Cambridge University Press et al v. Patton et al

Filing 426

Plaintiffs' Memorandum of Law in Support of Their Post-Trial Proposed Declaratory Judgment and Permanent Injunction re 423 Order filed by Cambridge University Press, Oxford University Press, Inc., Sage Publications, Inc.. (Attachments: # 1 Text of Proposed Order Proposed Order)(Rains, John) Modified on 6/1/2012 in order to update docket text (anc).

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION

CAMBRIDGE UNIVERSITY PRESS,
et al.,
Plaintiffs,

Civil Action File
No.1:08-CV-1425-ODE

v.
MARK P. BECKER, in his official
capacity as Georgia State University
President, et al.,
Defendants.

PLAINTIFFS’ MEMORANDUM OF LAW IN SUPPORT OF
THEIR POST-TRIAL PROPOSED DECLARATORY JUDGMENT
AND PERMANENT INJUNCTION
On May 11, 2012, this Court issued an opinion finding that Defendants had
infringed certain of Plaintiffs’ copyrights by distributing (and causing to be
distributed) excerpts of copyrighted works without permission through the
Electronic Reserves (“ERes”) and uLearn systems at Georgia State University
(“GSU”), notwithstanding Defendants’ adoption of a new copyright policy
following the commencement of this lawsuit.
As the Court acknowledged in its opinion, before Plaintiffs filed this lawsuit
GSU’s faculty was led to believe that unlicensed takings of up to twenty percent of

1

copyrighted works for use as course readings were permitted under the fair use
doctrine. Order, May 11, 2012, Dkt. No. 423 (“May 2012 Order”) at 38. In the
words of GSU’s expert, Dr. Crews, this pre-2009 policy “just said ‘yes’ to
everything.” Trial Transcript Volume 13, June 3, 2011, Dkt. No. 396 (“Trial Tr.
Vol. 13”) at 82. During discovery, GSU unveiled a new copyright policy, the
centerpiece of which was a so-called “fair use checklist” that delegated all
responsibility for the fair use analysis to faculty. See May 2012 Order at 38. The
parties submitted extensive briefing on the new policy in the form of cross-motions
for summary judgment.
After ruling on those motions, the Court ordered the parties to prepare for a
bench trial focused on the effect of the new policy on practice at GSU during the
three 2009 academic terms immediately following the policy’s adoption. Two of
those terms, the three-week “Maymester” and the Summer session, were not full
semesters. Nevertheless, through rulings on motions in limine and on evidentiary
objections made at trial, the Court confined Plaintiffs’ presentation of evidence at
trial (held during 2011) to the three designated 2009 terms. Even that limited
record, however, confirmed that GSU’s new policy caused faculty to infringe
Plaintiffs’ copyrights. As the Court found, the checklist did nothing to limit GSU’s
“mirror-image, nontransformative” copying (May 2012 Order at 65) to “decidedly
2

small” excerpts of Plaintiffs’ works, and it failed to provide guidance to GSU’s
faculty as to the proper application of the fourth fair use factor. Id. at 337-38.
Consequently, even after dismissing many claimed infringements for various
asserted failures of proof, the Court nonetheless found a number of instances of
copyright infringement that established ongoing and continuous infringement by
GSU. Plaintiffs therefore respectfully submit that the trial record and the legal
arguments already before the Court support a finding that they are entitled to the
relief set forth in the injunction Plaintiffs proposed before trial. Dkt. No. 300-1.
See, e.g., Plaintiffs’ Pre-Trial Proposed Conclusions of Law, Dkt. No. 338 at 5360; Plaintiffs’ Post-Trial Proposed Conclusions of Law, Dkt. No. 409-6 at 85-90;
Trial Transcript Volume 1, May 17, 2011, Dkt. No. 399 (“Trial Tr. Vol. 1”) at 4246 (discussing Plaintiffs’ proposed injunction); Trial Transcript Volume 15, June
7, 2011, Dkt. No. 398 (“Trial Tr. Vol. 15”) at 32-35 (same).
To the extent the Court’s invitation to Plaintiffs to propose injunctive and
declaratory relief “[i]n light of the findings of fact and conclusions of law
contained in” its May 2012 opinion contemplates a more narrowly tailored
injunction tracking the Court’s application of the fair use doctrine to the specific
works reviewed (May 2012 Order at 339), Plaintiffs have prepared a second
proposal, attached hereto as Exhibit A (the “Proposed Order”), which attempts to
3

do so.1 We note at the outset that this form of injunction is intended to apply
solely to the defined categories of “Works” of the Plaintiffs and does not purport to
address, let alone define, the intersection of copyright law and the fair use doctrine
as applied to any other types of works, including those identified in the Proposed
Order as being specifically excluded from its coverage.
ARGUMENT AND CITATION OF AUTHORITY
I.

