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

Filing 115

MEMORANDUM OF LAW in Support re: 81 MOTION for Summary Judgment. (redacted). 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. (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 (H~)

-

HATHITRUST, et al.,
Defendants.

x

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

FRANKFURT KURNIT KLEIN & SELZ, P.C.
Edward H. Rosenthal, Esq.
Jeremy S. Goldman, Esq.
Adam Nelson (Law Student)
488 Madison Avenue
New York, New York 10022
Tel.: [phone]
Fax: [phone]
erosenthalc~Ms.com
I goldman(2lWcks.eom
[e-mail]
Attorneys for Plainttffs

TABLE OF CONTENTS
Pagc
PRELIMINARY STATEMENT

1

STATEMENT OF FACTS

2

THE STANDARD ON THIS MOTION

9

ARGUMENT
I.

PLAINTIFFS HAVE ESTABLISHED THEIR. PRIMA FACIE CASE OF
COPYRIGHT INFRINGEMENT AGAINST DEFENDANTS

9

A.

10

B.
II.

Ownership
Copying

11

DEFENDANTS’ UNAUTHORIZED REPRODUCTION OF PLAINTIFFS’ BOOKS
THROUGH THEIR MASS DIGITIZATION PROGRAM IS NOT PERMITTED
UNDER SECTION 108 OF THE COPYRIGHT ACT
11
A.

B.

The Works Were Digitized for a Commercial Advantage and Thus Were
Not Permitted Under Section 108(a)

12

The Digitization Was Not Permitted Under Any Section 108 Exemption

13

1.

14

2.
III.

Defendants’ Activities are not Permitted Under Section 108(c)
Defendants’ Activities are not Permitted Under Section 108(d) or
(e)

15

THE MASS DIGITIZATION OF COPYRIGHTED WORKS IS NOT FAIR
USE

16

A.

Purpose and Character

17

1.

Mass Digital Copying is Non-Transformative

17

2.

Defendants’ Non-Profit Status and Educational Purpose Do Not
Shield them for Liability for Copyright Infringement

18

B.

Nature of Copyrighted Work

20

C.

Amount and Substantiality

20

D.

.21

1.

Each Unlicensed Digital Copy Represents a Lost Sale

22

2.

Exposure of Works to Unlimited Piracy

23

3.

IV.

Effect of Use on Potential Market

Loss of Potential Licensing Revenues

25

THE ORPHAN WORKS PROJECT VIOLATES COPYRIGHT LAW

CONCLUSION

28

30

11

TABLE OF AUTHORITIES
Page
CASES
A &M Records, Inc. v. Napster, Inc.,
239 F.3d 1004 (9th Cir. 2001)

19

Am. Geophysical Union v. Texaco, Inc.,
60 F.3d 913 (2d Cir. 1994), cert. dismissed, 516 U.S. 1005 (1995)
Authors Guild v. Google Inc.,
770 F. Supp. 2d 666 (S.D.N.Y. 2011)

17, 18, 19,25

7, 8, 9,28

Authors Guild v. Google Inc.,
No.05 Civ. 8136 (DC), 2012 WL 1951790 (S.D.N.Y. May31, 2012)

10

Basic Books, Inc. v. Kinko ‘s Graphics Corp.,
758 F. Supp. 1522 (S.D.N.Y. 1991)

17

Byrne v. British Broad. Corp.,
132 F. Supp. 2d 229 (S.D.N.Y. 2001)

19

Campbell v. AcuffiRose Music, Inc.,

510 U.S. 569 (1994)

17, 19,20

Craft v. Kobler,
667 F. Supp. 120 (S.D.N.Y. 1987)

22

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

17, 18,23

Feist Publications, Inc. v. Rural TeL Serv. Co.,
499 U.S. 340 (1991)

9

Harper & Row Publishers, Inc. v. Nation Enterprises,
471 U.S. 539 (1985)

17, 20,21

Infinity Broad. Corp. v. Kirkwooc4
150 F.3d 104 (2d Cir. 1998)

passim

Itar-Tass Russian News Agency v. Russian Kurier Inc.,
153F.3d82(2dCir. 1998)

111

-

10

Princeton Univ. Press v. Michigan Document Services, Inc.,
99 F.3d 1381 (6th Cir. 1996), cert. denied, 520 U.S. 1156(1997)

13, 18

Salinger v. Random House, Inc.,
811 F.2d 90 (2d Cir.), cert. denied, 484 U.S. 890 (1987)

22

Sony Corp. ofAm. v. Universal City Studios, Inc.,
464U.S.417(1984)

21

UMG Recordings, Inc. v. MP3. corn, Inc.,
92 F. Supp. 2d 349 (S.D.N.Y. 2000)

17

WWBITJ4 Inc. v. ViIL ofRouses Point,
589 F.3d 46 (2d Cir. 2009)

9
STATUTES

17 U.S.C.

§

106

22

17 U.S.C.

§

106(1)

11

17 U.S.C.

§

107

passirn

17 U.S.C.

§

108

passim

17 U.S.C. §201(d)(1)

10

17 U.S.C. §410(c)

10

iv

PRELIMINARY STATEMENT
In Plaintiffs’ previously-submitted motion for partial judgment on the pleadings,
Plaintiffs explain why Defendants’ admissions in their Answer to Plaintiffs’ First Amended
Complaint are sufficient to establish that nothing in the Copyright Act provides a defense for
their mass digitization program or Orphan Works Project. Discovery has only reinforced how
brazen Defendants, and their business partner Google, have been in violating the rights of
Plaintiffs and other authors by engaging in their unprecedented project to scan millions of
copyrighted library books without permission.
For all intents and purposes, Defendants permitted Google to back trucks up to university
library loading docks, empty every book from every shelt drive the trucks to one of several topsecret Google-operated scanning centers, digitize each work, keep a digital copy for Google’s
own commercial purposes and then return the printed work and a digital copy to Defendants for
their own use. Defendants then collected the millions of digitized books into an online
repository called HatbiTrust, made multiple copies of the repository, and used or threatened to
use the books for a variety of purposes, including in connection with their currently “suspended”
Orphan Works Project. Google has spent

—

jn its massive “Library

Project,”

Defendants’ admissions and the evidence leave no doubt that the libraries overstepped
every allowance granted to them in Section 108 of the Copyright Act, which sets forth specific
limits on library photocopying and digitizing.

