Cambridge University Press et al v. Patton et al

Filing 441

ORDER that Defendants are hereby ORDERED AND DIRECTED to maintain copyright policies for Georgia State University which are not inconsistent with the Court's 423 Order of May 11, 2012 and this Order. Defendants are also ORDERED AND DIRECTED to disseminate to faculty and relevant staff at Georgia State the essential points of this Court's rulings. The Court will retain jurisdiction for the sole purpose of enforcing these Orders. The Court exercises its discretion to award to Defendants their reasonable attorneys' fees. Other costs will also be taxed in favor of Defendants and against Plaintiffs to the extent permitted by statute. Defendants are DIRECTED to file a detailed request for an award of attorneys' fees and other costs no later than August 24, 2012. Plaintiffs may file any objections no later than September 10, 2012. The parties are encouraged to confer to determine if objections can be mutually resolved, either in whole or in part. A hearing to resolve objections is hereby set for September 14, 2012 at 11:00 a.m. The Clerk is DIRECTED to resubmit the file on September 11, 2012. Signed by Judge Orinda D. Evans on 8/10/2012. (anc)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
CAMBRIDGE UNIVERSITY PRESS;
OXFORD UNIVERSITY PRESS, INC.;
SAGE PUBLICATIONS, INC.,
Plaintiffs,
v.

CIVIL ACTION NO.
1:08-CV-1425-0DE

MARK P. BECKER, in his official
capacity as President of Georgia
State University; RISA PALM, in
her official capacity as Senior
Vice President for Academic
Affairs and Provost of Georgia
State University; J.L. ALBERT,
in his official capacity as
Georgia State University
Associate Provost for
Information Systems and
Technology; NANCY SEAMANS, in
her official capacity as Dean of
Libraries at Georgia State
UniversitYi ROBERT F. HATCHER,
in his official capacity as Vice
Chair of the Board of Regents of
the University System of
Georgia; KENNETH R. BERNARD,
JR., LARRY R. ELLIS, W.
MANSFIELD JENNINGS, JR'r JAMES
R. JOLLY, DONALD M. LEEBERN,
JR., WILLIAM NESMITH, JR.,
DOREEN STILES POITEVINT, WILLIS
J. POTTS, JR., C. DEAN ALFORD,
KESSEL STELLING r JR., BENJAMIN
J. TARBUTTON, III, RICHARD L.
TUCKER, LARRY WALKER, RUTLEDGE
A. GRIFFIN[ JR., C. THOMAS
HOPKINS, JR., NEIL L. PRUITT,
JR., and PHILIP A. WILHEIT, SR.,
in their official capacities as
members of the Board of Regents
of the University System of
Georgia,
Defendants.

10

ORDER

This copyright infringement case is currently before the Court
for a determination of injunctive and declaratory relief following
this Court's May 11, 2012 Order which found, after a review of each
of Plaintiffs' infringement claims, that Plaintiffs were entitled to
prevail on five claims
May

11,

2012

injunctive
doctrine

and

of

Order,

[Doc. 423].
this

Court

declaratory

Ex Parte

Young,

As discussed in Part II of the
does

relief

have

the

against

an exception

power

Defendants
to

to

grant

under

the

Eleventh Amendment

immunity which otherwise would bar such relief.
This

Order will

first

address

declaratory

consider the need for injunctive relief.

relief

and

then

In discussing what relief

is appropriate, the facts pertaining to the five successful claims
will frame the discussion.

I.

Declaratory Relief

The

Court

enters

the

following

declaratory

relief.

Each

principle is explained in the context of the infringements found in
the May 11 Order.

A.

The requirement that excerpts be "decidedly small" to tip
factor three in Defendants' favor applies to the aggregate
of all excerpts from a book which are assigned during the
term of the course.
1.

The

first

Professor Kaufmann
three

infringements

are

for

Professor

Kaufmann's

unpaid use of excerpts from The Sage Handbook of Qualitative Research
(Third Edition) and The Sage Handbook of Qualitative Research (Second
-2-

These excerpts were available through ERES to Georgia

Edition) .

State students enrolled in three classes
taught

by

Professor

predominantly

for

Kaufmann

Ph. D.

in

in qualitative research

2009.

candidates,

but

These
probably

classes

were

included other

graduate students.
The students enrolled in each of these courses were required to
purchase three required texts, two of which were published by Sage
[PIs. Ex. 516 at 1; PIs. Ex. 517 at 2; PIs. Ex. 518 at 1].
also

required

to

read

designated excerpts

They were

from other books

various class sessions as listed on the syllabi.

for

The infringement

claims presented in this case aggregated the excerpts from each book
for the entire class term.

