Creating full-text searchable database of copyrighted works is “fair use”
By Yixuan Long- Edited by Sarah O’Loughlin
Authors Guild, Inc. v. HathiTrust, No. 12‐4547‐cv (2d Circuit, June 10, 2014)
In a unanimous opinion delivered by Judge Parker, the Second Circuit held that under the fair use doctrine universities and research libraries are allowed to create full‐text searchable databases of copyrighted works and provide such works in formats accessible to those with disabilities. The court also decided that evidence was insufficient to decide whether the plaintiffs had standing to bring a claim regarding storage of digital copies for preservation purposes. In so holding, the Second Circuit affirmed in part and vacated in part the district court’s opinion.
The Guardian, Electronic Frontier Foundation, and Bloomberg BNA overviewed the case. The district court opinion can be found here.
The fair use doctrine, set out in the Copyright Act of 1976 as a limitation on authors’ exclusive rights over their works, allows the public to draw upon copyrighted materials without the permission of the copyright holder in certain circumstances. 17 U.S.C.A. § 107
Several research universities made digital copies of books in their collections and created a repository for the books called HathiTrust Digital Library (“HDL”) in 2008. They also founded HathiTrust to operate it. The HDL provides a full-text book database that allows users to search for page numbers where specific text can be found, and permits member libraries to provide patrons with certified print disabilities access to the full text of copyrighted works. HathiTrust currently has 80 members and the HDL contains over ten million books. Twenty authors and authors’ associations sued HathiTrust for copyright infringement.
The court first decided that three authors’ associations plaintiffs, including Authors Guild, Inc., do not have standing as a matter of U.S. law because the Copyright Act of 1976 does not allow third parties to bring suits. The remaining four authors’ associations’ standing came from foreign law that confers upon them exclusive rights to enforce copyrights of their foreign members.
Judge Parker went on to explain that copyright is “not an inevitable, divine, or natural right,” but rather designed to promote the progress of science and useful arts. The public can draw upon copyrighted materials without permission so long as it’s “fair use.” Here, full-text search is fair use because it is transformative in nature, adding to the original something new with a different purpose and a different character. Making four digital copies of the data (two on servers and two backup tapes) is reasonably necessary to mitigate the risk of data loss. The plaintiffs’ lost sale claim was without merit because the full-text search function does not substitute the original works. The assertion that the HDL creates the risk of security breach was also unwarranted given the security measures taken by the libraries.
In addition, the court found that providing print-disabled patrons with access to all of the works in formats accessible to them constituted fair use. Although recasting copyrighted works into new forms is not transformative but derivative, legislative history of the Copyright Act of 1976 and dicta in a Supreme Court opinion upheld the conclusion that making books accessible to the legally blind is fair use.
The court vacated the district court’s judgment on whether allowing member institutions to create replacement copy of a book for preservation purposes is permissible, and remanded to district court to decide whether any plaintiffs have standing in such a claim.
This case has significant implications for the upcoming ruling on GoogleBooks, which similarly digitized university library collections. Google won a summary judgment on the lawsuit last November. Authors Guild, Inc. v. Google Inc., 954 F.Supp.2d 282 (S.D.N.Y., 2013). The authors have appealed to the Second Circuit.
Yixuan Long is a 2L at the Harvard Law School.