The Authors Guild, Inc. et al v. Hathitrust et al

Filing 133

COUNTER STATEMENT TO 113 Rule 56.1 Statement. Document filed by Authors' Licensing and Collecting Society, Pat Cummings, Pat Cummins, Erik Grundstrom, Angelo Loukakis, Norsk Faglitteraer Forfatter0OG Oversetterforening, Roxana Robinson, Helge Ronning, Andre Roy, Jack R. Salamanca, James Shapiro, Daniele Simpson, T.J. Stiles, Sveriges Forfattarforbund, The Australian Society Of Authors Limited, The Authors Guild, Inc., The Authors League Fund, Inc, Union Des Ecrivaines Et Des Ecrivains Quebecois. (Rosenthal, Edward)

Edward H. Rosenthal
Jeremy S. Goldman
FRANKFURT KURNIT KLEIN & SELZ, P.C.
488 Madison Avenue, 10th Floor
New York, New York 10022
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
Attorneys for Plaintiffs
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
---------------------------------------------------------X
:
THE AUTHORS GUILD, INC., et al,
:
:
Plaintiffs,
:
:
- against :
:
HATHITRUST, et al.
:
:
Defendants.
---------------------------------------------------------X

Index No. 11 Civ. 6351 (HB)

PLAINTIFFS’ COUNTER-STATEMENT IN RESPONSE TO
DEFENDANTS’ STATEMENT OF MATERIAL FACTS IN SUPPORT OF
DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT
Pursuant to Local Rule 56.1 of the Local Rules of the United States District Court for the
Southern District of New York, Plaintiffs submit the following counter-statement in response to
Defendants’ Local Rule 56.1 Statement. Except where specifically defined in the chart below,
capitalized terms shall have the meanings ascribed to them in the “Definitions” set forth in
Appendix A to Plaintiffs’ 56.1 Statement filed in support of Plaintiffs’ motion for summary
judgment (“UF”).

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

The Core Functions of Academic
Libraries
1.

2.
3.

4.

5.

Academic libraries buy works for academic
and scholarly pursuits. (June 28, 2012
Declaration of John Wilkin (“Wilkin
Decl.”) ¶ 11.)
Academic libraries curate, maintain, and
preserve works in their collections. (Id.)

Uncontroverted except to the extent that the
statement as written suggests that there are
no other reasons why libraries buy works.

Academic libraries help scholars and
students identify works pertinent to their
pursuits. (Id.)
Academic libraries make works within their
collections available and accessible
consistent with applicable law. (Id.)

Uncontroverted.

The Libraries are non-profit educational
institutions. (Id. ¶¶ 8, 55, Ex. B.)

Uncontroverted.

Controverted to the extent that the
statement purports to include conduct by
libraries other than the Defendant
University Libraries and also because
certain conduct by the Defendant
University Libraries is not legal under the
copyright law.
Uncontroverted.

Acquisition of Works by the Libraries
6.

Academic libraries acquire works to satisfy
anticipated future demand by their patrons.
(Id. ¶¶ 13, 17–19, 21.)

Controverted to the extent that the
statement purports to include conduct by
libraries other than the Defendant
University Libraries and also to the extent
that it suggests that there is no other reason
why academic libraries acquire works.

7.

When there is increased demand for a
particular work, academic libraries will try
to purchase additional copies of that work.
(Id. ¶ 13.)
Each year the Libraries spend tens of
millions of dollars acquiring new works.
(Id. ¶ 14.)

Uncontroverted.

8.

2

Uncontroverted.

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

9.

Most works go out of print after the initial
print run and once that print run is sold out,
it can be difficult if not impossible for
libraries to obtain additional copies of the
work. (Id. ¶¶ 20–21.)

Controverted. The term “most works” is
vague. In addition, the statement purports
to make broad generalizations about works
that may be subject to many different
circumstances. The Internet makes it
exceptionally easy to locate used and/or
unused copies of many out-of-print works,
including works that were digitized by
Defendants and erroneously identified as
“orphan candidates.” See UM RFA No.
5(ii); Goldman Decl. ¶ 5, Ex. C.

Deterioration of Works in the Libraries’
Collections
10.

Books, in their physical form, are
inherently subject to damage, deterioration
and loss. (Id. ¶ 22.)

