On Friday, the parties filed their motions for summary judgment in the HathiTrust case, along with thousands of pages of supporting documents. I’m still making my way through the filings. The heavy redactions make it easier: there’s one document consisting entirely of five pages of solid black, save only the cryptic document number UM004282. Even its title is redacted. But there are still piles of depositions and interrogatories to get through. It doesn’t help that the Public Index is being gradually nursed back to health from a bad malware infection, so I’ve been unable to post the documents there yet, either.

I thought, however, that I would summarize the arguments in the briefs themselves, to give readers a sense of how the case is developing. There are three briefs in: the Authors Guild (and other authors and groups) on the plaintiff side, and HathiTrust and the National Federation of the Blind (and individual blind students) on the defendant side. Interestingly, the three briefs take on slightly different issues. Today, I’ll discuss the prima facie case of infringement and Section 108; fair use will follow later in the week.

Infringement

The Authors Guild first presents the elements of copyright infringement: ownership of the copyright by the plaintiff and copying by the defendant. While the defendants have their own pending motions about whether the Authors Guild and other groups are entitled to sue on behalf of their members, they don’t otherwise contest the prima facie case of infringement. Nor would they. This case has never been about whether the copying happened; it’s always been about whether the copying that happened is legal.

What the defendants do contest, however, is the plaintiffs’ characterization of which conduct requires legal justification. The Authors Guild focuses on the digitization itself, on the distribution of digitized copies to multiple HathiTrust sites, and on the now-cancelled Orphan Works Project. The defendants admit that they engaged in all of these activities, of course, but they focus on the purposes to which the digitized copies are put: full-text search, preservation, and access for the print-disabled. It’s a little anomalous to have the defendants detailing more conduct than the plaintiffs, but it makes sense given the structure of the case. The plaintiffs are focusing on the mass copying; the defendants on the socially productive uses to which those copies can be put.

Section 108

The Authors Guild argues that HathiTrust does not qualify for Section 108’s copyright exemptions for libraries. This is a revamped version of its February motion for judgment on the pleadings, which argued that Section 108 couldn’t possibly apply to any of HathiTrust’s uses. The court hasn’t ruled on the first motion, leaving the Section 108 issue hanging over the case.

I’m trying to decide whether it’s strange that the defendants haven’t now argued that Section 108 does apply. At the judgment on the pleadings stage, the threshold is extremely high, because the facts of the case haven’t been developed yet. At the summary judgment stage, the threshold is lower, because there are more facts in evidence, and hence fewer uncertainties weighing on the question. Back in December, the defendants filed vigorous oppositions, arguing that Section 108 could apply to many particular uses. But most of the arguments they made were of the form, “Section 108 could_ apply to some uses of some books,” not of the form, “Section 108 does apply to these uses of these books.”

I was expecting to see this latter form of argument in the defendants’ summary judgment motions, but it isn’t there. There’s very little on Section 108 at all. I can think of three possible reasons why:

• They’re waiting for their responses to the Authors Guild’s summary judgment motion. That doesn’t help them much, though, because Section 108 is an affirmative defense that the defendants ultimately need to put in play if they hope to prevail on. They can’t play defense forever; they have to go on offense on this one.
• They’re waiting to make these arguments at trial, rather than on summary judgment. This is more plausible, but I can’t figure out what they’d be waiting for. They have evidence about specific books; that’s the kind of information that could have been presented as part of the documentation of the summary judgment motion.
• They’re giving up on the Section 108 argument because they think it’s unlikely to work, and so are saving their pages for the fair use arguments. But this raises the question of why they were previously litigating the legal aspects of Section 108 so vigorously.

In any event, here are the key questions in the parties’ Section 108 arguments:

Commercial Advantage

Section 108(a) has a threshold condition that “the reproduction or distribution is made without any purpose of direct or indirect commercial advantage.” The Authors Guild argued previously that Google’s participation renders the entire HathiTrust project inherently commercial, because it gives the libraries the free use of “digital book conversion services, valued in the hundreds of millions of dollars” (MJP 13) and “provided enormous commercial and competitive benefits to Google.” (MSJ 12). The libraries challenged the first of these back in the spring, citing legislative history for the claim that “commercial advantage” means making money, not just saving it. The Authors Guild is now arguing primarily the second claim, that the cooperation serves Google’s commercial interests; I expect to see this position contested in HathiTrust’s response.