PLAINTIFFS ARE ENTITLED TO A DECLARATORY JUDGMENT
AND A PERMANENT INJUNCTION
The Court has found that Defendants’ policies caused GSU faculty to

infringe Plaintiffs’ copyrights. May 2012 Order at 337-38. That finding justifies
the issuance of a declaratory judgment and a permanent injunction to prevent
future infringement of Plaintiffs’ works.
A declaratory judgment is “an appropriate means of determining intellectual
property rights” where an actual controversy exists as to whether a party is
infringing a copyright. See generally Baisden v. I’m Ready Prods., Inc., 804 F.
Supp. 2d 549, 551-52 (S.D. Tex. 2011); 28 U.S.C. § 2201(a). Accordingly, as set
forth in the May 11 Order, Plaintiffs’ Proposed Order seeks a declaration that

1

In offering this alternative proposal, Plaintiffs expressly reserve their right to
challenge the Court’s findings of fact and conclusions of law on appeal.
4

Defendants infringed the works identified in that Order. See Ex. A (Proposed
Order) ¶¶ II(A)-(E).
The Court’s finding that Defendants’ policies caused GSU faculty to
infringe Plaintiffs’ copyrights also merits permanent injunctive relief. The
Copyright Act authorizes the Court to grant an injunction “on such terms as it may
deem reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C. §
502(a). “[A]n injunction is appropriate when there is a past infringement and a
substantial likelihood of future infringement.” New World Music Co. v. Tampa
Bay Downs, Inc., No. 8:07-CV-398-T-33TBM, 2009 WL 35184, at *9 (M.D. Fla.
Jan. 6, 2009) (internal quotation marks and citation omitted). Courts routinely
enter broad injunctions in copyright cases based on a small sample of infringing
uses. See, e.g., Atlantic Recording Corp. v. Carter, 508 F. Supp. 2d 1019, 1026-28
(S.D. Ala. 2007) (enjoining defendant from infringing any of plaintiff record
label’s works based on a sample of twelve infringements); Virgin Records Am.,
Inc. v. Johnson, 441 F. Supp. 2d 963, 965-67 (N.D. Ind. 2006) (enjoining
defendant from infringing any of plaintiff record label’s works based on a sample
of ten infringements).
Here, the Court limited the evidentiary record to three terms chosen by the
Court (two of which were not full academic semesters). In limiting the scope of
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the evidentiary record in this manner and expressly refusing to allow Plaintiffs to
introduce any evidence of infringement in semesters in 2010 and 2011,2 the Court
intended that the infringements be deemed representative of GSU’s current
practice for the purposes of injunctive relief. See Transcript of Chambers
Conference, Nov. 5, 2010, Dkt. No. 261, at 12-14. Indeed, in a November 2010
conference, the Court noted that if Defendants refused to agree to discovery for
periods later than 2009, they would not be heard to argue that their copyright
practices had changed. Id.
The trial record contains testimony from each of the GSU faculty who
infringed Plaintiffs’ copyrights that they believed their use of Plaintiffs’ works was
authorized by the fair use doctrine even after applying the so-called fair use
checklist Defendants promulgated. Indeed, the record contains no evidence that a
single professor found that any of the four fair-use factors weighed against a fair
use determination with respect to any of Plaintiffs’ works. Plaintiffs’ Trial
Exhibits (“PX”) 558, 563-67, 570-603, 606, 608, 613, 629, 639, 643, 647-52, 65462, 938; Defendants’ Trial Exhibits (“DX”) 346-48, 428-29, 473-74, 480-81.
Thirty-one of the fair use checklists admitted into evidence did not contain a single
2

Plaintiffs’ summary judgment filing, for example, detailed the continued,
extensive use of Plaintiffs’ works during the Spring 2010 semester. See Plaintiffs’
Supplemental Local Rule 56.1 Statement of Facts in Support of Their Motion for
Summary Judgment, Dkt. No. 185-1.
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check in the “weighs against fair use” column. PX 564-67, 570, 595-99, 602-03,
608, 639, 643, 647-655; DX 473-74, 428-29, 346-48.
The Court consequently determined that Defendants’ 2009 Copyright Policy
caused the infringements the Court found were committed during 2009:
The question now is whether Georgia State’s 2009 Copyright Policy
caused those infringements. The Court finds that it did, in that the
policy did not limit copying in those instances to decidedly small
excerpts as required by this Order. Nor did it proscribe the use of
multiple chapters from the same book. Also, the fair use policy did
not provide sufficient guidance in determining the “actual or potential
effect on the market or the value of the copyrighted work,” a task
which would likely be futile for prospective determinations (in
advance of litigation). The only practical way to deal with factor four
in advance likely is to assume that it strongly favors the plaintiffpublisher (if licensed digital excerpts are available).
May 2012 Order at 337-38. Because it is clear that GSU faculty will continue to
distribute course readings electronically, there is a substantial likelihood of future
infringement unless GSU changes its copyright policy. Accordingly, the Court
should issue an injunction that prohibits the copying, display, or distribution of
Plaintiffs’ Works unless either permission to use the Work is obtained or the use
meets the fair-use criteria embodied in this Court’s findings of fact and conclusions
of law and incorporated into Plaintiffs’ Proposed Order.

