Authors Guild, Inc. v. Hathitrust

Filing 158

AMICUS BRIEF, on behalf of Amicus Curiae Electronic Frontier Foundation, Public Knowledge, and Center for Democracy & Technology, FILED. Service date 06/04/2013 by CM/ECF. [955879] [12-4547]--[Edited 06/05/2013 by JW]

12-4547-cv

d
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 , A NDRE ROY, J AMES S HAPIRO , D ANIELE S IMPSON ,
T.J. STILES, FAY WELDON, THE AUTHORS LEAGUE FUND, INC., AUTHORS’
LICENSING AND COLLECTING S OCIETY, S VERIGES F ORFATTARFORBUND ,
NORSK FAGLITTERAER FORFATTERO OG OVERSETTERFORENING, THE WRITERS’
UNION OF CANADA, PAT CUMMINGS, ERIK GRUNDSTROM, HELGE RONNING,
JACK R. SALAMANCA,
Plaintiffs-Appellants,
—against—
(caption continued on inside cover)
ON APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK

BRIEF FOR THE ELECTRONIC FRONTIER FOUNDATION,
PUBLIC KNOWLEDGE, AND THE CENTER FOR DEMOCRACY
& TECHNOLOGY AS AMICI CURIAE SUPPORTING APPELLEES

CORYNNE MCSHERRY
DANIEL NAZER
ELECTRONIC FRONTIER
FOUNDATION
815 Eddy Street
San Francisco, California 94110
[phone]
Of Counsel to the Electronic
Frontier Foundation

RODERICK M. THOMPSON
STEPHANIE P. SKAFF
DEEPAK GUPTA
ROCHELLE L. WOODS
FARELLA BRAUN + MARTEL LLP
235 Montgomery Street, 17th Floor
San Francisco, California 94104
[phone]
Counsel for Amici Curiae

(Counsel continued on inside cover)

H ATHITRUST, C ORNELL U NIVERSITY, M ARY S UE C OLEMAN , President,
University of Michigan, MARK G. YUDOF, President, The University of California,
K EVIN R EILLY, 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.

JOHN BERGMAYER
PUBLIC KNOWLEDGE
1818 N. Street NW, Suite 410
Washington DC 20036
[phone]
Of Counsel to Public Knowledge

DAVID SOHN
CENTER FOR DEMOCRACY
& TECHNOLOGY
1634 I Street NW, #1100
Washington, DC 20006
[phone]
Of Counsel to the Center for
Democracy & Technology

CORPORATE DISCLOSURE STATEMENTS

Pursuant to Rules 26.1 and 29(c)(1) of the Federal Rules of Appellate
Procedure:
Amici the Electronic Frontier Foundation, Public Knowledge, and the
Center for Democracy & Technology certify that they are privately held
501(c)(3) non-profit corporations, that they have no parent or subsidiary
corporations, and that no publicly held company owns 10% or more of their
stock.

TABLE OF CONTENTS
Page
INTEREST OF AMICI CURIAE ........................................................ 1
ARGUMENT ....................................................................................... 2
I.

TECHNOLOGIES LIKE THE HDL ADVANCE THE CORE
VALUES OF COPYRIGHT LAW ........................................... 4
A.

B.
II.

The Purpose of Copyright Law is to Spur the Creation
and Dissemination of Knowledge to the Benefit of the
Public ............................................................................... 4
The HDL Furthers The Purpose of Copyright and Serves
the Public Interest ............................................................ 5

A FLEXIBLE FAIR USE DOCTRINE EXISTS TO PREVENT
THE STIFLING OF INNOVATION AND TO FOSTER THE
DEVELOPMENT OF POSITIVE NEW TECHNOLOGIES
LIKE THE HDL ........................................................................ 6
A.
B.

Searching and Indexing is a Transformative Use ........... 8

C.

“Copying” of Original Works Into Memory Can Be a
Transformative Use ....................................................... 10

D.
III.

Fair Use Is A Robust and Flexible Doctrine That Was
Designed to Adapt to New Technologies ....................... 7

Making the HDL Works Available To Print-Disabled
Individuals is An Additional Transformative Use ........ 12

MANY NON-EXPRESSIVE USES ARE
TRANSFORMATIVE ............................................................. 14
A.
B.

IV.

The Copyright Act Does Not Confine Fair Use Protection
to “Expressive” Uses ..................................................... 14
Courts Have Repeatedly Recognized that Transformative
Uses Need Not Be “Expressive.” .................................. 16

A TRANSFORMATIVE USE CAN BE CAPABLE OF
SERVING THE SAME PURPOSE AS THE ORIGINAL ..... 20

i

TABLE OF CONTENTS
Page
V.

LAW AND POLICY COUNSEL AGAINST CONFINING
A FAVORABLE HOLDING TO NON-COMMERCIAL
USES ....................................................................................... 22