Controverted to the extent that the
statement purports to call for a legal
conclusion as to the permissibility of
making copies of books pursuant to Section
108(c) of the Copyright Act. Otherwise,
uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by libraries and
archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.

11.

Books published between 1850 and 1990
are particularly at risk of damage,
deterioration and loss because books
published during this time period were
generally published on paper with high acid
content. (Id.)

Controverted to the extent that the
statement purports to call for a legal
conclusion as to the permissibility of
making copies of books pursuant to Section
108(c) of the Copyright Act. Otherwise,
uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by libraries and
archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.

12.

Paper with high acid content degrades far
more quickly than paper with low acid
content because the fibers that comprise
paper degrade when acid meets the
moisture in the air. (Id. ¶ 23.)

Uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.

3

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

13.

As of 2004, the University of Michigan
library (the “UM Library”) estimated that
about half of its collection—approximately
3.5 million books—was printed on paper
with high acid content, i.e. on paper that is
particularly vulnerable to deterioration and,
ultimately, loss. (Id. ¶ 25.)

Controverted to the extent that the
statement purports to call for a legal
conclusion as to the permissibility of
making copies of books pursuant to Section
108(c) of the Copyright Act. Otherwise,
uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by libraries and
archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.

14.

The process of searching the vast
collections of academic libraries such as the
UM Library can take so long that by the
time the library identifies the most
imperiled books from the millions
potentially at risk, it is too late and the
books is lost. (Id. ¶ 26.)

Controverted to the extent that the
statement purports to call for a legal
conclusion as to the permissibility of
making copies of books pursuant to Section
108(c) of the Copyright Act. Otherwise,
uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by libraries and
archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.

15.

Gradual disintegration is not the only threat
to books in the academic libraries. Loss
from theft, vandalism, fire, and floods
presents an ever-looming threat. (Id. ¶¶ 30–
31.)

Uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.

16.

Just last week the library at the University
of Wisconsin Superior (“UW Superior”)
suffered a catastrophic loss of a portion of
its collection as a result of flooding. (June
28, 2012 Declaration of Faith Hensrud
(“Hensrud Decl.”) ¶¶ 6–20.)

Uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.

17.

The flooding of the UW Superior library
destroyed approximately 25-30% of the
books in the library’s collection, and
approximately 70% of the periodicals. (Id. ¶
17.)

Uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.

4

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

In the Past It Has Been Difficult and
Sometimes Impossible for Academic
Libraries to Help Scholars Identify
Works of Potential Interest
18.

Academic libraries aid scholars in the
identification of relevant works. (Wilkin
Decl. ¶ 33.)
The immense collections housed by
academic libraries would be significantly
diminished without reliable and efficient
search methods and related technology.
(Id.)

Uncontroverted.

20.

Until relatively recently, most searches of a
library’s collection relied on a physical card
catalog. (Id. ¶ 34; June 26, 2012
Declaration of Dr. Stanley N. Katz (“Katz
Decl.”) ¶ 5.)

Controverted to the extent that the term
“until relatively recently” is vague.
Otherwise immaterial because Congress
addressed the balance between the rights of
copyright owners and those of academic
and other users in the Copyright Act, 17
U.S.C. § 101 et seq.

21.

Each card contained limited information
concerning a particular work, including its
title, author, publication date and publisher
and limited information concerning the
work’s subject matter. (Wilkin Decl. ¶ 34;
Katz Decl. ¶ 5.)
Online catalogs emerged in the 1970’s but
searches of such databases were still limited
to the work’s basic bibliographic data,
namely, author, title, subject. (Wilkin Decl.
¶¶ 35–36; see also Katz Decl. ¶ 8.)

Uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq.

A work that contained information of great
importance to a researcher would not be
discoverable by that researcher unless the
work’s title, subject headings, or other
limited bibliographic data happened to
contain certain key words or other evidently
pertinent information. (Wilkin Decl. ¶¶ 36–
37.)

Controverted. There are many other ways
in which a particular work might be
discovered by a researcher. See, e.g., Stiles
Tr. 51:19-60:3. In any event, Congress
addressed the balance between the rights of
copyright owners and those of academic
and other users in the Copyright Act, 17
U.S.C. § 101 et seq.

19.

22.

23.

5

Uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq.

Uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq.

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

Digitization of Works With the
Libraries’ Collections
24.

In the late 1980’s academic libraries such as
the UM Library began converting works at
risk of damage, deterioration and loss to
digital format. (Id. ¶ 39.)

