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

Filing 55

MEMORANDUM OF LAW in Support re: 54 MOTION for Judgment on the Pleadings Motion for Partial Judgment on the Pleadings.. 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, Danielle 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, Fay Weldon, the Writers' Union of Canada. (Rosenthal, Edward)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

x

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

against

Index No. 11 Civ. 6351 (HB)

-

HATHITRUST, et al.,
Defendants.

x

MEMORANDUM OF LAW IN SUPPORT OF PLAINTIFFS’
MOTION FOR PARTIAL JUDGMENT ON THE PLEADINGS

FRANKFURT KURNIT KLEIN & SELZ, P.C.
Edward H. Rosenthal, Esq.
Jeremy S. Goldman, Esq.
488 Madison Avenue
New York, New York 10022
Tel.: [phone]
Fax: [phone]
erosenthal(21W&s.com
I goIdman(~&ks.com
Attorneys for Plaint~ffs

TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES

II

PRELIMINARY STATEMENT

1

FACTUAL BACKGROUND

3

LEGAL STANDARD

7

ARGUMENT

9

I.

DEFENDANTS’ MASS DIGITIZATION AND ORPHAN WORKS
PROGRAMS EXCEED SECTION 108 LIBRARY PRIVILEGES

9

A.

Legislative History of Section 108

9

B.

Defendants Have Violated Every Category of Section 108
1.

12

Providing Millions of Digital Copies of Works to Google
Constitutes an “Indirect Commercial Advantage” Under
Section 108(a)

12

Defendants are Exceeding their Privileges Under Section
108(c) to Copy Published Works for the Purpose of Replacement

13

Defendants are Distributing Digital Copies in Violation
of Section 108(c)

14

4.

The Works Are Not Being Copied to Fulfill User Requests

17

5.

Defendants are Engaging in the “Systematic Reproduction”
of Works in Violation of Section 108(g)

18

Defendants’ Orphan Works Program Violates Section 108(h)

18

2.
3.

6.
C.
II.

Defendants Should Not Be Permitted to Preempt Congress

DEFENDANTS CANNOT RELY ON FAIR USE (OR OTHER
LIMITATIONS ON THE RIGHTS OF COYPRIGHT HOLDERS)

CONCLUSION

20
21
24

TABLE OF AUTHORITIES
Page
CASES
Am. Geophysical Union v. Texaco,
60 F.3d 913 (2d Cir. 1994)

12,21

Authors Guild v. Google, Inc.,
770 F. Supp. 2d 666 (S.D.N.Y. 2011)

20

Bloate v. US.,
130 S.Ct. 1345 (2010)

22

Bradley v. Fontaine Trailer Co., Inc.,
No. 06 Civ. 62, 3:06-cv-62 (WWE), 2009 WL 763548 (D. Conn. Mar. 20, 2009)

8

Chil-Mil Corp. v. W T. Grant Co.,
70 F.R.D. 352 (E.D. Wis. 1976)

8

Doron Precision Sys., Inc. v. FAAC, Inc.,
423 F. Supp. 2d 173 (S.D.N.Y. 2006)

4

Dysart v. Remington Rand, Inc.,
31 F. Supp. 296 (D. Coin. 1939)

8

Gibson v. Craigslist, Inc.,
No. 08 Civ. 7735 (RMB), 2009 WL 1704355 (S.D.N.Y. 2009)

8

Golan v. Holder,
132 S.Ct. 873 (2012)

20,21

Island Software & Computer Serv., Inc. v. Microsoft Corp.,
413 F.3d 257 (2d Cir. 2005)

19

Kidder Peabody & Co., Inc. v. Unigestion Int’l, Ltd.,
903 F. Supp. 479 (S.D.N.Y. 1995)

8

Kristensons-Petroleum, Inc. v. Sealock Tanker Co., Ltd.,
304 F. Supp.2d 584 n. 2 (S.D.N.Y. 2004)

8

Madonnav. US.,
878 F.2d 62 (2d Cir. 1989)

8

ii

Morales v. Trans World Airlines, Inc.,
504 U.S. 374 (1992)

21

Morris v. Bus. Concepts, Inc.,
283 F.3d 502 (2d Cir. 2002)

10

Muench Photography, Inc. v. Houghton M~fJlin Harcourt Pub. Co.,
712 F. Supp. 2d 84 (S.D.N.Y. 2010)

10

Muller-Paisner v. TIAA,
289 F. App’x 461 n. 5 (2d Cir. 2008)

4

Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc.,
166 F.3d 65 (2d Cir. 1999)

23

0 ‘Keefe v. Ogilvy & Mather Worldwide, Inc.,
06 Civ. 6278 (SHS), 2006 WL 377101 (S.D.N.Y. Dec. 18, 2006)

19

Potter v. US.,
155 U.S. 438 (1894)

23

Sellers v. MC. Floor Crafters, Inc.,
842 F.2d 639 (2d Cir. 1988)

7

Universal City Studios, Inc. v. Corley,
273 F.3d 429 (2d Cir. 2001)

23

1/NA Plus, Inc. v. Apria Healthcare Group, Inc.,
29 F. Supp. 2d 1253 (D. Kan. 1998)

8

LEGISLATIVE HISTORY
105th Cong., 2d Sess. at 61

16

S. Rep. No. 190, 105th Cong., 2D Sess. (1998)

16

S. REP. No. 519, 91st Cong., 1st Sess. (1969)

11

STATUTES
17U.S.C.~106
17 U.S.C.

§

7

108

passim

17U.S.C.~121

23

111

17 U.S.C.

§ 512(c)(1)(B).

12

Copyright Term Extension Act

passim

Digital Millennium Copyright Act

passim

Fed. R. Civ. P. 12(c)

1,7,8

Fed. R. Evid. 201(b)

4, 19

Family Entertainment and Copyright Act of 2005, Pub. L. 109-9,
119 Stat 218, § 401 (2005)

18

TREATISES
SC CHARLES A. WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE &
PROCEDURE § 1369 (3d Ed. 2004)

8

MELVILLE B. NIMMER

9

& DAVID NIMMER, NIMMER ON COPYRIGHT (1989)
OTHER

John Schwartz, Open-Access Advocate Is Arrested For Huge
Download, N.Y. TIMES, July 19, 2011
MARY RASENBERGER & CHRIS WESTON, OVERVIEW OF THE LIBRARIES AND ARCHIVES
EXCEPTION IN THE COPYRIGHT ACT (2005)
9,

16

10, 18, 19

Office of the Register of Copyrights, Legal Issues in Mass Digitization:
A Preliminary Analysis and Discussion Document (2011)
PETER

