Cambridge University Press et al v. Patton et al

Filing 432

RESPONSE re 426 Plaintiffs' Memorandum of Law in Support of Their Post-Trial Proposed Declaratory Judgment and Permanent Injunction filed by J. L. Albert, C. Dean Alford, Mark P. Becker, Kenneth R. Bernard, Jr, James A. Bishop, Hugh A. Carter, Jr, William H. Cleveland, Frederick E. Cooper, Larry R. Ellis, Rutledge A. Griffin, Jr, Robert F. Hatcher, Ronald Henry, C. Thomas Hopkins, Jr, Charlene Hurt, Felton Jenkins, W. Mansfield Jennings, Jr, James R. Jolly, Donald M. Leebern, Jr, Eldridge McMillan, William NeSmith, Jr, Risa Palm, Carl V. Patton, Doreen Stiles Poitevint, Willis J. Potts, Jr, Neil L. Pruitt, Jr, Wanda Yancey Rodwell, Nancy Seamans, Kessel Stelling, Jr, Benjamin J. Tarbutton, III, Richard L. Tucker, Allan Vigil, Larry Walker, Philip A. Wilheit, Sr. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)(Askew, Anthony) Modified on 6/21/2012 in order to update docket text (anc).

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

CAMBRIDGE UNIVERSITY PRESS;
OXFORD UNIVERSITY PRESS, INC.;
SAGE PUBLICATIONS, INC.,
Plaintiffs
v.
MARK P. BECKER, in his official
capacity as President of Georgia State
University, et al.
Defendants

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CIVIL ACTION NO.
1:08-CV-1425-ODE

DEFENDANTS’ OPPOSITION TO PLAINTIFFS’ REQUEST
FOR INJUNCTIVE RELIEF

TABLE OF CONTENTS

I.  INTRODUCTION ...............................................................................................1 
II.  PLAINTIFFS ARE NOT ENTITLED TO AN INJUNCTION ..........................2 
A. 

Plaintiffs Failed To Prove A Sufficient Number of Infringements...............2 

B. 

Even If Five Infringement Findings Are Sufficient, No Injunction Should
Issue ..............................................................................................................7

C. 

Declaratory Judgment Is A Proper Remedy..................................................9 

D. 

Any Perceived Need For An Injunction Is Moot ........................................13 

III. IF NECESSARY, DEFENDANTS PROPOSE AN APPROPRIATE
INJUNCTION ...................................................................................................16
IV. PLAINTIFFS’ PROPOSED INJUNCTION IS INAPPROPRIATE ................17 
V.  CONCLUSION..................................................................................................22 

i

TABLE OF AUTHORITIES
CASES
ACORN v. Edgar, 56 F.3d 791 (7th Cir. 1995) ............................................... 18-19
Alcatel USA, Inc. v. DGI Techs., Inc., 166 F.3d 772 (5th Cir. 1999) ................ 20
Armstrong v. Davis, 275 F.3d 849 (9th Cir. 2001) ............................................ 18
Associated Gen. Contractors of Am. v. City of Columbus,
172 F.3d 411 (6th Cir. 1999) ............................................................................. 18
Atl. Recording Corp v. Carter,
508 F. Supp. 2d 1019 (S.D. Ala. 2007) ............................................................. 16
Baisden v. I’m Ready Prods., Inc., 804 F. Supp. 2d 549 (S.D. Tex. 2011) ....... 7
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) ................................ 9-10
Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624 (7th Cir. 2003) ............ 7
Christopher Phelps & Assoc., LLC v. Galloway,
492 F.3d 532 (4th Cir. 2007) ............................................................................. 19
Clement v. Cal. Dep’t of Corr., 364 F.3d 1148 (9th Cir. 2004) ........................ 6
Dairy Mart Convenience Stores, Inc. v. Nickel,
411 F.3d 367 (2d Cir. 2005) ............................................................................... 18
Dean v. Coughlin, 804 F.2d 207 (2d Cir. 1986) ................................................ 22
Deuel v. Dalton, No. 3:11–cv–466, 2012 U.S. Dist. LEXIS 48166
(M.D. Tenn. Apr. 4, 2012) ................................................................................. 18
Doe v. Div. of Youth & Family Servs., 148 F. Supp. 2d 462 (D.N.J. 2001) ...... 14
Dolori Fabrics, Inc. v. Limited, Inc., 662 F. Supp. 1347 (S.D.N.Y 1987) ........ 14
ii