They

preemptively digitized every book4

land only later tried to find a

way to justif~’ their conduct.
Nothing in copyright law permits the unlicensed scanning, copying and use of millions of
copyrighted books, whether by a giant commercial entity like Google or a group of university
libraries. Defendants’ preemptive digitization program has harmed and threatens to ifirther harm
Plaintiffs and other owners of copyrighted books digitized by Defendants by, inter alia,
depriving them of the opportunity to sell printed and/or digital copies of their books to defendant
libraries, exposing these books to potentially catastrophic security risks, and undermining
copyright owners’ ability to decide whether, when and under what circumstances to participate in
existing or new licensing opportunities. Plaintiffs’ remedies are limited because Defendants are
able to hide behind sovereign immunity and do not have to face theprospect of huge money
damages. But Defendants are not immune from the Court’s power to issue an injunction to stop
this illegal conduct.
STATEMENT OF FACTS
The facts relevant to this motion are set forth in the various declarations of the individual
and associational plaintiffs, of experts on issues of collective licensing and security, and in the
documents and deposition testimony attached to the Declaration of Edward H. Rosenthal.’
Certain of the critical facts are summarized below, and others are detailed in the Argument
section of this brief.

“UF “refers to the corresponding undisputed fact and supporting evidence set forth
on Plaintiffs’ Statement of Undisputed Facts (“56.1 Statement”). “Ex. “refers to the
corresponding exhibit to the Declaration of Edward H. Rosenthal dated June 29, 2012. Except
where otherwise indicated, capitalized terms shall have the meanings ascribed to them in the
Definitions Appendix to the 56.1 Statement.
2

The Mass Digitization Program

4,

Defendants have engaged in a mass digitization program (“MDP”), resulting in the
scanning into digital format of millions of printed books, the majority of which are protected by
copyright in the United States. UF 77. Each of these “digitized” books has been incorporated
into a digital archive administered by Defendant UM called the HathiTrust Digital Library
(“HDL”). UF 74-75.
The genesis of the MDP is the “Google Library Project,” pursuant to which Google, in its
words, planned to “create an online database of all of the world’s books, beginning with
agreements with major universities in the United States.” UP 18. Unlike similar efforts to create
digital archives by entities such as Microsoft, UF 8, Google decided that it would not limit its
digital library to books in the public domain, but instead would digitize books protected by
copyright. UF 3. At one point, Google approached the Library of Congress (“LOC”) and asked
permission to scan all of the LOC’s books, including books protected by copyright. UF 1. But
the LOC declined, citing “copyright issues relevant to mass scanning” and offered to let Google
scan public domain works only. Id
Apparently frustrated by the reffisal of the LOC, and then Harvard, UF 5, to permit
Google to scan works in-copyright,

—

—.

UF 3. In 2004, Google issued a press

release announcing that it was working with various libraries, including UM, to “digitally scan
from their collections so that users worldwide could search for them in Google.” UF 6.
Each of the five universities that are defendants in this case entered into a separate
“Cooperative Agreement” with Google. UF 13-17. Under these agreements, Google undertook
responsibility for converting millions of books into digital format from Defendants’ vast
3

collections of printed works. E.g., Ex. 80

¶ 2.4.

Each copy would include a set of image files

representing every page of the work and a text file of the words in the book generated through an
optical character recognition process. UF 49; Ex. 80

J

¶ 2.5.

—

Id. ¶3.2;UF55-58.

A

UF 52.
The Google Cooperative Agreements permit Google to keep a digital copy of every work
scanned, Ex. 80

¶IJ 4.5-4.6_—
UF 65-68, 71-72. Thus, Defendants

provided an enormous commercial and competitive benefit to Google,

UF 65-72.
In exchange for allowing Google to digitize millions of their books, Defendants received
their own digital copies of the scanned works to store and use. UF 62. This was of tremendous
value to Defendants. UF 52-60. Some libraries have estimated the cost of digitizing a single
book at approximately $100, 1fF 53, and one Defendant witness estimated the cost as between
$35 and several hundred dollars per book, stating that the figure of $60 per book sounds “a bit
low.” UF 54. Under any calculation, the value to Defendants resulting from their cooperation
with Google can be measured in the hundreds of millions of dollars. There is no question they
could not have completed a project of this magnitude without Google. UP 59.
4

Defendants did not discriminate when determining which books to take from library
collections and digitize. UF 29-43

Id. A majority
of books were selected via “bulk pulls,”;

~.L

UF4O,45.

Google then transported the books to scanning facilities occupied by Google’s own
personnel and scanning equipment. UF 46-47.

—~_---..~

UF 30, 35-38, 155. None of the “fair use” factors set forth in 17 U.S.C.

§

107

were considered—~
--

-----~

35, 39. Indeed,

!

UF 33-34, 36, 41. And, of course, no one asked a single

-

copyright owner for permission to copy his or her book. UF 173.

C__

.-

UF

UF5O.I
1d.
Id.
HathiTrust
On October 13, 2008, UM and other schools announced the launch of HathiTrust, which
would serve as a shared digital repository for the millions of books digitized as part of the
Google Library Project and other mass digitization programs. UF 74. Rather than each school
separately downloading and maintaining its own digital library of books scanned by Google,
Defendants UC, UW, RJ and Cornell, as well as many other Google Library Partners, authorized
UM to download the books digitized from their respective collections. UF 62-64. UM then
downloaded from Google its own digitized library collection and the collections of the other
Defendants and incorporates those books into the HDL. UF 63, 75, 83. According to the
HathiTrust website, as of June 28, 2012, the HDL included 10,405,889 total volumes, 5,519,596
book titles, 272,002 serial titles, 3,642,061,150 pages, 466 terabytes, and the digital equivalent of
123 miles and 8,455 tons of materials. Of the 10,405,889 volumes, 3,097,761 volumes (—30% of
the total) are treated as in the public domain, meaning that 7,308,128 (-—70% of the total) are
considered to be protected by copyright. UF 77. Four digital copies of each book are maintained
by HathiTrust in the HDL, with two such copies stored on servers located in Michigan and
Indiana and two additional copies stored on backup tapes. UF 82, 86.
Members of HathiTrust pay fees to UM for their participation in the service. In 2011,
HathiTrust reported

6

UF 79, 81. It is not uncommon for UM to generate more revenue than
expenses from the HathiTrust operation. UF 80.
Plaintiffs’ Books Were Scanned and Copied
Plaintiffs in this action include twelve individual authors (“Author Plaintiffs”) and eight
authors’ rights organizations (“Associational Plaintiffs”). FAC

¶~J 12-33.

