Authors Guild, Inc. v. Hathitrust

Filing 67

AMICUS BRIEF, American Society of Journalists and Authors, Inc., FILED. Service date 03/04/2013 by CM/ECF. [863820] [12-4547]--[Edited 03/07/2013 by DH]

12-4547-CV
IN THE

United States Court of Appeals
FOR THE SECOND CIRCUIT

>>>>
AUTHORS GUILD, INC., AUSTRALIAN SOCIETY OF AUTHORS LIMITED, UNION DES
E CRIVAINES E T D ES E CRIVAINS Q UEBECOIS , PAT C UMMINS , A NGELO L OUKAKIS ,
ROXANA ROBINSON, ANDRE ROY, JAMES SHAPIRO, DANIELE SIMPSON, T.J. STILES, FAY
WELDON, AUTHORS LEAGUE FUND, INC., AUTHORS’ LICENSING AND COLLECTING SOCIETY, S VERIGES F ORFATTARFORBUND , N ORSK FAGLITTERAER F ORFATTER 0OG O VERSET TERFORENING, W RITERS ’ U NION OF C ANADA , PAT C UMMINGS , E RIK G RUNDSTROM ,
HELGE RONNING, JACK R. SALAMANCA, JAMES SHAPIRO, DANIELLE SIMPSON,
Plaintiffs-Appellants,
v.

HATHITRUST, REGENTS OF THE UNIVERSITY OF MICHIGAN, REGENTS OF THE UNIVERSITY OF C ALIFORNIA , B OARD O F R EGENTS O F T HE U NIVERSITY O F W ISCONSIN S YSTEM ,
(Additional Caption On the Reverse)
On Appeal from the United States District Court
for the Southern District of New York (New York City)

BRIEF FOR AMICUS CURIAE AMERICAN SOCIETY OF
JOURNALISTS AND AUTHORS, INC. IN SUPPORT OF
PLAINTIFFS-APPELLEES AND AFFIRMANCE
David Leichtman
Hillel I. Parness
Shane D. St. Hill
ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
Counsel for Amicus Curiae American
Society of Journalists and Authors, Inc.

601 Lexington Avenue, Suite 3400
New York, New York 10022
212-980-7400
[e-mail]
[e-mail]
[e-mail]

TRUSTEES OF INDIANA UNIVERSITY, CORNELL UNIVERSITY, JULIA DONOVAN DARLOW,
LAURENCE B. DEITCH, DENISE ILITCH, OLIVIA P. MAYNARD, ANDREA FISCHER NEWMAN , A NDREW C. R ICHNER , S. M ARTIN TAYLOR , in his official capacity as THE
REGENTS OF THE UNIVERSITY OF MICHIGAN, KATHERINE E. WHITE, in her official
capacity as THE REGENTS OF THE UNIVERSITY OF MICHIGAN, RICHARD C. BLUM, DAVID
CRANE, WILLIAM DE LA PENA, RUSSELL GOULD, EDDIE ISLAND, ODESSA JOHNSON,
GEORGE KIEFFER, SHERRY L. LANSING, MONICA LOZANO, HADI MAKARECHIAN,
GEORGE M. MARCUS, ALFREDO MIRELES, JR., NORMAN J. PATTIZ, BONNIE REISS, FRED
RUIZ, LESLIE TANG SCHILLING, BRUCE D. VARNER, PAUL WACHTER, in his official
capacity as THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, CHARLENE ZETTEL, in
his official capacity as THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, JEFFREY
BARTELL, MARK J. BRADLEY, JUDITH V. CRAIN, JOHN DREW, TONY EVERS, MICHAEL J.
FALBO, EDMUND MANYDEEDS, KATHERINE POINTER, CHARLES PRUITT, TROY SHERVEN,
BRENT SMITH, MICHAEL J. SPECTOR, S. MARK TYLER, JOSE F. VAZQUEZ, in his official
capacity as THE REGENTS OF THE UNIVERSITY OF WISCONSIN SYSTEM, DAVID G. WALSH,
in his official capacity as THE REGENTS OF THE UNIVERSITY OF WISCONSIN SYSTEM,
WILLIAM R. CAST, PATRICK A. SHOULDERS, MARYELLEN KILEY BISHOP, BRUCE COLE,
PHILIP N. ESKEW, JR., CORA J. GRIFFIN, THOMAS E. REILLY, JR., DERICA W. RICE, in
his official capacity as THE TRUSTEE OF INDIANA UNIVERSITY, WILLIAM H. STRONG, in
his official capacity as THE TRUSTEE OF INDIANA UNIVERSITY, NATIONAL FEDERATION
OF THE B LIND , G EORGINA K LEEGE , B LAIR S EIDLITZ , C OURTNEY W HEELER ,
Defendants-Appellees,
and

NATIONAL FEDERATION OF THE BLIND,
GEORGINA KLEEGE, BLAIR SEIDLITZ, COURTNEY WHEELER,
Intervenor Defendants-Appellees.

CORPORATE DISCLOSURE STATEMENT
Amicus Curiae American Society of Journalists and Authors, Inc. (“ASJA”)
is a non-governmental, 501(c)(6) not for profit organization incorporated in the
State of New York with a membership of approximately 1,400 outstanding
freelance writers of magazine articles, trade books, and many other forms of
nonfiction writing. ASJA has no parent corporation, and no publicly held
corporation owns 10% or more of its stock.

TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES .................................................................................... ii
I.

INTEREST OF AMICUS CURIAE ................................................................1

II. STATEMENT OF ARGUMENT....................................................................3
III. ARGUMENT ...................................................................................................6
A. The District Court’s finding that the MDP and HDL are
“transformative” as that word is used in copyright fair use
analysis is wrong. .......................................................................................... 6
1.

The District Court’s analysis and findings of fact were
clearly erroneous..................................................................................... 7

2.

The District Court misapplied what the word
“transformative” means in copyright law’s fair use
inquiry. .................................................................................................. 10

3.

The District Court’s decision on “transformation” writes
derivative works right out of the Copyright Act. ................................. 14

4.