Controverted to the extent that the
statement purports to cover conduct by
academic libraries other than Defendant
University Libraries. Also, the time frame
is vague and because prior to entering into
the Cooperative Agreement with Google,
the books “converted” by the UM Library
were in large part not protected by
copyright and because the UM Library
followed the requirements of Section 108.

25.

Academic libraries began digitizing at risk
works in order to ensure that they would be
available for future scholarly pursuits even
in the event that the work in physical form
was lost and the libraries could not find a
replacement copy at a fair price. (Id. ¶ 41.)

Controverted to the extent that the
statement purports to cover conduct by
academic libraries other than Defendant
University Libraries. Otherwise,
uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.

26.

Academic libraries such as the UM Library
found that given the enormous size of their
collections they could not digitize and,
thereby, preserve deteriorating works
quickly enough. (Id. ¶ 42.)

Controverted to the extent that the
statement purports to cover conduct by
academic libraries other than Defendant
University Libraries. Otherwise
uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.

6

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

27.

During this time period academic libraries
lost irreplaceable volumes which, as a
result, have vanished from the academic
and cultural landscape. (Id.)

Controverted to the extent that the
statement purports to cover conduct by
academic libraries other than Defendant
University Libraries. Otherwise
uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.

Google’s Involvement in the Libraries’
Digitization Efforts
28.

29.

30.

31.

Prior to Google Inc.’s (“Google”)
involvement in the UM Library’s
digitization efforts, at its then rate of
scanning, it would have taken the UM
Library more than 1,000 years to digitize
the UM Library’s then over 7 million
volumes. (Id. ¶ 44.)
In 2002, the UM Library began speaking
with Google about its interest in digitizing
the UM Library’s entire library collections
in less than a decade. (Id. ¶ 45.)
In late 2004, the University of Michigan
entered into an agreement with Google
under which Google would convert
hardcopy books from the UM Library
collections to a digital format and provide
digital copies of those books to the
University of Michigan. (Id. ¶ 46, Ex. A.)
In return for giving Google access to books
in the UM Library collection, Google was
required to give the UM Library a digital
copy of the works digitized by Google. (Id.
¶ 47.)

7

Uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.
Uncontroverted.

Uncontroverted, except reference is made
to the agreement with Google for proof of
its contents. See Rosenthal Decl., Ex. 80.

Uncontroverted, except reference is made
to the agreement with Google for proof of
its contents. See Rosenthal Decl., Ex. 80.

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

32.

The University of Michigan bargained for
this right because it was important to it that
it had the right to control its own uses and
satisfy its primary mission of providing
specialized services to the blind or other
persons with disabilities. (Id.)

Controverted because the evidence does not
support the statement that University of
Michigan’s “primary mission” was to
provide specialized services to the blind or
other persons with disabilities. Also
controverted due to the vagueness of the
term “other persons with disabilities”
within the context of this statement.
Otherwise uncontroverted but immaterial
because Congress provided the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

33.

If the Libraries digitized only select
portions of their collections they would not
have achieved their goals of providing a
comprehensive search tool; nor would they
have accomplished their goals of providing
equal access to students with print
disabilities or preserving all imperiled
works. (Id. ¶¶ 48–51.)

Uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108 and the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

34.

While the University of Michigan’s library Uncontroverted.
was the first academic library to work with
Google in connection with what would
become the “Google Book Project,” Google
ultimately partnered with each of the
Libraries as well as such universities as
Harvard University, Stanford University,
Oxford University, Columbia University,
Princeton University, the University of
Virginia, and the University of Texas at
Austin, among others. (Id. ¶ 52.)

8

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

35.

The benefits to society—in preserving
books, making them accessible to people
with print disabilities, and enabling people
to find them—increased significantly with
each institution that digitized books from its
collections. (Id.)

Controverted because Congress addressed
the balance between the rights of copyright
owners and those of academic and other
users in the Copyright Act, 17 U.S.C. § 101
et seq. and specifically addressed the rules
and requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108 and the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

The Formation of HathiTrust
36.

37.

38.

In 2008, the University of Michigan formed
HathiTrust, named for the Hindi word for
elephant, “hathi,” evoking the qualities of
memory, wisdom, and strength symbolized
by elephants. (Id. ¶ 53.)
HathiTrust was formed because the
Libraries concluded that by working
together and pooling resources they could
better serve their common goals of
collecting, organizing, securing, preserving
and, consistent with applicable law, sharing
the record of human knowledge. (Id. ¶ 54.)

