3
A.
B.

II.

Appellants’ Understanding of Section 108 Would Prevent
Libraries from Providing Internet Access to Users.................... 4
Plaintiffs’ Reading of Section 108 Precludes Many Other
Important Library Activities ...................................................... 5

ACTIVITIES OUTSIDE SECTIONS 108 OR 121 CAN STILL
QUALIFY FOR A FAIR USE FINDING ........................................... 7
A.
B.

Section 108(f)(4) Unambiguously Provides that Section 108
Does Not Limit the Applicability of Fair Use to Libraries ...... 10

C.

Section 121 Does Not Limit the Applicability of Fair Use ..... 14

D.

III.

The Copyright Act’s Specific Exceptions Do Not Limit the
Applicability of Fair Use ........................................................... 7

Appellants’ Understanding of the Impact of Specific
Exceptions on Fair Use Is Inconsistent with the Privileged
Status Congress Has Accorded Libraries in Title 17 ............... 15

THE DISTRICT COURT CORRECTLY FOUND THAT HDL IS
A FAIR USE ...................................................................................... 17
A.

HDL Embodies Widespread Best Practices for Fair Use ........ 17

B.

Preservation Is Fair Use ........................................................... 19

ii

C.
D.

Fair Use Permits Digitization of Numerous Works ................. 24

E.
IV.

A Fair Use Finding Does Not Usurp Congressional
Authority .................................................................................. 20

Appellants’ Litigation Choices Tilt the Equities In Favor of
HathiTrust ................................................................................ 25

THE DISTRICT COURT CORRECTLY FOUND THAT HDL
FALLS WITHIN SECTION 121 ....................................................... 28

CONCLUSION....................................................................................................... 29

TABLE OF AUTHORITIES
Federal Cases
Authors Guild, Inc. v. Google, Inc.,
No. 05-cv-8136-DC (S.D.N.Y. Nov. 13, 2009) ........................................... 26
Encyclopedia Britannica Educ. Corp. v. Crooks,
447 F. Supp. 243 (W.D.N.Y. 1978)................................................................ 9
Golan v. Holder,
132 S. Ct. 873 (2012) ............................................................................... 2, 16
Kirtsaeng v. John Wiley & Sons, Inc.,
133 S. Ct. 1351 (2013) ................................................................................... 4
Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146 (9th Cir. 2007) .................................................................. 5, 25
Sega Enters., Ltd. v. Accolade, Inc.,
977 F.2d 1510 (9th Cir. 1992) .................................................................... 8, 9
Sony Corp. of America v. Universal City Studios, Inc.,
464 U.S. 417 (1984) ............................................................................... 20, 21
Stewart v. Abend,
495 U.S. 207 (1990) ....................................................................................... 7
Federal Statutes
17 U.S.C. § 106......................................................................................................... 9
17 U.S.C. § 107................................................................................................ passim
17 U.S.C. § 108................................................................................................ passim
17 U.S.C. § 109............................................................................................... 4, 9, 15
17 U.S.C. § 110......................................................................................................... 9
17 U.S.C. § 111......................................................................................................... 9

iv

17 U.S.C. § 112......................................................................................................... 9
17 U.S.C. § 113......................................................................................................... 9
17 U.S.C. § 114......................................................................................................... 9
17 U.S.C. § 115......................................................................................................... 9
17 U.S.C. § 116..................................................................................................... 8, 9
17 U.S.C. § 117........................................................................................... 4, 8, 9, 28
17 U.S.C. § 118......................................................................................................... 9
17 U.S.C. § 119......................................................................................................... 9
17 U.S.C. § 120......................................................................................................... 9
17 U.S.C. § 121................................................................................................ passim
17 U.S.C. § 504....................................................................................................... 16
17 U.S.C. § 602....................................................................................................... 16
17 U.S.C. § 1201..................................................................................................... 16
17 U.S.C. § 1203..................................................................................................... 16
17 U.S.C. § 1204..................................................................................................... 16
State Statutes
N.Y. Educ. Law § 273 (Consol. 2013) ................................................................... 28
Legislative Materials
H.R. Rep. No. 107-685 (2002) ................................................................................. 8
H.R. Rep. No. 90-83 (1967) ..................................................................................... 8
H.R. Rep. No. 94-1476 (1976) ............................................................................... 11

Orphan Works Act, H.R. 5439, 109th Cong. (2006) .............................................. 22
Orphan Works Act, H.R. 5889, 110th Cong. (2008) .............................................. 22
Orphan Works and Mass Digitization, 77 Fed. Reg. 64555 (Oct. 22, 2012) ......... 22
S. Rep. No. 91-1219 (1970) .................................................................................... 11
Shawn Bentley Orphan Works Act, S. 2913, 110th Cong. (2008) ......................... 22
Other Authorities
ARL, Code of Best Practices in Fair Use for Academic and Research
Libraries (2012)............................................................................ 6, 17, 18, 19
Patricia Aufderheide and Peter Jaszi, Reclaiming Fair Use (2011) ....................... 17
Jonathan Band, Google and Fair Use, 3 J. Bus. & Tech. Law (2008) .................... 17
Jonathan Band, The Impact of Substantial Compliance with Copyright
Exceptions on Fair Use, 59 J. Copyright Soc’y (2012) ................................. 9
Samantha Becker, et al., Opportunity for All: How the American Public Benefits
from Internet Access at U.S. Libraries (2010) ............................................... 5
Library of Congress, Copyright and Other Restrictions, Prosperity and Thrift,
http://memory.loc.gov/ammem/coolhtml/ccres.html ..................................... 6
Randolph D. Moss, Office of Legal Counsel, Whether And Under What
Circumstances Government Reproduction Of Copyrighted Materials Is
A Noninfringing “Fair Use” Under Section 107 Of The Copyright Act
Of 1976 (1999) ............................................................................................. 13
Melville Nimmer & David Nimmer, Nimmer on Copyright (2011) ...................... 12
William Patry, Patry on Copyright (2011) ............................................................. 12
Press Release, Bob Goodlatte, Chairman of the House Judiciary Comm.,
Chairman Goodlatte Announces Comprehensive Review of Copyright
Law (Apr. 24, 2013) ..................................................................................... 23