B. HIRTLE, Copyright Term and the Public Domain in the United States (2012)

9
19

PETER B. HIRTLE, EMILY HUDSON & ANDREW T. KENYON, COPYRIGHT & CULTURAL
INSTITUTIONS: GUIDELINES FOR DIGITIZATION FOR U.S. LIBRARIES, ARCHIVES, AND MUSEUMS

(2009)

15

Priorities and Special Projects ofthe
US. Copyright Office (2011)

20

REGISTER OF COPYRIGHTS,

REGISTER OF COPYRIGHTS, REPORT OF THE REGISTER OF COPYRIGHTS ON THE GENERAL REVISION
OFTHEU.S. COPYRIGHTLAW26 (1961)
11, 17
REGISTER OF COPYRIGHTS, REPORT OF THE REGISTER OF COPYRIGHTS, LIBRARY REPRODUCTION
OF COPYRIGHTED WORKS (17 U.S.C. 108) (1983)
10, 18, 22,23
iv

PRELIMINARY STATEMENT
Plaintiffs submit this memorandum in support of their motion pursuant to Federal Rule of
Civil Procedure 12(c) for partial judgment on the pleadings and an order that Defendants’
admitted systematic reproduction, distribution, and use of millions of copyright-protected books
are not shielded by the First Amendment, the fair use defense, or any other provision of the
Copyright Act. Plaintiffs rarely move for judgment on the pleadings, but this is a highly unusual
case in which Defendants, a group of university libraries and their joint online venture, not only
concede that they have engaged in the mass book digitization project at issue, but admit to acts
that Congress has expressly prohibited under Section 108 of the Copyright Act.
Section 108 provides the ground rules under which libraries and archives may reproduce
and sometimes distribute copyright-protected works. Those ground rules are the product of years
of discussions and debate among representative academics, archivists, authors, educators,
librarians, and publishers; of hundreds of hours of fact-gathering sessions organized by the
Copyright Office and the Patent and Trademark Office; and of testimony before House and
Senate committees in the 1 960s, 1 970s, and 1 990s. The story of Section 108 as a legislative
proposal in the 1960s, its enactment in 1976, and its amendment in 1992, 1998 (twice), and 2005
is the story of stakeholders and legislators grappling with the promise to researchers and peril to
literary markets posed by a set of emerging technologies that for the first time made it convenient
to create inexpensive, high quality reproductions of literary works.
Broadly, Section 108 permits libraries and archives to reproduce copyright-protected
literary works for two purposes: to maintain a library’s existing collection (for example, to
permit a library to replace damaged, lost, or stolen books that are no longer commercially
available) and to fulfill the requests of readers and researchers using a library or, through
interlibrary loan arrangements, to fulfill the requests of researchers using other libraries. At

every turn, Section 108 carefully limits the scope of permissible copying

—

for example,

prohibiting the reproduction of an entire book that is commercially available, never permitting a
library to retain a reproduction of an entire book for its collection, except as a replacement, and
never authorizing the distribution of a digital replacement of a published work outside of the
physical premises of the library that houses the original. These limitations are carefully designed
to protect the vital cultural markets that copyright is intended to foster.
Defendants admit to a mass book digitization program and “orphan works” project that
violate nearly every restriction imposed by Section 108. Where Section 108 permits a library to
create at most, and under limited circumstances, three duplicates of a work, Defendants admit to
routinely making five (actually ten, as shown below). Where Section 108 allows a library to
copy entire books for its own collection solely for the purpose of replacing badly damaged or lost
copies, Defendants authorized the copying of entire libraries of books, without regard to their
condition, and then retained those copies for their collections. Where Section 108 permits a
library to create such a replacement copy only if the book is not commercially available,
Defendants admit to not bothering to check: they authorized the copying of everything. Where
Section 108 permits only the reproduction (not the distribution) of published books except to
fulfill the requests of users, and expressly requires that any digital replacement copy be used
strictly on the library’s premises, Defendants admit to loading digital copies of published books
by the million onto servers in Michigan and Indiana and concede that those servers are connected
to the Internet. Where Section 108 explicitly forbids systematic copying, Defendants embraced
what is surely the most systematic, comprehensive scheme of reproducing copyright-protected
books ever undertaken, creating unauthorized, machine-readable versions of the literary work of
millions of authors from all over the world. And where Section 108 authorizes a library to make

2

uses of “orphan works” during the last twenty years of their copyright term, Defendants threaten
to begin exploiting purported orphan works decades before they are permitted to do so.
Given Defendants’ admitted conduct, there is no reason for the parties to engage in
extensive discovery regarding the defenses they assert. Plaintiffs respectfully urge the Court to
hold that Defendants’ mass book digitization and orphan works projects are not protected by any
defense recognized by copyright law.
FACTUAL BACKGROUND
The facts are based on the allegations in the Plaintiffs’ First Amended Complaint
(“FAC”) and Defendants’ Answer (“Answer”) thereto.
As set forth in more detail below, Defendants admit that they have engaged in a mass
digitization program (“MDP”) through which Google provided the service of converting much of
Defendants’ libraries
copyright

--

--

millions of bound, published books, many of which are protected by

into machine-readable formats, creating a digital image file (essentially, a

photographic reproduction of each page of every book, displayable on any computer or computer
tablet device) and a digital text file (the text of the book in machine-readable form, similar to a
Word document) of each book. Google provided this format-conversion service, apparently
without any charge to Defendants, but it retained a digital image copy and a digital text copy of
each book. Google returned the physical books to Defendants’ libraries, along with copies of the
digital image and digital text files it had created. Defendants then provided copies of these
digital image and text files to HathiTrust, their joint online venture, which now hosts on its
servers digital copies of nearly ten million books, nearly all of which were created by Google’s
conversion services. Answer ¶~ 1,2, 34-39, 50-54, 62-70.
Specifically, Defendants admit that each of the four university defendants in this case
(collectively, the “Universities”) entered into Cooperative Agreements with Google to create
3

digital copies of books collected by their libraries. Answer ¶1J 34-3 8. Defendants admit that
pursuant to those agreements, Google has provided digital copies of the books to them and that
they have collected and stored a set of those digitized books in a repository called the HathiTrust
Digital Library (the “HDL”). Id.

¶jJ

1,2, 39. The Universities admit that they are co-founders of

the HathiTrust Service, and that the University of Michigan (“UM”) is the largest contributor to
the HDL, the University of California is the second largest contributor, the University of
Wisconsin is the third largest contributor, Indiana University (“IU”) is the seventh largest
contributor, and Cornell University (“Cornell”) is the fourth largest contributor. Id.

¶1J 34-38.

Defendants “fhrther admit that as of October 5,2011, the HDL contained 9,709,348 volumes,
amounting to 435 terabytes of data.” Id.

¶ 39.

