The Authors Guild et al v. Google Inc.

Filing 1005

REPLY MEMORANDUM OF LAW in Support re: #992 MOTION to Dismiss Fourth Amended Complaint.. Document filed by Google Inc.. (Gratz, Joseph)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
THE AUTHORS GUILD, INC., Associational
Plaintiff, BETTY MILES, JOSEPH
GOULDEN, and JIM BOUTON, on behalf of
themselves and all other similarly situated,
Civil Action No. 05 Civ. 8136 (DC)
Plaintiffs,
ECF Case
v.
GOOGLE INC.,
Defendant.
DEFENDANT GOOGLE INC.’S REPLY MEMORANDUM OF LAW IN
SUPPORT OF MOTION TO DISMISS

TABLE OF CONTENTS
Page
I. 

INTRODUCTION .............................................................................................................. 1 

II. 

ARGUMENT ...................................................................................................................... 1 
A. 

The third prong of the Hunt test is an important limit on federal
jurisdiction. ..............................................................................................................2 

B. 

Hunt bars associational standing where litigating the asserted claims
requires individualized inquiry, regardless of the relief sought...............................3 

C. 

Copyright ownership issues preclude associational standing. .................................5 
1. 
2. 

D. 

It is appropriate to take the copyright ownership issue into account
in determining whether the Hunt test is met. ...............................................5 
Individual issues as to copyright ownership preclude associational
standing. .......................................................................................................5 

Fair use issues preclude associational standing. ......................................................6 
1. 

It is appropriate to take the fair use issue into account in
determining whether the Hunt test is met. ...................................................6 

2. 

Individual issues as to fair use preclude associational standing. .................8 

E. 

Individual issues as to Partner Program works preclude associational
standing for the ASMP...........................................................................................10 

F. 

Plaintiffs’ attempts to distinguish AIME and NAFP are unavailing. .....................10 
1. 
2. 

G. 

AIME ..........................................................................................................10 
NAFP..........................................................................................................11 

The copyright associational standing cases are distinguishable. ...........................12 
1. 
2. 

III. 

EchoStar.....................................................................................................13 

3. 
H. 

Itar-Tass .....................................................................................................12 

Olan Mills ..................................................................................................14 

Remedies in a copyright infringement lawsuit must be tied to the works at
issue........................................................................................................................14 

CONCLUSION ................................................................................................................. 15 

i

TABLE OF AUTHORITIES
Page(s)
Cases 
Ass’n of Data Processing Serv. Orgs., Inc. v. Camp,
397 U.S. 150 (1970) .................................................................................................................... 3
Association for Information Media & Equipment v. Regents of the University of California,
No. CV 10-9378 CBM (MANx) (C.D. Cal. Oct. 3, 2011) ................................................. 10, 11
Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 2006) ................................................................................................... 4, 9
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) .................................................................................................................... 4
CBS Broadcasting, Inc. v. EchoStar Communications Corp.,
450 F.3d 505 (11th Cir. 2006) .................................................................................................. 14
Chicago Bd. of Educ. v. Substance, Inc.,
354 F.3d 624 (7th Cir. 2003) .................................................................................................... 15
EMI April Music Inc. v. Jet Rumeurs, Inc.,
632 F. Supp. 2d 619 (N.D. Tex. 2008) ..................................................................................... 15
Faulkner v. Nat’l Geographic Enters. Inc.,
409 F.3d 26 (2d Cir. 2005) ....................................................................................................... 10
Friends for Am. Free Enter. Ass’n v. Wal-Mart Stores, Inc.,
284 F.3d 575 (5th Cir. 2002) ...................................................................................................... 7
Hunt v. Washington State Apple Advertising Commission,
432 U.S. 333 (1977) ........................................................................................................... passim
In re Senior Cottages of America, LLC,
482 F.3d 997 (8th Cir. 2007) ...................................................................................................... 8
Itar-Tass Russian News Agency v. Russian Kurier,
No. 95 Civ. 2144 (JGK), 1997 WL 109481 (S.D.N.Y. Mar. 10, 1997),
rev’d in part, 153 F.3d 82 (2d Cir. 1998) ........................................................................... 12, 13
Kelly v. Arriba Soft Corp.,
336 F.3d 811 (9th Cir. 2003) ...................................................................................................... 9
Leibovitz v. Paramount Pictures Corp.,
948 F. Supp. 1214 (S.D.N.Y. 1996),
aff’d, 137 F.3d 109 (2d Cir. 1998) .......................................................................................... 4, 8
Lujan v. Defenders of Wildlife,
504 U.S. 555 (1992) ................................................................................................................ 5, 7