Dun v. Lumbermen’s Credit Ass’n, 209 U.S. 20 (1908) .................................. 13, 14
eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006) ................................... 7, 8
Ex Parte Young, 209 U.S. 123 (1908) ............................................................... 5
Gilmore v. California, 220 F.3d 987 (9th Cir. 2000) .................................... passim
Green v. Mansour, 474 U.S. 64, 73 (1985) ....................................................... 20
Harrison & Burrowes Bridge Constructors, Inc. v. Cuomo,
981 F.2d 50 (2d Cir. 1992) ................................................................................ 14
Idaho v. Coeur d’Alene Tribe, 521 U.S. 261 (1997) ....................................... 15-16
Kepner-Tregoe, Inc. v. Leadership Software, Inc.,
12 F.3d 527 (5th Cir. 1994) ............................................................................... 5, 15
Love v. Kwitny, 772 F. Supp. 1367 (S.D.N.Y. 1991) ...................................... 17, 20
Milliken v. Bradley, 433 U.S. 267 (1977) .......................................................... 6
Newman v. Alabama, 683 F.2d 1312 (11th Cir. 1982) ...................................... 18
Northwest Airlines, Inc. v. American Airlines, Inc.,
870 F. Supp. 1504 (D. Minn. 1994) ................................................................... 14
Papasan v. Allain, 478 U.S. 265 (1986) ............................................................ 5
Puerto Rico Aqueduct & Sewer Auth. v. Metcalf & Eddy, Inc.,
506 U.S. 139 (1993) ........................................................................................... 5
Pub. Utils. Comm’n v. United Fuel Gas Co., 317 U.S. 456 (1943) .................. 6
Robertson v. Huffman, 144 F. Supp. 2d 447 (W.D.N.C. 2001) ......................... 14
Seminole Tribe v. Florida, 517 U.S. 44 (1996) ................................................. 5
iii

Summit Med. Assocs., P.C. v. Pryor, 180 F.3d 1326 (11th Cir. 1999) .............. 4, 5
U.S. ex rel. McNeill v. Tarumianz, 242 F.2d 191, 195 (3d Cir. 1957) .............. 6
Verizon Md., Inc. v. Pub. Serv. Comm’n, 535 U.S. 635 (2002) ........................ 4
Virgin Records Am., Inc. v. Johnson,
441 F. Supp. 2d 963 (N.D. Ind. 2006) ............................................................... 7
Waldman Publ’g Corp. v. Landoll, Inc., 43 F.3d 775 (2d Cir. 1994) ............... 16
STATUTES
17 U.S.C. § 107 .................................................................................................. 20
17 U.S.C. § 502 ................................................................................................. 16
TREATISES
4 Nimmer on Copyright § 14.06 [C] (Matthew Bender, Rev. Ed.) ................ 16-17

iv

I.

INTRODUCTION
Plaintiffs are not entitled to any relief because they have failed to “put forth

evidence of a sufficient number of instances of infringement” to show that the
2009 Copyright Policy resulted in “ongoing and continuous misuse of the fair use
defense.” Dkt. No. 235 at 30; Dkt. No. 423 at 4. Instead, of the 126 original
infringement allegations (and of the 99 asserted at trial), Defendants prevailed on
all but five (5).
Simply put, five (5) violations are not enough. Three infringements of the
same book (albeit multiple editions) by one assistant professor in the College of
Education, a single infringement by one associate professor in the School of Social
Work, and a single infringement by one assistant professor in the Sociology
Department are not sufficient to establish ongoing and continuous misuse of the
fair use defense by Georgia State University (“GSU”). See Dkt. No. 235 at 30
(footnote omitted); Dkt. No. 423 at 4. Such de minimus acts do not justify any
relief – much less the broad and overreaching injunctive relief sought by Plaintiffs.
To the contrary, the Defendants have demonstrated an ongoing and goodfaith effort to prevent copyright infringement. Indeed, as found by the Court:
“Defendants, in adopting the 2009 policy, tried to comply with the Copyright Act.”
Dkt. No. 423 at 338. There is no evidence that GSU misused the fair use defense.
1

There is no evidence that GSU will ignore the Court’s comprehensive discussion
and analysis of the fair use defense. In fact, Defendants have already taken steps to
comply with the findings of this Court in its May 11, 2012 Order. See Exhibits A
and B. There is no basis for relief here.
Defendants submit that the Court should deny Plaintiffs’ request for an
injunction. If any relief is to be granted, Defendants submit a proposed
Declaratory Judgment (see Exhibit C) that delineates the parties’ respective rights
in the unique environment of academic use of scholarly works, and request that the
Court adopt their proposed Declaratory Judgment in accordance with the Court’s
May 11, 2012 Order.
II.

PLAINTIFFS ARE NOT ENTITLED TO AN INJUNCTION
A. Plaintiffs Failed To Prove A Sufficient Number of
Infringements
GSU is a substantial public enterprise, serving approximately 30,000

undergraduate and graduate students with over 1,000 full-time faculty members.
Dkt. No. 235 at 7. GSU students routinely purchase and use thousands of books
per term.
Plaintiffs originally alleged that GSU was engaged in massive unlawful
copying of excerpts. More particularly, Plaintiffs’ complaint alleged “systematic,
widespread” infringement of “a vast amount of copyrighted works.” Dkt. No. 39
2

at ¶ 1. At trial, Plaintiffs failed to prove those allegations. Far from finding
“widespread” or “systematic” infringement, the Court found five infringing uses:
PROFESSOR
Kaufmann
Kaufmann
Kaufmann
Harvey
Ohmer

WORK (PUBLISHER)
The Sage Handbook of Qualitative
Research (Third Edition) (Sage)
The Sage Handbook of Qualitative
Research (Second Edition) (Sage)
The Sage Handbook of Qualitative
Research (Third Edition) (Sage)
The Power Elite (Oxford)
Utilization – Focused Evaluation:
The New Century Text (Sage)

