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

Filing 82

DECLARATION of Paul Aiken in Support re: 81 MOTION for Summary Judgment.. Document filed by Authors' Licensing and Collecting Society, Pat Cummings, 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, Fay Weldon, the Writers' Union of Canada. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D (part 1), # 5 Exhibit D (part 2), # 6 Exhibit D (part 3))(Rosenthal, Edward)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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THE AUTHORS GUILD, INC., et al.,
:
:
Plaintiffs,
:
:
- against :
:
HATHITRUST, et al.,
:
:
Defendants.
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:
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Index No. 11 Civ. 6351 (HB)

DECLARATION OF PAUL AIKEN
I, Paul Aiken, hereby declare as follows:
1.

I am the Executive Director of the Authors Guild, Inc. (the “Guild”), one of the

plaintiffs in the above-captioned action. I have been employed by the Guild since April 1993,
first as a staff attorney, then as Assistant Director, and finally in my current position since 1996.
I am 1985 graduate of Cornell Law School and an attorney licensed to practice in New York.
2.

I submit this declaration in support of Plaintiffs’ motion for summary judgment. I

have personal knowledge of the facts set forth in this Declaration and could testify competently
at a hearing or trial if called upon to do so.
3.

The Guild participated in bringing this lawsuit to stop the Defendant universities

and their shared digital repository HathiTrust from systematically usurping authors’ rights to
their literary properties by, among other things: (a) authorizing and participating in the unlawful
conversion of millions of copyright-protected books into machine-readable digital formats; (b)
authorizing and participating in the reproduction and distribution of those millions of unlawfully
prepared digital books; (c) taking upon themselves the right to make decisions as to appropriate
investments in technology, staff, and enforcement measures to secure those millions of

unlawfully prepared digital books; (d) establishing rules by which Defendants would purport to
determine whether the authors of those millions of unlawfully prepared digital books should be
further deprived of their literary property rights; (e) purporting to use such rules to decide
whether authors were not findable without undue effort and therefore subject to Defendants’
“Orphan Works Program”; and (f) authorizing Google, Inc. (“Google”) to convert into machinereadable digital formats, then reproduce, store, and profit from, millions of copyright-protected
books, all while Defendants avoided financial responsibility for their unlawful actions through
their sovereign immunity status.
4.

The Guild participated in bringing this lawsuit for another vital reason: to reduce

or eliminate the risk of catastrophic economic harm -- a “Napster event” (in which digital
privacy and distribution of copyrighted works became rampant) -- posed by Defendants’ storage
in online databases, offline databases, and backup tapes tens of millions of unauthorized
reproductions of copyright-protected books, by seeking an order requiring Defendants to take the
unlawfully created digital books offline until Congress takes appropriate action regarding the
digitized literary works.
The Authors Guild
5.

The Guild and its predecessor organization, the Authors League of America (the

“League”), have been leading advocates for authors’ copyright and contractual interests since the
League’s founding in 1912. With more than 8,500 published authors as members, the Guild is
the largest advocacy group for book authors in the United States. Our members represent the
broad sweep of American authorship, including literary and genre fiction, nonfiction, trade,
academic, and children’s book authors, textbook authors, freelance journalists, and poets. Guild
members have won countless honors and all major literary awards. (Every American winner of

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the Nobel Prize for Literature was a Guild members.) Our members include published authors in
38 countries.
6.

The Guild had its beginnings as the Authors League of America, which was

founded in 1912 by a group of book authors (including Theodore Roosevelt, who served as the
League’s founding vice-president), short story writers, freelance journalists, and dramatists. In
the 1920s, the League broke into two groups: the Guild and the Dramatists Guild of America.
7.

Virtually since the day it was founded, the Guild has been a leading advocate for

published authors in the United States, pursuing its mission of promoting fair book and freelance
journalism contracts, effective copyright protection and freedom of expression. As part of that
mission, the Guild has participated in litigation, generally as amicus curaie, but occasionally as a
direct party to legal actions. The activities of the Guild include reviewing members’ publishing
and agency contracts; intervening in disputes involving authors’ rights; providing advice to
members regarding developments in the law and publishing industry that affect their rights; and
advocating regarding legislation in matters affecting copyright, freedom of expression, taxation
and other issues of concern to professional writers.
The Challenges Facing Print Media
8.