CONCLUSION .................................................................................. 26
CERTIFICATE OF SERVICE .......................................................... 29

ii

TABLE OF AUTHORITIES
Page
FEDERAL COURT CASES
A.V. v. iParadigms, LLC,
562 F.3d 630 (4th Cir. 2009) ................................................. 11, 12, 17, 20
Am. Geophysical Union v. Texaco Inc.,
60 F.3d 913 (2d Cir. 1994) ...................................................................... 23
American Institute of Physics v. Winstead PC,
No. 3:12-cv-01230-M (N.D. Tex. Feb. 27, 2013) ................................... 18
Authors Guild, Inc. v. HathiTrust,
902 F. Supp. 2d 445 (S.D.N.Y. 2012) ............................................... 10, 13
Berlin v. E. C. Publications Inc.,
329 F.2d 541 (2d Cir. 1964) ...................................................................... 5
Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 2006) .................................................................... 16
Blanch v. Koons,
467 F.3d 244 (2d Cir. 2006) ............................................................. passim
Bond v. Blum,
317 F.3d 385 (4th Cir. 2003) ................................................................... 18
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) .............................................................. 7, 8, 14, 19, 22
Cariou v. Prince, the Second Circuit,
No. 11-1197, 2013 WL 1760521 (2d Cir. Apr. 25, 2013) .................. 16, 23
Folsom v. Marsh,
9 F.Cas. 342 (C.C.D. Mass. 1841) ........................................................... 15
Golan v. Holder,
132 S. Ct. 873 (2012) ................................................................................. 4
Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539 (1985) ................................................................................... 4
Kelly v. Arriba Soft Corp.,
336 F.3d 811 (9th Cir. 2003) ............................................................ passim
Núñez v. Caribbean International News Corp.,
235 F.3d 18 (1st Cir. 2000) ...................................................................... 21
iii

Online Policy Group v. Diebold, Inc.,
337 F. Supp. 2d 1195 (N.D. Cal. 2004) ................................................... 19
Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146 (9th Cir. 2007) ....................................................... 9, 10, 12
Rosemont Enters., Inc. v. Random House, Inc.,
366 F.2d 303 (2d Cir. 1966) ................................................................ 5, 23
Sega Enters. Ltd. v. Accolade, Inc.,
977 F.2d 1510 (9th Cir. 1992) ................................................................. 24
Sony Computer Entm’t, Inc. v. Connectix Corp.,
203 F.3d 596 (9th Cir. 2000) ................................................................... 24
Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984) ......................................................................... 7, 8, 17
Stern v. Does,
CV 09-01986, 2011 WL 997230 (C.D. Cal. Feb. 10, 2011) ................... 19
Stern v. Weinstein,
11-55436, 2013 WL 1137390 (9th Cir. Mar. 20, 2013) .......................... 19
Stewart v. Abend,
495 U.S. 207 (1990) ................................................................................... 8
Sundeman v. Seajay Soc’y, Inc.,
142 F.3d 194 (4th Cir. 1998) ................................................................... 23
FEDERAL STATUTORY AUTHORITIES
17 U.S.C.
§ 107.................................................................................................... 14, 15
FEDERAL RULES AND REGULATIONS
Fed. R. App.
P. 29(c)(5) ................................................................................................... 1
CONSTITUTIONAL PROVISIONS
U.S. Const.
Art. I, § 8, cl. 8......................................................................................... 4, 7
LEGISLATIVE MATERIALS
H.R. Rep. No. 94-1476 (1976) ....................................................................... 8

iv

ADDITIONAL AUTHORITIES
3 Boswell’s Life of Johnson (G. Hill ed. 1934)............................................ 22
Computer &Communications Industry Association, Fair Use in the U.S.
Economy (2010),
http://www.ccianet.org/CCIA/files/ccLibraryFiles/Filename
/000000000354/fair-use-study-final.pdf .................................................. 24
Jennifer Howard, Google Begins To Scale Back Its Scanning of
Books From University Libraries, The Chronicle of Higher
Education, March 9, 2012, http://chronicle.com/article/GoogleBegins-to-Scale-Back/131109/. ................................................................ 25
Bernard Knight, USPTO General Counsel, USPTO Position on Fair
Use Copies of NPL Made in Patent Examination, January 19,
2012,
http://www.uspto.gov/about/offices/ogc/USPTOPositiononFairUse
_of_CopiesofNPLMadeinPatentExamination.pdf. ................................... 17
Edward Lee, Technological Fair Use, 83 S. Cal. L. Rev. 797 (2010),
available at
http://clhc.usc.edu/assets/docs/contribute/SCalLRev83_4Lee.pdf ......... 24
Pierre N. Leval, Toward a Fair Use Standard,
103 Harv. L. Rev. 1105 (1990) ................................................ 5, 14, 15, 17

v

INTEREST OF AMICI CURIAE
The Electronic Frontier Foundation (“EFF”) is a nonprofit, membersupported civil liberties organization that has worked for more than 20 years
to protect consumer interests, innovation, and free expression in the digital
world.
EFF’s mission is to ensure that the civil liberties and due process
guaranteed by our Constitution and laws do not diminish as communication,
commerce, government, and much of daily life move online. EFF and its
more than 18,000 members have a strong interest in assisting the courts and
policymakers in striking the appropriate balance between copyright law and
the public interest. EFF has contributed its expertise to many cases
regarding copyright law and the Internet, as amicus curiae, as party counsel,
and as court-appointed attorneys ad litem.1
Public Knowledge is a non-profit public interest organization that
defends citizens’ rights in the emerging digital culture. Public Knowledge
promotes balanced intellectual property policies that ensure that the public
can access knowledge while protecting the legitimate interests of authors.

1

Pursuant to FRAP 29(c)(5), Amici state that no counsel for a party
authored this brief in whole or in part, and no person or entity other than
Amici and their counsel made a monetary contribution to the preparation or
submission of this brief. All parties in this matter have consented to the
filing of this brief.