ii

Major Bob Music v. Heiman,
No. 09-CV-341-BBC, 2010 WL 1904341 (W.D. Wis. May 11, 2010) .................................... 15
Murphy v. Millennium Radio Grp. LLC,
650 F.3d 295 (3d Cir. 2011) ....................................................................................................... 9
Myers v. Hertz Corp.,
624 F.3d 537 (2d Cir. 2010) ....................................................................................................... 7
National Association of Freelance Photographers v. Associated Press,
No. 97 Civ. 2267 (DLC), 1997 WL 759456 (S.D.N.Y. Dec. 10, 1997) ............................. 10, 11
National Association of Letter Carriers, AFL-CIO v. U.S. Postal Service,
604 F. Supp. 2d 665 (S.D.N.Y. 2009) ........................................................................................ 7
New York Metro Area Postal Union v. Potter,
No. 00Civ.8538(LTS)(RLE), 2003 WL 1701909 (S.D.N.Y. Mar. 31, 2003) ............................ 5
Olan Mills, Inc. v. Linn Photo Co.,
795 F. Supp. 1423 (N.D. Iowa 1991),
rev’d, 23 F.3d 1345 (8th Cir. 1994) .......................................................................................... 14
Oregon ex rel. Department of Transportation v. Heavy Vehicle Electronic License Plate, Inc.,
157 F. Supp. 2d 1158 (D. Or. 2001) ........................................................................................... 8
Rent Stabilization Ass’n of N.Y. v. Dinkins,
5 F.3d 591 (2d Cir. 1993) ............................................................................................... 3, 4, 5, 6
UMG Recordings, Inc. v. MP3.com, Inc.,
92 F. Supp. 2d 349 (S.D.N.Y. 2000) .......................................................................................... 9
United Food & Commercial Workers Union Local 751 v. Brown Group, Inc.,
517 U.S. 544 (1996) ................................................................................................................ 2, 3
United States v. Richardson,
418 U.S. 166 (1974) .................................................................................................................... 3
Warth v. Seldin,
422 U.S. 490 (1975) ................................................................................................................ 2, 5
Statutes 
17 U.S.C. § 107(4) .......................................................................................................................... 4
17 U.S.C. § 501(b) .................................................................................................................... 3, 14
17 U.S.C. § 501(e) ........................................................................................................................ 14
29 U.S.C. § 2101 ............................................................................................................................. 2

iii

I.

INTRODUCTION
The Authors Guild, Inc. (“AG”) and the American Society of Media Photographers, Inc.

(“ASMP”) 1 ask the Court to ignore the factual realities of this litigation. The AG and ASMP are
not owners of the copyrights asserted in this case, and the associations do not possess the facts
about copyright ownership, individual economic impact, or the other individualized questions
required of a plaintiff in a copyright litigation matter where ownership and fair use are at issue.
The associations’ briefs focus on Google in an attempt to mask this truth.
There will be a time for individual plaintiffs to challenge the merits of Google’s project
to make books searchable online and to display brief snippets, allowing users to discover the
existence of books responsive to their queries. That question, however, is not yet before the
Court. Instead, the issue presented is a narrow one: whether the ASMP and AG can litigate this
case on behalf of their members without the involvement of those individual members. They
cannot.
II.

ARGUMENT
In Hunt v. Washington State Apple Advertising Commission, 432 U.S. 333, 343 (1977),

the Supreme Court held that “an association has standing to bring suit on behalf of its members
when: (a) its members would otherwise have standing to sue in their own right; (b) the interests it
seeks to protect are germane to the organization’s purpose; and (c) neither the claim asserted nor
the relief requested requires the participation of individual members in the lawsuit.” The third
prong is not satisfied here, because both the associations’ claims and their requested relief
require the participation of individual association members.

1

For the Court’s convenience, this omnibus Reply Memorandum responds both to arguments made by the AG and
the ASMP. The Reply Memorandum filed in the ASMP case contains a subset of the arguments contained in this
omnibus Reply Memorandum, responding only to the arguments made by the ASMP, and is filed separately because
counsel for the ASMP declined Google’s request to file a 15-page omnibus reply memorandum.

1

A.

The third prong of the Hunt test is an important limit on federal jurisdiction.

