ARL Policy Notes
Library Copyright Alliance files amici brief in Authors Guild v. Google

On July 8, 2014, the Library Copyright Alliance filed an amici brief in the Court of Appeals for the Second Circuit in Authors Guild v. Google in favor of Google’s transformative use in creating Google Book Search (GBS). The Southern District of New York previously ruled in favor of Google, finding that GBS provided significant public benefits and constituted fair use.

The brief notes that GBS has become an essential research tool for LCA members and includes numerous examples and quotations—both in the text of the brief and accompanying appendix—from librarians explaining the value of the snippet display provided by Google. The snippet display allows librarians and researchers to identify materials that are hard to find, conduct research, developing curricula and collections, make determinations on whether to request particular books through interlibrary loans, and checking citation.

The snippet display is a critical function that makes GBS a valuable research tool yet does not substitute for the full text, displaying only three short snippets in response to a query. The brief notes that the Appellants in the case negotiated and agreed to a settlement (ultimately rejected by Judge Chin, leading to this continuing litigation) which would have allowed Google to provide a free “Preview” service that would have allowed display of up to twenty percent of the book’s text—far more than the GBS snippet display. The brief points out that “If display of 20 percent of a book did not cannibalize sales of the book, then surely display of a few snippets of a book would not do so either.”

The third section of the brief discusses the relationship between Section 108 and fair use, addressing the argument made by the amici for Authors Guild . The brief points out that the Second Circuit’s own ruling just a month prior in Authors Guild v. HathiTrust rejected the argument that the existence of Section 108 forecloses reliance on fair use. Section 108 not only includes an explicit savings clause, but the legislative intent clearly demonstrates that specific exceptions codified in the Copyright Act “do[] not limit the availability of fair use for conduct that does not fall within its scope.” Legislative history in both the Senate and the House discuss the relationship between Section 108 and fair use, noting that Section 108 was designed to give libraries a safe harbor and rights in addition to fair use.

Finally, the brief notes that the copies Google made available to partner libraries constituted fair use. Quoting the district court, the brief points out that “the purpose of the library copies is to advance the libraries’ lawful uses of the digitized books consistent with the copyright law.” Even if the Second Circuit evaluates Google’s purpose, rather than the libraries’ purpose, the brief points out that GBS did not affect the market because libraries would not have paid licensing fees to digitize books in their collections; libraries do not have the budgets to pay for digitization licenses for legacy materials nor is there an efficient mechanism to pay for such licensing. The brief emphasizes that a potential market for extended collective licensing agreements are speculative and do not constitute existing or potential traditional markets.

35 Organizations Write to TPP Ministers Opposing Lengthy Copyright Terms

On July 9, 2014, ARL joined thirty-four other organizations in sending a letter to ministers of the Trans-Pacific Partnership (TPP) negotiating parties opposing the copyright term of life plus seventy years proposed by the United States. These organizations, representing libraries, archives, authors, educators, students, digital rights advocacy groups, and technological innovators, note that this extended copyright term threatens the public domain. The letter notes that “the extension of the copyright term results in a net welfare loss to society, and effectively amounts to a transfer of wealth to a small number of multinational copyright-holding companies … This transfer of welfare in favor of large corporate copyright owners will come at the cost of those who depend upon access to copyright works that would otherwise be in the public domain—libraries, students, artists, writers, and millions of other people.”

TPP negotiators are currently meeting behind closed doors in Ottawa, Canada, in an effort to finalize negotiations for the large regional trade agreement which now has twelve negotiating parties: Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, Vietnam and the United States.

District Court Releases Order Upholding Fair Use of West Publishing and Reed Elsevier in White v. West Publishing

On July 3, 2014, the District Court for the Southern District of New York issued its memorandum and order in White v. West Publishing following its grant of summary judgment for the defendants in February 2013 finding in favor of fair use. The case involved a claim by attorneys Edward White and Kenneth Elan who claimed copyright infringement after West Publishing and Reed Elsevier placed legal briefs written by White and Elan into their Westlaw and Lexis databases.

In creating the databases, West Publishing and Reed Elsevier converts the filed legal documents into a text-searchable electronic file and is tagged with metadata to allow users to find and retrieve documents more easily. The editors also link the document to decisions and other filings in related cases and create links to authorities cited.

In finding in favor of fair use, Judge Rakoff evaluated the four statutory fair use factors:

  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.

In examining each of these factors, the district court found that three of the four weighed in favor of fair use, while one factor was neutral.