The~e is no dispute that the HDL includes works protected by copyright. Defendants
admit that each University cooperates with Google to identif~’ books from its collection to be
digitized and that those books “are not limited to works in the public domain, unpublished works
or deteriorating published works that cannot be replaced, and include in-print books that are
commercially available and books that are protected by copyright.” Id.

¶ 50.

(emphasis added).

Defendants deny sufficient knowledge as to whether 73% of the works in the HDL are protected
by copyright, id.

¶ 2, but their own records establish that more than seven million of those works

are so protected. See HathiTrust Digital Library, Hathi Trust Statistics and Visualizations,
http://www.hathitrust.org/statistics_info (last visited January 31, 2012).’ Defendants also admit

The Court may take judicial notice of the information publicly disclosed on Defendants’
website, so long as Defendants do not dispute the website’s authenticity and “it is capable of
accurate and ready determination.” Fed. R. Evid. 20 1(b); see Muller—Paisner v. TIAA, 289 F.
App’x 461, 466 n. 5 (2d Cir. 2008) (“Judicial notice may be taken of the defendants’ website for
the fact of its publication.”); Doron Precision Sys., Inc. v. FAAC, Inc., 423 F. Supp. 2d 173, 179
(S.D.N.Y. 2006) (taking judicial notice of information published on defendant’s website on Rule
l2(b)(6) motion).
4

that some libraries have estimated the cost of converting physical books into digital formats is
approximately $100 per volume, Answer ¶ 53, which places the value of Google’s digital
conversion and duplication services in the hundreds of millions of dollars.
Defendants admit that more than fifty institutions, including universities, libraries and
consortia from around the world, participate in the HathiTrust Service, Ed.

¶ 62, and that digital

copies created from books in the Universities’ libraries have been deposited into the HDL. Id.

¶

63. Defendants admit that certain users may view, search, print and download full digital copies
of certain volumes in the HDL, Ed.
stored in various locations. Id.

¶ 69, and that multiple copies of the HDL digital files are

¶ 66.

All told, Defendants admit that through their MDP, at least

five digital copies of each work are created, including digital copies (1) retained by Google, (2)
hosted on HathiTrust’s primary servers in Ann Arbor, (3) hosted on HathiTrust’s minor site in
Indianapolis, (4) stored on backup tapes in Ann Arbor, and (5) stored on a duplicate set of
backup tapes in Ann Arbor. Id.

¶~f 34-38, 50, 64 and 66.

There is no question that Defendants have created digital copies of Plaintiffs’ books.
Specifically, Defendants admit to having digitized and included in the HDL books identified on
Exhibit A to the FAC, including works by Plaintiffs Trond Andreassen, Ed.
Ed.

¶ 22; Pat Cummings,

¶ 23; Erik Grundstrom, Ed. ¶ 24; Angelo Loukakis, Ed ¶ 25; Helge Rønning, Ed. ¶ 26; Roxanna

Robinson, id

¶ 27; André Roy, Ed ¶ 28; Jack R.

Daniéle Simpson, Ed

2

¶ 31; T.J.

Stiles, Id

Salamanca, Ed.

¶ 29; James Shapiro, Ed ¶ 30;

¶ 32; and Fay Weldon,

Ed.

¶ 33•2

In addition to the claim of copyright in the works included on Schedule A to the FAC,

the Associational Plaintiffs claim copyright ownership of other works as well as the right to
bring claims for copyright infringement on behalf of their tens of thousands of members. FAC
¶~J 12-20. Whether the Associational Plaintiffs have standing to assert their members’ claims and
whether Plaintiffs have standing with respect to the OWP are the subjects of Defendants’
pending Motion for Judgment on the Pleadings.
5

Regarding the so-called Orphan Works Project (“OWP”), Defendants admit that on May
16, 2011, the UM Library (“MLibrary”) announced the launch of the OWP (Id.

¶ 73).

Defendants admit that the project called for OWP staff to follow a multi-step procedure to
determine whether certain copyright-protected works were commercially available and, if not, to
attempt to find and contact the copyright owner. Id.

¶ 74.

Defendants admit that if they were

unable to locate a copyright owner using these procedures, they would list the work on
HathiTrust’s website for 90 days, and that, if no copyright owner had by then emerged and UM
owned a physical copy of the work, the work would be made available for viewing and
downloading by UM students, faculty and other library users and visitors. Id.

¶ 74.

Defendants admit that Gladys Malvem’s “Good Troupers All: The Story of Joseph
Jefferson” was digitized and included in the OWP, which scheduled its digital release to UM
students, faculty and other library users (had the copyright owner not been identified) for
October 13, 2011. Id.

¶ 13.~

Defendants also admit that they digitized and included in the OWP

Plaintiff Jack R. Salamanca’s book “The Lost Country” and set its digital on-campus release
(had the copyright owner not been identified) for November 8,2011. Id.

¶ 29.

After a list of

Orphan Work candidates was posted on HathiTrust’s website on or about July 15, 2011 (Id.

¶

76), Defendants admit that they announced the suspension of the OWP three months later when
“scrutiny of the list of potential orphan works revealed a number of errors, some of them
serious.” Id.

¶ 78.

Defendants nonetheless admit their announced intention to proceed with the

OWP. Id.
In short, with respect to Plaintiffs’ prima fade case for copyright infringement,
Defendants admit that they created digital copies of Plaintiffs books, see Answer ¶1J 13, 22-33,
~ Defendants claim to lack knowledge or information with respect to the allegation that
Plaintiff Authors League Fund owns the copyright in this work.

6

and that there is no genuine dispute that these works are protected by copyright. Id.

¶~J 50, 70.

Defendants further admit that they planned to make supposed “orphan works,” including two of
Plaintiffs’ works, available for UM library patrons to view, print and download in fill. Id. ¶jJ 13,
29 and 74. Thus, based solely on the pleadings, Defendants infringed or have threatened to
infringe the exclusive rights of the copyright holders of those works to reproduce, distribute and
display the works. See 17 U.S.C.

§~

106(1), (3) and (5). Defendants claim, however, that they

lack sufficient information “to form a belief about whether Plaintjffs hold a copyright in any
work used by Defendants and thus deny” Plaintiffs’ allegations that they own their works.
Answer ¶ 1 (emphasis added).4
Finally, Defendants assert numerous affirmative defenses to the claims against them,
including that their activities are protected by the First Amendment (Affirmative Defense

¶ I)

and are non-infringing or otherwise defensible under Sections 107, 108, 109, 110 and 121 of the
copyright Act (id.