Plaintiffs have

collectively identified 116 books (the “Infringed Books”) in which they own the copyright and
which were digitized by Defendants as part of the Google Library Project without Plaintiffs
authorization. UF 138-153. Defendants admit that each of the Infringed Books was scanned and
incorporated into the HDL. UF 156-172.
Just as described above with respect to digitization in general, neither Defendants nor
Google conducted any pre-digitizatioh assessment of any of the criteria in Sections 108 or 107 of
the Copyright Act to determine whether any of the Infringed Books qualified for the protections
provided by those sections. In fact, sixty-five of the Infringed Books were included for scanning
simply because they happened to be in a library building where Google was collecting every
work, shelf-by-shelf via bulk pulls. UP 40. Twelve of the works were selected by Google on a
“pick list” of candidate works for digitization. UF 42. Only one book was “Self-Selected”: Ex.
73, No. 20). (Defendants have not indicated how the remainder were selected.)
The Orphan Works Project
An orphan work is a work that is still under copyright protection but for which the author
or rightsholder cannot be found. UF 114. The issue of whether special rules should be applied
to increase the availability and utility of orphan works has been the subject of discussion and
debate for many years, as well as the subject of various legislative solutions proposed in, but
never enacted by, Congress. See Authors Guildv. Google Inc., 770 F. Supp. 2d 666, 677
7

(S.D.N.Y. 2011) (the “Google Books” case). Indeed, one of the key aspects of the attempted
settlement of the Google Books case was a mechanism to help resolve the orphan works issue.
Id But the Amended Settlement Agreement (“ASA”) was rejected by Judge Chin, who stated
that “the establishment of a mechanism for exploiting unclaimed books is a mater better suited
for Congress than the Court.” Id.
Unhappy with Judge Chin’s rejection of an agreement that would have addressed the
orphan works issue, UM decided to take the law into its own hands by initiating its own program
--

the Orphan Works Project (“OWP”)

--

pursuant to which it unilaterally set rules defining the

circumstances under which a book would be considered an orphan candidate, made an attempt to
locate the copyright owner and then if it could not find the owner, listed the candidate on one or
more websites. UF 115. Under the OWP, if the copyright owner did not come forward and
claim rights in the book within 90 days, UM would make the book available for display and
download to tens of thousands of UM students, faculty and library users. UF 74, 116.
After UM published its first list of orphan candidates, and in all likelihood as a result of
the publicity surrounding the commencement of this lawsuit, various copyright holders whose
works had been listed as orphan candidates and were about to be made available for free by UM
came forward. UP 125; Aiken Decl.

¶ 23.

Indeed, Paul Aiken, the Executive Director of

Plaintiff The Authors Guild, states that he was able to locate the author of one such candidate,
Plaintiff J.R. Salamanca, in a matter of minutes simply by typing “book author salamanca” into
Google’s search engine. Id

¶ 24.

By the end of that day, Mr. Aiken confirmed that Mr.

Salamanca was alive and living in Maryland, that his books certainly were not orphaned and that
a contract to publish one of his novels as an e-book had just been signed. Id.

8

Defendants admit that Mr. Salamanca’s Lost Country and Good Troupers All by Gladys
Malvern, whose copyright is owned by Plaintiff ALF, were digitized and listed as orphan work
candidates in the OWP. UF 121-122. Both of these works would have been made available as
part of the OWP if Defendants received no opposition. Id.
The OWP was suspended after Plaintiffs filed this action and shortly before the first
supposed orphan works were to have been made available to UM users. UM admitted that it had
made “a number of errors, some of them serious,” resulting in several books whose authors could
have been easily located being wrongfrlly included in this list of orphan candidates. UF 123125. UM has made clear that it intends to proceed with the OWP in the future. UF 127.
THE STANDARD ON THIS MOTION
Summary judgment shall be granted pursuant to Fed. R. Civ. P. 56(a) if the court, having
drawn all reasonable inferences in favor of the non-moving party, determines that no reasonable
trier of fact could find in its favor. See, e.g., WWBITJ4 Inc. v. Viii. ofRouses Point, 589 F.3d 46,
49 (2d Cir. 2009).
For the reasons set forth below, there are no genuine issues of material fact and this Court
should grant summary judgment finding that Defendants have infringed Plaintiffs’ copyrights.
ARGUMENT
I.
PLAINTIFFS HAVE ESTABLISHED THEIR PRIMA FACI.ECASE
OF COPYRIGHT INFRINGEMENT AGAINST DEFENDANTS
To establish aprimafacie case of copyright infringement, a plaintiff needs to prove two
elements: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the
work that are original.” See Feist Publications, Inc. v. Rural Tel Serv. Co., 499 U.S. 340, 361
(1991). Plaintiffs have established both elements.
9

A.

Ownership
The twelve Author Plaintiffs and four of the Associational Plaintiffs claim ownership

over the copyrights in 116 Infringed Books. UF 138-153. Copyright registration certificates,
which establish prima facie evidence of copyright ownership, 17 U.S.C.

§ 410(c), have been

submitted along with sworn testimony by each of the five American authors [UF 139, 142, 145,
146, 148], one U.K. author [UF 149j and the two American associations [UF

150, 151].

Each

foreign author has submitted sworn testimony that he or she owns of the copyrights to his or her
Infringed Books [UF 138, 140, 141, 143, 144, 147, 149], establishing ownership under the law of
each person’s respective country. See Itar-Tass Russian News Agency v. Russian Kurier, Inc.,
153 F.3d 82, 94 (2d Cir. 1998) (foreign law governs copyright ownership). Finally, the four
Associational Plaintiffs have submitted proof that they acquired the copyrights in certain
Infringed Books by will or other conveyance from a deceased author [UP 150-153]. See 17
U.S.C.