7

II.

THE COURT’S FINDINGS AND CONCLUSIONS SUPPORT EACH
TERM OF PLAINTIFFS’ PROPOSED ORDER
To assist the Court in crafting appropriate injunctive relief, the remainder of

this memorandum sets forth in italics specific terms from Plaintiffs’ Proposed
Order and explains the legal and factual bases for including those provisions in an
injunction. Each italicized provision below appears in Exhibit A to this
submission.
A.

Definitions

The term “GSU” includes each and every Defendant, and all of their
agents, servants, employees, representatives, and successors, all other
persons acting under their direction, control, or supervision,
including all part-time or full-time faculty employed by, and students
enrolled at, Georgia State University, and all those in active concert
or participation with them.3
Plaintiffs’ alternative proposed injunction applies to “GSU,” defined to
include not only Defendants but also GSU’s employees, faculty, and students
because, as the Court recognized in its findings of fact, the users of GSU’s ERes
and uLearn systems include both faculty and students. May 2012 Order at 42. For
any injunction to be meaningfully enforceable, it must reach all of those users. In
addition, the members of the Board of Regents must be included in the definition
of GSU because they exercise control over the university’s copyright policies and
3

Ex. A (Proposed Order) ¶ I(A).
8

also host GSU’s uLearn system on a Board of Regents server. Stipulated Facts,
Dkt. No., 278-3 ¶ 73.
The terms “Work” or “Works” shall mean any non-fiction book other
than a textbook in hardcopy, e-book or any other format now in
existence or yet to be published in which Cambridge University Press,
Oxford University Press, Inc., or SAGE Publications, Inc. (hereafter
“Plaintiffs”) own or control the exclusive right under copyright that
GSU seeks to exercise. 4
As the Court recognized, “The analysis of the fair use defense must be done
on a case-by-case basis, Harper & Row Publishers, Inc. v. Nation Enterprises, 471
U.S. 539, 561 (1985), and ‘All four factors are to be explored, and the results
weighed together, in light of the purposes of copyright.’ Campbell v. Acuff-Rose
Music, Inc., 510 U.S. 569, 578 (1994).” May 2012 Order at 48. The Court’s
findings of fact and conclusions of law are limited to the works that were at issue
in the case – scholarly books that inform and educate. Id. at 20-23. Although
there was no dispute that many of the works at issue in this lawsuit were creative
works of scholarship, each of the takings the Court found to be non-infringing was
a nonfiction academic work. The Court concluded that the informational character
of Plaintiffs’ works “favor[ed]” GSU in the Court’s fair use analysis. Id. at 54. In
contrast, the artistic or fictional nature of a work indisputably would weigh against
a finding of fair use. See Basic Books, Inc. v. Kinko’s Graphics Corp., 758 F.
4

Ex. A (Proposed Order) ¶ I(B).
9

Supp. 1522, 1532-33 (S.D.N.Y. 1991) (“Fictional works . . . are often based
closely on the author’s subjective impressions and, therefore, require more
protection.”). Thus, to comport with the Court’s interpretation of the second fair
use factor, Plaintiffs’ Proposed Order limits the definition of “Works” to the types
of scholarly books at issue in the case; the proposed injunction does not purport to
cover works of fiction or poetry for which the second fair use factor would likely
favor Plaintiffs and dictate a different fair use determination. See May 2012 Order
at 51-52; 17 U.S.C. § 107. 5
As the Court recognized in its factor two analysis, the academic books at
issue in this lawsuit are not typical textbooks. May 2012 Order at 36-37.
Accordingly, Plaintiffs exclude textbooks from their Proposed Order. Doing so is
important, as such works call for a different analysis under the third and fourth fair
use factors because an unlicensed taking of even two or three percent of a textbook
is of a different character than the takings at issue in this action and would
indisputably cause direct harm to the market for such a work.