¶~ J, K, L, M and N).
LEGAL STANDARD

The Federal Rules of Civil Procedure permit a party to move for judgment on the
pleadings after the pleadings are closed. See Fed. R. Civ. P. 12(c). “Judgment on the pleadings
is appropriate where material facts are undisputed and where a judgment on the merits is possible
merely by considering the contents of the pleadings.” Sellers v. MC. Floor Crafters, Inc., 842
F.2d 639, 642 (2d Cir. 1988). The standard for ruling on a Rule 12(c) motion mirrors a motion

“While at this point, Plaintiffs are not asking the Court to issue a judgment on the issue
of ownership, Plaintiffs question whether Defendants seriously intend to challenge the claims
made by Plaintiffs in the FAC with respect to ownership. Given that most of the Plaintiffs in this
case are the authors of the works at issue and there are copyright registrations for the works first
published in the United States, disputing ownership seems to be more a tactical effort to burden
Plaintiffs and the Court with technical issues than a serious defense that can justify Defendants’
conduct, including digitizing millions of copyrighted works.

7

to dismiss under Rule 12(b), in that “the court must view the pleadings in the light most
favorable to, and draw all reasonable inferences in favor of, the nonmoving party.” Madonna v.
U S., 878 F.2d 62, 65 (2d Cir. 1989).
Courts in the Second Circuit have regularly addressed and granted motions for partial
judgment on the pleadings under Fed. R. Civ. P. 12(c) with respect to particular affirmative
defenses. See, e.g., Gibson v. Craigslist, Inc., No. 08 Civ. 7735 (RMB), 2009 WL 1704355
(S.D.N.Y. 2009) (holding that affirmative defenses are generally addressed on a motion under
Rule 12(c) or 56); Bradley v. Fontaine Trailer Co., Inc., No. 06 Civ. 62, 3:06-ev-62 (WWE),
2009 WL 763548 (D. Conn. Mar. 20, 2009) (granting plaintiffs motion for partial judgment on
the pleadings under Rule 12(c) as to two of defendant’s affirmative defenses); Kristensons
Petroleum, Inc. v. Sealock Tanker Co., Ltd., 304 F. Supp.2d 584, 590 n. 2 (S.D.N.Y. 2004)
(noting that plaintiffs motion to strike certain affirmative defenses was more appropriately
construed as a Rule 12(c) motion); Kidder Peabody & Co., Inc. v. Unigestion Int’l, Ltd., 903 F.
Supp. 479 (S.D.N.Y. 1995) (granting plaintiffs motion for judgment on the pleadings as to five
of defendant’s affirmative defenses).5

~ In Bradley, the court held that notwithstanding cases such as Dysart v. Remington Rand,
Inc., 31 F. Supp. 296, 297 (D. Coim. 1939), in which the court decided that a Rule 12(c) motion
was not the proper means by which to challenge only some special defenses, “the modem view
of rule 12(c) is to permit a motion for partial judgment on the pleadings.” 2009 WL 763548, at
*3 (citing VNA Plus, Inc. v. Apria Healthcare Group, Inc., 29 F. Supp. 2d 1253, 1258 (D. Kan.
1998)’); Chil-Mil Corp. v. WI’. Grant Co., 70 F.R.D. 352, 357-58 (E.D. Wis. 1976)). Thus,
while courts may discourage the granting of motions to strike affirmative defenses under Rule
12(f), courts and commentators now agree that the trend of addressing affirmative defenses as a
matter of law under Rule 12(c), where the pleadings so allow, “seems sound in terms of giving
the district judge greater flexibility and promoting efficiency and economy.” SC CHARLES A.
WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE & PROCEDURE § 1369 (3d Ed. 2004).
8

ARGUMENT
I.
DEFENDANTS’ MASS DIGITIZATION AND ORPHAN WORKS
PROGRAMS EXCEED SECTION 108 LIBRARY PRIVILEGES
Defendants’ admitted digitization and planned use of millions of copyrighted works
wildly exceed the privileges Section 108 of the Copyright Act accords libraries to make a limited
number of copies of certain works for specified purposes. To understand how thoroughly
Defendants have breached the boundaries of this carefhlly crafted provision of the Copyright
Act, especially since relevant case law is lacking, it is crucial to understand the statute’s
extensive legislative history, which spans decades, and its historical context.6 See Office of the
Register of Copyrights, Legal Issues in Mass Digitization: A Preliminary Analysis and
Discussion Document (2011),
http;//www.copyright.gov/docs/massdigitizationfUSCOMassDigitization_October2011 .pdf
(accessed Feb. 23, 2012) (“Any review of mass book digitization would need to consider, if not
compare, the activities that currently are, or should be, permissible for libraries under Section
108.”).
A.

Legislative History of Section 108
Recognizing that our libraries and archives provide a great societal service in collecting,

preserving and making literary and other works available to the public, Congress included in the
1976 Copyright Act special privileges to allow those institutions to engage in the limited
6

For a concise but comprehensive description of the legislative history and background

of Section 108, see MARY RASENBERGER & CHRIS WESTON, OVERVIEW OF THE LIBRARIES AND
ARCHIVES EXCEPTION IN THE COPYRIGHT ACT (2005), at http://www.sectionl 08.gov/papers.html
(“SECTION 108 OvERVIEW”), which was “prepared for the [Section 108] Study Group by the U.S.
Copyright Office in order to provide historical and other background information on Section 108,
as well as an explanation of its provisions,” id. See also MELVILLE B. NIMMER & DAVID
NIMMER, NIMMER ON COPYRIGHT § 8.03 (1989).
9

reproduction and distribution of copyright-protected works that “would otherwise be
infringements of copyright, fair use notwithstanding.” See 17 U.S.C.

§

108 (2005); REGISTER OF

COPYRIGHTS, REPORT OF THE REGISTER OF COPYRIGHTS, LIBRARY REPRODUCTION OF
COPYRIGHTED WORKS

(17 U.S.C. 108)92(1983) (the “1983 REPORT”).7

Congress added Section 108 to our copyright law after decades of frequently contentious
debate and negotiation among representatives of stakeholders in the literary marketplace,
including academics, authors, librarians, and publishers. The story begins with the “Gentlemen’s
Agreement,” a non-binding, voluntary agreement entered into by a publishing association and a
libraries’ committee in 1935. See SECTION 108 OVERVIEW at 3. The agreement, prompted by
the advent of early photo-duplication technology that was increasingly supplementing manual
transcription as a means for researchers to copy literary works, permitted libraries to “deliver a
single photographic reproduction or reduction of a part thereof’ upon the written request of a
library patron. Id. at 4. For over thirty years the Gentlemen’s Agreement helped define the
extent to which a library could permissibly reproduce a copyright-protected work in its
collection; it provides the basis for today’s Sections 108(d) and (e) governing library copying in
response to user requests. Id. at 3-4.