% USED

TERM

8.38%

Maymester, 2009

3.01%

Summer, 2009

12.29%

Fall, 2009

12.5%

Fall, 2009

8.28%

Fall, 2009

When focused by the Court on three academic terms in 2009,1 Plaintiffs
asserted 126 alleged infringements involving 48 professors. By the beginning of
trial, Plaintiffs’ claims were reduced to 99 alleged infringements involving 33
professors. At trial, Plaintiffs offered evidence of only 75 alleged infringements
involving 23 professors. Dkt. No. 410 at 9; Dkt. No. 423 at 8. Plaintiffs attempted
to introduce into evidence a reduced list of 75 alleged infringements, but that list
was not admitted. Dkt. No. 423 at 8 n.8. The total number of infringements tried
1

Plaintiffs suggest that the Court unfairly limited their case to just the three terms
immediately following the implementation of GSU’s new copyright policy. Dkt.
No. 426 at 5. But as the Court previously stated: “Plaintiffs made the strategic
choice to build their case based on evidence obtained before the instructors had
ample time to become adjusted to the current policy.” Dkt. No. 234 at 9.
3

to the Court was 99. Of those 99, only five (5) were found to be infringements
(5% of all tried allegations);2 three by the same professor (Kaufmann), and all quite
close to fair, with the Court resolving those close questions in favor of
infringement (factors one and two in favor of Defendants and factors three and four
in favor of Plaintiffs). Dkt. No. 428 at 338-339. Only two plaintiffs (Sage and
Oxford) prevailed on any claims. No Cambridge copyright was found to be
infringed.
That is simply not enough to establish an ongoing and continuous violation
of federal law as Ex Parte Young requires to enjoin a State actor. See Ex Parte
Young, 209 U.S. 123 (1908); Verizon Md., Inc. v. Pub. Serv. Comm’n, 535 U.S.
635 (2002); Summit Med. Assocs., P.C. v. Pryor, 180 F.3d 1326, 1336-38 (11th
Cir. 1999).
Plaintiffs’ Brief implicitly recognizes the paucity of “instances of
infringement” because instead of focusing on the Court’s findings as to its 99 tried
allegations of copyright infringement, Plaintiffs call attention to facts not relied on
by the Court. For example, Plaintiffs argue that “each of the [3] GSU faculty who
infringed Plaintiffs’ copyrights . . . believed their use of Plaintiffs’ works was

2

Those five (5) infringements, out of the original 126 allegations, represent
approximately 3% of all allegations of infringement.
4

authorized by the fair use doctrine.” Dkt. No. 426 at 6. Plaintiffs ignore the other
twenty (20) professors who were found not to have infringed Plaintiffs’ copyrights.
Indeed, the evidence shows that in the vast majority of instances, the 2009
Copyright Fair Use Checklist assisted in addressing the fair use analysis. Dkt. No.
423 at 38.
Moreover, Plaintiffs’ request for a forward-looking injunction does not,
standing alone, demonstrate a continuing violation of federal law. Ex Parte Young
relief does not apply in “cases in which federal law has been violated at one time
or over a period of time in the past.” See Summit Med., 180 F.3d at 1338. Courts
must carefully scrutinize whether actions are in fact continuing violations. See
Idaho v. Coeur d’Alene Tribe, 521 U.S. 261, 269 (1997). The Supreme Court, in
addressing the continuing violation requirement, noted that the most important
consideration when invoking the Ex Parte Young exception is understanding the
exception’s “proper role in our federal system” – such suits will only be allowed to
end continuing violations of federal law. Papasan v. Allain, 478 U.S. 265, 277-78
(1986); see also Seminole Tribe v. Florida, 517 U.S. 44, 73 (1996); Puerto Rico
Aqueduct & Sewer Auth. v. Metcalf & Eddy, Inc., 506 U.S. 139, 146 (1993).
Permanent injunctions are not automatic after a finding of infringement. See
eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 392-93 (2006) (patent);
5

Christopher Phelps & Assoc., LLC v. Galloway, 492 F.3d 532, 543 (4th Cir. 2007)
(copyright); Love v. Kwitny, 772 F. Supp. 1367 (S.D.N.Y. 1991), aff’d, 963 F. 2d
1521 (2d Cir. 1992), cert. denied, 506 U.S. 862 (1992). They are even less so
against State officers and agencies, as injunctive relief is proper only where the
case is reasonably free from doubt and an injunction is necessary to prevent great
and irreparable injury. See Pub. Utils. Comm’n v. United Fuel Gas Co., 317 U.S.
456, 468-69 (1943); U.S. ex rel. McNeill v. Tarumianz, 242 F.2d 191, 195 (3d Cir.
1957).
The evidence of appropriate use of the fair use defense, and the decidedly
small number of infringements, demonstrate that Plaintiffs have not met their
burden of showing continuous and ongoing misuse of the fair use defense as
required by the Court and Ex Parte Young. It is irrelevant that Plaintiffs did not
present any evidence at trial for 23 of the 99 alleged claims. Plaintiffs asserted
those claims and Defendants were prepared to defend those allegations as they
defended the others. Plaintiffs prevailed on a mere 5% of the total 99 alleged
infringements at trial. See Dkt. No. 423 at 338-339.
The cases cited by Plaintiffs in favor of the broad injunctive relief they seek
do not address what may be “sufficient” in a situation where Plaintiff failed to

