The Procedural Swamp

I admit that I am baffled by the Authors Guild suit against HathiTrust and its members. Even if you are unconvinced by the particulars of the libraries’ potential defenses, this case faces massive procedural obstacles. True, it doesn’t have the class-action messes of the suit against Google. But it also has serious problems not present in the Google suit — some of them of the Authors Guild’s own making. Scrivener’s Error, who does this sort of thing for a living, has been promising a detailed post soon. But in the meantime, here are three very real concerns any observer of the #HathiSuit should be aware of. Think of them as “Why sue the libraries?”, “Why sue now?”, and “Who is suing?”

Sovereign Immunity

First, there is the problem that at least four of the six defendants are state universities. (HathiTrust is somewhere between a partnership and an arm of the University of Michigan; Cornell is a hybrid of public and private colleges, but for present purposes would probably be considered “private.”) This is a problem because states are immune from being sued in federal court, thanks to a little thing called the Eleventh Amendment. Multiple copyright lawsuits against state universities have gone down to defeat on just this point.

Some of you — lawyers who remember Federal Courts, perhaps — are no doubt objecting that the Eleventh Amendment bars only suits for money damages against states. Complaints that seek only forward-looking injunctive relief, like the one here, are allowed to go forward. This is true, but only half-true, and the other half matters. The Ex parte Young doctrine is an admittedly bizarre legal fiction that lets state officers be sued for an injunction ordering them to comply with federal law. The theory is that since federal law trumps state law, an official who disregards the federal law is acting beyond the scope of his authority and therefore can no longer claim to be protected by the state’s sovereign immunity. Thus, by naming the individual officer as a defendant, you can at least get an injunction that will have the practical effect of bringing the state into line with federal law in the future.

So far, so good. But to take advantage of Ex parte Young, you have to go along with its fiction, which means actually naming the officers as defendants. And this the Authors Guild has not done. For example, the suit names “The Regents of the University of Michigan.” That is a single defendant, the corporate body established in the Michigan state constitution that governs the University of Michigan. This is not a suit against Julia Donovan Darlow, Laurence B. Deitch, and the other six Regents in their “personal capacity,” and so it is not a suit of the sort that Ex parte Young would allow.

This is an easy enough mistake to fix. Identify the officers who are allegedly violating the law, amend the complaint to identify them, serve them with process, and the suit can go forward. Still, it’s a little baffling to me why the Authors Guild simply didn’t do this from the start and save itself the trouble of going back to do it right. Either I’m missing a doctrinal detail, or the Authors Guild fumbled just about the first thing it was possible to fumble: putting the right names on the first page of the complaint.


It has been seven years since the Google Books project began, and six years since the suit against Google was filed. Copyright ordinarily has a three-year statute of limitations. I don’t think that’s likely to be a problem in this case, as the scanning has been continuing, so that the plaintiffs here have a good shot at showing that at least one of their books was scanned within the last few years. Moreover, given HathiTrust’s preservation mission, fresh copies on new hard drives will be required now and then as old ones deteriorate, so the Authors Guild can probably make out a case that there is a likelihood of future copying which should be enjoined.

That, however, leaves the statute of limitations’s lesser-known cousin: laches. The doctrine of laches kicks in when the plaintiff when the plaintiff has shown unreasonable delay in filing suit. Here is the doctrine as explained by arguably the greatest copyright judge of all time, Learned Hand:

It must be obvious to every one familiar with equitable principles that it is inequitable for the owner of a copyright, with full notice of an intended infringement, to stand inactive while the proposed infringer spends large sums of money in its exploitation, and to intervene only when his speculation has proved a success. Delay under such circumstances allows the owner to speculate without risk with the other’s money; he cannot possibly lose, and he may win.

There are two elements to laches: (1) an unreasonable delay by the plaintiff and (2) prejudice to the defendant. In terms of delay, all of the facts giving rise to the Authors Guild’s claim to relief were apparent years ago when it sued Google. HathiTrust itself is three years old: its plans to pool scans, store, and index them are hardly new. The complaint makes hay out of the Orphan Works Project. But the only actual copyright infringement that it complains of is the scanning and storage at multiple sites. Meanwhile, the libraries have been sinking millions of dollars into the project. Expenditures made in reliance on the plaintiff’s delay are the classic example of prejudice.