1

The Center for Democracy & Technology (“CDT”) is a nonprofit
public interest group that seeks to promote free expression, privacy,
individual liberty, and technological innovation on the open, decentralized
Internet. CDT advocates balanced copyright policies that provide
appropriate protections to creators without curtailing the unique ability of
the Internet and digital media to empower users, speakers, and innovators.
Fair use plays a critical role in achieving that balance.
ARGUMENT
The fair use doctrine plays the essential role of ensuring that copyright
serves, rather than thwarts, innovation.2 That role has never been more
important. In this age of digital media and online communication, copying
is an integral and inescapable part of many valuable new technologies.
Email, web browsers, search engines, DVRs, and so on, all carry out their
functions by copying data to the memory of a device, such as a computer or
smart phone. Indeed, every time someone visits a webpage on the Internet, a
copy of that webpage may be stored in memory automatically so that it can
be accessed more quickly and efficiently in the future. At the same time,
add-on innovators depend on intermediate copying in order to create
services and technologies that build on existing works—including helping
2

To minimize any redundancy in the briefing from amicus curiae, this brief
will focus on the issues of non-expressive transformative uses and
commercial fair uses raised by Plaintiffs-Appellants and the amicus
Associated Press in their respective briefing.
2

people find and organize those works. These forms of copying and socially
useful innovation are the product of a fair use doctrine that hews to its
fundamental purpose: ensuring that copyright spurs, rather than impedes, the
progress of science and the useful arts.
The doctrine serves precisely that purpose with respect to the
HathiTrust Digital Library (“HDL”). The HDL promotes the progress of
science via the creation and spread of knowledge and learning. The HDL
not only assures the preservation of millions of digitized volumes from the
collections of many of the nation’s leading research libraries, it also provides
scholars and students with an unparalleled ability to search, access, and build
on the vast repository of knowledge of those who came before them. HDL's
crucial service required and continues to require extensive copying—but it is
not the kind of copying copyright law was intended to prevent or punish.
And, while that copying is not always “expressive,” it is most
assuredly “transformative.” Accordingly, Amici urge the Court to affirm the
District Court’s decision that the HDL is engaged in a lawful fair use.
However, we also urge the Court to firmly reject the amicus Associated
Press’s (“AP’s”) request that the Court tailor its decision so as not to
impinge on the AP’s business model. In particular, the AP suggests that
“expressive” “non-commercial” uses, rather than technologically
transformative uses, should be the “core” of fair use. (AP Br. at 12-22.) If
adopted, this view would sharply curtail the essential role fair use plays in

3

facilitating online innovation and expression, from services that allow users
to find, organize and share public information, to services that depend on
making intermediate copies, to personal consumer uses such as timeshifting. Copyright law could become a roadblock to the very benefits it
was designed to promote.
I.

Technologies Like the HDL Advance The Core Values of
Copyright Law.
A.

The Purpose of Copyright Law is to Spur the Creation and
Dissemination of Knowledge to the Benefit of the Public.

The Copyright Clause of the Constitution empowers Congress “[t]o
promote the Progress of Science . . . by securing for limited Times to
Authors . . . the exclusive Right to their . . .Writings.” U.S. CONST., art. I,
§ 8, cl. 8. The Progress of Science “refers broadly to the creation and spread
of knowledge and learning.” Golan v. Holder, 132 S. Ct. 873, 888 (2012)
(internal quotation marks omitted). That progress is achieved not only by
increasing the economic incentives of authors to create, but also by ensuring
that others are able to build on and share those works. See, e.g., id.; Harper
& Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 558 (1985) (“[I]t
should not be forgotten that the Framers intended copyright itself to be the
engine of free expression . . . the ultimate aim [of copyright law] is . . . to
stimulate [the creation of useful works] for the general public good”)
(citation omitted).

4

The Second Circuit, among others, has stressed that copyright must
serve the public interest:
[T]he law of copyright “is intended to motivate the creative
activity of authors and inventors by the provision of a special
reward . . . . The monopoly created by copyright thus rewards
the individual author in order to benefit the public.”
Blanch v. Koons, 467 F.3d 244, 250 (2d Cir. 2006) (quoting Pierre N. Leval,
Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1108 (1990)) (ellipsis
in original). Thus, “courts in passing upon particular claims of infringement
must occasionally subordinate the copyright holder’s interest in a maximum
financial return to the greater public interest in the development of art,
science and industry.” Rosemont Enters., Inc. v. Random House, Inc., 366
F.2d 303, 307 (2d Cir. 1966) (quoting Berlin v. E. C. Publications Inc., 329
F.2d 541, 544 (2d Cir. 1964)).
B.

The HDL Furthers The Purpose of Copyright and Serves
the Public Interest.

The HathiTrust Digital Library furthers the fundamental aims of
copyright law—fostering the creation and dissemination of new ideas—
without unduly encroaching on (and, in fact, in many cases promoting) the
economic interests of authors. The HDL furthers these aims in numerous
ways, including:
 Allowing scholars and researchers to identify and locate books
relevant to their topics of interest through the HDL’s search

5

functionality. Research that in the past may have taken weeks or
months can now be accomplished in minutes or hours.
 Promoting greater visibility for authors’ works through the HDL’s
search functionality, thereby expanding the audience for those
works and driving additional revenue to the authors when these
new audiences purchase their works.
 Providing print-disabled individuals with unprecedented equal
access to the wealth of written works stored in the HDL.
 Enabling new forms of analytical research. The HDL is a database
of human knowledge that can be mined to identify linguistic,
cultural and political trends for analysis.
More generally, by fostering the dissemination of ideas, the HDL spurs the
further creation of knowledge and creative works, thus producing a positive
feedback loop that advances the aims of copyright law to the benefit of the
public.
II.

A Flexible Fair Use Doctrine Exists to Prevent the Stifling of
Innovation and to Foster the Development of Positive New
Technologies Like the HDL.
Against the background set forth above, the Court should view with

skepticism the notion, advanced by Appellants and especially amicus
Associated Press, that fair use should be narrowly construed to either
exclude the HDL’s activities or confine its protection to the facts of this
case.