The District Court’s finding of “transformation” is already
being misused by Google in other contexts, and should
therefore be reversed. ........................................................................... 19

B. The District Court’s analysis of the remaining fair use factors
was overly influenced by its incorrect determination of
“transformation,” and should thus be reversed. .......................................... 22
C. Sections 108 and 121 of the Copyright Act do not apply to the
acts at issue here. ......................................................................................... 24
D. So-called “orphaned works” should not be treated differently
under current copyright law. ....................................................................... 25
E. Associational plaintiffs have standing......................................................... 27
IV. CONCLUSION..............................................................................................29
i

TABLE OF AUTHORITIES
Page
Cases
Am. Geophysical Union v. Texaco, Inc.,
60 F.3d 913, 923 (2d Cir. 1994) ...........................................................................11
Authors Guild v. Google, Inc.,
282 F.R.D. 384 (S.D.N.Y. 2012) ..........................................................................27
Authors Guild v. Google, Inc.,
770 F. Supp. 2d 666 (S.D.N.Y. 2012) ..................................................................25
Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 2006) .................................................................................13
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569, 579 (1994) .....................................................................................10
Cariou v. Prince,
784 F. Supp. 2d 337, 348 (S.D.N.Y. 2011) ................................................... 15, 21
Castle Rock Entm’t v. Carol Publ’g Group,
150 F.3d 132, 143 (2d Cir. 1998) .........................................................................15
Circuit City Stores v. Adams,
532 U.S. 105, 117-18 (2001) ................................................................................24
Infinity Broadcast Corp. v. Kirkwood,
150 F.3d 104 (2d Cir. 1998) .................................................................................12
Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc.,
166 F.3d 65, 72 (2d Cir. 1999) .............................................................................18
On Davis v. The Gap, Inc.,
246 F.3d 152, 174 (2d Cir. 2001) .........................................................................11
Ringgold v. Black Entertainment Television, Inc.,
126 F.3d 70, 78 (2d Cir. 1997) .............................................................................11
ii

Rogers v. Koons,
960 F.2d 301, 310 (2d Cir. 1992), cert. denied, 506 U.S. 934 (1992) .................16
U.S. v. Am. Soc’y of Composers (in re: AT&T),
599 F. Supp. 2d 415, 427 (S.D.N.Y. 2009) ................................................... 13, 25
UMG Recordings, Inc. v. MP3.com, Inc.,
91 F. Supp. 2d 349 (S.D.N.Y. 2000) ....................................................................18
Statutes
17 U.S.C. § 101 ........................................................................................................15
17 U.S.C. § 106(2) ...................................................................................................15
17 U.S.C. § 107 ................................................................................................... 2, 14
17 U.S.C. § 108 ..........................................................................................................4
Other Authorities
2 Paul Goldstein, Goldstein on Copyright § 12.2.2.1(c), 12:39–40
(3d ed. Supp. 2010) .............................................................................................. 17
Rules
Fed. R. App. P. 29(a) .................................................................................................1
Fed. R. App. P. 29(c)(5) .............................................................................................1
Rule 29.1 ....................................................................................................................1

iii

I.

INTEREST OF AMICUS CURIAE
Amicus curiae American Society of Journalists and Authors, Inc. (“ASJA”),

founded in 1948, is a non-governmental, 501(c)(6) not for profit organization with
headquarters in New York City and with active regional chapters in Arizona,
Chicago, Illinois, New York City (local chapter separate from headquarters),
Northern California, Southern California, San Diego, California, the Rocky
Mountains region (Denver area), the Southeast (Atlanta area), the Upper Midwest
(Minneapolis area), upstate New York (Rochester area), Boston, and Washington,
DC.1 ASJA has a membership of approximately 1,400 outstanding freelance
writers of magazine articles, trade books, and many other forms of nonfiction
writing, each of whom has met ASJA’s exacting standards of professional
achievement.
The requirements for membership in the organization are stringent: an author
is required to demonstrate a substantial professional resume before being admitted
to membership. Nonfiction book authors qualify with two or more traditionally
published nonfiction books, or one book with a second under contract. Article
Pursuant to Fed. R. App. P. 29(c)(5) and Rule 29.1 of the Local Rules of the
United States Court of Appeals for the Second Circuit, ASJA hereby states that (1)
no party or their counsel authored this brief in whole or in part; (2) no party or
party’s counsel contributed money intended to fund preparing or submitting this
brief; and (3) no person — other than ASJA, its members, and its counsel —
contributed money intended to fund preparing or submitting this brief. Pursuant to
Fed. R. App. P. 29(a), ASJA also states that all parties have consented to the filing
of this brief.
1

authors must provide a minimum of six substantial bylined articles written on a
freelance basis in national publications that pay for content. A reader browsing any
U.S. news stand would find many articles by ASJA members. See generally,
http://www.asja.org/our-members/member-news/.
ASJA offers extensive benefits and services focusing on professional
development, including confidential market information, meetings with editors and
others in the field, an exclusive referral service, seminars and workshops, discount
services and, above all, the opportunity for members to explore professional issues
and concerns with their peers. Additionally, ASJA is the publisher and author of
several works. Therefore, ASJA and its members are directly affected by
Defendants-Appellees’ agreement with Google, Inc. (“Google”) to scan the
collections of the libraries of the defendants creating digital copies of works, and
making those digital copies available to the public in various ways.
ASJA supports Plaintiffs-Appellants’ appeal of the Order of the District Court
for the reasons stated below. Specifically, ASJA urges this Court to reverse the
District Court’s ruling with respect to its finding of “transformative use,” and thus
its determination that the uses the Defendants-Appellees put to the copyrighted
works at issue were “fair” pursuant to 17 U.S.C. § 107 . In addition, other issues
raised by the District Court’s opinion that are of particular concern to ASJA and its
members are addressed.
2

II.

