Authors Guild, Inc. v. Hathitrust

Filing 92

AMICUS BRIEF, Motion Picture Association of America, Inc., FILED. Service date 03/04/2013 by CM/ECF. [869737] [12-4547]--[Edited 03/14/2013 by DH]

No. 12-4547
IN THE UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
________________________________
AUTHORS GUILD, INC., AUSTRALIAN SOCIETY OF AUTHORS LIMITED,
UNION DES ECRIVAINES ET DES ECRIVAINS QUEBECOIS, ANGELO
LOUKAKIS, ROXANA ROBINSON, ANDRE ROY, JAMES SHAPIRO,
DANIELE SIMPSON, T.J. STILES, FAY WELDON, AUTHORS LEAGUE
FUND, INC., AUTHORS’ LICENSING AND COLLECTING SOCIETY,
SVERIGES FORFATTARFORBUND, NORSK FAGLITTERAER
FORFATTERO OG OVERSETTERFORENING, WRITERS’ UNION OF
CANADA, PAT CUMMINGS, ERIK GRUNDSTROM, HELGE RONNING,
JACK R. SALAMANCA,
Plaintiffs-Appellants,
(For Continuation of Caption See Inside Cover)
______________________________
On Appeal from the United States District Court
for the Southern District of New York
________________________________
BRIEF OF AMICUS CURIAE MOTION PICTURE ASSOCIATION OF
AMERICA, INC. IN SUPPORT OF PLAINTIFFS-APPELLANTS
________________________________

March 4, 2013

Steven B. Fabrizio
Kenneth L. Doroshow
Steven R. Englund
JENNER & BLOCK LLP
1099 New York Ave. NW Suite 900
Washington, DC 20001
[phone]
[e-mail]

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

CORPORATE DISCLOSURE STATEMENT
In accordance with Federal Rule of Appellate Procedure 26.1, the Motion
Picture Association of America, Inc. has no parent corporation, and no publicly
held company owns 10% or more of its stock.

TABLE OF CONTENTS

CORPORATE DISCLOSURE STATEMENT ..........................................................i
TABLE OF AUTHORITIES ................................................................................... iii
IDENTITY AND INTERESTS OF AMICUS CURIAE ........................................... 1
SUMMARY OF ARGUMENT ................................................................................. 2
ARGUMENT ............................................................................................................. 6
I.

THE FAIR USE ANALYSIS THAT THE DISTRICT COURT
EMPLOYED IS TOO BLUNT AN INSTRUMENT TO
ACCOMMODATE THE BROAD INTERESTS AT STAKE
IN MASS DIGITIZATION ............................................................................. 6
A.
B.

Broad Stakeholder Input Better Balances Competing Interests .......... 10

C.

II.

The District Court’s Decision Effectively Preempts Ongoing
Discussions Concerning Mass Digitization .......................................... 6

The District Court’s Fair Use Analysis Effectively Preempts
The Possibility Of Addressing Stakeholder Concerns Through
Market Based Solutions ...................................................................... 12

THE DISTRICT COURT MISAPPLIED THE STATUTORY
FAIR USE STANDARD ............................................................................... 15

CONCLUSION ........................................................................................................ 23

ii

TABLE OF AUTHORITIES
CASES
American Geophysical Union v. Texaco Inc., 60 F.3d 913 (2d Cir. 1994) .. 13-14,16
Authors Guild v. Google, Inc., 770 F. Supp. 2d 666 (S.D.N.Y. 2011) ..........2, 19, 20
Bill Graham Archives v. Dorling Kindersley Ltd, 448 F.3d 605 (2d Cir.
2006) .............................................................................................................20, 21
Castle Rock Entertainment, Inc. v. Carol Publishing Group, 150 F.3d 132
(2d Cir. 1998) ...................................................................................................... 21
Folsom v. Marsh, 9 F. Cas. 342 (C.C.D. Mass. 1841)............................................... 6
Tasini v. New York Times Co., Inc., 206 F.3d 161 (2d Cir. 2000), aff’d, 533
U.S. 483 (2001). ............................................................................................17, 23
STATUTES
17 U.S.C. § 107(1) ................................................................................................... 18
17 U.S.C. § 108 ..................................................................................................11, 15
17 U.S.C. §§ 108-122 ........................................................................................10, 18
17 U.S.C. § 109(b)(1)............................................................................................... 22
17 U.S.C. § 109(b)(2)............................................................................................... 22
17 U.S.C. § 110(1) ................................................................................................... 22
17 U.S.C. § 110(2) ................................................................................................... 22
17 U.S.C. § 110(6) ................................................................................................... 22
17 U.S.C. § 110(8) ................................................................................................... 22
17 U.S.C. § 110(9) ................................................................................................... 22
17 U.S.C. § 110(10) ................................................................................................. 22
17 U.S.C. § 112(b) ................................................................................................... 22
iii

