Google BookScan

Suing HathTrust

originally September 2011 and later

1. The Constitutional Swamp
2. The Civil Procedure Jungle
   1. Potential Remedies as Overriding Limits
   2. Litigation Without Representation
   3. The Imaginary Component of Complex Litigation
   4. Never Get Out of the Boat: Judge Baer's Summary Judgment Analysis
3. The Merits Madness Without Method
1. A Very Sandy Foundation for the Merits
2. Fair Use of What, Exactly?
3. The Horror
4. On the Meaning of Meaning
5. Trees
1. No Trees Left Standing
2. Indexing as Fair Use
3. The Underbrush
4. Nobody Here to Hear the Deadfall

• Notes

This is an initial review only of the third segment of the Google BookScan lawsuits, generally known as the "HathiTrust suit" and formally known as Authors' Guild, Inc. v. HathiTrust, No. 11–6351 (S.D.N.Y.) (Baer, J.). The first two segments wer the Authors' Guild's lawsuit against Google, and the publishers' lawsuit against Google (which were later consolidated... and at this writing may be severing). As a side note, the HathiTrust matter was referred to Judge Chin for further consolidation with the existing GBS suits, but was rejected as not sufficiently related... and inconsistent with Judge Chin's elevation to the Second Circuit, although the rejection did not emphasize that issue.

Because I have a lot of gall, I am dividing this discussion into three parts. It is an unfortunate division caused, at least in major part, by a combination of bad drafting in Congress and ideologically directed docket-control measures by the Supreme Court... that, were the same cases being decided today, would probably be decided differently. Thus, this first part and entry will deal with the high-falutin' intellectualness of significant constitutional barriers under existing law to the suit proceeding in this form at all. The next part (which will probably require more than one entry) will deal with the geekiness of civil procedure and the challenges it presents. The third part (again, probably more than one entry) will deal with the nerdiness of the merits of the action, both in theory and as pled.

I. The Constitutional Swamp

Constitutionally, this lawsuit is a mess. Part of that is as it should be; part of that... not so much, and resembling Catch-22 more than it probably should. It's actually easier to see the difficulties — as is all too often true in such policy-laden matters — by moving from the back to the front. In this instance, that means considering problems with hauling the defendants into court first, and then the problems with the plaintiffs.

The first, and perhaps most obvious, question is whether a United States District Court located in New York City has the power to hear a suit against the HathiTrust defendants in the first place. This breaks down into two subquestions: Personal jurisdiction and sovereign immunity. The personal jurisdiction question is not nearly as clear as one might think. The complaint names HathiTrust itself and the various regents and boards of the University of Michigan, the University of California, the University of Wisconsin, Indiana University, and Cornell University.¹ Although there is a longstanding doctrine of asserting personal jurisdiction in copyright matters where the harm would be felt,² this doctrine appears only to be asserted against non-governmental actors. Whether HathiTrust or some of its members qualify as non-governmental actors is an open question.³

The personal jurisdiction question, though, would be rather easily dealt with by either a transfer of venue to the Eastern District of Michigan or an original filing there. The fun part is the ability to sue these "arm of the state" defendants in federal court at all. Professor Grimmelmann provides a useful introduction to this morass at a general level. In summary, under the Eleventh Amendment, states (and arms of the state government) cannot be sued for damages in federal court. Under a misbegotten legal fiction known as Ex parte Young,⁴ one instead sues the particular officers of the state agency who have responsibility for performing an "unlawful act" for injunctive relief, but not damages. (This is why Mr. Gideon sued Mr. Wainwright, the warden of the Florida prison in which he was being held, and not the state of Florida itself.) The Authors' Guild did not, however, do so; suing the various boards is not the same thing as suing the officers who make up those boards (I did warn you that this was a legal fiction...).

Ultimately, this all comes down to whether Congress had the power, and appropriately exercised the power if it did, to take away the states' sovereign immunity. Unfortunately for everyone, the Supreme Court has decided that it did not.⁵ Further, this goes well beyond the Ex parte Young loophole; the Courts of Appeals have interpreted the Supreme Court's holdings to bar not just monetary relief, but all relief, against the states under the Copyright Act.⁶

Things don't get much better on the left side of the v., when considering the standing of the Authors' Guild and the various individuals also named as plaintiffs in the complaint. Standing to represent "orphan works" is, as Judge Chin noted when rejecting the GBS settlement, lacking and not even arguable, even though he didn't use the term "standing". The Authors' Guild (and its foreign counterparts) asserts "associational standing" for itself as a representative of interests, but this does not help much. First, associational standing is virtually never proper against private actors... and if HathiTrust and its members are not private actors, they're probably state actors, which just reinforces the sovereign immunity problems. Second, Judge Chin's decision holding that the Authors' Guild cannot represent authors of orphan works as a class representative — and is an inadequate representative for non-orphan works — cuts strongly against its associational standing in a parallel lawsuit based on the same transactions and operative facts.

In short, at a constitutional level there are so many questionable aspects of this case's very posture that I doubt it can, or will, get very far. Judge Chin's closing remarks — indicating that he believes this is properly a matter for Congress — are well-taken.

But is there a way to revise the posture so that it can proceed? Perhaps, and perhaps not. The obvious first attempt would be to file a deprivation-of-property-rights claim in the Michigan courts against the University of Michigan and HathiTrust. Leaving aside the whack-a-mole aspect of this "solution" — Michigan isn't the only U.S. state with a university library system, after all! — this does nothing for the problems with standing on the left side of the v.... and, perhaps more importantly, runs up against a collective-action-of-several-states problem that the Supreme Court has yet to resolve (having punted every time it had the opportunity to squarely confront it). Basically, that problem concerns whether the Eleventh Amendment applies against states acting in concert, or even in parallel without actual intent. It is as much a problem with the drafting of the Eleventh Amendment as anything else; such "interstate compacts" as defendants just were not considered, let alone when it's more a matter of "conscious parallelism" than anything else.

In any event, this is just the swamp. I disagree with Professor Grimmelmann on one thing: The civil procedure is not a mere swamp, but a jungle.

II. The Civil Procedure Jungle

By the time we're through here, and finally reach all of the nerdy policy stuff relating to the merits that everyone has been debating without considering how the procedural jungle shapes that debate, we'll definitely be agreeing with Captain Willard after encountering a tiger while looking for mangoes:

'Never get out of the boat.' Absolutely god-damned right.

This really is a jungle, and unfortunately I don't see much chance for Clean and Chef and the Chief to survive this little trip up the Nung River to a place where there is no method — only insanity — and accusing someone of infringing nebulous, unclear, or unclearly owned rights is all too much like handing out speeding tickets at the Indy 500. If all of that seems a bit too surreal for you, I suggest that you withhold judgment until you've spent a little bit of time in the jungle with me.

I'm going to start by considering how some of the civil procedure issues — in particular, the remedies and the parties' limited representativeness ‐ shape the complaint, the litigation, and the debate on the merits. (I'll try to withhold discussing the merits themselves until we reach Part III, but that's going to prove exceedingly difficult.) I will then describe some of the civil procedure issues raised by the complaint as filed that are somewhat more specific to the complaint. I will close this preliminary trip through the jungle by suggesting some procedural alternatives that avoid some of these problems... and describing some of the additional problems that those alternatives reveal themselves.

A. Potential Remedies as Overriding Limits

I hinted in Part I that the potential remedies have a constitutional dimension to them concerning the jurisdiction of the federal courts over this lawsuit. The complaint itself is more than a bit vague on what it is requesting:

WHEREFORE Plaintiffs demand that:

(a) Pursuant to 28 U.S.C. § 2201, this Court declare that:

   (i) Defendants' systematic digitization and distribution of copyrighted materials without authorization constitutes unlawful copyright infringement in violation of Sections 106 and 108 of the Copyright Act; and

   (ii) Defendants' distribution and display of copyrighted works through the HathiTrust Orphan Works Project will infringe the copyrights of Plaintiffs and others likely to be affected;

(b) Pursuant to 17 U.S.C. § 502, this Court issue an injunction enjoining Defendants from:

   (i) systematically reproducing, distributing and/or displaying Plaintiffs' or any other copyrighted works without authorization except as specifically provided by 17 U.S.C. § 108;

   (ii) providing to Google for digitization copyrighted works without authorization;

   (iii) proceeding with the HathiTrust Orphan Works Project, including without limitation, from displaying, distributing or otherwise making available any so-called orphan work protected by copyright.

(c) Pursuant to 17 U.S.C. § 503, this Court order the impoundment of all unauthorized digital copies of works protected by copyright within the Defendants' possession, custody or control, including works whose copyrights are held by Plaintiffs, to be held in escrow under commercial grade security, with any computer system storing the digital copies powered down and disconnected from any network, pending an appropriate act of Congress.

(d) Pursuant to 17 U.S.C. § 505 this Court award Plaintiffs their attorneys' fees and other costs; and

(e) Plaintiffs be granted such other relief as may be deemed just and equitable.⁷

Then, a vague prayer for relief is both traditional and expected at this stage of a lawsuit. No discovery has been taken; no defendant has asserted any specific defense; and on this issue in particular, the underlying law is about as clear as the mud at the bottom of the Nung River. But how does this shape the lawsuit?

First, note that the request for declaratory relief in (a) is inconsistent with the request for injunctive relief in (b) and the request for impoundment in (c). This complaint is plainly trying to have things both ways by getting both a forward-looking declaration of who has what rights and a backward-looking remedy to stop infringement both permanently in (b) and during the pendancy of the suit in (c). At least it avoided the more-obvious Eleventh Amendment trap of requesting damages that I discussed before; the problem is that the request for attorneys' fees might also constitute a federal-court-ordered expenditure by an arm of the state that implicates the Eleventh Amendment.⁸

Leaving the inconsistencies aside, though, the remedies requested also will shape this litigation because they are founded on largely incompatible interpretations of potential evidence and potential legal arguments. The declaratory judgment requested in (a) essentially asks the court to determine whether under the particular evidence eventually entered into the record the HathTrust program constitutes an infringement of these plaintiffs' copyright rights. That kind of declaration is very fact-specific and fact-bound. The impoundment requested in (c) is also fact-specific and fact-bound to the particular program in question. The injunction requested in (b), however, is not; in fact, by its very terms it inverts the evidentiary considerations by concerning itself not with actual behavior, but potential future behavior engaged in "without authorization". At this point, it is worth recalling footnote 6 of Tasini — a comment that for copyright matters in the digital age may end up being the equivalent of footnote 4 in Carolene Products:

The dissenting opinion suggests that a ruling for the Publishers today would maintain, even enhance, authors' "valuable copyright protection." We are not so certain. When the reader of an article in a periodical wishes to obtain other works by the article's author, the Databases enable that reader simply to print out the author's articles, without buying a "new anthology … or other collective work." In years past, books compiling stories by journalists such as Janet Flanner and Ernie Pyle might have sold less well had the individual articles been freely and permanently available on line. In the present, print collections of reviews, commentaries, and reportage may prove less popular because of the Databases. The Register of Copyrights reports that "freelance authors have experienced significant economic loss" due to a "digital revolution that has given publishers [new] opportunities to exploit authors' works."