6

A.

Fair Use Is A Robust and Flexible Doctrine That Was
Designed to Adapt to New Technologies.

As the Supreme Court has recognized, fair use helps ensure that
copyright serves, rather than thwarts, the public interest in promoting
expression and innovation. “From the infancy of copyright protection, some
opportunity for fair use of copyrighted materials has been thought necessary
to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and
useful Arts.’” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994)
(quoting U.S. Const., Art. I, § 8, cl. 8) (alteration in original); see also
Blanch, 469 F.3d at 251 (“The ultimate test of fair use . . . is whether the
copyright law’s goal of promoting the Progress of Science and the Useful
Arts . . . would be better served by allowing the use than by preventing it . .
.”) (citations and quotations omitted).
As the Court has also noted, fair use was designed to adapt to
technological change. The massive project that has resulted in the HDL was
made possible only recently by advances in computer scanning, indexing,
data storage, and optical character recognition (OCR) technologies. The
drafters of the Copyright Act of 1976 could not have anticipated these new
technologies when they codified fair use in the Act. Indeed, the
impossibility of anticipating every new technology is precisely why
Congress and the courts have established a flexible fair use doctrine. See
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 448 n. 31
(1984) (noting that Congress rejected “a rigid, bright line approach” to fair

7

use). Rather than create a list of specific exceptions, Congress codified fair
use as an “equitable rule of reason” which is to be applied in light of the
overall purposes of the statute. Id. This ensures that a “rigid application of
the copyright statute” does not “stifle the very creativity which that law is
designed to foster.” Campbell, 510 U.S. at 577 (quoting Stewart v. Abend,
495 U.S. 207, 236 (1990)).
And as the Supreme Court has recognized, that flexibility is
particularly crucial to the continuing achievement of copyright’s aims
“during a period of rapid technological change.” See Sony, 464 U.S. at 448
n. 31 (quoting H.R. Rep. No. 94-1476, at 65-66 (1976)).
Accordingly, several courts have recognized that the technological
uses of the works at issue in this case—for purposes such as searching and
indexing, intermediate copying and the like—are transformative uses under
the fair use doctrine. In addition, making the HDL works available in their
entirety for display to print-disabled individuals—a service that only
recently became possible with the development of new technologies—also
constitutes a transformative use.
B.

Searching and Indexing is a Transformative Use.

It is well-established that technological uses like the HDL are
“transformative” because they serve a new and different, albeit functional,
purpose. In particular, and as the District Court in this case recognized,
numerous appellate courts have found that using works for the specific

8

technological purpose of indexing and search—both as they are used in this
case and even where they display the works—are transformative.3
For example, in Perfect 10, Inc. v. Amazon.com, Inc., the product at
issue was a Google search engine that provided the results from image
searches in the form of smaller “thumbnail” images, which were lowerresolution versions of full-sized images from various websites on the
Internet. 508 F.3d 1146, 1165-66 (9th Cir. 2007). The Ninth Circuit held
that Google’s indexing and searching of the images was “highly
transformative” because it was using the images “in a new context to serve a
different purpose.” Id. at 1165. The Court reasoned that the “search engine
transforms the image into a pointer directing a user to a source of
information . . . provid[ing] social benefit by incorporating an original work
into a new work, namely, an electronic reference tool.” Id. The Court
further noted that a search engine may be “more transformative” than an
expressive use such as a parody because a “search engine provides an
entirely new use for the original work, while a parody typically has the same
entertainment purpose as the original work.” Id.
In an earlier case, Kelly v. Arriba Soft Corp., the Ninth Circuit
similarly determined that the use of exact replica thumbnails for image
searching served a different function than the original images, and therefore

3

The AP concedes that “the search index results [produced by the HDL]” do
not even constitute “prima facie infringement at all.” (AP Br. at 9.)
9

qualified as a transformative fair use, even though the use was not
expressive. 336 F.3d 811, 818 (9th Cir. 2003). The Court found that even
making an exact copy of a work may be transformative so long as the copy
served a different function than the original work. Id. at 818-9. The Court
recognized that the accused “search engine functions as a tool to help index
and improve access to images on the internet and their related websites.” Id.
at 818.
In this case, as in Perfect 10 and Arriba, the indexing and searching
functions of the HDL are “highly transformative” because, inter alia, they
use the copyrighted works “in a new context to serve a different purpose.”
Perfect 10, 508 F.3d at 1165. As the District Court recognized, the HDL
“allows scholars to identify relevant works far more efficiently,” and serves
the “entirely different purpose” of “superior search capabilities” which have
“already given rise to new methods of academic inquiry such as text
mining.” Authors Guild, Inc. v. HathiTrust, 902 F. Supp. 2d 445, 459-60
(S.D.N.Y. 2012). Clearly, the HDL “benefit[s] the public by enhancing
information-gathering techniques,” and “improve[s] access” to the
copyrighted works. Arriba, 336 F.3d at 818, 820.
C.

“Copying” of Original Works Into Memory Can Be a
Transformative Use.