Plaintiffs make much of the fact that the Supreme Court has characterized the third prong
of the Hunt test as “prudential,” and from that argue that this Court may essentially disregard it at
will. AG Memorandum of Law in Opposition to Motion to Dismiss (“AG Opp.”), AG ECF No.
997 at 4-5; ASMP Memorandum of Law in Opposition to Motion to Dismiss (“ASMP Opp.”),
ASMP ECF No. 36 at 7-8. But Plaintiffs misunderstand the Court’s opinion in United Food &
Commercial Workers Union Local 751 v. Brown Group, Inc., 517 U.S. 544, 556-57 (1996)
(“UFCW”), which held the third prong of the Hunt test was not a “constitutional necessity.” In
so holding, the Court did not regard the third prong as the sort of optional, standardless inquiry
that Plaintiffs make it out to be, but instead upheld it as an important limit on federal
jurisdiction—albeit one which is malleable by Congress. In UFCW, the issue before the Court
was the constitutionality of the provision of the Worker Adjustment and Retraining Notification
Act (WARN Act), 29 U.S.C. § 2101 et seq., which allowed labor unions to sue on behalf of their
members for violations of that Act. Id. at 545-46. The defendant argued that Congress had
violated Article III of the Constitution by conferring standing on an association where the claim
asserted or the relief requested required the participation of individual members in the lawsuit.
Id. at 551. Thus, the question before the court was whether “this third prong of the test is
constitutional and absolute, or prudential and malleable by Congress.” Id. at 544. The Court
held that the third prong of the Hunt test was a requirement that “Congress may abrogate.” Id.
In other words, like other prudential standing doctrines, the third prong of the Hunt test is a
“rule[] of judicial self-governance that Congress may remove by statute.” Id. at 558 (quoting
Warth v. Seldin, 422 U.S. 490, 509 (1975)) (internal quotations and modifications omitted).
Far from abrogating Hunt’s third prong as it applies to claims for copyright infringement,
Congress has narrowly defined the class of aggrieved parties with standing to sue. Only “[t]he
legal or beneficial owner of an exclusive right under a copyright” has such standing, and may sue
only for “infringement of that particular right committed while he or she is the owner of it.” 17
U.S.C. § 501(b).
2

Hunt’s third prong is a “rule[] of judicial self-governance,” UFCW at 558, but that does
not mean that it is not a rule. See UFCW at 556 (“To see Hunt’s third prong as resting on less
than constitutional necessity is not, of course, to rob it of its value.”). A court may not, for
example, adjudicate a claim which raises a generalized grievance, or which falls outside the zone
of interests protected by the legal provision invoked, even though those limitations on standing
are likewise “prudential” in nature. See, e.g., United States v. Richardson, 418 U.S. 166 (1974)
(generalized grievance); Ass’n of Data Processing Serv. Orgs., Inc. v. Camp, 397 U.S. 150, 15354 (1970) (“zone of interests”). Likewise here, although it is “prudential,” the rule against
associational standing where the claim asserted or the relief requested requires the participation
of individual members is a requirement imposed by the Supreme Court and may not be
overlooked or sidelined.
B.

Hunt bars associational standing where litigating the asserted claims requires
individualized inquiry, regardless of the relief sought.

The associations also assert that because they seek only declaratory and injunctive relief,
rather than damages, the third prong of the Hunt test is perforce satisfied. “However, the relief
sought is only half of the story.” Rent Stabilization Ass’n of N.Y. v. Dinkins, 5 F.3d 591, 596 (2d
Cir. 1993) (“RSA”). Even if the putative associational plaintiff shows that the relief requested
does not require the participation of individual members (and, as discussed in part II-H, Plaintiffs
have not made such a showing here), the court then “must examine the claims asserted to
determine whether they require individual participation.” Id. The RSA case is illustrative. The
Rent Stabilization Association of the City of New York is an association of landlords that, like
the Authors Guild, “provides various services for its members, including the prosecution of legal
actions to preserve the rights of its members.” Id. at 592-93. The RSA sought an injunction
against the enforcement of certain rent stabilization regulations which, according to the RSA,
violated the Takings Clause. Id. at 593. In order to decide the answer to that question, the court
would have had “to engage in an ad hoc factual inquiry for each landlord who alleges that he has
suffered a taking” to determine whether he had suffered an injury. Id. at 596. Even if harm was
3

