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

Filing 143

REPLY MEMORANDUM OF LAW in Support re: 81 MOTION for Summary Judgment.. Document filed by Authors' Licensing and Collecting Society, Pat Cummings, Pat Cummins, Erik Grundstrom, Angelo Loukakis, Roxana Robinson, Helge Ronning, Andre Roy, Jack R. Salamanca, James Shapiro, Daniele Simpson, Danielle Simpson, T.J. Stiles, Sveriges Forfattarforbund, The Authors Guild, Inc., The Authors League Fund, Inc, Union Des Ecrivaines Et Des Ecrivains Quebecois, Fay Weldon, the Writers' Union of Canada. (Rosenthal, Edward)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

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THE AUTHORS GUILD, INC., et al.,
Plaintiffs,
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against

:

Index No. 11 Civ. 6351 (HB)

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HATI-IITRUST, et al.,
Defendants.

x

REPLY MEMORANDUM OF LAW IN FURTHER SUPPORT
OF PLAINTIFFS’ MOTION FOR SUMMARY JUDGMENT

FRANKFURT KURNIT KLEIN & SELZ, P.C.
Edward H. Rosenthal
Jeremy S. Goldman
Adam Nelson (Law Student)
488 Madison Avenue
New York, New York 10022
Tel.: [phone]
Fax: [phone]
erosentha I(?~tkks.coni
gold man@ tkks .com
[e-mail]
Attorneys for Plaint jffs

TABLE OF CONTENTS

PRELIMINARY STATEMENT

.1

ARGUMENT

2

I. Fair Use Precedent Does Not Support Defendants’ Mass Digitization
Program

2

11. Plaintiffs Rave Shown A Likelihood Of Harm

4

III. Section 108 Does Not Authorize Mass Digitization Or The Orphan Works Project

5

IV. Plaintiffs Have Established Prima Facie Copyright Infringement

7

V. Neither The Americans With Disabilities Act Nor Copyright Law Authorizes
The Use Of The HDL For The Blind

9

CONCLUSION

10

TABLE OF AUTHORITIES

CASES
A&M Records, Inc. v. Naps/er, Inc.,
284 F.3d 1091 (9th Cir. 2002)

.9

Am. Geophysical Union v. Texaco, Inc.,
60 F.3d 913 (2d Cir. 1994)

4

Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 2006)

3

Blanch v. Koons,
467 F.3d 244 (2d Cir. 2006)

3

Campbell v. AcuffRose Music, Inc.,
510U.S.574(1994))

4

Davis v. The Gap, Inc.,
246 F.3d 152 (2d Cir. 2001)

4

Encyclopaedia Britannica Corp. v. Crooks,
542 F. Supp. 1156, 1187 (W.D.N.Y. 1982)

7

Field i’. Google Inc.,
412 F. Supp. 2d 1106 (D. Nev. 2006)

2

Hatper & Row Publishers, Inc. v. Na/ion Enters.,
471 U.S. 539 (1985)
HoJheinz v. Discovety Commuc ‘ns, Inc.,
No.00 Civ. 3802, 2001 WL 1111970 (S.D.N.Y. Sept. 20, 2001)

3

Infinity Broad. Corp. v. Kirkwood,
ISO F.3d 104 (2d Cir. 1998)

5

I/ar- Tass Russian News Agency v. Russian Kurier, Inc.,
I 53 F.3d 82 (2d Cir. 1998)

8

Kelly v. Arriba Soft Cotp.,
336 F.3d 811(9th Cir. 2003)

2

NXIVM Corp. v, Ross Inst.,
364 F.3d 471 (2d Cir. 2004)

3

II

Or!ho-O- Vision, Inc. v. HBO,
474 F. Supp. 672 (S.D.N.Y. 1979)

7

Ferfeci’ 10, Inc. v. Amazon.coni, Inc.,
508 F.3d 1146 (9th Cir. 2007)