More to the point, even if the dissent is correct that some authors, in the long run, are helped, not hurt, by Database reproductions, the fact remains that the Authors who brought the case now before us have asserted their rights under [17 U.S.C.] § 201(c). We may not invoke our conception of their interests to diminish those rights.⁹

The "without authorization" language in the HathiTrust complaint's request for relief part (b) is a mirror of Justice Ginsburg's language in Tasini note 6. The complaint appears to contemplate a positive prior authorization by the authors, while Justice Ginsburg was primarily concerned with a positive objection to prior conduct. This is where it becomes impossible to separate the merits from the civil procedure issues, because some of the "authorization" (or, from the opposite perspective, limitations on rights to object) for activities depends not on the ordinary rights of copyright holders found in § 106, but on the particular privileges accorded to libraries in § 108.¹⁰

The remedies requested — and not requested — will also shape the litigation in two other respects. For one thing, the requested injunction in (b) does not necessarily reach either collective and collaborative action — hypothetically, each of several libraries providing enough of a work to fall inside of the fair use defense provided by § 107, but that collectively exceed whatever limit there may be to fair use¹¹ — or the propriety of authorizing a third party such as Google to engage in conduct that the "libraries and archives" could do themselves, but could not otherwise be done by that third party because the third party itself does not fall under § 108(a)(1) or (2). For another, by limiting itself to nonmonetary remedies (excepting my musings on (d)'s request for attorney's fees as it may relate to the Eleventh Amendment), the request for relief essentially bars inquiry into the arrangements between HathiTrust and its members, and between the libraries (collectively and individually) and third parties like Google that actually created the digitized versions in question. These are both, however, inquiries that are critical to the policies and practices implicit in determining the merits of the action.

Finally for now, there is an implicit definition of "infringement" in the remedies that is inconsistent with the rights provided to copyright holders in § 106 of the Copyright Act. The remedies requested imply that an infringement is not complete until a copy is distributed to a third party. As I have noted before, this is an unduly restricted description of infringement, because making the copy in the first place — digitizing the works — is an infringement all by itself. This is a fundamental error by plaintiffs' counsel that is perhaps required by the Authors' Guild's prior errors in the litigation against Google... that reflects the Authors' Guild's unsuitability as a representative/associational plaintiff in this action. At least this lawsuit avoids mucking that problem up further with considerations of suitability as a class representative; however, it also fails to extend the statute of limitations as a class complaint would (echoing precisely the problems raised by Tasini itself!).¹²

B. Litigation Without Representation

It's time for a (seeming) side trip to find some mangoes, make a nice mango cream pudding... and discover that this lawsuit, for purely civil procedure reasons, means far less than most commentators have been willing to accept; there's a missing party necessary to make the lawsuit ultimately meaningful.

Remedy requests (a)(ii) and (b)(iii) explicitly contemplate relief against HathiTrust related only to orphan works; remedy request (c) implicitly includes relief against HathiTrust related to orphan works. In order to obtain such relief, though, holders of rights in orphan works must either be directly before the court as parties, or adequately represented in the litigation by appropriate representatives. Obviously, the holders of rights in orphan works are not directly before the court; by definition,¹³ if the party claiming rights in a work is directly before a court as a party, we're not talking about an orphan work. Thus, we're reduced to having representation for the owners of rights in orphan works... and Judge Chin has already held that neither the Authors' Guild nor individual members would be an adequate representative for orphan works rightsholders.¹⁴ Instead, the only proper representative who could be found would be... the United States itself.

That's right: The paper tiger of copyright litigation is the only proper representative of orphan rights holders. And not only is the relevant agency (the Copyright Office) more-than-arguably agency-captured¹⁵ and saddled with an obvious conflict of interest regarding registration (and recordation) fees and the registration (and recordation) process, but the Department of Justice was pretty harshly critical of the Authors' Guild in its objections to the Google settlement. At least politically (in the broad, nonideological sense of "political"), this explains why the proper party to represent orphan works is not in front of the court.

This also reflects the converse of Justice Ginsburg's comment in note 6 of Tasini quoted above. The Copyright Act has a truly awful logical hole in it: It does not provide for "private attorney general"-type actions. If one pays attention to the entire text of the Intellectual Property Clause,¹⁶ one would assume that the enabling legislation would provide for private enforcement in "public interest"-type actions, similar to those for environmental protection and civil rights. The Declaratory Judgment Act¹⁷ comes closest, with its slightly relaxed concept of standing... but it does not provide for any remedy other than a declaration of rights — no injunctions, no impoundment of copies — and binds only the parties actually in front of the court.

Thus, one can be reasonably certain that the civil procedure theory of the complaint is seriously flawed, if only because the identity of whom the complaint brought in front of the court reflects serious flaws in procedural thinking.

C. The Imaginary Component of Complex Litigation

There is one other purely civil-procedure aspect of this mess that remains underappreciated... and is going to turn around and bite somebody on the butt (my money is on Google as the bitee, for reasons that I will explain in detail after we've plowed through the merits). If nothing else, the Google Book Scan litigation, with its multiple suits and failed attempts at class certification, constitutes complex litigation.¹⁸ Just look at what we have:

• The original Authors' Guild v. Google suit, which was consolidated with
• A publishers' counterpart (McGraw-Hill v. Google) in the hopes of settlement, which has now failed
• A parallel suit involving illustrations in scanned books from the American Society of Media Photographers, which is not consolidated with the two preceding suits
• Not to mention this lawsuit

And that's just in the Southern District of New York, which I have maintained from the beginning is the wrong venue. It does not consider any of two dozen or so (that I have found without doing an expensive customized search) individual suits that disclaimed class status that have been filed against one or more of the guilty parties — including publishers that improperly approved scanning when they did not have the authority to do so. Neither does it consider potential suits that might be filed against other guilty parties, such as cooperating libraries outside of the HathiTrust structure (and you know who you are). Perhaps most disturbingly, it fails to consider the web of conflicts among those appearing across the v. from Google. The obvious author-publisher (and illustrator-publisher) conflicts are bad enough... but as Judge Chin pointed out in his 22 March 2011 rejection of the proposed class settlement, the conflicts within the classes of plaintiffs are so severe that it was inappropriate to accept the settlement as fair.¹⁹

Managing discovery in this kind of a nightmare is going to be a challenge in itself. That will be a particular problem when dealing with orphan works and with fair-use defenses. A little farther down the road, both sides will undoubtedly be filing motions for summary judgment. Unfortunately, the Southern District of New York does not have rules as clean as those in the Northern District of Illinois for handling the way the parties present the facts and evidence, so we're going to have inconsistent presentations there on the same side of the v., which will in turn make things very interesting indeed for the judge.

Finally for now, there's the potential estoppel arguments... for each significant issue. Let's consider just a fair use defense for a moment. Ordinarily, if Google were to lose the fair use defense against any of these defendants, the other defendants would (and could) hold that finding against Google in their own proceedings.²⁰ The problem is that the four statutory fair-use factors²¹ (not to mention that overriding fifth fair-use factor, administrative convenience) are claimant-specific, because the third and fourth factors are substantially different for the intermediate licensee-distributor (the publisher) than they are for the licensor-creator (the author, or the photographer).

Last, though, there's the converse problem. Judge Chin properly called for legislative action, particularly in dealing with the orphan works problem. That, however, can only concern itself with future conduct; it is improper for Congress to insert itself so far into a pending matter that it directs the outcome of that matter. Thus, the longer that Congress waits to do something, the less it can actually do (which is not much of a surprise, is it?). In the meantime, the judiciary is stuck with not just the possibility, but the high probability, of inconsistent judgments and results in these actions. If nothing else, this points out an aspect of antitrust doctrine that was carefully neglected in the various public discussions of the proposed settlement.

D. Never Get Out of the Boat: Judge Baer's Summary Judgment Analysis

On 10 October 2012, Judge Baer ruled in favor of the defendants in the HathiTrust litigation on two distinct grounds. Each of those grounds deserves some substantive analysis. In the end, this particular part of the Authors' Guild's narrow-minded attack is far less about copyright than it is about how copyright matters get overwhelmed by civil procedure concerns when the initial complaint — indeed, the entire theory of the case — is so ineptly stated.

Judge Baer's generally well-considered opinion — at least, it's a well-considered opinion in the context of what was before him, in terms of both the record and the legal arguments — contains three holdings of import, although it is divided into two parts:

• The Author's Guild has constitutional standing to represent its unnamed members (and authors generally), but not statutory standing to do so (see slip op. at 4–10);
• The objection to the orphan works project part of HathiTrust is not ripe for consideration by the court; neither is the question of "associational standing" regarding foreign copyrights (see slip op. at 9–12); and
• The HathiTrust defendants are entitled to summary judgment, on the record before the Court, that the scanning process actually performed to date within HathiTrust's control — as subcontracted to Google — falls within the fair use doctrine in 17 U.S.C. § 107.

Contrary to bloviation that I've already seen elsewhere, though, Judge Baer did not hold any of the following:

• That no organization can ever represent its members in a copyright action (contra Fed. R. Civ. P. 23), or
• That libraries can copy/convert anything in their collections with absolute impunity (contra 17 U.S.C. § 108 (limiting the scope of library copying and reduplication)), or
• That "orphan works" are free game for copying (contra slip op. at 10–12), or
• That foreign authors cannot get any relief in US courts (contra slip op. at 9–10), or
• That the entire Google Books program is entitled, under all circumstances, to a presumption of fair use (contra slip op. at 14–15).