5

Although Plaintiffs’ Proposed Order is limited to non-fiction books, it should not
be read as authorizing unlimited takings of fictional works; some limitation is
necessary because GSU faculty have distributed entire works of fiction without
permission in electronic form. Professor Davis admitted, for example, that in one
of her courses she posted a complete short story on uLearn. Trial Transcript
Volume 7, May 25, 2011, Dkt. No. 405 (“Trial Tr. Vol. 7”) at 118.
10

Next, consistent with the media-neutral nature of copyright law, see
generally Greenberg v. Nat’l Geographic Soc’y, 533 F.3d 1244, 1257 (11th Cir.
2008), the definition of “Work” applies to all formats of scholarly books –
hardcopy, electronic, and otherwise. The Proposed Order covers copies made with
a scanner as well as copies downloaded from an e-book.
The Proposed Order also defines “Works” to include not only Plaintiffs’
existing copyrighted books but also books that Plaintiffs may publish in the future.
Courts regularly issue copyright injunctions prohibiting infringement of any of a
plaintiff’s current and future works, not just of the specific works sued upon. For
example, in Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d
1197 (C.D. Cal. 2007), a group of record-company and movie-studio plaintiffs
appended to their complaint exhibits identifying certain of their works found on the
defendants’ internet file-sharing systems. The district court (after a remand from
the United States Supreme Court) entered an injunction covering “all of Plaintiffs’
copyrighted works whether now in existence or later created,” not just the works in
the exhibits attached to the plaintiffs’ complaint. Grokster, 518 F. Supp. 2d at
1229. In doing so, the court explained that such a broad injunction was “entirely
proper” and cited supporting case law to that effect from the Eleventh Circuit and
other circuits. Id. The Grokster injunction extended to unregistered works
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because the Copyright Act is clear that registration “is not a condition of copyright
protection.” Id. (quoting 17 U.S.C. § 408).
An Eleventh Circuit case cited by the Grokster court, Pacific & Southern
Co. v. Duncan, 744 F.2d 1490 (11th Cir. 1984), exemplifies the broad scope of
injunctive relief that is appropriate where infringement of a plaintiff’s work has
been found. In that case, a television station owner sued over the infringement of a
single newscast but sought to enjoin the defendant from infringing any of its other
newscasts. The Eleventh Circuit rejected the defendant’s argument that the
injunction could not sweep more broadly than the single work identified in the
complaint and upheld this Court’s authority to issue an injunction addressing all of
the plaintiff’s works, including “unregistered works” and “works that have not
been created.” Id. at 1499 n.17; Pac. & S. Co. v. Duncan, 618 F. Supp. 469, 471
(N.D. Ga. 1985) (Evans, J.), aff’d, 792 F.2d 1013 (11th Cir. 1986) (enjoining the
copying of any of the plaintiff’s broadcast news programs).
Courts enter such broad injunctions for the pragmatic purpose of reducing
the need for further litigation. As one district court in this Circuit explained,
“because Plaintiffs continually create new works – works that would be vulnerable
to infringement if the injunction were limited to existing works, and that would
require new litigation to redress each future infringement – the requested
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injunction follows standard practice in copyright cases by covering works to be
created in the future.” Arista Records, Inc. v. Beker Enters., Inc., 298 F. Supp. 2d
1310, 1315 (S.D. Fla. 2003); see also Orth-O-Vision, Inc. v. Home Box Office, 474
F. Supp. 672, 686 (S.D.N.Y. 1979) (“[I]t would be inequitable to grant the
copyright owner . . . judgment on the issue of liability without enjoining the
infringement of future registered works. Otherwise, HBO would be required to
bring a separate infringement action every time it register[ed] a new copyrighted
work . . . .”).
The need to include future works is particularly appropriate here, where the
Court limited the evidence of infringement to 2009 on the understanding that it
would be treated as representative of ongoing conduct at GSU. Indeed, in its
summary judgment opinion, the Court explicitly stated that Plaintiffs could prove
GSU’s ongoing infringement by “put[ting] forth evidence of a sufficient number of
instances of infringement of Plaintiffs’ copyrights.” Order, September 30, 2010,
Dkt. 235 at 30. It would therefore be unfair to limit the injunction to the works
infringed in 2009 when Plaintiffs were not permitted to introduce evidence of
infringement of their works in 2010 and 2011 on the premise that conduct during
2009 would be considered representative of current practice at GSU.
The term “GSU Electronic Course Systems” shall include EReserves,
uLearn, faculty websites, course websites, or any other system now in
13

existence or hereinafter developed that is owned, licensed, used, or
controlled by GSU or the Board of Regents of the University System of
Georgia through which course reading materials (whether required,
additional, supplemental, optional or otherwise) are made available
to Georgia State University students electronically. Any copying,
posting, uploading, downloading, or other distribution done on any
GSU Electronic Course System shall, for purposes of this Order, be
attributed to and be considered done by GSU. 6
Plaintiffs’ Proposed Order defines “GSU Electronic Course System” to
include ERes, uLearn, and faculty and course websites as well as any similar
systems that GSU implements in the future. Any injunction must encompass these
systems to prevent infringing activity from being shifted away from ERes or
uLearn to evade the injunction.
B.