2

Sega Enters. Ltd. v. Accolade, Inc.,
977 F.2d 1510 n. 5(9th Cir. 1993)

3

Sony Computer En/in’!, Inc. v. Connectix Corp.,
203 F.3d 596 (9th Cir. 2000)

3

Ill

In essence, Defendants’ argument is that the number of books they sought to digitize is so
breathtakingly large that they could not possibly have afforded the time, effort or money required
to determine whether the copying of any particular book was permissible, and that it would have
been prohibitively expensive to pay to license the right to digitize all of the books in the
HathiTrust Digital Library (“HDL”). This argument turns copyright law on its head, suggesting
that if the scope of an appropriation is large enough, the unauthorized use is justified.
Defendants contend that authors are wrong to expect the libraries to pay to make digital copies of
their copyrighted books, claiming the libraries’ uses are transformative. However, making an
archival copy ofa book to be discovered and read later plainly does not transform the book’s
original purpose of being discovered and read.
Recognizing the non-transformative nature of the HDL itself; Defendants instead focus
on the benefits that the HathiTrust provides to its end users. But “[amy copyright infringer may
claim to benefit the public by increasing public access to the copyrighted work.” Harper & Row
Publishers, Inc. v. Nation Enters., 471

U.S.

539. 569 (1985) (holding that the Nation’s

publication ofa description of a pivotal moment in American history
Ford of former President Nixon

—

the pardon by President

was not fair use). Thus, while a musicologist surely would

benefit from instantaneous, free access to a database of millions of sound recordings, fair use
does not permit file sharing services like Napster or MP3.com. And while a scientist could claim
similar value from having more convenient and free access to scientific journals, courts have
held that copies of such works must be paid for. Plaintiffs acknowledge that the issues raised by
orphan works and how to make more books available to people with print disabilities are
important, but current copyright law defines when copies of copyrighted books may be made.
who may make them, and the formats in which they may be made. Defendants’ use of Plaintiffs’
copyrighted books violates those rules and must be enjoined.

ARGUMENT
I. FAIR USE PRECEDENT DOES NOT SUPPORT
DEFENDANTS’ MASS DIGITIZATION PROGRAM
None of the cases upon which Defendants or Intervenors rely support the unprecedented
mass digitization and permanent storage of millions of copyrighted books.
Search Engine Cases. In the three search engine cases from the Ninth Circuit, it was
held that a search engine does not commit copyright infringement by copying Web pages for the
purpose of creating a search index that simply points users to the location of an image or other
file previously posted on the Internet.’ Here, in contrast, the millions of print books copied by
Google and Defendants were not already available on the Internet, but were offline and
accessible only if purchased or borrowed from a library. By scanning the books without
authority, Defendants usurp authors’ rights to control the digital reproduction of their work and
expose them to security risks that previously did not exist. Moreover, unlike HathiTrust’s
perpetual storage of high resolution image files and text files of every book, the Web pages
copied by a search engine are incidental to the search function. As noted by one court, after
copying full size images onto its server for the purpose of creating “thumbnails,” the search
engine deleted the original copy from its server. See Kelly, 336 F.3d at 815. Thus, even if this
Court joins the Ninth Circuit in holding that the creation of a search index can be transformative,
the permanent storage of the indexed books is not.
Reverse Engineering Cases. In the two reverse engineering cases cited by Defendants
and Intervenors, the courts held that fair use permits a software company to create an
“intermediate copy” of an entire software program for the purpose of extracting the non

See Peifect 10, Inc. ~ Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), Kelly v. Arriba
Soft Corp., 336 F.3d 811(9th Cir. 2003); Fieldv. Google Inc., 412 F. Supp. 2d 1106 (D. Nev.
2006).
2

protectible elements to develop a new, non-infringing work.2 These cases are plainly inapposite,
as the copies stored by HathiTrust are the exact opposite of “intermediate” —they are retained for
the very purpose of preserving them for “future discovery, reading and Iearning[.]” Def.
2. See Wilkin Decl.