STATEMENT OF ARGUMENT
This case concerns allegations of copyright infringement arising from a joint

venture between Defendants-Appellees and Google, Inc. (“Google”), whereby
Google scanned – and continues to scan – the library collections of the University
Defendants-Appellees and then built – and continues to build – an immense
database containing the full text of all of the scanned works, referred to in the
underlying opinion as the Mass Digitization Project (“MDP”). In partnership with
Defendants-Appellees, Google put the MDP to multiple uses. The main use to
which the MDP has been put is Google Books, a commercial service available to
all over the Internet, and the subject of a parallel lawsuit pending before Judge
Chin and currently on appeal with respect to class certification.
In addition to the creation of Google Books, Google and DefendantsAppellees agreed that Google would provide digital copies of the scanned books to
the Defendants-Appellees, and that the scanned works would also become part of
the HathiTrust Digital Library (“HDL”), through which the Defendants-Appellees
would make the books available to their patrons in various forms. They also
undertook to create a database of “orphan works,” referred to in the underlying
opinion as the Orphan Works Project (“OWP”). All of the foregoing was
undertaken by Defendants-Appellees and Google without obtaining the prior
consent of the authors or copyright owners of the scanned books, and Plaintiffs-

3

Appellants sued the Defendants-Appellees for copyright infringement. The primary
defense asserted by the Defendants-Appellees was fair use, under Section 107 of
the Copyright Act.
On October 10, 2012, the District Court sided with Defendants-Appellees,
finding that their acts of infringement were excused under the fair use doctrine.
The District Court also held that Section 108 of the Copyright Act (relating to
excepted uses by libraries) did not bar a finding under Section 107 of fair use, and
that Defendants-Appellees were excused from copyright infringement under
Section 121 (relating to excepted uses by the blind).2 The District Court also ruled
that the questions surrounding the OWP were not yet ripe, and that the
associational plaintiffs lacked standing under the Copyright Act. PlaintiffsAppellants appealed. ASJA submits this Brief of Amicus Curiae in support of
Plaintiffs-Appellants to the extent set forth below, and to focus on certain errors of
the District Court that are of particular concern to ASJA’s members.
First, in concluding that Defendants-Appellees’ are eligible to invoke the fair

While the District court wrote that it “need not decide if the MDP fits within the
parameters of 17 U.S.C. § 108 because it unquestionably fits within the definition
of fair use” (Opinion & Order (“Op.”) at 22 n.32, The Authors Guild v. Hathitrust,
No. 11 CV 6351 (HB), Dkt. 156 (S.D.N.Y. Oct. 10, 2012), it also expressly agreed
with Defendants-Appellees’ interpretation of Section 108, namely that “‘systemic’
means reproducing a single work repeatedly, rather than reproducing all the works
in their libraries.” Id. at 12 n.15. The District Court thus did decide that the
limitations of Section 108 do not prohibit Defendants-Appellees’ activity, and
Plaintiffs-Appellants appeal that holding.
2

4

use defense to their copyright infringement, the District Court erroneously found
that Defendants-Appellees’ actions were and are “transformative” as to the books
that they and Google scanned without the consent of the authors and copyright
owners. As discussed in greater detail below, scanning and digitizing books is not
transformative under copyright law. ASJA is particularly concerned that the
finding of “transformation” not be used in the effort already underway in other
proceedings to expand the District Court’s “transformative” conclusion and apply
it to inapposite fact patterns, including the parallel case that is proceeding against
Google with respect to its commercial undertakings.
Second, ASJA joins Plaintiffs-Appellants’ arguments that the District Court
erroneously applied Sections 108 and 121 of the Copyright Act because statutory
exceptions to the Copyright Act must be interpreted narrowly and applied strictly.
Any effort to live up to the “spirit” of such sections without requiring conformance
with the letter of these narrow statutory exceptions to copyright exclusivity
undermines the legislative scheme implemented by Congress and unfairly further
narrows the rights of copyright owners.
ASJA also joins Plaintiffs-Appellants’ argument concerning the OWP and
ripeness on the ground that, if the creation of the OWP is ripe for adjudication, the
Court should conclude that the OWP represents unexcused copyright infringement
by the Defendants-Appellees and is a further reason to reject the fair use defense
5

for the overall scanning and distribution of the works.
Finally, it is important for the Court to recognize that associational plaintiffs
like the ASJA do have standing to represent their individual members under the
Copyright Act. The ASJA represents over 1,400 authors and journalists who,
without ASJA, would not have the resources to enforce their rights in copyright
suits, especially against large and well-funded entities such as DefendantsAppellees and Google. This reality, along with judicially encouraged principles of
efficiency and economy, are the exact reason why associational plaintiff standing
is recognized in cases comparable to this lawsuit.
III. ARGUMENT
A.

The District Court’s finding that the MDP and HDL are
“transformative” as that word is used in copyright fair use analysis
is wrong.

The MDP and HDL are not “transformative” uses under copyright law. Thus,
regardless of the Court’s ultimate conclusion on the question of fair use, it should
reverse the District Court’s finding of transformative use for at least four reasons.
First, the District Court’s findings rest on contested issues of fact that should not
have been resolved on summary judgment. Second, even putting the District
Court’s factual findings aside, the copyrighted works of authors have not been
transformed under applicable case law defining what it means to transform
excusably a copyrighted work. Third, if the District Court’s decision were

6

permitted to stand, it would effectively write out the derivative works right from
the Copyright Act. Fourth, if permitted to stand, there is a significant risk that the
District Court’s “transformation” analysis may be applied to commercial
enterprises erroneously; indeed, Google itself has already begun to cite the District
Court’s opinion below as if it applies to Google’s purely commercial venture.
1.

The District Court’s analysis and findings of fact were clearly
erroneous.

The District Court’s conclusion that Defendants-Appellees should prevail on
their fair use defense was built largely on an initial erroneous factual finding which
then led the court to conclude wrongly that the actions of Defendants-Appellees
were “transformative.”
After reciting the basic principles of fair use, the District Court began its
analysis of the first fair use factor – purpose and character of the use – with a
number of factual assertions, including:
“The MDP was undertaken with several goals in mind. The MDP allows
scholars to identify relevant works far more efficiently.” Op. at 15 (citing The
Libraries’ Statement of Material Facts (“Libraries’ 56.1”) at ¶¶ 18-23, The
Authors Guild v. Hathitrust, No. 11 CV 6351 (HB), Dkt. 113 (S.D.N.Y. Jun.
29, 2012)).

