Students' Access to Excerpts Was Fair Use When Digital Excerpt Licensing Unavailable

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By Anandashankar Mazumdar  

To the extent that the copyright owners of scholarly works had not made digital excerpts available for licensing to students conveniently and at reasonable costs, unauthorized online access to such excerpts constituted fair use, the U.S. District Court for the Northern District of Georgia ruled May 11.

The court found no copyright infringement in the vast majority of 75 instances asserted by scholarly publishers against Georgia State University. The fair use defense was rejected with respect to five works, however, because the because the publishers had made digital excerpt licensing available.

Three Small Publishers Assert Rights.

Oxford University Press, headquartered in New York; Cambridge University Press, whose American branch is also based in New York; and Sage Publications Inc. of Thousand Oaks, Calif., are publishers that claim copyright interest in certain academic works.

Oxford and Cambridge are associated with the respective British universities and are not-for-profit establishments. Sage is a for-profit, privately owned entity. The three entities are relatively small players in the academic publishing market and cater largely to niche subject areas.

Georgia State University is an educational institution based in Atlanta that is owned and operated by the government of the State of Georgia.

In 2008, the publishers brought a claim against several individuals serving in offices of responsibility at the university, including the university president (the named defendant Mark P. Becker), the provost, the dean of libraries, and the members of the Board of Regents of the University System of Georgia.

The publishers alleged that the university was complicit in the violation of the publishers' rights under the Copyright Act by providing students with access to the university's computer system and the internet, which were being used to gain access to allegedly infringing copies of copyrighted works.

Specifically, the publishers alleged that the university was allowing unauthorized excerpts from scholarly books to be made available to students online.

Subsequently, the university revisited its copyright compliance policy and in February 2009, a new policy was set forth. The new rules required each faculty member who made such material available electronically to submit a “fair use checklist” in justification. The faculty were also given training in fair use law.

The plaintiffs alleged, however, that this policy allowed continued infringement, and they set forth 99 alleged instances of such infringement. During the trial, this list was reduced to 75. The alleged infringements were of scholarly works in the fields of social science and language and were not intended as textbooks.

The university argued that it had committed no act that violated the publishers' rights, that there was no infringement because the relevant uses constituted fair uses, and that it was immune from any liability under the 11th Amendment to the U.S. Constitution, which bars federal claims against a state that does not consent to be sued.

Taking up the university's claim that it was entitled to sovereign immunity, Judge Orinda D. Evans ruled that, under Ex parte Young, 209 U.S. 123 (1908), the plaintiffs were entitled to obtain equitable and declaratory relief to protect their rights under the Copyright Act.

Fair Use.

The court then turned to the four-factor analysis of fair use as set forth in 17 U.S.C. §107.

The first factor, which addresses the purpose and character of the use, “strongly” weighed in the university's favor, the court said, noting that the university was a not-for-profit educational institution as opposed to a commercial one.

The second factor, the nature of the copyrighted works in question, also favored the university, the court said. In considering this factor, the court focused on the fact that all the works were non-fiction works “intended to inform and educate.”

Here, the court relied on Basic Books Inc. v. Kinko's Graphics Corp., 758 F. Supp. 1522, 18 USPQ2d 1437 (S.D.N.Y. 1991), which said that “the scope of fair use is greater with respect to factual than non-factual works.”

Turning to the third factor, the amount and substantiality of the copied excerpt, the court said that whether this factor weighed for the university or the publishers depended on the specific facts of the copying of the individual works and could not be determined on a general basis for all the works in question.

No Harm When Digital Excerpt Licenses Unavailable.

The court's evaluation of factor four of the fair use test, the effect on the commercial value of the work, led to an examination of whether the professors' excerpts amounted to market substitution for the allegedly infringed works.

The proportionality of the excerpts was particularly relevant in considering this factor, the court said. The fact that the vast majority of excerpts were small, about 10 percent of the works they were taken from, meant that the excerpts could not harm the markets for the original books.

The publishers alleged that the excerpting interfered with the licensing programs that they have in place, in particular, the licensing made available by the Copyright Clearance Center.

The court agreed that such a licensing scheme would be relevant under this factor to the extent that “licenses for excerpts of the works at issue are easily accessible, reasonably priced, and that they offer excerpts in a format which is reasonably convenient for users.”

However, in this respect, the evidence was lacking. Specifically, the court said, there was insufficient proof that excerpted licensing was available for the works in question, particularly digital licenses. Testimony that certain types of excerpts would be priced at a certain level was insufficient, the court said:

The fact that a license to copy an excerpt of an individual work would have cost a particular amount is not a substitute for evidence that the license was actually available. …  

Furthermore, the record as a whole fails to show that licenses for digital copies of Cambridge's and Oxford's works were generally available in 2009. … Because Georgia State distributes readings electronically, the lack of licenses for digital excerpts is a disincentive to use CCC's program. While commercially photocopied coursepacks are still in use at Georgia State (and Georgia State pays permissions for such use), this case involves electronic distribution …. Educational users today want digital materials …. [P]ermissions to make photocopies are of no value in connection with Georgia State's [electronic] systems.  