shown, the reasons for the harm would need to be examined in each case, because losses due to
inefficiency or incompetence are not cognizable under the Takings Clause. Id. Accordingly,
because “whether a taking has occurred depend[ed] not only on a legal interpretation of takings
jurisprudence, but also on a variety of financial and other information unique to each landlord,”
id. at 597, the Second Circuit affirmed the dismissal of the RSA’s complaint. Id. at 591.
The claims of the associations here, like those of the RSA, require the Court to inquire
into the amount and type of economic harm to individual association members. Like the takings
analysis, the fair use analysis requires the Court to apply the law to each instance of alleged
harm—here, to each work alleged to have been infringed. See, e.g., Campbell v. Acuff-Rose
Music, Inc., 510 U.S. 569, 581 (1994) (fair use must “be judged case by case, in light of the ends
of the copyright law.”); Leibovitz v. Paramount Pictures Corp., 948 F. Supp. 1214, 1219
(S.D.N.Y. 1996), aff’d, 137 F.3d 109 (2d Cir. 1998) (the fair use inquiry requires “individualized
analysis”). As in the RSA case, the question whether there has been economic harm to each
individual member is relevant to the outcome, because the fourth fair use factor looks to “the
effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. §
107(4). And, as in the RSA case, a mere showing of some economic harm is not sufficient;
instead, each plaintiff must show that the harm is of a type and has a cause that satisfies the
applicable legal standard. In RSA, the apartment owners would have needed to show that their
low revenues were due to rent stabilization regulations, rather than being due to other factors
such as “poor administration.” RSA at 596. Here, the copyright owners will need to show that
any economic harm is due to Google Book Search acting as a market substitute for sales or
licenses of their works, rather than, for example, resulting from non-substitutive (i.e.,
transformative) uses of their works—or, for that matter, resulting from “poor administration.”
See, e.g., Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 614 (2d Cir. 2006)
(only “impairment to a traditional, as opposed to a transformative market” is cognizable). That
is why Plaintiffs’ attempt to distinguish RSA on the ground that “[t]he ‘takings’ element of the
claim thus required proof akin to an individualized damage assessment,” AG Opp. at 8 n.3, is
4

unavailing: the fair use issues in this case, too, require proof akin to an individualized damage
assessment.2 Here, as in RSA, the necessity of that inquiry means that the third Hunt requirement
is not satisfied.
C.

Copyright ownership issues preclude associational standing.
1.

It is appropriate to take the copyright ownership issue into account in
determining whether the Hunt test is met.

The ASMP’s assertion that the court must ignore individualized inquiries which relate to
a particular association member’s standing in analyzing Hunt’s third prong is plainly wrong.
Injury-in-fact is a requirement in order for a plaintiff to have Article III standing. See, e.g.,
Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992) (“the plaintiff must have suffered an
‘injury in fact’—an invasion of a legally protected interest which is (a) concrete and
particularized and (b) actual or imminent, not conjectural or hypothetical”) (internal quotations
and citations omitted). But where the presence and degree of that injury varies among
association members in ways that matter to the claim asserted or the relief requested, those same
facts may defeat associational standing. See, e.g., Warth, 422 U.S. at 515-16 (denying
associational standing because “whatever injury may have been suffered is peculiar to the
individual member concerned, and both the fact and extent of injury would require
individualized proof”). It is appropriate to take into account the complexities of the copyright
ownership inquiry in adjudicating Hunt’s third prong.
2.

Individual issues as to copyright ownership preclude associational
standing.

The AG asserts that “Google sprinkles its brief with references to alleged ownership and
contract interpretation issues in publishing contracts, but fails to explain how these issues have

2

Similarly, in New York Metro Area Postal Union v. Potter, No. 00Civ.8538(LTS)(RLE), 2003 WL 1701909, at *2
(S.D.N.Y. Mar. 31, 2003), the plaintiff association sought only injunctive and declaratory relief on Family and
Medical Leave Act claims. The court dismissed the complaint for failure to meet the third Hunt requirement,
because the plaintiff “would need to rely on evidence from individual employees to prove their claims of disparate
treatment.” Id. at *3. Like the claims of disparate treatment in New York Metro Area Postal Union, the fair use
issues in this case require evidence from individual members as to market harm.

5

any relevance to the issue of Google’s infringement.” AG Opp. at 13. As explained in Google’s
Memorandum of Law in Support of Motions to Dismiss (“Google Br.”), AG ECF No. 993 at 4-9,
and in greater detail in Google’s Opposition to the Motion for Class Certification in the AG case
(“Google Cl. Cert. Opp.”), AG ECF. No. 1000 at 10-21, determining whether each member owns
the necessary exclusive rights requires three fact-intensive inquiries: looking to the publishing
contract to determine whether the author is a “legal owner”; looking to the publishing contract to
determine whether the author is a “beneficial owner”; and looking to the circumstances of the
work’s creation to determine whether the work was “made for hire,” thus rendering the author
neither a legal nor a beneficial owner. These issues determine which association members may
bring claims against Google, and which association members may not. It is true, as the AG
asserts, that by relying on the fair use doctrine, Google knew that it might need to defend its fair
use rights against claims brought by copyright holders. AG Opp. at 16. But Google did not take
on the responsibility of defending its actions against claims by those who cannot show that they
are legal or beneficial owners. That Google asserted its fair use rights, and that the AG disputes
the extent of those rights, does not excuse the AG’s members from satisfying the same
ownership test imposed on all copyright plaintiffs.
D.