Replacement Copies

Section 108(c) permits the creation of three copies “solely for the purpose of replacement of a copy or phonorecord that is damaged, deteriorating, lost, or stolen” on two conditions: (1) the library “has, after a reasonable effort, determined that an unused replacement cannot be obtained at a fair price”” and (2) any digital copies aren’t “made available to the public in that format outside the premises of the library or archives.” Whether specific books are deteriorating is a question of fact; the libraries have yet to come forward and argue that any specific books were indeed in need of replacement. Until they do, this defense has a hypothetical quality; it’s not actually in contention and anything the court says about it would be dictum. (The same goes for the question of whether the libraries investigated the condition of the books: maybe they did for some, but until they say so with support in the record, the issue isn’t really in play.)

But there are also legal questions here with some significant implications. For one, the Authors Guild argued that the HathiTrust process makes at least ten copies of each book—images and OCR text held in each of five places: at Google, on two HathiTrust server farms, and on two HathiTrust tape backups. HathiTrust responded by claiming that every “technical digital copy of a work” should count against the limit, since viewing a book on a computer creates a copy in memory, an argument that strikes me as beside the point, as the HathiTrust copies are hardly “technical” in the same sense as transitory copies in memory. They’re intended to be stable and enduring: that’s the point of preservation. HathiTrust may be right that the creation of more than three copies “was dictated by the medium and standards for preserving works in digital form,” but that’s a tough argument to make in the face of a statute that says “three.”

And for another, the Authors Guild challenged HathiTrust member libraries’ farming of digital copies out to Google and HathiTrust HQ, arguing that Section 108(c) requires that “digital copies will not be distributed, and will stay in the physical library.” But the statute doesn’t say “distributed”; it says “made available to the public.” So unless the Authors Guild is prepared to argue that HathiTrust is “the public” — which so far it hasn’t clearly done — the statutory text is on HathiTrust’s side here.

Articles

Section 108(d) lets libraries make copies of an “article or other contribution to a copyrighted collection or periodical issue” for patrons. The Authors Guild gave an argument that Section 108(d) didn’t apply because the digitization was en masse rather than in response to user requests. HathiTrust does not appear to be challenging this argument because it doesn’t appear to be relying on Section 108(d) at all. Section 108(d) is about copies of parts, not copies of wholes.

Private Study, Scholarship, or Research

Section 108(e) is worth quoting at length:

(e) The rights of reproduction and distribution under this section apply to the entire work, or to a substantial part of it, made from the collection of a library or archives where the user makes his or her request or from that of another library or archives, if the library or archives has first determined, on the basis of a reasonable investigation, that a copy or phonorecord of the copyrighted work cannot be obtained at a fair price, if-

(1) the copy or phonorecord becomes the property of the user, and the library or archives has had no notice that the copy or phonorecord would be used for any purpose other than private study, scholarship, or research; …

The Authors Guild challenges the applicability of this section on three grounds, which are really the same. First, the digitization is not at the “request” of a user because it involves complete collections; second, HathiTrust’s digital copies are not “the property” of library users; and third, the libraries haven’t investigated the availability of the books. These are all just objections to the bulk scanning.

HathiTrust’s response is very interesting. It has not attempted to claim that Section 108(e) eo ipso applies to the bulk scanning: instead, it argues that the Orphan Works Program would be protected under it. Thus, in effect, HathiTrust needs some other defense for the bulk scanning, but once it has the copies, claims it could use them to help satisfy patron requests. (Of course, the Authors Guild disagrees.) But arguments have a way of folding in on themselves: the claim that Section 108(e) might protect downstream uses of the digital corpus, in turn, becomes an argument that could help justify its upstream creation, say under fair use.