And those are just a few mischaracterizations that I came across without actually searching...

In any event, Judge Baer's decision is at least defensible. I cannot say the same for the plaintiffs' litigation strategy and documents. I find it rather disturbing when Judge Baer notes this:

Plaintiffs barely address the other proposed defenses asserted by Defendants to protect the MDP and OWP. In one paragraph, Plaintiffs argue that Section 108 prevents libraries from asserting other potential rights and defenses besides fair use, including Sections 109 (first sale), 110 (exemptions of certain performances and displays), and 121 (reproductions for the blind) and the First Amendment. Pls.’ Mem. J. Pleadings 23. No case law is cited. Plaintiffs’ motion for judgmenton the pleadings that Defendants have no defenses available to them as a matter of law is denied.

(slip op. at 12, emphasis added) Of course, the reason that "no case law [was] cited" is that the AG's position was wrong... in addition to making a decision-of-convenience to file in the wrong place, as I've argued all the way back to 2005. This matter should have been filed in Michigan; as a consolidated action including both the "authorizing" libraries and Google; by proper parties plaintiff; and by counsel experienced in the nuances of copyright and contested class actions, as well as the speedbumps of settling class actions. In short, the Authors' Guild's handling of this matter was profoundly strategically flawed from the beginning... and that tends to lead to this sort of outcome, in which losses get magnified in their deterrant effect on future — better — efforts. That Judge Baer's opinion is defensible does not make it entirely correct (at least not in the abstract sense): He was constrained by a flawed record and litigation strategy, by some dubious precedent, and by the posture in which he heard the matter.

The procedural aspects of this matter demonstrate that neither the Author's Guild nor its counsel understand what they're doing... which did not necessarily make the adverse ruling in the HathiTrust segment a foregone conclusion, but certainly made it much easier for Judge Baer to come to that conclusion. In this particular instance, it's actually easier to criticize the AG and its counsel by pointing out the myopia in its 20/80-hindsight post-judgment "press release" issued this morning. The critical language in that post-judgment "press release" is this:

We disagree with nearly every aspect of the court’s ruling. We’re especially disappointed that the court refused to address the universities’ “orphan works” program, which defendants have repeatedly promised to revive. A year ago, the University of Michigan and other defendants were poised to release their first wave of copyright-protected, digitized books to hundreds of thousands of students and faculty members in several states. The universities had deemed the authors of these books to be unfindable. Within two days of filing our lawsuit last September, Authors [sic] Guild members and staff found that the “orphans” included books that were still in print, books by living authors, books whose rights had been left to educational and charitable institutions in the U.S. and abroad, books represented by literary agents, and books by recently deceased authors whose heirs were easily locatable.

(fake paragraphing omitted for clarity, which should never be necessary from an authors' organization!) This reflects three specific types of inexcusable ignorance of how the lawsuit actually was resolved:

• Judge Baer held that the Authors' Guild has no associational standing, so of course he didn't reach the issue of orphan works. Under his own reasoning, he couldn't: If the Authors' Guild has no associational standing under the statute, it certainly cannot represent non-AG members who "own" orphans. As I noted upon the initial filing in this lawsuit, "associational standing" is not the same thing as "class representative"; there are a lot of parallels, but the rules are different. (As we'll see below, the precedents essentially gave Judge Baer no choice on this; it's an unfair and unjust result in a way, but it's the law, dammit.)
• After Judge Chin's evisceration of the Authors' Guild's ability to represent orphans in the parallel litigation against Google, nobody should have been surprised — let alone disappointed. Ignoring the T. Rex (or, perhaps, T. Lex?) in the room of a prior adverse ruling on the same issue, in the same context, involving the same assertion by the same party, is a mistake that first-year civil procedure is supposed to wash out of every lawyer's hair (see note 20).
• There's a huge difference between procedure and merits. They certainly influence each other; however, the AG's statement mixes the two aspects back and forth in a dizzying spiral of illogic.

So, then, what the heck is "associational standing" in the first place, and why did the precedents in the area force Judge Baer's decision (particularly given the paucity of analysis provided by the AG in its own submissions)? In US law, one must have both constitutional and a cause-of-action-based standing, or a lawsuit (even a criminal prosecution) cannot proceed. The underlying principle is that lawsuits are supposed to be decided by and between those affected by it, so that the remedy afforded a winning party reflects the actual interests at stake. Constitutionally, this refers to the "case or controversy" aspect, plus some other "prudential" doctrines. US courts refuse to issue so-called "advisory opinions" (the "declaratory judgment" is not quite the same thing, because it's... well, a pernicious jurisdictional beast, but that's a discussion for another time); instead, there must be an actual, live dispute between the parties before the court. And that leads to the problem with "cause of action" standing: Under U.S. law, one can assert only one's own rights in court unless there's a specific legal exception. For example, if A libels B, C cannot sue on B's behalf. The exceptions are usually statutory; the most obvious one is the one that makes the State a party in criminal proceedings, because criminal matters are offenses against both the actual victim(s) and the peace and order belonging to the State as a whole. Similarly, some statutes give "private attorney-general" powers to litigants, such as the notorious Cal. Bus. & Profs. Code § 17200 et seq. (providing "private attorney general" powers to virtually anyone to attack many unfair trade practices).

As Judge Baer points out in his analysis, the Copyright Act does not have a "private attorney general" provision, meaning that the Authors' Guild cannot rely upon the "associational standing" decisions (usually related to environmental law) that do allow an association — such as the Sierra Club — to stand in the place of its individual members for certain delineated causes of action. This is one place that I wish Judge Baer had been a bit more explicit in distinguishing matters. Under the causes of action in environmental suits, a harm to one member of the Sierra Club, or the Natural Resources Defense Council, or the Audubon Society, is necessarily a cognizable and identical harm (in nature, if not necessarily in extend) to every other member of the voluntary membership organization. Under the Copyright Act, though, that is simply not the case; by definition, an infringement of copyright A is not a harm to copyright B. Indeed, this is merely the mirror image of Justice Ginsburg's well-taken note 6 in Tasini.²² The mirror-image reasoning is compelling, and demonstrates why the law mandates Judge Baer's decision on associational standing: If one author can choose to assert his/her rights, an otherwise similarly situated author can choose not to. And some authors are obstinate in refusing to assert the "rights" that the Authors' Guild would force upon them through associational standing.

As a non-irrelevant aside, I should point out that federal law provides another way to deal with the problem of joint action on behalf of others: The class action. That does provide a statutory basis, under Fed. R. Civ. Proc. 23 (authorized, in turn, by the Rules Enabling Act), for persons and organizations to represent the interests of absent parties. Then, Judge Chin already shot down the AG's ability to represent orphan works in a class action, and noted — quite properly — that it is for Congress to fill the hole in the statute, not the courts and certainly not private parties seeking to obtain a long-term revenue stream resulting from administrative fees for the remedy.

In any event, that's enough for now on associational standing. Judge Baer correctly held that the statute as it stands does not provide the Authors' Guild with associational standing to assert the rights of orphan works' authors... at least absent an explicit agreement by those members to allow the AG to do so. The AG's discussion of the inept way that HathiTrust set up its orphan works program is, therefore, entirely irrelevant. There's plenty of blame to go around concerning HathiTrust's program. Judge Baer's decision means that the Authors' Guild is not the correct party to be pointing the finger of blame concerning orphan works.

The second half of the procedural jungle in the HathiTrust summary judgment decision — which is necessary to understand the decision on the merits — concerns two areas of the merits for which Judge Baer explicitly said he is making no decision of any kind whatsoever. This is an extremely important exclusion, and it's one that I can guarantee various posturing parties and inept commentators will screw up... as they already have (in so many places and ways that I lost count by midday on Thursday).

As mentioned previously, Judge Baer explicitly held that the Authors' Guild has no standing to make any claim concerning orphan works, whether of members or nonmembers of the AG. Remember, the 2006 "definition" of "orphan works" (PDF) concerns whether the actual, definitive holder is found with appropriate effort. It's not a very difficult hypothetical — indeed, it's not hypothetical at all — to posit an AG member who holds a disputed or less-than-majority interest in an otherwise orphaned work, meaning that even though one knows exactly whom one might contact that the contact would be futile.²³ In turn, this means that Judge Baer's decision means nothing whatsoever concerning orphan works. He has explicitly carved orphan works out from the scope of his merits decision on fair use. At most, Judge Baer's decision indicates one possible way that facts concerning orphan works might be analyzed in the context of the HathiTrust program. Of course, the point of excluding the orphan works from this decision is that the facts were not before the court and ripe for decision.

And that takes us to the other carve-out in Judge Baer's decision: Foreign holders of copyright who would enforce their domestic rights in US courts. The obvious, knee-jerk reaction is that "US courts decide based on US law, so the German/Japanese/Australian/whomever authors shouldn't be here in the first place." That knee-jerk reaction is, however, blatantly wrong; US courts decide matters from outside their jurisdiction — even outside any US jurisdiction — constantly. Just consider the concept of attachment or arrest of a vessel that appears in Fifth Circuit decisions (reported and unreported) at least two or three times a month. What US law there is explicitly derives from international and UK-based maritime law, meaning that the core of the decision is not US law. Further, to get personal jurisdiction over the HathiTrust defendants, the foreign authors need to come to a US court.

Judge Baer's solution was to invoke the judge-made doctrine of "ripeness" and hold that the foreign-author-asserting-foreign-copyright issue was not ripe for decision. This doctrine asserts, in the abstract, that when the law and facts are not set, a court should not decide a dispute even when requested by the parties. Ripeness is a close cousin of the advisory-opinion doctrine I mentioned earlier, and — for you foreigners who are not from a common-law system — must seem particularly bizarre. All of that said, this particular carve-out on ripeness grounds is legally unnecessary, because it is outside the associational standing of the AG, and Judge Baer could (and in the abstract should) have applied the same reasoning to the foreign authors' organizations that joined the AG. Rhetorically, however, it is necessary to state a different rationale for this particular carve-out than mere associational standing, precisely because we're dealing with foreign parties.²⁴ That's because despite the vigor with which Judge Baer presented his conclusions on associational standing, it's far from a foregone conclusion... and certainly not binding upon any other authors' organization that might sue HathiTrust independently. Consider, for example, an authors' organization whose corporate charter and membership agreement establishes an "opt-out" permission that explicitly grants the authority to proceed in copyright matters to the organization unless the member opts out on a case-by-case basis. (I don't know of such an organization at present, but I do know that the concept has been raised in more than one instance.) In that circumstance, most of Judge Baer's reasoning would fail, because the authors' organization would be the Sierra Club asserting a right that the members individually had specifically granted to the organization... and, therefore, Judge Baer's analysis concerning the absence of statutory authority would fail. There might be prudential reasons to not accept that grant, but that's a different set of facts and different legal reasoning than Judge Baer was concerned with.