Restrictions on Unlicensed Takings

Plaintiffs’ Proposed Order tracks copyright law by prohibiting copying of
Plaintiffs’ Works unless GSU obtains permission or the use comports with the fair
use doctrine.7 See 17 U.S.C. § 106 (granting copyright owners exclusive rights
with respect to their works); id. §§ 107-112 (outlining limited exceptions,
including fair use, to the copyright owner’s exclusive rights). The Proposed Order
prohibits the copying and distribution of Plaintiffs’ Works and excerpts thereof via
ERes, uLearn, faculty websites, course websites, or any electronic course content
6
7

Ex. A (Proposed Order) ¶ I(C).
Ex. A (Proposed Order) ¶¶ III and IV.
14

system unless the use is (A) licensed or (B) constitutes fair use in keeping with the
Court’s analysis in the May 2012 Order. Consistent with the Court’s view that
some concrete guidance is necessary as a practical matter, Paragraph IV.B. sets
forth specific criteria to be used to evaluate whether non-transformative, mirrorimage copying of decidedly small excerpts of Plaintiffs’ Works posted to a GSU
Electronic Course System constitutes fair use.
Specific Criteria
1.

are made and/or distributed by GSU without charge strictly for
nonprofit educational purposes; AND

2.

fulfill a legitimate purpose in the course curriculum and are
narrowly-tailored to serve a nonprofit educational purpose; 8

The Court’s analysis of the first fair use factor turned on the nonprofit
educational use of concededly non-transformative excerpts of Plaintiffs’ works in a
classroom setting. Pretermitting whether this Court’s findings and conclusions
overstate the significance of the nonprofit educational purpose to the fair use
analysis, the injunction should prohibit GSU from profiting from the unlicensed
use of Plaintiffs’ works by charging students a library or computer fee for
accessing unlicensed excerpts from Plaintiffs’ works on ERes or uLearn. GSU
also should not be permitted to distribute Plaintiffs’ works for purposes other than
8

Ex. A (Proposed Order) ¶¶ IV(B)(1)-(2).
15

classroom teaching or to make available to students excerpts that are not narrowlytailored to accomplish the instructor’s educational objectives.
3.

do not constitute the “heart of the work”;9

As the Court correctly noted, under the third fair use factor the copying of
even very small excerpts may be outside the permissible bounds of fair use if the
excerpt is the “heart” of the copyrighted work. See May 2012 Order at 67 (citing
Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985) (holding
that copying the “heart” of a work is not fair use)); id. at 328 (finding that the
chapters Professor Harvey assigned from The Power Elite were “the heart of the
work in that they essentially sum up the ideas in the book”). Accordingly, this
provision is included as an additional, non-quantitative check against infringing
uses of Plaintiffs’ Works.
4.
constitute a decidedly small excerpt in accordance with the
following criteria:
a.
if from a book that is not divided into chapters or contains
fewer than ten chapters and for which a license for digital academic
use is available, do not exceed ten (10) percent of the pages in the
Work; or
b.
if from a book that contains ten or more chapters and for which
a license for digital academic use is available, do not exceed one (1)
chapter; or
9

Ex. A (Proposed Order) ¶ IV(B)(3).
16

c.
if, after a reasonable investigation that shall at a minimum
include consulting both the copyright owner and its authorized agent
(such as Copyright Clearance Center, Inc.), GSU determines that the
digital excerpt cannot be licensed or purchased for use on GSU
Electronic Course Systems, and that the excerpt is sufficiently small
so as not to cause actual or potential market harm to the Work; 10
This section of the Proposed Order addresses the Court’s interpretation of
the third and fourth fair use factors. The Court’s determination of whether any
particular unlicensed taking by GSU ran afoul of the fair use doctrine largely
turned on two factors: first, whether the excerpt was “decidedly small” and,
second, whether permission was available to distribute the excerpt in digital form.
May 2012 Order at 55, 64-66, 88-89. Subclauses (a) and (b) address the former
and incorporate the size limitations imposed by the Order. Subclause (c) addresses
the availability of digital permissions. Given the weight that the Court placed upon
this factor, it is clear that, as a practical matter, GSU must be required to
investigate the availability of digital permissions before it may determine that a
proposed use of an excerpt of a Work is protected by the fair use doctrine –
something GSU did not do with respect to any of the works at issue in this case.
Requiring GSU to inquire into the availability of digital permissions is not
burdensome. As the trial record demonstrated, Copyright Clearance Center (CCC)
provides an easy-to-use Web site for this purpose, and contacting the publisher
10

