Cambridge University Press et al v. Patton et al

Filing 440

SUR-REPLY to 426 Post-Trial Proposed Declaratory Judgment and Permanent Injunction filed by J. L. Albert, C. Dean Alford, Mark P. Becker, Kenneth R. Bernard, Jr, Larry R. Ellis, Rutledge A. Griffin, Jr, Robert F. Hatcher, C. Thomas Hopkins, Jr, W. Mansfield Jennings, Jr, James R. Jolly, Donald M. Leebern, Jr, William NeSmith, Jr, Risa Palm, Doreen Stiles Poitevint, Willis J. Potts, Jr, Neil L. Pruitt, Jr, Nancy Seamans, Kessel Stelling, Jr, Benjamin J. Tarbutton, III, Richard L. Tucker, Allan Vigil, Larry Walker, Philip A. Wilheit, Sr. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4)(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’ SUR-REPLY IN OPPOSITION TO PLAINTIFFS’
REQUEST FOR INJUNCTIVE RELIEF

I.

INTRODUCTION
The Board of Regents has embraced judicial relief, rather than attempting to

avoid it, by amending the University System of Georgia Copyright Policy
(“Policy”) in accordance with the Court’s May 11, 2012 Order. The Policy’s Fair
Use Checklist, a proven and effective tool, and the Fair Use Exception explanatory
materials were revised to expressly address the Court’s findings that, in the five
identified infringements, the Policy did not limit copying to decidedly small
excerpts, did not proscribe the use of multiple chapters from the same book, and
did not provide sufficient guidance in determining the actual or potential effect on
the market or value of the copyrighted work. See Dkt. No. 423 at 337-38.
Plaintiffs nonetheless attack the amended Policy by rehashing their failed
summary judgment arguments objecting to the use of any checklist (compare, e.g.,
Dkt. No. 142-2 at 23-32 to Dkt. No. 434-1 at 4-8), and arguing that Professor
Kaufmann could hypothetically come to a “wrong” conclusion in her fair use
analysis using an amended checklist. Plaintiffs failed summary judgment
arguments are no more persuasive now than before. The amended Fair Use
Checklist, as part of the larger Policy, helps professors to consider the many and
difficult fair use issues; it does not predetermine a decision by Professor Kaufmann
or any other professor. What the Plaintiffs fear is that by using the Checklist and
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guidance from the remainder of the Policy, professors will make the correct
decision regarding fair use and will, therefore, owe no permissions fees to the
publishers.
II.

ARGUMENT AND CITATION TO AUTHORITIES
A.

The Policy, Including the Checklist, Is Effective
1. The Evidence Showed That Checklists are Widely Used Tools
to Address Fair Use Determinations in Academia

Plaintiffs’ focus on the Fair Use Checklist is a thinly veiled attempt to secure
precedent that may generally bar the use of fair use checklists at any number of
universities. The undisputed evidence, however, is that fair use checklists are an
oft-used and well-established vehicle for evaluating the fair use factors. Dr.
Kenneth Crews identified 66 colleges and universities that utilize a fair use
checklist, including the University of Chicago, Virginia Tech, Cornell, Stanford,
Harvard University Office of General Counsel, and Johns Hopkins. Tr. 13-49, line
12 - Tr. 13-51, line 14. Dr. Crews further identified more than 50 institutions that
had contacted him to request permission to use (or link) to the checklist he created.
Tr. 13-51, line 23 - Tr. 13-53, line 1. One of those institutions was the Copyright
Clearance Center (CCC), the party funding 50% of the Plaintiffs’ case. See Dkt.
No. 423 at 25. The CCC checklist, like the others, makes no mention of
enforcement or correction mechanisms. See Exhibit 1 (Defs’ Trial Ex. 14). In
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fact, a recent CCC White Paper directed to fair use and electronic reserves makes
no mention of any enforcement or correction mechanism. See Exhibit 2 (Defs’
Trial Ex. 906).
Plaintiffs’ unsupported assertion that “the trial record made clear that the []
policy was responsible for multiple copyright infringements insofar as it delegated
copyright compliance to faculty through a so-called ‘fair use checklist’ and failed
to establish any procedures for detecting and correcting excessive copying that did
not comport with fair use parameters” is belied by the trial record. The Policy
properly incorporates a checklist, and the Court found that the Policy “significantly
reduced the unlicensed copying of Plaintiffs’ works (and, by inference, the works
of other publishers) at Georgia State.” Dkt. No. 423 at 38. Plaintiffs’ attacks on
fair use checklists are generally unsupported and not in keeping with the evidence.
2. The Evidence Showed That The Policy and Checklist are
Effective
The Court has evaluated the Policy at length. See Dkt. No. 235 at 8-11, 2830. For example, at summary judgment, the Court stated that the Policy “seems
comparable to, and in many cases far more comprehensive than, the copyright