Systematic Reproduction

Section 108(g) sets another threshold condition: Section 108 applies only to “the isolated and unrelated reproduction or distribution of a single copy or phonorecord of the same material on separate occasions” but not “the related or concerted reproduction or distribution of multiple copies or phonorecords of the same material.” The Authors Guild argues that this is precisely what’s happening with HathiTrust’s wholesale scanning. (It also makes an argument that the scanning is a prohibited “systematic reproduction” under Section 108(g)(2), but that language is qualified to apply only to Section 108(d) reproductions, and as noted above, HathiTrust doesn’t appear to be relying on Section 108(d).)

HathiTrust has two counterarguments here. One is that “isolated and unrelated” applies only to multiple copies of “the same material”—i.e., repeated copying of a single book. The Authors Guild replies by emphasizing the words “single copy” in the first quoted phrase, but HathiTrust’s emphasis on the words “same material” in the second quoted phrase is textually cleaner. I’d have to say the statutory text here is genuinely ambiguous, which leads us to legislative history and HathiTrust’s second argument: that the meaning of “multiple” and “systemic” is tied to the risk that extensive copying will serve as a substitute for library purchases. But that itself is a disputed issue—more on that next time.

Twenty-Year Sunset

Finally, Section 108(h) permits libraries to make copies of commercially unavailable works and distribute them to patrons in the final twenty years of their copyright terms. The Authors Guild argues that the Orphan Works Project falls out of Section 108(h)’s quite narrow scope. But since HathiTrust hasn’t (yet) argued that the Orphan Works Project, or any other particular uses of any particular books, are protected by Section 108(h), it’s again something of an abstract question.

Summary

Some of the Section 108 issues are not really before the court, because the defendants have yet to argue that Section 108 actually does apply to any identified activities. But even leaving that aside, I have trouble seeing how HathiTrust can make a pure Section 108 argument in its defense. Some of its copies might ultimately end up being protected, but if it has a defense that will win this lawsuit across the board, that defense is fair use, not Section 108. The statutory library privileges matter because of how they frame and inflect the fair use issue.

When I’ve looked at the public-domain works available on Google, it’s been clear from slightly differing database entries for the same edition of the same books, that many books WERE scanned multiple times, as they came in from different libraries.

The 29JUN2012 filing by the NFB as referenced above talks about the legislative history of the Section 121 ‘Chafee Amendment’. Once again it studiously avoids the 1996 US Senate Floor comments by Senator Chafee himself (see their Note 56) that:

“It includes a very narrow definition of those who are eligible to undertake such production …”

So while the NFB and its counsel are willing to discuss at length the difference between ‘primary mission’ and ‘A primary mission’, they are unwilling to discuss in the current brief in any manner the meaning of the word ‘narrow’.

“The Authors Guild argued previously that Google’s participation renders the entire HathiTrust project inherently commercial, because it gives the libraries the free use of “digital book conversion services, valued in the hundreds of millions of dollars”

Another point is that the libraries are not only getting free scanning services of books in their own collections, they are getting scans of all the books not in their collections owned by libraries other than Hathi Trust, which would otherwise cost them a lot of money to buy.

Clearly I am not a lawyer, but even with services, I thought there could be financial gain. For example, my impression has always been that the Internal Revenue Service levies income tax on individuals for services bartered on any scale (and that the IRS discovers).

The latest filing by the National Federation of the Blind (NFB) 06/29/12 (Justia Document 105) lists in their Table of Contents:

STATEMENT OF FACTS

a. Libraries have historically been inaccessible to the blind. d. The HDL enables research by the blind e. There is no market for accessible university library books for the blind.

ARGUMENT

II. The Chafee Amendment permits HathiTrust institutions to reproduce and distribute digital copies of the content of their libraries to the blind. III. Use of the HDL to provide blind students and scholars with equal access to university library collections (“accessibility”) is a fair use under § 107 of the Copyright Act

The Memorandum references Declarations filed by both Mr. George Kerscher of the DAISY Consortium and Mr. Jim Fruchterman of Benetech / Bookshare.org.

The December 2011 final report by the US Department of Education Advisory Commission on Accessible Instructional Materials in Postsecondary Education for Students with Disabilities (AIM Commission) — on which both of these two gentlemen served as Commissioners — noted that roughly 2.5-3 % of those post secondary educations students with a reported disability had a visually-related impairment out of the total of 10.8% of students reported with any type disability.