Never in the Guild’s long history has its straightforward mission – to maintain

writing as a viable livelihood – been so daunting. The digital environment has been brutal for
print media. The newspaper industry has been devastated, with many publication shuttered and
many more on the brink. The magazine industry has not fared much better, as venerable
publications shrink in size and ambition. The loss to our society from the collapse of these
industries is immeasurable.

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9.

Although the book industry has fared somewhat better than our colleagues in print

media, our industry is challenged as well. Finding a sustainable business model for creative
work in digital form seems nearly impossible: if piracy doesn’t get you, the aggregators will. In
this complex, shifting environment, in which technology has the ability to both foster and
decimate markets within months, it is crucial that authors have a place at the table when
institutions seek to rewrite the rules governing the uncompensated uses of their literary
properties, and whether and under what conditions those properties will be placed at digital risk.
The Google Books Case
10.

Because of its potential effects on our members’ and the Guild’s own copyright

interests, the Guild followed with great interest and concern Google’s 2004 announcement of its
Google Library Project. The Guild was particularly concerned by Google’s December 14, 2004,
announcement that it was working with major academic institutions in the United States to
digitize millions of books, including books protected by copyright.
11.

The Guild soon learned that the University of Michigan, a defendant in this case,

was allowing Google to digitize vast numbers of books from its libraries. The Guild obtained a
copy of the Cooperative Agreement between Google and the University of Michigan, confirming
the “win-win” arrangement the two entities had reached: Michigan would allow Google to
convert books from its libraries’ vast collections into digital form and retain a digital copy of
each book it converted, so long as Google provided the University of Michigan with an
unauthorized digital copy of each book Google converted to digital form. The Cooperative
Agreement made no mention of making efforts to seek permission from authors or their licensees
to conduct these digital conversion and reproduction activities.

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12.

On September 20, 2005, representative plaintiffs and the Guild filed a class action

lawsuit against Google for copyright infringement arising from its program to convert into digital
format millions of copyright-protected books as part of the Google Library Project, and then
display “snippets” from those books at Google’s web site. See The Authors Guild, Inc. et al. v.
Google Inc., No. 05 Civ. 8136 (S.D.N.Y.) (the “Google Books case”). At that time, the Guild
elected to take legal action against only Google, which was providing the technology, money,
and labor to convert the books into machine-readable formats, and not against any of Google’s
other library partners.
13.

In the spring of 2006, the Guild and Google had their first settlement meeting. By

that fall, settlement negotiations formally began between and among Google, book publishers,
and the Guild. Approximately two years later, on October 28, 2008, the parties filed a motion
for preliminary approval of a settlement agreement reached with Google, which motion Judge
John E. Sprizzo granted on November 17, 2008. On November 13, 2009, the parties executed an
Amended Settlement Agreement (the “ASA”) and filed a motion for final approval. A copy of
the ASA is attached as Exhibit A hereto. The ASA was preliminarily approved on November 19,
2009, by Judge Chin, who assumed responsibility for the Google Books case after Judge
Sprizzo’s passing.
The Amended Settlement Agreement
14.

Several features of the ASA are critically important to the instant litigation.

15.

First, the ASA provided a mechanism to compensate the millions of authors

whose copyrighted works had been digitized by Google without authorization. Under the ASA,
the class of affected authors and rightsholders would have granted a license to Google to digitize
works and sometimes sell, display, and make certain non-display uses of the works it had

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scanned. The ASA expressly authorized Google and its partner libraries (which would have
included the University of Michigan and other Defendants in this litigation) to index the contents
of the digitized works for search purposes and to allow researchers to conduct “non-consumptive
research” using the digitized corpus. The ASA would have covered both in-print and out-ofprint works, including so-called “orphan works.” In exchange for these and other rights that
would have been granted as part of the ASA, Google agreed to pay $45 million into a settlement
fund to make cash payments to rightsholders – at least $60 per principal work. The ASA would
also have provided a revenue share in which rightsholders would have received most of the
subscription, sales, reproduction, and advertising revenue generated by the digitized books.
16.