6

prove 95% of its allegations. In fact, Plaintiffs rely on two default judgment cases3
where there was no defense and no evidence of non-infringement. Moreover, in
direct contrast to those two cases where the failure to defend was cited as evidence
of intent to continue willful copyright infringement, here the Court found that the
Defendants “tried to comply with the Copyright Act” and failed only five (5) times
because “fair use principles are notoriously difficult to apply.” Dkt. No. 423 at
338. There is no basis for any injunction here because Plaintiffs could not and did
not prove a “sufficient number of infringements” to establish a misuse of the fair
use defense.
B. Even If Five Infringement Findings Are Sufficient, No
Injunction Should Issue
Even if this Court were to find that GSU had “misused the fair use defense,”
which Defendants strenuously deny, injunctive relief would still not be justified.
As the Supreme Court has recognized, the “goals of the copyright law. . . are not
always best served by automatically granting injunctive relief . . . .” Campbell v.
Acuff-Rose Music, Inc., 510 U.S. 569, 578 n.10 (1994) (citing with approval Abend
v. MCA, Inc., 863 F.2d 1465 (9th Cir. 1988), aff’d sub nom. Stewart v. Abend, 495
U.S. 207 (1990)).
3

See Dkt. No. 426 at 5 (citing Atl. Recording Corp v. Carter, 508 F. Supp. 2d 1019
(S.D. Ala. 2007) and Virgin Records Am., Inc. v. Johnson, 441 F. Supp. 2d 963
(N.D. Ind. 2006)).
7

For example, in Dun v. Lumbermen’s Credit Ass’n, 209 U.S. 20 (1908), the
Supreme Court upheld the refusal to grant an injunction even though defendant had
been found to infringe the plaintiff’s copyright. The defendant in Dun published a
book that contained commercial business information, such as credit ratings of
merchants and manufacturers in North America. Defendant admitted using
portions of the plaintiff’s work but also included other information.4 The Court
found that the use of plaintiff’s work was “so insignificant compared with the
injury from stopping [defendant’s] use of their enormous volume of independently
acquired information, that an injunction would be unconscionable.” Id. at 23.
Defendants here submit that, likewise, it would be unconscionable to enjoin them
given the significant volume of non-infringing uses as compared to the relatively
insignificant number of infringements actually established by two of the Plaintiffs.
During the instant litigation, Defendants did not stubbornly resist but
instead took steps to change their previous copyright guide and institute the 2009
Copyright Policy. As Plaintiffs point out, prior to the adoption of the 2009
Copyright Policy, some GSU faculty believed that using as much as twenty percent
of a copyrighted work was acceptable as fair use. Dkt. No. 426 at 1-2. The 2009
4

For example, the defendant’s book provided information on 113 subjects while
the plaintiff’s book only discussed 19. And, the defendant’s book contained over
16,000 names (and over 400 towns) that were not in plaintiff’s book. Dun, 209
U.S. at 22-23.
8

Copyright Policy appreciably altered those perceptions. As the Court found, the
average use in the 99 instances of alleged infringement was just “9.6% of the pages
in the copyrighted books” and “[t]he majority of the excerpts were one chapter of a
multichapter book” (with an average of 18 chapters).5 Dkt. No. 423 at 6.
Moreover, the 2009 Copyright Policy ensured that any use was only in “carefully
monitored circumstances” and that use was restricted to students and only during
the relevant course for the term. Dkt. No. 423 at 79. Given these protections, this
Court concluded that the “2009 Copyright Policy significantly reduced the
unlicensed copying of Plaintiffs’ works . . . .” Id. at 38. Thus, even if five (5)
infringements are sufficient to show “ongoing and continuous” infringement,
injunctive relief is not warranted.
C. Declaratory Judgment Is A Proper Remedy
Although Defendants submit that an injunction is not appropriate relief,
Defendants alternatively submit that a Declaratory Judgment would be appropriate
to delineate the scope of both parties’ rights in an effort to avoid future litigation
regarding these same issues.
5

The numbers only change slightly for the works for which Plaintiffs actually
presented proof at trial: “On average these excerpts were 10.1% of the pages in the
copyrighted books. Fifty-six of the excerpts were comprised of one chapter or less
from 54 of the books.” Dkt. No. 423 at 37.
9

Plaintiffs rely on Baisden v. I’m Ready Prods., Inc., 804 F. Supp. 2d 549,
551-552 (S.D. Tex. 2011), for the proposition that a declaratory judgment in a
copyright case is “an appropriate means of determining intellectual property
rights.” Dkt. No. 426 at 4. This is also so when the prevailing party is the alleged
infringer. See id. (entering Declaratory Judgment for defendants).
Here, the 2009 Copyright Policy was demonstrably effective. Dkt. No. 423
at 38. The use of a checklist to guide professors’ decisions regarding fair use
reduced the use of excerpts. In keeping with the Court’s findings, the current Fair
Use Exception Section of the 2009 Copyright Policy and the Fair Use Checklist
have been carefully revised as to the specific factors per the findings in the May
11, 2012 Order. See Exhibits A and B.6 While the professors remain the
appropriate person to conduct the fair use analysis, the revised Fair Use Checklist
and the revised Fair Use Exceptions section of the 2009 Copyright Policy ensure
that the Court’s findings regarding the four fair use factors are carefully
considered. Plaintiffs’ efforts to eliminate the checklist should therefore be
rejected.
Requiring the professors to undertake the fair use analysis remains necessary