17 U.S.C. § 112(c) ................................................................................................... 22
17 U.S.C. § 112(d) ................................................................................................... 22
17 U.S.C. § 112(f) .................................................................................................... 22
17 U.S.C. § 114(b) ................................................................................................... 22
17 U.S.C. § 118 ........................................................................................................ 22
17 U.S.C. § 121 ........................................................................................................ 12
Copyright Act of 1976, Pub. L. No. 94-553, § 710, 90 Stat. 2541 (1976) .............. 12
LEGISLATIVE MATERIALS
H.R. Rep. No. 94-1476 (1976)), reprinted in 1976 U.S.C.C.A.N. 5659 ................. 19
S. Rep. No. 105-190 (1998) ....................................................................................... 9
OTHER AUTHORITIES
Copyright Clearance Center, The Annual Copyright License: A Single,
Multi-Use Copyright License for Academic Institutions (2011) available
at http://www.copyright.com/content/dam/cc3/marketing/documents/
pdfs/AACLProductSheet.pdf .............................................................................. 14
Pierre N. Leval, Nimmer Lecture: Fair Use Rescued, 44 U.C.L.A. L. Rev.
1449 (1997) ........................................................................................................... 6
Pierre N. Leval, Commentary, Toward a Fair Use Standard, 103 Harv. L.
Rev. 1105 (1990) ................................................................................................ 21
Claire Cain Miller, Google Deal Gives Publishers a Choice: Digitize or Not,
NY Times, Oct. 4, 2012, available at http://www.nytimes.com/2012/
10/05/technology/google-and-publishers-settle-over-digitalbooks.html?_r=0 ................................................................................................. 13
Orphan Works and Mass Digitization, 77 Fed. Reg. 64,555 (Oct. 22, 2012) ........... 7
Orphan Works, U.S. Copyright Office, http://www.copyright.gov/orphan
(last visited Mar. 2, 2013) ..................................................................................... 7

iv

Maria A. Pallante, U.S. Copyright Office, Priorities and Special Projects of
the United States Copyright Office October 2011 – October 2013 (Oct.
25, 2011), available at http://www.copyright.gov/docs/priorities.pdf. ................ 7
Mary Rasenberger & Chris Weston, Overview of the Libraries and Archives
Exception in the Copyright Act (2005) ............................................................... 11
Report of the Register of Copyrights, Library Reproduction of Copyrighted
Works (17 U.S.C. 108) (1983), available at http://www.copyright.gov/
reports/library-reproduction-1983.pdf ..........................................................16, 17
Revising Section 108: Copyright Exceptions for Libraries and Archives,
U.S. Copyright Office, http://www.copyright.gov/docs/section108/ (last
visited Mar. 2, 2013) ........................................................................................... 11
Supplementary Register’s Report on the General Revision of the U.S.
Copyright Law (House Comm. Print 1965), reprinted in 9 Melville B.
Nimmer & David Nimmer, Nimmer on Copyright, App. 15 (2010) ............10, 13
U.S. Copyright Office, Legal Issues in Mass Digitization: A Preliminary
Analysis and Discussion Document (Oct. 2011), available at
http://www.copyright.gov/docs/massdigitization/USCOMassDigitization
_October2011.pdf ...................................................................6, 7, 8, 9, 14, 15, 17

v

IDENTITY AND INTERESTS OF AMICUS CURIAE1
The Motion Picture Association of America, Inc. (“MPAA”) is a not-forprofit trade association, founded in 1922 to address issues of concern to the motion
picture industry. Its members include Paramount Pictures Corporation, Sony
Pictures Entertainment Inc., Twentieth Century Fox Film Corporation, Universal
City Studios LLC, Walt Disney Studios Motion Pictures and Warner Bros.
Entertainment Inc.
The MPAA’s members are the leading producers and distributors of filmed
entertainment in the domestic theatrical, television, and home entertainment
markets, and they are among the leading distributors of motion pictures
internationally. The MPAA’s members also distribute their works in electronic
form, including through internet and mobile downloads and streaming, thus
making their works more available to consumers and businesses than ever before.
The MPAA’s members depend upon effective copyright protection in order
to protect the motion picture and television content that they invest in, create and
distribute. As a result, the MPAA’s members have a significant interest in the
important questions that this case presents concerning the interpretation of the

1

No party’s counsel authored this brief in whole or in part. No party or a party’s
counsel made a monetary contribution intended to fund the preparation or
submission of this brief, and no person other than Amicus or its counsel made such
a monetary contribution. All parties have consented to the filing of this brief.