Thus, the first successful infringement

claim aggregated four one-chapter excerpts from The Sage Handbook of
Qualitative Research

(Third Edition) which were assigned for reading

at various times during the Maymester 2009 session of EPRS 8500.

The

infringement claim was based on a four chapter excerpt, totaling 8.38
percent of the pages in the book.
Wi th

respect

to

the

infringement

claim

for

excerpts

from

Edition)

in EPRS 8510 during summer session 2009,

The

Sage

Handbook

of

Qualitative

use

of

Research

unpaid
(Second

there were two

assigned excerpts during the term of the course which added up to two
chapters and 3.01 percent of the pages in the book.

The infringement

found by the Court was based on the aggregate amount.
With
excerpts
Edition)

respect
from

The

to

the

Sage

infringement

Handbook

of

claim

for

Quali ta t i ve

use

of

unpaid

Research

(Third

in EPRS 8500 during fall semester 2009, there were a total

of seven chapters assigned over the course term.
-3-

This was 12.29

percent of the total work.

The infringement claim was based on the

aggregate amount.

2.

Professor Harvey

The fourth infringement is for unpaid use of an excerpt from The

Power Elite, an Oxford publication.
Adia Harvey who taught SOeI 8030

This assignment was by Professor
(Social Theory I)

in the fall of

This is a course for sociology graduate students.

2009.

The goal of

the course is "to present students with graduate-level knowledge of
classical social theory, and to be able to use theory as a tool that
facilitates the developments of insightful sociological research."
[ P 1 s.

Ex . 53 0] .
The students were required to purchase two texts, one of which

is published by Oxford.

In addition, the students were required to

read certain excerpts from other books which had been posted on ERES.
For one class session the assigned excerpt was chapters twelve and
thirteen, which together total 12.5 percent of the pages in The Power

Elite.
3.

Professor Ohmer

The fifth infringement is for unpaid use of an excerpt from

Utilization-Focused Evaluation: The New Century Text (Third Edition),
a Sage book.
SW 8200

This assignment was by Professor Mary Ohmer who taught

(Evaluation & Technology)

in the fall of 2009.

This is a

course for graduate students in Georgia State's School of Social
Work.

The syllabus states: "The course develops students' skills in

-4-

the formative and summative evaluation of community service delivery
systems."

[PIs. Ex. 522].

The syllabus assigned two required texts.
assigned two

excerpts

from

Utilization-Focused

Edition) which were posted to ERES.

The syllabus also
Evaluation

(Third

These excerpts aggregated to two

chapters, which was 3.01 percent of the book.

The infringement claim

was based on the aggregate amount.
Thus,

"an excerpt"

for purposes of the Court's May 11 Order

includes all protected material used from a book during a course.

B.

In

The holdings of this case do not address fair use of books
intended solely for instruction of students enrolled in a
class.

their

Memorandum of

Law

filed

May

31,

2012

[Doc.

426]

Plaintiffs request that any injunction define the term "work" to mean
a book "other than a textbook."

This appears to be an effort to

exempt from the holdings of the May 11,
conventional

textbooks

which

2012 Order the sorts of

normally

are

undergraduates in lower level college courses. 1

used

to

teach

Sample copies of

these books presumably would be supplied to college professors or
instructors with a view toward getting them to require purchase of
the book by the students in the class.

But these would be books

which are not calculated to educate the professor or instructori they
are simply a vehicle for class instruction.

The books involved in

lThe Court agrees with the thrust of Plaintiffs' request. This
does not automatically mean that there could never be fair use
protection for any use of these booksi it simply limits the Court's
holdings in this case.
-5-

this case do not fall into that category because they have a broader
set of users, even though they obviously have been used as material
for class instruction.
On reflection, the Court believes that the term "textbook" is
best avoided.
there

were

During the trial and indeed in the May 11, 2012 Order,
numerous

references

to

various

books

as

texts

or

textbooks.

This is a convenient shorthand; however, the terms are

ambiguous.

The books assigned for purchase by students on the course

syllabi are invariably referred to as "required texts."

But none of

the books are in the record, and it is unstated whether they differ
in

kind

from

excerpts.

the

books

which

are

the

subj ect

of

the

assigned

Also, the term "textbook" can be understood to imply an

academic book which is scholarly and authoritative, but which is not
necessarily designed for classroom instruction.