On the first factor, the district court found that the use of the briefs was transformative because the use of the briefs in the database was to create an interactive legal research tool, a “sharply different objective[]” than the original purpose of the briefs. Additionally, the district court noted that the converting, coding and linking of the documents “add[] something new, with a further purpose or different character” than the original. The district court pointed out that while the use was commercial, the highly transformative nature of the use diminished the importance of the character of the use.

With respect to the second factor, the district court noted that the briefs represented presentations of fact and law and therefore this factor weighed in favor of fair use.

The district court noted that with regard to the third factor, West and Lexis copied the entire work. However, the “defendants only copied what was reasonably necessary for their transformative use, and … the third factor is therefore neutral.”

Finally, on the fourth factor, the district court found no market harm because the databases do not provide a substitute for the original market. The court stated, “West’s and Lexis’s usage of the briefs is in no way economically a substitute for the use of the briefs in their original market: the provision of legal advice for an attorney’s clients … Furthermore, no secondary market exists in which White could license or sell the briefs to other attorneys, as no one has offered to license any of White’s motions, nor has White sought to license or sell them.” The district court also rejected the idea that a potential market exists to license briefs.

Although the district court does briefly reference potential markets, it focuses on the market effect on the original market thereby following the recent Second Circuit opinion in Authors Guild v. Hathitrust which stated that the analysis of the fourth factor “is concerned with only one type of economic injury to a copyright holder: the harm that results because the secondary use serves as a substitute for the original work.” A limited focus on the harm to the market for the original work suggests that lost licensing revenue is not relevant in the fair use analysis when the use is transformative and does not impact the original market.

Jonathan Band’s Analysis of the Second Circuit’s HathiTrust Decision and What It Means for Libraries

Jonathan Band of policybandwidth recently released an analysis of the Second Circuit’s opinion in Authors Guild v. Hathitrust and what the decision means for libraries. His analysis is available here.

The library community welcomed the decision of the U.S. Court of Appeals for the Second Circuit in Authors Guild v. HathiTrust, __ F. 3d __, 2014 WL 2576342 (2nd Cir. 2014). The decision has implications for libraries that go far beyond the specific facts of the case. This paper offers some preliminary thoughts on what these implications may be.

India First to Ratify the Marrakesh Treaty for the Blind; 79 Total Signatories to the Treaty

The World Intellectual Property Organization (WIPO) Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are Blind, Visually Impaired, or Otherwise Print Disabled now has seventy-nine signatories. This treaty, also known as the “Marrakesh Treaty” or “Treaty for the Blind” was a significant achievement as the first WIPO treaty dedicated to limitations and exceptions, focusing on the rights of users rather than increasing the rights of rightholders. Significantly, India became the first country to ratify the treaty on June 24, 2014 (deposit with WIPO on June 30, 2014).

The treaty sets forth minimum standards for limitations and exceptions designed to facilitate access to accessible format works for persons who are blind, visually impaired or otherwise print disabled. It would also permit cross-border sharing of these accessible format works, allowing countries to avoid unnecessary duplication of efforts in the creation of accessible format works and also facilitate the importation of works in other languages. For example, a popular title would not have to be created in accessible format work in the United States, then again in Canada, then again in the United Kingdom, then again in Australia, and so forth. It could be created in one English speaking country then shared for the benefit of persons who are visually impaired in other English speaking countries. Persons in the United States could also benefit from this treaty through the importation of accessible format works in languages other than English, either to benefit those residing in the United States whose native language is not English, or to benefit those who are learning a foreign language. Tiflolibros in Argentina, for example, has a large library of Spanish language accessible format works that could be shared with beneficiaries in the United States if the treaty entered into force. More detailed information about the treaty is available in the “Users Guide to the Marrakesh Treaty.”

There was a recent flurry of signing activity due to Article 17 of the Marrakesh Treaty, which closed the treaty to signing one year after adoption of the treaty; June 27, 2014 was the last date for a country to sign. Signing the treaty signals that a country agrees with the treaty and essentially constitutes an endorsement of the instrument. While it does not create binding legal obligations to adhere to the requirements of the treaty, it does oblige the signatory from undermining the treaty’s objectives. Countries that have signed still need to ratify the treaty in order to be bound by it, and twenty ratifications are required before the Marrakesh Treaty will enter into force. Although the treaty is now closed to new signatures, other countries may join the treaty through a one-step process acceding to the treaty (rather than the two-step process of signing then ratifying).

A round of applause should be given to India for being the first (and currently only) country to ratify the Marrakesh Treaty, though it is expected that Kenya will soon follow. India’s swift ratification, within one year after the treaty’s adoption, is a record for any WIPO treaty and signals the importance of the objectives of the treaty.