Once again, the details are complicated. The suit against Google cuts both ways: it both explains some of the delay and makes the failure to bring the libraries in earlier less forgivable. Laches is usually unavailable in cases of willful infringement, but even if the libraries lose, they are extremely unlikely to be considered “willful” infringers as the term is used in U.S. copyright law. Laches is frequently said not to be a bar to injunctive relief against future infringements, but this rule may not apply when the “infringing aspect” of the future violations is the same as in the past violations — which might be the case here.

I haven’t found a case that convinces me that laches would clearly apply; I haven’t found a case that convinces me it clearly wouldn’t. The point is just that this is a real issue, one that the Authors Guild has, once again, brought upon itself. I can understand the tactical reasons it didn’t sue the libraries in 2005, particularly given the sovereign immunity issue. But the chickens set loose in 2005 have returned home, and they may well attempt to roost.


Unlike the suit against Google, the suit against the libraries is not a class action. Getting rid of the class allegations solves some problems, but it creates others. One of them is that the plaintiffs can no longer claim to act on behalf of all copyright owners whose books were scanned. Instead, it is a bedrock rule of copyright that only the “legal or beneficial owner of an exclusive right under a copyright” is allowed to bring suit.

This doctrine is known as “standing,” and it should be apparent how this presents a difficulty for the Authors Guild. There are about seven million volumes under copyright in HathiTrust collections. There are eight named plaintiffs in the lawsuit, and they list about sixty books to which they own the copyrights. That still leaves about seven million volumes unaccounted for.

Even if these plaintiffs win as to their own books, the usual language is that the winning plaintiff is entitled to an injunction against “future infringement of works owned by the plaintiff but not in suit.” The complaint asks for an injunction against “reproducing, distributing, or displaying Plaintiffs’ or any other copyrighted works.” Notice the difference? The Authors Guild wants the plug pulled on the whole HathiTrust enterprise, but it’s not clear that the court could go further than an order requiring the libraries to remove the individual named plaintiffs’ books from the collection.

The law does sometimes recognize “associational standing,” in which an organization brings suit in the name of its members. That’s what the Authors Guild and its two partners are attempting here. But even associational standing may not be enough to get the whole project shut down. As in other mass copyright cases — Napster and the reversed-on-other-grounds District Court opinion in Perfect 10 v. Google come to mind — the organizations would most likely end up being asked to give the libraries lists of their members, whose books the libraries would then have to remove from the collection. It’s also hotly debated whether associational standing even exists in copyright law; one of the two leading treatises says “yes” and the other says “no.”

The sting in the tail of the standing issue is that it may have the effect of taking the Orphan Works Program completely out of the litigation. Unless one of the actual plaintiffs in the case has a book included in the Program, or has some objective reason to fear she might be, she can’t bring suit to challenge it. That leaves the much harder claim that the scans themselves are infringing. This is one of the places where HathiTrust’s sloppiness with the orphan-identification process could come back to haunt it: I can see ways the Authors Guild might use it draw a clearer line between the named plaintiffs and the Orphan Works Program.


This post has more than the usual number of hedges and caveats. All three of these procedural topics are messy, messy, messy. I have done enough research to convince myself of everything I’ve said, but far less than I would if I were actually litigating this case. The parties’ lawyers, who are litigating this case, are getting paid to do this research, and I expect that they will put forth interesting arguments, ones that may well lead me to revise my opinions.

The takeaway is not that the lawsuit against the libraries is doomed for procedural reasons. Instead, it is that this is not some brilliant flanking movement around the swamp in which the lawsuit against Google has bogged down. This suit is going to be a slog, too. And the Authors Guild’s first sally onto the field does not leave me confident that it is entirely prepared for what lies ahead.

UPDATE 2011-09-27: Scrivener’s Error has gone live with part one of a detailed analysis of the suit. This one deals with Constitutional obstacles to the suit; more installments are on the way.

one of the two leading treatises says “yes” and the other says “no.”
Just curious, would those be “Nimmer on Copyright” and “Patry on Copyright”? And who said what?

‘states are immune from being sued in federal court’

Does this mean they can breach federal copyright law with immunity?

Do they have a sort of diplomatic immunity. I have read (in De Tocqueville) that power in America was ,at its foundation, more decentralised that power is in many other ‘federations’ , is this immunity related to that?