Ex. A (Proposed Order) ¶¶ IV(B)(4)(a)-(c).
17

directly if CCC cannot provide digital permission would not be difficult. See Trial
Transcript Volume 4, May 20, 2011, Dkt. No. 402 (“Trial Tr. Vol. 4”) at 24-30
(describing CCC’s web site and the process for obtaining digital permissions).
While Plaintiffs have not prescribed hard and fast limits on the amount of a
Work that may be used when digital permission is not available, subclause (c) is
not without limit. To the contrary, its final sentence makes clear that even if
permission to make use of a digital excerpt is not available, the fair use analysis
still may favor Plaintiffs and prohibit use of an excerpt that is large enough to harm
the actual or potential print market for the work. Thus, for example, a GSU
professor could not distribute hundreds of pages from a copyrighted work in PDF
form simply because digital permissions for that work were not available.
Plaintiffs respectfully urge the Court to clarify that takings of Works for which
digital licenses are not available shall not substantially exceed one chapter or ten
percent of a Work. Inclusion of limiting language is crucial because copyright law
does not require Plaintiffs to make all of their works available in any form, nor
should fair use turn on their refusal or inability to do so. See, e.g., Sony BMG
Music Entm’t v. Tenenbaum, 721 F. Supp. 2d 85, 119 (D. Mass. 2010) (rejecting
defendant’s fair use defense and finding that “[e]ven if a copyrighted work’s
commercial availability factors into the fair-use analysis, a consumer does not have
18

a right to demand that a copyright owner make his work available in the exact
format that the consumer desires.”), aff’d in part and rev’d in part, 660 F.3d 487,
509 (1st Cir. 2011) (reversing district court’s reduction of jury’s statutory damages
award). In fact, as a contractual matter, Plaintiffs are limited in the extent to which
they can make certain works available digitally.
Allowing unlicensed takings of large excerpts simply because (i) a digital
license is unavailable and (ii) the user does not want to pay for a print license has
no basis in the law.
5.
are not from works intended to be “consumable” in the course
of study or of teaching, including but not limited to workbooks,
exercises, standardized tests and test booklets and answer sheets and
like consumable material; 11
Copying portions of a workbook and distributing those to students directly
substitutes for a purchase of the work and thereby impacts the market for the
original. Students would not purchase workbooks if professors distributed the
portions of those works that they used in class electronically.
C.

Monitoring and Compliance

For all excerpts of Works for which permission has not been obtained
that is distributed through GSU Electronic Course Systems pursuant
to Paragraph IV(B) above, designated GSU personnel shall confirm
that the excerpt meets these criteria and shall retain for at least three
(3) years a record identifying at least the title, author, and publisher
11

Ex. A (Proposed Order) ¶ IV(B)(5).
19

of the Work, the pages or chapter copied, as relevant, the total pages
or chapters of the Work, the sources consulted to determine whether
licensing was available (including without limitation, Copyright
Clearance Center and the publisher), and the date of such
investigation.12
This provision requires GSU to maintain records concerning its faculty’s
unlicensed takings. It also requires GSU to document the efforts it undertakes to
determine whether licensing is available for such excerpts. This provision is
important to the enforcement of any injunction for several reasons. First, despite
GSU’s current policy requiring faculty to keep a copy of the fair use checklists,
many faculty who testified at trial admitted that they either did not fill out the
checklist (some claiming to have done so “mentally”) or did not keep a copy of the
checklist after completing it. See, e.g., Trial Transcript Volume 6, May 24, 2011,
Dkt. No. 404 (“Trial Tr. Vol. 6”) at 112 (Kim); Trial Tr. Vol. 7 at 103, 114, 118
(Davis); id. at 62-63 (Orr); Trial Transcript Volume 8, May 26, 2011, Dkt. No. 406
(“Trial Tr. Vol. 8”) at 150-51 (Hankla); Trial Transcript Volume 10, May 31,
2011, Dkt. No. 393 (“Trial Tr. Vol. 10”) at 131-34 (Murphy).
Second, ensuring that GSU actually inquires into the availability of licensing
and documents that inquiry is critical; not a single GSU professor who testified at
trial investigated whether digital permissions were available for the excerpts they
12

Ex. A (Proposed Order) ¶ IV(C).
20

used. See, e.g., Trial Tr. Vol. 6 at 120 (Kim); Trial Tr. Vol. 7 at 73 (Orr); id. at
167 (Davis); Trial Tr. Vol. 8 at 162 (Hankla); Trial Transcript Volume 9, May 27,
2011, Dkt. No. 407 (“Trial Tr. Vol. 9”) at 9-10, 24 (Gabler-Hover); id. at 164-165
(Moloney); Deposition of Patricia Dixon, February 2, 2011 at 101-103 (by video,
see Trial Tr. Vol. 7 at 168-69); Deposition of Jennifer McCoy, February 3, 2011 at
69-70 (by video, see Trial Transcript Volume 12, June 2, 2011, Dkt. No. 395
(“Trial Tr. Vol. 12”) at 37); Trial Tr. Vol. 10 at 68 (Kruger).
Third, documentation of GSU’s investigations as to the availability of
licensing is the only way to monitor GSU’s compliance without having to conduct
full-scale evidentiary hearings with testimony from professors. Placing the burden
on GSU to document and maintain records concerning its unlicensed takings is
consistent with the fact that the defendant bears the burden of proof as to the fair
use affirmative defense. May 2012 Order at 72-73.
GSU shall promptly, and in no event any later than 45 days following
entry of this Order, take all appropriate steps to modify its existing
copyright policies governing the activities of GSU so as to comport
with all aspects of this Order, including without limitation by
notifying faculty and other instructors that the criteria for fair use
determinations set forth in this Order supersede use of GSU’s existing
“fair use” checklist.13