Fair use issues preclude associational standing.
1.

It is appropriate to take the fair use issue into account in determining
whether the Hunt test is met.

This case is, at its heart, a case about fair use. To ignore that fact would be to elevate
form over substance. In determining whether the claim asserted or the relief requested required
the participation of individual members in the lawsuit, the court should take into account all of
the issues that, as a practical matter, will need to be inquired into in order to resolve the
plaintiff’s claims and, if appropriate, to provide the requested relief. See, e.g., RSA at 596. In
this case, one such issue is fair use. That fair use is an affirmative defense does not mean that
litigating the associations’ claims will somehow not involve the individualized fair use inquiry.
See, e.g., Friends for Am. Free Enter. Ass’n v. Wal-Mart Stores, Inc., 284 F.3d 575, 577 (5th Cir.
6

2002) (denying associational standing on the ground that individual association members would
need to participate in the litigation because “principles of due process would require that [the
defendant] be able to obtain sufficient knowledge of the affected contracts to defend against the
representatives’ claims and, perhaps, to assert the affirmative defense of justification”).
Although Google bears the burden at trial of proving the facts underlying its fair use defense, the
associations bear the burden at this stage of showing that they have standing, and that analysis
must take into consideration the individualized nature of the factual inquiries which will be
necessary to determine whether Google’s uses are fair. See Lujan, 504 U.S. at 560-61 (the party
invoking federal jurisdiction bears the burden of establishing standing); cf. Myers v. Hertz Corp.,
624 F.3d 537, 551 (2d Cir. 2010) (“While [defendant] will ultimately bear the burden of proving
the merits of” its affirmative defense, the burden remained on plaintiffs to support their motion
for class certification by showing “that more ‘substantial’ aspects of this litigation will be
susceptible to generalized proof for all class members than any individual issues”).
The cases cited by the ASMP are not to the contrary. This Court’s opinion in National
Association of Letter Carriers, AFL-CIO v. U.S. Postal Service, 604 F. Supp. 2d 665, 672
(S.D.N.Y. 2009) does not hold that a case-dispositive affirmative defense such as fair use should
not be considered when adjudicating the third prong of the Hunt test. Instead, the Court held that
associational standing was appropriate in the circumstances of that case, in which an
“individualized inquiry [was] not required to resolve the broader legal question of whether OIG
has the legal authority to ask for the information in the first place.” Id. Where a case can be
reduced to a question of law, as in National Association of Letter Carriers, the third prong of the
Hunt test is met. But where, as here, the central issues in the case depend on individualized
circumstances and factual inquiries, the third prong of the Hunt test is not met, and associational
standing should be denied.
The ASMP’s other cases are even less relevant. In re Senior Cottages of America, LLC,
482 F.3d 997, 1004 (8th Cir. 2007), does not deal with the third prong of the Hunt test, but
instead with the question whether the ordinary Article III standing requirements are met where
7

the defendant has an in pari delicto defense. The other case cited by the ASMP on this issue,
Oregon ex rel. Department of Transportation v. Heavy Vehicle Electronic License Plate, Inc.,
157 F. Supp. 2d 1158, 1170 (D. Or. 2001), likewise deals only with ordinary Article III standing,
not with the third prong of the Hunt test. The ordinary Article III standing analysis does not ask,
as the Hunt test does, whether litigating the claim asserted or providing the relief requested will
require the participation of individual members, because in the ordinary Article III standing
analysis, the injured party is before the court and so there is no question of participation. Thus,
cases outside the associational standing context are of little relevance here.
2.

Individual issues as to fair use preclude associational standing.

The AG asserts that “Google’s fair use defense cannot be adjudicated as if Google made
an individual determination as to the uses it would make of each one of millions of individual
books.” AG Opp. at 16. The AG is wrong. The fair use question, as a matter of law, requires
“individualized analysis.” Leibovitz, 948 F. Supp. at 1219. While Google believes that its
conduct in scanning works and displaying snippets of them is fair for all works included within
Google Books, that does not mean that the evidence proving fair use is the same in all cases.
Litigating the fair use question will require individualized evidence.
The first factor focuses on the conduct of the accused infringer. Google agrees that
because Google used the books at issue similarly, the first factor is not an individualized inquiry.
But the first factor is only one part of the analysis, and the other three factors vary from book to
book, as described in detail in Google’s opposition to the motion for class certification in the AG
case. See Google Cl. Cert. Opp., AG ECF No. 1000 at 17-22.
The AG argues that all of the “[e]vidence bearing on the fourth factor will be common to
the members of the Authors Guild.” AG Opp. at 20. Even if the AG chose to limit its
allegations on the fourth factor to the types of hypothetical and speculative market harm
identified in its opposition brief, some of these arguments still require individualized evidence
from each association member. For example, the AG does not explain how Google’s actions
have resulted or could result in “exposure of copyrighted works to Internet piracy,” id., but even
8