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policies instituted by other colleges and universities.” Id. at 29 n.7.1 The
instructions provided with the Fair Use Checklist, which are in effect with the
revised Checklist, ensure that it is not a rigid tool that predetermines a fair use
result. Rather, as the Policy states: “The fair use checklist is a tool to assist you in
making a reasoned and balanced application of the four fair use factors in
determining whether a given use of a work is a fair use.” Exhibit 3, Introduction to
the Fair Use Checklist, found at
http://www.usg.edu/copyright/introduction_to_the_fair_use_checklist (emphasis
added). It is not an “arithmetic tally” sheet. Rather, the Policy anticipates that it is
likely that professors will use the checklist to think through the issues and may
well “check more than one box in each column and even check boxes across
columns.” Id. Thus, the Checklist is designed to assist a professor in considering
facts that weigh against and in favor of fair use, and provides a discussion of those
issues to assist the professor in making what can be “notoriously difficult”
determinations. Dkt. No. 423 at 338.
At trial, the evidence demonstrated that the Policy, including the Fair Use
Checklist, was already a significant help to professors trying to make fair use

For example, the Court stated that the Emory University policy does not require a
checklist, but instead allows material to be placed on electronic reserves after the
instructor conducts a “reasonable analysis.” Id. at 29 n.7.
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determinations. More particularly, the Court found 43 alleged infringements were
instead instances of proper academic fair use. See Exhibit 4, Table of alleged
infringements where fair use found. Of those 43 instances, a Fair Use Checklist
was expressly used in 37 instances. Id. Thus, rather than being “fatally flawed,”
the Fair Use Checklist assisted professors in making correct fair use
determinations. At trial, Dr. Crews further testified that other schools’ policies
allowed more liberal unlicensed copying than the USG Policy. See Dkt. No. 423 at
42. Accordingly, the Court found that the Policy “significantly reduced the
unlicensed copying of Plaintiffs’ works . . . .” Dkt. No. 423 at 38. The Policy,
including the Fair Use Checklist, is already an effective tool that does not need to
be extensively rewritten or reworked.
B.

The Policy, with an Amended Checklist, Complies with the
Court’s May 11 Order

Plaintiffs assert that the revised Policy “does not effectuate the Court’s
ruling.” To the contrary, the Policy has been amended to comply with the Court’s
Order.
The Court’s May 11, 2012 Order determined that in five identified
infringements, the Policy did not limit copying to decidedly small excerpts, did not
proscribe the use of multiple chapters from the same book, and did not provide
sufficient guidance in determining the actual or potential effect on the market or
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value of the copyrighted work. Dkt. No. 423 at 337-8. The revised Fair Use
Checklist and explanatory materials addresses each of the Court’s points.
First, with reference to “decidedly small excerpts” and “multiple chapters
from the same work,” the amended Checklist’s entries under Factor 3 expressly
state:
Weighs Against Fair Use
Large portion or entire work used (more
than 10% of work not divided into
chapters or having less than 10 chapters
or more than 1 chapter of a 10 or more
chapter work)