The revised Faire Use Exception Section of the 2009 Copyright Policy is found
on the GSU website at www.usg.edu/copyright/the-fair-use-exception. The revised
Fair Use Checklist is found at www.usg.edu/copyright/fair-use-checklist.
6

10

for several reasons. First, the professors are the only ones who can make the
Factor 1 determination regarding the “purpose and character of the use.” Only the
individual professor teaching the course will know how the use of the excerpt will
fulfill the educational purpose. Accordingly, professors must necessarily be
involved in the analysis.
Moreover, Defendants submit that the unique circumstances of the
educational environment place professors in the best position to analyze the fair
use factors because professors are both content creators and content users. As the
Court found, the works involved in this case are all non-fiction that include
“research-based monographs, instructional books, trade books (general readership
books) and other works on academic topics.” Dkt. No. 423 at 23. These books are
marketed to professors who teach courses at colleges and universities. Id. at 21.
But perhaps more importantly, “all of the authors, contributing authors and
external editors of the books at issue are professors at colleges and universities.”
Id. at 82; see also id. at 23.
Thus, GSU professors are in a unique position – they are both the creators of
content and the users of content; the authors of works and the “fair users” of
works. Based on this unique position, the Court appropriately recognized that
there “is no reason to believe that allowing unpaid, nonprofit academic use of
11

small excerpts in controlled circumstances would diminish creation of academic
works.” Id. at 82. While certainly true, there is another important consideration
here, what Immanuel Kant called the “Categorical Imperative.”
In basic terms, the Categorical Imperative guides the determination of what
is “right” (helping someone) as opposed to what is “good” (enriching oneself).
That is, professors will act as users and creators of content as they wish other
professors would act as users and creators of content – because they serve both
functions in the university environment. In this context, when a professor, who is
at least potentially an author of a similar work, uses a “decidedly small amount”
(i.e., 10% or less or 1 chapter of a multi-chapter book), the professor is also
recognizing that as a content creator, she is acknowledging the propriety of such
use when it is her work that is being used by another Professor at another
institution. Thus, the community standard of what is a “fair use” is set by both
authors and users who are guided by the Categorical Imperative.
Here, in the academic context, which enjoys a special place in the fair use
analysis (see 17 U.S.C. §107), the applicability of the Categorical Imperative has
resulted in the “unlicensed copying of excerpts of copyrighted books at colleges
and universities [and] is a widespread practice.” Dkt. No. 423 at 42.

12

Plaintiffs express concern that if GSU’s practices “become the norm across
the country,” they would suffer harm. Dkt. No. 142-2 at 35. However, the practice
of using excerpts is already widespread and Plaintiffs continue to flourish. In fact,
the evidence showed that the 2009 Copyright Policy is more conservative than
many. Dkt. No. 423 at 42. The Categorical Imperative here, as appropriately
practiced at GSU, ensures that in the unique academic environment, the professors,
as both creators and users of content, determine what can fairly be used to
accomplish the educational purpose within the bounds of the law.
D. Any Perceived Need For An Injunction Is Moot
Injunctive relief is also not available because the University System of
Georgia has revised the 2009 Copyright Policy in accordance with the Court’s May
11, 2012 Order. See Exhibits A and B. Denial of injunctive relief is proper when a
plaintiff fails to establish a continuing threat of infringement. See, e.g., Dolori
Fabrics, Inc. v. Limited, Inc., 662 F. Supp. 1347, 1358 (S.D.N.Y 1987) (“The
Court recognizes that an injunction is an ‘extraordinary remedy’ which ordinarily
should not be granted where a plaintiff has not proven a probability or threat of
continuing or additional infringements”) (citing 3 Nimmer on Copyright §14.06[B]
at 14-54-55 (1986)). Because the Court found that the 2009 Copyright Policy
“caused” the infringement, the revisions to the Policy based on this Court’s Order
13

(as shown in Exhibits A and B) have eliminated the threat of continuing
infringement. See, e.g., Dolori Fabrics, 662 F. Supp. at 1358 (denying injunction
because defendants had no history of infringement and ceased infringement after
notice); Northwest Airlines, Inc. v. Am. Airlines, Inc., 870 F. Supp. 1504 (D. Minn.
1994) (denying injunction when infringer returned copyrighted materials). Here,
the 2009 Copyright Policy has been revised in accordance with the Court’s
findings.
Relief under the Ex Parte Young exception must be prospective in nature.
See Green v. Mansour, 474 U.S. 64, 73 (1985). The Supreme Court in Green
denied the petitioners a declaratory judgment that the respondent violated federal
law because such relief would serve no useful purpose. See id. at 72-73. A
declaration that past acts violated federal law is prohibited by the Eleventh
Amendment, much like a claim for past damages. See id. at 73; see also Deuel v.
Dalton, No. 3:11–cv–466, 2012 U.S. Dist. LEXIS 48166 , at *14 (M.D. Tenn. Apr.
4, 2012). Accordingly, Ex Parte Young should not be used to obtain relief for a
past violation of federal law. See Doe v. Div. of Youth & Family Servs., 148 F.
Supp. 2d 462, 484 (D.N.J. 2001); Robertson v. Huffman, 144 F. Supp. 2d 447, 452453 (W.D.N.C. 2001). Here, Plaintiffs’ proposed relief is aimed at only
eliminating a condition that no longer exists (or does not yet exist). Injunctive
14