if such a speculative argument were permissible (which it is not), it would have to depend on the
extent to which the risk of piracy has been increased by Google’s actions. This in turn would
require an inquiry at least into whether the book is already available in electronic form, such as
in the form of an e-book, and whether the degree of market demand for the book makes piracy a
realistic risk. Nor does the AG explain how Google’s actions have resulted in “loss of revenue
from sale of hardcopies and digital copies of works to libraries and other parties.” Id. This
argument, at least, does not apply across the board to all authors, as survey evidence has shown.
See Google Cl. Cert. Opp. at 3-4.
The AG’s argument for harm in the form of “loss of control over the digital reproduction,
distribution, and display of copyrighted works,” AG Opp. at 20, is not cognizable under the
fourth fair use factor; any time there is a finding of fair use, there is a loss of control, so the loss
of control cannot itself affect the fair use analysis. See, e.g., Murphy v. Millennium Radio Grp.
LLC, 650 F.3d 295, 306 (3d Cir. 2011) (fair use “places important limitations on a copyright
owner’s right to control the use of its work”). Similarly, the AG’s argument for harm in the form
of “loss of revenue from licensing digital copies of works (and derivative works) to parties such
as search engines, websites and mobile content providers,” AG Opp. at 20, is difficult to
understand, since license fees for transformative (i.e., non-substitutive) uses such as search are
not a cognizable type of harm under the fourth fair use factor, and there is no allegation that
Google’s actions could affect the market for licensing of substitutive uses, such as e-book
licensing. See Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003) (search is a
transformative purpose); Bill Graham Archives, 448 F.3d at 614 (claims of lost license fees for
transformative uses are not cognizable under the fourth factor).
UMG Recordings, Inc. v. MP3.com, Inc., 92 F. Supp. 2d 349 (S.D.N.Y. 2000), is not to
the contrary. In MP3.com, the defendant chose to present its fair use arguments as to all factors
in an across-the-board manner as to all of the works at issue, which were popular CDs owned by
the nine defendants. See MP3.com’s Consolidated Opposition to Plaintiffs’ Motions for Partial
Summary Judgment, available at 2000 WL 34474983. MP3.com made that choice; Google has
9

not. As a result, the Court would be required to evaluate these issues to arrive at a judgment in
this case.
E.

Individual issues as to Partner Program works preclude associational
standing for the ASMP.

The ASMP has brought one set of claims that mirror those of the AG: that Google’s
scanning, indexing, and snippet display of books from libraries is copyright infringement, not
fair use. First Amended Class Action Complaint, ASMP ECF No. 29 at ¶¶ 68-73. But the
ASMP also makes allegations as to books scanned at the behest of publishers as part of the
Partner Program—a completely different set of claims with a completely different set of
underlying facts and defenses. Id. at ¶ 58. As to those works, the Court will need to look to the
terms of each contract between photographer and each publisher, as those contracts may govern
whether the publisher had the rights necessary to place its book in the Partner Program. See, e.g.,
Faulkner v. Nat’l Geographic Enters. Inc., 409 F.3d 26, 40 (2d Cir. 2005) (looking to particular
contractual terms in determining the scope of a publisher’s rights to digitally republish
photographs in magazines). Fundamentally, the ASMP’s beef with respect to Partner Program
books is with the publishers, and the relationship between the photographers and the publishers
is governed by the same kind of contracts at issue in the NAFP and Faulkner cases. National
Association of Freelance Photographers v. Associated Press, No. 97 Civ. 2267 (DLC), 1997 WL
759456 (S.D.N.Y. Dec. 10, 1997) (“NAFP”).
F.

Plaintiffs’ attempts to distinguish AIME and NAFP are unavailing.
1.