Weighs in Favor of Fair Use
Decidedly small portion of work used
(no more than 10% of work not divided
into chapters or having less than 10
chapters or no more than 1 chapter of a
10 or more chapter work)

Dkt. No. 432-2.
In like fashion, the Policy’s amended “Fair Use Exception” explanatory
materials state that the
excerpt constitutes a decidedly small portion of the work in
accordance with the following criteria:
a. If the excerpt is from a work that is not divided into
chapters or contains fewer than ten chapters, the
excerpt does not exceed ten (10) percent of the pages
in the work as a whole; or
b. If the excerpt is from a work that contains ten or more
chapters, the excerpt does not exceed one (1) chapter;
or
c. If, after consulting the copyright owner (often the
publisher) or its authorized agent (such as the
Copyright Clearance Center), it is determined that the
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excerpt is not readily available for digital academic
use at a reasonable price. . .
Dkt. No. 432-1 (emphasis added).
Second, with reference to potential effect on the market, the Policy’s
amended Fair Use Checklist’s entries under Factor 4 expressly state it weighs
against fair use “where permission for [a] digital excerpt is readily available from
[the] publisher or Copyright Clearance Center at a reasonable price.” Dkt. No.
432-2.
Plaintiffs seek hard and fast rules. For example, with reference to Professor
Kaufmann, Plaintiffs argue that the fair use determination is a fait accompli, even
if she, hypothetically, seeks to use more than one chapter from a work. This
rationale runs contrary to the Court’s May 11, 2012 Order. The Court expressly
stated that resolving fair use issues is done within a “fluid framework.” Dkt. No.
423 at 19. Consistent therewith, in applying factor 3, in four instances, the Court
found that a fair use was made even though more than 10% of a work was used.
See Dkt. No. 423 at 190-94; 214-217; 300-3; 311-14 (Professor Orr (18.52% of
“Liszt Sonata in B Minor”); Professor Dixon (12.50% of African American Single
Mothers: “Understanding Their Lives and Families”); Professor Lasner (10.78%
of “The Politics of Public Housing, Black Women’s Struggles Against Urban
Inequality”); and Professor McCoy (16.72% of “Regimes and Democracy in Latin
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American; Theories and Methods”)). Rather than “trivialize” the Court’s line
drawing, Defendants embrace it. The revised Policy provides for those rare
instances when the use of an excerpt that is greater than 10% of the whole is
contemplated but where there are no digital licenses available. This Court found
fair use in four instances when more than 10% or one chapter was used. Plaintiffs’
proposed injunction would prohibit any such fair use. Defendants submit that,
consistent with Supreme Court precedent, the Court’s line drawing is flexible and
guided by fair use principles rather than by hard and fast rules.
Plaintiffs are also incorrect in assuming that Professor Kaufmann’s analysis
would not change based on the revised Copyright Policy. As the Policy’s Fair Use
Exemption explanation directs, use of an excerpt is allowable if it is “decidedly
small” or unavailable for licensing at reasonable cost. If Professor Kaufmann
proposed to use more than one chapter in a multiple chapter work, the revised Fair
Use Checklist would counsel against use. See Dkt. 432-1; 432-2. Moreover, as
part of the Policy, the Fair Use Checklist would cause Professor Kaufmann to
consider the relevant issues necessary for an informed fair use determination.
C.