Copyright Act, 17 U.S.C. §§ 101 et seq., and in particular the application of the
“fair use” doctrine to the mass digitization of copyrighted works.
SUMMARY OF ARGUMENT
Mass digitization, such as the project at issue in this litigation, has the
potential to benefit copyright owners and users alike.2 However, it also raises a
host of complex concerns that are the subject of substantial controversy and
ongoing study worldwide. In view of these complexities, the decision by the
district court in this case is problematic.
The defendants here have partnered with Google to make digital copies of
the entire collections of several major university libraries, without regard to
whether the works are under copyright, in need of preservation or commercially
available. Without the input of the many global stakeholders who could be
affected by the district court’s decision and jurisprudential approach, the district
2

As Judge Chin observed in the parallel litigation against Google
concerning the same mass digitization project at issue here:
Books will become more accessible. Libraries, schools, researchers,
and disadvantaged populations will gain access to far more books.
Digitization will facilitate the conversion of books to Braille and
audio formats, increasing access for individuals with disabilities.
Authors and publishers will benefit as well, as new audiences will be
generated and new sources of income created. Older books –
particularly out-of-print books, many of which are falling apart buried
in library stacks – will be preserved and given new life.
Authors Guild v. Google, Inc., 770 F. Supp. 2d 666, 670 (S.D.N.Y. 2011).
2

court authorized this mass digitization on the basis of fair use, a doctrine that is
expressly intended only for case-by-case consideration. The dangers of the court’s
approach are evident in at least two respects.
First, by concluding that the defendants’ unauthorized copying of the
millions of titles in their collections was fair use, the district court made a
preemptive, categorical determination that could have effects well beyond the
parties and interests here. Policymakers and stakeholders in the United States and
abroad are actively considering the implications of mass digitization projects and
how best to balance the potential benefits of mass digitization and the appropriate
rewards for authors and other rights owners under the copyright system. The
district court’s decision effectively preempted that process and purports to
establish a precedent based on an incomplete view of the issues at stake.
As discussed below, consideration of copyright limitations and exceptions is
typically a participative process in which all stakeholder views can be considered
under conditions to protect the various affected interests. The ordinary operation
of the copyright marketplace also serves to enable desirable uses while permitting
the relevant parties to negotiate protections for their respective interests. The fair
use analysis in the context of the streamlined procedural posture of this one case
does not lend itself to this degree of nuance or thorough consideration of the issues
at stake. When, as here, a fair use defense is proposed to excuse mass copying of
3

copyrighted works, there is great potential for upsetting the careful balance of
interests reflected in the Copyright Act, and courts should exercise extreme caution
– which the district court below failed to do.
Second, the district court misapplied the fair use test and overlooked key
facts that weigh heavily against a finding of fair use in this case. In particular, the
district court employed a broad interpretation of fair use that effectively reads out
of the Copyright Act specific limitations and exceptions that Congress carefully
crafted to grant permission for specific uses of copyrighted works by specific
groups of users. Indeed, the court all but ignored two provisions that speak
directly to the types of uses at issue here – Section 108 (which deals with
reproduction by libraries and archives) and Section 121 (which deals with
reproduction for blind or other people with disabilities) – and which authorize a far
narrower scope of copying than the district court found to be permissible. By
concluding that the limits set forth in these specific provisions were irrelevant to its
determination of fair use, the district court effectively rendered these provisions
mere surplusage. Because the Copyright Act contains numerous such limitations
and exceptions dealing with uses of copyrighted works in a host of other contexts,
the district court’s broad interpretation of fair use, if followed by other courts,
threatens to render superfluous these many carefully-crafted limitations and

4

exceptions, thereby upsetting the careful balance of interests that Congress sought
to achieve in the statute.
Moreover, in reaching its conclusion as to fair use, the court did not address
Google’s role in the copying at issue here, which involves a quid pro quo between
Google (which is building this digital library for its own commercial purposes) and
the defendants by which defendants obtain digital copies of the books in their
collections in exchange for authorization to Google to make and keep copies of
those works – an authorization that was not the defendants’ to give. Contrary to
the court’s findings, the uses of copyrighted works in question here have an
undeniable commercial purpose (for both Google and the defendants) that weighs
heavily against a finding of fair use.

5

ARGUMENT
I.

THE FAIR USE ANALYSIS THAT THE DISTRICT COURT
EMPLOYED IS TOO BLUNT AN INSTRUMENT TO
ACCOMMODATE THE BROAD INTERESTS AT STAKE IN
MASS DIGITIZATION

The fair use doctrine evolved from judicial consideration in the context of
specific disputes involving specific uses of specific works by specific parties. E.g.,
Folsom v. Marsh, 9 F. Cas. 342, 348 (C.C.D. Mass. 1841) (identifying
predecessors of current statutory fair use factors); Pierre N. Leval, Nimmer
Lecture: Fair Use Rescued, 44 U.C.L.A. L. Rev. 1449, 1451-54 (1997)
(summarizing origins of fair use doctrine). This highly fact-dependent analysis is,
however, poorly suited to determinations of broad reach such as those implicated
by this mass digitization project.
A.

