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

Filing 67

REPLY 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

REPLY MEMORANDUM OF LAW IN FURTHER 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(~flcks.corn
jgo1drnan(Z~fkks.com
Attorneys for Plaintiffs

TABLE OF CONTENTS

TABLE OF AUTHORITIES

ii

PRELIMINARY STATEMENT

1

ARGUMENT

2

I.

THE COPYRIGHT ACT DOES NOT ALLOW PREEMPTIVE DIGITIZATION

2

II.

DEFENDANTS’ SYSTEMATIC MASS DIGITIZATION CANNOT, AS A MATTER
OF LAW, CONSTITUTE FAIR USE
4

III.

DEFENDANTS’ MASS DIGITIZATION AND ORPHAN WORKS PROGRAMS
EXCEED THE LIMITATIONS SET FORTH IN SECTION 108

9

A.

Defendants Overlook the Commercial Motives of their Patron Google

9

B.

None of the Copies Were Permitted Under Section 108(c)

10

C.

The Mass Digitization Program is “Systematic” in Violation of 108(g)

11

D.

The Orphan Works Project is Not Permitted Under Section 108(e)

11

IV.

INTERVENORS’ AND PROPOSED AMICI’S CLAIMED THREATENED HARMS
ARE IMAGINARY
12
A.

The Chafee Amendment Does Not Permit Defendants’ Mass Digitization

13

B.

Proposed Amid See Danger Where None is Present

14

CONCLUSION

15

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

5

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

12

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

4

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

5

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

5

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

6
Legislative History

H.R. Rep. No. 94-1476 (1976)
S. Rep. No. 105-190 (1998)

9, 10
6
Rules

Federal Rule of Civil Procedure 12(c)
Federal Rule of Civil Procedure 12(f)

1
2
Statutes

17 U.S.C.
17 U.S.C.
17 U.S.C.
17 U.S.C.
17 U.S.C.
17 U.S.C.

§
§
§
§
§
§

107
108
117(1)
121
1201(a)
1201(f)

passim
passim
5
2,13,14
6
6

11

Other
Hirtle, Peter B., Digital ILL and the Open Library, October 23, 2007, at
http:/Iblog.librarylaw.comllibrarylaw/2007/1 0/digital-ill-and.html

3

Hirtle, Peter B., Emily Hudson & Andrew T. Kenyon, COPYRIGHT & CULTURAL INSTITUTIONS:
GUIDELINES FOR DIGITIZATION FOR U.S. LIBRARIES, ARCHIVES, AND MUSEUMS 115 (2009),
available at http://ssrn.comlabstract=1495365
10
Maurer, Marc (President of Defendant Intervenor National Federation of the Blind), Comments
on the Topic ofFacilitating Access to Copyrighted Works for the Blind or Persons with Other
Disabilities (Apr. 21, 2009)5, at
http://www.copyright.gov/docs/sccr/comments/2009/rnaurer.pdf
RECOMMENDATION OF THE REGISTER OF COPYRIGHTS (October 27, 2003) 42,
http://www.copyright.gov/120 1/docs/registers-recommendation.pdf

13, 14

at
7, 8

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

(17U.S.C. 108) 96 (1983)

6,7

111

PRELIMINARY STATEMENT
In opposition to Plaintiffs’ straightforward motion pursuant to Federal Rule of Civil
Procedure 12(c) for partial judgment on the pleadings, Defendants attempt to avoid the legal
implications of their conduct by raising numerous straw man arguments that have no bearing on
Plaintiffs’ motion. Plaintiffs do not claim that the fair use defense is unavailable to libraries and
archives. Rather, Plaintiffs contend that Defendants’ admitted digitization of millions of
copyrighted works in partnership with Google, one of the world’s largest commercial enterprises,
does not, as a mailer of law, constitute fair use or qualify for any other exemption to
infringement under the Copyright Act. There is no question that libraries may invoke the fair use
defense under different circumstances. But this case is not about individual instances of
researchers relying on fair use to make use of a copyrighted work or about visually-disabled
library patrons gaining access to a large-print or other specialized format of a book. The issue
before this Court on this motion is whether the mass digitization program (“MDP”) and Orphan
Works Project (“OWP”) that Defendants admit to undertaking are permissible under the
Copyright Act.
Plaintiffs also do not claim that among the ten million volumes of works that Defendants
indiscriminately digitized there are no works that are deteriorating, lost or stolen and unavailable
on the market, or works that a person with a print disability may one day ask to have reproduced
in a specialized format. Rather, Plaintiffs contend that there is nothing in the law to justify
Defendants’ preemptive digitization of millions of books without permission, in total derogation
of the copyright interests of authors and other rightsholders, just because there is a possibility
that a subsequent use of a particular work may later be determined to have been permitted by
copyright law. Defendants have no more right to copy every book in a library than they would to
copy every record in a music library or every painting in an art museum.