§ 201(d)(1).
In addition to the copyrights directly held by Plaintiffs, the Associational Plaintiffs

collectively represent more than 70,000 authors worldwide who in turn hold rights to hundreds
of thousands of books, many of which have been unlawfully copied by Defendants. FAC

¶~J 12-

20. Defendants have moved to dismiss the Associational Plaintiffs for lack of standing, which is
the subject of a separate motion by Defendants pending before this Court. On the instant
summary judgment motion, the Associational Plaintiffs do not seek to establish copyright
ownership over the works of their members that were infringed by Defendants. Rather, they
propose to do so at the remedy stage to the extent the Court deems it necessary in fashioning an
injunction. See Authors Guild v. Google Inc., No. 05 Civ. 8136 (DC), 2012 WL 1951790, at ~ 11
(S.D.N.Y. May 31, 2012) (denying Google’s motion to dismiss associations for lack of standing

10

and noting that members of association may have to submit proof of beneficial ownership at the
remedy stage).
B.

Copying
Defendants admit that each of the Infringed Books whose copyrights are owned by the

Author Plaintiffs were “digitized and included in the HDL” and the HathiTrust website shows
that the same is true of all of the Infringed Books. UF 156-171. This scanning and copying was
undertaken without permission by or compensation to any of the Plaintiffs. UP 173. Moreover,
Google has retained at least one copy of each of these works and Defendants have made multiple
additional copies. UF 48, 86. Defendants admit that the image and text files that were generated
by the digitization process implicate the right to reproduction referenced in 17

U.S.C. §

1060).

UP 172.
Thus, Plaintiffs have established their primafacie case for copyright infringement.

a.
DEFENDANTS’ UNAUTHORIZED REPRODUCTION OF PLAINTIFFS’
BOOKS THROUGH THEIR MASS DIGITIZATION PROGRAM IS NOT
PERMITTED IThI1)ER SECTION 108 OF THE COPYRIGHT ACT
In Plaintiffs’ MW, which is pending before this Court, Plaintiffs explain why Defendants’
admitted digitization and use of millions of copyrighted books, including Plaintiffs’ books, far
exceed the provisions governing the reproduction of books by libraries set forth in Section 108 of
the Copyright Act. In their opening brief in support of that motion, Plaintiffs describe in detail
the legislative history of Section 108, and how that section was enacted by Congress after
decades of contentious debate and negotiation among authors, librarians and other parties with
stakes in the literary marketplace. The brief shows how Section 108 was designed to address
new issues being raised by rapid advancements in computer and photocopying technology that
11

both made it easier for libraries to serve the public and for infringers to misuse copyrighted
materials.
Over objections from libraries, Congress accepted the Copyright Office’s
recommendation to codif~’ what constitutes permitted use in connection with most unlicensed
library photocopying. Section 108, which had been amended four times since it was enacted as
part of the Copyright Act of 1976, carefhlly delineates the conditions and circumstances under
which libraries and archives are allowed to duplicate copyrighted materials, including the
digitization of copyrighted books and the use of “orphan works” in the last twenty years of their
copyright term.
Plaintiffs respectfully refer the Court to their prior submissions in connection with the
MW and incorporate them by reference herein. Plaintiffs stand by their position that the conduct
to which Defendants admitted in their Answer is more than sufficient to establish that they have
exceeded the limitations of Section 108, and that Defendants cannot rely on the “savings clause”
in Section 108(0(4) to justi~ as fair use a project that exceeds practically every limitation in the
library exemption. The discovery process only served to adduce additional facts demonstrating
just how callous Defendants have been in their disregard for the requirements of that section.
A.

The Works Were Digitized for a Commercial Advantage and Thus Were Not
Permitted Under Section 108(a)
Discovery has made clear that Defendants cannot claim the protection of Section 108

because that section only is available if the reproduction or distribution is “made without any
purpose of direct or indirect commercial advantage.” 17 U.S.C.

§

108(a). Even if the defendant

libraries do not themselves have a commercial purpose, Google certainly does. UF 65-72. As
set forth above, the participation by Defendants in the Google Library Project provided
enormous commercial and competitive benefits to Google,
12

Id.
The Legislative History of the 1976 Copyright Act makes clear that “[ijt would not be
possible for a non-profit institution, by means of contractual arrangements with a commercial
copying enterprise, to authorize the enterprise to carry out copying and distribution ifinctions that
would be exempt if conducted by the non-profit institution itself.” H.R. Rep. No. 1476, 94th
Cong., 2d Sess. at 74(1976). See Princeton Univ. Press v. Michigan Document Services, Inc.,
99 F.3d 1381, 1389 (6th Cir. 1996) (copy shop’s unlicensed reproduction of course materials for
students is not fair use). Plainly, Defendants may not take advantage of the special exemptions
in 108 with their commercial partner Google in tow.
B.

The Digitization Was Not Permitted Under Any Section 108 Exemption
Section 108 only allows copies of unpublished works to be made for “preservation

purposes.” 17 U.S.C.

§

108(b). There is no dispute that all of the Infringed Books

of the books digitized by Google

--

--

indeed, all

are published. UF 154-155. Section 108 grants libraries

permission to copy published books only under three conditions: (1) to replace works that are
damaged, deteriorating, lost or stolen and cannot be replaced through lawftil purchase pursuant
to

§~

108(c); (2) to fulfill requests from patrons or other libraries pursuant to

§

108(d) & (e); or

(3) to make limited uses of out-of-print works that are in the last twenty years of their copyright
term under

§

108(h).2 Defendants’ admissions demonstrate their failure to comply with any of

these provisions. Discovery resolves any doubt.

2

Defendants have not argued, nor can they show, that either the mass digitization that

occurred as part of the Google Library Project or the threatened dissemination of purportedly
orphaned copyrighted works as part of the OWP is sanctioned by Section 108(h), which
addresses orphan works during the last 20 years of the term of copyright. See Pont IV, infra.
13

1.

Defendants’ Activities are not Permitted Under Section 108(c)

First, Defendants blatantly exceed Section 108’s three-copy allowance provided in 17

U.S.C. §

108(c) by permitting digital copies to be retained by or at: (1) Google; (2) HathiTrust’s

primary seWers in Ann Arbor; (3) HathiTrust’s mirror site in Indianapolis; (4) one set of backup
tapes located in Ann Arbor; and (5) a second set of backup tapes located in Ann Arbor. ~ UF 48,
86.
Second, Defendants admit, as does Google, that
-.

-

,

thus breaching

Section 108’s mandate that replacement copies be made only of works that are “damaged,
deteriorating, lost, or stolen.” 17 U.S.C.