In addition to the excellent news of the first ratification of the Marrakesh Treaty, there have also been nineteen new signatories over the last two months, twelve of which occurred over the last week. Notably, the EU signed the Marrakesh Treaty on April 30, 2014, and a number of EU member countries followed suit. The new signatories include: Argentina, Australia, Austria, Belgium, the Czech Republic, the European Union, Finland, France, Germany, Greece, Guatemala, India, Iran, Ireland, Mexico, Norway, Poland, South Korea and Slovenia. The United States signed last year on October 2, 2013.

The treaty initially opened for signature at the adoption and signing ceremony of the diplomatic conference on June 28, 2013. Fifty-one countries signed at the adoption and signing ceremony, a record number of signatories on opening day for any WIPO treaty. The full list of the seventy-nine signatories is available here. While this large number of signatories demonstrates the overwhelming support for the Marrakesh Treaty and is a reason for celebration, at least twenty of these signatories must take the next step and sign the treaty so that it may enter into force.

With India depositing its instrument of ratification, only nineteen more are needed. The United States, which already has robust limitations and exceptions to benefit persons who are visually impaired, should demonstrate leadership in this area and be one of the first twenty ratifications.

Broad Coalition Opposes Cyber Information Sharing Act of 2014

On June 26, 2014 the Association of Research Libraries joined with thirty-four other organizations opposing the Cyber Information Sharing Act of 2014 (CISA). This broad coalition sent a letter to Majority Leader Harry Reid (D-NV), Minority Leader Mitch McConnell (R-KY), U.S. Senate Select Committee on Intelligence Chairman Dianne Feinstein (D-CA), and U.S. Senate Select Committee on Intelligence Vice Chairman Saxby Chambliss (R-GA) expressing concerns that the bill would create a loophole in existing privacy laws and does not prevent the government from requesting “voluntary” cooperation from private companies in sharing information, including content of communications.

The letter raises a number of concerns, including threats the bill poses to whistleblowers and transparency. Additionally, with respect to specific privacy concerns, the letter notes that the bill creates a “danger of a potential end-run around the Foreign Intelligence Surveillance Act (“FISA”), the Electronic Communications Privacy Act (“ECPA”), the Fourth Amendment and other crucial privacy protections [which] is compounded by the potentially broad immunity conferred on sharing ‘in accordance’ with the act, and the additional absolute defense when sharing occurs in violation of the act but in ‘good faith’ reliance on the mistaken belief that the sharing is lawful.”

This letter makes several specific recommendations:

  • Ensure that DHS is the custodian of cybersecurity information voluntarily shared by the private sector, and has the authority to prevent sensitive information from being transmitted to the intelligence community and military without appropriate privacy protections;
  • Ensure that information shared is “reasonably necessary” to describe a cybersecurity threat;
  • Restrict the use of information received under the sharing authority to actual cybersecurity activities, the prosecution of cybercrimes, the protection of individuals from imminent threat of physical harm or death, or to protect children from serious threats;
  • Limit FOIA restrictions to those provided by 6 U.S.C. §§ 131-34 (2012).14
  • Require public disclosure of annual reports from relevant inspectors general describing what information is received, how it is used, who gets it and how it is treated to protect privacy.
  • Include a sunset provision in the bill keyed to these reports, which will allow the measure to expire if abuse or misuse is disclosed;
  • Allow individuals harmed by inappropriate sharing to sue the government if it intentionally or willfully violates the law.
WIPO Standing Committee on Copyright Limitations and Exceptions Meeting This Week

This week, the World Intellectual Property Organization (WIPO) Standing Committee on Copyright and Related Rights (SCCR) will meet from June 30-July 4. The agenda for this session of SCCR includes discussion of broadcasting, limitations and exceptions for libraries, and limitations and exceptions for educational and research institutions and for persons with other disabilities.

At the last meeting of SCCR which took place from April 28-May 2, the EU blocked the conclusions of the meeting, refusing to agree to language referring to “text-based” work on limitations and exceptions for libraries. Ultimately, the Chair of SCCR released the conclusions as a Chair’s document, rather than as the agreement of the WIPO member states. Because WIPO operates on the basis of consensus, a single country or group can block action at WIPO, including for example, blocking adoption of conclusions or agreement to hold a diplomatic conference. By blocking the conclusions, the EU has potentially made it more difficult to move forward on work on limitations and exceptions at SCCR.

A live webcast of this week’s SCCR, as well as meeting documents, is available here. Additional coverage of SCCR is available here.