Now that we've cleared away much of the procedural underbrush, it will be time — next time, that is — to consider the merits of Judge Baer's decision. The facts and reasoning are not as strong as either commentators have claimed or Judge Baer's opinion makes them seem... and, in the end, reflects what happens when one enters a conflict without a clear objective. Remember my comparison of this morass to Apocalypse Now!? You should be starting to feel the jungle closing in now...²⁵

III. The Merits Madness Without Method

Judge Baer also decided a critical merits question, and it's one that has wags wagging with WAGS on what it really means. Ironically, it also exposes a jurisprudential error in reasoning by Judge Posner, ratified by the Federal Circuit, in an entirely separate matter, that on its own demonstrates why courts are so ill-suited for dealing with what is rather ineptly called "intellectual property." Unfortunately, the courts are what we've got; so it makes a lot of sense to see what was actually in front of the court for Judge Baer to decide first, before completely flying off to theory-land.

A. A Very Sandy Foundation for the Merits

Rhetorically, the biggest problem with the AG complaint against HathiTrust²⁶ is that it leads off the factual allegations and theory of the causes of action not by stating what was done to wrong the plaintiffs, but by spending nearly three pages making a ridiculous, purely legal argument about restrictions on libraries. This is just plain bad writing, even aside from the legalese. As upsetting as that is in the abstract, there's no excuse for it when the client is a trade organization of commercial authors.²⁷ Sadly, the writing and clarity of presentation don't get much, if any, better as the complaint proceeds toward its conclusion. This is perhaps inevitable, because the theory of the complaint is so poorly considered that better writing would only have exposed its substantive flaws. Fortunately for everyone involved, elegant and clear writing is not the standard of decision in legal disputes. Perhaps, in the best of all worlds, it would be; this not being the best of all worlds, we'll just have to put up with reality.

Reorganizing it to make the kind of sense that is necessary, the complaint alleges:

• The libraries engaged in, and authorized Google as their agent to engage in, massive digitization of works found in the libraries' collections (¶¶ 48–54);²⁸
• The libraries did not seek, and did not in fact have, permission to engage in the massive digitization effort (¶ 55)
• The libraries facilitated or made digital copies of a number of specific works protected by copyright (¶¶ 13, 21–33, and Exhibit A)
• The libraries cooperate to make digital copies available to each other, even for works not in the collection of the particular library (¶¶ 62–67)
• The libraries cooperate to make (either now or in the future) digital copies available to library patrons, even for works not in the collection of the particular lending library (¶¶ 68–72)
• The libraries' functions have extra impetus regarding orphan works (¶¶ 73–79) and due to the pending litigation against the libraries' agent, Google (¶¶ 56–61)
• Libraries have certain limited privileges to make works available for preservation of their content and for research and related creative purposes under § 108 of the Copyright Act (¶¶ 40–47, 82)...
• ...but those privileges do not extend to systematic enlargement of their collections without regard to rights under § 106 (¶ 82), particularly when the digitization effort may be worth money (¶ 53)
• The libraries must therefore be enjoined from digitizing works en masse, and from benefitting from past digitizations, and from authorizing others to do what they, themselves, might be allowed to do on an individual-work basis (¶¶ 40–47, 83–86)

Of course, these are only allegations, not facts. The Answer²⁹ responds in substance to these broad allegations as follows:

• The libraries admit that they engaged in, and authorized Google as their agent to engage in, massive digitization of works found in the libraries' collections
• The libraries did not seek, and did not in fact have, explicit permission to engage in the massive digitization effort... because they're libraries, and § 108 among other provisions allows them to serve patrons first and deal with copyright matters second
• The libraries admit that they, or their agent, made digital copies of a number of specific works protected by copyright, but deny that they did so unlawfully
• The libraries cooperate to make digital copies available to each other, even for works not in the collection of the particular library
• The libraries cooperate to make (either now or in the future) digital copies available to library patrons, even for works not in the collection of the particular lending library
• The plaintiffs have no standing to complain about orphan works, which (ironically) form the core of libraries' functions under § 108 — and in any event the plaintiffs' descriptions are inaccurate³⁰ — and the pending litigation against Google concerns the actions and intentions of a nonparty to this suit of which the defendants do not have legally attributable knowledge
• Libraries have certain limited privileges to make works available for preservation of their content and for research and related creative purposes under § 108 of the Copyright Act...
• ...but the plaintiffs' statement of purported "restrictions" in § 108 misstates the law, which speaks for itself
• Enjoining the libraries would serve no good purpose, particularly since the libraries' actions were not unlawful in the first instance...
• ...and, as an affirmative defense, were authorized under the fair use provision of the Copyright Act found in § 107 (Ans. at 23 ¶ J)
• A virtual smorgasbord of other affirmative defenses (Ans. at 22–24) also make the relief the plaintiffs request inappropriate and/or unauthorized

So that's what is at issue. As an initial, substantive matter, the key thing to note is the horrible idiocy of having filed this suit separatedly against HathiTrust in the first place... because it prevented the best possible underlying theory from being presented: Conspiracy. Because Google is not a defendant in this lawsuit itself, the plaintiffs cannot assert the best policy assertion. Even if individual actors' actions might have been lawful, that those actions were in furtherance of an unlawful action makes them unlawful in hindsight. That, for example, is why the getaway driver who never enters a bank is potentially liable for felony murder if one of the robbers shoots a teller (or even one of the other robbers!) during the robbery. It is also why the bookkeeper who arranges for a series of otherwise legal withdrawals and funds transfers of $9,900 each, so as to evade IRS reporting requirements,³¹ is liable for his part in a reporting/evasion scheme. In short, this particular screwup goes back seven years, to the ineptness of the initial complaint by the Authors' Guild against Google itself. It's the converse of the divide-and-conquer strategy: Sometimes it's strategically unwise to seek to defeat an enemy "in detail."

B. Fair Use of What, Exactly?

Judge Baer made a number of findings concerning the merits of the HathiTrust suit. Several are unremarkable, such as his compelled-by-the-statute finding that § 108 does not limit other rights and obligations of libraries found elsewhere after § 106A, but instead supplements them. The real problem with Judge Baer's opinion is the meat of the substance: The analysis of fair use. In one sense — a sense that is being entirely ignored, and is unfortunately implicated by some less than ideal rhetoric in the opinion itself — Judge Baer's analysis is quite unremarkable and quite correct. In a broader sense, though, its lofty statements of principle do not stand up to analysis... and ultimately, Judge Baer falls into the nonstatutory-fair-use-factor trap in his analysis.

Too many commentators (including some who should know better) have completely neglected the civil-procedure prologue to the juicy stuff. Judge Baer's opinion, by its own terms, does not apply to mass digitization programs... because there was no one with standing before him to object to mass digitization programs. Instead, Judge Baer's opinion applies only to the seventy-odd works (by only a dozen authors) listed on Exhibit A to the First Amended Complaint. After throwing out the associational standing assertions, Exhibit A is all that is left of the case.³² Unfortunately, Judge Baer's rhetoric is not so limited; neither is his fair use analysis.

Just as is copyright itself, fair use is a matter of statute. Too often, bloviation on fair use neglects the statutory structure:

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
   (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
   (2) the nature of the copyrighted work;
   (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
   (4) the effect of the use upon the potential market for or value of the copyrighted work.
The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.³³

Leaving aside the particularly suspect logic and inelegant wording of the statute (a complete defense based on a balancing test among "factors to be considered [which] shall include"... implying that there are others?), the stated factors reflect a rather disturbing ignorance of the nature of evidence in copyright suits. The overlap in evidence actually presented for the first and fourth factors is immense; the overlap in evidence actually presented concerning the first and second factors is usually substantial, if not quite so sever. Meanwhile, the third factor is the one that matters the most from a nonlegal perspective, and certainly bears the closest relationship to the nonlegal concepts of "copying" and "plagiarism." Regardless, § 107 is what we (and Judge Baer) have to work with, concerning those seventy-odd works that remain at issue in this mess.

Factor 1: Purpose and Character of the Use

Judge Baer held that the first factor favors the defendant libraries. Unfortunately, his reasoning skips over too many intermediate steps, rather like this cartoon, primarily because he improperly conflates the purpose of the end-user(s) with that of the copier(s). On balance, for the limited number of works actually at issue and properly identified in Exhibit A, his analysis mostly works. The ultimate problem is that his rhetoric — admittedly, as constrained by questionable decisions of the Second Circuit — states a helluva lot more as a conclusion than the demonstrated warrant justifies. Judge Baer's analysis of the first factor itself divides into three considerations:

• The ultimate goal is research, which can satisfy a "propriety of use" subfactor created by the Second Circuit³⁴ to help demonstrate a fair use defense. The real problem here is whether this defensible goal is that of the defendants, or of the patrons (who are not before this court), or of the defendant's agent Google (again, not before this court). Unfortunately, Judge Baer's decision — and, for that matter, the rather unsatisfactory briefs from both sides — improperly conflates all three actors, even though two of them are not before the court. This is inconsistent with the concept of inducing infringement³⁵... but nobody raised that issue in the briefs.
• A transformative use can qualify as a "pro-defendant" result for this factor, and creating an indexing system is such a transformative use. This largely depends upon what one means by "index." In the context of this case — at least as presented by the parties — an index is merely a key-word-in-context ("KWIC") finding device, similar in scope to doing a "find" for an exact phrase in a word processor over the entire universe of documents. Those experienced in creating indices actually found in books — and used for academic research — would not agree; to them, a true index is seldom for literal expression, but is instead for implications and concept analysis. For example, consider a useful-to-scholars index of Parliament's records concerning the Statute of Anne. A KWIC index of the debates prior to expiration of the Licensing Act in the 1690s would not include many references to "John Locke"... but he was the architect of, and indeed ghostwrote, many speeches in opposition to renewing the Licensing Act. This illustration points out that a KWIC index probably is not transformative, or is only minimally transformative... and that is all that the copying alleged to infringe the rights that are at issue before the court could be. Instead, the actual transformation would be by the end user, not HathiTrust.³⁶
• Making works available to the visually impaired is also a transformative use that can qualify as a "pro-defendant" result for this factor. Here, I must respectfully disagree with Judge Baer's analysis. I fully understand the impetus to decide this matter based upon a single legal theory. The problem is that the citation to Sony is not only inapposite to his point... but it contradicts the requirements of the Copyright Act itself. Provision of access to the visually impaired is not a fair use defense,³⁷ and must be considered separately.