7

“The program provides print-disabled individuals with ‘access to the wealth
of information within library collections.’” Id. (citing Libraries’ 56.1 ¶¶ 6166).3
Critically, the first statement above regarding the manner in which the MDP
benefits scholars does not find support in the cited paragraphs of DefendantsAppellees’ Rule 56.1 statement, which neither discuss the benefits of the MDP, nor
its usefulness to scholars. Indeed, the one paragraph that suggests the benefits of
digital search tools is expressly controverted by Plaintiff-Appellants. See, e.g.,
Plaintiffs’ Counter-Statement In Response to Defendants’ Statement of Material
Facts (“Pl. Resp. 56.1”) at ¶ 18, The Authors Guild, Inc. v. Hathitrust, No. 11 cv
6351 (HB), Dkt. 133 (S.D.N.Y. Jul. 20, 2012) (referring to the benefits of
academic libraries, not the MDP); id. at ¶ 23 (Plaintiffs-Appellants contesting
Defendants-Appellees’ assertions, writing “[t]here are many other ways in which a
particular work might be discovered by a researcher.”).
The District Court thus begins with two factual premises, at least one of
which with regard to scholarship (a term the District Court did not define with any
level of scrutiny), that is either not supported by the record at all or that, at best,
fails to acknowledge facts that are disputed. Accordingly, its conclusion was
clearly erroneous and should be reversed.

3

The District Court also states that the MDP “helps Defendants preserve their
collections…” Id. (citation omitted) but then acknowledges that preservation is not
a strong basis to find transformative use. Id. at 15 n.19.
8

From that point forward in its opinion, the District Court then paints
Defendants-Appellees’ actions with the incorrectly broad brush of “scholarship and
research,” suggesting that the first fair use factor automatically “tilts in the
defendants’ favor” because of this contested purpose. Op. at 15. The court goes on
to add – without citation – that the provision of full-text search capabilities to the
Defendants-Appellees’ library patrons satisfies the first prong of the fair use test.
Op. at 16. The court’s reasoning on this point is, however, completely unclear.
Even though a court could decide the question of whether or not a particular
use is fair without finding the use to be “transformative,” and here such a finding
was not necessary to the adjudication of the issue, the District Court then goes
further, finding that Defendants-Appellees’ actions are “transformative.” It reaches
this conclusion, apparently, on the theory that the “superior search capabilities” of
the MDP (to search for the works) are an “entirely different purpose than the
original works,” because the search capabilities have “given rise to new methods of
academic inquiry.” Op. at 16. The court also finds that “use of digital copies to
facilitate access for print-disabled persons is also transformative,” because “the
provision of access for [disabled persons] was not the intended use of the original
work (enjoyment and use by sighted persons)….” Op. at 18. But even if the
Court’s erroneous factual determination is upheld as proper on summary judgment,

9

providing the copyrighted works in a new format or affording greater access is not
“transformative” as that word is intended in copyright law.
2.

The District Court misapplied what the word “transformative”
means in copyright law’s fair use inquiry.

The fair use doctrine in copyright law is a mix of statutory and judge-made
law. “Transformative use” is not mentioned in the statutory factors, but it has been
imported into the first statutory factor which directs the finder of fact to make an
inquiry into the purpose and character of the accused infringing use. In Campbell v.
Acuff-Rose Music, Inc., 510 U.S. 569 (1994), where the Supreme Court first
announced that an inquiry into whether the use is “transformative” should be part
of the first factor, the High Court defined what it meant by “transformative”:
whether it “adds something new, with a further purpose or different character,
altering the first with new expression, meaning, or message.” Id. at 579 (emphasis
added).
The accused infringing uses put to the copyrighted works at issue here fall
outside of this definition. They do not “add” anything or “alter” the original use
intended for the copyrighted works in any way. As this Court has made clear, an
accused infringing work is not transformative if, “[r]ather than making some
contribution of new intellectual value and thereby fostering the advancement of the
arts and sciences, [it] is likely to be used simply for the same intrinsic purpose as

10

the original.” Am. Geophysical Union v. Texaco, Inc., 60 F.3d 913, 923 (2d Cir.
1994) (emphasis added). The literal copying done by Google for the MDP and
HDL is not putting the copyrighted works to a different intrinsic purpose than the
originals. Rather, the argument of the Defendants-Appellees (and their corporate
sponsor Google), erroneously accepted by the District Court, is simply that more or
different groups of people will gain access to those works and can enjoy them in a
different contextual manner; but there is no argument, and there cannot be, that the
works themselves have been transformed.
This Court’s binding precedent makes it crystal clear that the work itself must
be transformed and that a mere change of context is insufficient to make a pure
literal copy into a “transformative” fair use. For example, in On Davis v. The Gap,
Inc., 246 F.3d 152 (2d Cir. 2001), the use of a literal copy by the defendant was
deemed not transformative because the work itself was not transformed: the
display of copyrighted jewelry in a clothing advertisement “in the manner it was
made to be worn” was not transformative. Id. at 174. Similarly, in Ringgold v.
Black Entertainment Television, Inc., 126 F.3d 70 (2d Cir. 1997), a visual image of
plaintiff’s copyrighted quilt was used without alteration but for a different purpose
than originally intended, namely to create a mood in a televised scene. Id. at 78.
Nevertheless, this Court held it not to be transformative as the infringing use did
not alter the work itself: “the defendants have used Ringgold’s work for precisely a
11