§

108(c). UF 30, 31, 34, 35, 36, 38. Although

Defendants may argue that certain of the works digitized by Google, including some of the
Infringed Books, are in poor physical condition, the testimony of John Wilkin, Executive
Director of HathiTrust, makes clear that any evaluation of the Infringed Books was conducted in
response to Plaintiffs’ discovery requests, not prior to the digitization of those works. UF 110.
The Copyright Act, however, does not permit this kind of pre-emptive digitization. See MW
Reply Br. at 2-4.
Third, Defendants admit, as does Google,”

.

.1

.1

1~

thereby violating Section
108’s requirement that no work be copied until “the library or archives has, after a reasonable
effort, determined that an unused replacement cannot be obtained at a fair price.” 17 U.S.C.

§

~ 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

108(c)(1) (emphasis added). UF 30, 35, 37, 38. Again, to the extent Defendants checked the
availability and pricing of new copies of the Infringed Books, they did so only in response to
Plaintiffs’ discovery requests after the Infringed Books had already been digitized. UF 1 to.4
Finally, Defendants admit that the digital copies were not confined to the library premises
where they originated, but have been copied and distributed to various locations around the
country, in violation of Section 108’s strict prohibition against making digital copies “available
to the public in that format outside the premises of the library or archives in lawful possession of
such copy.” 17 U.S.C.

§

108(c)(2). UF 88, 89, 91, 92. Defendants’ failure to meet this

requirement is not merely some technical violation. Congress imposed these restrictions on
digital copies to protect rightsholders against the risks of security breaches and Internet piracy.
See MJP at 14-17. As discussed in the expert report of Professor Benjamin Edelman and below
in connection with Defendants’ fair use defense, Defendants subject the copyrights of Plaintiffs
and millions of other affected rightsholders to grave potential harm. See infra Point III.D.2.
2.

Defendants’ Activities are not Permitted Under Section 108(d) or (e)

Sections 108(d) and (e) cannot possibly sanction Defendants’ mass digitization of
copyrighted works. See MW at 17. Each of those sections are limited to circumstances in which
a “user makes his or her request” for a particular library book or periodical. 17 U.S.C.

§

108(d)

& (e). Defendants do not and could not contend that the digitized books were requested by any
particular “user,” as required by the statute. Rather, the record establishes that pursuant to the
Qoogle Cooperative Agreements, the Infringed Books and millions of other books were
systematically emptied off of library shelves, loaded onto trucks and shipped to Google to be
~ When Defendants finally did evaluate the physical condition and availability of the
Infringed Books, they determined that the majority of them were not deteriorating or damaged
and that many could be purchased for under $20. UF 111, 112.
15

scanned en masse. UF 29-50. Moreover, given that both HathiTrust and Google retained several
copies of each digitized book, Defendants do not comply with the mandate in Section 108(d) and
(e) that any copy made in response to a user request must become the property of the user. See

17 U.S.C.

§ 108(d)(l) & (e)(1).

UF 51, 86. Nor can Defendants show that copies of an “entire

work” were made only after the library had “first determined, on the basis of a reasonable
investigation, that a copy

U.S.C.

§

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

17

108(e). UF 30, 35, 37, 38.
III.

THE MASS DIGITIZATION OF COPYRIGHTED WORKS IS NOT FAIR USE
As set forth above, Section 108 explicitly delineates the extent to which libraries are
permitted to make unauthorized reproductions of copyrighted works in print and digital formats
and the legality of Defendants’ mass digitization program should be evaluated against those
specific provisions. Plaintiffs stand by the, main point of their Mi? that Defendants’ preemptive
and mass digitization of millions of books cannot possibly be considered fair use, and a detailed
analysis of the four factors in Section 107 is not required. Nevertheless, should the Court
determine that it is necessary to separately analyze whether Defendants’ MDP and OWP fall
within the zone of fair use, the outcome will be the same.
Section 107 provides that “[un determining whether the use made of a work in any
particular case is a fair use the factors to be considered shall include”

—

(1)

the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;

(2)

the nature of the copyrighted work;

(3)

the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
16

(4)

the effect of the use upon the potential market for or value of the copyrighted
work.”

17 U.S.C. § 107. These factors “are not meant to be exclusive.” Harper & Row Publishers, Inc.
v. Nation Enterprises, 471 U.S. 539, 550 (1985).
As shown below, Defendants fail to meet their burden to establish this affirmative
defense to Plaintiffs’ claim of copyright infringement. See generally Am. Geophysical Union v.
Texaco, Inc., 60 F.3d 913 (2d Cir. 1994), cert dismissed, 516 U.S. 1005 (1995) (research
libraries’ systematic photocopying ofjournal articles for archival purposes is not fair use); UMG
Recordings, Inc. v. MP3.com, Inc., 92 F. Supp. 2d 349 (S.D.N.Y. 2000) (Rakoff I.) (Internet
company’s mass copying of CDs onto servers for “instant listening service” by CD owners is not
fair use); Encyclopaedia Britannica Educational Corp. v. Crooks, 542 F. Supp. 1156 (W.D.N.Y.
1982) (board of education’s large-scale reproduction of videotapes is not fair use).
A.

Purpose and Character
1.

Mass Digital Copying is Non-Transformative

In order to determine the purpose and character of the use, the Court must examine
“whether the new work merely ‘supersede[s] the objects’ of the original creation, or instead adds
something new, with a further purpose or different character, altering the first with new
expression, meaning, or message; it asks, in other words, whether and to what extent the new
work is ‘transformative.” Campbell v. AcuffiRose Music, Inc., 510 U.S. 569, 579 (1994)
(citations omitted; emphasis added); see Basic Books, Inc. v. Kin/co ~ Graphics Corp., 758 F.
Supp. 1522 (S.D.N.Y. 1991) (“The copyright law, through the fair use doctrine, has promoted
the goal of encouraging creating expression and integrity by ensuring those who produce
intellectual works may benefit from them.”) (emphasis added).