Mary Rasenberger and Chris Weston, Overview of the Libraries and Archives
Exception in the Copyright Act (2005) ......................................................... 10
The Register’s Call for Updates to U.S. Copyright Law: Hearing Before the
Subcomm. on Courts, Intellectual Prop. and the Internet, 113th Cong.
(2013) ........................................................................................................... 23
The Section 108 Study Group Report (2008) .......................................................... 12
Smithsonian Institution Libraries, Proceedings of the National Academy of
Sciences of the United States, Electronic Resources from the Smithsonian
Libraries, http://www.sil.si.edu/eresources/silpurl.cfm?purl=10916490 ....... 6
U.S. Copyright Office, Legal Issues in Mass Digitization: A Preliminary Analysis
and Discussion Document (2011) ................................................................ 24
U.S. Copyright Office, Report on Copyright and Digital Distance Education
(1999) ............................................................................................................. 8
Siva Vaidhyanathan, A Risky Gamble with Google, Chron. Higher Educ.,
Dec. 2, 2005 .................................................................................................. 27

INTEREST OF AMICI AND INTRODUCTION1
The American Library Association (“ALA”) is a nonprofit professional
organization of more than 60,000 librarians dedicated to providing and improving
library services and promoting the public interest in a free and open information
society.
The Association of College and Research Libraries, the largest division of
the ALA, is a professional association of academic and research librarians.
The Association of Research Libraries (“ARL”) is a nonprofit organization
of 125 research libraries in North America, including university, public,
government and national libraries.
Collectively, these three associations represent over 100,000 libraries in the
United States employing over 350,000 librarians and other personnel.
This is an unusual case. By virtue of the conduct of the Appellees, a party
not named in this litigation (Google), and the Appellants themselves, a resource of
world historic significance has been created. The HathiTrust Digital Library
(“HDL”) consists of more than 10 million digitized volumes gathered from the
collections of many of the nation’s leading research libraries. The libraries on their
1

No party’s counsel authored this brief in whole or in part, no party or party’s
counsel contributed money that was intended to fund preparing or submitting this
brief, and no person other than amici, its members, or its counsel contributed
money intended to fund preparation or submission of this brief. Several ARL
member libraries are partners in HathiTrust. All parties have consented to the filing
of this brief.
1

own would never have been able to create a digital library of this scale in such a
short time. HDL assures the preservation of this great storehouse of human
knowledge, gives scholars powerful new tools for research, and promises print
disabled persons equitable access to printed books for the first time.
Perhaps in recognition of HDL’s value, Appellants do not seek the typical
copyright remedy of destruction. But Appellants’ proposed relief—indefinite
suspension pending legislation—is no more reasonable.
Fortunately for the public, copyright law has a built-in accommodation for
the First Amendment values embodied by this extraordinary repository of
knowledge—the fair use right. See Golan v. Holder, 132 S. Ct. 873, 890 (2012).
Fair use provides the Court with the equitable means to allow the public to benefit
from this resource in a manner that respects the law and the interests of authors.
Appellants, however, seek to deprive HDL and libraries generally of the fair
use right. They contend that the library exception in 17 U.S.C. § 108 “should guide
the fair use analysis”—with a heavy hand: if library activities fall outside
Section 108, that fact “should weigh heavily against a finding of fair use.”
Appellants Br. at 30.
Appellants take this view notwithstanding the plain language of
Section 108(f)(4) that nothing in Section 108 “in any way affects the right of fair
use as provided by section 17 ….” Appellants’ interpretation of Section 108

2

conflicts with the legislative history and the structure of the Copyright Act.
Congress included the savings clause in Section 108(f)(4) to preclude Section 108
being applied in precisely the manner that Appellants propose.
Appellants’ interpretation of Section 108 would have repercussions far
beyond pulling the plug on HDL and its benefits to research and accessibility. It
would prevent libraries from performing some of their most basic functions, from
film preservation to Internet access. The law does not require this absurd result.
The District Court correctly applied the fair use doctrine to the facts of this
case. HDL is consistent with research libraries’ best practices. Preservation is a
quintessential fair use. The District Court’s fair use finding does not usurp
Congressional authority, and legislation addressing mass digitization is not
imminent. Supreme Court precedent allows fair use to be applied to far larger
amounts of copying than is at issue in this case. Additionally, Appellants’ litigation
choices tilt the equities in favor of fair use.
Finally, the District Court’s alternative ruling that 17 U.S.C. § 121 permits
HDL should also be affirmed.
ARGUMENT
I.

APPELLANTS’ READING OF SECTION 108 WOULD OUTLAW
WELL-ESTABLISHED LIBRARY PRACTICES.
In the District Court, Appellants argued that the Section 108 library

exceptions represented the totality of the exceptions to the reproduction and
3

distribution rights available to libraries. Under Appellants’ original position,
libraries could not employ the first sale doctrine to circulate books, see Kirtsaeng
v. John Wiley & Sons, Inc., 133 S. Ct. 1351, 1364 (2013); nor Section 117(a) to
copy software into their computers’ memory; nor Section 109(c) to display book
covers and posters in exhibitions; nor Section 110(1) to perform films in
classrooms; nor Section 110(2) to perform and display works in distance
education; nor Section 121 to make and distribute copies in accessible formats.
Further, Appellants argued that Section 108 precluded libraries from asserting the
fair use right. The District Court correctly rejected these assertions.
Now Appellants more narrowly argue that HathiTrust “exceeded many of
the express limitations of Section 108, and these violations should weigh heavily
against a finding of fair use.” Appellants Br. at 30.2 Libraries rely on fair use to
engage in a wide range of activities not covered by Section 108. If Appellants’
baseless position were correct, libraries across the country would likely infringe
copyright millions of times every day.
A.

