Background
On
June 10th, 2014, the United States Court of Appeal for the 2nd
Circuit handed down its decision in Authors
Guild v. HathiTrust, a case
dealing with copyright and the digitization of print books. The Court found
that Hathitrust’s digitizing books for the purpose of enabling research
constitutes fair use.
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| Image by Renjith Krishnan |
Hathitrust is an amalgam of 80 American
universities and other institutions. Its mission is to digitize and preserve
the print books contained in the catalogues of its constituent members. The Hathitrust
Digital Library serves three different purposes:
1) Search functionality – The digital
library lets a user search for terms contained in books included in the
database. For books that are currently protected by copyright, the search engine
will not display any text unless expressly authorized to do so by the copyright
holder; it will merely display page numbers of books contained in the catalogue
in which the search terms appear.
2) Enabling
individuals with “print disabilities” – Individuals with print disabilities
are able to access full text versions of the books contained in the catalogue. Print
disabilities includes people with perceptual disabilities such as blindness,
but also includes individuals with other physical disabilities that would prevent
them from being able to turn the pages of a print book.
3) Book
replacement – The system would allow member institutions to print replacement
copies of physical books in their catalogues that have been lost, damaged or
stolen (and a new copy cannot be obtained at a “fair price”).
District Court
The Authors Guild and other individual and
institutional Plaintiffs sued Hathitrust in the District Court for injunctive
and declaratory relief. Hathitrust moved for summary judgement arguing that its
digitization project constituted fair use. It also argued that allowing access
to full text versions of the books by individuals with print disabilities is
protected by §121 of the U.S. Copyright Act (Also known as the “Chafee
amendment”).
The relevant portion of §121 reads as follows:
(a) Notwithstanding the provisions of section 106,
it is not an infringement of copyright for an authorized entity to reproduce or
to distribute copies or phonorecords of a previously published, nondramatic
literary work if such copies or phonorecords are reproduced or distributed in
specialized formats exclusively for use by blind or other persons with
disabilities.
At the District Court
level, the Trial Judge found that all three of the above listed functionalities
constituted fair use. The Judge found specifically that the uses were “transformative”.
In Campbell v.
Acuff-Rose Music, 510
U.S. 569 (1994), the United States Supreme Court determined that
when the use of a copyright protected work is transformative in nature, it is
more likely to be considered fair.
The Judge also determined
that Hathitrust’s argument based on the Chafee amendment was sound. According
to §121 authorized entity means: “a nonprofit organization or a 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”. The Trial Judge found that Hathitrust’s
members could fit within that definition.
Hathiturst also made an
argument as to the standing of some of the Plaintiffs. The Court acquiesced here
as well and struck certain institutional Plaintiffs, including the Writers’
Union of Canada and the Union des Écrivaines et des Écrivains Québécois, from
the suit.
Appeal Decision
The Court of Appeal for
the 2nd Circuit reviewed the case de novo. They found that
the Trial Judge’s decision as to the standing of certain Plaintiffs was right
in law. Those Plaintiffs were not themselves the owners or exclusive licensees
of the copyright in the works of their members. 17 U.S.C. §501(b) only allows owners
of “an exclusive right under a copyright” to sue for infringement thereof.
Moving to the fair use
argument, the Court of Appeal agreed with the Trial Judge that all three
functionalities constituted fair use. The Court went through a rather detailed
description of the fair use doctrine and its position of central importance to copyright
law.
The Court then undertook
the four-factor analysis set out in §107 of the Copyright Act which sets out
the following considerations for determining whether a use is fair:
(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
(4) the effect of the use upon the potential market
for or value of the copyrighted work.
Each of the three
functionalities was submitted to this four-factor analysis. Dealing first with
the search functionality, the Court found this to be a fundamentally transformative
use of the work. For the use of a work to be transformative, the Court writes
that there must be more than a mere repackaging or republishing.
The Court of Appeal compares
the search functionality with other instances of transformative use culled from
the jurisprudence. It found that “Full‐text search adds a great
deal more to the copyrighted works at issue than did the transformative uses we
approved in several other cases”. One of the case pointed to was Prince v.
Cariou (Discussed here),
a case in which an appropriation artist used a photographer’s photos to create
a collage type work. In that decision, the 2nd Circuit found that
the use was transformative, even though the artist Richard Prince was operating
in the same medium as Patrick Cariou, the photographer.
The Court of Appeal more
or less brushes off the second fair use factor as being inconsequential. They
found that factors three and four favoured a finding of fair use.
In addition to being
covered under the Chafee amendment, the Court found that the making available
of full-text versions of the works for people with print disabilities
constitutes fair use. This view was expressly endorsed by the U.S. Supreme Court
in Sony
Corp. of America v. Universal City Studios, Inc. Though the Court of Appeal found that the second factor militated
against a finding of fair use, they found that factors one, three and four cut
in favour of it.
Finally,
with regards to the preservation of books, the Court of Appeal felt that the
matter was improperly dealt with by the District Court. They vacated the Trial
Judge’s order and remanded this issue for a technical reason – namely that the
record did not show that any of the Plaintiffs owned copyright in books that
have been or are currently affected by this functionality. Since the U.S.
Constitution only allows Federal Courts to hear actual “cases and controversies”,
the Plaintiffs did not have standing with reference to speculative claims.
Thoughts
This
decision is particularly important in light of the coming decision in Authors
Guild v. Google, a case dealing with Google’s own book digitization
project. One important factual difference between this case and the Google
Books case is that when an individual searches for text in Google, the search
engine will actually display snippets of copyright protected works containing
the search terms. The Hathitrust Digital Library merely supplies the page
numbers of the books in which the search terms may be found. This, however,
seems far from dispositive given the Court’s emphasis on the transformative
nature of full-text searchability of books.
On
that point, I have to disagree with the 2nd Circuit’s reasoning.
While enabling the full-text search of entire catalogues of books is
certainly innovative and useful, I am not sure it is transformative. When one
thinks of a transformative work, one thinks of a remixing or mashing-up of
existing content to create substantially new content. In the Cariou case
cited by the Court of Appeal, the artist Richard Prince took photographs taken
by Cariou and altered them in a visually obvious manner by superimposing other
images onto them and adding visual effects.
When
Hathitrust (or Google) digitizes a book, the substance of the book remains
exactly the same. While there is a format-shift taking place, there is no transformation
of the work on a substantive level. Furthermore, even if there is a
transformation, it is not being carried out by the people ultimately making use
of the copyright protected work.
While
it carries no weight in the U.S., the Supreme Court of Canada’s decision in Alberta
(Education) v. Access Copyright found that the relevant perspective for
determining whether a dealing is fair is that of the end user of the
copyrighted work. That case dealt with the ability of teachers in Alberta to
photocopy portions of literary works in order to give their students reading
and research projects. Access Copyright argued that because teachers made
several copies of copyright protected works (one for each student), the dealing
was less fair. The Court disagreed. It wrote that the relevant perspective was
that of the student (the individual engaging in the protected activity, private
study) and not the teacher who was merely acting as an intermediary.
Applied
to the current case, the 2nd Circuit asked and answered the wrong
question. Instead of deciding whether Hathitrust’s digitizing is a
transformative use of the copyrighted content (Which I think it is not), they
should have instead asked if users interacting with the books in this novel way
–i.e. searching the full-text of the book in order to find specific terms- is a
transformative use of the book (which I think it is). I am therefore of the
opinion that the 2nd Circuit reached the right result for the wrong
reasons; and they did so employing an ill-fitting analysis.
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