As Judge Chin explicitly stated in the Google Books case involving the same mass
digitization program that is at issue in this case, it is up to Congress, not private parties, to
determine whether the balance of rights and interests in the copyright law should be changed and
how to safeguard the varied interests of copyright creators and users. Defendants should not be
permitted to do an end run around Congress and the rights of copyright owners.
ARGUMENT
Defendants raise procedural quibbles about the timing and standard on a motion for
judgment on the pleadings dismissing certain of their affirmative defenses, but provide no
meaningifil argument as to why this is not exactly the correct procedure to use where the critical
facts alleged by Plaintiffs have been admitted and the case raises purely legal questions as to the
application of those facts to a statutory scheme.’ For the reasons set forth below, Defendants’
defenses must fail.
I.
THE COPYRIGHT ACT DOES NOT ALLOW PREEMPTIVE DIGITIZATION
Defendants argue that the Court cannot decide whether Defendants’ MDP or OWP are
permissible under Sections 107, 108 or 121 because there is the possibility that Defendants will
determine, after having indiscriminately digitized millions of books, that copying a particular
work happens to fall into one of the exemptions to copyright infringement. In other words,
Defendants claim that they are entitled to digitize their entire collections without regard to their
physical condition, in-print/out-of-print status, availability for purchase on the market, or
whether any particular books have been requested by a patron, another library, or a person with a

‘Defendants cite one case that treated a motion for partial judgment on the pleadings under Rule
12(c) as a motion under Rule 12(f) to strike a specific defense, but then admit that the legal
standard for both motions is the same. Def. Mem. at 2, n. 4.
2

print disability, and then to justif~j their actions after the fact by cherry picking from the list of
exemptions available under the Copyright Act. But the Copyright Act does not countenance the
preemptive digitization scheme adopted by Defendants. Rather, each exemption under which
Defendants seek reflige sets forth particular conditions that must be satisfied before any copies
are made. See, e.g., 17 U.S.C.

§~

108(c) (library must first determine that (1) the work is

“damaged, deteriorating, lost, or stolen” and (2) “an unused replacement cannot be obtained at a
fair price”), 108(d) & (e) (library must have first received a request from a “user” or “another
library or archives”).
Defendants knew that theirpost hoc rationalization would be illegal under copyright law.
Indeed, one of Defendants’ own representatives, Peter Hirtle, Defendant Cornell University’s
Senior Policy Advisor and an expert on intellectual property issues relating to libraries, coined
the term “pre-emptive digitization” to describe a program launched by several libraries, pursuant
to which they would scan out-of-print, in-copyright works and offer those works to library
patrons through the interlibrary loan (“ILL”) system. See Peter B. Hirtle, Digital ILL and the
Open Library, October 23, 2007, at http://blog.librarylaw.comllibrarylaw/2007/l 0/digital-illand.html (last visited May 7, 2012). While Mr. Hirtle believes that “[djigitizing ILL requests is a
valuable public service, which is why some libraries have been doing it for quite awhile,” he
concluded that such programs constitute impermissible “pre-emptive digitization[.]” Id. Mr.
Hirtle wrote that before “a library may use Section 108(e) of the Copyright Act to make a copy
of an entire book for delivery to a patron either directly or through ILL, and that copy can be
digital.

.

.

the library has to clear some hurtles first.” Id. (listing

§

108(e) requirements).

Is this inefficient? Yes. Would it be better ~f libraries could pre-emptively digitize
copyrighted works, store them safely, conduct the market test when an ILL request
arrives, and then deliver the book to the user no copy can be found? Yes. But
this is not what the law currently allows.