In the end, the evidence supported the availability of digital excerpt licenses for only 13 of the relevant excerpts, the court said. For the remaining works, the court found that the university's excerpting “caused no actual or potential damage[ ] to the value of the books' copyrights.”

Additionally, the court said that the university's system for making excerpts available to students made it unlikely that the excerpting would harm the market for the original works:

The evidence in this case shows that [the university's] uses (i.e., the professors' and the students' uses) of the materials were under carefully monitored circumstances. A pass code is required for the students in the class to access the materials; at the end of the semester access terminates. … It is unlikely that the use of excerpts by professors and students resulted in the exposure of the copyrighted materials to people other than the class participants.  

If the analysis ended there, the court said, factor four would easily tilt to the university. However, there were two additional considerations.

First, the court said, the court must consider the broader potential impact of the university's actions, not just the narrow, specific impact. The court cited Campbell v. Acuff-Rose Music Inc., 510 U.S. 569, 29 USPQ2d 1961 (1994), which said that “courts must consider not only the harm caused by the defendant's own actions, but also what harm would ensue from 'widespread conduct of the sort engaged in by the defendant.' ”

Second, the court said that it must weigh the equitable interests. Specifically, the court said it must account for the publishers' rights, “as owners of the copyrights, to collect fees for use of excerpts form their books.” The court said:

This is a powerful argument countering fair use, which counsels against [the university's] position when excerpts are readily available, in a convenient format, for a reasonable fee, and the fees are not paid.  

According to the court, this could constitute a separate fair use factor, but it chose to include this consideration in its factor four analysis. As a result, the factual question of whether digital excerpt licensing was readily available was critical; if it was not readily available, then the factor would weigh for the university.

The court added that very often plaintiffs' arguments regarding the fourth factor took a circular path, which must be guarded against when applying the analysis:

[I]t is understood that [a plaintiff] will suffer some harm from [a defendant's] use of the copyrighted item when fair use applies. The objective of the fair use analysis is to determine whether fair use applies. To say that fair use does not apply because [the university has] made some unpaid use of the copyrighted item is circular reasoning. There is no ideal solution to this problem.  

Additional Considerations.

The court then said that before it could reach a conclusion that the use in question constituted fair use, other factors must be considered.

Namely, the court said that “[l]imited unpaid copying of excerpts will not deter academic authors from creating new academic works.”

Given the nature of scholars and the creation of scholarly works, the court said that there was “no reason to believe” that such excerpting would defeat the Copyright Clause's stated purpose of encouraging the creation of new works.

Furthermore, the court said that the “slight limitation” on publishers' ability to draw income from licensing excerpts would not “appreciably diminish” their ability to continue publishing scholarly works, which, again, serves the public interest in spreading knowledge. In reaching this conclusion, the court noted the relative small proportion of this type of income to the plaintiff publishers.

Application of Standards to the Facts.

The court next embarked on a 250-page analysis of the 75 allegedly infringed works in question and applied the fair use factors to each of them.

Factors one and two weighed for the university with respect to all the works, the court said. However, factor three was applied using the following standard:

Where a book is not divided into chapters or contains fewer than ten chapters, unpaid copying of no more than 10% of the pages in the book is permissible under factor three. … In practical effect, this will allow copying of about one chapter or its equivalent. Where a book contains ten or more chapters, the unpaid copying of up to but no more than one chapter (or its equivalent) will be permissible under fair use factor three. Excerpts which fall within these limits are decidedly small, and allowable as such under factor three. Access shall be limited only to the students who are enrolled in the course in question, and then only for the term of the course. Students must be reminded of the limitations of the copyright laws and must be prohibited by policy from distributing copies to others. The chapter or other excerpt must fill a demonstrated, legitimate purpose in the course curriculum and must be narrowly tailored to accomplish that purpose. Where the foregoing limitations are met factor three will favor fair use, i.e., will favor [the university]. Otherwise factor three will favor [the publishers].  

Finally, factor four would weigh for the publishers only in those cases in which excerpt licenses were available for reasonable prices in digital formats.

After applying these standards, the court found that infringement had occurred in five of the 75 cases and that it was the university's 2009 copyright policy that caused such infringement.

Indeed, in such cases in which convenient and reasonably priced digital licensing is available, the court suggested that the university should probably assume that a purported fair use would harm the commercial value of the work.

Specifically, the court said:

[T]he policy did not limit copying in those instances to decidedly small excerpts as required by this Order. Nor did it proscribe the use of multiple chapters from the same books. Also, the fair use policy did not provide sufficient guidance in determining the “actual or potential effect on the market or the value of the copyrighted work,” a task which would likely be futile for prospective determinations (in advance of litigation). The only practical way to deal with factor for in advance likely is to assume that it strongly favors the plaintiff-publisher (if licensed digital excerpts are available).  

Thus, with respect to those five works, the court concluded that the publishers were entitled to prevail. With regard to the remaining 70 works, the court found that the university was entitled to prevail.

The court directed the publishers to submit within 20 days proposed text for injunctive and declaratory relief and supporting rationale. Subsequently, the university would be given an opportunity to oppose such a text.

The university was represented by Anthony B. Askew of King & Spalding, Atlanta. Cambridge and Oxford were represented by Jonathan Bloom of Weil Gotshal & Manges, New York.

Opinion at

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