~ In Section 108(i), Congress directed the Copyright Office to consult with the parties
affected by Section 108 and to issue a report in 1983 and every five years thereafter analyzing
whether Section 108 had achieved the intended balance between the interests of copyright
holders and the needs of libraries and archives. The resulting 1983 Report was a prodigious,
seven-volume effort. The Copyright Office’s interpretations of Section 108 should be afforded
deference. See Muench Photography, Inc. v. Houghton Miff/in Harcourt Pub. Co., 712 F. Supp.
2d 84, 91 (S.D.N.Y. 2010) (Copyright Office’s interpretation should be afforded “Skidmore
deference, so long as the Copyright Office’s interpretations do not conflict with the express
statutory language of the Copyright Act”) (citing Morris v. Bus. Concepts, Inc., 283 F.3d 502,
505-06 (2d Cir. 2002) (finding the Copyright Office’s interpretation as set forth in the Circular
for Copyright Registration on Form SE “persuasive” as to whether a copyright claimant’s
registration of a collective work covers the constituent works)).
10

A far more transformative technological change, the proliferation of high-speed
photocopiers, which made possible the ready creation of inexpensive reproductions of literary
works, provided the impetus for the introduction and eventual passage of Section 108. “By the
I 960s, the technology had advanced substantially, increasing the means and ease by which
libraries could serve the public, and thus, the means and ease by which copyrights could be
infringed.” Id. at 10. Although both librarians and rightsholders initially opposed a statutory
scheme governing library photocopying, each side content with its own view of “fair use,” the
Copyright Office pushed for new legislation with the general concept that “photocopying should
not be permitted where it would compete with the publisher’s market.” REGISTER OF
COPYRIGHTS, REPORT OF THE REGISTER OF COPYRIGHTS ON THE GENERAL REVISION OF THE U.S.
COPYRIGHT LAW

26 (1961). Libraries supported a blanket right to photocopy works for

noncommercial purposes, S. REP. No. 519, 91st Cong., 1st Sess. 8-9 (1969), but Congress
rejected that approach, instead opting for a regime, embodied in Section 108, that carefully
delineates the rules under which libraries may duplicate and distribute copyrighted works
without permission.
Since 1976, Congress has modified Section 108 four times, including amendments
enacted in 1998 as part of the Digital Millennium Copyright Act (“DMCA”) and of the
Copyright Term Extension Act (“CTEA”) that are highly relevant to the issues presented by this
litigation. The DMCA amendment to Section 108 increased the number of replacement copies
libraries are permitted to make from one to three and, most pertinently, allowed any of those
three copies to be stored in digital format, subject to certain limitations. The CTEA added to
Section 108 a new subsection (h), which grants libraries expansive rights to use orphan works
during the last twenty years of their copyright term.

11

B.

Defendants Have Violated Every Category of Section 108
“[S]ection 108 of the Copyright Act narrowly circumscribes the conditions under which

libraries are permitted to make copies of copyrighted works.” Am. Geophysical Union v. Texaco,
60 F.3d 913, 931 (2d Cir. 1994). In its current form, Section 108 can be divided into four main
categories:
Section(s)
17 U.S.C. § 108(a)
17 U.S.C.

§~

108(b) & (c)

17 U.S.C.

§~

108(d) & (e)

17 U.S.C.

§

108(h)

Category
General conditions for libraries to qualify for
Section 108 protections
Reproduction and distribution for purposes of
preservation and replacement
Reproduction and distribution for purposes of
fulfilling patron requests
Reproduction, distribution, display and
performance of orphan works during the last
twenty years of their copyright term

As shown below, by systematically copying millions of works in their collections and promising
to distribute copyrighted “orphan works” to the public, Defendants are vastly exceeding the
special privileges granted to them under Section 108 in direct derogation of the exclusive rights
of copyright holders.
1.

Providing Millions of Digital Copies of Works to Google Constitutes an
“Indirect Commercial Advantage” Under Section 108(a)

Section 108(a) sets forth the general conditions for libraries to qualify for Section 108
rights, including that a library may make only one copy of a work (unless Section 108(b) or (c)
specifies otherwise) and that copies cannot be made “with any purpose of direct or indirect
commercial advantage.”
8

§~

108(a), 108(a)(1).8 By allowing Google, one of the world’s most

The statute does not elaborate on what constitutes “indirect commercial advantage” and

there is no case law directly on point. However, when compared with other sections of the
Copyright Act, it is clear that Congress intended the phrase to be read broadly. Cf, 17 U.S.C. §
512(c)Ql’)(B) (protecting online service providers from liability for their users’ copyright
infringement provided, inter alia, that the provider “does not receive a financial benefit directly
attributable to the infringing activity, in a case in which the service provider has the right and
ability to control such activity”).
12

successful commercial enterprises, to make and keep digital copies of millions of Defendants’
library books in exchange for Google’s digital book conversion services, valued in the hundreds
of millions of dollars, Defendants run afoul of Section l08(a)(1)’s prohibition against copying
library books for direct or indirect commercial advantage.9 Although Defendants will surely
argue that they are engaging in the mass book digitization program purely for academic, non
commercial purposes, their partner Google’s interests are palpably commercial, and the
Universities obtain a clear financial advantage through the arrangement.
2.

Defendants are Exceeding their Privileges Under Section 108(c) to Copy
Published Works for the Purpose of Replacement

Section 108(c) delineates the boundaries of a library’s right to make unauthorized
reproductions of published books to replace works in its collection. It permits a library to make
up to three copies; however, the copies of published works may be made only for the purposes of
replacing a work in the library’s collection that is (or was) damaged, deteriorating, lost or stolen,
and only if the library is unable to obtain a new copy at a fair price. 17 U.S.C.

§

108(c).

Based on the pleadings alone, there is no question that Defendants have exceeded the
express limitations set forth in Section 108(c). First, Defendants admit to having digitized and
uploaded to the HDL each of Plaintiffs’ works set forth on Exhibit A of the FAC, see Answer ¶jJ
22-33, and they do not dispute that each such work is published. See FAC, Exhibit A
(identi~ing publisher for each work); Answer ¶ 50 (“Defendants admit that the books selected
for digitization.

.

.

are not limited to

.

.