3

Id. (emphasis added).
Defendants’ and Intervenors’ reliance on the various exemptions in the Copyright Act to
justifS’ their mass digitization and proposed distribution of orphan works is similarly misplaced,
however economical, convenient and desirable it may be to create a shared digital repository of
millions of copyrighted books or to begin sharing so-called “orphan” works with the public. Cf
Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 559 (1985) (“To propose
that fair use be imposed whenever the social value of dissemination outweighs any detriment to
the artist, would be to propose depriving copyright owners of their right in the property precisely
when they encounter those users who could afford to pay for it.”) (brackets, quotation marks and
ellipses omitted).
Defendants may not copy first and ask questions later.
II.
DEFENDANTS’ SYSTEMATIC MASS DIGITIZATION CANNOT,
AS A MATTER OF LAW, CONSTITUTE FAIR USE
Defendants contend that it would be procedurally improper to grant judgment on the
pleadings because irrespective of whether their conduct falls within the protections of Section
108, it qualifies as fair use under Section 107. As predicted in Plaintiffs’ opening brief,
Defendants base this argument almost entirely on the so-called savings language included in
Section 108(0(4), which provides that “nothing in this [Section 108] in any way affect the right
of fair use as provided by section 107.” Defendants miss the point of this provision.
First, as explained in Plaintiffs’ opening brief, rather than permitting libraries to continue
to conduct their activities under the general framework of fair use, Congress enacted Section 108
to codify the boundaries of a library’s right to reproduce copyrighted works for purposes of
preservation and replacement, as well as the factors they must consider and the order in which

4

they must consider them to avoid liability for copyright infringement. See P1. Mem. at 9-11; Am.
Geophysical Union v. Texaco, 60 F.3d 913, 917 (2d Cir. 1994) (“Congress has thus far provided
scant guidance for resolving fair use issues involving photocopying, legislating spec~ically only
as to library copying[.]”) (emphasis added). Although Section 108(0(4) leaves room for
libraries to assert a fair use defense under certain fact scenarios such as a limited use of a
particular work for purposes not specifically addressed by Section 108, when it comes to mass
and systemic copying, the limits of fair use must be determined by reference to Section 108. See
Morales v. Trans WoridAirlines, Inc., 504 U.S. 374 (1992) (“[T]he specific governs the
general.”).
Second, Defendants unsuccessfully rely on Sega Enterprises Ltd. v. Accolade, Inc., 977
F.2d 1510 (9th Cir. 1993), to support their argument that Section 108 merely establishes a “safe
harbor” for conduct that is “lawful per se” while Section 107 establishes a defense to
infringement. Def. Mem. at 4. In that case, Sega, a videogame console manufacturer, argued
that Accolade’s fair use defense in a case where it had disassembled Sega’s computer code in
order to understand its non-protectible elements was precluded by Section 117 of the Copyright
Act, which permits copying of a computer program if the copy “is created as an essential step in
the utilization of the computer program in conjunction with a machine and.
maimer.” 17 U.S.C.

§

.

.

is used in no other

1170). The court rejected Sega’s argument that the specific language of

Section 117 provided the only exceptions to infringement, holding that “[t]he fact that Congress
has chosen not to provide aper se exemption to section 106 for disassembly [of code] does not
mean that particular instances of disassembly may not constitute fair use.” 977 F.2d at 1521.
Defendants attempt to analogize this case to Sega by claiming that “[h]ere too, Section
108 defines categories of copying by libraries that are lawful per se while Section 107
establishes a defense to a claim of infringement.” Def. Mem. at 4. What Defendants overlook,
5

however, is the vast difference between the narrow scope of Section 117, which did not even
address the legal ramifications of reverse-engineering computer code, and Section 108, which
represents a carefully-negotiated regime for libraries and archives, specifying the precise extent
to which they are permitted to copy works for purposes of preservation, replacement and
fulfillment of patron requests. While Section 117 was not specific enough to govern the legality
of Accolade’s conduct in one case, Section 108 speaks directly to the activities undertaken in the
MDP and OWP overall, and must control the Court’s analysis.2
Third, contrary to Defendants’ attempt to distinguish Universal City Studios, Inc. v.
Corley, 273 F.3d 429 (2d Cir. 2001), the Second Circuit’s interpretation of the DMCA’s savings
clause in that case is entirely consistent with Plaintiffs’ position here: a savings clause cannot be
used to eviscerate another section of the Act, whether that section is the DMCA’s anticircumvention prohibition in Section 1201(a) of the Copyright Act or the detailed regime for
systematic copying by libraries laid out in Section 108. The current situation, in which Congress
has carefully considered competing interests and legislated specific restrictions and
requirements, is precisely what was before the Second Circuit in Universal City Studios when it
rejected defendant’s attempt to rely on fair use.
Fourth, Defendants fail to explain why the Court should not be persuaded by the Register
of Copyright’s conclusion that “fair use privileges are not available on a broad and recurring
basis once the copying permitted by

