2nd Cir. Affirms That Creation of Full-Text Searchable Database of Works Is Fair Use

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By Anandashankar Mazumdar  

June 10 — The fair use doctrine permits the unauthorized digitization of copyrighted works in order to create a full-text searchable database, the U.S. Court of Appeals for the Second Circuit ruled June 10.

Affirming summary judgment in favor of a consortium of university libraries, the court also ruled that the fair use doctrine permits the unauthorized conversion of those works into accessible formats for use by persons with disabilities, such as the blind.

The court also agreed with a federal district court that U.S., Canadian and Australian organizations whose members are holders of copyright interests in digitized works do not have standing to bring infringement claims on behalf of their members.

University Libraries Unite Digitized Collections

The dispute is connected to the long-running conflict between Google Inc. and various authors of books that Google included in a mass digitization program. In 2004, Google began soliciting the participation of publishers in its Google Print for Publishers service, part of what was then called the Google Print project, aimed at making information available for free over the Internet.

Subsequently, Google announced a new project, Google Print for Libraries. In 2005, Google Print was renamed Google Book Search and it is now known simply as Google Books. Under this program, Google made arrangements with several of the world's largest libraries to digitize the entire contents of their collections to create an online full-text searchable database.

The announcement of this program triggered a copyright infringement action by the Authors Guild that continues to this day.

Part of the deal between Google and the libraries included an offer by Google to hand over to the libraries their own copies of the digitized versions of their collections.

In 2011, a group of those libraries announced the establishment of a new service, called the HathiTrust digital library, to which the libraries would contribute their digitized collections. This database of copies is to be made available for full-text searching and preservation activities. Additionally, it is intended to offer free access to works to individuals who have “print disabilities.”

For works under copyright protection, the search function would return only a list of page numbers that a search term appeared on and the frequency of such appearance.

The Authors Guild and several other parties—both organizations and individuals—brought claims of copyright infringement against HathiTrust and several university libraries. The National Federation of the Blind and others intervened in the action to state the importance of a resource such as the HathiTrust Digital Library to those with sight impairments.

Most of the same university libraries also joined the Orphan Works Project, through which works identified as being orphaned would also be made available to students and scholars. The Orphan Works Project was suspended while it sought to determine whether it was accurately identifying orphan works.

District Court Finds Fair Use

Judge Harold Baer Jr. determined that the Authors Guild, the Australian Society of Authors and the Writers Union of Canada did not have standing under the Copyright Act. Some of the associations representing authors in other countries might have standing, however, the district court said.

With respect to the Orphan Works Project, the court found that because it was not in operation, the matter was not ripe for adjudication.

The district court also found that the use of the works made by the HathiTrust Digital Library was transformative and thus a fair use and further found that making the database fully accessible to those with print disabilities constituted fair use.

U.S., Australian, Canadian Organizations Without Standing

On appeal, the Second Circuit first affirmed the lower court's determination that the Authors Guild, the Australian Society, and the Writers' Union of Canada did not have standing. Quoting from Abkco Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d 971, 40 U.S.P.Q.2d 1052 (2d Cir. 1991), the court said that “§501 of ‘the Copyright Act does not permit copyright holders to choose third parties to bring suits on their behalf.' ”

The four remaining associations—the Quebec Union of Writers (the Union des Écrivaines et des Écrivans Québécois or UNEQ), the Authors' Licensing and Collecting Society (a British association), the Swedish Writers Union (the Sveriges Författarförbund, or SFF) and the Norwegian Non-Fiction Writers and Translators Association (the Norsk Faglitterær Forfatter og Oversetterforening, or NFF)—had adequately alleged that they had standing to represent their members under the laws of their respective countries.

Under Itar-Tass Russian News Agency v. Russian Kurier Inc., 153 F.3d 82, 47 U.S.P.Q.2d 1810 (2d Cir. 1998), a foreign organization's status under the laws of their respective countries controlled standing, the court said.

Full-Text Searching Is Fair Use

Turning to the fair use question, the court first concluded that the full-text search function of the Hathitrust Digital Library was a “quintessentially transformative use,” and thus constituted fair use. The court said:

the result of a word search is different in purpose, character, expression, meaning, and message from the page (and the book) from which it is drawn. Indeed, we can discern little or no resemblance between the original text and the results of the HDL full-text search.

There is no evidence that the Authors write with the purpose of enabling text searches of their books. Consequently, the full-text search function does not “supersede[ ] the objects [or purposes] of the original creation.”

Turning to the fourth fair use factor—whether the use functions as a substitute for the original work—the court rejected the argument that such use represents lost sales to the extent that it prevents the future development of a market for licensing copies of works to be used in full-text searches.

However, the court emphasized that the search function “does not serve as a substitute for the books that are being searched.”

The court also rejected the argument that the database represented a threat of a security breach that could result in the full text of all the books becoming available for anyone to access. The court concluded that Hathitrust's assertions of its security measures were unrebutted.

Thus, the full-text search function was found to be protected as fair use.

Access to Disabled Also Fair Use

The court also concluded that allowing those with print disabilities access to the full texts of the works collected in the Hathitrust database was protected as fair use. Support for this conclusion came from the legislative history of the Copyright Act's fair use provision, 17 U.S.C. §107.

Preservation Issue Not Ripe for Adjudication

Turning to the preservation issue, the court determined that the record did not support the argument that there was any risk that Hathitrust might create unauthorized replacement copies of the plaintiffs' works, given that such function was permitted by Hathitrust only when a original copy was lost and a replacement were to be unobtainable at a reasonable price.

Thus, the court found this matter unripe for adjudication and vacated the district court's ruling on this point.

Similarly, the court found the issues surrounding the Orphan Works Project to be unripe because it had been suspended pending any resolution of the question of how orphan works were to be accurately identified.

The court's opinion was authored by Judge Barrington D. Parker and joined by Judge John M. Walker Jr. and Judge José A. Cabranes.

The Authors Guild was represented by Frankfurt Kurnit Klein & Selz P.C., New York. HathiTrust and the university libraries were represented by Kipatrick Townsend & Stockton LLP, New York. The National Federation of the Blind was represented by Brown Goldstein & Levy LLP, Baltimore.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

Text is available at http://www.bloomberglaw.com/public/document/Authors_Guild_Inc_v_Hathitrust_Docket_No_1204547_2d_Cir_Nov_14_20.

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