Another problem with Judge Baer's analysis is that it is not tied directly back to the works in front of him. The question before him is not the purpose and character of use for the "massive digitization program"; it is, instead, the purpose and character of use for the seventy-odd works in front of him.³⁸ And there, one must note that a "research purpose" is much less clear from the nature of those works... but that gets into the second factor, and provides a good transition.

Factor 2: Nature of the Copyrighted Work

Taking this factor at face value, the works listed on Exhibit A do not have much in common other than "appeared in printed volumes in the English language." Most are U.S. works, some are not; some are fiction, some are nonfiction; a few have some serious (albeit not scholarly) aspects, virtually everything else does not; some are in print at this time and/or at the time of filing and/or at the time the initial GBS lawsuit was filed in 2005, some are not; some are the first publication of the respective material, some include previously published material; and so on. This is a relatively common problem with fair-use inquiries in non-work-specific litigation: Counsel (either purposely or otherwise) tends to make the panoply of works at issue as broad as possible. In turn, this results in decisions that are unfortunately taken as general statements of general principles that apply to all works, rather than concerned with the works actually at issue. Rhetorically, at least, that certainly happened in this matter!³⁹

Turning to what Judge Baer actually said on the nature-of-the-copyrighted-work factor — and remembering that as a matter of law, he is considering only the works on Exhibit A, no matter how lofty his rhetoric — we find this:

"[S]ome works are closer to the core of intended copyright protection than others." Copying factual works is more likely fair use than copying creative works. However, where a use is transformative, the nature of the copyrighted works is not likely to "separate the fair use sheep from the infringing goats." Here, Plaintiffs identify 116 works that they allege were unlawfully digitized by Defendants as part of the [massive digitization program]. Approximately 76 percent of the identified works are fiction. In the [HathiTrust Digital Library] as a whole, approximately 9 percent consists of prose fiction, poetry, and drama. Because the use is transformative, intended to facilitate key-word searches or access for print-disabled individuals, the second factor is not dispositive ("[T]he second factor may be of limited usefulness where the creative work of art is being used for a transformative purpose.").

Slip op. at 18 (internal citations omitted). And that is the entire discussion.

In this instance, Judge Baer has been put in a bit of a bind by the Second Circuit. Remember, as a District Court judge sitting in the Second Circuit, he must treat interpretations of the underlying statute by the Second Circuit as the definitive ones, unless/until they are overturned by either changes to the statute or a Supreme Court decision. In this particular instance, the Second Circuit has incorrectly interpreted § 107's second factor as depending upon the resolution of the first factor. There's simply no way to defend this position based upon either reading the statute itself or reading the statute together with the legislative history of § 107, stretching all the way back to the initial study-group submission in the 1950s. The only way one reaches this result is by accepting the judge-made doctrine of fair use under the 1909 Act as not merely persuasive, but binding, interpretations of a doctrine codified anew in the 1976 Act.⁴⁰

All of that said, this is by far the most unsatisfactory aspect of Judge Baer's opinion; it is the miracle on the chalkboard. Judge Baer has already (and, IMNSHO, correctly from both legal and policy perspectives) carved out a large number of works from consideration with his considerations on standing. The nature of the works at issue in the binding precedent deserved considerably greater discussion, particularly as compared to the works actually in front of him. Of the entire fair use discussion, this factor is the one that most clearly falls into the concluding-beyond-the-warrant trap. A better decision would have emphasized the distinctive natures of the individual works at issue. In the end, though, I'm not sure that would have led to a different result, particularly when considering the other four factors.

Wait a minute; if § 107 has four clearly numbered factors, and this is one of them, how are there four factors other than "nature of the copyrighted work"? We'll see that fifth, nonstatutory, and ultimately determinative factor more clearly when discussing the third statutory factor, and certainly when discussing the fourth one. For now, though, consider this a pathetic attempt at a cliff-hanger... all too appropriate given some of the particular works of fiction at issue...

Factor 3: Amount and Substantiality of the Portion Used

At a deep, theoretical level, factor three is an utter nightmare when considering indices of any kind... and non-human-generated indices even more so. Does an index "use" the material to which it is referring? Does any such use rise from being a statement of fact about the copyrighted work to being an extraction of expression from the copyrighted work? Does the preparation method applied to the copyrighted work prior to actually creating the index itself independently "use" the work? It should really surpise no one that these questions did not get answered. Leaving aside some dubious lawyerly performance, it is not strategically in any party's best interest to try to answer them, let alone for less than the universe of all copyrightable works... and even if it was in their interest, that's at least as much a legislative task as is the orphan works problem.⁴¹

So, then, what did Judge Baer do with what was in front of him on this factor? Recalling yet again that this concerns only the Exhibit A works — the vast majority of which are not themselves factual compilations — the entire discussion in the opinion is this:

The third fair-use factor considers whether the amount of copying was reasonable in relation to the purpose. "[T]he extent of permissible copying varies with the purpose and character of the use." The question is whether "no more was taken than necessary." Sometimes it is necessary to copy entire works. "Intermediate" copies may not be infringing when that copying is necessary for fair use. Here, entire copies were necessary to fulfill Defendants’ purposes of facilitation of searches and access for print-disabled individuals ("If Arriba only copied part of the image, it would be difficult to identify it, thereby reducing the usefulness of the visual search engine."). Plaintiffs argue that Defendants did not need to retain copies to facilitate searches; however, the maintenance of an electronic copy was necessary to provide access for print-disabled individuals.²⁶

—————

26. Not to mention that it would be a tremendous waste of resources to destroy the electronic copies once they had been made for search purposes, both from the perspective of the provision of access for print-disabled individuals and from the perspective of protecting fragile paper works from future deterioration.

(slip op. at 18–19, internal citations omitted, footnote in original, emphasis added).

Within the strictures that Judge Baer believes the existing precedent imposes upon him, this is probably about right. This is neither the time nor the place to argue about what Arriba Soft means, or whether Campbell's conception of "amount taken" was restricted to creation of a nonfactual work.⁴² Neither is it the time or place to note the circularity of reasoning inherent in factor-three analysis; that's a matter for the legislature that establishes the factors. All of that said, the third factor no longer seems relevant in most fair-use decisions,⁴³ and if one accepts Judge Baer's reasoning on the first factor as to the works before him this rationale is almost unimpeachable.

That is, it is probably about right until one reads footnote 26 of the decision, at which point the fifth fair use factor — the nonstatutory one — begins to become apparent. First, one should note that the "fragile paper copies" premise in footnote 26 is true only for the broad universe of all works in the University of Michigan (et al.) libraries... but not, on the record before Judge Baer, for the works on Exhibit A, and not even for all orphan works. Remember, the fragility issue matters only if those fragile copyrighted works are still in copyright; if the works are not in copyright, we don't even reach the fair use issues!

Second, the phrase that I've put in bold reveals what is really going on here. This case is not about any particular work, or any particular use of a work; it is about administrative efficiency and convenience for the copying party. This will become even more apparent when considering the fourth statutory factor, and I'll try to tie it up in a separate discussion (short preview: Indefensible interpretation as a matter of policy, of constitutional law, of treaty obligations, and of statutory interpretation... but nonetheless the prevailing view in the judiciary in general and the Second Circuit in particular). That the briefs in this matter essentially treat fair use as a right and privilege, and not a defense that must be proven by the weight of the evidence,⁴⁴ represents a fairly serious error by plaintiffs and plaintiffs' counsel. And it's an error that's going to force virtually every plaintiff's counsel hereafter to exceed page limits in briefs both explaining the limits of this decision and showing how that works at issue in that later action don't align with the seventy-odd works at issue in this one. Thank you, Authors' Guild.

Factor 4: Effect Upon the Potential Market For or Value of the Copyrighted Work

This factor should have been at minimum a toss-up. Unfortunately, it is not; Judge Baer's decision is a clear victory for the defendants, marred as it is by rhetoric applied well beyond the 78 works at issue.⁴⁵ He is careful, however, to note that this particular factor relates to the libraries, and not to their profit-seeking agent Google:

Plaintiffs argue that Defendants uses cannot be considered noncommercial because of their relationship with Google. Although the relationship between Google and Defendants is potentially relevant to the uses of the works made by Google, that issue is not before this Court. My determination that the Defendants' uses are noncommercial relies on the uses actually made by Defendants in this case, that is, text searches, access for print-disabled persons, and preservation.⁴⁶

In the context of the uses at issue, for the works at issue, by the defendants at issue, Judge Baer's analysis of the statutory fourth factor is quite straightforward. He stumbles a bit on the disabled-access issue by continuing to mix that separate defense with fair use, but that is ultimately unavailing in this context anyway. The two realistic objections by plaintiffs inside the bounds of the fourth factor are rather cursorily rejected... but the record makes that almost inevitable. The plaintiffs objected that there are "mass security risks" to their works created by the continuing existence of the digitized copies. In one sense, the plaintiffs are correct to worry about this: Piracy is going to happen as a result of these copies. That said, it's not the libraries' problem,⁴⁷ and the libraries appear to be taking reasonable precautions.⁴⁸

Judge Baer's analysis of the final argument made by the plaintiffs on this factor reveals far more about the lack of business acumen and knowledge on the part of the plaintiffs than it does anything else:

Plaintiffs' argument about a potential market is conjecture. "Were a court automatically to conclude in every case that potential licensing revenues were impermissibly impaired simply because the secondary user did not pay a fee for the right to engage in the use, the fourth factor would always favor the copyright owner." A copyright holder cannot preempt a transformative market. Although Plaintiffs cite the Second Circuit’s decision in Texaco for the proposition that this Court ought to consider the "impact on potential licensing opportunities," they omit the remainder of the quote, which concludes that courts should consider "only traditional, reasonable or likely to be developed markets." Because I conclude that at least two of the uses are transformative—that is, the provision of search capabilities and access for print-disabled individuals—any harm arises, if at all, to a "transformative market." A use that "falls within a transformative market" does not cause the copyright holder to "suffer market harm due to the loss of license fees."⁴⁹

Had the plaintiffs entered into evidence the terms of Amazon's Kindle Select Program — which limit royalties for works that are otherwise available in electronic form, and have been enforced against copyright holders facing widespread pirated editions — that would have been enough to at least make this a nonspeculative argument. On the record in front of him, though, Judge Baer didn't have a lot of choice... especially given the overblown rhetoric in the precedent he was faced with.