2

§

108 has occurred” and that “much of ‘108’ photocopying

In addition, Defendants ignore the fact that Sega preceded the 1998 passage of the Digital

Millennium Copyright Act (“DMCA”), which amended the Copyright Act to include a provision
expressly permitting the reverse engineering of computer code under certain circumstances. See
17 U.S.C. § 1201(f). Now, the question whether a case of reverse engineering is permitted by
copyright law is primarily governed by Section 1201(f) rather than fair use. See S. Rep. No.
105-190, at 32(1998) (Congress intended § 1201(1) to codify Sega).
6

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

(17 U.S.C. 108)96(1983) (the “1983 REPoRT”). Instead, Defendants

simply state that “[t]he 1983 Report did not adopt the radical position espoused by Plaintiffs
here, namely that fair use should not apply at all.” Def. Mem. at 5. But no such “radical
position” was asserted by Plaintiffs, who acknowledge that fair use protections can apply to
libraries —just not when the use is the copying of millions of books “on a broad and recurring
basis,” well beyond the specific strictures of Section 108.
Ffrih, if the 1983 REPORT were not clear enough, in 2003 the Register of Copyrights
addressed the same issue and reached the same conclusion. In that year, the Internet Archive

—

“a non-profit library that maintains a collection of websites, software and other works in digital
formats in a digital archive”

—

sought to obtain an exemption to the DMCA’s anti-circumvention

provisions that would sanction the Internet Archive’s preservation of software applications
stored on outdated media (e.g., the migration of data from floppy disks to hard drives) by
allowing the Internet Archive to circumvent once prevalent anti-copying mechanisms.
RECOMMENDATION OF THE REGISTER OF COPYRIGHTS

(October 27, 2003) 42, at

http://www.copyright.gov/l 20 l/docs/registers-recommendation.pdf.
Just as Defendants argue here, the Internet Archive asserted that its proposed preservation
activity was a non-infringing use under Sections 107 and 108 of the Copyright Act. Id. at 51.
The Register disagreed, observing that “[b]ecause §108 was enacted specifically to address
reproduction by libraries and archives, and was amended by the Digital Millennium Copyright
Act to address certain digital issues, analysis of noninfringing archival and preservation activities
logically begins with that section.” Id. Turning to Section 108(c), the provision covering the
7

extent to which libraries may copy published works for replacement purposes, the Register noted
that “Section 108(c) does not authorize generalized preservation activities; it is limited by its
terms.” Id. at 52 (emphasis added). Under Section 108, libraries are permitted to make digital
copies of works only after they have determined that the works to be copied have been damaged,
lost or stolen. Id. Because the Internet Archive sought an exemption that would allow it to make
preservation copies of older software without having first determined that the works to be copied
were damaged, lost or stolen, or that unused replacements could not be obtained at a fair price,
the Internet Archive’s proposed copying surpassed the limits of Section 108(c). Id. at 52-54.
The Register then rejected the Internet Archive’s argument that its use was non-infringing
fair use under Section 107:
The Register does not recommend broadening the exemption based on fair use,
which is codified in § 107. In determining whether libraries and archives may
circumvent access controls for the putpose ofsystematic preservation ofdigital
works, the Register believes that reliance on §107 is inappropriate. While it is
true that some preservation activity beyond the scope of§1 08 may well constitute
afair use, it is improper in this context to generalize about the parameters of
§107.
Id. (emphasis added). The Court should likewise reject Defendants’ identical fair use argument.
Finally, contrary to Defendants’ assertions, the legislative history of Section 108
confirms that the fair use savings clause was included to address the isolated creation of copies
made by or at the request of individual library patrons under circumstances that are not addressed
in Section 108. See 1983

REPORT

at 96 (“The Copyright Office does not believe that Congress

intended that there should never be fair use photocopying “beyond”