Similarly, contrary to the AP’s suggestion that the “mass digitization
and retention of copyrighted works” for use in creating the index does not

10

constitute fair use (AP Br. at 9-10), several Circuit Courts of Appeals have
established that such copying is in fact a noninfringing fair use that benefits
the public.
In A.V. v. iParadigms, LLC, the accused product was a new online
technology system designed to “evaluate[ ] the originality of written works
in order to prevent plagiarism” by comparing the students’ written works
against, inter alia, previous student papers. 562 F.3d 630, 634 (4th Cir.
2009). Copies of the student works were archived in a database to be used
to evaluate the originality of other students’ works in the future. Id. The
Fourth Circuit found that the defendant’s use was transformative even
though the “archiving process does not add anything to the work [and
instead] merely stores the work unaltered and in its entirety.” Id. at 639
(emphasis in original). The Court reasoned that:
The use of a copyrighted work need not alter or augment the
work to be transformative in nature. Rather, it can be
transformative in function or purpose without altering or
actually adding to the original work . . . . [defendant’s] use of
plaintiffs’ works had an entirely different function and purpose
than the original works; the fact that there was no substantive
alteration to the works does not preclude the use from being
transformative in nature.
Id. The Court recognized that the defendant’s use of the works for the
transformative purpose of detecting and preventing plagiarism would not be
possible without copying and storing those works. See, e.g., id. at 638-40.

11

Similarly, the Perfect 10 court determined that automatic local
“caching” (i.e., saving a copy) by internet browsers of full-size original
images was a transformative fair use, reasoning:
The copying function performed automatically by a user’s
computer to assist in accessing the Internet is a transformative
use. Moreover, as noted by the district court, a cache copies no
more than is necessary to assist the user in Internet use. It is
designed to enhance an individual’s computer use, not to
supersede the copyright holders’ exploitation of their works.
Such automatic background copying has no more than a
minimal effect on Perfect 10’s rights, but a considerable public
benefit.
508 F.3d at 1169-70. The Ninth Circuit recognized that such antecedent
copying was necessary to allow the users to efficiently access the Internet—
a publicly beneficial technological use that outweighs any potential harm
such copying might have on the authors’ rights.
In this case, as in iParadigms, the storage of works by the HDL “does
not add anything to the work [and instead] merely stores the work unaltered
and in its entirety.” 562 F.3d at 639. But because the works must be copied
in order to make the HDL’s searching and indexing tools possible—uses that
the District Court has found to be transformative fair uses—this copying
constitutes a fair use as well.
D.

Making the HDL Works Available To Print-Disabled
Individuals is An Additional Transformative Use.

The AP concedes that “the search index results,” which do not display
any copyright material, “do not constitute a prima facie infringement at all.”

12

(AP Br. at 9.) But then the AP goes on to instruct this Court to “confine its
analysis to cases where the end product displays no copyrightable material,”
and invites the Court to make it “very clear that its holding is confined to the
context where the reproduction is not made accessible to any member of
public and the end product does not provide any access to copyrightable
material at all.” (AP Br. at 8, 10-11.)
The AP’s proposal to draw a distinction between permissible and
impermissible searching of copyrighted works based solely on whether or
not any part of the original work is displayed in the search results is entirely
unsupported by the case law. That is why the District Court found just the
opposite—determining instead that one of the key transformative uses of the
HDL was making copyrighted works accessible for display in their entirety
to print-disabled individuals. Authors Guild, 902 F. Supp. 2d at 461 (“The
use of digital copies to facilitate access for print-disabled persons is also
transformative.”). The District Court recognized that such access puts
“print-disabled individuals on equal footing with sighted individuals.” Id.
Notably, the ability to display such works to print-disabled individuals (e.g.,
in Braille or read out loud) only recently became possible as a result of
advancements in technology.
Accordingly, rather than “confining” its holding of fair use to
situations where the end product displays no copyrightable material, this

13

Court should recognize that the “display” of copyrighted works—both for
this purpose and others—can properly constitute a transformative fair use.
III.

Many Non-Expressive Uses Are Transformative.
A.

The Copyright Act Does Not Confine Fair Use Protection to
“Expressive” Uses.

As the case law outlined above suggests, the AP’s contention that the
“core” of transformative use is new “expressive” uses, (AP Br. at 12-13), is
simply wrong. While fair use often protects new expressive uses—including
many of those discussed in Judge Leval’s “Towards a Fair Use Standard,” as
well as the parody at issue in Campbell—it is entirely improper to confine
fair use, as the AP proposes, solely to expressive uses based on these cases.4
For example, it is hardly “telling,” as the AP suggests (AP. Br. at 14), that an
article written in 1990 does not include examples of transformative
functional uses that are directly analogous to the factual circumstances of
this case. Judge Leval cannot have been expected to anticipate and address

4

The AP’s brief focuses on cases addressing the distinct context of
commentary and parody/satire (e.g., Campbell and Blanch). But the fact that
those specific cases focus on new expressive uses (because expression forms
the core of parody/satire and commentary) in no way establishes that new
expressive uses are the core of all fair use. For example, while “comment”
is one of the uses enumerated in the 17 U.S.C. § 107 preamble, it is only one
of many. Indeed, even Campbell recognized that “[t]he central purpose of
th[e] investigation [into the purpose and character of the use] is to see . . .
whether the new work . . . adds something new, with a further purpose or
different character.” Campbell, 510 U.S. at 579 (emphasis added). The
AP’s improper attempt to fossilize fair use law should not be countenanced.
14

technologies that would not exist for another twenty years. In fact,
recognizing this, Judge Leval emphasized in his article, “Toward a Fair Use
Standard,” that “it is not easy ‘to lay down any general principles applicable
to all cases.’” 103 Harv. L. Rev. at 1135 (quoting Folsom v. Marsh, 9 F.Cas.
342, 344 (C.C.D. Mass. 1841) (No. 4901) (Story, J)).
The statute governing fair use, 17 U.S.C. § 107, itself identifies a
number of examples of fair use that apply directly in this case yet are not
necessarily “expressive” uses, including “teaching,” “scholarship,” and
“research.” 17 U.S.C. § 107. Section 107 also provides that making
“multiple copies [of a work] for classroom use” is an example of fair use.
Id. This use does not imbue any new expression into the work being
distributed, but does serve the new functional purpose of educating and
disseminating knowledge to students. In fact, giving the terms used in the
statute their plain meaning (under the standard principles of statutory
construction), the HDL falls squarely within the express language of Section
107 because its primary uses are for teaching, scholarship, and research. It
is clear that non-expressive uses are as much a part of fair use as expressive
uses.