Appellants’ Understanding of Section 108 Would Prevent
Libraries From Providing Internet Access to Users.

A major library function threatened by Appellants’ interpretation of
Section 108 is providing Internet access for underserved communities. In 2009,

2

Appellants persist in referring to “violations” of Section 108 or 121. One cannot
“violate” an exception.
4

over 77 million people accessed the Internet from public libraries in the United
States. Samantha Becker, et al., Opportunity for All: How the American Public
Benefits from Internet Access at U.S. Libraries 2 (2010). Forty-four percent of
people below the poverty line used library computers for Internet access and other
services. Among young adults below the poverty line, the level of usage increased
to 61%. Forty-two percent of the people who accessed the Internet from public
libraries did so for educational purposes, 40% for employment matters, 37% for
healthcare, and 34% for government and legal matters. Id. at 5-8.
Whenever a user views a website, the browser caches a copy of the website
in the computer’s memory. Courts have treated this cache copy as a fair use.
Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1169-70 (9th Cir. 2007).
Librarians and library users make hundreds of thousands, if not millions, of such
copies every day. Because the cache copying by libraries in the course of Internet
browsing wildly exceeds that authorized by Section 108, “these violations should
weigh heavily against a finding of fair use.” Appellants Br. at 30. Appellants’
reading similarly would weigh against a librarian or user printing out a page from a
website, an obvious fair use for which Section 108 makes no provision.
B.

Plaintiffs’ Reading of Section 108 Precludes Many Other
Important Library Activities.

Libraries regularly rely upon fair use to perform a wide range of completely
non-controversial practices. Libraries make preservation copies of musical,
5

pictorial, graphic or sculptural works, and motion pictures—all categories of works
not covered by Section 108. See 17 U.S.C. § 108(i); ARL, Code of Best Practices
in Fair Use for Academic and Research Libraries 17-18 (2012) (“Code”).
Libraries archive websites of significant cultural or historical interest. Code at 26.
They reproduce selections from collection materials to publicize their activities or
to create physical and virtual exhibitions. Id. at 15. Academic libraries copy
material into institutional digital repositories and make deposited works publicly
available. Id. at 23. School libraries make multiple copies of appropriate portions
of works for classroom use.
The Library of Congress, where the Copyright Office resides, relies heavily
on fair use. For numerous collections, the Library of Congress states that it is
providing online access to items “under an assertion of fair use” if “despite
extensive research, the Library has been unable to identify” the rightsholder. E.g.,
Library of Congress, Copyright and Other Restrictions, Prosperity and Thrift,
http://memory.loc.gov/ammem/coolhtml/ccres.html. Similar language appears on
the copyright pages of more than a dozen other collections. Under Appellants’
interpretation of Section 108, the Library of Congress is a serial copyright
infringer.3

3

Other federal libraries also rely on fair use. E.g., Smithsonian Institution
Libraries, Proceedings of the National Academy of Sciences of the United States,
Electronic
Resources
from
the
Smithsonian
Libraries,
6

II.

ACTIVITIES OUTSIDE SECTIONS 108 OR 121 CAN STILL
QUALIFY FOR A FAIR USE FINDING.
Congress did not intend for the specific limitations in the Copyright Act to

constrain the availability of the fair use right. This legislative intent is especially
clear with respect to Section 108, where Congress included a specific savings
clause. Appellants’ interpretation of Section 108 asks this Court to ignore the plain
meaning of Section 108, legislative intent, and common sense.
A.

The Copyright Act’s Specific Exceptions Do Not Limit the
Applicability of Fair Use.

The Copyright Act’s specific exceptions narrowly define which uses of
which works may be made by which actors under which circumstances. In
contrast, Section 107 lists four general, nonexclusive factors a court must weigh in
evaluating whether a particular use is fair. While the specific exceptions provide
courts with little discretion, fair use is “an ‘equitable rule of reason’ which ‘permits
courts to avoid rigid application of the copyright statute when, on occasion, it
would stifle the very creativity which that law is designed to foster.” Stewart v.
Abend, 495 U.S. 207, 236 (1990) (internal citations omitted).
The legislative history of the Copyright Act stresses that a specific exception
does not limit the availability of fair use for conduct that does not fall within its

http://www.sil.si.edu/eresources/silpurl.cfm?purl=10916490. (“interlibrary loan
requests ‘are to be filled in compliance with the U.S. Copyright Act and fair use
provisions of the federal Copyright Act.’”).
7

scope. One congressional report noted that “[a] question that came up several times
during the hearings was whether the specific exemptions for certain uses … should
be in addition to or instead of fair use …. [W]hile some of the exemptions in
sections 108 through 116 may overlap the fair use doctrine, they are not intended
to supersede it.” H.R. Rep. No. 90-83, at 36-37 (1967). The Register of Copyrights,
in a report that led to the TEACH Act, stated: “[f]air use could apply as well to
instructional transmissions not covered by the changes to section 110(2)
recommended above. Thus, for example, the performance of more than a limited
portion of a dramatic work in a distance education program might qualify as fair
use in appropriate circumstances.” U.S. Copyright Office, Report on Copyright
and Digital Distance Education 162 (1999). The Conference Report that
accompanied the enactment of the TEACH Act reiterated that the “continued
availability of the fair use doctrine” was critical to the Office’s recommendation
that Congress pass the Act. H.R. Rep. No. 107-685, at 234 (2002) (Conf. Rep.).
Similarly, judicial opinions addressing the relationship between specific
exceptions and fair use state that a defendant’s failure to qualify for a specific
exception does not prejudice its fair use rights. In Sega Enters., Ltd. v. Accolade,
Inc., 977 F.2d 1510, 1520-21 (9th Cir. 1992), Sega argued that because Accolade’s
disassembly of Sega’s computer program did not fall within the Section 117
exception relating to software, Accolade could not rely upon Section 107. Sega’s