.

unpublished works,” but “include in-print books that are

commercially available[.]”).1°
~ Google’s liability for its digitization, distribution and display uses of the works through
its Google Library Project is the subject of a separate lawsuit. See Authors Guild v. Google, No.
05 Civ. 8136 (D.C.) (S.D.N.Y.).
10

For unpublished works that Defendants and Google may have digitized, the legal

analysis is nearly identical. Section 108(b) sets the rules for library duplication of unpublished
13

Second, Defendants admit that their digitization process results in the creation of at least
five digital copies ofeach work,” including (1) a copy kept by Google for its own commercial
purposes, (2) a copy hosted at the HDL’s primary server farm in Ann Arbor, Michigan, (3) a
copy hosted at the HDL’s secondary server farm in Indianapolis, Indiana, (4) a tape backup copy
stored at a facility on UM’s campus, and (5) a second tape backup copy stored at a separate
facility on UM’s campus. See Answer ¶jJ 34-38, 50, 64 and 66. Accordingly, Defendants have
admittedly made more copies than they are entitled to make under Section 108(c).
Third, even if the MDP resulted in the creation of only three copies of each copyrighted
work, Defendants admit that the books selected for digitization are not limited to “deteriorating
published works that cannot be replaced,” but include “in-print books that are commercially
available and books that are protected by copyright.” Answer ¶ 50. Thus, Defendants admit to
having made copies of books that are not necessarily “damaged, deteriorating, lost or stolen,” nor
have they limited the copying to books for which they have determined that “an unused
replacement cannot be obtained at a fair price.” 17 U.S.C.
3.

§

108(c); 17 U.S.C.

§

108(c)(l).

Defendants are Distributing Digital Copies in Violation of Section 108(c)

In addition to creating digital copies of published works under conditions and in
quantities that far exceed libraries’ reproduction rights under Section 108(c), Defendants admit
to distributing those digital copies in direct violation of that section. The DMCA amended

works, permitting libraries to make up to three preservation copies. Unlike Section 108(c),
108(b) permits an archive or library to not only reproduce a copyright-protected work, but to
distribute it to another library or archive.
~ As Defendants admit that each digital copy includes “a set of image and OCR files,” it
may be more accurate to state that Defendants have created at least ten copies of each work,
comprising five sets of image files (i.e., photographic reproductions of the printed pages) and
five sets of text files containing the text of the book obtained through “OCR,” or optical
character recognition, technology. Answer ¶ 52.

14

Section 108 by removing the prohibition against making copies in “machine-readable” format,
permitting libraries to make replacement digital copies of published books only if such digital
copies are not “made available to the public in that format outside the premises of the library[.]”

§

17 U.S.C.

108(c)(2))2 This prohibition against making a digital replacement copy available

outside of the premises of the library is slightly redundant, since Section 108(c), unlike Section
108(b), permits libraries to only reproduce, not distribute, replacement copies.

§§

1 08(b)(2),

108(c)(2).
In passing the DMCA, Congress explained the reasons for so clearly prohibiting libraries
from distributing digital copies:
In recognition of the risk that uncontrolled public access to the copies or
phonorecords in digitalformats could substantially harm the interests of the
copyright owner byfacilitating immediate, flawless and widespread reproduction
and distribution ofadditional copies orphonorecords of the work, the amendment
provides that any copy of a work that the library or archive makes in a digital
format must not be otherwise distributed in that format and must not be made
available in that format to the public outside the premises of the library or
archives. In this way, the amendment permits the utilization of digital
technologies solely for the purposes of this subsection.

In the view of the Committee, this proviso is necessary to ensure that the
amendment strikes the appropriate balance, permitting the use ofdigital
technology by libraries and archives while guarding against the potential harm to
the copyright owner’s marketfrom patrons obtaining unlimited access to digital
copiesfrom any location.
12

The digital copy restrictions found in Section 108(b) and 108(c) differ slightly, but

legislative history and legal scholars, including a professor at Defendant Cornell, interpret
Section 108 as prohibiting libraries from subsequently distributing either published or
unpublished works beyond the physical premises of the library. See 105th Cong., 2d Sess. at 61
(“the amendment provides that any [digital copy] of a work. must not be otherwise distributed
in that format”); PETER B. HIRTLE, EMILY HUDSON & ANDREW T. KENYON, COPYRIGHT &
.

.

CULTURAL INSTITUTIONS: GUIDELINES FOR DIGITIZATION FOR U.S. LIBRARIES, ARCHIVES, AND
MUSEUMS 115 (2009), available at http://ssrn.com/abstractl495365 (“there can be no
subsequent distribution of the digital format”).

15

S. Rep. No. 190, 105th Cong., 2d Sess. 61-62 (1998) (emphasis added).
Defendants have trampled over the express language and spirit of Section 108’s digital
copy restrictions. Section 108 contemplates that, to the extent a library makes any of its three
permissible copies in digital format, those digital copies will not be distributed, and will stay in
the physical library. See HIRTLE ET AL. at 115 (“There is no definition of what constitutes
‘premises,’ but most analysts assume that this restricts use to a specific library building.”).
Defendants, in contrast, admit that once a digital copy of a University’s library book is created at
a facility operated by Google, a digital copy is (a) retained by Google, (b) reproduced and
distributed to HathiTrust’s main ingestion site at MLibrary in Ann Arbor, which is then (c)
reproduced and distributed by Internet transmission or delivery of physical storage media to
HathiTrust’s mirror site at lU’s library in Indianapolis and (d) reproduced on a backup tape and
distributed to one UM location, which is then (e) reproduced on a backup tape and distributed to
a second UM location (Answer ¶jJ 34-3 8, 50, 64 and 66).
As Congress recognized, digitizing works and disseminating them beyond the bounds of
the physical premises of the library places them at risk of widespread digital piracy should they
fall into the wrong hands.’3 Section 108’s restrictions on digital copying exist to ensure that, in
the digital age, library copying “should not be permitted where it would compete with the
publisher’s market.” REGISTER OF COPYRIGHTS, REPORT OF THE REGISTER OF COPYRIGHTS ON

13

Congress’s concerns in 1998 that digitized library works would be subject to a far

greater risk of piracy proved prescient last year, when Aaron Schwartz, a “civil liberties activist
who crusades for open access to data,” was indicted and arrested for allegedly hacking into
M.I.T.’s computer network and downloading 4.8 million files from an electronic database of
scholarly works protected behind a “pay wall.” John Schwartz, Open-Access Advocate Is
Arrested For Huge Download, N.Y. TIMES, July 19, 2011, at
http://www.nytimes.com/201 l/07/20/us/20compute.html.
16

THE GENERAL REVISION OF THE U.S. COPYRIGHT LAW

26 (1961). By putting Plaintiffs’ Works at

digital risk, Defendants are plainly contravening Congressional limits.
4.

The Works Are Not Being Copied to Fulfill User Requests

The MDP is also not sanctioned by Sections 108(d) or (e), which allow libraries to
respond to requests from users by providing copies of either all or part of copyrighted works that
are held in their collections. The permissions set forth in Sections 108(d) and (e) are limited to
situations in which “the user makes his or her request” for a particular work found in the
library’s collection. 17 U.S.C.