Uncontroverted.

Pursuant to the HathiTrust mission,
participating members combined their
digitized collections in order to provide
more secure, long-term storage for the
works, more comprehensive research and
discovery tools, improved access to works
in the public domain and improved access
to works for students and faculty with print
disabilities. (Id. ¶ 55.)

Uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq. and
specifically addressed the rules and
requirements for preservation and
replacement of books by libraries and
archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108 and for making books
available to the visually disabled in Section
121 of the Copyright Act, 17 U.S.C. § 121.

9

Uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq. and
specifically addressed the rules and
requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

39.

The University of Michigan and
HathiTrusts’s purposes are non-profit,
educational purposes. (Id. ¶¶ 8, 55, Ex. B.)

Uncontroverted to the extent that the
University of Michigan and HathiTrust are
non-profit organizations or entities, but
controverted to the extent that either or both
contracted with a commercial entity,
Google Inc., to make copies of books in
university libraries and received substantial
financial and other benefit from their
cooperative agreements with Google. See
Rosenthal Decl., Ex. 80; UF 4, 52-60. In
addition, the HathiTrust receives significant
payments from various member
organizations. UF 79-81.

40.

The Libraries’ digitization efforts do not
diminish their acquisitions of in-copyright
material (digital or otherwise). (Id. ¶¶ 16,
69.)
The Composition of the HathiTrust
Digital Library (“HDL”)

Controverted. Each book that the libraries
digitized without permission represents a
lost sale for the rightsholder. UF 129, 136.

41.

The combined corpus of the HDL now
totals more than 10 million works. (Id. ¶
57.)

Uncontroverted.

42.

At least 30% of the corpus consists of
material that is clearly within the public
domain. (Id. ¶ 62.)

Controverted to the extent that the word
“clearly” is vague and ambiguous.
Moreover, works considered by Defendants
to be in the public domain may still be
protected by copyright. ALF Decl. ¶ 18,
Ex. E.

43.

Works published between 1923 and 1963
entered the public domain unless they were
renewed, and according to a 1960
Copyright Office study only 7% of books
were renewed. (See Staff of S. Comm. on
the Judiciary (Barbara Ringer), 86th Cong.,
Renewal of Copyright 31, at 220 (Comm.
Print 1960).)

Controverted to the extent that this
statement does not take into account foreign
works. In addition, Defendants’ key witness
has indicated that estimates like these are
“pretty wild” and that a better estimate is
closer to 45%. See Declaration of Jeremy
S. Goldman (“Goldman Decl.”) Exs. A and
B.

10

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

44.

The vast majority of works in the HDL
corpus are now out of print (and, in fact, for
older works within the collection, have
been out of print for decades). (Wilkin
Decl. ¶ 66; see also Mem. of Law in Supp.
of Pls.’ Mot. For Prelim. Settlement
Approval at 27, The Authors Guild, Inc. v.
Google Inc., No. 05-cv-8136 (S.D.N.Y.
Oct. 28, 2008) (The Authors Guild
confirms that “[a]pproximately 75% of the
Books in United States libraries are out-ofprint and have ceased earning any income
at all for their Rightsholders”).)
Less than 9% of the HDL corpus consists of
prose fiction, poetry and drama. (Wilkin
Decl. ¶ 67.)

Controverted to the extent that out of print
works have the potential to earn money for
rightsholders. UF 133. Otherwise,
uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq.

46.

Approximately 90% of the HDL corpus
consists of factual works such as books and
journals in many disciplines of the arts,
humanities, social sciences and sciences.
(Id.)

Controverted to the extent that
approximately 76% of the works whose
copyrights are owned by Plaintiffs and that
were digitized and copied by Defendants
are works of fiction. See Goldman Decl. ¶
6. Otherwise, uncontroverted but
immaterial because Congress addressed the
balance between the rights of copyright
owners and those of academic and other
users in the Copyright Act, 17 U.S.C. § 101
et seq.

47.

The security employed with respect to the
HDL meets, and in many ways exceeds, the
specifications developed by the parties in
the Google Books proposed settlement. (Id.
¶ 93.)
The Limited Uses of the Works within
the HDL

Controverted in that the HDL presents
numerous security risks. UF 134.