15

B.

Courts Have Repeatedly Recognized that Transformative
Uses Need Not Be “Expressive.”

In addition, the AP’s central claim—that transformation must include
new expression to support fair use—is flatly contradicted by decisions from
this Court and other Courts.
The Second Circuit has recognized that using a work for an entirely
different purpose constitutes a fair use—even if that use does not transform
the expression of the underlying work. For example, in Bill Graham
Archives v. Dorling Kindersley Ltd., the Second Circuit affirmed the district
court’s conclusion that the use of unaltered copyrighted concert posters in
their entirety “to document and represent the actual occurrence” of the
concerts in a biography was a fair use because it served a different purpose
from the original use’s “purposes of artistic expression and promotion.” 448
F.3d 605, 609-11 (2d Cir. 2006). The Court recognized that defendant
actually “minimized the expressive value of the reproduced images by
combining them with a prominent timeline, textual material, and original
graphical artwork.” Id. at 611 (emphasis added). Similarly, in Cariou v.
Prince, the Second Circuit recently declined the plaintiff’s invitation to
interpret fair use as requiring new expression that comments on the original.
No. 11-1197, 2013 WL 1760521, at *6 (2d Cir. Apr. 25, 2013) (“Prince’s

16

work could be transformative even without commenting on Cariou’s
work”).5
Indeed, non-expressive uses are by definition farther afield from the
original work, and thus may be more transformative. See, e.g., iParadigms,
562 F.3d at 640 (copying and archiving of student papers that “was
completely unrelated to expressive content and was instead aimed at
detecting and discouraging plagiarism” was accordingly transformative
because it served a “different” purpose) (emphasis added); see also Arriba,
336 F.3d at 818.
It should not be surprising that court after court has rejected the AP’s
reasoning because accepting the AP’s position could lead to absurd results.
Consider, for example, the ongoing litigation regarding the submission of
articles as prior art in the patent application process.6 Citing several of the
5

In Sony Corp. v. Universal City Studios, the Supreme Court held that the
home taping of broadcast television for “time shifting” purposes was a fair
use, even though there was no new expression in the copied television
shows. 464 U.S. at 448-56. In fact, the AP actually advances the position of
the dissent in Sony in making its argument. In his dissent, Justice Blackman
argued that time shifting could not be fair use because home users were
using the copies for their “original purpose.” Id. at 480 (Blackman, J.
dissenting). The majority rejected this argument. Id. at 448; see also Leval,
supra, 103 Harv. L. Rev. at 1111 and n. 29 (noting that a majority of the
Supreme Court in Sony rejected the view that a fair use “must employ the
quoted matter in a different manner or for a different purpose from the
original”).
6

See Bernard Knight, USPTO General Counsel, USPTO Position on Fair
Use Copies of NPL Made in Patent Examination (January 19, 2012),
17

above cases, the United States Patent and Trademark Office (USPTO) has
explained why those submissions are protected fair uses: because, inter alia,
the copies were made for the distinct purpose of documenting that certain
features of an applicant’s claim were in the prior art. (Memorandum of Law
In Support of USPTO’S Motion for Judgment on the Pleadings or Partial
Summary Judgment on Its Fair Use Defense and Counterclaim (Dkt. 61),
American Institute of Physics v. Winstead PC, No. 3:12-cv-01230-M (N.D.
Tex. Feb. 27, 2013) at 10) (prior art articles are “submitted to the USPTO . .
. to show what information was known at the time of the applicant’s alleged
invention to permit the USPTO to determine if the alleged invention was, at
that time, novel and nonobvious.”); see also id. at 13 (the articles provide
“the background context against which the USPTO measures the novelty
and nonobviousness of the alleged invention—a process that clearly
promotes the ‘useful arts.’”).
Like the AP’s articles, these scholarly works were selected and
organized because they contained certain information, and were submitted in
toto for an entirely different but not particularly “expressive” purpose: to
document that information’s existence. Under the AP’s unsupported theory,
that distinct purpose might not be sufficiently “expressive” to pass muster.
See also Bond v. Blum, 317 F.3d 385, 395 (4th Cir. 2003) (literary works

available at http://www.uspto.gov/about/offices/ogc/USPTOPositionon
FairUse_of_CopiesofNPLMadeinPatentExamination.pdf.
18

submitted as evidence in court for the purpose of factual content instead of
expression were fair use); Stern v. Does, CV 09-01986, 2011 WL 997230, at
**9-10 (C.D. Cal. Feb. 10, 2011), aff’d sub nom, Stern v. Weinstein, 1155436, 2013 WL 1137390 (9th Cir. Mar. 20, 2013) (forwarding listserv post
in email was a transformative use, since it was for the purpose of informing
others of the post); Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d
1195, 1203 (N.D. Cal. 2004) (use of exact reproductions of copyrighted
works was transformative when used as factual support for criticism of
author).
In sum, the case law is replete with examples of non-expressive
transformative uses. That is as it should be, because any other rule would
embody the categorical reasoning that the courts have rejected. See, e.g.,
Campbell, 510 U.S. at 577 (fair use analysis “is not to be simplified with
bright-line rules, for the statute, like the doctrine it recognizes, calls for caseby-case analysis.”). The Court should not accept the AP’s invitation to
provide an advisory opinion on what is or is not the “core” of fair use (AP
Br. at 7), and needlessly contradict its own holdings, the holdings of the
Supreme Court, and the holdings of other courts.

