Copyright Holders Associations Do Not Have Standing Under Copyright Act to Bring Claims

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The U.S. Constitution generally would permit an association to bring claims on behalf of its members, but the Copyright Act does not create standing on the part of associations of copyright holders to initiate infringement claims on behalf of members, the U.S. District Court for the Southern District of New York ruled Oct. 10 in a dispute between various authors groups and university libraries engaged in digitizing their works (Authors Guild Inc. v. HathiTrust, S.D.N.Y., No. 1:11-cv-06351, 10/10/12).

Granting judgment on the pleadings against some of the associations, the court, however, said that foreign associations might have standing, if such standing is provided for under their home countries' laws.

The court also determined that the uses of digitized works pursuant to the HathiTrust book digitization project might constitute fair use.

Google Gives Digitized Copies to Libraries.

In 2004, Google Inc. 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 searchable database.

The announcement of this program triggered a copyright infringement action by the Authors Guild that continues to this day (180 PTD, 9/18/12).

Part of the deal between Google and the libraries included an offer by Google to provide the libraries with copies of the digitized versions of their collections.

HathiTrust Project Initiated.

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.

According to HathiTrust, 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 appears on and the frequency of such appearance.

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.

The Authors Guild and several other parties--including the Australian Society of Authors, and 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), the Norwegian Non-Fiction Writers and Translators Association (the Norsk Faglitterær Forfatter-og Oversetterforening, or NFF), the Writers' Union of Canada, and several individual authors--brought claims of copyright infringement against HathiTrust, the University of Michigan, the University of California, the University of Wisconsin, Indiana University, and Cornell University.

Most of these universities also joined the Orphan Works Project, through which works identified as being orphaned would also be made available to students and scholars.

HathiTrust moved for judgment on the pleadings on the question of the associations' standing as plaintiffs. It also moved for dismissal of claims against the Orphan Works Project as unripe.

The Authors Guild moved for judgment on the pleadings on the question of whether the defendants could assert fair use and other defenses.

HathiTrust and intervenors the National Federation of the Blind moved for summary judgment. The Authors Guild also moved for summary judgment.

Associations Have Constitutional Standing.

Judge Harold Baer Jr. first determined that the associations had standing under constitutional law to bring claims on behalf of their members. In so ruling, the court referred to a similar decision in the Google Books proceeding. Authors Guild v. Google Inc., 102 USPQ2d 1916 (107 PTD, 6/5/12).

Hunt v. Washington State Apple Advertising Commission, 432 U.S. 333 (1977), sets forth a three-part test for standing when an association seeks to bring claims on behalf of members. Hunt stated:  

an association has standing to bring suit on behalf of its members when: (a) its members would otherwise have standing to sue in their own right; (b) the interests it seeks to protect are germane to the organization's purpose; and (c) neither the claim asserted nor the relief requested requires the participation of individual members in the lawsuit.  




The court rejected HathiTrust's argument that the Authors Guild had failed to meet the first prong on the basis that the complaint did not make any specific allegations as to infringement of any particular works in which its members held rights.

According to Building 7 Construction Trades Council of Buffalo, N.Y., and Vicinity v. Downtown Development Inc., 448 F.3d 138 (2d Cir. 2006), this prong does not require that an association “name names,” the court said.

Under the third prong, HathiTrust said that the association could not have standing because individual copyright holders would have to show that their works were being infringed.

Citing National Association of College Bookstores Inc. v. Cambridge University Press, 990 F. Supp. 245 (S.D.N.Y. 1977), the court said, “Where an association seeks an injunction or declaration that an entire practice is unlawful, courts have concluded that the individual proof required is limited.”

This principle was echoed by the May ruling in Authors Guild v. Google, the court said, in that it “concluded that the limited amount of individual proof required to establish copyright ownership and the fair-use defense was insufficient to defeat associational standing.”

Thus, the court concluded, the Authors Guild and the other copyright holders associations had standing under Hunt.

Copyright Act Does Not Give Association Standing.