Second, the ASA included a comprehensive security protocol that Google and any

partner institutions would be required to follow if they were to store digital copies of the
copyright-protected works obtained through the Google Library Project. I was directly involved
in some of the negotiations that led to the security protocols ultimately agreed to and
incorporated into the ASA. Those protocols included contractually binding security
requirements, subject to audit procedures and contractually enforceable financial penalties, to
help protect against the risk of catastrophic loss of the digital book databases.
17.

On March 22, 2011, the court declined to approve the ASA. An aspect of the

ASA that particularly concerned Judge Chin was the ASA’s treatment of “orphan works” –
books that are still in-copyright but whose author or rightsholder cannot be located. Judge Chin
ruled that “the establishment of a mechanism for exploiting unclaimed books is a matter more
suited for Congress than this Court. . . . The questions of who should be entrusted with
guardianship over orphan books, under what terms, and with what safeguards are matters more

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appropriately decided by Congress than through an agreement among private, self-interested
parties.” The Authors Guild, Inc. v. Google Inc., 770 F. Supp. 2d 666 (S.D.N.Y. 2011).
Orphan Works Project
18.

Fewer than two months after Judge Chin rejected the ASA, on or about May 16,

2011, I heard the stunning news that the University of Michigan was launching its own “Orphan
Works Project” – an initiative that purported to seek to identify so-called orphans among the
copyright-protected works that had been digitized through the Google Library Project and were
being stored in the HathiTrust Digital Library. It was my understanding that a work identified as
an “orphan” by the project would be made available for the university’s students, professors, and
other users to view online, print, and download for free.
19.

Incredibly, the procedures for determining whether or not the author of a

copyright-protected book could be found, were unilaterally established by the University of
Michigan. Moreover, the University of Michigan took unto itself the task of implementing the
rules it had devised. The result of this was that if the University of Michigan determined a book
was an orphan, as the University of Michigan itself defined that term, then the University of
Michigan would be the beneficiary, reproducing and distributing the copyright-protected work
without limit to students and faculty at the University of Michigan’s campuses. It seemed a
recipe for disaster, likely to deprive countless authors of their literary property rights.
20.

In July and August 2011, other universities, including Defendants the University

of California, the University of Wisconsin and Cornell University, announced their participation
in the Orphan Works Project and their intent to make works in their collections identified as
“orphans” through the rules devised, implemented, and overseen by the University of Michigan,
available to their respective students, faculty and library visitors.

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The Instant Lawsuit
21.

In light of Judge Chin’s rejection of the ASA, the breakdown in settlement talks

with Google, and the announcement of the Orphan Works Project, the Guild filed the instant
action to enjoin Defendants from further infringing and jeopardizing authors’ rights by scanning,
storing, and using copyright-protected books without permission or accountability, as well as to
put an end to the Orphan Works Project.
22.

We filed the initial complaint on September 12, 2011. Since the books scanned as

part of the Google Library Project and the purported orphan works that Defendants were
threatening to distribute affected the rights of authors worldwide, authors’ rights associations
based in Australia (Australian Society of Authors) and Quebec (UNEQ), as well as eight
individual authors from around the world joined the Guild as plaintiffs in the lawsuit.
23.

Due in part to publicity surrounding the filing of the lawsuit, the Guild was able to

identify several authors and copyright holders whose works were scheduled to become available
for “full view” as part of the Orphan Works Project.
24.

I was personally able to locate one such author, J.R. Salamanca, simply by

searching “book author salamanca” at Google’s search engine. Within minutes I was in contact
with the wife of John White, Mr. Salamanca’s literary agent. She confirmed that her husband
represented Mr. Salamanca, who was alive and living in Maryland. In a conversation later that
day, Mr. White told me that Mr. Salamanca’s works were certainly not “orphaned,” and that Mr.
White had, in fact, signed a contract earlier that month to publish an e-book edition of one of Mr.
Salamanca’s novels. I understand that Mr. White is submitting a declaration which describes this
in more detail.

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25.