The District Court’s Decision Effectively Preempts Ongoing
Discussions Concerning Mass Digitization

Mass digitization presents numerous important issues that are the focus of
study and debate around the world. The United States Copyright Office has issued
a detailed report on the topic, outlining several of these ongoing global efforts. See
U.S. Copyright Office, Legal Issues in Mass Digitization: A Preliminary Analysis
and Discussion Document (Oct. 2011) [hereinafter “Mass Digitization Report”],
available at
http://www.copyright.gov/docs/massdigitization/USCOMassDigitization_October2
6

011.pdf. Future research and discussions of the topic remain on the Copyright
Office’s list of priorities. See Maria A. Pallante, U.S. Copyright Office, Priorities
and Special Projects of the United States Copyright Office October 2011 –
October 2013, at 5 (Oct. 25, 2011), available at
http://www.copyright.gov/docs/priorities.pdf. Indeed, the Copyright Office is
currently taking public comments concerning mass digitization in the context of
orphan works. Orphan Works and Mass Digitization, 77 Fed. Reg. 64,555, 64,55859 (Oct. 22, 2012); Orphan Works, U.S. Copyright Office,
http://www.copyright.gov/orphan (last visited Mar. 2, 2013).
In the Mass Digitization Report, the Copyright Office found that “the large
scale scanning and dissemination of entire books is difficult to square with fair
use.” Mass Digitization Report, at 23. Thus, for example, the report describes
how the American Memory project pursued by the Library of Congress since 1994
has been carefully limited to public domain works. Id. at 12. The report then
identifies some of the questions implicated by mass digitization of copyrighted
works. These include questions like whether such mass digitization should be an
activity for national libraries (as seems to be the general direction in Europe), or
whether there are circumstances in which it might be appropriate to allow pursuit
of such mass digitization by potentially countless nonprofit organizations or even
for-profit entities. See id. at 15-16. The Copyright Office specifically identified,
7

as a question for consideration, the use of digitized content resulting from
commercial partnerships such as the defendants’ relationship with Google. Id. at
16. These questions are of concern to stakeholders well beyond the parties to this
case. As “stakeholders may be in the best position to find points of consensus and
create strategies for the U.S. book and library sectors,” id. at ii, the Copyright
Office has called for “further discussion among all stakeholders.” Id. at 40.
However, by finding the mass copying here to be fair use, the district court
effectively preempted that discussion.
For example, the district court dismissed plaintiffs’ claims concerning the
security of the digital copies that are made and maintained in the process of this
mass digitization, finding that “Plaintiffs’ unsupported argument [about the risk of
mass piracy] fails to demonstrate a meaningful likelihood of future harm” to the
market for plaintiffs’ works. Opinion & Order at 19-20, ECF No. 156 (“Order”).
Had this analysis been conducted in a context that was attentive to the mass
digitization process and not merely the defendants’ current end uses, it could have
been informed by the input of stakeholders with broad perspective and expertise on
security and piracy matters, well beyond the limited record presented in this
litigation. The MPAA’s members, in particular, have deep experience and a long
history of successful work with the technology sector in this area (including the
development of the DVD, Blu-ray discs and the recent cloud-based UltraViolet
8

system), and regularly contribute substantially to policymakers’ and courts’
understanding of these issues.3 A fair use analysis in this litigation, however,
cannot benefit from such broad input, nor does it present the opportunity for
collaboration among interested stakeholders in crafting appropriate conditions of
security that must be in place before mass digitization of copyrighted works should
be permitted.
Similarly, the district court’s opinion blesses the defendants’ asserted current
uses of their massive databases of copyrighted works without regard to the outer
limits of permissible use of those databases. There is “increasing pressure” on
libraries and archives “to disseminate works once they have been digitized.” Mass
Digitization Report at 15. The district court did not address the potential res
judicata and related effects of its ruling if the defendants later choose to use the
copies they have made for purposes beyond those considered in its decision,
including those that would have caused the district court here to reject fair use. In
a broader setting than this litigation, stakeholders would not address mass
digitization in the piecemeal fashion driven by the particular end uses here, but
could instead address the propriety of mass digitization more generally. Such an
approach could better ensure that any exemption for copying by libraries is tied
3

See, e.g., S. Rep. No. 105-190, at 52 (1998) (describing development of copy
control technology for DVDs).
9

strictly to specific, permitted uses and that copyright owners are not at risk of being
precluded from challenging the initial copying as unlawful in the event that the
users’ purposes change, even if the propriety of copies for certain uses had already
been decided or the statute of limitations for challenging the copying would
otherwise arguably have run.
B.