8

position was that Section 117 “constitutes a legislative determination that any
copying of a computer program other than that authorized by section 117 cannot be
considered a fair use of that program under section 107.” Id. The Ninth Circuit
responded that this “argument verges on the frivolous. Each of the exclusive rights
created by section 106 of the Copyright Act is expressly made subject to all of the
limitations contained in sections 107 through 120.” Id. at 1521. The court went on
to observe that
sections 107 and 117 serve entirely different functions. Section 117
defines a narrow category of copying that is lawful per se .… The fact
that Congress has not chosen to provide a per se exemption to section
106 for disassembly does not mean that particular instances of
disassembly may not constitute fair use.
Id. Before the District Court, Appellants attempted to distinguish Sega on its facts,
but the principle of specific exceptions not restricting fair use applies nonetheless.
See also Encyclopedia Britannica Educ. Corp. v. Crooks, 447 F. Supp. 243, 249
n.7 (W.D.N.Y. 1978) (“The legislative history … makes clear that the statutory
exemptions were intended to supplement rather than supersede the doctrine of fair
use.”). In short, a defendant’s inability to meet the requirements of a specific
exception cannot have a negative effect on its assertion of fair use.4

4

To the contrary, when a defendant engages in the type of activity permitted by a
specific exception, but does not qualify for a technical reason, the court should
give weight to the defendant’s substantial compliance with the exception when
considering the first factor. Jonathan Band, The Impact of Substantial Compliance
with Copyright Exceptions on Fair Use, 59 J. Copyright Soc’y 453 (2012).
9

B.

Section 108(f)(4) Unambiguously Provides that Section 108 Does
Not Limit The Applicability of Fair Use to Libraries.

Section 108(f)(4) makes explicit what is implicit in the Copyright Act’s
other specific exceptions: that nothing in Section 108 “in any way affects the right
of fair use as provided by section 107 ….” The legislative history of this savings
clause underscores that it means exactly what it says: libraries can rely on fair use
to engage in activities whether or not they are explicitly permitted under
Section 108. While Section 108 creates a safe harbor where libraries can make
settled uses without engaging in a fair use analysis, nothing in Section 108 weighs
against libraries making fair uses.
The 1909 Copyright Act did not contain any exceptions for libraries; instead,
libraries relied entirely on the federal common law of fair use. When the possibility
of a specific exception for libraries was raised during the process that resulted in
the 1976 Copyright Act, library representatives expressed concern that the specific
exception might limit the availability of fair use to libraries. Mary Rasenberger and
Chris Weston, Overview of the Libraries and Archives Exception in the Copyright
Act 13 (2005) (“Library representatives … asserted that there was ‘great danger’ in
the statutory language, because it would freeze what was allowable at the very
moment that technology is advancing.”).
Accordingly, when the Senate Subcommittee on Patents, Trademarks, and
Copyrights reported out the bill in December 1969 with the basic elements of what
10

is currently Section 108, it included the language now in Section 108(f)(4). The
Subcommittee report’s discussion of Section 108 stated: “[t]he rights given to the
libraries and archives by this provision of the bill are in addition to those granted
under the fair-use doctrine.” S. Rep. No. 91-1219, at 6 (1970). Section 108(f)(4)
was intended to ensure that Section 108 had no negative impact on fair use.
The House Judiciary Committee Report on the 1976 Act quoted the
language of Section 108(f)(4) and then explained that “[n]o provision of section
108 is intended to take away any rights existing under the fair use doctrine.” H.R.
Rep. No. 94-1476, at 74 (1976). The House Report’s discussion of other parts of
Section 108 reinforces the point that Section 108(f)(4)’s purpose was to prevent
any implication that Section 108 limited fair use. In the context of Section 108(h),
the House Report observed:
Although subsection (h) generally removes musical, graphic, and
audiovisual works from the specific exemptions of section 108, it is
important to recognize that the doctrine of fair use under section 107
remains fully applicable to the photocopying or other reproduction of
such works.
H.R. Rep. No. 94-1476, at 78.
In 2005, the Library of Congress sponsored an independent review of
Section 108 by a study group consisting of publishers and librarians. The Study
Group observed, “[i]n addition to section 108, libraries and archives rely upon fair
use to make copies of copyrighted works for preservation and other purposes.” The

11

Section 108 Study Group Report 21 (2008). The Study Group stated that “section
108 was not intended to affect fair use. Certain preservation activities fall within
the scope of fair use, regardless of whether they would be permitted by section
108.” Id. at 22.
Copyright scholars agree that Section 108 does not limit the availability of
Section 107 to libraries. 4 William Patry, Patry on Copyright § 11:3 (2011) (“[I]f
for one reason or another, certain copying by a library does not qualify for the
section 108 exemption …, the library’s photocopying would be evaluated under
the same criteria of section 107 as other asserted fair uses. This interpretation not
only gives meaning to both sections but is fully in line with the earlier committee
reports.”); 4-13 Melville Nimmer & David Nimmer, Nimmer on Copyright § 13.05
(2011) (“[I]f a given library or archive does not qualify for the Section 108
exemption, or if a qualifying library or archive engages in photocopying practices
that exceed the scope of the Section 108 exemption, the defense of fair use may
still be available.”).
Appellants argue that a plain reading of Section 108(f)(4) reads Section 108
out of the Copyright Act. Appellants Br. at 30. However, it is Appellants who seek
to read Section 108(f)(4) out of the statute. They do not offer an alternative
interpretation; they simply contend that it does not mean what it clearly says.