In the context of

this case, what is important is the intended readership because of
its relationship to the value of the book's copyright when unpaid use
of excerpts occurs.
The Court finds that none of the books from which excerpts were
assigned are books intended exclusively for use by students enrolled
in a class.

This is demonstrated by the books involved in the five

successful infringement claims.
interest

All of these books are of academic

(obviously, because they were used in academic classes in

this case).
scholarly,

Some, possibly all, of the books can be classified as
but

none

of

them are

solely for

the use of

students

enrolled in a class.
This is most obvious as to The Power Elite, a general readership
book which because of its subject matter may be of interest in a
-6-

sociology class.

The other three books which are the source of

excerpts found to constitute infringements in this case are not as
easily classified.

There was no evidence at trial from the authors

of these books nor any trial testimony by professors which is helpful
on this issue.

Wi th respect to The Sage Handbook of Quali ta ti ve

Research (Second Edition and Third Edition), Sage's representative,
Carol

Richman,

"seminal

testified that

textbook."

[Tr.

Vol.

she
2

considered this

at

110].

She

credible witness, with expertise in her field.
state what she meant by the term "textbook."
the book is authoritative and informative.

book to be

was

a

certainly a

However, she did not

She probably meant that
The Court does not infer

that she meant it is intended solely for the use of students enrolled
in classes, which for purposes of this Order the Court elects as the
relevant definition.

Accordingly,

themselves,

the

including

prefaces

the Court
of

the

looks

books,

to

the books

to

glean

the

intended readership for each book.
Wi th

respect

to

The

Sage

Handbook

of Quali ta ti ve

Research

(Second Edition), the preface states in part:
There were, and continue to be, three social science
and humanities audiences for the Handbook: graduate
students who want to learn how to do qualitative research,
interested faculty hoping to become better informed about
the field, and faculty who are experts in one or more of
the areas discussed in the Handbook but who want to be
informed about the latest developments in the field.
We
never imagined this audience would be so large. Nor did we
imagine that the Handbook would become a text to be used in
undergraduate and graduate research methods courses, but it
did. In 1998, we created three paperback volumes based on
the first edition of the Handbook for classroom use: The
Landscape
of
Qualitative
Research,
Strategies
of
Qualitative Inquiry, and Collecting and Interpreting
Qualitative Materials.
[Pls. Ex. 265 at ix].
-7-

The Sage Handbook of Quali ta ti ve Research (Third Edi tion) states

the following in its preface:
There continue to be mUltiple social science and
humanities audiences for this Handbook: graduate students
who want to learn how to do qualitative research,
interested faculty hoping to become better informed about
the field, individuals working in policy settings who
understand the value of qualitative research methodologies
and want to learn about the latest developments in the
field, and faculty who are experts in one or more areas
covered by the Handbook but who also want to be informed
about the most recent developments in the field. We never
imagined these audiences would be so large.
Nor did we
imagine that the Handbook would become a text used in
undergraduate and graduate research methods courses, but it
did.
In 2003, we created from the Handbook's second
edition three new paperback volumes for classroom use: The
Landscape
of
Qualitative
Research,
Strategies
of
Qualitative Inquiry, and Collecting and Interpreting
Qualitative Materials.
[Pls. Ex. 267 at ix-x].

These statements demonstrate that the Sage

Handbooks of Qualitative Research are not intended solely for use by

students in a course.
Utilization-Focused Evaluation (Third Edition) is a book which

"tells readers how to conduct program evaluations and why to conduct
them in the manner prescribed."

[Pls.

Ex.

316 at xv].

The book

advocates the evaluation of government and institutional programs by
users of the programs.

It also offers suggestions for designing and

implementing user-based evaluations.

Based on the content of the

book, and comments in the preface by the author,
that

this

is

a

book

intended

for

profession" which would include,

persons

in

the Court infers
"the

evaluation

but by no means is limited to,

students enrolled in social work classes.

It is also a resource for

professional evaluators, particularly beginners.
preface states in part:

-8-

For example, the

The evaluation profession has developed dramatically since
the last edition of this book ten years ago. .
As a
field of professional practice, we have reached a level
where we know what we're doing and have a track record of
important contributions to show. . . . Minnesota provides
a thriving evaluation community in which to work and an
active local chapter of the American Evaluation Association
where friends and colleagues share experiences .
[Pls. Ex. 316 at xiv-xv].

Based on these considerations, the Court

finds that Utilization-Focused Evaluation

(Third Edition)

is not a

book intended only for students enrolled in a course.
The factor four analysis and outcomes,

as articulated in the

May 11 Order, apply to works that are directed not only to college
and university students but also to the broader academic community
and sometimes beyond [see May 11 Order, Doc. 423 at 21-22 and n.15] .
Therefore, the fair use analysis and holdings of the May 11 Order,
and the relief in this Order, are limited to Plaintiffs' works with
an intended readership broader than students enrolled in courses.

c.