§

108. On certain infrequent

occasions, such copying may be permitted.”) (emphasis in original). The House Judiciary
Committee Report on the 1976 Act, cited by Defendants and Amici (Def. Mem. at 6; Amici Br.
at 15) is clear in this regard: “Nothing in section 108 impairs the applicability of fair use to a

8

wide variety of situations involving photocopying or other reproduction by a library of
copyrighted material in its collection, where the user requests the reproduction for legitimate
scholarly or research purposes.” See H.R. Rep. No. 94-1476 (1976), at 78 (emphasis added).
To drive the point home, contrast the Section 108(0(4) fair use illustration provided by the
House Report

—

“In the case of music, for example, it would be fair use for a scholar doing

musicological research to have a library supply a copy of a portion of a score or to reproduce
portions of a phonorecord of a work,” id.

—

with Defendants’ claim that it is fair use for libraries

to contract with Google to digitize, copy and share millions of works in their collections.
III.
DEFENDANTS’ MASS DIGITIZATION AND ORPHAN WORKS PROGRAMS
EXCEED THE LIMITATIONS SET FORTH IN SECTION 108
Given that Defendants’ admitted conduct indisputably goes well beyond the permitted
limits of Section 108 in terms of, among other things, the circumstances of the copying, the
number of copies made and the failure to search for replacement copies, one would think that
they would stick with their fair use argument and not address the other reasons set forth by
Plaintiffs as to why their conduct is not protected by Section 108. In other words, if Defendants
concede that their actions are outside of the scope of Section 108 for two or three reasons, it
should not matter if there are two or three other reasons as well. But perhaps suggesting some
discomfort with the fair use argument, Defendants dispute Plaintiffs’ other arguments as to why
Section 108 prohibits their conduct. These arguments also fail.
A.

Defendants Overlook the Commercial Motives of their Patron Google
Defendants claim that they satisfy Section l08(a)(1)’s requirement that any copy must be

“made without any purpose of direct or indirect commercial advantage” because they are non
profit educational institutions without commercial motive. Def. Mem. at 11. But this argument

9

ignores the role of Google in this project. Nothing in the statute supports Defendants’
interpretation of the term “direct or indirect commercial advantage” as applying only to the
libraries and not their patrons as well. Indeed, the legislative history cited by Defendants
supports Plaintiffs’ position that Section 108 prohibits libraries from making copies in response
to a patron request with the knowledge that the copies are to be used for that patron’s
commercial advantage. See H.R. Rep. No. 94-1476 (1976), at 74 (copies made for “indirect
commercial advantage” include “photocopying done by or for libraries or archival collections
within industrial, profit-making, or proprietary institutions[.]”) (emphasis added). Plainly, the
copies made here are to the commercial advantage of Google.
B.

None of the Copies Were Permitted Under Section 108(c)
As explained above, Defendants cannot justify their MDP by claiming, after digitizing

millions of works without discrimination, that certain works may have satisfied the conditions of
Section 108(c). Their attempt to evade Section 108(c)’s three-copy limitation (Defendants admit

to making at least five copies) is even less persuasive. While they claim the three-copy limit was
based on the “national microfilm standards” [Def. Mem. at 131, the number of permissible copies
increased from one to three as part of the DMCA

—

the same statute that amended Sectionl08 to

permit copying in digital format. Congress thus understood that the three-copy limit would
govern digital copies as well, and commentators caution libraries to adhere to that limitation.
See 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.comIabstracP~1495365 (“If the library has one copy on a server
and one copy on a backup tape, then only one patron at a time would be able to generate a third
copy by copying the server copy to a local machine.”). Defendants’ feigned concern that the
three-copy limit would not permit them to make “transient” copies is unfounded, Def. Mem. at

10

14, as such copies are expressly permitted under Section 117. In any event, the millions of
works digitized, stored and shared by Defendants are preservation copies

—

the exact opposite of

transient copies, which are by nature ephemeral.3
C.

The Mass Digitization Program is “Systematic” in Violation of 108(g)
In their opposition, Defendants take the incredible position that their assembly-line

digitization of millions of books with Google was not “systematic,” arguing that Section 108(g)
does not prohibit “the digitization of millions of different works.” Def. Mem. at 16. The Court
should reject this tortured reading of Section 108(g). The introduction to that section expressly
states that a library’s reproduction rights under Section 108 “extend to the isolated and unrelated
reproduction or distribution of a single copy
17 U.S.C.