Factor 5: Administrative Efficiency and Convenience

And here, I am afraid, Judge Baer really does go outside the scope of the statute... but he does so in a way that is consistent with the rather incoherent way that the law of fair use has developed over the last thirty-odd years, and in particular in the Second Circuit and related to the internet. Although he does not explicitly state that this is a fifth factor that is being weighed along with the four found in § 107 itself — indeed, he folds explicit acknowledgement of this factor into his discussions of the first, third, and fourth factors — the actual discussion implies otherwise.

Defendants offer substantial evidence that it would be prohibitively expensive to develop a market to license the use of works for search purposes, access for print-disabled individuals, or preservation purposes. Waldfogel Decl. ¶¶ 7, 22–24 (estimating that the costs of such a license as to the works in the HDL would be in the neighborhood of $569 million and that the potential revenue generated would not cover these costs so it was not a "commercially viable endeavor"). This also assumes that the holder of each copyright could be identified, id. ¶ 24, a tenuous assumption to say the least. Plaintiffs characterize this as an argument that "it is permissible tosteal the goods if it is too expensive to buy them." Pls.' MSJ 15. However, Defendants argue that the high costs will prohibit the formation of a viable market in the first place, and as a consequence there will be no one to buy the goods from. Although Plaintiffs assert that the Copyright Clearance Center ("CCC") could eventually develop a license for the uses to which Defendants put the works, see Gervais Decl., the CCC has no plans to provide for or develop such a license. Petersen Opp’n Decl. ¶ 9. Even if Congress will eventually find a way to regulate this area of the law, "it is not the [court's] job to apply laws that have not yet been written."⁵⁰

To say the least, this is a startling statement that goes well beyond the justification in the record, or indeed at the core of copyright law itself. It is nonetheless entirely consistent with the disdain apparent in the Second Circuit for authors who do not wish either themselves or their works to be treated as either just like all the others... or as having no discretion themselves.⁵¹

As an initial note, on this fifth factor there is not, in fact, sufficient, uncontroverted evidence before the court to make any finding. (That would leave Judge Baer deciding the matter on just the four statutory factors.) The evidence he cites from the record concerns the entire universe of works in the Hathi Digital Library... but Judge Baer has already properly narrowed that universe down to a Mars-like planet with a couple of small moons orbiting a rather dim star. Once he has denied standing and ripeness concerning the works not listed on Exhibit A, evidence related to those other works is irrelevant. Whether one credits the inflated and unrealistic cost estimate in the Waldfogel Declaration⁵² as to the entire HDL is immaterial. The redacted Waldfogel Declaration is concerned entirely with the entire universe, and presents no data or conclusions as to subsets of works. Indeed, examination of Exhibit C — the listing of data sources — should have led counsel for plaintiffs to both object to the Waldfogel Declaration in its entirety and to produce a persuasive counterdeclaration. That they didn't does not make things any better for anyone.⁵³

Turning to the merits of the fifth factor, I must respectfully disagree with a critical aspect of Judge Baer's analysis. Section 107 is drafted — as the underlying structure of the Copyright Act requires — from the perspective of the copyright holder's rights. This particular explanation of the fifth factor, however, is from the perspective of the potential costs to an alleged infringer of complying with the statute's requirements. However much one might want cost-benefit analysis to be part of the Copyright Act, it is simply is not.⁵⁴ If it was, the registration system would disappear so fast that the pages of the Registry would spontaneously combust! The evidence is not there; neither is the rationale, particularly related to any of the four factors that are stated in § 107. If the case itself turned on this fifth factor, Judge Baer's analysis would be persuasive grounds... for reversal. Fortunately for the libraries, however, it does not.

Fair use is a defense — an "exception to the statute" and its grant of exclusive rights to authors that must ordinarily be construed "narrowly in order to preserve the primary operation" of the statute.⁵⁵ Judge Baer's invocation of the fifth, nonstatutory fair use factor fails to recognize this; of course, it has a lot of company in so doing. Unfortunately for the authors of the 78 works before him, though, on balance — on this record — Judge Baer's evaluation of the factors is defensible, even after removing the considerations that he should have entirely excluded from his evaluation.

Balancing the Fair Use Factors

Finally, the result. If one accepts Judge Baer's analysis and pays attention to evidence as actually before him — and, I must regretfully repeat, the plaintiffs' counsel did not do a very good job of building a record with persuasive, nonspeculative factual material — there's little doubt about the balance of the fair use factors. It really does not matter whether there are four or five factors in the balancing pan; on this record, Judge Baer's conclusion that the HathiTrust program is fair use of the 78 works that are at issue is quite defensible.

From a jurisprudential point of view, though, Judge Baer's analysis — and Second Circuit analysis — depends upon a serious flaw in the Copyright Act itself. Because the act does not distinguish among kinds of works, it is far too easy to reach far, far too broad a result based upon dubious analogies between different art forms. Consider, for example, the most-critical case in Judge Baer's analysis: Bill Graham.⁵⁶ Dorling Kindersley published a book that included reproductions of concert posters from long-ago concerts, many of them promoted by Bill Graham. Of note, the reproductions were considerably smaller; were only part of a larger, integrated work; were not in any fashion suitable as substitutes for the originals. More to the point, they were "transformed" from transient advertising to cultural artifacts and part of a larger, self-sustaining work. But later invocations of Bill Graham have almost never acknowledged that the transformation in that case was far, far more radical in form and in nature that what was at issue. Bill Graham is an easy case;⁵⁷ it's an easy case that makes bad law, particularly when it is read as making broad pronouncements of law that get misread as applying too far out of context.

Had plaintiffs' counsel done a better job in setting up contested facts demonstrating potential and actual substitution — and done a better job showing how little transformation there is between textual works and a textual database that contains the entirety of that work in a form that is a complete substitution but for not being on paper — perhaps this would have been a closer call for Judge Baer. However, the flaws in the complaint made that a much more difficult task than it already was.

C. The Horror

... or why, after we've made our way through the jungle, we're left confronting Colonel Kurtz and trying desperately to figure out who wins. If anyone.⁵⁷

Let's begin with the defendants' strategic blunder. Whether this is 20–80 hindsight or something else, we need to remember the exact scope of what Judge Baer held after considering all of the rulings at issue.

HathiTrust has validated a fair-use defense regarding the seventy-eight works on Exhibit A of the First Amended Complaint in this matter for the transformative use of creating an electronic index of the text of the seventy-eight works, and allowing that index to form a basis for scholarly and other uses falling within Judge Baer's analysis. HathiTrust has not, however, validated a fair-use defense outside of those seventy-eight works, or for using those seventy-eight works for nonscholarly purposes, or for making those seventy-eight works available to the public⁵⁸ for general circulation.

And there is the defendants' strategic blunder: They never should have filed a motion for summary judgment before Judge Baer ruled on the associational standing and ripeness issues. They were under no obligation to do so (and so far as I've been able to determine, there was no looming deadline in the case management order). They used their "best defense" against a gnat... and, as I've noted above, the factual record focusing on the universe of scanned works — and not those few actually at issue — could well allow that gnat to revivify on appeal. I know it's close to Halloween, but the thought of zombie copyright gnats is more pathetic than frightening...

So, as a matter of civil procedure and strategy, this ruling does almost nothing to advance the resolution of the underlying dispute. It does not bind other authors. It does not bind other circuits. It provides at most persuasive material to introduce as part of a legislative record, and not very good persuasive material for that purpose. More crucially, it does not even begin to untangle the cooperative mess between the various libraries and their subcontractor. For example, one critical question that § 108 does not resolve — and wasn't even considered when § 108 was drafted and passed — is whether a subcontractor for a library legitimately covered under § 108 that is not itself covered by § 108 can nonetheless claim the protection of § 108. Put another way, can Google stand in the libraries' shoes? Can anyone else? That, of course, just invokes the serious civil-procedure and strategic errors of the plaintiffs when they put this mess together, stretching back to 2005.

At most, this decision called in the airstrike on Colonel Kurtz. We'll be left wondering who Colonel Kurtz was in this little corner of the war for a very, very long time.

IV. On the Meaning of Meaning

At last, the end — for the moment. The obvious next step for the plaintiffs is an appeal, which is due on or before 09 November 2012. Unfortunately, that's going to mean several more years of litigation; Judge Baer's decision is so consistent with Second Circuit law that the plaintiffs cannot win unless (and until) they get a hearing in front of the Supreme Court. The earliest that this could result in a final decision — unless a court directs an accelerated briefing schedule somewhere along the way, which is extraordinarily unlikely — is some time in early-to-mid 2014, and that finality would come from the Supreme Court refusing to hear the matter. If the Supreme Court were to take the case, and the Second Circuit takes more than a month after submission of the briefs to decide its own position, the most-likely (but by no means certain) final decision would be in the 2016 Term of the Supreme Court, which ends in June 2017... and would almost certainly result in sending the matter back for further consideration in the courts below. That's over a decade after this mess first hit the courts.

But what would be at issue on appeal? They divide nicely into two sets of issues: Scope and substance.

• The scope issues are themselves divided. The obvious one is the problem of associational standing for the Authors' Guild under the Copyright Act. Unless the Second Circuit is willing to change its own law on associational standing,⁵⁹ this is unlikely to be successful unless the Court of Appeals determines that the statement of facts is incorrect. The foreign-association-standing-under-US-copyright-law issue is just as ripe for appellate consideration as Judge Baer held that it is in the trial court: It's a mess that would require prediction of how foreign courts would rule if they had jurisdiction over these defendants in the first place. Since ripeness is often invoked precisely to avoid answering questions of this nature, this is more than merely a nearly infinite regression: It's the way things are.