— AIM Commission Final Report 6 DEC 2011 page 15

So in the above mentioned NFB Memorandum filing, roughly a student population of 2 to 3 tenths of 1 % of the total post-secondary student population is being argued as to whether the entire Hathi Digital Library (HDL) is or is not an infringement of copyright under one or another pieces of the US Copyright Act or other federal legislation.

Incidentally — as regards what is the University of Michigan Library’s ‘primary mission’ (or A primary mission) if you go to the home page http://www.lib.umich.edu/ there is no mention of disability. One has to click ‘Services’ which brings you to the sub-page http://www.lib.umich.edu/services which says:

“Following is a list of services offered by the University of Michigan Library”

… which then lists 42 separate services one of which is ‘Services for Patrons with Disabilities’ which then links to the sub-sub-web page http://www.lib.umich.edu/services-patrons-disabilities.

One might suggest that if the University of Michigan Library truly had a 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;

as per US Copyright Act Section 121(d)(1) that they might find some way to indicate such primary mission by prominent and primary listing on the UMich Library home page and not listed secondarily amongst 41 other services on a sub-sub-page.

From the Filing by the Hathi Trust Lawyers Document 112 Filed 06/29/12 Page 22 of 35

Copying in order to permit reading by the blind and copying for preservation are in fact mentioned by Congress as fair use. With respect to the blind: “Another special instance illustrating the application of the fair use doctrine pertains to the making of copies or phonorecords of works in the special forms needed for the use of blind persons.” H.R. Rep. No. 94-1476, at 73 (1976)…

In the quote above — amongst other conditions of the text — it specifically leaves out the phrase ‘the making of a single copy or phonorecord by an individual’ which occurs in the last sentence of the paragraph. If you read the entire HR, it clearly points out that, as of the 1976 Act, the Library of Congress itself still required permission of the copyright owner before it could reproduce in Braille or audio format.

I have worked with Braille groups that for decades preceded the 1996 enactment of Section 121 and I can tell you from some of their (horror) stories — if such was the case as of 1976 that they did not then need written permission from the publisher to make embossed paper Braille copies — it surely would have been news to them.

The entire paragraph from which the Hathi Trust lawyers excerpted one sentence:

Another special instance illustrating the application of the fair use doctrine pertains to the making of copies or phonorecords of works in the special forms needed for the use of blind persons. These special forms, such as copies in Braille and phonorecords of oral readings (talking books), are not usually made by the publishers for commercial distribution.

For the most part, such copies and phonorecords are made by the Library of Congress’ Division for the Blind and Physically Handicapped with permission obtained from the copyright owners, and are circulated to blind persons through regional libraries covering the nation. In addition, such copies and phonorecords are made locally by individual volunteers for the use of blind persons in their communities, and the Library of Congress conducts a program for training such volunteers.

While the making of multiple copies or phonorecords of a work for general circulation requires the permission of the copyright owner, a problem addressed in section 710 of the bill, the making of a single copy or phonorecord by an individual as a free service for a blind persons would properly be considered a fair use under section 107.

Addendum to the above Re: University of Michigan Library:

On the library’s ‘About’ webpage it says the following:

About MLibrary

Our mission is to support, enhance, and collaborate in the instructional, research, and service activities of the faculty, students, and staff, and contribute to the common good by collecting, organizing, preserving, communicating, and sharing the record of human knowledge. This mission is accomplished through the provision of the various collections and programs available to patrons of the library system.

The words ‘disability’ or ‘disabled’ or ‘blind’ do not appear on this page. There is a listing for ‘Diversity’ on whose sub-sub-webpage these same words also do not appear. The Diversity page contains the sentence:

Here at Michigan we welcome and celebrate difference and diversity, and we use our differences to solve problems and to make sense of a complicated and fascinating world.