§

108(d) & 108(e). Here, the Universities admit that the digitized

works were selected and collected by them and/or Google pursuant to a Cooperative Agreement
calling for millions of books to be digitized en masse. Defendants do not and could not contend
that the works were requested by any particular library “user,” as required by the statute.
Even if the copies had been made in response to user requests, Defendants’ conduct
exceeds the scope of other limitations in Sections 108(d) and (e). For example, where the statute
requires that a copy made in response to a user request to become the property of the user,
Defendants admit that once a digital copy is created, it is reproduced, disseminated to and
retained by multiple parties, including Google and HathiTrust. See 17 U.S.C.

§

l08(d)(l) &

(e)(1). Also, where, a copy of an “entire work” is requested by a user, a library is permitted to
make a reproduction only after the library “has first determined, on the basis of a reasonable
investigation, that a copy

[1

of the copyrighted work cannot be obtained at a fair price[.]” Here,

Defendants admit that the millions of works they digitized in full include “in-print books that are
commercially available and books that are protected by copyright.” Answer ¶ 50.

17

5.

Defendants are Engaging in the “Systematic Reproduction” of Works in
Violation of Section 108(g)

By digitizing and reproducing millions of library books as part of a mass digitization
program involving the coordination and cooperation of numerous parties, Defendants are also
circumventing a global “backstop” contained in Section 108(g) that restricts libraries to making
only “isolated and unrelated” copies “on separate occasions,” and expressly forbids them from
“engaging in the related or concerted reproduction or distribution of multiple copies

[]

of the

same material” or “the systematic reproduction or distribution of single or multiple copies[.]” 17

U.S.C. § l08(g)(1) & l08(g)(2))4 Although the statute does not define what constitutes
“systematic reproduction,” Defendants cannot credibly argue that the MDP does not fall within
this category. Moreover, the Copyright Office has suggested that “the creation of the system is
enough to render all copying done via that system infringing, unless authorized by the copyright
owner

[T]he greater the commonality of a plan, the more regular the interaction, the more

organized the network or procedure then the more likely it is that the copying done is
‘systematic.” 1983 REPORT at 139.
6.

Defendants’ Orphan Works Program Violates Section 108(h)

Referred to by Congress as the “Preservation of Orphan Works” provision,’’ Section
108(h) permits libraries to reproduce, distribute and perform published copyrighted works that
are in the last 20 years of their copyright term and are not commercially exploited or otherwise
reasonably available during the extended term. Congress added Section 108(h) to the Copyright
Act in 1998 in response to libraries’ concerns that the twenty-year extension granted to

“

It is noteworthy that Congress included the Section 108(g) backstop over “howls of

outrage” by the library lobby. See SECTION 108 OVERVIEW at 20.
‘~

Family Entertainment and Copyright Act of 2005, Pub. L. 109-9, 119 Stat. 218,

(2005).
18

§ 401

copyrights through passage of the Copyright Term Extension Act would deprive the public of the
use of “orphan works”

--

older, out-of-print works that otherwise would have been placed in the

public domain. See, e.g., SECTION 108 OVERVIEW at 30.
Defendants’ OWP completely ignores Section 108(h) by threatening to make purported
orphan works, including Plaintiffs’ works, available to University patrons before the
commencement of the final twenty year period of each work’s respective copyright tenm
Specifically, under existing copyright law, works published between 1923 and 1963 whose
copyrights were renewed are entitled to copyright protection for the 95 year period following
their publication date. See Peter B. Hirtle, Copyright Term and the Public Domain in the United
States (2012) (available at http://www.copyright.cornell.edulresources/publicdomain.cfm).
Defendants admit that Good Troupers All by Gladys Malvern, a work whose copyright is owned
and controlled by Plaintiff ALF, and The Lost Country by Plaintiff J.R. Salamanca, were
“digitized and included in the HDL and [were] preliminarily identified as

[J book[s] that UM

planned to make available on the limited basis contemplated as part of the

OWP if the copyright

holder[s] [were] not identified[.]” Answer ¶11 13 and 29. These two works, respectively, were
first published in 1945 and 1958 and their copyright registrations were renewed in 1972 (Reg.
No. RE535400) and 1986 (Reg. No. RE0000313041))6 See FAC, Ex. A. Thus, the copyright
term for Good Troupers All extends to 2040 and The Lost Country’s copyright term extends to
2053. Provided that the other criteria of the provision are met, Section 108(h) would permit

16

Under Fed R. Evid. 201(b), the Court may take judicial notice of the copyright

registrations for these works, see Island Software & Computer Serv., Inc. v. Microsoft Corp., 413
F.3d 257, 261 (2d Cir. 2005), as well as their dates of publication, see O’Keefe v. Ogilvy &
Mather Worldwide, Inc., 06 Civ. 6278 (SHS), 2006 WL 3771013, at *2 (S.D.N.Y. Dec. 18,
2006).
19

libraries and archives to begin making uses of these two works in the years 2020 and 2033,
respectively, not in 2011 as Defendants intended.
C.

Defendants Should Not Be Permitted to Preempt Congress
In deciding to proceed with the MDP and OWP, Defendants have taken copyright law

into their own hands, ignoring recent efforts by the Copyright Office and Congress to address
both the mass digitization and orphan works issues. See, e.g., Golan v. Holder, 132 S. Ct. 873,
894 (2012) (identifying mass digitization and orphan works issues as matters appropriately
addressed “through overarching legislation of the sort proposed in Congress,” not ‘judicial.
resolution”); Register of Copyrights, Priorities and Special Projects ofthe US. Copyright Office
5,7 (2011), (available at http://www.copyright.gov/docs/priorities.pdf) (describing recent studies
on mass digitization and orphan works issues); FAC and Answer ¶ 46 (admitting that the
“Section 108 Study Group” appointed by the Library of Congress recommended “that Section
108 be amended to expand a library’s right to create and store digital copies of published works
in their collections for preservation purposes”). Indeed, one of the reasons Judge Chin rejected
the Google Books Settlement Agreement was his concern that “the establishment of a
mechanism exploiting unclaimed books is a matter more suited for Congress than this Court.”
The Court reasoned:
The questions of who should be entrusted with guardianship over orphan books,
under what terms, and with what safeguards are matters more appropriately
decided by Congress than through an agreement among private, self-interested
parties. Indeed, the Supreme Court has held that “it is generally for Congress, not
the courts, to decide how best to pursue the Copyright Clause’s objectives.”
Authors Guild v. Google, Inc., 770 F. Supp. 2d 666, 677 (S.D.N.Y. 2011). The Court noted
“longstanding efforts” by Congress to pass legislation to address the orphan works problem,
including “Orphan Books” bills that were proposed in 2006 and 2008 but were never enacted.