45.

11

Controverted to the extent that
approximately 76% of the works whose
copyrights are owned by Plaintiffs and that
were digitized and copied by Defendants
are works of fiction. See Goldman Decl. ¶
6. Otherwise, Uncontroverted but
immaterial because Congress addressed the
balance between the rights of copyright
owners and those of academic and other
users in the Copyright Act, 17 U.S.C. § 101
et seq.

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

48.

The Libraries permit only three categories
of uses of works within the HDL that are
presumed to be in-copyright: (1) full text
search; (2) preservation; and (3) access for
people with certified print disabilities. (Id. ¶
68.)

Controverted to the extent that Defendants
have identified at least 93 individuals with
privileged access to the HDL, including
employees and researchers performing
analysis of the contents of the HDL. UF
100. Otherwise, uncontroverted but
immaterial because Congress addressed the
balance between the rights of copyright
owners and those of academic and other
users in the Copyright Act, 17 U.S.C. § 101
et seq. and specifically addressed the rules
and requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108 and the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

49.

Through the Internet, users of the
HathiTrust website may search for a
particular term across all works within the
HDL. (Id.)
For those works that are not in the public
domain or for which the copyright holder
has not expressly authorized use, the search
results indicate only the page numbers on
which a particular term is found within a
particular book or periodical, and the
number of times that term appears on each
page. (Id.)
Unlike Google’s service, the search results
do not show portions of text in “snippet”
format. (Id.)

Uncontroverted.

50.

51.

12

Uncontroverted.

Uncontroverted.

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

52.

When searching in-copyright material, at no
time does the user have digital access to
any of the actual written content within
such works (unless he/she is afforded
access as a certified print disabled user).
(Id.)

Controverted to the extent that Defendants
have identified at least 93 individuals with
privileged access to the HDL, including
employees and researchers performing
analysis of the contents of the HDL. UF
100. Otherwise, uncontroverted but
immaterial because Congress addressed the
balance between the rights of copyright
owners and those of academic and other
users in the Copyright Act, 17 U.S.C. § 101
et seq. and specifically addressed the rules
and requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108 and the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

53.

The HDL is not a substitute, in any respect,
for the Libraries’ acquisitions of incopyright material and does not diminish
the Libraries’ purchases of in-copyright
works. (Id. ¶¶ 16, 69).
The HDL represents protection against the
prospect of damage, deterioration and loss
in circumstances where the Libraries cannot
obtain a replacement copy at a fair price.
(Id. ¶ 68.)

Controverted. Each book that the libraries
digitized without permission represents a
lost sale for the rightsholder. UF 129, 136.

54.

Uncontroverted but immaterial because
Congress provided the rules and
requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108.

55.

For decades, the Libraries have converted
works in their collection to alternative
formats for the blind and other persons who
have disabilities that prevent them from
accessing printed materials. (Id.)

Uncontroverted but immaterial because
Congress provided the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

56.

Digitization has significantly improved the
quality of access for print-disabled readers.
(Id.)

Uncontroverted but immaterial because
Congress provided the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

13

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

57.

Through digitization, an authorized patron
with a print disability can have immediate
access to a work in a format that can be
made accessible through a variety of
technologies, including software that
translates the text into spoken words. (Id. ¶
105.)
The HDL was designed specifically to
enable libraries to make their collections
accessible in digital format to print-disabled
readers. (Id.)

Uncontroverted but immaterial because
Congress provided the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

58.

Uncontroverted but immaterial because
Congress provided the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

59.

The HDL has a positive effect on
purchasing of in-copyright works because
scholars, students, and other patrons are
more likely to discover, purchase and use
works that they can locate through digital
search. (Id. ¶ 70–74; June 29, 2012
Declaration of Dr. Joel Waldfogel
(“Waldfogel Decl.”) ¶¶ 7, 48–50; June 26,
2012 Declaration of Margaret Leary
(“Leary Decl.”) ¶ 15.)
The Immense Public Benefits of the HDL

Controverted. Each book that the libraries
digitized without permission represents a
lost sale for the rightsholder. UF 129, 136.

60.

The HDL offers immense public benefit.
(Wilkin Decl. ¶¶ 75–77, 83–86, 100–102,
106); (Katz Decl. ¶¶ 9–17); (Leary Decl. ¶¶
9–14.)

Uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq. and
specifically addressed the rules and
requirements for preservation and
replacement of books by Libraries and
Archives in Section 108 of the Copyright
Act, 17 U.S.C. § 108 and the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

61.

One of the primary goals of HathiTrust has
always been to enable people who have
print disabilities to access the wealth of
information within library collections.
(Wilkin Decl. ¶ 100.)

Uncontroverted but immaterial because
Congress provided the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

14

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

62.

For centuries, libraries have been
inaccessible to people who have a broad
range of disabilities because library
collections have not been available in
accessible formats. (Id. ¶ 101.)

Uncontroverted but immaterial because
Congress provided the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

63.

The HDL was constructed with the
objective of making the world’s first
accessible research library. (Id. ¶ 100.)

Uncontroverted but immaterial because
Congress provided the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

64.

To obtain access to digital versions of incopyright works in the HDL, a student,
faculty member, or staff member at the
University of Michigan with a print
disability must obtain certification from a
qualified expert who in turn informs the
UM Library that the individual has a
certified print disability for which digital
access is a reasonable accommodation. (Id.
¶ 105.) The University of Michigan
explains the digital library to the patron,
describes appropriate uses of the service
(including warnings about copyright
infringement), and enables the patron to get
secure digital access to the HDL corpus.
(Id.)
With digital access, a print-disabled patron
can perceive the works within the HDL
using adaptive technologies such as
software that translates the text into spoken
words. (Id.)

Uncontroverted but immaterial because
Congress provided the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

65.

66.

The HDL makes it possible for students
with certified print disabilities to achieve
their full academic and scholarly potential.
(Id. ¶ 106.)

15

Uncontroverted but immaterial because
Congress provided the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.
Uncontroverted but immaterial because
Congress provided the rules and
requirements for making books available to
the visually disabled in Section 121 of the
Copyright Act, 17 U.S.C. § 121.

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

67.

Full-text searching such as the search
functionality offered through the HDL
constitutes the most significant advance in
library search technology since the 1960s.
(Wilkin Decl. ¶ 75; see also Katz Decl. ¶
9.)

Controverted to the extent that Mr. Wilkin
is not qualified to make such a broad
statement about the value of full-text
searching. Otherwise uncontroverted but
immaterial because Congress addressed the
balance between the rights of copyright
owners and those of academic and other
users in the Copyright Act, 17 U.S.C. § 101
et seq.

68.

Rather than combing through electronic
cataloging records and attempting to
discern which works in the collection may
be of interest, scholars can access the HDL
website and search the actual text of over
10 million books and journals. (Wilkin
Decl. ¶ 76; see also Katz Decl. ¶¶ 9–10.)
The HDL has made it possible for
university students, faculty, and staff, as
well as the general public, to search the
combined digital collections contributed by
the HathiTrust members. (Wilkin Decl. ¶
77.)
The search results display bibliographic
information—including title, author,
publisher, and publication date—for books
containing the search term, as well as the
page numbers on which the term is found
and the number of times the term appears
on each page, giving some clues as to how
useful the book might be. (Id.; Katz Decl.
¶¶ 10–11; Leary Decl. ¶¶ 9–11.)
Without the ability to search the entire full
text of in-copyright materials, the content
within these resources—as distinct from
basic bibliographic information describing
that text—is invisible, or nearly so, to the
majority of researchers. (Wilkin Decl. ¶ 82;
Katz Decl. ¶¶ 11–17; Leary Decl. ¶¶ 9–13.)

Uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq.

69.

70.

71.

16

Uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq.
Uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq.

Uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq.

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

72.

The HDL empowers scholars to perform
types of research on a scale that simply
could not be performed before the
HathiTrust libraries digitized their
collections. (Wilkin Decl. ¶ 84; see also
June 26, 2012 Declaration of Dr. Neil
Smalheiser (“Smalheiser Decl.”) ¶¶ 27–29.)

Controverted. There are many other ways
in which a particular work might be
discovered by a researcher. See, e.g., Stiles
Tr. 51:19-60:3. In any event, Congress
addressed the balance between the rights of
copyright owners and those of academic
and other users in the Copyright Act, 17
U.S.C. § 101 et seq.

73.

For example, a digital research method
called “text mining”—which has the goal of
finding patterns and connections from large
databases of textual material—is already
proving itself a powerful and important tool
for scholarly research. (Smalheiser Decl. ¶¶
3–6.)