17

Defendants have not added anything new to the Infringed Books. Rather, they merely
have arranged for the mechanical conversion of printed books into digital form. This process
cannot be seen as transformative because it does not add any “new information, new aesthetics,
new insights and understandings,” to the books. Pierre Leval, Toward a Fair Use Standard, 103
HARv. L. REv. 1105, 1111(1990). See Texaco, 60 F.3d 913 at 924 (“photocopying merely
transforms the material object embodying the intangible article that is the copyrighted original
work”) (emphasis added); Infinity Broad Corp. v. Kirlcwood, 150 F.3d 104, 108 (2d Cir. 1998)
(retransmission of radio broadcast, which merely repackages the original, is not transformative
because it adds “neither new expression, new meaning nor new message”); Princeton Univ.
Press v. Michigan Document Services, Inc., 99 F.3d 1381, 1389 (6th Cir. 1996), cert. denied, 520

U.s. 1156 (1997) (“mechanical ‘transformation” of photocopying “bears little resemblance to
the creative metamorphosis accomplished by the parodists in the Campbell case”). While
services like HathiTrust “may be innovative, they are not transformative.” UMG, 92 F. Supp. at
351 (rejecting defendant’s claim that the conversion of CDs into computer files so that users can
enjoy their sound recordings over the Internet is transformative, holding that “this is simply
another way of saying that the unauthorized copies are being retransmitted in another medium

—

an insufficient basis for any legitimate claim of transformation”).
2.

Defendants’ Non-Profit Status and Educational Purpose Do Not Shield them
for Liability for Copyright Infringement

Plaintiffs do not dispute that Defendants are academic and educational institutions. This
does not, however, mean that a

-

-

operation involving the systematic reproduction of

millions of copyright-protected books into digital format
before

--

--

something that had never been done

is fair use. See Encyclopaedia Britannica, 542 F. Supp. at 1175 (“[T]he massive scope

of the videotape copying and the highly sophisticated methods used by the defendants in
18

producing and distributing these copies cannot be deemed reasonable, even under the most
favorable light of fair use for non-profit educational purposes”); see also Campbell,

510 U.S.

at

584 (“[Tjhe mere fact that a use is educational and not for profit does not insulate it from a
finding of infringement, any more than the commercial character of a use bars a finding of fair
use”); Texaco, 60 F.3d at 922 (systematic photocopying and archiving ofjoumal articles to
facilitate “research in the sciences.

.

.

might well serve a broader public purpose” but does not

constitute fair use).
While Defendants may argue that their patrons use HathiTrust for the purposes set forth
in the preamble to Section 107 (“for purposes such as criticism, comment, news reporting,
teaching (including multiple copies for classroom use), scholarship, or research”), it is the
purpose for which the Defendant libraries digitized and used the Infringed Books that is at issue
here. In other words, fair use must be judged by the conduct of the infringer, not the final user.
Otherwise, any reproduction of educational, informational or artistic material could be justified
as benefitting the public. See Infinity, 150 F.3d at 108 (rejecting broadcaster’s argument that his
unauthorized retransmissions of plaintiff’s programming constituted fair use based on the acts of
the end-users); Byrne v. British Broad. Corp., 132 F. Supp. 2d 229, 234 (S.D.N.Y. 2001) (non
profit organization BBC “enjoys no special immunity from determinations of copyright
infringement” as “question under factor one is the purpose and character of the use, not of the
alleged infringer”). Here, Defendants agreed to allow Google to digitize their library collections
for the purpose of receiving their own digital copies that carry enormous value. They cannot
escape the commercial purpose of that transaction. See A&MRecords, Inc. v. Napster, Inc., 239
F.3d 1004, 1015 (9th Cir. 2001) (“Commercial use is demonstrated by a showing that repeated

19

and exploitative unauthorized copies of copyrighted works were made to save the expense of
purchasing authorized copies.”).
Accordingly, the first factor weighs heavily against Defendants.
B.

Nature of Copyrighted Work
The second statutory factor “calls for recognition that some works are closer to the core

of intended copyright protection than others, with the consequence that fair use is more difficult
to establish when the former works are copied.” Campbell, 510 U.S. at 586. Still, the principle
of “reward[ingj the individual author in order to benefit the public.

.

.

applies equally to works

of fiction and nonfiction.” Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539,
546 (1985) (internal citation and quotation marks omitted). In this case, the millions of works
digitized as part of the Google Library Project include every conceivable type of book-- from
fiction to non-fiction to cook books.
1

j

-

-

-

JUL

UF 35. Rather, most of the books were “selected” because they happened to be

on a particular shelf of a particular library. UF 40. Under the unusual circumstances of this
case, where Defendants indiscriminately scanned millions of books~

-.

-

they cannot meet their burden of showing that the nature of the copyrighted work favors a
finding of fair use.
C.

Amount and Substantiality
The third factor considers whether “the amount and substantiality of the portion used in

relation to the copyrighted work as a whole,” or “the quantity and value of the materials used are
reasonable in relation to the purpose of the copying.” Campbell, 510 U.S. at 586 (internal
quotationmarks and citations omitted). This factor “recognizes that the more of a copyrighted
work that is taken, the less likely the use is to be fair, and that even a less substantial taking may
20

be unfair if it captures the essence of the copyrighted work.” Infinity, 150 F.3d at 109. “Though
not an absolute rule, ‘generally, it may not constitute a fair use if the entire work is reproduced.”
Id. (quoting 4 MELVILLE B. NIMrvIER AND DAVID NIMMER, NIMMER ON COPYRIGHT,

§

13.05[A]

[3] at 13-178 (1997)).
Here, there is no dispute that Defendants collected millions of books from their library
collections and shipped them to Google, which then scanned each and every page of every book
and stored the resulting image files and text files created through an optical character recognition
process onto multiple servers in multiple locations. It would be difficult, if not impossible, to
think of a situation where the third factor weighs more heavily against Defendants.
B.

Effect of Use on Potential Market
The fourth fair use factor, “the effect of the use upon the potential market for or value of

the copyrighted work,” 17 U.S.C.

§

107(4),

requires courts to consider not only the extent of market harm caused by the
particular actions of the alleged imfringed, but also “whether unrestricted and
wide-spread conduct of the sort engaged in by defendant. would result in a
substantially adverse impact on the potential market” for the original.
.

Campbell, 410 U.S. at 590 (quoting NIMMER,

§

.

13.05[A][4]). The copyright holder need not

sho* either “actual present harm” or “with certainty that future harm will result,” but rather “a
showing by a preponderance of the evidence that some meaningful likelihood of fliture harm
exists.” Sony Corp. ofAm. v. Universal City Studios, Inc., 464 U.S. 417, 451 (1984) (emphasis
in original). Courts must consider not only any damage caused to the original work, but also any
harm to the market for derivative uses. Harper, 471 U.S. at 568. As with the other fair use
factors, Defendants bear the burden of showing that their use does not harm Plaintiffs’ interests.