  The second scope issue subject to appeal is a bit more subtle, and would not provide complete relief for the Authors' Guild in any event. Much of the rhetoric in Judge Baer's opinion is sweeping, referring to "libraries" in a very general sense and with a very general understanding of what libraries do. This case, however, is not about libraries in general; it is about the current members of HathiTrust. Assume, for the moment, that a consortium of rural public libraries in the southeast hires EBSCO to do much the same thing for their collections that Google did for the university libraries' collections, but this time focusing on commercially published and regional interest works. Not only would that be heard in a different circuit, in all probability — the Eleventh, where it's even harder than in the Second Circuit to overcome "arm of the state" Eleventh Amendment issues⁶⁰ — but these proceedings before Judge Baer would mean precisely zero. Just as the Authors' Guild does not have associational standing to represent all authors, the HathiTrust members do not have associational standing to represent all libraries. Put another way, there is no preclusion.⁶¹

• The substance issues are also themselves divided, and dependent upon the particular resolution of the scope issues. The obvious question is whether the set of facts before Judge Baer justified summary judgment finding fair use of the 78 works at issue. As I've noted above, there simply doesn't appear to be evidence in the record regarding these 78 works for the fourth fair-use factor. A strict reading of § 107 and of the law concerning summary judgment would note this and send it right back down for further proceedings on at least this point. That said, there's a considerable trend (well beyond the scope of this essay) for courts to try to find a way out of having trials on property disputes that are not, themselves, constitutional issues.⁶²

  It's actually in the plaintiffs' interest to get this resolved independent of the scope issues: At present, there is precious little clarity in the substance of fair use by modification of underlying form without modification of underlying expression, and it's in authors' collective best interests to have some guidance on the issue. For example, under Judge Baer's reasoning, using the lyrics (and lyrics alone) of a published song as chapter headings in a book, divided into relevant parts, is sufficiently transformative that it qualifies as fair use as a matter of law. To say the least, the Nashville-based community of "music publishers" would disagree with that! Thus, even if the Authors' Guild were to lose this case, it might claim a win on a broader, substantial question of fair use and copyright law to the benefit of its members. I question whether the Authors' Guild is thinking about things like this; I expect only a knee-jerk-reaction we-lost-so-we'll-appeal appeal.

  More importantly — and this is an issue that I do not expect the parties to argue, although it will be lurking in the background — is the procedural propriety of deciding a defense that is so entwined with the particular characteristics of both the actual use and the individual works in question in a mass proceeding. Put another way, is it even possible to resolve fair use for classes of works (whether we're talking about 78 works or a larger universe) with a set of uncontested material facts entitling one party or the other to judgment as a matter of law, when the law is a balancing test dependent upon fairly work-specific and use-specific circumstances?

The bottom line is that this decision is not even the beginning of the end. It leaves more, and deeper, questions unresolved than it answers. That is not a criticism of Judge Baer; it is a criticism of the parties.⁶³ Just as in the wonderful world of BCS standings and World Cup qualification, one must play the opponent one has, and looking ahead to the next match's more-highly-regarded opponent leads to stumbles and unexpected losses.

V. Trees

So, on Tuesday of this week the Second Circuit issued its opinion in the HathiTrust matter.⁶⁴ As can be expected, many observers and advocates have been very busy spinning the opinion for their respective preconceived notions that the-law-is-what-the-law-should-be... from all viewpoints. I'm afraid, however, that most of these views miss the forest for the trees... the dead, pulped trees. And, as we'll see as we work through the civil procedure aspects of the matter, it means a lot more and a lot less than it seems to.

A. No Trees Left Standing

The key legal question underlying the entire HathiTrust action is who has standing to complain about whom. The second half of that inquiry was essentially punted by the Second Circuit, although I think it did so without adequate consideration. As I noted when this matter was originally filed, there are significant issues concerning whether many of the library-defendants in this matter can be sued in federal court in the first place; one would hope this would be formally resolved in any future appeals, but the Second Circuit found it either unnecessary or inadvisable to do so in this opinion. That said, the Circuit reached the correct decision regarding "who can sue," albeit on excessive and misleading rhetoric that will prove problematic in other actions... including other aspects of the Google Book Search litigation.

Three of these authors’ associations — Authors Guild, Inc., Australian Society of Authors Limited, and Writers’ Union of Canada — claim to have standing, solely as a matter of U.S. law, to seek an injunction for copyright infringement on their members’ behalf. But, as we have previously explained, § 501 of “the Copyright Act does not permit copyright holders to choose third parties to bring suits on their behalf.” ABKCO Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d 971, 980 (2d Cir. 1991); see also Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 92 (2d Cir. 1998) (“United States law permits suit only by owners of ‘an exclusive right under a copyright’....” (quoting 17 U.S.C. § 501(b))). Accordingly, we agree with the district court that these associations lack standing to bring suit on behalf of their members, and they were properly dismissed from the suit.⁶⁵

As I remarked before, "associational standing" is quite restrictive. In this particular instance, the Authors['] Guild cannot represent copyrighted properties existing on dead trees in which it did not itself own copyright rights.

And this leads to the first of several rhetorical overstatements — one so serious that it is actual error — in the Second Circuit's opinion. As Judge Baer noted below, without that associational standing, the scope of the case before his was drastically reduced: Not the entire panoply of printed works in the collection of any of the respective libraries, or even all of the works published by any particular publisher that are in the collection of any of the respective libraries, but to a combination of (1) 78 specific works identified on Exhibit A of the First Amended Complaint and (2) those works appearing in the respective libraries that were properly represented by Union des Écrivaines et des Écrivains Québécois, Authors’ Licensing and Collecting Society, Sveriges Författarförbund, and Norsk faglitterær forfattero og oversetterforening. This is one helluva lot narrower than the rhetoric that follows indicates... and because so far as the record indicates it does not include any representative work from between seven and nine of the thirteen publishing industries — most especially, limited-circulation academic monographs (the strongest case for fair use, as we'll see later) and illustrated works of fiction (one of the weakest cases for fair use), this decision is at best persuasive authority regarding those kinds of works, let alone origins. And the less said about porn, perhaps, the better.⁶⁶

This is a well-deserved knee to the groin of the Authors['] Guild. The organization has shown remarkable tunnel vision concerning electronic rights for the past quarter of a century, always spouting rhetoric and taking actions (and making court filings) consistent with expanding its powerbase and self-appointed and -appreciated role of speaking "for all authors"... including those excluded from membership in the Guild by its own rules, those who have explicitly left the Guild, and those whose exploitation of their own copyrights proceeds on a model either neglected or rejected by the Guild. And that leaves aside poor choices of counsel to proceed on the Guild's behalf, and that is not limited to the Google Books matters. Civilization does not end at the Hudson; neither does the community of authors, nor their efforts to exploit and protect their own visions of their own rights. Put another way — and as revealed by the particular administrative terms proposed in settlement agreements for other Google Books litigation — this is a power grab of the worst kind, reminiscent of the overexpansion of both the Teamsters and the AFL–CIO (then under corrupt influence and/or control, one should note) to encompass wide varieties of unrelated workers and industries. The irony that the Guild cannot even claim to be a labor organization seems to have escaped everyone;⁶⁷ it is, instead, acting like a cartel. And cartels get little sympathy from me, even when they are purportedly acting against "competing" monopolies.⁶⁸

Keep those restrictions in mind as we parse the rest of the Second Circuit's decision. Indeed, those restrictions on standing — and on what works are really at issue — will (or at least should) inform both the fair-use result and the scope of the general result.

B. Indexing as Fair Use

This is where things begin to get... interesting. Remember that this relates only to the works properly in front of the Second Circuit — the 78 specific works on which summary judgment was granted below. Remember, too, that this is about a very specific description of the indexing use:

It is not disputed that, in order to perform a full-text search of books, the Libraries must first create digital copies of the entire books. Importantly, as we have seen, the HDL does not allow users to view any portion of the books they are searching. Consequently, in providing this service, the HDL does not add into circulation any new, human-readable copies of any books. Instead, the HDL simply permits users to “word search”—that is, to locate where specific words or phrases appear in the digitized books. Applying the relevant factors, we conclude that this use is a fair use.

Slip op. at 18. With due respect to the Court, this conflates two distinct infringements: The copying necessary to make the index, and the display of the results from the index. That is simply not consistent with the Second Circuit's own case law — particularly the case law (that was purportedly merely "codified" in the 1976 Act, see slip op. at 16, although anyone who actually reads the case law cited in the legislative history will question that characterization) concerning extraction and use of text as fact. Nonetheless, this conflation may be irrelevant... as the plaintiffs, repeating the mistake of the Guild's ill-implemented complaint against Google, did not properly plead the initial copying as an act of infringement.⁶⁹ Thus, the Court is left considering only the output and whether it qualifies as fair use, thanks to some bad lawyering.

With that understanding, the Second Circuit's finding that this particular, extremely restricted output form qualifies as fair use is neither unsurprising nor particularly objectionable. But that's the limit. A full KWIC (keyword-in-context) result, showing significant parts of text on either side of the search result, is outside the scope of this opinion. And that is as it should be; by limiting its consideration to the contextless, data-only result, the court avoided actually giving real consideration to the second and third fair use factors, and folded its consideration of the fifth, controlling, nonstatutory fair use factor (administrative convenience) rather silently into the first and fourth fair use factors.⁷⁰ If Hathi starts providing context around search results — and there is already substantial pressure to do so, which will only increase over time — this decision provides it no cover. Nor should it: That would enable, through a relatively simple recursive script, a user to recover the entire text of the underlying work in ready-to-read form, and the greater the context provided with search results, the easier that script is to validate.

C. The Underbrush

The Second Circuit also dealt with two other theories of fair use in the HathiTrust opinion. One of them it got outright incorrect, but to no effect: There was an alternate, specific, statutory privilege. The other one... not so much. Of anything.