§

[1 of the same material on separate occasions.

.

108(g). Defendants’ argument that each of the digital copies created as part of the

MDP were “isolated and unrelated” from the other millions of copies is absurd. Moreover,
Section 1O8(g)(1), which Defendants do not address, forbids “the related or concerted
reproduction or distribution of multiple copies

[1 of the same material.

.

.

.“

As discussed above,

Defendants’ admitted creation of at least five digital copies of each digital work as part of a
coordinated MDP involving multiple parties blatantly violates that provision.
D.

The Orphan Works Project is Not Permitted Under Section 108(e)
In what seems like a last-ditch effort to salvage the doomed OWP, Defendants attempt to

argue that Section 108(e) permits their intended distribution of copyrighted works. Def. Mem. at
17-19. Defendants’ own analysis, however, reveals the flaw in their argument. Defendants
admit that Section 108(e) permits a library to reproduce and distribute a work only where:
~ As set forth in Plaintiffs’ opening brief, Section 1 08(c)(2) prohibits Defendants from
disseminating digital copies outside the physical premises of the library to Google or other
universities. See P1. Mem. at 14-17. In any event, it is clear that Congress carefully restricted
the library’s use of digital copies based upon the same security concerns shared by Plaintiffs. Id.
11

(1) a user makes a request for a copy, (2) before making a copy, the Libraries
have “first determine[dJ, on the basis of a reasonable investigation, that a copy.
cannot be obtained at a fair price,” (3) the copy becomes the property of the user,
(4) the Libraries have “no notice that the copy. [will] be used for any purpose
other than private study, scholarship, or research,” and (5) the Libraries display a
warning that the work is subject to copyright.”
.

.

Def. Mem. at 17-18.
While Defendants assert that the OWP “is being designed to satisfy each of these
elements,” the only support given for that statement is their allegation that the process for
identifying orphan works “will unquestionably satisfy the ‘reasonable investigation’
requirement.” Id. at 18. That may or may not be the case, but Defendants completely ignore the
first element, which requires a user request (the OWP will make works available irrespective of
a user request), and the condition precedent tied to the second element that the “reasonable
investigation” must have occurred “before making a copy” (the OWP will make available
copyrighted works that were already digitized as part of the MDP). Id. The OWP will also run
afoul of the fifth element, as the library will still retain multiple digital copies of a purported
orphan work even after a user chooses to view or download a copy.
Finally, as set forth in Plaintiffs’ opening brief, Congress would not have enacted Section
108(h), which allows libraries certain uses of orphan works in the final twenty years of their
copyright term, if such uses were already authorized by Section 108(e). Once again, Defendants
are attempting precisely the kind of end run around Congress barred by Judge Chin in his
rejection of the Google Books settlement agreement. 770 F. Supp. 2d 666, 677 (S.D.N.Y. 2011).
Iv.
INTERVENORS’ AND PROPOSED AMId’S
CLAIMED THREATENED HARMS ARE IMAGINARY
Intervenors’ and Proposed Amici’s attempt to cast the Plaintiffs as the enemy of the
visually-disabled and libraries is as unfair to Plaintiffs as it is irrelevant to this case. Plaintiffs

12

did not bring an action against Intervenors or every library, and do not contend that the making
of digital works available under the circumstances permitted by Sections 108 and 121 in any way
infringes Plaintiffs’ rights. Rather, Plaintiffs’ complaint is against five particular libraries that
contracted with Google to create and exploit a massive computerized database of digital copies
of Plaintiffs’ protected works and now seek to justify their conduct by arguing that certain copies
could, in theory, one day provide a benefit to the visually disabled, or serve some other permitted
purpose. Defendants’ approach, which is to copy everything first and seek ajustification later,
flies directly in the face of Sections 108 and 121 and must be rejected.
A.

The Chafee Amendment Does Not Permit Defendants’ Mass Digitization
There are at least two fundamental problems with Intervenors’ claim that the Chafee

Amendment (17 U.S.C.

§

121) provides a legal basis for Defendants’ right to make digitized

works available to the blind. See

mt. Mem. at 9.

The Chafee Amendment only permits the

creation of copies in “a specialized format exclusively for use by blind or other persons with
disabilities,” with “specialized format” defined as meaning “braille, audio, or digital text which
is exclusively for use by blind or other persons with disabilities.” Id.