13

Ex. A (Proposed Order) ¶ V.
21

Because the Court has found that GSU’s 2009 copyright policy caused the
infringements, GSU must conform its policy to this Court’s Order, including by
promptly informing faculty that the injunction supersedes the so-called fair use
checklist. This provision of Plaintiffs’ Proposed Order requires GSU to do so
within forty-five days of the entry of the injunction.
GSU shall promptly and in no event later than 30 days following entry
of this Order provide a copy of this Order to all faculty and other
instructors and users as well as to all other administrative and
technical personnel who have to date been, or are reasonably likely in
the future to be, involved in the development, operation, or
maintenance of GSU Electronic Course Systems. In addition:
A.
Whether in conjunction with such communication or otherwise,
GSU shall make clear the importance of compliance with the terms of
the Order and that violations will be subject to disciplinary sanctions
and, potentially, to legal actions for copyright infringement; and
B.
GSU shall post the full Order on the GSU website in an
appropriately prominent manner and shall cause the provisions of
Paragraphs III and IV of the Order to appear on the screen before a
faculty member, library employee, or other GSU personnel is able to
upload, post, or otherwise make available any copyrighted material
via GSU Electronic Course Systems; and
C.
GSU shall incorporate reference to this Order, including either
by reproducing its text or otherwise providing advice on how the
reader can easily locate it, in all university-wide handbooks or the
like that set forth codes of faculty, student, or employee conduct.
Users must be reminded of the limitations imposed on their conduct
by copyright law and must be prohibited from distributing copies
otherwise permitted by this Order to others. 14
14

Ex. A (Proposed Order) ¶ VI.
22

This provision of the Proposed Order requires GSU to promptly distribute
the injunction within the university; to ensure that it is available and visible onscreen in its electronic course systems; and to incorporate its terms into GSU’s
handbooks and codes of conduct. The rationale for this provision is obvious: GSU
is a large institution, and if it does not take prompt steps to communicate the terms
of the injunction effectively, members of its community may not learn about it and
may violate its terms unknowingly.
Although Plaintiffs’ proposal leaves the exact nature of the sanctions for
non-compliance to GSU’s discretion, it is important that GSU formulate and
impose sanctions on members of the university community who violate the
injunction. Otherwise, it is unlikely that the injunction will be taken seriously.
The university’s experience with the current policy provides ample basis for
concern on this score. Of the professors who testified at trial (either in person or
by deposition), only three both (i) physically filled out fair use checklists and (ii)
retained copies of them. See Appendix C to Plaintiffs’ Post-Trial Proposed
Findings of Fact, Dkt. No. 412-3. This was so even though the current GSU policy
requires faculty to do both of these things. Joint Trial Exhibit 4 at 7-8.
Within forty-five (45) days of the entry of the Order, GSU shall certify
to the Court, and shall serve on plaintiffs, a report detailing the
measures it has taken to comply with the Order. The report shall
23

include a certification signed by the Provost of GSU that all Works
that reside or have resided on any GSU Electronic Course System
have been brought into compliance with this Order. In addition, for
each academic term (Spring, Maymester, Summer, Fall, and Winter)
for three (3) years following the effective date of this Order, the GSU
Provost shall certify to the Court, with a copy to Plaintiffs’ counsel,
that based on diligent monitoring efforts GSU is in compliance with
the terms of the Order for all GSU Electronic Course Systems,
including but not limited to with respect to the ERes and uLearn
systems or their equivalents.
A.
Such certification shall be accompanied by a standard ERes
report in the same format as was produced during the litigation (or an
equivalent report from any similar system) listing the title, author, and
publisher for all reading materials present on the ERes system during
that semester, the course-reserves page for which the materials are
listed, and the pages or chapter made available to students during
that semester.15
In addition to adjusting its policy to comport with the injunction the Court
enters and educating its faculty and students about the injunction, this Court and
Plaintiffs must have the opportunity to monitor GSU’s compliance with the
injunction. To that end, Plaintiffs’ Proposed Order includes modest oversight
provisions that require GSU administrators to certify to this Court within forty-five
days of the entry of the injunction that the university is in compliance. In addition,
Plaintiffs propose that for three years following the entry of an injunction, GSU
certify its compliance with the Court’s the injunction once per semester. To allow
the Court and Plaintiffs to assess the efficacy of GSU’s compliance, the injunction
15