¶ 54 (HathiTrust serves “our common goals of collecting,

Opp. at

organizing,

securing, preserving and, consistent with applicable law, sharing the record of human
knowledge”).
“Different Purpose” Cases. Each of the Second Circuit cases cited by Defendants
exemplifies quintessential fair use

—

where a secondary user takes a limited portion of

copyrighted material and incorporates it into a new expressive work that serves a “purpose
separate and distinct from the original.”

See B//I Graham, 448 F.3d at 609-10 (seven images of

event posters and tickets reduced to thumbnail size and incorporated along with 2000 other
images in a 480-page biography of the Grateful Dead); Blanch, 467 F.3d at 253 (magazine
photograph of woman’s sandal-clad legs altered and incorporated by artist into painting “as
fodder for his commentary on the social and aesthetic consequences of mass media”); NXIVM,
364 F.3d at 477 (excerpts of manual quoted by website for purpose of criticizing business
seminar as a form of mind control); HoJheinz, 2001 WL 1111970, at *2 (three clips from alien
invasion film totaling 48 seconds incorporated into hour-long documentary exploring the alien
visitation genre). In stark contrast, Defendants copy millions of books in their entirety, without
commenting on them or creating any new expressive work, and do so primarily for “future

See Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1993); Sony Computer
Ern,,z 7, Inc. v. Connect ix Corp., 203 F.3d 596 (9th Cir. 2000).
B/U Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006); see
Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006); NXIVM Corp. v. Ross Inst., 364 F.3d 471 (2d Cir.
2004); HoJheinz v. Discovery Conmiuc ‘ns, Inc., No. 00 Civ. 3802, 2001 WL 1111970 (S.D.N.Y.
Sept. 20, 2001).

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retrieval and reference.” Am. Geophysical Unionv. Texaco, Inc., 60 F.3d 913, 919 (2d Cir.
1994).
II. PLAINTIFFS HAVE SHOWN A LIKELIHOOD OF HARM
Stripped of all of the rhetoric, Defendants’ argument on the fourth (market harm) factor
comes down to the disturbing notion that the number of books in the HDL is so voluminous that
a licensing scheme could never emerge. Put another way, Defendants argue that since they took
more than they ever could afford, they should not have to pay anything at all. Had Defendants
decided to copy a particular category of works (e.g., a set of scientific journals, or books from a
specific country), they could have entered into a license permitting such use. The fact that
Defendants chose to copy everything should not be grounds for them to do it for free.4
Defendants claim that authors are not entitled to a license fee for the digital copies of the
books the libraries created because their use is purportedly transformative. But Defendants’ use
is not transformative because the secondary use (digitizing books for collection, discovery and
preservation) merely supersedes the original (buying books for collection, discovery and
preservation), serving as a market substitute. Under this circumstance, it is likely that
“cognizable [actual] market harm to the original will occur.” Davis v. The Gap. Inc., 246 F.3d
152, 176 (2d Cir. 2001) (quoting Campbell v. AcuffRose Music, Inc., 510 U.S. 574, 591 (1994)).
In any event, Plaintiffs, in the declarations they have submitted in connection with this
motion, have shown both actual and potential market harm. During his deposition, Plaintiff and

Defendants mischaracterize the testimony of the witness from the Copyright Clearance
Center (“CCC”) when they state that the CCC does not offer licenses for the various uses
claimed by Defendants, such as text searching. Waldfogel DecI. ¶ 17. What the witness actually
said is that the CCC enters into licenses for the digitization and reproduction, and does not
control the way the licensee then uses the licensed material. See Haber Tr. 19:7-13.
4

Pulitzer winner T.J. Stiles addressed Defendants’ claim that, in essence, says that “now that
we’ve illegally made a copy of your book, what harm is it to you how we use it?” as follows:
You shouldn’t have it in the first place. It’s like saying now that I’ve stolen your
baseball, what harm is it to you that we go and play a ballgame with it? Well,
you’ve taken it from me. Even worse, I sell these products for a living
[Y]ou’re stealing off my baseball cart and saying, well, hey, now that I’ve got it,
why can’t I play a bailgame? Why can’t I play catch? What harm is it to you;
you’re not playing with it. But that’s my livelihood. I sell these things. I make
them for sale.
So we begin with an act of theft.
.