12

Contrary to Appellants’ assertions, the plain language of Section 108(f)(4)
does not read Section 108 out of the statute. Section 108 sets forth certain
situations where a library can always make reproductions and distributions without
the right holder’s authorization. Some of these actions might be fair uses, but
Section 108 provides legal certainty that encourages the library to proceed without
conducting the more complex fair use analysis.5 Other actions under Section 108
might be beyond what fair use would allow, yet Congress in its balancing of
competing interests decided to permit them. Section 108(f)(4) clarifies that
libraries can rely on Section 108 when they meet its detailed criteria and on
Section 107 in other circumstances, when they satisfy its more general criteria.
Appellants mischaracterize the Copyright Office’s 1983 report on Section
108 as supporting their interpretation. The report actually recognizes that fair use is
available to libraries in situations not authorized by Section 108.6 Read in context,

5

See also Randolph D. Moss, Office of Legal Counsel, Whether And Under What
Circumstances Government Reproduction Of Copyrighted Materials Is A
Noninfringing “Fair Use” Under Section 107 Of The Copyright Act Of 1976 14
n.12 (1999). (“[S]ection 108 of the 1976 Act does not narrow the protection for fair
use provided by the common law doctrine codified in section 107 …. Section 108
thus fairly can be viewed as a very valuable—and not superfluous—safe harbor: If
a certain library practice is noninfringing under the specific and detailed provisions
of section 108(a) … a library need not be concerned about how that particular
photocopying practice would fare under section 107’s more complex and
indeterminate fair use standards.”)
6
U.S. Copyright Office, Library Reproduction of Copyrighted Works (17 U.S.C.
108) 98 (1983) (“[Section 108(f)(4)] means that the ‘tests’ implicit in § 107 may be
applied to photocopying ‘beyond’ § 108 …”).
13

what the 1983 report suggests is not that the exhaustion of Section 108 rights
should weigh against fair use, but rather that the copying done under Section 108
should be considered in the equitable balancing that constitutes a fair use
evaluation.7 This is a far cry from Appellants’ proposed rule.
C.

Section 121 Does Not Limit the Applicability of Fair Use.

Section 121 of the Copyright Act permits ‘authorized entities’ to make
accessible format copies of literary works for people with print disabilities. As
discussed below in greater detail, amici library associations agree with the District
Court’s finding that Section 121 permits HathiTrust’s activities on behalf of the
print disabled. We also support the District Court’s alternative holding that these
activities are fair use. While Appellants do not argue that copying in excess of
Section 121 weighs against a fair use finding, its amici do. See Motion Picture
Association of America (“MPAA”) Br. at 12 n.4. However, the authorities cited in
section II.A., supra, make clear that Congress did not intend for the existence of a
specific exception to restrict in any way the availability of fair use for an action
that falls outside the scope of the specific exception. These authorities apply with
equal force to Section 121 as they do Section 108.

7

For example, in assessing the fourth fair use factor, the market effect of a
library’s use of a particular work, a court should not ignore uses of that work the
library already made pursuant to Section 108.
14

The absence in Section 121 of a savings clause similar to Section 108(f)(4)
in no way implies Section 121 has a limiting effect on Section 107. As discussed
above, Congress included Section 108(f)(4) to address concerns that were raised by
the library community with respect to the Section 108; thus, Section 108(f)(4) does
not create a negative implication with respect to any other section. Moreover,
Section 108(f)(4) refers not only to the impact of Section 108 on fair use; it also
provides that “nothing in this section … in any way affects … any contractual
obligation assumed at any time by the library ….” If the absence of provisions like
Section 108(f)(4) in other exceptions such as Section 121 implies that these
exceptions could have a negative impact on fair use, then the absence of similar
savings clauses in other exceptions also implies that those exceptions could have
an adverse impact on contractual obligations assumed by libraries. Under this
logic, courts could interpret the absence of a contractual savings clause in Section
107 as reflecting Congressional intent that Section 107 preempts license terms
restricting fair use—a result Appellants and their amici no doubt would oppose.
D.

Appellants’ Understanding of the Impact of Specific Exceptions
on Fair Use Is Inconsistent With the Privileged Status Congress
Has Accorded Libraries In Title 17.

Recognizing the importance of libraries, Congress has accorded them
privileged status in Title 17. In addition to Section 108, Congress has provided
libraries with other specific shelters against Title 17 liability. Section 109(b)(2)

15

excludes libraries from the prohibition on software rental. Section 504(c)(2) shields
libraries from statutory damages liability where they reasonably (but incorrectly)
believed their actions constituted fair use.8 Section 602(a)(3)(C) provides
organizations operated for scholarly, educational, or religious purposes with an
exception to the importation right for “library lending or archival purposes.”
Section 1201(d) of the Digital Millennium Copyright Act (“DMCA”) gives
libraries the right to circumvent technological protection measures for purposes of
determining whether to acquire a copy of the work. Section 1203(c)(5)(B) allows a
court to remit statutory damages to libraries in cases of innocent violations of the
DMCA. Section 1204(b) excludes libraries from criminal liability for DMCA
violations.
Nonetheless, Appellants would as a practical matter deny libraries the
benefit of the most significant privilege of all: fair use. The Supreme Court
recently described fair use as part of “the traditional contours of copyright
protection”

and

one

of

copyright

law’s

“built-in

First

Amendment

accommodations.” Golan, 132 S. Ct. at 890. It is inconceivable that Congress
intended to withhold the protection of this crucial right from non-profit libraries

8

The existence of this provision cuts against Appellants’ interpretation of the effect
of Section 108. If exceeding Section 108 weighed against fair use, a library could
rarely have reasonable grounds for believing its use was fair.
16

while allowing it to be employed regularly by highly profitable commercial
entities. See Jonathan Band, Google and Fair Use, 3 J. Bus. & Tech. Law 1 (2008).
III.

THE DISTRICT COURT CORRECTLY FOUND THAT HDL IS A
FAIR USE
Appellees in their briefs respond comprehensively to Appellants’ arguments

concerning fair use. Here we address only a few points pertinent to libraries.
A.