central purpose for which it was created – to be decorative.” Id. at 79. Here, the
copyrighted works at issue were created to be read, studied, etc. The MDP and
HDL did not transform them by simply providing greater or different means of
access.
The District Court’s finding on “transformation” represents a sharp break
from existing case law that should be corrected. The situation here merits a close
comparison to Infinity Broadcast Corp. v. Kirkwood, 150 F.3d 104 (2d Cir. 1998),
where this Court rejected a similar argument that recontextualizing an exact copy
of a copyrighted work is an excused “transformation” for purposes of fair use.
Infinity Broadcast involved the operator of a service that retransmitted the
plaintiff’s radio broadcasts over the telephone. Id. at 106. No alterations were made
to the radio transmissions and defendant claimed they were only used “for
purposes such as audition[ing] on-air talent, verifying the broadcast of
commercials, and listening to a station’s programing format and feel.” The
defendant argued that its use thus constituted fair use because the broadcasts were
used for informative rather than entertainment purposes. Id. at 108. This Court
disagreed and ruled that defendant’s retransmissions were not transformative
because, although the informational purpose was different than the original
entertainment purpose, that “differen[ce] in purpose is not quite the same thing as
transformation, and . . . transformativeness is the critical inquiry . . . .” Id. Because
12

the “character of the original broadcasts [remained] unchanged,” there was “neither
new expression, new meaning nor new message . . . .” Id. As is the case here, no
transformation had taken place. See also U.S. v. Am. Soc’y of Composers (in re:
AT&T), 599 F. Supp. 2d 415, 427 (S.D.N.Y. 2009) (previews of copyrighted songs
were not transformative under fair use analysis because “any difference in
applicant’s informational purpose in streaming previews of ASCAP music from
the original entertainment purpose of the music is insufficient, by itself, to render
applicant’s use transformative.”).
In support of its understanding of transformative use, the District Court cited
one case from this Circuit: Bill Graham Archives v. Dorling Kindersley Ltd., 448
F.3d 605 (2d Cir. 2006), describing the holding as “the use of entire copyrighted
concert posters in a book ‘to document and represent the actual occurrence’ of the
concerts was different from the ‘dual purposes of artistic expression and promotion
of the original use.’” Op. at 16. In Bill Graham, however, the images were found to
be used fairly because of the biographical nature of the use, which is clearly within
the statutory fair use exceptions that are specifically enumerated in the preamble of
“criticism, comment, news reporting, teaching [for classroom use], scholarship or
research.” 17 U.S.C. § 107. Thus, any finding of “transformation” was unnecessary
to the holding. Furthermore, the use of copyrighted posters in the biography at
issue in that case were truly for an “entirely different” purpose than the original,
13

whereas here the uses being put to the infringing works by the MDP and HDL are
actually identical to the purpose of the original use as discussed above. Other than
Bill Graham, the District Court essentially ignored the extensive case law in this
Circuit, focusing instead on inapposite cases from the Ninth Circuit in claimed
support of its interpretation. See Op. at 16-17.
Accordingly, this Court should reverse the District Court’s finding that the
MDP and HDL have “transformed” the copyrighted works at issue, irrespective of
how it may weigh the other fair use factors.
3.

The District Court’s decision on “transformation” writes
derivative works right out of the Copyright Act.

Following on its theme of “access,” the District Court also found DefendantsAppellees’ use to be transformative because it “provides print-disabled individuals
with access to the wealth of information within library collections.” See, e.g., Op.
at 15 (internal quotations omitted); id. at 18 (“The use of digital copies to facilitate
access for print-disabled persons is also transformative.”).
However, as a matter of law, this purpose, however beneficial it may be,
cannot be considered “transformative” because providing print-disabled
individuals with the access to understand copyrighted works is the legal equivalent
of translating or reformatting these works. Section 106 of the Copyright Act
provides authors with the exclusive right to prepare, reproduce, distribute, display

14

and perform not only their original works but derivative works made therefrom.
See 17 U.S.C. § 106(2). Section 101 of the Copyright Act defines a derivative
work as: “a work based upon one or more preexisting works, such as a translation.
. . abridgment, condensation, or any other form in which a work may be recast,
transformed, or adapted.” 17 U.S.C. § 101 (emphasis added). See also Castle Rock
Entm’t v. Carol Publ’g Group, 150 F.3d 132, 143 (2d Cir. 1998) (rejecting fair use
defense, noting that “[a] derivative work, over which a copyright owner has
exclusive control, is defined as a work based upon one or more preexisting works,
such as a translation . . . .”).
The new format for copyrighted works created by Defendants-Appellees and
Google by literally copying millions of copyrighted works and digitizing them is
merely the creation of a mass of unauthorized derivative works that are still subject
to copyright protection. The MDP and HDL do not change the ultimate purpose of
the copyright protected works, which is to read, understand and consume the
contents of books (even if that reading is done via Braille, audio translation, or
large-type editions). As a recent District Court opinion in this Circuit and one of
the major treatises on copyright law also point out, the transformative use doctrine
for fair use analysis cannot trump the author’s exclusive right to make derivative
works, and would conflict with that right if misapplied. See, e.g., Cariou v. Prince,
784 F. Supp. 2d 337, 348 (S.D.N.Y. 2011) (thoughtful discussion distinguishing
15

an infringing derivative work that recasts or “transforms” the original work as
defined in Section 101 from a work that is excusably “transformative” in the sense
of the first fair use factor; specifically holding that there is no precedent to support
a finding that an infringing “use is fair absent transformative comment on the
original.”); see also 2 Paul Goldstein, Goldstein on Copyright § 12.2.2.1(c), 12:39–
40 (3d ed. Supp. 2010) (criticizing “transformative” use doctrine as inconsistent
with derivative works right).
While amici laud the efforts to bring access to a greater portion of the
population, the use by the MDP and HDL does not comment on the original works
in any way, and calling the purpose of providing access “transformative” would
write the derivative works doctrine out of the Copyright Act. “If an infringement of
copyrightable expression could be justified as fair use solely on the basis of the
infringer’s claim to a higher or different artistic use . . . there would be no
practicable boundary to the fair use defense.” Rogers v. Koons, 960 F.2d 301, 310
(2d Cir.), cert. denied, 506 U.S. 934 (1992).
An unrestricted ruling that the MDP and HDL are “transformative” because
of the purported benefits to scholars and the sight-impaired would open the door
for other commercial digitization and indexing projects of writings, music and
even film, on the theory that doing so allows scholars with new ways to study and
access those works. Under such a regime, someone who managed to capture all of
16