Fair use protection is conditioned on strict reliance with
measures calculated to protect copyrighted excerpts from
unwarranted distribution.

Protection under the fair use doctrine is conditioned on strict
observance of the following requirements.

Access to excerpts shall

be limited by a passcode or password to only the students enrolled in
the course, and then only for the term of the course.

Students must

be prohibited by stated policy from distributing copies to others.
They must be reminded of the limitations of the copyright laws each
time they access excerpts on ERES.

Each chapter or the excerpt must

fill a demonstrated, legitimate purpose in the course curriculum and
must be narrowly tailored to accomplish that purpose.
-9-

D.

Cautionary note

Because

fair

use

involves

consideration

of

numerous

fact-

intensive elements, the infringement claims evaluated in this case do
not include all possible fact combinations or potential outcomes.
One such instance is a case where digital permissions are unavailable
and the unpaid excerpt significantly exceeds the "decidedly small"
amount which would tip factor three in a defendant's favor.

Assuming

that factor one weighs heavily in defendant's favor for the reasons
discussed in the May 11 Order, and factor two weighs in defendant's
favor (because the material is informational), how much material may
be used without losing fair use protection?

In an instance where

Professor Orr used 18.52 percent of the pages in Liszt: Sonata in B
Minor and electronic permissions were not available,

found.

fair use was

The Court elects not to select an exact upper range number,

but notes that the 18.52 percent amount likely is close to loss of
fair use protection.

II.

Injunctive Relief

Next, the Court turns to the issue of injunctive relief.

Four

factors influence the Court to reject the highly regimented type of
injunctive relief Plaintiffs propose in their May 31,
[Doc. 426].2

2012 filing

The first is that the fair use analysis is quite fact

2Plaintiffs'
proposed injunctive relief seeks to enjoin
Defendants and all Georgia State agents, employees, and students from
violating the Court's May 11 Order.
Plaintiffs seek to have the
Court require Defendants to implement a program that keeps extensive
records and provides Plaintiffs with access to monitor Defendants'
compliance.
Plaintiffs' proposed injunction requires, inter alia,
-10-

intensive and specific to each individual case.
formulation which would cover all

cases.

There is no single

Second,

the

Court

is

convinced that Defendants did try to comply with the copyright laws;
this is demonstrated by the fact that there were only five successful
infringement

claims.

Third,

Defendants

are

state

officials

or

officers with oversight responsibility, not line responsibility for
individual fair use choices.

Fourth, Defendants and Georgia State's

officers and employees work at taxpayer expense to carry out their
duties.

There is insufficient reason to impose a burdensome and

expensive regimen of record-keeping and report-making based on the
totality

of

the

circumstances.

injunctive relief as follows:

Accordingly,

the

Court

sets

Defendants are hereby ORDERED AND

DIRECTED to maintain copyright policies for Georgia State University
which are not inconsistent with the Court's Order of May 11, 2012 and
this Order.

Defendants are also ORDERED AND DIRECTED to disseminate

to faculty and relevant staff at Georgia State the essential points
of this Court's rulings.

The Court will retain jurisdiction for the

sole purpose of enforcing these Orders.

that Defendants keep extensive records for three years as to each
excerpt posted on ERES along with all information pertaining to the
investigation done as to its fair use status; that Defendants comply
with a reporting procedure to Plaintiffs for three years as to
Georgia State's provost's attempts to monitor and enforce compliance;
and that Defendants provide Plaintiffs with monthly access to ERES,
uLearn, and similar programs where excerpts may be accessed [Doc.
426-1] .
-11-

III. Costs and Attorneys' Fees

Both sides have sought an award of their attorneys' fees in this
litigation.

Section 505 of the Copyright Act provides:

In any civil action under this title, the court in its
discretion may allow the recovery of full costs by or
against any party other than the United States or an
officer thereof. Except as otherwise provided by this
title, the court may also award a reasonable attorney's fee
to the prevailing party as part of the costs.
17 U.S.C.

505.

§

In order to make an award of attorneys' fees, the

Court must first determine which side is the prevailing party.
Copyright Act
Hensley v.

does

not

Eckerhart,

define

the

461 U.S. 424

term

The

"prevailing party."