relief is therefore neither necessary nor proper.
The question at this stage is what judicial remedies are necessary and
appropriate to satisfy the purposes of Ex Parte Young without sacrificing the “real
interests served by the Eleventh Amendment.” Coeur d’Alene, 521 U.S. at 270.
The Court must “ensure that the doctrine of sovereign immunity remains
meaningful, while also giving recognition to the need to prevent violations of
federal law.” Id. at 269. That can be accomplished in this case by a declaratory
judgment so that this Court can be satisfied the Defendants will avoid any future
infringement of Oxford and Sage’s works under the Copyright Policy.
Defendants have already taken steps to avoid future infringement by revising
the 2009 Copyright Policy in accordance with the Court’s May 11, 2012 Order.
The revised Fair Use sections of the 2009 Copyright Policy and the Fair Use
Checklist, attached hereto as Exhibits A and B, incorporate the provisions of the
Court’s Order that were not already present in the 2009 Copyright Policy. The
remedy here is complete. Accordingly, there is no continuing violation of federal
law to warrant the invocation of the Ex Parte Young exception. For the same
reasons, any ambiguity in the 2009 Copyright Policy as to the quantity and market
effect has been remedied.
In Harrison & Burrowes Bridge Constructors, Inc. v. Cuomo, 981 F.2d 50
15

(2d Cir. 1992), the court concluded that an emergency regulation suspending a
State minority business program (for the purpose of allowing the State to develop
an adequate record to support it) mooted a demand for injunctive and declaratory
relief, on the ground that there was no reason to think the government would seek
to enforce the program in the future without a sufficient record. Id. at 58-59.
Plaintiffs’ suite of demands is neither necessary to, nor will it, cause the
Defendants to achieve compliance with the Court’s May 11, 2012 Order and,
therefore, falls outside the narrow Ex Parte Young exception. The proposed relief
effectively requires GSU to pre-clear any future use of Plaintiffs’ works, in
violation of the well-established principle that federal courts may not interfere
with, or restrain in advance, State agency discretion. A court of equity, through
injunctive relief, should not assume to control the State agency’s discretion. See
Associated Gen. Contractors of Am. v. City of Columbus, 172 F.3d 411, 418 (6th
Cir. 1999).
III.

IF NECESSARY, DEFENDANTS PROPOSE AN APPROPRIATE
INJUNCTION
Section 502(a) of the Copyright Act authorizes injunctions “to prevent or

restrain infringement of copyright.” 17 U.S.C. §502(a). “Injunctive relief should
be narrowly tailored to fit specific legal violations.” Waldman Publ’g Corp. v.
Landoll, Inc., 43 F.3d 775, 785 (2d Cir. 1994). The scope of an injunction should
16

be no broader than the infringement because broad injunctions are in contravention
of copyright’s goal to promote the progress of science and the useful arts. 4
Nimmer on Copyright § 14.06 [C], at 14-123 to 14-124 (Matthew Bender, Rev.
Ed.); see also Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527 (5th
Cir. 1994).
As demonstrated above, a Declaratory Judgment addressing the Court’s
findings is a sufficient and proper remedy in view of the May 11, 2012 Order.
Such a declaration addresses the 2009 Copyright Policy’s adjudged deficiencies of
(1) not limiting copying in the five (5) instances to decidedly small excerpts; (2)
not proscribing the use of multiple chapters from the same book; and (3) not
providing sufficient guidance in determining the “actual or potential effect on the
market or the value of the copyrighted work.” Dkt. No. 423 at 86-89, 337-38.
Thus, if the Court deems injunctive relief to be necessary, Defendants’ proposed
Declaratory Judgment provides a template by which to craft any such injunction.
The Defendants respectfully submit that any broader relief would exceed the
bounds of the Court’s May 11, 2012 Order and unlawfully enjoin a State actor
under the applicable law.
IV.