HDL Embodies Widespread Best Practices for Fair Use

Appellants assert that HathiTrust’s activities fall far beyond the bounds of
fair use. In fact, HDL’s design reflects a widespread fair use consensus among
libraries, as embodied in the ARL’s Code of Best Practices in Fair Use for
Academic and Research Libraries.
The development of the Code was prompted by Professor Michael
Madison’s insight (following a review of numerous fair use decisions) that the
courts were
implicitly or explicitly, asking about habit, custom, and social context
of the use, using what Madison termed a ‘pattern-oriented’ approach
to fair use reasoning. If the use was normal in a community, and you
could understand how it was different from the original market use,
then judges typically decided for fair use.
Patricia Aufderheide and Peter Jaszi, Reclaiming Fair Use 71 (2011). Based on
this insight, with the goal of making fair use analysis more predictable for
librarians, ARL undertook an effort to “document[] the considered views of the
library community about best practices in fair use, drawn from the actual practices

17

and experience of the library community itself.” Code at 3. The resulting code of
best practices identified “the library community’s current consensus about
acceptable practices for the fair use of copyrighted materials…in certain recurrent
situations.” Id.
Many of the activities that are the subject of this litigation are consistent
with the Code. For example, the Code affirms that “[i]t is fair use for libraries to
develop and facilitate the development of digital databases of collection items to
enable nonconsumptive analysis across the collection for both scholarly and
reference purposes.” Id. at 25. The Code explains:
librarians have always played an important role in conducting and
supporting scholarship in disciplines that examine trends and changes
across broad swaths of information, e.g., information science,
linguistics, bibliography, and history of science.
Id. at 24. And that:
Nonconsumptive uses are highly transformative. Digitizing and
indexing works for purposes such as statistical meta-analysis and
search creates a powerful new scholarly resource that is not at all a
mere substitute for the original work. The analyses facilitated by
scanning for nonconsumptive use do not use the works for their
original intended purposes; no person ever “reads” the underlying
work or works. Instead, this kind of analysis focuses on the
underlying facts about a collection of works … rather than the
protected expression of any single work.
Id. at 25. These are precisely the types of uses HDL enables.
The Code also addresses providing access to materials to students and
faculty with disabilities. The Code explains: “[p]rint-disabled academic and

18

research library patrons require access to readable text in order to function as full
members of an academic community ….” Id. at 21. HDL, of course, does just that.
Finally, the Code addresses preservation, stating that “[i]t is fair use to make
digital copies of collection items that are likely to deteriorate, or that exist only in
difficult-to-access formats, for purposes of preservation, and to make those copies
available as surrogates for fragile or otherwise inaccessible materials.” Id. at 18.
Again, HDL serves that very purpose.
B.

Preservation Is Fair Use.

With respect to HathiTrust’s preservation activities, Appellants state that
HathiTrust is digitizing and storing millions of books “that have no legitimate need
to be ‘preserved.’” Appellants Br. at 36. This statement reveals profound ignorance
about the function of libraries and the nature of preservation. One of the primary
missions of libraries is to preserve our cultural and intellectual heritage for future
generations. Libraries think in terms of centuries, not quarterly royalty statements.
Libraries need to ensure that the materials presently in our collections are
accessible to current users, that these materials will be available to researchers in
the future, and that the libraries can accommodate the growth of their collections
so that new material can also be preserved. Balancing these competing interests
involves a complex and costly process of deaccession, off-site storage,
photocopying, and format shifting employing state of the art technologies. The

19

safest, most effective way to preserve an item is to reproduce it before it has begun
to deteriorate.9 Many HathiTrust members were already digitally preserving the
works in their collections before they began working with Google to digitize their
collections more rapidly, thereby greatly enhancing their ability to fulfill their
preservation mission. Because the overwhelming majority of the works in HDL are
out-of-print, and the few that are in-print are not digitally available, there was no
alternative avenue for digital preservation.
C.

A Fair Use Finding Does Not Usurp Congressional Authority.

Appellants and their amici repeatedly assert that the copyright issues relating
to the mass digitization of books are better left to Congress, and that the District
Court usurped Congressional authority by creating a “blanket exception” for mass
digitization. See Appellants Br. at 3; Association of American Publishers (“AAP”)
Br. at 4-5. The District Court did nothing of the sort. Judge Baer was presented
with a specific case, and he ruled that a discrete set of actions by a particular group
of defendants fell within the scope of the fair use right. AAP states that the
Supreme Court in Sony Corp. of America v. Universal City Studios, Inc., 464 U.S.
417, 431 (1984), noted that it was Congress’ responsibility to adapt the copyright
laws in response to changes in technology. However, AAP fails to acknowledge

9

At pages 7-8 of their brief, Appellees HathiTrust, et al., describe the numerous
threats to books in library collections: natural disasters, wars, high acid paper, and
heavy use.
20

what the Court stated in the final paragraph of the opinion: “[i]t may well be that
Congress will take a fresh look at this new technology,” but it was the Court’s job
to apply the copyright statute “as it now reads.” Sony, 464 U.S. at 456. That is
precisely what the District Court did.
In support of the contention that the District Court overreached, MPAA
states that the District Court preempted ongoing discussions concerning mass
digitization, MPAA Br. at 3, and AAP asserts that “the legislative process is
already well underway for revised exceptions and limitations to copyright that
would address the uses at issue in this case.” AAP Br. at 6. Contrary to AAP’s
suggestion, the legislative process for addressing mass digitization, Section 108
reform, and orphan works is not well underway. To be sure, the Copyright Office
in October 2011 did “publish an analysis addressing the ‘issues raised by the
intersection between copyright law and the mass digitization of books,’ including
the issues raised by the Google Books case and this case,” AAP Br. at 8, but it
offered no legislative proposals.
Similarly, after three contentious years of deliberations, the Section 108
Study Group convened by the Library of Congress issued a report in 2008
containing several high level recommendations for legislative change, none of
which are applicable to the facts of this case. In the five years since, the Copyright