.

.

StilesTr. 180:10-181:5.
Defendants give short shrift to Plaintiffs’ profound concerns over security, ignoring the
continuing and widespread reports of security breaches at university libraries and major
corporations. Despite acknowledging that “online books can never be entirely secure on the
Internet,” Def. Opp. at 15, they expect Plaintiffs to trust that the libraries’ security protocols are
adequate to protect their unprecedented collection ofdigitized books without any accountability
in the event ofa breach. See Second Aiken DecI. ¶~j 15-20 (describing importance of security
protocols and accountability in Google Books settlement). This is especially troubling given the
sovereign immunity of most Defendants.
IlL SECTION 108 DOES NOT AUTHORIZE MASS
DIGITIZATION OR THE ORPHAN WORKS PROJECT
Defendants have the burden of proving their affirmative defense that Section 108 permits
the libraries’ unauthorized use of the copyrighted works. Answer at 23

¶ K.

See Infinity Broad

Defendants’ strained argument that Plaintiffs should not complain about the HDL’s
search function because some authors permit Amazon to allow searches within their works is
addressed in Plaintiffs’ brief in support of their motion for summary judgment at p.27.
Defendants do not seem to comprehend that there is a world of difference between licensing a
particular use as part ofan agreement that includes compensation, accountability and other
benefits to the author, and having the HDL take and use what it wants without permission and for
free.
5
4

Corp. v. Kirlcwood, 150 F.3d 104, 107 (2d Cir. 1998) (burden of proving affirmative defense to
claim of copyright infringement is on its proponent). Defendants have failed to prove that any of
the books digitized as part of the Google Library Project were copied in accordance with the
procedures or conditions set forth in Section 108.
Among other things, the evidence shows:
•

Defendants authorized Google to retain digital copies of the books for its own
commercial purposes in violation of Section 108(a)(1)’s prohibition against making
copies for an “indirect commercial advantage.” UF 65-72.

•

Only published works were digitized as part of the Google Library Project, thus
foreclosing Defendants from relying on Section 108(b). UF 154-155; Clancy Tr. 45:346:8 (head of Google Books project testifying he is unaware of any unpublished books
that are in the database).

•

No book was digitized as part of the Google Library Project “solely for the purpose of
replacement ofa copy” that was “damaged, deteriorating, lost, or stolen,” as the physical
condition of the book was not a factor in the selection process, thus precluding
Defendants from relying on Section 108(c). UF 29-43.

•

No book was digitized as part of the Google Library Project upon the library having,
“after a reasonable effort, determined that an unused replacement cannot be obtained at a
fair price,” thus precluding Defendants from relying on Section 108(c). UF 29-43.

•

HathiTrust retains four digital copies of every book digitized and Google keeps another,
in violation of Section 108(c)’s three-copy limitation. UF 51, 86.

•

HathiTrust grants “privileged access” to the HDL to at least 93 people located throughout
the country, in violation of Section 108(c)(2)’s prohibition against making digital copies
available to the public outside the premises ofthe library. UF 100-101.
The libraries’ claim that their preservation goals warrant the pre-emptive digitization of

the books in their collections reads Section 108 out of the Copyright Act. DeE Opp. at 20-21.
When Congress enacted Section 108, books were equally at risk of destruction from the use of
acidic paper and unforeseeable disasters. Yet, Congress declined to grant libraries the right to