The Revised Copyright Policy Moots Plaintiffs’ Proposed
Injunctive Relief

The revised Policy moots the need for injunctive relief because it eliminates
the threat of continuing infringement. Because relief under Ex parte Young must
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be prospective in nature, injunctive relief in this case is moot. See, e.g., Green v.
Mansour, 474 U.S. 64, 73 (1985). The mootness issue, however, provides no basis
for Plaintiffs’ unfounded criticism of the amended Policy.
Plaintiffs’ argument that the revised Policy does not moot its request for
injunctive relief hinges on their reliance on cases that do not apply the Ex parte
Young doctrine. Plaintiffs’ reliance on City of Mesquite v. Alladin’s Castle, Inc.,
455 U.S. 283, 289 (1982) and United States v. Concentrated Phosphate Export
Ass’n, 393 U.S. 199, 203 (1968) is misplaced because neither of those cases
concerned a state actor protected by Eleventh Amendment Immunity.2
Accordingly, the Ex parte Young doctrine’s prohibition against retroactive relief
did not apply in either case. Even so, the Supreme Court, in holding that neither
case was moot, stated that the defendant’s cessation of the illegal activity should be
considered by the court in fashioning injunctive relief. As the Court stated in City
of Mesquite, cessation of the challenged conduct “is an important factor bearing on
the question whether a court should exercise its power to enjoin defendant from
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This distinction is important as when governmental entities are involved, “an
assertion of mootness will be rejected only when there is a substantial likelihood
that the offending policy will be reinstated if the suit is terminated.” See, e.g., Beta
Upsilon Chi Upsilon Chapter at the Univ. of Fla. v. Machen, 586 F.3d 908, 917
(11th Cir. 2009) (citations and internal quotation marks omitted).

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renewing the practice . . . .” 455 U.S. at 289. Similarly in Concentrated
Phosphate Export, the Court stated that “it is still open to appellees to show, on
remand, that the likelihood of further violations is sufficiently remote to make
injunctive relief unnecessary.” 393 U.S. at 204.
When cases addressing the Ex parte Young exception are considered, it is
apparent that Plaintiffs’ request for injunctive relief is moot. In each of the Ex
parte Young cases cited by Plaintiffs – Students for a Conservative Am. v.
Greenwood, 378 F.3d 1129, 1130 (9th Cir. 2004); Comm. For the First
Amendment v. Campbell, 962 F.2d 1517, 1519 (10th Cir. 1992); and Marcavage v.
West Chester Univ., No. 06-cv-910, 2007 WL 789430 (E.D. Pa. Mar. 15, 2007) –
the courts found that the revised policies mooted the controversy. Plaintiffs
attempt to distinguish such cases based on the contention that they involved “facial
challenges to state policies themselves (as opposed to practice under those policies)
. . . .” Dkt. No. 434-1 at 9 n.7. This attempt is flawed, however.
For example, in Comm. For the First Amendment, the plaintiffs sued for
declaratory and injunctive relief against various university defendants based on the
Board of Regents’ suspension of the showing of a movie. After a preliminary
injunction hearing in which the district court intimated that it favored plaintiff’s
position, the Board of Regents met and rescinded the suspension. A new policy
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was also put into effect. The Tenth Circuit held that any equitable relief was moot
based on the new policy and the Board of Regents’ expressed intent to comply.
Thus, Comm. for the First Amendment concerned the actions of the university –
suspension of showing of a particular movie – rather than “facial challenge[s] to
state policies themselves.” Dkt. No. 434-1 at 9 n.7. Accordingly, these cases
actually support Defendants’ position that the revised Copyright Policy moots the
need for injunctive relief.
III.

CONCLUSION
The real issue here is not that the amended Fair Use Checklist will lead to

incorrect determinations. Rather, Plaintiffs’ concern is that the amended Policy
will lead to correct fair use determinations, as has already occurred. Plaintiffs
ardently want use of checklists, whether or not they lead to correct fair use
determinations, stopped. Such overreaching is not warranted by the facts of this
case. By complying with the Court’s May 11, 2012 Order, Defendants have
eliminated any ongoing threat of future infringements, if any, as represented by the
five instances of infringement determined at trial.

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Respectfully submitted this 5th day of July, 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/ Stephen M. Schaetzel
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’ SUR-REPLY IN 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/ Stephen M. Schaetzel
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

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

CERTIFICATE OF SERVICE

The undersigned hereby certifies that, on this 5th day of July 2012, I have
electronically filed the foregoing DEFENDANTS’ SUR-REPLY IN
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/ Stephen M. Schaetzel
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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