Broad Stakeholder Input Better Balances Competing
Interests

Categorical exemptions from copyright liability are typically granted by
Congress, not district courts engaged in case-by-case fair use analysis. Congress
has granted many such exemptions in the form of Sections 108-122 of the
Copyright Act. See 17 U.S.C. §§ 108-122. Because they affect broad swaths of
copyright owners and users, statutory exemptions are carefully crafted and have
clear boundaries. They generally apply to specific, defined categories of users.
They often apply to narrowly-drawn categories of works. They impose conditions.
Perhaps most important, the metes and bounds of these exemptions are the product
of an open and participative process in which all stakeholders’ views can be
considered, and conditions crafted to protect the affected interests, exempting no
more activity than judged necessary. See Supplementary Register’s Report on the
General Revision of the U.S. Copyright Law, at 14 (House Comm. Print 1965),
reprinted in 9 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, App.
15-37 (2010) [hereinafter “1965 Register’s Report”] (“we believe that the author’s
10

rights should be stated in the statute in broad terms, and that the specific limitations
on them should not go any further than is shown to be necessary in the public
interest”).
As an example of how issues such as those implicated in this litigation can
be addressed through an open and participative process that takes into account the
concerns of all the stakeholders, one need look no further than Section 108 of the
Copyright Act. That section carefully delimits the conditions under which libraries
(such as defendants here) are permitted to copy and distribute works without the
author’s permission. 17 U.S.C. § 108. The detailed conditions set forth in Section
108 are the product of decades of debate and discussion among scholars, authors,
librarians, publishers and other interested stakeholders, multiple hearings before
Congress, and four separate amendments to the section since its original
enactment. See generally Mary Rasenberger & Chris Weston, Overview of the
Libraries and Archives Exception in the Copyright Act (2005). Maintaining
Section 108 in the face of technological change remains a top policy priority of the
U.S. Copyright Office today. See Revising Section 108: Copyright Exceptions for
Libraries and Archives, U.S. Copyright Office,
http://www.copyright.gov/docs/section108/ (last visited Mar. 2, 2013).
Yet, the district court below did not consider Section 108, concluding that it
was irrelevant to its determination of fair use. See Order at 22 n.32 (“I need not
11

decide if the MDP fits within the parameters of 17 U.S.C. § 108 because it
unquestionably fits within the definition of fair use.”). In so ruling, the district
court lost the benefit of the decades of discussion and careful consideration of
stakeholder interests that Section 108 reflects, and that remains ongoing.4 Instead,
the court effectively immunized a large and vaguely-defined category of mass
digitization without regard to the concerns that other stakeholders such as MPAA’s
members may have about the boundaries of mass digitization. The fair use
determination in this case simply cannot support the mass digitization that it
authorizes.
C.

The District Court’s Fair Use Analysis Effectively Preempts
The Possibility Of Addressing Stakeholder Concerns
Through Market Based Solutions

In the absence of a specific statutory exemption, systematic uses of large
numbers of copyrighted works are typically subject to marketplace processes that
likewise serve to enable desirable uses while permitting the relevant parties to

4

Another statutory exemption, Section 121, deals with reproduction of certain
kinds of copyrighted works for blind or other people with disabilities. 17 U.S.C. §
121. These issues also have a long history in copyright law. See Copyright Act of
1976, Pub. L. No. 94-553, § 710, 90 Stat. 2541, 2594 (1976) (voluntary licensing
for reproduction and distribution to the blind as predecessor to current Section
121). The district court felt similarly unconstrained by this section – and the years
of debate and stakeholder input that led to its enactment – in rendering its decision
on fair use. See Order at 23 n.33 (“Nothing in [Section 121] indicates an intent to
preclude a fair-use defense as to copies made to facilitate access for the blind that
do not fall within its ambit.”).
12

negotiate protections for their respective interests. See 1965 Register’s Report, at
14 (“it is generally true, as the authors and other copyright owners argue, that if an
exclusive right exists under the statute a reasonable bargain for its use will be
reached”). A sweeping fair use analysis in the context of this litigation is a poor
substitute for these market processes.
Mass digitization of books is a comparatively new activity and, before the
project at issue here, there had never been such a large-scale effort to digitize
copyrighted works. Thus, it is not surprising that a market for licensing such use is
only just emerging.5 Copyright owners are highly motivated to meet market
demand for their works. The companion case to this one illustrates the point:
major publishers have granted licenses to Google covering a substantial part of its
activities in the very project that is the subject of this case. See Claire Cain Miller,
Google Deal Gives Publishers a Choice: Digitize or Not, NY Times, Oct. 4, 2012,
available at http://www.nytimes.com/2012/10/05/technology/google-andpublishers-settle-over-digital-books.html?_r=0.
Similarly, as this court is well aware, the Copyright Clearance Center
(“CCC”) has a long history of collective licensing of literary works. See Am.
5

The marketplace does to a significant extent serve the specific uses that the
defendants made of their databases of digitized works. We understand that many
of the works at issue here were commercially available, including in electronic
form, as replacement copies for libraries and use by the blind. See Brief of
Plaintiffs-Appellants at 38-39.
13