21

Infinity, 150 F.3d at 110. Defendants fail to meet that burden here in light of following
categories of actual or potential harm caused by their unlicensed mass digitization.5
1.

Each Unlicensed Digital Copy Represents a Lost Sale

Defendants’ digitization and archiving of the Infringed Books caused actual harm to
Plaintiffs’ own market and potential market for book sales. The majority of the Infringed Books
are in-print and commercially available for purchase. UF 174. Many are available for sale in
digital format. Id Each digital copy of a book that Defendants created
archiving or any other purpose

—

—

for preservation,

rather than purchasing it through lawful channels, represents a

lost sale to the book’s rightsholders. UF 128; see also Stiles Decl.

¶~J 11-12.

Defendants

digitized millions of works translating to millions of dollars in lost sales, a figure that goes even
higher when one considers that Defendants made four digital copies of each work. To the extent
a particular book was no longer in print or was unavailable for sale in digital format when
Defendants sought to create a digital copy (though of course Defendants admit they never
checked), they could have negotiated a license to do so, either separately with each
author/publisher (as Google has done in its Google Books Partner Program [UP II]) or
collectively through a collective rights society (as libraries in Norway and Sweden have done,
[5FF Decl.; NFF Decl.; Gervais Deci.]).
~ In addition to causing direct economic harm, Defendants disregard one of the
fundamental rights of a copyright owner: the right to decide not to make his work available or to
decide whether or when to do so. UF 135. See t7 U.S.C. § 106 (granting copyright holders
exclusive right “to do and to authorize. . .“); Salinger v. Random House, Inc., 811 F.2d 90, 99
(2d Cir.), cert. deniec4 484 U.S. 890 (1987) (effect on “potential market” for works “is not
lessened by the fact that their author has disavowed any intention to publish them during his
lifetime” as author “has the right to change his mind” and is “entitled to protect his opportunity
to sell his [worksj”); Craft v. Kobler, 667 F. Supp. 120, 129 (S.D.N.Y. 1987) (“The fact that
plaintiffs books are out of print and that Craft testified he had no interest in writing further on
Stravinsky is not determinative. As public interest in Stravinsky increases, the Craft-Stravinsky
books may be reissued.”).
22

In short, Defendants caused direct harm to Plaintiffs’ sales by creating unlicensed scans
of books rather than purchasing copies or obtaining licenses to do so. See Encyclopaedia
Britannica, 542 F. Supp. at 1169-70 (“It is totally unreasonable to expect educational institutions
to pay for licensing agreements or videotape copies marketed by the plaintiffs when these same
works can be obtained and copied with the proper equipment for nothing. The cumulative effect
of the [Board of Educationj’s massive videotape copying indicates that there would be no market
whatsoever for plaintiffs’ videotape sales or licensing agreements if off-the-air videotaping of
plaintiffs’ works is permitted to continue in unregulated fashion.”)
2.

Exposure of Works to Unlimited Piracy

By digitizing, copying, transferring, storing and allowing various levels of online access
to the Infringed Books, Defendants and Google expose Plaintiffs’ property to immense security
risks that have the potential to cannibalize the book market through the same type of widespread
Internet piracy that decimated the music industry. See Edelman DecI. (detailing security risks
caused by Defendants); UF 100-109, 134. When Congress amended Section 108 to begin
permitting libraries to make copies of certain works in digital format, it expressly recognized
“the potential harm to the copyright owner’s market” that would ensue if patrons were able to
obtain “unlimited access to digital copies from any location,” thereby “facilitating immediate,
flawless and widespread reproduction and distribution” of copyrighted works. S. Rep. No. 190,
105th Cong., 2d Sess. 6 1-62 (1998).
As the expert report of Professor Benjamin Edelman demonstrates, Defendants not only
digitized millions of works that were not authorized for reproduction by Plaintiffs or permitted
pursuant to Section 108, they also violated Section 108’s mandate that any digital copies remain
securely within the walls of the library building. See Edelman Decl.,passim. In addition to
23

permitting Google to scan, copy, store and make various uses of millions of digitized library
books (which carry their own security risks), Defendants admit to creating at least four separate
instances of the 466-terabyte database of 10.4 million books (approximately seventy percent of
which are considered in-copyright), each of which is stored on a separate system located in Ann
Arbor or Indianapolis. UF 77-82. Each copy of the database is connected to a “campus
network” and the primary and mirror HathiTrust sites include World Wide Web server, creating
additional risk of exposure. UF 88-90; see Laura N. Gasaway (Co-Chair, Section 108 Study
Group), America~ Cultural Record: A Thing ofthe Past?, 40 Hous. L. REv. 643, .656 (2003)
(observing that Congress intended that any digital copies “could be used only within the library
premises and not on a campus network or the World Wide Web”). Furthermore, nearly one
hundred people located in Michigan, New York, Minnesota, Wisconsin and California have
“privileged access” to the HDL, which means they have the ability view, print and download any
work in the database through an Internet connection. UP 100-101.
It is not only the security practices of Defendants that are at issue here, though the record
raises many such concerns. See, e.g, UF 107
).

L

k

-.

When evaluating the fairness of a challenged use, courts must consider “whether

unrestricted and wide-spread conduct of the sort engaged in by defendant.

.

.

would result in a

substantially adverse impact on the potential market.” Campbell, 410 U.S. at 590. Even if
Defendants claim that they adequately secure Plaintiffs’ works, an adverse ruling would
encourage far less sophisticated providers to digitize, copy, store and make similar uses of incopyright books, thereby subjecting the property to whatever security measures such providers
do or do not employ. See Edelman DecI.

¶ 25.

24

3.