19

IV.

A Transformative Use Can Be Capable of Serving the Same
Purpose as the Original.
Contrary to the AP’s assertion (AP Br. at 22-27), no court has held

that a new work must not even be capable of serving the same purpose as
the original in order to qualify as a transformative functional use.
For example, in iParadigms, one of the cases that the AP claims
supports its argument, the archived student papers (as they were used with
the software) were preserved in their entirety, and were therefore capable of
serving the same purpose as the original papers. 562 F.3d at 639. In fact,
the iParadigms Court specifically noted that “[t]he use of a copyrighted
work need not alter or augment the work to be transformative in nature.
Rather, it can be transformative in function or purpose without altering or
actually adding to the original work.” Id. The fact that the new use is
capable of serving the same purpose as the original is irrelevant to the fair
use analysis; the analysis instead focuses on whether the new use can serve a
new (and potentially additional) functional purpose.
Similarly, in Arriba, the Ninth Circuit did not hold that Arriba’s use of
thumbnails was transformative because those thumbnails were not capable
of being used for the same purpose as the original images.7 Rather, the
Court determined that the use was transformative because it served a new
and additional purpose: “function[ing] as a tool to help index and improve

7

The Court merely noted that it would be “unlikely” for anyone to use the
images for the same purpose. 336 F.3d at 819.
20

access to images on the internet and their related websites.” 336 F.3d at
818; see also id. at 819 (“Arriba’s use of the images serves a different
function than Kelly’s use—improving access to information on the internet
versus artistic expression.”).
The Arriba Court analogized the search engine at issue in the case to
the work at issue in Núñez v. Caribbean International News Corp., 235 F.3d
18 (1st Cir. 2000). 336 F.3d at 818-9. In Núñez, the First Circuit
determined that using a photograph in a news article that was originally
intended for a modeling portfolio—even though the photograph as used in
the news article was still “capable” of serving the same aesthetic and
promotional purposes as the photo in a modeling portfolio—was a
“transformative use.” 235 F.3d at 22-3. The Arriba Court reasoned that,
despite the fact that the photograph at issue in Núñez itself was unaltered,
“[b]y putting a copy of the photograph in the newspaper, the work was
transformed into news, creating a new meaning or purpose for the work”—
which constituted an additional functional purpose. 336 F.3d at 819.
Indeed, the very premise of the AP’s assertion that “capability” is part
of the Court’s analysis for determining whether a functional use is
transformative is flawed. To the extent that courts give any consideration at
all to a new work’s capability to serve the same purpose as the original, that
analysis would be subsumed within the fourth factor of the fair use test—the
effect of the use upon the potential market for the value of the copyrighted

21

work. That factor considers whether the new work “usurps” the market for
the original work, not whether it is merely “capable” of serving the same
purpose as the original. Blanch, 467 F.3d at 258. Accordingly, the Court
should disregard the AP’s “capability” analysis.
V.

Law and Policy Counsel Against Confining A Favorable Holding
to Non-Commercial Uses.
The AP asks the Court to “confine” any holding to “non-commercial”

uses. (AP Br. at 22.) But the Supreme Court has been very clear that lack of
commerciality is not the touchstone of fair use. This Court should decline
the AP’s invitation to depart from this settled principle.
In Campbell, the Supreme Court considered and rejected the idea that
commercial use should be presumptively unfair. The Court explained that a
narrow focus on commerciality would “swallow nearly all of the illustrative
uses listed in the preamble paragraph of § 107” (including news reporting,
comment, criticism, teaching, scholarship, and research) which “are
generally conducted for profit.” Campbell, 510 U.S. at 584 (citation
omitted). As the Court noted: “[n]o man but a blockhead ever wrote, except
for money.” Id. (quoting 3 Boswell’s Life of Johnson, 9 (G. Hill ed. 1934)).
The Second Circuit has echoed that reasoning, holding that:
“Congress ‘could not have intended’ a rule that commercial uses are
presumptively unfair . . . Instead, ‘the more transformative the new work, the
less will be the significance of other factors, like commercialism, that may

22

weigh against a finding of fair use.’” Prince, 2013 WL 1760521, at *7
(quoting Campbell, 510 U.S. at 579, 584); see also Am. Geophysical Union
v. Texaco Inc., 60 F.3d 913, 921 (2d Cir. 1994) (“Since many, if not most,
secondary users seek at least some measure of commercial gain from their
use, unduly emphasizing the commercial motivation of a copier will lead to
an overly restrictive view of fair use.”).
In particular, fair use should not turn on commerciality where, as here,
a use confers a significant public benefit. In Blanch, for example, the
Second Circuit held that the first factor favored the defendant despite his
commercial and profitable use of the plaintiff’s image in a “pop art”
painting, noting that, “[c]ourts are more willing to find a secondary use fair
when it produces a value that benefits the broader public interest.” 467 F.3d
at 253 (quoting Texaco, 60 F.3d at 922); see also Rosemont, 366 F.2d at 307
(“[W]e conclude that whether an author or publisher has a commercial
motive or writes in a popular style is irrelevant to a determination of whether
a particular use of copyrighted material in a work which offers some benefit
to the public constitutes a fair use.”); Sundeman v. Seajay Soc’y, Inc., 142
F.3d 194, 203 (4th Cir. 1998) (“Courts should also consider the public
benefit resulting from a particular use notwithstanding the fact that the
alleged infringer may gain commercially. This public benefit typically
involves the development of art, science, and industry.”) (citations, internal
quotation marks omitted).