Geophysical Union v. Texaco Inc., 60 F.3d 913, 929-31 (2d Cir. 1994). More than
a thousand colleges and universities have CCC licensees. See Copyright Clearance
Center, The Annual Copyright License: A Single, Multi-Use Copyright License for
Academic Institutions (2011) available at
http://www.copyright.com/content/dam/cc3/marketing/documents/pdfs/AACLProd
uctSheet.pdf. To the extent that such licenses do not already cover the specific
activities here, it seems likely that ordinary market forces would cause them
increasingly to do so. The district court should not so easily have preempted
development of a market to serve a large and important use of copyrighted works.
Leaving mass digitization to the marketplace may or may not provide a
solution to the complex issues that mass digitization presents. But the Copyright
Office – which has a broad and nuanced view of these issues ‒ views it as an
option worthy of consideration. See Mass Digitization Report, at ii, 15-16. If the
district court’s decision is left to stand, then that option will effectively be off the
table.
In short, given its inherent limits, a fair use analysis of the circumstances
presented in this litigation – and, in particular, the manner in which the district
court below employed such an analysis – is a poor means of accommodating the
many broad and complex public policy issues at stake here. Courts confronted
with claims of fair use in this context must therefore be especially sensitive to the
14

limits of the fair use doctrine and should exercise great caution and restraint in
their analysis. The district court failed to do so here.
II.

THE DISTRICT COURT MISAPPLIED THE STATUTORY
FAIR USE STANDARD

As noted, the Copyright Office has observed that “large scale scanning and
dissemination of entire books is difficult to square with fair use.” Mass
Digitization Report, at 23. Yet, the district court here concluded that the mass
digitization project “unquestionably fits within the definition of fair use.” Order at
22 n.32. As discussed above, because the blunt instrument of fair use is so poorly
suited to determining the propriety of the unprecedented scope of copying in this
case, it is not surprising that the district court went astray in its attempt to do so.
First, as an overarching consideration in applying the fair use standard, the
district court should have taken into account the specific provisions of the
Copyright Act that speak directly to the types of uses at issue here, and should not
have interpreted fair use so broadly as to subsume those specific provisions.
Section 108 is an especially pertinent example of such a provision, dealing
specifically with reproductions and distributions made by libraries and archives,
such as defendants here. 17 U.S.C. § 108. The district court did not mention the
many conditions and limitations set forth in Section 108 and, instead, relied on the
fair use “savings clause” of Section 108(f)(4) to exclude them entirely from its

15

analysis. As this court has already suggested, however, such an approach is
misguided:
Section 108 of the Copyright Act narrowly circumscribes the
conditions under which libraries are permitted to make copies of
copyrighted works. Though this section states that it does not in any
way affect the right of fair use, . . . the very fact that Congress
restricted the rights of libraries to make copies implicitly suggests that
Congress views [copyright owners] as possessing the right to restrict
photocopying, or at least the right to demand a licensing royalty from
nonpublic institutions that engage in photocopying.
Am. Geophysical Union, 60 F.3d at 931 (internal citations omitted).6
The Copyright Office has also made clear that consideration of Section 108
is an essential part of any fair use analysis concerning copying by libraries such as
defendants here. See Report of the Register of Copyrights, Library Reproduction
of Copyrighted Works (17 U.S.C. 108), at 97 (1983) [hereinafter “1983 Register’s
Report on Library Copying”] (“[A] fair use examination of a photocopying
transaction ‘beyond’ §108 must be made with due consideration for the fact that
‘108’ copying privileges have already been exhausted.”(emphasis in original)),
available at http://www.copyright.gov/reports/library-reproduction-1983.pdf ; see
6

The district court similarly felt no obligation to evaluate the extent to which the
copying at issue here exceeded the permissions granted in Section 121, which
authorize reproduction and distribution of certain works for blind or other people
with disabilities under specific circumstances and subject to certain well-defined
conditions. Notably, unlike Section 108, Section 121 does not contain a fair use
savings clause. Still, the district court concluded that “[n]othing in [Section 121]
indicates an intent to preclude a fair-use defense as to copies made to facilitate
access for the blind that do not fall within its ambit.” Order at 23 n.33.
16

also Order at 13 (acknowledging Copyright Office guidance that courts “should
take ‘into account the 108 copying that has already occurred’” when evaluating a
fair use defense for libraries (citation omitted)); Mass Digitization Report, at 20
(“Any review of mass book digitization would need to consider, if not compare,
the activities that currently are, or should be, permissible for libraries under
Section 108.”).
The district court’s decision to ignore Section 108 in its fair use analysis –
and then to adopt an interpretation of fair use well beyond what is authorized by
Section 108– effectively rendered the provision surplusage. Doing so violates the
“cardinal rule . . . that significance and effect shall, if possible, be accorded to
every word. . . . [A] statute ought, upon the whole, to be so construed that, if it can
be prevented, no clause, sentence, or word shall be superfluous, void, or
insignificant.” Tasini v. N.Y. Times Co., 206 F.3d 161, 167 (2d Cir. 2000)
(quotation marks omitted); aff’d, 533 U.S. 483 (2001). As the Copyright Office
has observed, it is simply “implausible” that Congress intended fair use, when
applied to copying by libraries, to excuse activity so far beyond the scope of
Section 108 as to render irrelevant all of the distinctions made in Section 108’s
carefully crafted provisions. See 1983 Register’s Report on Library Copying, at
97-98.