(1983),

In

the Supreme Court held

that the following definition of prevailing party applies in a civil
rights case: "[P] laintiffs may be considered 'prevailing parties' for
attorney's fees purposes if they succeed on any significant issue in
litigation which achieves some of the benefit the party sought in
bringing suit."
omitted) .
Circuit

Id. at 433

(citation and internal quotation marks

The United States Court

has

applied

that

definition

plaintiffs were the prevailing party.

of Appeals
in

a

for

the Eleventh

copyright

case

where

See, e.g., Cable/Home Commc'n

Corp. v. Network Prods., Inc., 902 F.2d 829, 853

(11th Cir. 1990).

Both sides succeeded as to certain of their objectives.

The Court

does believe that Georgia State's changes in its copyright policy
were triggered primarily by the filing of the instant lawsuit.
that

respect,

Plaintiffs

were

successful.

On

the

other

In

hand,

Defendants prevailed on all but five of the 99 copyright claims which
were at issue when the trial of the case began.

-12-

In that respect,

Defendants were highly successful.

On balance, the Court finds that

Defendants are the prevailing party in this case.
The Copyright Act leaves the awarding of costs and attorneys'
fees to the Court's discretion.
517, 523 (1994).

Fogerty v. Fantasy, Inc., 510 U.S.

The Supreme Court has held that for purposes of the

Copyright Act, "[p] revailing plaintiffs and prevailing defendants are
to

be

treated

alike,

prevailing parties
'There

is

no

but

attorney's

only as

precise

a

matter

rule

or

fees
of

are

the

to be

awarded

court's

formula

for

to

discretion.

making

these

determinations,' but instead equitable discretion should be exercised
'in light of the considerations we have identified.
(quoting Hensley v.

Eckerhart,

461 U.S.

424,

Id.

III

436-37

at 534

(1983)).

In

Fogerty, the Court noted several nonexclusive factors 3 that may guide
a court's discretion in making an attorneys' fees award, concluding
that

any

application

of

such

factors

must

be

"faithful

to

the

purposes of the Copyright Act./I Id. at 535 n.19.
The United States Court of Appeals for the Eleventh Circuit has
held that in copyright cases, "the only precondition to the award of
attorney's fees is that the party be a prevailing one."
Co.

v.

1987).

Towel King of Fla.,

Inc.,

822 F.2d 1031,

1034

Sherry Mfg.
(11th Cir.

In Towel King, the Court of Appeals noted that a prevailing

party is not required to show that the losing party acted in bad

3These factors include : "frivolousness , motivation, obj ecti ve
unreasonableness (both in the factual and in the legal components of
the case) and the need in particular circumstances to advance
considerations of compensation and deterrence." Fogerty, 510 U.S. at
535 n.19 (citing Lieb v. Topstone Indus., Inc., 788 F.2d 151, 156 (3d
Cir.1986)).
-13-

faith or attempted to maintain a
(holding

that

a

district

frivolous

court's

claim.

finding

that

Id.
the

at

1035

plaintiff

"initiated a predatory lawsuit for commercial gain

[would]

support the award of fees" to the defendant) .
In this

litigation,

the

Court

limited Plaintiffs

to

claims

arising in three semesters in 2009 but did not require Plaintiffs to
pursue all claims.

When the trial began, Plaintiffs chose to pursue

99 claims out of 126.
during the trial.

They then dropped 25 claims

As to the remaining 75 claims, no prima facie case

was proven in 26 instances.
33

instances.

Neither

available in 18 cases.
good faith

(and added one)

Digital permissions were unavailable in

digital

nor

hard

copy

permissions

were

Although the Court does not doubt Plaintiffs'

in bringing this

suit,

and there was

no

controlling

authority governing fair use in a nonprofit educational setting,
Plaintiffs' failure to narrow their individual infringement claims
significantly increased the cost of defending the suit.
For these reasons, the Court exercises its discretion to award
to Defendants their reasonable attorneys'

fees.

Other costs will

also be taxed in favor of Defendants and against Plaintiffs to the
extent permitted by statute.

IV.

Conclusion

Defendants are DIRECTED to file a detailed request for an award
of attorneys'

fees and other costs no later than August 24,

2012.

Plaintiffs may file any objections no later than September 10, 2012.
The parties are encouraged to confer to determine if objections can

-14-

be mutually resolved/

either in whole

or in part.

A hearing to

resolve objections is hereby set for September 14/ 2012 at 11:00 a.m.
The Clerk is DIRECTED to resubmit

the

file on September 11/

2012.

SO ORDERED / this

10 day of August / 2012.

ORINDA D. EVANS
UNITED STATES DISTRICT JUDGE

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