6

engage in “generalized preservation activities,”6 instead opting for a system that carefully
balances the interests of libraries with the interests of authors who make a living in part by
selling books to libraries. The HDL, ifpermitted to proceed, would upset this balance.
It is not at all surprising that Defendants more or less walk away from the Orphan Works
Project (“OWP”), relegating this once major initiative to a couple of paragraphs, and,
remarkably, repeating their proposal that they be permitted to file a brief defending the legality
of the OWP at some later time. Def. Opp. at 17-18. Defendants have no justification for a
program that makes copyrighted works fully available for view and download.7

IV. PLAINTIFFS HAVE ESTABLISHED
PRIMA FACJE COPYRIGHT INFRINGEMENT
Defendants allege that Plaintiffs have not established various categories of copyright
ownership. First, they claim that the Court should not consider the 55 infringed books that
Plaintiffs identified during discovery in addition to the 61 that were listed in the First Amended
Complaint. Def. Opp. at 22-23. However, Plaintiffs identified these 55 works months ago in
direct response to Defendants’ First Set of Interrogatories. See Rosenthal DecI. Exs. 47, 53, 56,
65.~
6

Recommendation of/he Register ofCopyrights in RM2002-4 (Oct. 27, 2003) 52, at

http://www.copyright.gov/1 201 /docs/registers-recommendation.pcjf (“2003 Register Report”).
~ Defendants’ attempt to pigeonhole the Orphan Works Project into Section 108(e)
remains unpersuasive for the reasons discussed in Plaintiffs’ prior submissions. See MJP Reply
at 11-12; P1. Opp. Mern. at 19. Defendants’ new attempt to rely on Section 108(h) to defend the
OWP is puzzling. To the extent an orphan work is in the last twenty years of its copyright term
and the libraries follow the other requirements of Section 108(h), Plaintiffs would not object to
its use and the injunction could be crafted accordingly.
In any event, courts have the power to issue injunctions that extend to works that are not
identified in the lawsuit. See Encyclopaedia Britannica Corp. v. Crooks, 542 F. Supp. 1156,
1187 (W.D.N.Y. 1982) (granting injunction encompassing 126 of plaintiffs’ videotapes in
addition to the 19 films involved in the suit); Ortho-O- Vision, Inc. v. HBO, 474 F. Supp. 672.
685-86 (S.D.N.Y. 1979) (enjoining infringement of HBO’s future registered works).
7

Defendants also complain that Plaintiffs submitted no legal authority to explain how each
foreign country’s law establishes the foreign authors’ copyrights in the Infringed Books. This is
easily resolved, as copyright vests initially in the author under the relevant foreign laws.” With
respect to the Associational Plaintiffs in Canada and Australia that own copyrights which were
bequeathed to them, the relevant laws permit the assignment of copyrights’0 Defendants’ claim
that Plaintiffs did not prove the foreign works are not “United States works” is incorrect because
each foreign Plaintiff submitted a sworn interrogatory response identifying the country in which
each foreign work was first published. See Rosenthal Dccl., Schedule A to Exs. II, 19, 22, 26,
29, 40, 46, 56, 65. Defendants submit no contrary evidence.
Finally, Defendants challenge Plaintiffs’ ability to obtain an injunction that extends to the
works of the members of the Associational Plaintiffs, arguing it is improper to address these
works at the remedy stage. Def.

Opp. at 24.

Yet, in Ilar-Tass Russian Neu’s Agency v. Russian

Kzwie,~ Inc., 153 F.3d 82 (2d Cir. 1998), the Second Circuit sanctioned precisely this approach.
In that case, the district court ruled that the Union of Journalists of Russia (“UJR”) had standing
to bring copyright infringement claims on behalf of its members, but that “since UJR declined to
furnish a list of its members, the Court was unable to frame an injunction that would be narrowly
tailored and sufficient to give defendants notice of its scope.” Id. at 94. The Second Circuit held
that despite the association’s “unwillingness to disclose its entire membership list it might be
possible to frame some form of injunctive relief that affords protection for those author-members
that UJR is willing to identif~’.” Id. Here, each of the Associational Plaintiffs produced in a
“See Canadian Copyright Act, R.S., c. C-43, § 13(1); U.K. Copyright, Designs and
Patents Act 1988 CHAPTER 48, § 11(1); Swedish Copyright Legislation Act 1960:729, Ch. I,
Art. 1(l)); Norwegian Copyright Act, Chapter 1 § 1; Australian Copyright Act of 1968 § 35(2).
‘°See Canadian Copyright Act R.S.,