the content available through Netflix’s commercial online streaming service could
argue that he was motivated by the “scholarship” of television and film. Once one
begins branding search engines with the label “scholarship,” and deeming them
transformative, there is no rational or logical place to draw the line on who is or
who is not legitimately a scholar, who is or is not engaged in “scholarship,” and
who is or is not the “intended” consumer of such a service. The very definition of
“scholar” is bound to loosen over time, further muddying who would or would not
be entitled to a scholarship-based fair use exception. Much more scrutiny of these
questions ought to be required than that employed by the District Court before a
blanket finding of fair use can be made for a mass digitized use such as that at
issue here.
The District Court’s attempt to squeeze the provision of copies of books to the
disabled into the “transformative” mold demonstrates the complete lack of fit with
that doctrine. To do so, the court – without citation to any authority – invented the
idea that the purpose of books is for sighted people to enjoy them, to the exclusion
of non-sighted persons, and thus the conversion of books so that blind people can
enjoy them represents a de facto transformative event. This cannot possibly be the
law, or else it would mean that people who translate books from English to French
enjoy a fair use defense, having transformed the use of the book from its original
purpose – to be read by English speakers – into a totally new use – to be read by
17

French speakers. See Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166
F.3d 65, 72 (2d Cir. 1999) (finding copyright infringement “not in the least
transformative . . . [because] the abstracts are for the most part direct translations . .
. ; defendants added almost nothing new in their works. This factor weighs strongly
against fair use.”). Indeed, there would be no reason to exclude copies of large
print books from fair use immunity, either.
The District Court employed similarly flawed reasoning in its attempt to
distinguish the present case from UMG Recordings, Inc. v. MP3.com, Inc., 91 F.
Supp. 2d 349 (S.D.N.Y. 2000), (see Op. at 17). In UMG, the court rejected the
defendant’s argument that reproduction of tens of thousands of plaintiffs’ music
CDs to stream music over the Internet to customers who had already purchased the
same CDs was transformative. Defendant’s theory was that by enabling customers
to “space shift” their music, defendant had brought about a transformative use. The
court rejected this argument correctly, writing that defendant’s argument was
“simply another way of saying that the unauthorized copies are being retransmitted
in another medium – an insufficient basis for any legitimate claim of
transformation.” Id. at 351. Likewise, translating books for a different audience is
simply not “transformative” and should not be deemed to be such.
In some regards, the District Court appears to have been motivated by the
overall “fairness” of expanding the access of books to the disabled, and also to
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scholars, although the term is lamentably undefined and unscrutinized. Amicus
does not wish to diminish the obvious benefits of making books more widely
available to the disabled. However, the perceived worthiness of a goal does not, of
itself, mean that every way of achieving it is fair. In this instance, it also cannot be
used to expand or rewrite the proper definition of “transformative” use.
4.

The District Court’s finding of “transformation” is already
being misused by Google in other contexts, and should
therefore be reversed.

It is important that the Court understand how Google and others who support
Google are already misusing the District Court’s finding of fair use, and in
particular its determination of “transformation.” As discussed above, the MDP and
HDL are merely elements, or perhaps mere by-products, of Google’s massive
efforts to digitize an enormous number of copyrighted works for purely
commercial purposes in the Google Books project.
The Court is no doubt aware of the co-pending appeal from class certification
in the litigation referred to as the “Google Books” litigation. See The Authors
Guild, Inc. v. Google, No. 12-3200-cv (2d Cir. 2013). In the briefing in that case,
Google cited the District Court’s opinion in this case for the proposition that
because the commercial Google Books project purportedly “creates new
information—a comprehensive searchable catalog of the world’s books—and does
not replace books, the first fair use factor (the purpose and character of the use)
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decidedly tilts the analysis in Google’s favor across-the-board.” Brief for
Appellant at 28-29, The Authors Guild, Inc. v. Google, Inc., No. 12-3200-cv (2d
Cir. Nov. 9, 2012) (emphasis added) (citing Authors Guild, Inc. v. Hathitrust, No.
11 cv 6351 (HB), 2012 U.S. Dist. LEXIS 146169, at *45 (S.D.N.Y. Oct. 10,
2012)). While the District Court below clearly did not intend to hand Google a
victory over the commercial uses of all the millions of books it digitized,
nevertheless Google apparently felt free to pronounce to this Court in its appeal
brief in the Google Books case that such a victory had occurred - as if the decision
below had provided it with complete carte blanche to infringe. Alas, Google
appears to interpret the decision below as providing it with the complete freedom
to do whatever it desires with millions of copyrighted works without the
permission of their owners.4

In the Google Books case the amici supporting Google also felt free to cynically
quote the decision below without providing the context of the special circumstance
at issue here and the non-commercial aspect of the use of the HDL and MDP. See
Brief of Amici Curiae Academic Authors In Support of Defendant-Appellant And
Reversal at 14-15, The Authors Guild, Inc. v. Google, Inc., No. 12-3200 (2d Cir.
Nov. 16 2012) (matter-of-factly stating that the decision below stands for the
overly broad proposition that, “making digital copies of works to index their
contents and to make small portions more accessible is a transformative use that
supports a finding of fair use.”); see also id. at 17 (“A virtually identical brief
helped to persuade a District Court in the Authors Guild v. HathiTrust lawsuit to
uphold the fair use defense of Google’s library partners because of the
nonexpressive uses the latter were making of copyrighted works in the digital
corpus that the libraries got from Google.”).