23

This is the right approach. Every day, technology companies and
inventors working out of their garages make intermediate copies as they test
and develop their innovative technologies—technologies that may have
commercial value, but will also promote the spread of knowledge and
learning. Courts have repeatedly found such uses to be fair. See, e.g., Sega
Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1523 (9th Cir. 1992) (finding
fair use even though defendant “may gain commercially,” and noting that
defendant’s use of the copyrighted works “has led to an increase in the
number of independently designed video game[s] . . . It is precisely this
growth in creative expression, based on the dissemination of other creative
works and the unprotected ideas contained in those works, that the
Copyright Act was intended to promote.”); Sony Computer Entm’t, Inc. v.
Connectix Corp., 203 F.3d 596, 602–606 (9th Cir. 2000) (defendant’s
“intermediate copying and use of [plaintiff’s] copyrighted BIOS” firmware
was a fair use in part because defendant’s product “creates a new platform,
the personal computer, on which consumers can play games designed for
[plaintiff’s product]. This innovation affords opportunities for game play in
new environments…”); see generally Computer & Communications
Industry Association, Fair Use in the U.S. Economy, 11-29 (2010),
http://www.ccianet.org/CCIA/files/ccLibraryFiles/Filename
/000000000354/fair-use-study-final.pdf (detailing the economic
contributions of industries relying on fair use); Edward Lee, Technological

24

Fair Use, 83 S. Cal. L. Rev. 797, 820-21 (2010), available at
http://clhc.usc.edu/assets/docs/contribute/SCalLRev83_4Lee.pdf.
In this case, for example, in order to generate much of the repository
of digital content that became a part of the HDL, Google had to scan
millions of hard-copy books from university libraries around the world—a
massive undertaking that has taken nearly a decade and required a
substantial investment of human capital, expensive specialized scanning
equipment, and vast quantities of digital database storage. A noncommercial institution—like an individual research library—would not have
the resources to undertake a project of that scope on its own.8
These cases all demonstrate that there is no need to strictly tie a
finding of fair use to noncommerciality. The benefits the HDL provides to
the public—increasing access to literature and knowledge, preserving works
that might otherwise be lost, enabling new forms of analytical research, and
providing print-disabled individuals with access to these works—would still
strongly support fair use even if the HDL had a commercial aspect. Making
8

With respect to the 600,000 volumes at the University of Wisconsin
digitized by Google, the university library director stated “[i]t would have
been next to impossible for the library to come up with the resources to
digitize that amount of material.” Jennifer Howard, Google Begins To Scale
Back Its Scanning of Books From University Libraries, The Chronicle of
Higher Education, March 9, 2012, http://chronicle.com/article/GoogleBegins-to-Scale-Back/131109/. With respect to the half a million volumes
in the University of Texas Latin American collection, the university library
director stated, “We figured we could do it in a hundred years.” Id.
“Google did it in two.” Id.
25

non-commerciality the touchtone of fair use—as the AP urges—would
unnecessarily narrow the fair use doctrine, to the detriment of the public.
CONCLUSION
The Plaintiffs-Appellants and the Associated Press ask this Court to
accept a woefully cramped view of fair use that is unsupported by Supreme
Court and Second Circuit precedent. If adopted, this view would sharply
curtail the essential role fair use plays in facilitating technology innovation
and expression. Such a view would improperly restrict the use of existing
non-infringing technologies—for example, products that allow users to find,
organize and share public information; products that depend on making
intermediate copies; and even personal consumer uses such as time-shifting.
And, it would discourage both the legitimate technology innovators who
depend on a robust and flexible fair use doctrine, and the investors who help
fund the development of new technologies. In short, it would thwart, rather
than preserve, the key purposes of copyright.
Accordingly, Amici urge the Court to reject that view and affirm the
District Court’s judgment that the Libraries’ use of the copyrighted works is
a transformative fair use protected by copyright law.

26

Dated: June 4, 2013

Respectfully Submitted,

FARELLA BRAUN + MARTEL LLP
By: /s/ Roderick M. Thompson
RODERICK M. THOMPSON
Roderick M. Thompson
Stephanie P. Skaff
Deepak Gupta
Rochelle L. Woods
Farella Braun + Martel LLP
235 Montgomery Street, 17th Floor
San Francisco, CA 94104
Counsel of Record for Amici Curiae the
Electronic Frontier Foundation, Public
Knowledge, and the Center for Democracy
& Technology

27

CERTIFICATE OF COMPLIANCE
Pursuant to Rule 32 of the Federal Rules of Appellate Procedure, I
certify that:
1.

This brief complies with the type-volume limitation of Rule

32(a)(7)(B) of the Federal Rules of Appellate Procedure because this brief
contains 6,285 words, excluding the parts of the brief exempted by Rule
32(a)(7)(B)(iii); and
2.

This brief complies with the typeface requirements of Rule

32(a)(5) and the type style requirements of Rule 32(a)(6) because this brief
has been prepared in a proportionally spaced typeface using Microsoft®
Word 2002 in 14-point Times New Roman.
Dated: June 4, 2013
/s/ Roderick M. Thompson
RODERICK M. THOMPSON

28

CERTIFICATE OF SERVICE
I hereby certify that on this 4th day of June, 2013, a true and correct
copy of the foregoing Brief for the Electronic Frontier Foundation, Public
Knowledge, and the Center for Democracy and Technology as Amici Curiae
Supporting Appellees was served on all counsel of record in this appeal via
CM/ECF pursuant to Second Circuit Rule 25.1(h)(1)-(2).
Dated: June 4, 2013
/s/ Rochelle Woods
Rochelle L. Woods

29