§ C-43,

196(1).
8

s. 13(6); Australian Copyright Act of 1968

§

discovery a list of its members, which is more than the court in liar-Toss had available to fashion
an injunction that extends to the members’ works. See Declaration of Jeremy S. Goldman dated
July 27, 2012, Exs. A1-A7; see also A&MRecords, Inc. v. Napsier, Inc., 284 F.3d 1091, 1096
(9th Cir. 2002) (describing injunction phase in which parties ordered to collaborate to identify
infringing files for removal from database).
V. NEITHER THE AMERICANS WITH DISABILITIES ACT NOR
COPYRIGHT LAW AUTHORIZES THE USE OF THE HDL FOR THE BLIND
Intervenors incorrectly argue that Plaintiffs have not addressed their affirmative defenses.
Plaintiffs’ motion for partial judgment on the pleadings, as well as their opposition to
Defendants’ and Intervenors’ motions for summary judgment, meticulously addressed the
affirmative defenses relating to the use of the HDL by the blind, including the defenses arising
under the Chafee Amendment and the Americans with Disabilities Act (“ADA”). See MJP
Reply (Dkt. 67) at 12-14; P1. Opp. Mem. (Dkt. 135) at 20-24. Specifically, Plaintiffs explained
how the Chafee Amendment, 17 U.S.C.

§

121, which was the product of a compromise struck

between groups representing the blind (including the NFB) and rightsholders, permits a “very
narrow definition” of “authorized entities”
with a “primary mission” to serve the blind

—

—

meaning a “handful” of non-profit organizations
to reproduce copyrighted works in a “specialized

format for use exclusively for the blind.” P1. Opp. Mem. 20-22. In other words, it defines who
may make the copies and in what format the copies may be made.
Plaintiffs further explained that the “very narrow definition” of “authorized entities” set
forth in the Chafee Amendment cannot reasonably be interpreted to include every entity that is
covered by the ADA, because this would have the absurd result of turning every public entity
and place of “public accommodation” into an authorized entity with a “primary mission” of
serving the blind. Plaintiffs showed that the I-IDL does not comply with the conditions of

9

Section 121 because the Defendant libraries are not “authorized entities” and because the
digitized books stored in the I-IDL are not in a “specialized format” but comprise image and text
files accessible to people with and without sight. Finally, Plaintiffs demonstrated that while fair
use has been invoked to make a single copy ofa single work in response to a request by a single
blind person, Intervenors provide no support for the alarming proposition that fair use permits a
library to preemptively digitize, store and provide access to millions of copyrighted books
without permission, much less that the ADA compels a library to do so when presented with the
opportunity.
CONCLUSION
The creative output of Plaintiffs and millions of other writers fill the shelves of the
Defendant libraries. Without authors, there would be no books, no libraries and no HathiTrust.
For the foregoing reasons and the reasons set forth in Plaintiffs’ prior submissions, Defendants’
mass digitization and orphan works projects are not protected as fair use nor under any other
provision of the copyright law. The Court should enter summary judgment in favor of Plaintiffs.
Dated:

New York, New York
July 27, 2012
FRANKFURT KURNIT KLEIN & SELZ, P.C.
By: Is! Edward H. Rosenthal
Edward H. Rosenthal
Jeremy S. Goldman
488 Madison Avenue
New York, New York 10022
Tel.: [phone]
Fax: [phone]
erosenthal@~fl(ks.con1
igoldman~)&ks.corn
Attorneysfor Flaint(ff

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