PLAINTIFFS’ PROPOSED INJUNCTION IS INAPPROPRIATE
It is a longstanding maxim that the power of a federal court to enjoin a State
17

agency or official is limited to remedying the constitutional violation that the court
found. See Milliken v. Bradley, 433 U.S. 267, 280 (1977); Clement v. Cal. Dep’t of
Corr., 364 F.3d 1148, 1153 (9th Cir. 2004). In fact, it is an abuse of discretion to
impose on State officials an injunction broader than necessary to remedy a
violation. See Armstrong v. Davis, 275 F.3d 849, 870 (9th Cir. 2001) (quoting
Lewis v. Casey, 518 U.S. 343, 359 (1996)); Newman v. Alabama, 683 F.2d 1312,
1319 (11th Cir. 1982).
In Dean v. Coughlin, 804 F.2d 207, 213 (2d Cir. 1986), the Second Circuit
stated:
We have repeatedly been cautioned (1) not to use a sledgehammer
where a more delicate instrument will suffice, (2) not to move too
quickly where it appears that the state, in the exercise of its
administrative authority, will in its own way adopt reforms bringing
its system into compliance with the Constitution, and (3) to give the
state a reasonable opportunity to remedy a constitutional deficiency,
imposing upon it a court-devised solution only if the state plan proves
to be unfeasible or inadequate for the purpose.
In a similar fashion, the Seventh Circuit vacated a district court’s injunction which
went beyond simply enjoining State officials from failing to comply with a federal
motor voter law. See ACORN v. Edgar, 56 F.3d 791 (7th Cir. 1995) (Posner, C.J.).
The Court found that a limited injunction enjoining State officials from failing to
comply with the law was proper, but struck down additional elements requiring the
State to designate an official to be responsible for coordinating the State’s
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compliance with the law, ordering that the official be delegated all necessary
powers to achieve compliance and setting forth detailed instructions concerning
compliance. See id. at 797-98. In vacating that portion of the injunction, the
Seventh Circuit stated:
We are forced to the conclusion that the Department of Justice, in
proposing such a decree, and the district judge, in entering it, failed to
exhibit an adequate sensitivity to the principle of federalism. The
value of decentralized government is recognized more clearly today
than it has been for decades. This recognition, born of experience,
enables us (and not only us) to see that federal judicial decrees that
bristle with interpretive difficulties and invite protracted federal
judicial supervision of functions that the Constitution assigns to state
and local government are to be reserved for extreme cases of
demonstrated noncompliance with milder measures. They are last
resorts, not first. Since the State of Illinois, rather than seeking a
declaratory judgment that the “motor voter” law is invalid, decided
not to comply with the law, an injunction commanding compliance
with it was a proper remedy, and of course a lawful one. But until it
appears that the state will not comply with such an injunction, there is
no occasion for the entry of a complicated decree that treats the state
as an outlaw and requires it to do even more than the “motor voter”
law requires.
Id. at 798 (emphasis added) (citations omitted). Just as the detailed injunction
against the State of Illinois was over intrusive into State government operations, so
too is the Plaintiffs’ proposed injunction too broad and thus improper.
In copyright cases, as in other cases, any injunctive relief should be narrowly
tailored to fit a specific legal violation, and the scope of the injunction should be
no broader than the infringement. See Chicago Bd. of Educ. v. Substance, Inc., 354
19

F.3d 624 (7th Cir. 2003) (Posner, C.J.); Kepner-Tregoe, 12 F.3d at 538; Alcatel
USA, Inc. v. DGI Techs., Inc., 166 F.3d 772, 790-91 (5th Cir. 1999).
It is undeniable that Plaintiffs’ proposed relief “binds [school] administrators
to do more than the constitutional minimum.” Gilmore v. California, 220 F.3d 987,
999 (9th Cir. 2000).7 Plaintiffs’ proposal would require designating “one or more
university personnel with appropriate training in copyright” and require GSU’s
Provost to “certify to the Court” that GSU is in compliance with Plaintiffs’
overbroad terms. Dkt. No. 300-1 at 4. This far exceeds the constitutional
minimum.
Plaintiffs’ proposed injunction is overbroad in both the conduct enjoined and
the persons covered, and inappropriately constrains the discretion of local officials.
For example, Plaintiffs seek to enjoin faculty and students that were neither a party
to this litigation nor shown to be infringing. Plaintiffs seek to require GSU (and
the Georgia University System member institutions) to obtain permission rather
than exercise their statutory rights of fair use under 17 U.S.C. § 107. Plaintiffs also
seek to address “consumables” (e.g., workbooks and the like) which were not
addressed by the May 11, 2012 Order. Although Plaintiffs purport to limit their
7

Remarkably, despite losing on 95% of the tried allegations of infringement,
Plaintiffs again assert the injunction first proposed at trial, which is based on the
Classroom Guidelines. The Court has already rejected Plaintiffs’ arguments as to
those Guidelines. Dkt. No. 423 at 56-59.
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proposed injunction to only non-fiction works, they seek to monitor “all reading
materials” regardless of publisher or title. Dkt. No. 426-1 at 6 (VII. A.). In fact,
Plaintiffs seek injunctive relief (including monitoring) for Cambridge works
although Cambridge failed to prove a single alleged infringement. Further,
Plaintiffs seek to attribute to GSU any and all “copying, posting, uploading,
downloading or other distribution done on EReserves, uLearn, faculty websites,
course websites, or any other system” regardless of the type of work, the individual
that posted the excerpt, the intended use of the excerpt, etc. Dkt. No. 426-1 at 2.
Yet, further, as to monitoring, Plaintiffs seek unfettered access to all such systems
– a transparent attempt to “snoop” on GSU faculty and students. Dkt. No. 426-1 at
6.
Moreover, compliance with the proposed injunction would be extremely
difficult, if not impossible, for GSU to administer and the costs to GSU would be
unreasonable. For example, the Plaintiffs’ proposed injunction provides for each
faculty member to “certify” that all copies are in compliance with the Classroom
Guidelines’ brevity and cumulative effect provisions, and for GSU to collect and
store all such certificates. The logistics of such a procedure are problematic. Such
burdensome and unnecessary provisions invite future litigation.
When a violation of federal law is established, only the State official whose
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actions violate that law is the rightful party to the prospective injunctive relief and
such relief can only be had against him. See, e.g., Dairy Mart Convenience Stores,
Inc. v. Nickel, 411 F.3d 367, 373 (2d Cir. 2005). Here, at best, the “State official”
at issue is effectively the 2009 Copyright Policy. Plaintiffs’ Draconian proposals
go well beyond the Policy to all faculty, students, administrators, Board members
and users of GSU facilities. Such extensive restrictions are well beyond what
could reasonably be termed “necessary” to address this Court’s findings of five (5)
infringements by three professors in violation of the copyrights of only two
Plaintiffs.
V.