“Out of print” is by no means an irreversible condition. All it takes is for the copyright holder to issue an offset, print-on-demand, and/or e-book edition, and the book is again generating revenues. The latter two formats especially are popular with older titles, as publishers, and authors to whom rights have reverted, find they can generate welcome new money from old books with very little up-front investment. It is by no means the case that because Hathi Trust did not find a copyright owner, that there is none, the book will never be available new again, and therefore a licensing agent is the only answer.

As for piracy, although reprinting of public-domain titles as-is is not piracy, numerous print-on-demand and e-book publishers have sprung up to use the scans publicly posted by Google Books, the Internet Archive, Project Gugenberg, and other online sites. To name just two, Kessinger and Nabu. Even the University of Michigan Libraries are reprinting the Google scans POD and selling them on Amazon. If you do an Advanced search on publisher names on Amazon, you will see lists of their titles. Or, take one or two public-domain titles you know one of these online sites has posted, and do a search on www.addall.com/used, NOT checking the box to exclude print-on-demand results.

If Kessinger et al are merely copying available scans wholesale without investigating copyright ownership, piracy of copyrighted works is inevitable.

In the Declaration of John Wilkin — Associate University Librarian at the University of Michigan and Executive Director of the Hathi Trust — 28 JUN 2012 (Justia 110) at Para. 106. he says:

One of the primary goals of HathiTrust has always been to enable people who have print disabilities to access the wealth of information within library collections.

However, as of 9 JUL 2012, on the Hathi Trust webpage ‘Mission & Goals’ there is no mention of serving persons with ‘print disabilities’ or any disability. The notion of ‘Access mechanisms for persons with disabilities’ appears on the sub-page ‘Functional Objectives’ as one of 12 short- or long-term ‘Functional Objectives’.

Correction: Wilkin Paragraph 100; not 106

Mea Culpa. In my July 3, 2012, posting above I said that the NFB and Counsel ‘studiously avoid’ the word ‘narrow’ in Senator Chafee’s 1996 Senate Floor remarks introducing the Section 121 Legislation. I was wrong. They do mention ‘narrow’ in their 9 DEC 2011 filing Justia 25 Motion-to-Intervene where they say

The libraries and disabilities services offices of the University Defendants qualify as”authorized entit[ies]” under what Senator Chafee referred to as the “narrow definition” of eligibility when first offering the amendment.

So whatever is the meaning of ‘narrow’ — on which they do not elaborate — the NFB and its Counsel have declared the University defendants fits such definition. Just who would not fit the very narrow description they do not say. They still chose not to mention the word ‘narrow’ in their 29 JUN 2012 filing Justia 105.

While in the current AG v. Hathi Trust filings the NFB and Counsel repeatedly state unequivocally that the University Defendants qualify as Authorized Entities, the following is from a 2009 filing with the US Copyright Office:

Likewise, Sec. 121 permits production and distribution of texts in specialized formats only by an “authorized entity,” defined as a “nonprofit organization or government agency that has a primary mission” to promote accessibility. The crux here is the phrase “primary mission.” Publishers and others have taken the position that only specialized agencies can qualify under the Chafee Amendment, while the National Federation of the Blind and others are convinced that the proper interpretation is one under which (for example) the Disability Services Office of a university, or the accessibility service of a public library system, would be eligible as well. Again, (authoritative) support for that reading of the provision would be welcome.

Comments on the Topic of Facilitating Access to Copyrighted Works for the Blind or Persons with Other Disabilities — Marc Maurer, President, National Federation of the Blind April 21, 2009

If you go to the HathiTrust “About” page and search for the word disabilities, you will find example after example of goals, work items, updates, you name it about specific work done to support users with print disabilities (aka the blind) dating back to the beginning of HathiTrust.

The language of US Copyright Act Section 121 in describing the required ‘primary mission’ of an ‘authorized entity’ was written in 1996. The HathiTrust was formed in 2008 — one would suppose that its website was created about the same time.

The HathiTrust website has a ‘Mission and Goals’ page which nowhere describes the ‘primary mission’ as required by the Section 121 statute although they have now had about 4 years to do so and no one from the legal offices of the UMich Library or the Hathi Trust has previously advised them to do so.