17

The implications of affirming the district court’s approach in this respect
extend well beyond Section 108. Limitations and exceptions that perform a role
within the structure of the Act comparable to Section 108 make up a large part of
the Copyright Act. See 17 U.S.C. §§ 108-122. If fair use can be found without
regard to what Congress has said about the precise lines it wished to draw in each
of these circumstances, then many of these limitations and exceptions are in danger
of being swallowed by fair use.
Second, the court treated the use here as strictly noncommercial, ignoring
entirely the commercial relationship between the defendants and Google that made
the use possible. The first factor to be considered in a fair use analysis is the
“purpose and character of the use, including whether such use is of a commercial
nature or is for nonprofit educational purposes.” 17 U.S.C. § 107(1). The district
court found that the defendants could not have had the commercial purpose of
“sav[ing] the expense of purchasing authorized copies” of the books (quoting A&M
Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1015 (9th Cir. 2001)) because “the
purchase of additional paper copies, or even electronic copies, would not have
allowed Defendants to create a searchable inventory of their works or provide
access to print-disabled individuals on an equal footing with sighted individuals.”
Order at 17. But the court’s finding misses a larger point about the commercial
nature of the arrangement between the defendants and Google.
18

The mass copying at issue here is the result of a quid pro quo arrangement
between Google (which is building a digital library for its own commercial
purposes) and the defendants, by which the defendants obtain digital copies of the
books in their collections in exchange for their authorization to Google to make
and keep copies of those works for its own use. Google thus functions as a digital
conversion services vendor for the defendants – on an unprecedentedly massive
scale. Congress has made clear that this very sort of arrangement is inherently
commercial and, at least in the context of Section 108, impermissible: “[I]t would
not be possible for a non-profit institution, by means of contractual arrangements
with a commercial copying enterprise, to authorize the enterprise to carry out
copying and distribution functions that would be exempt if conducted by the nonprofit institution itself.” H.R. Rep. No. 94-1476, at 74 (1976), reprinted in 1976
U.S.C.C.A.N. 5659, 5688.
Whatever can be said about the saved cost of purchasing replacement copies,
there can be no doubt that this quid pro quo arrangement saved defendants the
many millions of dollars that the digital conversion services provided by Google
would no doubt cost in a fair market. The defendants were able to procure
Google’s services for free, simply by authorizing Google to make and keep copies
of their collections for its own use – an authorization that was not defendants’ to
give. Cf. Authors Guild v. Google, 770 F. Supp. 2d 666, 679 (S.D.N.Y. 2011)
19

(“While its competitors went through the ‘painstaking’ and ‘costly’ process of
obtaining permissions before scanning copyrighted books, ‘Google by comparison
took a shortcut by copying anything and everything regardless of copyright
status.’” (quoting Microsoft representative)). By using the authors’ works (without
permission) as the currency for this exchange, defendants obtained a significant
commercial benefit – and served Google’s significant commercial goals7 – to a
degree that weighs heavily against a finding of fair use here.
Third, the district court attached deciding weight to what it deemed the
“transformative” nature of the defendants’ various activities, when none of those
activities was transformative in a sense previously recognized by this court. The
district court purported to base its decision on this court’s decision in Bill Graham
Archives v. Dorling Kindersley Ltd, 448 F.3d 605 (2d Cir. 2006). But neither Bill
Graham Archives nor any other decision of this court holds that simple copying is
transformative simply because it involves a purpose not pursued by the copyright
owner or addresses what is “not to be considered to be a significant market or
7

Given the immense scale of the copying at issue here, and the commensurate
barriers to entry, Google’s ability to build its own digital library without having to
seek permission from or pay license fees to copyright owners would provide it with
extraordinary market power. Cf. Authors Guild, 770 F. Supp. 2d at 682 (noting
antitrust concerns with proposed settlement that “would give Google a right, which
no one else in the world would have, . . . to digitize works with impunity, without
any risk of statutory liability, for something like 150 years” and which would thus
“arguably give Google control over the search market.” (internal quotation marks
omitted) (ellipsis in original)).
20

potential market to publishers and authors.” Order at 18.8 The law of this Circuit
is very much to the contrary.9
Fourth, the district court made short shrift of the second and third statutory
fair use factors. The district court simply dismissed the second as “not
dispositive,” Order at 18, even though a substantial proportion of the works at issue
were “of the creative or instructive type that the copyright laws value and seek to
foster.” Pierre N. Leval, Commentary, Toward a Fair Use Standard, 103 Harv. L.
Rev. 1105, 1117 (1990). The district court’s very brief discussion of the third
factor simply observes that because the defendant’s purpose was making and
distributing copies of whole works, copying of entire works was necessary.
8

