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.
|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”).
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.
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.
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.