4

20

Similarly, because of its ramifications in the Google Books case, Google filed
an amicus brief in another co-pending appeal in the Cariou v. Prince matter
discussed above. In that brief, under the heading “A use need not comment on the
original in order to be transformative,” Google argued incorrectly that “the
productive recontextualization of existing works, with or without commentary on
those works, is one common type of transformative use.” Brief of Amicus Curiae
Google Inc. In Support of Neither Party at 7, Cariou v. Prince, No. 11-1197 (2d
Cir. Nov. 2, 2011). Google is wrong about the law. “Recontextualizing” uses of
copyrighted works may be “common,” and increasingly so in the digital age, but it
is not “transformative” in the sense of the copyright fair use doctrine. As discussed
above, literal copying of massive numbers of copyrighted works without
permission and creating infringing derivative works from them cannot be excused
by labeling the copying “transformative.”5
The finding below that the uses are “transformative” should be reversed. This
case should not be used as a vehicle for Google to further its position that mass
copying is excusably “transformative” with respect to its liability in the Google
Books litigation or any other commercial mass digitization project. Even if this
5

In its brief in Cariou v. Prince, Google follows the aforementioned section with a
nine-page section entitled “The court should be particularly cognizant of the
impact of its decision on digital uses of many works at once, which rarely
comment but are frequently held to be transformative,” in which it cites a litany of
completely distinguishable cases, not one of which hails from the Second Circuit.
See id. at 9-17.
21

Court is inclined to approve the uses at issue in this case as fair because of their
more narrow audience and potential non-commercial purpose, a finding of
“transformation” would not be necessary to reaching such a conclusion. But if the
District Court’s decision on “transformation” is permitted to stand, the kind of
bootstrapping efforts that Google is trying to make to apply the decision below to
purely commercial activities are unfortunately inevitable.
The District Court’s erroneous conclusions regarding transformative use must
be corrected. Leaving the District Court’s decision untouched could motivate
others to build decidedly commercial services, but make sure that such services
have an element that resembles the services provided by the HDL in the hope that
the entire enterprise will be immunized from copyright liability.
B.

The District Court’s analysis of the remaining fair use factors was
overly influenced by its incorrect determination of
“transformation,” and should thus be reversed.

The District Court’s flawed finding that Defendants’ use is “transformative”
appears to have influenced improperly its analysis of the other fair use factors.
When addressing the second factor – nature of the copyrighted works – although
the District Court acknowledged that a meaningful portion of the HDL (9%) and a
substantial majority of the identified works (76%) were fiction, prose or drama, the
court held it was “not dispositive” because “the use is transformative, intended to
facilitate key-word searches or access for print-disabled individuals.” Op. at 18. If
22

the MDP and HDL are not, in fact, transformative, the District Court expresses no
reason why this factor should not weigh heavily in Plaintiffs-Appellants' favor.
With regard to the third factor – amount of the work copied – the District
Court concluded that “entire copies were necessary to fulfill Defendants’ purposes
of facilitation of searches and access for print-disabled individuals.” Id. at 19. Not
only is this reasoning plainly circular and lacking in support, at least in this Circuit,
but without the erroneous finding that search functionality and access to the blind
are inherently transformative, the argument on this prong fails as well. Likewise in
connection with the fourth factor – impact on the market – the District Court
concluded that because “at least two of the uses are transformative – that is, the
provision of search capabilities and access for print-disabled individuals,” the harm
would also be to a “transformative market,” and thus irrelevant. Id. at 20. Like the
court’s analysis of the other factors, this argument employs circular reasoning and
collapses without the erroneous “transformative” finding.
Further, while that whereas the District Court initially hews closely to
concepts of “scholarship and research” and “academic inquiry” to justify its
finding of transformative fair use (see Op. at 15, 16), the terminology in the
opinion then shifts, so that by the time the court considers the remaining fair use
factors, it is using much more general language, such as “provision of search
capabilities.” Id. at 20. This is yet another reflection of the manifest flaws in the
23

District Court’s analysis, and that uncorrected it represents a temptation for those
who would try to manipulate it further.
Because the District Court’s remaining fair use analysis appears to have
been overly influenced by its incorrect determination that the MDP and HDL are
transformative, divorced of that incorrect conclusion, the District Court’s
remaining findings on the other fair use factors do not survive scrutiny. It should
be reversed, or at best remanded for further findings in a light not overcast with the
dark shadow of an erroneous finding of “transformation.”
C.

Sections 108 and 121 of the Copyright Act do not apply to the acts at
issue here.

ASJA joins in the arguments of Plaintiffs-Appellants on the inapplicability
of Sections 108 and 121 of the Copyright Act to the MDP and HDL. Each of these
statutory exceptions reflects a deliberate decision by Congress, the elements of
which must be met if they are to be applied, and the elements simply are not met.
See Plaintiffs-Appellants’ Br. at 18-29, 47-51. This is an unassailable principle of
statutory construction. See Circuit City Stores v. Adams, 532 U.S. 105, 117-18
(2001) (plain meaning of words in a statute evidenced a narrower Congressional
intent than a more open-ended formulation). Once again, it seems possible that the
District Court was motivated by a determination to help the visually impaired and
legitimate scholars gain full or greater access to the written word, but regardless of

24

the merits of such goals those motivations cannot be allowed to override the plain
language of the Copyright Act. Cf. U.S. v. Am. Soc’y of Composers, 599 F. Supp.
2d 415, 433 (S.D.N.Y. 2009) (finding § 110(7) exemption “was intended only for
previews of music in physical record stores. Congress may have had many reasons
for limiting the provision in this way and we will not endeavor to divine the
Congressional intent behind it. We see no reason to override Congress’s
intentionally restrictive wording.”). 6
D.

So-called “orphaned works” should not be treated differently under
current copyright law.

The District Court determined that the OWP was not ripe for adjudication,
leaving for another day determination of its legality. If this Court does determine
that the dispute as to the planned OWP is currently ripe for adjudication
Defendants-Appellees’ proposed approach to copy first without permission and
apologize later should not be approved by this Court. As Judge Chin stated in the
related case The Authors Guild, Inc. v. Google, Inc., 770 F. Supp. 2d 666
(S.D.N.Y. 2012), the issue of how to handle orphaned works should be left to

The District Court ended its fair use analysis by calling the MDP an “invaluable
contribution to the progress of science and cultivation of the arts that at the same
time effectuates the ideals espoused by the ADA.” Op. at 22 (emphasis added). But
it is impermissible to rely on “ideals” when the statutory exceptions in Sections
108 and 121 already reflect a careful balance considered by Congress. Where the
letter of the exceptions is not met, the exceptions cannot be expanded in the
manner that the District Court did so.