AIME

The AG and ASMP take different approaches to dealing with Association for Information
Media & Equipment v. Regents of the University of California, No. CV 10-9378 CBM (MANx)
(C.D. Cal. Oct. 3, 2011) (“AIME”) (attached as Exhibit 1 to Google Inc.’s Request for Judicial
Notice, AG ECF No. 994), which holds that because proof of ownership of a particular copyright
is an element of each copyright claim, participation of individual copyright holders is necessary
to litigate such claims. Neither association’s approach is persuasive.
10

The AG argues that the AIME case is distinguishable because the AIME did not
demonstrate that one or more of its members had standing in their own right, thus failing to meet
the first prong of the Hunt test. AG Opp. at 12. But that does nothing to distinguish the AIME
court’s analysis of the third prong of the Hunt test, which the AIME court addressed separately
from the first prong: “In order to establish a claim for copyright infringement, individual
copyrights owners’ participation is necessary. This is because having the rights over a copyright
is essential to establishing a copyright infringement claim.” AIME at 7. Likewise the relief
requested required the participation of individual association members, because “the scope of
that declaratory relief would be limited by the rights that members have over the copyrights.” Id.
Neither of these holdings as to the third Hunt prong is affected by the analysis as to the first Hunt
prong.
The ASMP, by contrast, simply disagrees with Judge Marshall’s analysis in AIME,
calling it a “flawed analysis” which “misinterprets and misapplies the Hunt test.” ASMP Opp. at
13. The ASMP thinks that Judge Marshall should have ignored copyright ownership in
considering whether the claim asserted or the relief requested requires the participation of
individual members in the lawsuit. According to the ASMP, it doesn’t matter whether one
photographer has standing to sue Google or whether all of them do. Id. That is not the law. See
part II-C-1, supra. Associational standing is a narrow exception to the ordinary rule that a party
must assert its own rights, not the rights of others. The third prong of the Hunt test imposes an
important limit on associational standing, appropriately preventing the association-wide litigation
of issues which, like copyright ownership, depend on case-by-case inquiries.
2.

NAFP

Plaintiffs attempt to distinguish NAFP by asserting that, unlike the NAFP case, “this case
involves no individual transactions or negotiations between Google and the copyright owners of
the books in issue.” AG Opp. at 12; see ASMP Opp. at 16. That assertion is beside the point.
Whether or not the case involves individual transactions or negotiations between Google and the
copyright owners of the works at issue, Plaintiffs’ claims in both the AG and ASMP cases turn on
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individual transactions between the creators of the works at issue and the publishers of those
works, which will determine who is a copyright owner of the works at issue with standing to sue.
As set forth in part II-C-2, each member’s claim turns on the interpretation of an individual
contract. And as set forth in part II-E, with respect to the ASMP case, each member’s claim turns
on the interpretation of the license between the photographer and the publisher. These
transactions and negotiations must be examined in order to determine whether each member has
a claim.
G.

The copyright associational standing cases are distinguishable.

Plaintiffs rest their arguments on three cases which, they claim, stand for the proposition
that associational standing is permissible in a case like this one. As discussed below, the cases
Plaintiffs cite tell us nothing about how the associational standing inquiry should come out in
this case.
1.

Itar-Tass

As discussed in Google’s motions and in section II-C and II-D above, the associations’
claims here flunk the third prong of the Hunt test for two principal reasons: individualized
evidence will be required of each association member as to economic harm as part of the fair use
analysis, and individualized evidence will be required of each association member as to
copyright ownership. Neither of those issues arose in Itar-Tass Russian News Agency v. Russian
Kurier, No. 95 Civ. 2144 (JGK), 1997 WL 109481 (S.D.N.Y. Mar. 10, 1997), rev’d in part, 153
F.3d 82 (2d Cir. 1998).
In Itar-Tass, fair use was not at issue. For this reason, UJR’s decision to limit its claims
to those for injunctive and declaratory relief meant that issues of individualized harm did not
arise. By contrast, here, the same issues of individualized harm that would be necessary to the
adjudication of a damages claim are necessary to the adjudication of the fourth factor with
respect to Google’s fair use claim.
Nor did individualized issues of copyright ownership arise in Itar-Tass, because the ItarTass court applied the Russian law of copyright ownership, rather than United States law.
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Applying Russian law obviated the need for the sort of individualized analysis of copyright
ownership that the Court would need to undertake in this case. One of the individualized
questions which precludes associational standing here is the question whether each work was a
“work made for hire.” Google Br. at 15-16; Google Cl. Cert. Opp. at 15-17. If a work was
“made for hire,” its creator lacks standing to sue. Id. In Hunt’s terms, the “claim asserted”
requires this individualized determination. But this issue did not preclude a finding of
associational standing in Itar-Tass, because Russian law “explicitly excludes newspapers from a
work-for-hire doctrine.” Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 84
(2d Cir. 1998). Because all of the works at issue were Russian newspaper articles, no
individualized inquiry was required to determine that none of the works was “made for hire.” Id.
And because there was no allegation that publication contracts or other licenses vested copyright
ownership in the newspaper rather than in the journalists under Russian law, this simplification
of the work-for-hire question meant that there were no questions of copyright ownership for
which individualized evidence was required.
The Itar-Tass court’s determination that the claim asserted did not require the
participation of individual UJR members was based on the fact that questions of economic harm
and copyright ownership did not require individualized inquiry, under the particular set of claims
and foreign legal rules that were at issue in that case. Here, by contrast, the fair use issue raises
individualized questions of economic harm, and the application of United States law rather than
Russian law as to works created in the United States means that copyright ownership questions
cannot be resolved without looking to the particular circumstances of the creation of each work
at issue.
2.