Loss of Potential Licensing Revenues

It is well established that the “impact on potential licensing opportunities for traditional,
reasonable or likely to be developed markets should be legally eognizable when evaluating a
secondary user’s ‘effect upon the potential market for or value of the copyrighted work.”
Texaco, 60 F.3d at 930. The undisputed evidence establishes that Defendants’ activities will
harm Plaintiffs by undermining existing and emerging licensing opportunities.
In Texaco, the Second Circuit considered whether a corporate library’s systematic
photocopying of scientific journal articles for research and archival purposes was fair use. 60
F.3d at 91. In analyzing whether it was appropriate for the district court to have considered the
increase in publishers’ revenue that would result if Texaco’s unauthorized copying was not
permitted as fair use, the Second Circuit observed that “the publishers still have not established a
conventional market for the direct sale and distribution of individual articles [.1” Id.
Nevertheless, the court found that “they have created, primarily through [the Copyright
Clearance Center (“CCC”)], a workable market for institutional users to obtain licenses for the
right to produce their own copies of individual articles via photocopying.” Id. The court
reasoned that
it is not unsound to conclude that the right to seek payment for a particular use
tends to become legally cognizable under the fourth fair use factor when the
means for paying for such a use is made easier. This notion is not troubling: it is
sensible that a particular unauthorized use should be considered “more fair” when
there is no ready market or means to pay for the use, while such an unauthorized
use should be considered “less fair” when there is a ready market or means to pay
for the use.
Id. at 930-931.
Here, there is a “ready market or means” for Defendants’ use. As described in detail in
the expert report of Professor Daniel Gervais, “collective management systems provide a market
based mechanism by which libraries could compensate authors and rightsholders in exchange for
25

a license to mass digitize and make various uses of copyrighted books in their collections.”
Gervais Deci.

¶ 9.

Just as in Texaco, the CCC and other collective management organizations

around the world “presently license the same general type of copyrighted content as the material
copied through the Google Library Project.” Id For example, authors and their associational
representatives in Norway and Sweden, including Plaintiffs in this litigation, have entered into or
are finalizing license agreements to permit their national libraries to digitize entire collections of
books in exchange for royalty payments. UF 137. Google recently announced that in France “it
had an industrywide book-scanning agreement in place to cover works that are out of print but
still under copyright

—

a category that covers most of the world’s books,” and that Google was

“interested in exporting these deals elsewhere.” Eric Pfanner, Google Has Deal in France For
Book-Scanning Project, N.Y. TIMES, June 12, 2012, at B5.
Although Judge Chin ultimately rejected the Amended Settlement Agreement entered
into by Plaintiff The Authors Guild and other the parties in the Google Books case, the proposed
resolution provides more compelling evidence that “there is a ready market or means to pay for
the use” that Defendants want to make. See Aiken DecI., Ex. A. Among other things, the ASA
provided a mechanism to compensate the millions of authors whose copyrighted works had been
digitized by Google and Defendants without authorization. Aiken Decl.

¶ 15.

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
scanned. Id The ASA expressly authorized Google and its partner libraries (which would have
included UM and the 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. Id. The ASA would have covered both in-print and out-of-print works,
26

including so-called “orphan works,” id., and also would have included a comprehensive security
protocol for Google and any partner institutions. 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. Id. 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.
Id. Thus, the ASA shows how a collective management system might work to permit certain of
the activities of Defendants in this case while providing compensation to copyright owners.
Defendants’ various unauthorized uses of the Infringed Books also undermine existing
licenses for the use of Plaintiffs’ books. 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. UF 131, Stiles DecI.

¶ 14; Rosenthal Decl., Ex.

104 (Amazon Search Inside License). Defendants also permit full-text searching, but without a
license, and not as part of an effort targeted at selling the books and providing revenue to the
author. UT 93. Courts have held that a secondary use which replaces a comparable service
licensed by the copyright holder, even without charge, may cause market harm. See Infinity, 150
F.3d at 111 (unlicensed retransmission of radio broadcast over telephone “listen lines”
undermined copyright holder’s ability to exploit and control that use; although copyright holder
provided a comparable service to its customers at no additional cost, defendant’s use “replaces”
the broadcaster “as the supplier of those broadcasts to meet the demand of his customers”); U £
v. ASCAP, 599 F. Supp. 2d a415, 422, 432 (S.D.N.Y. 2009) (fourth factor weighed against fair
use where performance rights organization established existence of market for ringtone previews

27

by showing that musicians generally granted a license to online distributors to allow their users
to search for and play ringtone clips for promotional purposes).
Defendants also permit the Infringed Books to be used for non-consumptive research, an
emerging field that represents another potential licensing stream for authors. UF 130. See UMG,
92 F. Supp. at 352 (defendant is not free “to usurp a further market that directly derives from
reproduction of plaintiffs’ copyrighted works.. even if the copyright holder had not yet entered
.

the new market at issue, for a copyrightholder’s ‘exclusive’ rights, derived from the Constitution
and the Copyright Act, include the right, within broad limits, to curb the development of such a
derivative market by refbsing to license a copyrighted work or by doing so only on terms the
copyright owner finds acceptable”).
The fourth factor, like all of the factors in this fair use analysis, weighs against
Defendants. Accordingly, the fair use defense must fail in its entirety.
IV.
THE ORPHAN WORKS PROJECT VIOLATES COPYRIGHT LAW
In rejecting the ASA, Judge Chin emphasized 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.
28

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).6
For the reasons set forth above in Plaintiffs’ general analysis of befendants’ digitization
program, the OWP simply cannot be fair use. Once again, Defendants fail to meet their burden
on any fair use factor. There is nothing transformative about making copyrighted works
available in digital form to tens of thousands of people without compensation; Defendants have
indiscriminately chosen works without any consideration of their nature or purpose; the entire
works have been copied; and the effect on the potential market for or value of the copied work
could be devastating. UF 133. Moreover, Defendants’ OWP is inimical to Section 108(h)’s
explicit limitation of libraries’ use of orphan works to the twenty year period preceding the end
of their copyright term.

6

Paul Courant, the visionary behind the OWP, admits that UM decided to proceed with

the OWP on the heels of Judge Chin’s decision. UF 115. Defendants simply took copyright law
into their own hands, apparently hoping that no copyright “parents” would emerge to stand up
for the rights of their purportedly-orphaned children. Defendants’ judgment, like the process
they followed in misidentif~’ing orphans, had a number of “errors, some of them serious.” UF
123.
29

CONCLUSION
Defendants have exceeded the limitations on copying and digitization in Section 108, and
their conduct is neither fair use nor protected under any other provision of copyright law.
Summary judgment should be granted to Plaintiffs.
Dated: New York, New York
June29,2012
FRANKFURT KURNIT KLEIN & SELZ,

By:

P.C.

£L 4~ Poecs~K
Edward H. Rosenthal, Esq.
Jeremy S. Goldman, Esq.
Adam Nelson (Law Student)

488 Madison Avenue
New York, New York 10022
Tel.: [phone]
Fax: [phone]
[e-mail]
jgoldman~i2fldcs.com
Attorneys for Plaintjffs