CONCLUSION
The Plaintiffs are not entitled to any relief because there was no “ongoing

and continuous” misuse of the fair use defense. To the contrary, the Defendants
prevailed on 94 of 99 alleged infringements. Dkt. No. 423 at 338-39. The
Defendants have nonetheless revised the 2009 Copyright Policy in accordance with
the Court’s May 11, 2012 Order. Defendants submit that no injunctive relief
should be granted. If any relief is to be awarded, a Declaratory Judgment is all that
is necessary to delineate the parties’ respective rights and duties.

22

Respectfully submitted this 15th day of June, 2012.
SAMUEL S. OLENS
Georgia Bar No. 551540
Attorney General
R.O. LERER
Georgia Bar No. 446962
Deputy Attorney General
DENISE E. WHITING-PACK
Georgia Bar No. 558559
MARY JO VOLKERT
Georgia Bar No. 728755
Assistant Attorney General
MCKEON, MEUNIER, CARLIN &
CURFMAN, LLC
/s/ Anthony B. Askew
Anthony B. Askew
Georgia Bar No. 025300
Special Assistant Attorney General
Stephen M. Schaetzel
Georgia Bar No. 628653
Robin L. Gentry
Georgia Bar No. 289899
McKeon, Meunier, Carlin & Curfman, LLC
817 W. Peachtree Street, N.W., Suite 900
Atlanta, Georgia 30308
Phone: [phone]
Fax: [phone]
Email: [e-mail]
[e-mail]

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Katrina M. Quicker
Special Assistant Attorney General
Georgia Bar No. 590859
Richard W. Miller
Georgia Bar No. 065257
BALLARD SPAHR LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309-3915
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]

Counsel for Defendants

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CERTIFICATE OF COMPLIANCE
I hereby certify, pursuant to L.R. 5.1B and 7.1D of the Northern District of
Georgia, that the foregoing DEFENDANTS’ OPPOSITION TO PLAINTIFFS’
REQUEST FOR INJUNCTIVE RELIEF complies with the font and point
selections approved by the Court in L.R. 5.1B. The foregoing pleading was
prepared on a computer using 14-point Times New Roman font.

/s/ Anthony B. Askew
Anthony B. Askew
Georgia Bar No. 025300
McKeon, Meunier, Carlin & Curfman, LLC
817 W. Peachtree Street, N.W., Suite 900
Atlanta, Georgia 30308
Phone: [phone]
Fax: [phone]
Email: [e-mail]

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

CAMBRIDGE UNIVERSITY PRESS;
OXFORD UNIVERSITY PRESS, INC.;
SAGE PUBLICATIONS, INC.,
Plaintiffs
v.
MARK P. BECKER, in his official
capacity as President of Georgia State
University, et al.
Defendants

)
)
)
)
)
)
)
)
)
)
)
)
)

CIVIL ACTION NO.
1:08-CV-1425-ODE

CERTIFICATE OF SERVICE

The undersigned hereby certifies that, on this 15th day of June 2012, I have
electronically filed the foregoing DEFENDANTS’ OPPOSITION TO
PLAINTIFFS’ REQUEST FOR INJUNCTIVE RELIEF with the Clerk of the
Court using the CM/ECF system, which will automatically send e-mail notification

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of such filing to the following attorneys of record:
Edward B. Krugman
[e-mail]
Georgia Bar No. 429927
Corey F. Hirokawa
[e-mail]
Georgia Bar No. 357087
John H. Rains IV
Georgia Bar No. 556052
BONDURANT, MIXSON & ELMORE, LLP
1201 West Peachtree Street NW, Suite 3900
Atlanta, GA 30309
Telephone: [phone]
Facsimile: [phone]
R. Bruce Rich
Jonathan Bloom
Randi Singer
Todd D. Larson
WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
New York, New York 10153
Telephone: [phone]
Facsimile: [phone]

/s/ Anthony B. Askew
Anthony B. Askew
Georgia Bar No. 025300
McKeon, Meunier, Carlin & Curfman, LLC
817 W. Peachtree Street, N.W., Suite 900
Atlanta, Georgia 30308
Phone: [phone]
Fax: [phone]
Email: [e-mail]

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