U.S. House of Representatives Passes Amendment to End NSA Backdoor Spying

On June 19, 2014, the U.S. House of Representatives voted 293-123 to pass an amendment to the Defense Appropriations bill to cut funding for NSA backdoor spying under Section 702 of the FISA Amendments. Current NSA practices include the collection of vast amounts of information and, provided that there is a foreign “target,” the NSA can search these collections for communications of U.S. persons, thus providing a “backdoor” method of conducting surveillance on Americans. This Amendment, originally primarily sponsored by Representatives Massie (R-KY), Sensenbrenner (R-WI) and Lofgren (D-CA), would restore Fourth Amendment protections by cutting funding of current NSA practices of conducting these warrantless searches.

Majority of House of Representatives Co-Sponsor Email Privacy Act; ARL Applauds Milestone in ECPA Reform Efforts

The Association of Research Libraries (ARL) is pleased that on June 17, 2014, the Email Privacy Act, H.R. 1852, reached a milestone of 218 co-sponsors, representing a majority of support from the members of the House of Representatives.

The Email Privacy Act, originally introduced by Rep. Yoder (R-KS) on May 7, 2013, would update an outdated law known as the Electronic Communications Privacy Act (ECPA) and ensure that important Fourth Amendment privacy protections extend to online communications. ECPA was enacted in 1986 and has not kept pace with evolving technologies. The law permits government agencies to access e-mails, documents and other communications that are older than 180 days and stored online without obtaining a warrant, affording online communications with less protection than hard copy documents stored in a filing cabinet.

As libraries and universities move services into the cloud and more communications take place online, it is critical that Fourth Amendment protect information long considered to be private—including what individuals are reading or researching, and to whom they are talking—even in the digital world. The growth of the Internet has launched new forms of communications and changed the way individuals interact since ECPA’s enactment in 1986. The Email Privacy Act would change the absurd results of ECPA and require agencies to obtain a warrant for content, thereby ensuring that Fourth Amendment protections extend to online documents and communications.

A majority of the House of Representatives clearly supports the restoration of these important privacy rights and ARL urges Congress to act quickly to pass the Email Privacy Act. There is no logical reason to grant greater privacy protection for hard copy documents or traditional forms of communication than for documents stored in the cloud or e-mail and social media communications. The Email Privacy Act provides a practical solution to this absurdity.

Second Circuit Affirms Fair Use in Authors Guild v. HathiTrust

On June 10, 2014, the Court of Appeals for the Second Circuit affirmed the lower court decision in Authors Guild v. HathiTrust in favor of HathiTrust Digital Library’s (HDL) motions for summary judgment, finding that two of the three uses by HDL (creating a full-text search database and providing access to the print disabled) constituted fair use and remanding the issue of the third use (preservation) back to the district court to determine the standing of the plaintiffs to bring the claim.

The Second Circuit began its fair use analysis by noting that while the Copyright Act certain exclusive rights, “there are important limits to an author’s rights to control original and derivative works. One such limit is the doctrine of ‘fair use,’ which allows the public to draw upon copyrighted materials without the permission of the copyright holder in certain circumstances.” The court then detailed numerous examples of fair use that have been upheld by various courts, including district courts, appellate courts and the Supreme Court of the United States before going through the three HDL uses at issue.

Fair Use Factors

The Second Circuit summarized the four fair use factors codified under Section 107 of the Copyright Act and explained how these factors are evaluated. These factors 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

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

With respect to the first factor, the court noted the importance of whether the use is considered “transformative” which it defines as “something more than repackage[ing] or republish[ing] the original copyrighted work. The inquiry is whether the work ‘adds something new, with a further purpose or different character, altering the first with new expression, meaning or message …’” (quoting Campbell, 510 U.S. 16 579)). The Second Circuit rejected the district court’s implication that a use is transformative if it adds value or utility, instead emphasizing that a transformative work is “one that serves a new and different function from the original work and is not a substitute for it.”

The court noted that the second factor evaluates the nature of the work and recognizes a greater need to disseminate factual works than fiction.

The third factor addresses the amount of the copyrighted work used and the court noted, “we assess the quantity and value of the materials used and whether the amount copied is reasonable in relation to the purported justification for the use.”

Finally, citing the Supreme Court case, Harper v. Row, the Second Circuit called the fourth factor, which assesses the impact of the use on the potential market, the “single most important element of fair use.” The court noted that “[t]o defeat a claim of fair use, the copyright holder must point to market harm that results because the secondary use serves as a substitute for the original work.”

