A Brief Note on Future Infringement

Followers of the Google Books settlement will recall that one of the reasons Judge Chin gave in the Authors Guild opinion for rejecting the settlement was that it would “release Google (and others) from liability for certain future acts.” In yesterday’s Literary Works decision, the Second Circuit also considered what it called “future infringements.” Both settlements would have let the defendants sell access to complete copies of plaintiffs’ works. But while Judge Chin rejected the Google Books settlement on this basis, the Second Circuit would have allowed the Literary Works settlement (if not for the representation issues).

So what gives? How did these cases come to seemingly opposite results? It just so happens that I have been researching this precise issue — class-action settlements that include releases for the defendant’s future conduct — for over a year. Indeed, this past Thursday, I gave a presentation on the topic to the annual Intellectual Property Scholars Conference, a kind of works-in-progress speed-dating session for law professors. So, having thought about the matter for a good long while, I believe that the opinions are correct and consistent with each other.

Here is what Judge Chin said in Authors Guild:

This case was brought to challenge Google’s use of “snippets,” as plaintiffs alleged that Google’s scanning of books and display of snippets for online searching constituted copyright infringement. Google defended by arguing that it was permitted by the fair use doctrine to make available small portions of such works in response to search requests. There was no allegation that Google was making full books available online, and the case was not about full access to copyrighted works. The case was about the use of an indexing and searching tool, not the sale of complete copyrighted works. (emphasis added)

By contrast, the Literary Works court said:

Objectors’ first argument fails to recognize that the consolidated complaint seeks injunctive relief for future uses, and therefore contemplates these alleged future injuries. Put another way, a trial of this case would determine whether it is permissible for publishers to continue to sell and license the works. Accordingly, regardless of whether future infringements would be considered independent injuries, the Settlement’s release of claims regarding future infringements is not improper.

There is a common move here: compare the proposed settlement to what the underlying lawsuit was about. In the Google Books case, the underlying lawsuit was about scanning and searching, but the settlement went on to authorize the sale of complete books. In the Literary Works case, the underlying lawsuit was about exactly the same thing that the settlement authorized: including freelancers’ articles in commercial databases. There was a gap between lawsuit and settlement in the Google Books case, but not in the Literary Works case. That’s how similar settlement terms could be “a bridge too far” for books but permissible for articles.

There will be more — much more — to say about all of this in due course.

As someone who was a freelance journalist back in the 1980s, let me say that neither I nor most of the other magazine writers I knew were registering each article separately. We knew the magazine would register the entire issue, and according to the customs of the time, that was supposed to protect our copyrights. Our contracts (at least most of them) did not mention e-rights because no one was envisioning that those same magazines would later turn around and sell or license our articles to huge databases of articles.

And yes, a bunch of my articles got sold without my permission, and yes I care. For one thing, some of the articles formed a basis for my first book, which (in its second edition) is still in print. I don’t want downloadable competition for it.

Anyway, it was expensive to register separate articles (many of which were not well paid for to begin with), and the magazine publishers were registering the entire published issues. Also, way back when, book and magazine publishers were much more the allies of authors than they are now. Of course, they tried to negotiate favorable contractual terms for themselves. But it was also a mutual support system. It was to publishers’ advantage to create stables of reliable contributors with whom they had good working relationships, and so their attitudes were not as predatory or short-term as they are now.

I also think the requirements for registration need an overhaul for blogs and other online publications that change or are added to on a frequent basis. And yes, one of the new scams is to download articles from (someone else’s) blogs and sell them as e-books or to content farms. I recently found the PDFs of the tables of contents of my books—those and the indexes are the only material posted on my website—for sale on a content farm site as “business articles.” These were completely disassociated from my name, my book titles, and my website, and therefore completely useless. Apparently, the farm just automatically sucks up PDFs from the web.

I agree that the ASA is good and thoroughly dead and that we will never see full-text access to the millions of books that have been scanned. But what are the prospects for an entirely new settlement that is narrowly-focused on the alleged infringements related to “the use of an indexing and searching tool”? Can you imagine a settlement that could be presented to the judge on the 15th that would benefit both Google and the plaintiffs’ lawyers?

When I try to envision a settlement, anything I come up with is much worse than the ASA. I am desperately hoping that I am wrong.

I am the objectors’ counsel in Freelance.

Your analysis is correct as far as it goes, which isn’t far enough. The distinction between Google and Freelance is an application of the Firefighers decision. However, the Freelance decision does not discuss, although it was argued in the briefs, the question of whether granting future rights in class member works (when the class member does not explicitly give consent) is consistent with the Copyright Act or Rule 23. Chin included the copyright issue in his opinion, although very briefly. I do not follow how the fact that future use is considered by allegations seeking an injunction somehow empowers a court to grant property rights. In no normal copyright case can the court allow future use — an injunction is mandatory. The one case cited in the opinion for future rights never discussed the issue — it simply granted them.

Posner has written a fine work on how judges think. One of his conclusions is that they tend toward pragmatism. That is the only ground I see as a basis for the Freelance decision.

What I’d like to know about the Freelance decision, is, do writers who object to their works being illegally offered for sale have to start all over again with a new lawsuit that has new class definitions?

Frances, the lawsuit is still on, at least for the time being.

The way that I would analyze the future-rights issue is a bit different. The releases a class can be held to in a settlement can go no further than the claims the class could have lost had the case gone to trial. In the Freelance case, if the defendants had prevailed on their legal theories, then they would have been allowed to continue engaging in the released conduct (distributing the articles in their electronic databases).That wasn’t possible in the Google Books case, where a lawsuit over scanning and searching could never have tested the legality of selling complete books.