Controverted to the extent that the terms
“powerful” and “important” as used in this
statement are vague and ambiguous.
Otherwise, uncontroverted but immaterial
because Congress addressed the balance
between the rights of copyright owners and
those of academic and other users in the
Copyright Act, 17 U.S.C. § 101 et seq.

74.

The HDL offers the promise to yield
breakthrough research discoveries—
including lifesaving scientific discoveries—
that simply would not be possible if the
HDL corpus and HathiTrust services ceased
to exist. (Wilkin Decl. ¶ 77; Smalheiser
Decl. ¶¶ 25–29.)

Controverted. There are many other ways
in which a particular work might be
discovered by a researcher. See, e.g., Stiles
Tr. 51:19-60:3. In any event, Congress
addressed the balance between the rights of
copyright owners and those of academic
and other users in the Copyright Act, 17
U.S.C. § 101 et seq.

75.

The HDL helps to ensure the preservation
of the published record of human
knowledge through the creation of reliable
and accessible electronic representations of
the works within the corpus. (Wilkin Decl.
¶ 86.)

Uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq. specifically
provided the rules and requirements for
preservation and replacement of books by
Libraries and Archives in Section 108 of
the Copyright Act, 17 U.S.C. § 108.

The Orphan Works Project
76.

Orphan works are works which are
presumed to be in-copyright and for which
a rights holder cannot be identified. (Id. ¶
108.)

17

Uncontroverted.

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

77.

The University of Michigan developed a
project that it called the “Orphan Works
Project” (the “OWP”). (Id. ¶ 109.)
The OWP contemplated two distinct
phases. (Id. ¶ 110.)

Uncontroverted.

78.

Uncontroverted.

79.

In the first phase of the OWP the goal was
to identify potential orphan works through a
diligent, reasonable process that eliminates
works that are claimed by a putative rights
holder or that are otherwise found not to be
orphans. (Id.)

Controverted because in the first phase of
the OWP, the University of Michigan was
not diligent or responsible in its effort to
identity potential orphan works, a failure
that led to the misidentification of multiple
works as orphans when, in fact, their
owners were easily ascertainable. UF 123126.

80.

Under the second phase of the project, the
University of Michigan considered making
limited uses of works identified as orphans
through the first phase of the project. (Id.)
The uses that the University of Michigan
contemplated making of works identified as
orphans were limited to allowing access to
orphan works for the purpose of online
review, with the number of users permitted
to view a given work limited at any one
time to the number of copies held by the
UM Library. (Id. ¶ 111.)
Readers would have been reminded,
through watermarking and other explicit
notices, that the books are subject to
copyright. (Id.)

Controverted to the extent that the word
“limited” in this statement is vague and
ambiguous. Otherwise, uncontroverted.

81.

82.

83.

Uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq.

Uncontroverted but immaterial because
Congress addressed the balance between
the rights of copyright owners and those of
academic and other users in the Copyright
Act, 17 U.S.C. § 101 et seq.

After completing its initial process to
Uncontroverted.
identify potential orphan works, the
University of Michigan concluded that
there were flaws in its pilot process and that
it needed to remedy those flaws before
moving ahead with the OWP. (Id. ¶¶ 112114.)

18

NO.

DEFENDANTS’ ASSERTED UNDISPUTED
FACT

RESPONSE

84.

The University of Michigan suspended the
Uncontroverted.
OWP process and never proceeded to the
second step of the project (i.e., it never
proceeded to enable limited uses of putative
orphan works) although it continues to
study ways to improve the orphan
identification process. (Id. ¶ 114.)

85.

Not a single patron has been given access to
a work through the OWP and at present, the
University of Michigan does not know
whether or how the OWP will continue. (Id.
¶ 116.)

Controverted. University of Michigan’s
Dean of Libraries testified that the
university intends to continue the OWP.
UF 127.

86.

Not a single in-copyright work has been
distributed, displayed, or performed to the
public as an orphan work. (Id.)

Uncontroverted.

Dated: New York, New York
July 20, 2012
FRANKFURT KURNIT KLEIN & SELZ, P.C.

By: /s/ Jeremy S. Goldman
Edward H. Rosenthal
Jeremy S. Goldman
488 Madison Avenue, 10th Floor
New York, New York 10022
Tel. [phone]
Fax: [phone]
[e-mail]
[e-mail]
Attorneys for Plaintiffs

19