At issue in Bill Graham Archives was the inclusion of copyrighted images of
Grateful Dead posters in a 480-page cultural history of the band. This court found
the use of the posters to be transformative, noting that the defendant’s purpose of
enhancing the biographical information in the book was “separate and distinct from
the original artistic and promotional purpose for which the images were created.”
448 F.3d at 610. However, that statement must be understood in light of the facts
of the case, where the images were embedded in a major new copyrightable work
and were found to contribute to the informational message of the new material. Id.
9

In this Circuit, when considering whether a use is transformative, the “critical . . .
factor . . . is whether the allegedly infringing work ‘merely supersedes’ the original
work ‘or instead adds something new, with a further purpose or different character,
altering the first with new . . . meaning [] or message.’” Castle Rock Entm’t, Inc.
v. Carol Publ’g Grp., Inc., 150 F.3d 132, 142 (2d Cir. 1998) (quoting Campbell v.
Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994) (first two ellipses added)). That
is, a use is transformative when “‘the secondary use adds value to the original — if
[copyrightable expression in the original work] is used as raw material,
transformed in the creation of new information, new aesthetics, new insights and
understandings . . . .’” Id. (quoting Pierre N. Leval, Commentary, Toward a Fair
Use Standard, 103 Harv. L. Rev. 1105, 1111 (1990) (alteration in original)).
21

Defendants who copy whole works will almost always be able to argue that doing
so was necessary to their purpose. Surely in a case involving the most massive,
systematic copying of copyrighted works in history, the district court should have
addressed whether the amount and substantiality of the copying was really
justified.
Finally, in applying the fourth fair use factor, the district court placed undue
emphasis on what it perceived to be the absence of a market for licensing the uses
at issue here. See Order at 20-21 (finding “Plaintiffs’ argument about a potential
market [to be] conjecture” and the possible development of a market to provide
access to the “tiny minority” of print-disabled individuals to be “almost impossible
to fathom”). Like Section 108, many of the other limitations and exceptions in the
Copyright Act apply to activities of nonprofit organizations.10 Two (outside
Section 108) are even targeted to libraries.11 Two others (outside Section 121) are
directed at service to the blind.12 Most are very specialized and so do not represent

10

E.g., 17 U.S.C. § 110(1)-(2), (6), (10) (exempting various public performances
by nonprofits); id. § 112(b)-(d), (f) (exempting various reproductions of
transmitted material by nonprofits); id. § 114(b) (exempting certain reproduction
and distribution of sound recordings as part of copies of public broadcasting
programs); id. § 118 (statutory license for certain uses of works in noncommercial
broadcasting).
11

17 U.S.C. § 109(b)(1)-(2) (sound recording and software rental rights exceptions
for libraries).
12

17 U.S.C. § 110(8)-(9) (exemptions for certain performances to the blind).
22

“a significant market or potential market” for copyright owners. Order at 18.
Indeed, they might also be said to affect only a “tiny minority” of potential
customers. There is by definition no established licensing market for the uses
subject to statutory exemptions. Yet those considerations substantially drove the
district court’s fair use analysis here. As noted above, an analysis of fair use that
disregards what Congress has said about the precise lines it wished to draw with
respect to particular categories of activity effectively – and impermissibly –
renders these carefully-considered limitations and exceptions “superfluous, void,
or insignificant.” Tasini, 206 F.3d at 167 (quotation marks omitted).
CONCLUSION

For the foregoing reasons, the district court’s decision should be reversed.
Respectfully submitted,
/s/ Steven B. Fabrizio
Steven B. Fabrizio
Kenneth L. Doroshow
Steven R. Englund
JENNER & BLOCK LLP
1099 New York Ave. NW Suite 900
Washington, DC 20001
[phone]
[e-mail]
Dated: March 4, 2013

23

CERTIFICATE OF COMPLIANCE
This brief complies with the type-volume limitation of Fed. R. App. P.
32(a)(7)(B) because the brief contains 5,488 words, excluding the parts of the brief
exempted by Fed. R. App. P. 32(a)(7)(B)(iii).

This brief complies with the

typeface and type style requirements of Fed. R. App. P. 32(a)(5) and 32(a)(6),
respectively, because this brief has been prepared in a proportionately spaced
typeface using Microsoft Word 2007 in Times New Roman 14-point font.
/s/ Steven B. Fabrizio
Steven B. Fabrizio

CERTIFICATE OF SERVICE
I certify that on March 4, 2013, I caused the foregoing Brief of Amicus
Curiae Motion Picture Association of America with the Clerk of Court to be
electronically filed via the Court’s CM/ECF System; all of the parties listed on the
attorney service preference report have been served via the Court’s CM/ECF
system.
I further certify that on March 4, 2013, I caused six (6) copies of the
foregoing Brief of Amicus Curiae Motion Picture Association of America to be
delivered via overnight mail to the Clerk of the United States Court of Appeals for
the Second Circuit.

/s/ Steven B. Fabrizio
Steven B. Fabrizio