It appears now in the Memorandum of Law(s) and various Declarations on the Justia site that persons now are claiming as to what is the ‘primary mission’ of the UMich Library and the HathiTrust because the HathiTrust as Defendant lawyers have advised them just how to do so in arrears.

The language of US Copyright Act Section 121 in describing the required ‘primary mission’ of an ‘authorized entity’ was written in 1996. The HathiTrust was formed in 2008 — one would suppose that its website was created about the same time.

The HathiTrust website has a ‘Mission and Goals’ page which nowhere describes the ‘primary mission’ as required by the Section 121 statute although they have now had about 4 years to do so and no one from the legal offices of the UMich Library or the Hathi Trust has previously advised them to do so.

It appears now in the Memorandum of Law(s) and various Declarations on the Justia site that persons now are claiming as to what is the ‘primary mission’ of the UMich Library and the HathiTrust because the HathiTrust as Defendant lawyers have advised them just how to do so in arrears.

Comment Preview:

The language of US Copyright Act Section 121 in describing the required ‘primary mission’ of an ‘authorized entity’ was written in 1996. The HathiTrust was formed in 2008 — one would suppose that its website was created about the same time.

The HathiTrust website has a ‘Mission and Goals’ page which nowhere describes the ‘primary mission’ as required by the Section 121 statute although they have now had about 4 years to do so and no one from the legal offices of the UMich Library or the Hathi Trust has previously advised them to do so.

It appears now in the Memorandum of Law(s) and various Declarations on the Justia site that persons now are claiming as to what is the ‘primary mission’ of the UMich Library and the HathiTrust because the HathiTrust as Defendant lawyers have advised them just how to do so in arrears.

Comment Preview:

The language of US Copyright Act Section 121 in describing the required ‘primary mission’ of an ‘authorized entity’ was written in 1996. The HathiTrust was formed in 2008 — one would suppose that its website was created about the same time.

The HathiTrust website has a ‘Mission and Goals’ page which nowhere describes the ‘primary mission’ as required by the Section 121 statute although they have now had about 4 years to do so and no one from the legal offices of the UMich Library or the Hathi Trust has previously advised them to do so.

It appears now in the Memorandum of Law(s) and various Declarations on the Justia site that persons now are claiming as to what is the ‘primary mission’ of the UMich Library and the HathiTrust because the HathiTrust as Defendant lawyers have advised them just how to do so in arrears.

So you are saying that they just went back and injected this into a report from March 2008 http://www.hathitrust.org/updates_march2008:

“Services for visually-disabled users: Michigan has deployed a mechanism that allows students certified by its Office of Services for Students with Disabilities to stream the text of in-copyright works to a screen reader. This is an early release of these mechanisms and we are not yet able to extend the model to certified users at other institutions, but we are pleased with the design, which was conceptualized in collaboration between the University of Michigan library, General Counsel, Office of Services for Students with Disabilities, and the National Federation of the Blind. We will work with the Operational Advisory Board to plan a strategy to make the mechanisms available to users at other institutions so that those users may read public domain works. We will work with the Operational Advisory Board to explore the question of access to in-copyright works.”

What I am talking about is statute language and the term ‘primary mission’. What I am saying is on their respective Mission & Goal pages they do not state that services to the blind is a primary mission or any part of their mission although they have had ample opportunity to do so.

In fact, on the HathiTrust Mission and Goals page it states:

In this effort our goals are:

To build a reliable and increasingly comprehensive digital archive of library materials converted from print that is co-owned and managed by a number of academic institutions.

To dramatically improve access to these materials in ways that, first and foremost, meet the needs of the co-owning institutions.

The statute language is specific as the the mission statement. I am sure the Hathi Trust and the UMich Library do wonderful things to assist the blind and others with reading disabilities. If your interpretation is sufficient as to what is a/the ‘primary mission’ of the two entities, then a bunch of lawyers needlessly went to a whole lot of trouble in their various filings trying to do so.

… and to quote Asooc. Justice Scalia from 2004:

“I do not think … the avoidance of unhappy consequences is adequate basis for interpreting a text.”

BTW my apologies for the multiple posts above — I work from 12 times zones away from EDT.