Full Text Search

The court first evaluated whether HDL’s full text search constitutes fair use. The court explains the program, noting that the Libraries create digital copies of the entire books, but HDL does not allow viewers to view any portion of the books searched, but only to identify where a search term appears in a particular book. In evaluating the four fair use factors, the court concluded that three of the four factors favor fair use and upheld the district court’s determination that the full-text search constitutes fair use.

The Second Circuit found that the full-text search is a “quintessentially transformative use” as it is “different in purpose, character, expression, meaning, and message from the page (and the book) from which it is drawn.” The court further noted that the full-text search is more transformative than other uses previously upheld as fair use by the Second Circuit as well as other circuits.

With respect to the second factor, the court did not find it to be dispositive, noting that this factor may be limited in value where a creative work is being used for a transformative purpose.

Turning to the third factor, the Second Circuit pointed to precedent that copying a work in its entirety is sometimes necessary. It found that it was “reasonably necessary” for HDL to copy the entirety of the work in order to enable the full-text search function. Accordingly, this factor weighed in favor of HDL.

Discussing the fourth factor, the Second Circuit reminded that the analysis “is concerned with only one type of economic injury to a copyright holder: the harm that results because the secondary use serves as a substitute for the original work.” Here, the Second Circuit rejected the contention that market harm has occurred finding the full-text search does not substitute for the original. The court stated that it is therefore “irrelevant” that libraries may be willing to pay licensing fees to enable this type of transformative use. The court also rejected the plaintiffs’ suggestion that the risk of a security breach would impact the market, noting that HDL undertook extensive security measures and it could find no basis to assume such a breach would occur. Consequently, the fourth factor weighs in favor of fair use and, taken together, that the overall analysis of the four factors results in a finding that the full-text search database is fair use.

Access to the Print Disabled

Turning to HDL’s use of the works to facilitate access to the print disabled, the Second Circuit concluded that this use is also protected under fair use.

With respect to the first factor, the Second Circuit rejected the district court’s finding that creation of accessible format works is transformative. The Second Circuit equated the creation of an accessible format with a derivative work, but notes that even absent a finding of transformative use, a defendant may still satisfy the first factor. In finding that the first factor favors access to the print disabled, the Second Circuit first quoted the Supreme Court’s decision in Sony Corp of America which stated that “Making a copy of a copyrighted work for the convenience of a blind person is expressly identified by the House Committee Report as an example of fair use, with no suggestion that anything more than a purpose to entertain or to inform need motivate the copying.” The Second Circuit also pointed to legislative history of the Section 107 of the Copyright Act, the enactment of the Section 121 of the Copyright Act, also known as the Chafee Act, and Congressional concern for the disabled reflected by the passage of the Americans with Disabilities Act, as evidence that the first factor weighs in favor of fair use.

While the court found that the second favor weighed against fair use, it noted that such a finding is not determinative in the fair use analysis.

Turning to the third factor, the court found it reasonable for HDL to retain text and image copies to facilitate access to the print disabled. It noted that the text copies are necessary to enable text-to-speech capabilities, but that the image copies are also of use and value for disabled patrons.

Finally, the court found that the fourth factor weighs in favor of a finding of fair use, noting that the market for accessible format works is insignificant and publishers generally do not make their books available in specialized formats. Evaluating the four factors together, the Second Circuit found that providing access to the print disabled constitutes fair use.

Preservation

The Second Circuit declined to rule on the issue of whether HDL’s storage of digital copies for preservation constitutes fair use on the basis of lack of standing or live controversy. The court stated that the record before the district court did not demonstrate whether the plaintiffs own copyrights in the works where a replacement copy would be unobtainable at a fair price and thus subject to copying by the Libraries for the purpose of creation of a replacement copy in case of loss or destruction. The court stated that “[b]ecause the record before us does not reflect the existence of a non-speculative risk that the HDL might create replacement copies of the plaintiffs’ copyrighted works, we do not believe plaintiffs have standing to bring this claim, and this concern does not present a live controversy for adjudication.” The Second Circuit thus vacated the district court’s judgment regarding this issue and remanded the standing issue to the district court. In remanding this issue back to the district court, the Second Circuit did not suggest that preservation could not be considered fair use, but instead simply expressed skepticism that the plaintiffs had standing to bring this claim.

Orphan Works Project

The Second Circuit upheld the district court’s finding that the issue regarding the orphan works project was not ripe for adjudication. Because the orphan works project was suspended with no notice that the University of Michigan intends to revive it, there is no impending harm. The court further noted that there is no hardship to the plaintiffs in not deciding this issue because “it is far from clear that the University of Michigan or HathiTrust will reinstitute the OWP in a manner that would infringe the copyrights of any proper plaintiffs. If that occurs, the Authors may always return to court.”