21

Office has not proposed statutory language nor has any member of Congress
introduced a bill implementing the Study Group’s recommendations.
The history of orphan works legislation is no more encouraging. In 2006,
after stakeholder roundtables, the Copyright Office issued a report on orphan
works that included draft legislation. Legislation was introduced in the 109th
Congress in 2006 and in the 110th Congress in 2008. Shawn Bentley Orphan
Works Act, S. 2913, 110th Cong. (2008); Orphan Works Act, H.R. 5889, 110th
Cong. (2008); Orphan Works Act, H.R. 5439, 109th Cong. (2006). The legislation
passed the Senate in 2009, but died in the House in the face of furious opposition
from visual artists and Appellants’ amicus MPAA. Legislation has not been
reintroduced in the subsequent three Congresses. In October 2012, the Copyright
Office published a notice of inquiry concerning orphan works. Orphan Works and
Mass Digitization, 77 Fed. Reg. 64555 (Oct. 22, 2012). In reply comments filed by
amici library associations, we observed that the initial comments were “literally all
over the map. There is less agreement now than six years ago both on the existence
of a problem and the best approach to solve it.” Reply Comments of LCA to the
Copyright Office 4 (Mar. 5, 2013). Indeed, Appellant Authors Guild stated that the
orphan works problem was “vastly overstated,” signaling that it would oppose
orphan works legislation. Comments of the Authors Guild to the Copyright Office
2 (Feb. 4, 2013).

22

This March, in a hearing before the House Subcommittee on Courts,
Intellectual Property, and the Internet, the Register of Copyrights called for
Congress to begin considering “the next great copyright act.” The Register’s Call
for Updates to U.S. Copyright Law: Hearing Before the Subcomm. on Courts,
Intellectual Prop. and the Internet, 113th Cong. (2013) (statement of Maria
Pallante, Register of Copyrights, U.S. Copyright Office). She explained that
Congress should approach a long list of issues, including library exceptions,
orphan works, and mass digitization, “comprehensively over the next few years.”
She noted that the Copyright Act of 1976 required over two decades to negotiate,
clearly implying that Congress should start its comprehensive review soon because
the next revision may also require decades of deliberations. This April, House
Judiciary Committee Chairman Bob Goodlatte announced that the Committee
would hold a “comprehensive series of hearings on U.S. copyright law” with the
goal of determining “whether the laws are still working in the digital age.” Press
Release, Bob Goodlatte, Chairman of the House Judiciary Comm., Chairman
Goodlatte Announces Comprehensive Review of Copyright Law (Apr. 24, 2013).
In short, the legislative process for potentially addressing the issues
underlying this litigation is not “well underway.” It has barely begun. And given
the vociferous opposition to orphan works legislation and the Google Books
Settlement, there is no reason to assume that a thorough overhaul of the copyright

23

laws will conclude successfully, or that it will speak directly to the issues raised by
this case.10
Fortunately, a “legislative solution” already exists: the fair use right,
codified at 17 U.S.C. § 107. The District Court properly used the equitable power
granted it by Congress in Section 107 to allow HDL to offer socially valuable
services that cause Appellants no economic harm,11 such as search, nonconsumptive research, preservation, and access to full text by the print disabled.
D.

Fair Use Permits Digitization of Numerous Works

AAP argues that “Appellees’ unprecedented uses far exceed anything
contemplated by Congress as falling within … fair use and beyond what any single
sitting judge can properly authorize.” AAP Br. at 15. AAP adds that “Congress
never contemplated that … Section 107 … would be used to copy works en
masse.” Id. at 15 n.16. AAP evidently overlooks the Supreme Court’s decision in
Sony, where the Court found viewers’ time-shifting of over-the-air broadcasts to be
a fair use. Consistent with that decision, every week tens of millions of American
households record hundreds of millions of hours of television broadcasts with their

10

Accordingly, the remedy Appellants seek, the impounding of the HDL “pending
an appropriate act of Congress,” Complaint at 23, is completely implausible.
11
Appellees discuss the absence of market harm in detail. Here we just note that
the Copyright Office’s mass digitization report emphasizes the infeasibility of
individual licensing arrangements and the ineffectiveness of voluntary collective
licensing for a project like HDL. U.S. Copyright Office, Legal Issues in Mass
Digitization: A Preliminary Analysis and Discussion Document 30-34 (2011).
24

DVRs. Likewise, under Perfect 10 v. Amazon, commercial search engines such as
Google and Bing cache billions of web pages on an ongoing basis. Relative to
these examples of copying, HDL is a modest undertaking.
E.

Appellants’ Litigation Choices Tilt the Equities In Favor Of
HathiTrust

As this Court reviews the District Court’s equitable analysis that is at the
heart of the fair use calculus, it should be aware that the current situation—where
the Court must consider the legality of an existing digital library of over 10 million
books—is in large measure the result of litigation choices made by Appellants.
This case is born of the Google Books Project, which has been the subject of
litigation since 2005. When Appellants sued Google in 2005, they chose not to
seek preliminary relief or sue the libraries. When Appellants entered into
settlement discussions with Google, they chose not to demand that Google cease
scanning books and providing copies of the scans to libraries. During the course of
the three years of settlement negotiations with Google, they chose not to insist that
Google discontinue scanning. When the Appellants agreed to a settlement with
Google in 2008, they once again chose not to insist that Google cease scanning
pending approval of the settlement. In short, Appellants’ litigation decisions over
the past eight years have allowed Google to scan millions of books and to provide
copies of those scans to partner libraries.