6

25

Congress. See id. at 677 (“First, the establishment of a mechanism for exploiting
unclaimed books is a matter more suited for Congress than this Court.”). The fact
that Congress and the Copyright Office have not yet found a legislative solution
they find satisfactory does not give Google the right to privatize the solution
unilaterally.
The manner in which Google and the Defendants-Appellees created the
MDP and HDL offer great incentives to declare a book or other work “orphaned”
or “out of print” with no investigation into whether it is either. Google and
Defendants-Appellees do not merit the necessary trust in handling and digitizing
orphaned works. “The questions of who should be entrusted with guardianship
over orphan books, under what terms, and with what safeguards are matters more
appropriately decided by Congress than through an agreement among private, selfinterested parties. Indeed, the Supreme Court has held that it is generally for
Congress, not the courts, to decide how best to pursue the Copyright Clause’s
objectives.” Id. at 677 (internal quotations omitted).
Google and the Defendants-Appellees did not ask any author to opt-in – they
simply made unauthorized copies and determined to deal with the consequences
later. The Court should not provide a rubber stamp for wholesale copying that
Congress did not authorize as an exception to the copyright laws.

26

E.

Associational plaintiffs have standing.

In The Authors Guild v. Google, Inc., 282 F.R.D. 384 (S.D.N.Y. 2012),
Judge Chin made it clear that associational standing in copyright actions confers
many benefits valued by our judicial system. “The Supreme Court has
acknowledged that associational standing confers certain advantages on individual
members and the judicial system as a whole. Specifically, an association can draw
upon a pre-existing reservoir of expertise and capital that its individual members
lack.” Id. at 391. In particular, Defendants-Appellees’ copying here was done en
masse; no attempt was made to contact individual copyright holders for
permission. Given the breadth of Defendants-Appellees’ conduct, it would be
unfair to now ask individual copyright holders to bring suits against DefendantsAppellees to enforce their copyright. As Judge Chin stated:
“Furthermore, given the sweeping and undiscriminating nature of
Google’s unauthorized copying, it would be unjust to require that each
affected association member litigate his claim individually. When
Google copied works, it did not conduct an inquiry into the copyright
ownership of each work; nor did it conduct an individualized
evaluation as to whether posting ‘snippets’ of a particular work would
constitute ‘fair use.’ It copied and made search results available en
masse. Google cannot now turn the tables and ask the Court to require
each copyright holder to come forward individually and assert rights
in a separate action.”
See id.
The need for associational plaintiff standing is even more critical in cases
involving Internet and new media technologies, where many of the traditional
27

elements of cases have become magnified. Entities employing new technologies
are able to engage in acts of infringement more rapidly, on a greater scale, and with
substantially-reduced costs (if costs are not eliminated altogether). Once the initial
infringements have taken place, these entities can instantly disseminate the
resulting copies on a vast scale with, once again, negligible costs.
For the injured parties, however, the effects are reversed. It becomes
increasingly difficult, costly and time-consuming for copyright owners to keep up
with the rising tide of infringing activity and seek meaningful resolution of their
claims. While large scale copyright owners like record labels and music publishers
have their own problems playing “Whack-A-Mole,” the problems of enforcement
in today’s digital environment are especially magnified for authors and owners of
single, or limited numbers of, works. Those authors have neither the resources nor
the financial ability to mount any effort to enforce their rights unless they can do so
collectively. And unlike other laborers whose work conditions are protected by
unions, most authors are not protected by collective bargaining for fear that efforts
to do so will be attacked (whether meritorious or not) under the antitrust laws. So
associations like the named associational plaintiffs, ASJA and others are all that
authors have to serve as watchdogs for their rights. And while this case is not
styled as a class action, only group action can be effective when those rights need
to be vindicated in court.
28

What is most relevant here is that Defendants-Appellees’ decision to proceed
in the way that they did, on the scale that they did, with full knowledge of its
impact on authors, makes it a quintessential example of why associational plaintiff
standing exists, and why it is a perfect fit for cases such as this, especially in this
digital age.
IV. CONCLUSION
For the foregoing reasons, ASJA respectfully requests that the order of the
District Court be reversed.

Dated: March 4, 2013

Respectfully submitted,
/s/ David Leichtman
David Leichtman
Hillel I. Parness
Shane D. St. Hill
ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
601 Lexington Avenue, Suite 3400
New York, NY 10022
Telephone: [phone]
Facsimile: (212) 980–7499
[e-mail]
[e-mail]
[e-mail]
Counsel for Amicus Curiae The American Society
of Journalists and Authors

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CERTIFICATE OF COMPLIANCE WITH FRAP 32(a)
I.

This brief complies with the type-volume limitation of Fed. R. App. P.
32(a)(7)(B) and 29(d) because this brief contains 6,973 words, excluding the
parts of the brief exempted by Fed. R. App. P. 32(a)(7)(B)(iii).

II.

This brief complies with the typeface requirements of Fed. R. App. P. 32(a)(5)
and the type style requirements of Fed. R. App. P. 32(a)(6) because this brief
has been prepared in a proportionally spaced typeface using Microsoft Word in
Times New Roman, 14 point font.

Dated: March 4, 2013

Respectfully submitted,
/s/ David Leichtman
David Leichtman
Hillel I. Parness
Shane D. St. Hill
ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
601 Lexington Avenue, Suite 3400
New York, NY 10022
Telephone: [phone]
Facsimile: (212) 980–7499
[e-mail]
[e-mail]
[e-mail]
Counsel for Amicus Curiae The American Society
of Journalists and Authors

30

CERTIFICATE OF ELECTRONIC FILING
I hereby certify that on this 4th day of March, 2013, I caused a PDF version
of the foregoing brief to be filed electronically using the CM/ECF system.

/s/ David Leichtman
David Leichtman

31