EchoStar

Plaintiffs characterize CBS Broadcasting, Inc. v. EchoStar Communications Corp., 450
F.3d 505, 518 (11th Cir. 2006) as a copyright associational standing case, but that case applies a
different standing analysis than the claims at issue here. Plaintiffs’ claims in this case are made
pursuant to section 501(b), which confers standing only on “[t]he legal or beneficial owner of an
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exclusive right under a copyright.” 17 U.S.C. § 501(b). The claims in the EchoStar case were
made pursuant to section 501(e), which does not require copyright ownership in order to bring a
claim. EchoStar at 518. Section 501(e) does not apply here because the claims at issue do not
have to do with the satellite retransmission of broadcast television programming. See 17 U.S.C.
§ 501(e). For this reason, EchoStar does not tell us anything about whether associational
standing is appropriate in cases where standing is governed by the much more restrictive section
501(b).
3.

Olan Mills

Plaintiffs place substantial reliance on Olan Mills, Inc. v. Linn Photo Co., 795 F. Supp.
1423 (N.D. Iowa 1991), rev’d, 23 F.3d 1345 (8th Cir. 1994). That district court case is, of
course, an authority only to the extent its reasoning is persuasive. As to the application of the
third prong of the Hunt test, it is not persuasive. The opinion states the conclusion that “PPA
does not assert a claim or request relief which requires the participation in this lawsuit of PPA’s
individual members,” Olan Mills at 1427, but does not say why. The court engages in no
analysis whatsoever on the application of the third Hunt prong. The ASMP’s assertion that “the
[c]ourt devoted two pages of its decision to analyzing the issue of associational standing,” ASMP
Opp. at 19, misses the point. The amount of analysis of the first and second Hunt prongs is
irrelevant. What matters is the persuasiveness of the court’s analysis with respect to the point of
law for which Plaintiffs cite the opinion—the application of the third Hunt prong. That analysis
is not merely unpersuasive; it is absent. Olan Mills does not provide a basis to confer standing
on the associations here.
H.

Remedies in a copyright infringement lawsuit must be tied to the works at
issue.

The ASMP argues that declaratory and injunctive relief in a case brought by a copyright
owner for infringement of his copyrights may go beyond the copyrights which the plaintiff owns
and has proved to have been infringed. The ASMP does not attempt to distinguish the Seventh
Circuit opinion cited in Google’s moving papers. See Chicago Bd. of Educ. v. Substance, Inc.,
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354 F.3d 624, 632 (7th Cir. 2003) (Posner, J.) (an injunction must be limited to works in which
the particular plaintiff “has valid and subsisting copyright”). Instead, the ASMP cites a number
of cases having to do with businesses that performed musical works without the necessary
licenses from ASCAP, which is a collective organization to which a large percentage of
composers and music publishers have delegated the licensing of public performance rights.
None of those cases analyzes the propriety of enjoining infringement of works not at issue in the
lawsuit, and most were either default judgments or were litigated against pro se defendants. See,
e.g., EMI April Music Inc. v. Jet Rumeurs, Inc., 632 F. Supp. 2d 619, 621 (N.D. Tex. 2008)
(default judgment); Major Bob Music v. Heiman, No. 09-CV-341-BBC, 2010 WL 1904341
(W.D. Wis. May 11, 2010) (pro se defendant). To the extent these cases can be read to stand for
the proposition that copyright remedies may be granted without a showing of ownership,
validity, and infringement as to each work that is the subject of the remedy, they are wrong, as
discussed in the Chicago Board of Education case.
III.

CONCLUSION
For the foregoing reasons, the claims of the associations, who own no copyrights alleged

to have been infringed, should be dismissed with prejudice.
Dated: February 17, 2012

Respectfully submitted,
By:

/s/ Joseph C. Gratz
Daralyn J. Durie (pro hac vice)
[e-mail]
Joseph C. Gratz (pro hac vice)
[e-mail]
DURIE TANGRI LLP
217 Leidesdorff Street
San Francisco, CA 94111
Telephone: [phone]
Facsimile: 415-236-6300
Attorneys for Defendant Google Inc.

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