Ex. A (Proposed Order) ¶¶ VII-VII(A).
24

also should require GSU to attach appropriate reports to its certifications. Such
reports, which GSU produced during discovery, can be created in a matter of
minutes, and they provide information from which GSU’s compliance with an
injunction may be ascertained.
B.
Upon request made no more frequently than once each
semester, GSU shall provide such access to the GSU Electronic
Course Systems and any relevant records concerning activities subject
to this Order, including the uLearn system (or its equivalent), and to
the certifications referred to in Paragraph IV(C) above, to a
designated representative of Plaintiffs as will enable Plaintiffs to
confirm GSU’s compliance with the terms of the Order. Access shall
be afforded at reasonable times during GSU’s business hours upon
fifteen (15) days’ advance notice. In the event that any use or posting
on any GSU Electronic Course System is not in compliance with this
Order, GSU will make best efforts to timely bring such use or posting
into compliance. 16
To further ensure compliance with the proposed injunction and with
copyright law, GSU also must afford Plaintiffs reasonable, periodic access to the
uLearn system. As the Court noted in its findings of fact, unlike ERes, uLearn
does not have a “hit count” reporting mechanism. May 2012 Order at 42 n.29.
Moreover, unlike ERes, which GSU library staff administer, instructors can post
course readings on uLearn directly, with no oversight of any kind. Id.; Trial
Transcript Volume 5, May 23, 2011, Dkt. No. 403 (“Trial Tr. Vol. 5”) at 16-19, 29.
Left unmonitored, uLearn presents an opportunity for GSU’s instructors to evade
16

Ex. A (Proposed Order) ¶ VII(B).
25

compliance with the proposed injunction. The limited uLearn monitoring Plaintiffs
seek should not impose any material burden on GSU, which provided similar
access to the uLearn system during fact discovery.
Nothing herein is intended to prescribe the extent to which GSU may
be permitted to use copyrighted material other than the Works as
defined herein without securing the permission of the owners of
copyright in such materials.17
Plaintiffs’ Proposed Order is limited to the Works at issue in this case and to the
Court’s findings of fact and conclusions of law. Accordingly, the Proposed Order
does not attempt to define or address the limits of fair use for works of fiction,
textbooks, journal articles, paper coursepacks, or any of the other myriad uses of
other types of copyrighted works that may occur at GSU.
CONCLUSION
Although Plaintiffs believe the injunctive relief they proposed before trial is
warranted in light of the record and controlling copyright law, they have prepared
and submitted an alternative proposed injunction based on the findings and
conclusions this Court has reached. Plaintiffs expressly reserve the right to
challenge the Proposed Order on appeal.

17

Ex. A (Proposed Order) ¶ VIII.
26

Respectfully submitted this 31st day of May, 2012.
/s/ John H. Rains IV
Edward B. Krugman
Georgia Bar No. 429927
John H. Rains IV
Georgia Bar No. 556052
BONDURANT, MIXSON & ELMORE, LLP
1201 West Peachtree Street NW
Suite 3900
Atlanta, Georgia 30309
[phone]
R. Bruce Rich (pro hac vice)
Randi W. Singer (pro hac vice)
Jonathan Bloom (pro hac vice)
Todd D. Larson (pro hac vice)

WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
New York, New York 10153
Attorneys for Plaintiffs

27

CERTIFICATE OF COMPLIANCE
Pursuant to Local Rule 7.1(D), I hereby certify that this document complies
with the font and point selections set forth in Local Rule 5.1. This document was
prepared in Times New Roman 14 point font.
/s/ John H. Rains IV
John H. Rains IV

28

CERTIFICATE OF SERVICE
I hereby certify that I have this day filed the foregoing PLAINTIFFS’
MEMORANDUM OF LAW IN SUPPORT OF THEIR POST-TRIAL
PROPOSED DECLARATORY JUDGMENT AND PERMANENT
INJUNCTION with the Clerk of Court using the CM/ECF filing system which
will send e-mail notification of such filing to opposing counsel as follows:
John W. Harbin, Esq.
Natasha H. Moffitt, Esq.
KING & SPALDING LLP
1180 Peachtree Street
Atlanta, Georgia 30309
Katrina M. Quicker, Esq.
BALLARD SPAHR, LLP
999 Peachtree Street, Suite 1000
Atlanta, Georgia 30309
Anthony B. Askew, Esq.
Stephen M. Schaetzel, Esq.
MCKEON, MEUNIER, CARLIN & CURFMAN, LLC
817 W. Peachtree Street, Suite 900
Atlanta, Georgia 30308
Mary Jo Volkert, Esq.
Assistant State Attorney General
40 Capitol Square
Atlanta, Georgia 30334
This 31st day of May, 2012.
/s/ John H. Rains IV
John H. Rains IV
29