20

Id. at 678; see Golan, 132 S. Ct. at 893-894 (favorably citing Judge Chin’s conclusion that the
orphan works issue requires legislative resolution).
II.
DEFENDANTS CANNOT RELY ON FAIR USE
(OR OTHER LIMITATIONS ON TilE RIGHTS
OF COYPRIGHT HOLDERS)
In light of the clear impermissibility of the MDP and OWP under Section 108,
Defendants will undoubtedly seek to defend themselves by arguing that their activities constitute
fair use under Section 107 and Section 108(0(4), which provides that “[n]othing in this section
[108]

.

.

.

in any way affects the right of fair use as provided by section 107.” However, rules of

statutory construction, case law and legislative history definitively establish that Section 107 is
unavailable to Defendants under these circumstances.
“[I]t is a commonplace of statutory construction that the specific governs the general.”
Morales v. Trans World Airlines, Inc., 504 U.S. 374, 394 (1992). As shown above, Section 108
provides highly-specific rules governing the extent to which libraries are permitted to make
digital copies of works in their collections for purposes of preservation, replacement or fulfilling
patron requests, as well as the circumstances under which they may make use of orphan works.
17 U.S.C.

§

108. Congress included these rules to carefully delineate the boundaries of fair use

in the context of library copying. See Texaco, 60 F.3d at 917 (“Congress has thus far provided
scant guidance for resolving fair use issues involving photocopying, legislating spec~Ically only
as to library copying[.]”). Indeed, Congress passed Section 108 notwithstanding the initial
preference of both libraries and copyright holders to omit a specific statutory scheme governing
library copying and to instead rely on general principles of fair use. See infra at 11.
The savings clause caimot be permitted to supplant the specific limitations on library
copying contained in Section 108. Morales v. Trans WorldAirlines, Inc., 504 U.S. 374, 385
21

(1992) (“A general ‘remedies’ saving clause cannot be allowed to supersede the specific
substantive pre-emption provision...”). Further, the “[g]eneral language of a statutory provision,
although broad enough to include it, will not be held to apply to a matter specifically dealt with
in another part of the same enactment.” Bloate v.

US.,

130 S.Ct. 1345, 1354 (2010) (quoting D.

Ginsberg & Sons, Inc. v. Popkin, 285 U.S. 204, 208 (1932)).
This Court will likely be the first to interpret the force of Section 108(0(4). However, in
Universal City Studios, Inc. v. Corley, 273 F.3d 429 (2d Cir. 2001), the Second Circuit analyzed
a parallel fair use savings clause contained in the DMCA. In that case, several movie studios
sued the publishers of a computer program designed to descramble encrypted DVDs under a
section of the DMCA prohibiting the trafficking of technology used to circumvent technological
measures employed by copyright holders to protect their intellectual property. See id. at 441
The defendants argued that a fair use savings clause similar to the one found in Section 108
could “be read to allow the circumvention of encryption technology protecting copyrighted
material when the material will be put to ‘fair uses’ exempt from copyright liability.” Id. at 443.
The court rejected their expansive reading of the savings clause as “outside the range of plausible
readings of the provision” and “clearly refuted by the statute’s legislative history.” Id.
Similarly, reading Section 108(0(4) to allow Defendants to reproduce and distribute
copyrighted works in a manner that is specifically promulgated by and beyond the express limits
of Section 108 is “outside the plausible readings of the provision.” Id. In its 1983

REPORT

Section 108, the Copyright Office rejected an interpretation of Section 108(0(4) that would
permit libraries to engage in copying on a “broad and recurring basis”:
The Copyright Office does not believe that Congress intended that there should
never be fair use photocopying “beyond” § 108. Uncertain infrequent occasions,
such copying may be permitted. Butfair use privileges are not available on a
broad and recurring basis once the copying permitted by § 108 has occurred.
Section 108 was enacted to make lawful some types of copying which would
22

on

otherwise be infringements of copyright, fair use notwithstanding. This means
that much of “108” photocopying would be infringing but for the existence of that
section, thus leaving section 107 often clearly unavailable as a basis for
photocopying not authorized by section 108.
1983 REPORT at 96 (underline in original; italics added for emphasis).
Put differently, to read the savings clause as “permitting ‘post-lOS’ reliance on fair use as
if no

§

108 copying had occurred is to come dangerously close to reading

statute.” Id. at 98; see Potter v.

Us., 155 U.S. 438, 446 (1894)

§

108 out of the

(the presence of statutory

language “cannot be regarded as mere surplusage; it means something”). Given that Congress
deemed Section 108 “necessary to exempt much library photocopying from copyright liability,
and since Congress did not likely intend to construct complex mechanisms in most of the section
only to render them moot via subsection (0(4), that result is implausible.” 1983 REPORT at 98.
Defendants’ other affirmative defenses under the Copyright Act fail for the same reason.
For example, the possibility that there could be a situation where a visually-impaired student
might have a basis for seeking access to a work for purposes permitted by Section 121 of the
Copyright Act, 17 U.S.C.

§

121, or that there could be other instances where a particular use of a

specific work is not an infringement, cannot justify the wholesale copying of millions of works
in derogation of Section 108. Accordingly, Plaintiffs should be granted judgment on the
pleadings that Defendants’ conduct exceeds the permitted scope of Section 108, and is not
justified by the First Amendment17 or any of the statutory provisions included in its various
affirmative defenses.

‘‘

It is well established that the idea/expression dichotomy and the fair use defense are

sufficient to take into account First Amendment concerns. Nihon Keizai Shimbun, Inc. v.
Comline Business Data, Inc., 166 F.3d 65, 74 (2d Cir. 1999). Accordingly, Defendants cannot
assert a separate “First Amendment” defense.

23

CONCLUSION
Defendants are wildly exceeding the special privileges Congress granted to libraries
under Section 108 by systematically digitizing, reproducing, distributing and putting at risk
millions of works through their mass book digitization program. Defendants’ so-called orphan
works program is similarly inimical to the Copyright Act, as it violates Section 108(h)’s explicit
limitation of libraries’ use of orphan works to the twenty year period preceding the end of their
copyright term. Neither fair use under Section 107, nor any other statutory exception under the
Copyright Act, can justif~’ Defendants’ systematic and concerted digitization, reproduction,
distribution and other unauthorized uses of millions of copyright-protected library books.
Accordingly, Plaintiffs urge the Court to grant their motion for partial judgment on the
pleadings.
Dated: New York, New York
February 28, 2012
FRANKFURT KURNIT KLEIN & SELZ, P.C.

By:___________
Edward H. Rosenthal, Esq.
Jeremy S. Goldman, Esq.
488 Madison Avenue
New York, New York 10022
Tel.: [phone]
Fax: [phone]
erosenthal(~fkks.com
j goldman@~flclcs.com
Attorneys for Plaintiffs

24