§~

121(b)(l)(A), (d)(4).

Defendants admit that the digital files generated as part of the MDP included image files and full
text OCR files. See Answer ¶ 52. These are not file formats made “exclusively for use by blind
or other persons with disabilities,” but formats that are commonly used by all people. See Marc
Maurer (President of Defendant Intervenor National Federation of the Blind), Comments on the
Topic ofFacilitating Access to Copyrighted Works for the Blind or Persons with Other
Disabilities (Apr. 21, 2009) 5, at http://www.copyright.gov/docs/sccr/comments/2009/
maurer.pdf (noting that “[s]everal features of the statutory language raise questions about
whether it can be extended to the production of e-texts to meet general accessibility needs” and
acknowledging lack of “authoritative support” for the position that it does).
13

In addition, the Chafee Amendment only permits copies for the blind to be created by an
“authorized entity,” which the statute defines as “a nonprofit organization or governmental
agency that has a primary mission to provide specialized services relating to training, education,
or adaptive reading or information access needs of blind or other persons with disabilities.” 17

U.S.C. § 121(d)(1) (emphasis added). None of the Defendants (five universities plus HathiTrust,
which Defendants insist is really University of Michigan) have the “primary mission” necessary
to qualify as an “authorized entity” under Section 121. See Maurer, at 5 (seeking “support” for
interpretation of “authorized entity” that includes university disability offices). Accordingly, the
Chafee Amendment does not provide any support for Intervenors’ position in this case.4
B.

Proposed Amid See Danger Where None is Present
Proposed Amici claim that Plaintiffs’ interpretation of Section 108 “would prevent

libraries from performing their most basic functions,” such as relying on the first sale doctrine to
permit circulation transactions, permitting Internet access to library users, exhibiting photographs
and reproducing multiple copies for classroom use. Amici Br. at 2. These hysterical warnings of
some dire threat to library function completely misapprehend Plaintiffs’ position in this action as
well as entire point of their motion for partial judgment on the pleadings.
The gist of Amid’s argument is that if Section 108 provides all of the ground rules for
permissible activities by libraries, then none of the other provisions of the Copyright Act that
serve to limit the exclusive rights of copyright owners under Section 106 will be available. Let
‘~

Intervenors argue that the American Disabilities Act (“ADA”) requires universities to create a

digital library like HathiTrust in order to grant blind students equal access to library collections.
Tnt. Mem. at 5. Intervenors posit that while the cost of digitizing millions of books may have
once permitted universities to avoid their ADA duties, “now that this corpus exists, it is not
unduly burdensome for the universities to allow blind students to compete on a basis of true
equality.” Id. at 6. However, this argument overlooks the fact that the “corpus” was derived
through a process that violated existing copyright law. As tempting as it may be, Intervenors
may not partake of fruit from a poisonous tree.

14

us be perfectly clear: This is not Plaintiffs’ position. Rather, as stated above, Plaintiffs’ position
is that Section 108 bars libraries and archives from engaging in the systematic duplication of
copyrighted works and sets forth the circumstances under which libraries and archives may make
duplicate copies of works for preservation and replacement purposes, and to fulfill patron
requests. Section 108 has nothing to do with routine lending practices, access to the Internet, or
the exhibition of photographs. And while the section might be relevant to the duplication of
multiple copies of a work for classroom use, the question whether an isolated reproduction of a
particular work could qualify as a fair use is worlds apart from the issues raised in this case.
Defendants’ participation with Google in their massive and preemptive digitization of millions of
copyrighted works is separate and apart from any request for any particular work. Judgment on
the pleadings herein would not affect libraries’ legitimate day-to-day activities.
CONCLUSION
For the reasons set forth above, and in Plaintiffs’ opening brief, Plaintiffs’ motion for
partial judgment on the pleadings should be granted.
Dated: New York, New York
May 11,2012
FRANKFURT KURNIT KLEIN & SELZ,

By:

1~

Edward H. Rosenthal, Esq.
Jeremy S. Goldman, Esq.

488 Madison Avenue
New York, New York 10022
Tel.: [phone]
Fax: [phone]
erosenthal(~thks.com
I goldman(~flcks.com
Attorneys for Plaintjffs
15

P.C.