On October 5, 2011, the Guild filed a First Amended Complaint, adding as

plaintiffs Mr. Salamanca and the Authors League Fund, as well as authors’ rights groups in the
United Kingdom (ALCS), Sweden (SFF), Norway (NFF), and Canada (TWUC), and three
additional individual authors.
The Works at Issue
26.

In addition to filing this lawsuit to protect the rights of its members whose

copyrighted works have been digitized and are being used by Defendants without authorization
(the “Member Works”), the Guild itself owns the copyrights in and to several works that were
scanned and incorporated into HathiTrust without the AG’s knowledge or consent. Attached as
Exhibit B is a schedule of works whose copyrights are owned by the Guild and have been
infringed by Defendants ( the “AG Works”). Attached as Exhibit C is documentation evidencing
the transfer of the relevant copyrights from each respective author to the Guild. A copyright
registration certificate for each AG Work is attached hereto as Exhibit D.
Harm Resulting From Defendants’ Use of the Works
27.

I have reviewed the declarations of several individual authors who are plaintiffs in

this litigation, including the declarations of Pat Cummings, T.J. Stiles, James Shapiro, and
Roxana Robinson, all of whom are members of the Guild. I believe that the works written by
those authors provide a fair sampling of the types of works authored by members of the Guild.
28.

I agree with and incorporate by reference the description in those declarations of

the various harms and potential harms that result from Defendants’ unauthorized digitization and
use of copyrighted works. Those descriptions need not be repeated here in full, but can be
summarized as follows.

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29.

First, each digital copy of a Member Work or AG Work that is created by

Defendants without purchase or license represents a lost sale to the corresponding author or
rightsholder. Defendants could have purchased a copy, but instead had it scanned without
compensating the rightsholder.
30.

Second, Defendants’ storage of the Member Works and AG Works in an online

digital repository exposes that property to security risks for which the rightsholders receive no
commensurate remuneration. Unauthorized access to copyrighted books leading to widespread
piracy would gravely affect the market for those works. Professor Benjamin Edelman’s expert
report contains additional detail concerning the security risks posed by Defendants’ unauthorized
activities.
31.

Third, Defendants’ various uses of the Member Works and AG Works undermine

licensing opportunities for rightsholders. For example, rightsholders routinely grant online
distributors a license to index their books and make them searchable as part of a commercial
arrangement intended to promote book sales. Defendants do the same thing, but without a
license and not as part of an effort to sell the books and provide revenue to the author.
Defendants also permit the books to be used for non-consumptive research, an emerging field
that represents another potential licensing stream for authors.
32.

Fourth, Defendants’ mass digitization and orphan works programs undercut

opportunities for authors to generate royalty streams by entering into collective licensing
agreements – a topic addressed in more detail by in Professor Daniel Gervais’s expert report.
For example, I am aware of existing or proposed agreements in Sweden and Norway entered into
by authors’ rights organizations, on the one hand, and the national libraries of those countries, on
the other hand, to digitize, archive, and make various uses of their national library collections.

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Unlike Defendants, the libraries in those countries agreed to compensate authors and
rightsholders for the right to use their works. Had the ASA been approved, it would have
provided the same function.
33.

Fifth, making books available through the Orphan Works Program will directly

undermine efforts to revive out-of-print books and will affect future book sales. It is impossible
to know what is going on with authors’ and their representatives’ efforts to republish their outof-print works if one never asks, as demonstrated by the story of J.R. Salamanca. Defendants
believed the rights to Mr. Salamanca’s books were unclaimed, when in fact Mr. Salamanca’s
agent was negotiating a contract to make one of his novel’s available as an e-book. The Guild
itself has operated the Backinprint.com program, which now makes more than 1,400 formerly
out-of-print works available through online bookstores and the nation’s largest book wholesaler.
Defendants should simply not be permitted to usurp an author’s decision to revive an older work.
34.

In short, Defendants’ activities have harmed or have the potential to cause

enormous harm to the rights of authors.

[THIS SPACE INTENTIONALLY LEFT BLANK]

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I declare under penalty of perjury that the foregoing is true and correct
Dated:

New York, New York
June 28 2012

~KEN