However, the court next determined that three of the associations--the Authors Guild, the Australian Society, and the Writers Union of Canada--did not have standing under the Copyright Act of 1976, according to Second Circuit precedent.

There was “limited case law” on this question, the court said. However, quoting the Copyright Clause of the U.S. Constitution, the court said, “The basic purpose of copyright--to provide a limited monopoly for authors primarily to encourage creativity--… suggests that Congress did not intend for third-party enforcement of those rights.”

Thus, even if the associations could have standing under general constitutional principles, the court said that the Copyright Act did not provide for such an action by an association of copyright holders.

Foreign Associations Might Have Standing.

Turning to the foreign authors associations, the court looked to Itar-Tass Russian News Agency v. Russian Kurier Inc., 153 F.3d 82, 47 USPQ2d 1810 (2d Cir. 1998). That decision said that a Russian association of news reporters could bring claims on behalf of members after noting that Russian copyright law explicitly allowed copyright holders to create associations to collectively administer economic rights when individual pursuit of claims presented practical difficulties.

Thus, the court said, under Itar-Tass, whether a foreign association has standing to sue must be determined by examining the law of the association's own jurisdiction.

The Quebecker, British, Norwegian, and Swedish associations asserted that their home country law provided rights similar to those at issue in Itar-Tass. For the purposes of standing, this was sufficient to avoid judgment, the court said.

Regarding the ripeness of the Authors Guild's claims against the Orphan Works Project, the court agreed with HathiTrust that the “claims here are not fit for adjudication.”

The court emphasized that the project is not yet in operation and thus, the court is missing “crucial information” necessary to render any judgment. When the project is in a more concrete form, the court said that claims could be pursued at that time.

Libraries Not Barred From Asserting Fair Use.

The court then turned to the Authors Guild's motion for judgment on the pleadings. Specifically, the Authors Guild sought a ruling barring HathiTrust from asserting a defense of fair use.

The Authors Guild noted that 17 U.S.C. §108 creates a right on the part of libraries to make limited copies of certain works for enumerated purposes. Thus, it argued, libraries were precluded from arguing that their activities constituted fair use under 17 U.S.C. §107.

However, the court noted that Section 108 explicitly stated that it did not affect fair use rights as set forth in Section 107. Thus, the court said, “Section 108 provides rights to libraries in addition to fair-use rights that might be available.”

Plaintiffs Fail to Show that Use Is Not Fair.

The court then turned to the Authors Guild's motion for summary judgment on the question of whether the HathiTrust uses constituted fair use under the Copyright Act.

Applying the four-part test set forth in Section 107, the court first said that the scholarly intent of the database favored HathiTrust. Furthermore, the court said the HathiTrust Digital Library was a transformative use. The court said:  

The use to which the works in the [HathiTrust Digital Library] are put is transformative because the copies serve an entirely different purpose than the original works: the purpose is superior search capabilities rather than actual access to copyrighted material.  



For example, the court noted that HathiTrust's search function has already facilitated the rise of a new research technique, specifically, “text mining,” a method of finding patterns in large quantities of text.

The court concluded that the use of the digital copies to assist the sight-impaired in accessing works was also a transformative use.

The nature of the works was not dispositive, the court said, because of the transformative uses involved, namely facilitation of searches and accessibility to the blind. Turning to the third prong, the court determined it was necessary for HathiTrust to keep the entire contents of works in the database in order to serve these transformative uses.

Finally, the court found that HathiTrust's operations did not harm the market for the value of the plaintiffs' works. Balancing all the factors together, the court found that these uses constituted fair uses.

The court also granted leave to the American Library Association, the Association of College and Research Libraries, the Association of Research Libraries, and a group of scholars to file amicus briefs.

The Authors Guild was represented by Edward Henry Rosenthal of Frankfurt Kurnit Klein & Selz, New York. HathiTrust was represented by Alex Seth Fonoroff of Kilpatrick Townsend & Stockton, Atlanta.

By Anandashankar Mazumdar  

Opinion at

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