Yesterday, the Second Circuit Court of Appeals decided four issues that support library usage of copyrighted works via fair use. The court held that 1. creating copies of copyrighted works for the purpose of making a full-text searchable database, and 2. providing those works fully accessible to individuals with disabilities are both legal under the fair use doctrine. Further, the court held that 3. the Authors Guild did not have standing to sue on behalf of other copyright holders, and 4. the issue of whether it is copyright infringement for the Hathi Trust Digital Library (HTDL) to digitize orphan works is for now a moot point, and not ripe for adjudication.

Creating a full-text searchable database is fair use

The court agreed with the district court that the HTDL utilization of copyrighted works to create a full-text searchable database is fair use. The Authors Guild argued that the copies themselves equated to infringement and that the database presented a security risk in that hackers could breach the database and obtain copies of copyrighted works and disseminate them freely. The court disagreed with both of these assertions, and reasoned 1. when using the database only snippet views are shown, and valid and reliable security software is implemented such as “choke,” which prevents inappropriate amounts of a document to be displayed and it thwarts mass downloads of documents. The court also heavily relied on transformative use, which I wrote about last week. Most courts currently examining copyright infringement issues are following the current judicial trend of deeming copying of copyrighted materials fair use when said use is transformative. This appellate court described in great detail that transformative use occurs when a subsequent user creates a derivative of an original work that serves a separate purpose, creates a different character, or generates a new use. This court also echoed other courts in opining that when a derivative is transformational (first factor of fair use), the other three factors do not hold as much weigh in the fair use analysis. That statement is very important for libraries, as libraries often make copies of protected works but the copies create transformative purposes. The court referenced several recent cases that followed these lines of transformational reasoning: Perfect 10, Inc., 508 F.3d at 1165; Arriba Soft Corp., 336 25 F.3d at 819; and A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630, 639‐40.

Providing these works to disabled individuals is fair use

In deciding whether providing access to the copies of copyrighted works for disabled individuals is infringement, the court held such copying and provision of access was not transformational. The court reasoned that such copying did not create a new purpose, character, use… of the material. In other words, the original creation of the work was to disseminate information to a reader. The court cited other cases that reasoned that changing formats such as translations of a work from English to Spanish, or creating an audio book from a print book, are merely derivatives, not serving a new purpose, character, or use.

However, the court held that such use is still fair use, and it cited legislative history and another case that stated “Making a derivative 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.” Sony Corp. of Am., 464 U.S. at 15 455 n.40. The court also referenced legislative history that declared The House Committee Report that accompanied codification of the fair use doctrine in the Copyright Act of 1976 expressly stated that making copies accessible “for the use of blind persons” posed a “special instance illustrating the application of the fair use doctrine . . . .” The court also reasoned that publishers usually do not make copies of works for the disabled, and authors usually forgo any royalties that are generated for such copies. Further, the number of accessible books currently available for the blind are approximately only a few hundred thousand, thus the market effect of such copying and access to benefit disabled individuals would be miniscule. Therefore, the court held such use is fair use.

I do not completely agree that making copies for disabled individuals in not a transformational use. I am not sure other judges or justices would agree either. I do not think translations of a work, or changing formats of a work (print to audio-book) is the same endeavor as changing a print or digital work to an interface with which a disabled individual may interact. However, I suppose fair use was reached in this case based on legislative history, so perhaps the judge’s analysis is not as important to most, as long as the correct decision was made.

Preservation and orphan works

The court mandated that the district court reevaluate the standing issue regarding whether the HTDL can preserve digital copies of the books in this collection in perpetuity. The appellate court noted that the district court never determined whether the Authors Guild had standing to adjudicate this claim. In essence, a plaintiff has standing to sue if they have a legitimate interest in a case. For example, when Michael Jackson died, many of his family members filed lawsuits to receive the money and other legal rights to his property, and they were entitled to lawfully sue Jackson’s estate because they were his legal heirs, or they had contracts with him… However, I could not have sued to obtain notoriety rights or money from his estate because I was not mentioned in his will, I was not a blood relative… So, I would not have had standing to sue his estate. Similarly, in this case, the court notes that § 501 of the Copyright Act does not permit copyright holders to choose third parties to bring suits on their behalf. Thus, the actual copyright holders should have brought suit in regard to the preservation claim, not the Authors Guild, which does not have standing. As a side note, the copyright holders still could file suit for this preservation claim.

Orphan works project

In this part of the lawsuit, the Authors Guild was basically claiming that if the HTDL ever proceeded with offering orphan works for public view then whatever procedures they implemented would equate to copyright infringement. The court seemed to find such an allegation ludicrous, and rejected the issue as not being ripe for adjudication. In other words, since the HTDL is not currently offering digital access to orphan works no hardship is being presented to unknown copyright holders. The court reasoned that how could anyone know whether the procedures utilized to implement an orphan works distribution would equate to infringement when the project has been on hold. The courts refused to play soothsayers on this issue.

In sum, this case is another great win for fair use and libraries. I do not completely agree with the analysis regarding whether providing access to disabled people is transformational, but it was deemed fair use none-the-less. Also, looking ahead, this decision may foretell how the Google Books case will be analyzed and decided. Also, one or both of these cases (HTDL and Google Books) may end up at the Supreme Court level. I think it would be a gamble for the Authors Guild to appeal to that level (and the Supreme Court may not even take the case on appeal), but they are well funded and they may do so. I look forward to seeing how the Google Books appeal reads.