25

Moreover, the structure of HDL is the result of the settlement that
Appellants agreed to and attempted to convince class members and the presiding
judge to accept. Under the original agreements between Google and its partner
libraries, Google promised to provide each library with a scan of the books that
that library made available to Google for scanning. The settlement, by contrast,
allowed for the creation of the much larger Research Corpus (“Corpus”), a set of
all the scans made by Google in connection to the Library Project. Amended
Settlement Agreement, at 1.132, 7.2(d), Authors Guild, Inc. v. Google, Inc., No.
05-cv-8136-DC (S.D.N.Y. Nov. 13, 2009) (“ASA”). The Corpus could be housed
at two host sites selected by the libraries participating in the Library Project. ASA
at 7.2(d)(ii). HDL consists primarily of the Corpus contemplated by the settlement.
Accordingly, it is completely disingenuous for Appellants to express shock at the
“extraordinary and unprecedented” mass digitization project represented by HDL,
when it is a product of the settlement they helped design.12
Under the settlement, qualified researchers could use the Corpus for “nonconsumptive research,” computational analysis of the books that does not require
the reading of the books’ intellectual content. ASA at 1.93. This is precisely one of
the major uses of HDL today. But the Corpus played another, more profound role

12

Similarly, Appellants’ concerns about the “immense security risks” posed by
HDL, Appellants Br. at 40, ring hollow given that HDL implements the same
security measures imposed by the settlement on the Corpus. ASA at 8.2.
26

in the architecture of the settlement. During the extensive public debate over the
Library Project, some authors expressed concern that a single corporation would
have exclusive control over a vast digital library of all published books. See, e.g.,
Siva Vaidhyanathan, A Risky Gamble with Google, Chron. Higher Educ., Dec. 2,
2005, at B7-10. Essentially, they worried about the privatization of knowledge.
The settlement addressed that problem by creating the Corpus as an alternative
digital library under the control of the nation’s most respected libraries – the very
entities that had served as the custodians of the books contained in the digital
library. The Corpus represented a fail-safe that would protect the interests of the
plaintiffs to the Google litigation – including the Appellants here – and the public
at large in the event that Google went out of business or became “evil” by
restricting access to or otherwise misusing the contents of the digital library.
Judge Chin rejected the settlement. But that does not mean that this valuable
resource that resulted, in significant part, from Appellants’ own litigation decisions
should be destroyed or “mothballed” until Congress takes action. The District
Court correctly exercised its equitable power to find that the existence and use of
HDL is a fair use. The public interest and core fair use principles counsel firmly in
favor of affirmance.

27

IV.

THE DISTRICT COURT CORRECTLY FOUND THAT HDL FALLS
WITHIN SECTION 121
Appellants argue that the District Court erred by holding that the University

of Michigan was an authorized entity within the meaning of Section 121. As with
Section 108(f)(4), Appellants ask this Court to ignore the plain language of the
statute. Under Section 121(d)(1), an “‘authorized entity’ means a nonprofit
organization or a governmental agency that has a primary mission to provide
specialized services relating to training, education, or adaptive reading or
information access needs of blind … persons ….” Appellants provide no statutory
basis for excluding the University of Michigan or HDL from this definition.
Instead, they argue that “it simply cannot be that every library in the country”
could fall within the definition of authorized entity. Appellants Br. at 49. But why
not? If a particular library serves people with print disabilities, then one of that
library’s primary missions is to serve that community.13 That this exception could
theoretically be used by thousands of libraries does not argue for a narrower
application of the definition. More than ten thousand libraries qualify for Section
108. Every person that owns software can use Section 117. The 300 million
Americans that own a lawfully made copy of a copyright protected work can rely
on the first sale doctrine.

13

Every state code requires the funding of libraries to provide services to the blind.
See, e.g., N.Y. Educ. Law § 273(1)(i) (Consol. 2013).
28

Appellants claim that they “do not seek a remedy that would foreclose the
print disabled from gaining access to the digital library,” Appellants Br. at 51, but
they would foreclose that access under Section 121 and fair use. So how exactly do
they propose to provide access?
AAP likewise would deny blind students the benefit of Section 121 or fair
use. AAP correctly claims that some publishers have begun to provide textbooks
with accessible features. In contrast, HDL enables blind students and faculty to
perform research on millions of works of scholarship and literature, the vast
majority of which are out-of-print and will never be made available by their
publishers in accessible formats. A viable market for accessible versions of the
books in HDL is implausible.
CONCLUSION
For the foregoing reasons, this Court should affirm the District Court.
Dated: June 3, 2013

Respectfully submitted,
/s/ Jonathan Band
Jonathan Band
Jonathan Band PLLC
21 Dupont Circle NW, 8th Floor
Washington, D.C., 20036
202-296-5675
[e-mail]
Counsel for Amici

29

CERTIFICATE OF COMPLIANCE
1.

This brief complies with the type-volume limitations of Fed. R. App.

P. 32(a)(7)(B) because it contains 6,953 words, excluding the parts of the brief
exempted by Fed. R. App. P. 32(a)(7)(B)(iii).
2.

This brief complies with the typeface requirements of Fed. R. App.

P. 32(a)(5) and the types style requirements of Fed. R. App. P. 32(a)(6) because it
has been prepared in a proportionally spaced typeface using Microsoft Word in 14
point Times New Roman.
Dated: June 3, 2013

/s/ Jonathan Band
Jonathan Band

30

CERTIFICATE OF SERVICE
I hereby certify, that on June 3, 2013, a true and correct copy of the
foregoing Brief of Amici Curiae American Library Association, Association of
College and Research Libraries, and Association of Research Libraries was timely
filed in accordance with FRAP 25(a)(2)(D) and served on all counsel of record via
CM/ECF.
I further certify that on June 4, 2013, I will cause six (6) copies of the
foregoing Brief of Amici Curiae American Library Association, Association of
College and Research Libraries, and Association of Research Libraries to be
delivered overnight to the Clerk of the United States Court of Appeals for the
Second Circuit.
Dated: June 3, 2013

/s/ Jonathan Band
Jonathan Band

31