The easy discard is the Second Circuit's analysis of "access to the print-disabled" as a fair use. The Court makes the following admission of an "oopsie" right up front: "In light of our holding, we need not consider whether the disability-access use is protected under the Chafee Amendment, 17 U.S.C. § 121."⁷¹ Unfortunately, this error opens the door for further review, because the Court (and the parties) ignore the legal interpretation lemma that a specific term overrides general ones — that the specific privilege accorded by the Chafee Amendment would have been relevant, and thus needed to be considered, regardless of the fair use decision. Indeed, this decision would have been more helpful to everyone had this aspect been founded on the specific statutory provision regarding blind and disabled access. Unfortunately, the parties — probably because they were afraid of diving into the seldom-interpreted waters of the Chafee Amendment, an area seriously undermined because nowhere does the Copyright Act define what, or who, qualifies as a "library" — blew it and never squarely presented the issue below, meaning that it wasn't directly ruled upon by the trial court.

Then, on top of that, the Second Circuit's fair-use analysis of access to the print disabled is rather dodgy... and I say that even though I think that it (narrowly) reaches a the right result. The primary problem appears in its analysis of the first fair use factor, in which it backs away from "transformative use" as the paradigmatic instance of fair use.⁷² The analysis essentially skips the second and third factors and discounts potential markets for the fourth factor without examining why the market appears so limited: Primarily problems with the distribution system, not with anything else. And lurking behind is the fifth fair-use factor. As the Court of Appeals acknowledges, the problem is not with whether the authors make the material available; it is whether the publishers do... and if the experience this century with electronic books demonstrates nothing else, it is that publishers are remarkably poor at anticipating and filling actual market needs.⁷³

Turning to the last area, the Second Circuit quite rightly punts the "preservation of works" argument as not ripe. Bluntly, the parties did such a poor job of investigating this issue — let alone presenting admissible evidence on this issue — that even if it was ready for decision and not merely speculative, it would not justify summary judgment. We'll leave aside, for the moment, that it's a bad theory to start with: There is no realistic probability, given print runs for the works at issue, that a library will neither have in its own collection nor be unable to borrow from another library copies of these works for the span of their copyrights. There are editions of these works either still in print now, or having been printed since the advent of low-acid papers, that will outlast their copyright terms; indeed, even those printed on older paper will still last until expiration of US copyright (at latest, approximately 2055 thanks to the changes in printing technology and practices).

D. Nobody Here to Hear the Deadfall

The most-important aspect of the Second Circuit's opinion — and one for which there is no real counter — is its refusal to decide the fate of orphan works. On the way there, the Court takes a very short detour into the preservation argument and rightly notes that the entire argument is not amenable to decision; it is neither ripe (having come to pass) nor imbued with either immediacy or standing.

The record before the district court does not reflect whether the plaintiffs own copyrights in any works that would be effectively irreplaceable at a fair price by the Libraries and, thus, would be potentially subject to being copied by the Libraries in case of the loss or destruction of an original. The Authors are not entitled to make this argument on behalf of others, because § 501 of “the Copyright Act does not permit copyright holders to choose third parties to bring suits on their behalf.”

Because the record before us does not reflect the existence of a non-speculative risk that the HDL might create replacement copies of the plaintiffs’ copyrighted work, we do not believe plaintiffs have standing to bring this claim, and this concern does not present a live controversy for adjudication. Accordingly, we vacate the district court’s judgment insofar as it adjudicated this issue without first considering whether plaintiffs have standing to challenge the preservation use of the HDL, and we remand for the district court to so determine.⁷⁴

That's just foreshadowing of the orphan-works abstention. The Court offers two independent reasons for refusing to decide anything relating to orphan works: The absence of standing, as already discussed, and a lack of ripeness. Here, though, the Court subtly undermines both this decision and most others related to ripeness with its analysis.

As indicated above, it is far from clear that the University of Michigan or HathiTrust will reinstitute the OWP in a manner that would infringe the copyrights of any proper plaintiffs. If that occurs, the Authors may always return to court. Suffice it to say that “[t]he mere possibility of future injury, unless it is the cause of some present detriment, does not constitute hardship.”⁷⁵

With due respect, this is incorrect, because it leaves off a critical qualifier... and it's a critical qualifier that applies to this matter. The critical qualifier is whether the resumption might, or might not, result in either criminal prosecution or an infringement of civil rights that would independently justify injunctive relief (not mere damages). There are more voting-rights and freedom-to-assemble cases than one can shake a stick at illustrating this — some quite recently, and some arising in the same city as the Second Circuit sits.⁷⁶ Whether assertion of copyrights, with its potential criminal penalties⁷⁷ and inherent First Amendment implications, falls within this is a much closer question than it might seem. The Court would have done better never reaching ripeness and instead relying only upon standing. The Second Circuit did correctly evade the question, but this part of its rationale for doing so fails.

As a policy matter, though, these are the two areas at issue that most require a decision. As Judge Chin (now on the Second Circuit) remarked in the corresponding case against the publishers, that's a matter for Congress.⁷⁸ And pardon my cynicism, but that's not going to result in a quick, a workable, or a fair resolution. As I have remarked before in other contexts, actual creators' interests — presuming that they are at all uniform — will be drowned out by lobbyists and other corporate interests. Don't kid yourselves: The 'netizen movement is much better organized (and much better funded) than even discrete subsets of creators that actually have uniform interests. Combine this with the agency capture of the Copyright Office and I find little reason for optimism that there will be a nuanced solution... or possibly even one that passes constitutional muster.

In the end, the deadfall and pulped trees may or may not have generated a sound, because there was no court with jurisdiction to hear it. Any sound generated is far from final and is being caused by lumber poachers and parties with only a dubious and partial title to the forest in the first place.

1. See Complaint (Doc. 1), ¶¶ 25–30.
2. See, e.g., MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (copyright suit against non-US corporation allowed to proceed in California).
3. Ironically, Cornell University is arguably an arm of the state of New York, as it is the land-grant college of New York. Really. Thus, all five of the named universities are state actors...
4. 209 U.S. 123 (1908).
5. College Sav. Bank, Inc. v. Florida Prepaid Postsecondary Education Expense Bd., 527 U.S. 666 (1999); Florida Prepaid Postsecondary Education Expense Bd. v. College Sav. Bank, Inc., 527 U.S. 627 (1999).

   These decisions are arguably part of the Rehnquist Court's long effort to shrink the ever-expanding federal court docket in the face of Congressional intransigience in providing the resources (primarily judges) to handle that docket. This realpolitik view of the "federalist resurgence" was as much ideological as anything else... with all of the attendant unintended consequences.

6. See, e.g., Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir. 2000) (explicitly considering the State Street Bank decisions cited in note 5). It is not a coincidence that the leading cases concerning this theory, at all levels of courts, arise from the Confederacy; one of the problems with the CSA was that it did not accept the concept of intellectual property rights, and certainly not when asserted against its even-more-sovereign-than-the-present-US states.
7. Complaint (Doc. 1) at 22–23 (hyperlinks added).

   As an aside, this prayer for relief is simultaneously unusually clear for copyright and other intellectual property litigation and incredibly sloppy for high-stakes litigation of any kind. It is unusually clear in that the prayer for relief itself cites the authority authorizing the court to grant such relief. It is incredibly sloppy in that it was not adequately proofread for either grammar and typography or parallelism (consider, for example, the inconsistent use of end-of-clause punctuation). As we will also see, it is also sloppy in that the relief requested in (a) is fundamentally incompatible with the relief requested in (b) based on the parties' status and character.

8. Just to make things perfectly clear, I'm no fan of Eleventh Amendment jurisprudence on realpolitik, theoretical, practical, or ideological grounds. The Amendment is what it is, regardless of my dislike for the premises behind it. However, existing jurisprudence has failed to interpret it narrowly enough in light of the Fourteenth Amendment's Due Process and Privilege and Immunities clauses in particular and in the context of the Supremacy Clause in general. That, however, is an argument for another time; for the present, I will just continue thinking dark thoughts about the slaveholding origins of the Eleventh Amendment as essentially counting three-fifths of all other claims...
9. New York Times, Inc. v. Tasini, 533 U.S. 483, 498–99 n.6 (2001) (internal citations omitted, hyperlink added); see also U.S. v. Carolene Products, Inc., 304 U.S. 144, 152–53 n.4 (1938) (concerning the scope and interaction of legislation, presumptions of constitutionality, and later-enacted restrictions). That note in Carolene Products has probably been dissected and written upon, by both scholars and practitioners, more than all other elements in that opinion combined... seldom reaching any defensible conclusion that is not subject to further hedging.
10. Unfortunately, this also points out a fairly serious drafting error in the Copyright Act: There is no satisfactory definition — in § 108 or elsewhere — of "library or archives." In particular, it is unclear whether the "open to the public" language in § 108(a)(2) requires "without charge or other payment required for access," "without restriction," and/or "with anonymity." Further, § 108(a) is concerned with access to works... and silent regarding provision of (relatively) permanent copies of particular works that enlarges the number of copies, except by implication under § 108(g). There's no real question that this is something that Congress, and not the courts, must fix.
11. See, e.g., Harper & Row, Pubs., Inc. v. Nation Enters., Inc., 471 U.S. 539 (1985) (holding that an extract from a book of less than 800 words exceeded fair use for that book... but explicitly refusing to establish a bright-line or proportionate test).
12. See, e.g., Crown Cork & Seal Co. v. Parker, 462 U.S. 345 (1983); American Pipe & Constr. Co. v. Utah, 414 U.S. 538 (1974) (together, holding that the statute of limitations is extended for unnamed classmembers during the pendency of an otherwise-timely-filed class complaint concerning the same legal theory and operative facts or transaction).
13. Although not defined in the Copyright Act itself, "orphan works" are those for whom the present copyright holder cannot be located. Cf., e.g., U.S. Register of Copyrights, Report on Orphan Works 1 (Jan. 2006) (PDF) (defining an "orphan work" as "the situation where the owner of a copyrighted work cannot be identified and located by someone who wishes to make use of the work in a manner that requires permission of the copyright owner").
14. Technically, this is not preclusive against the Authors' Guild for two reasons. First, it concerned representative capacity in a class action, under Fed. R. Civ. Proc. 23; this lawsuit was filed not as a class action, but alleging associational representation. The rules for associational standing are different from those for class actions... but arguably much more restrictive. The key point is the difference for this purpose.

    Second, Judge Chin's decision does not operate as a final judgment on the merits in the Google lawsuit. Thus, it is at most persuasive authority, not binding precedent. However persuasive and understated his reasoning, and despite his elevation to the Court of Appeals overseeing the court in which the HathiTrust action is being heard, the Authors' Guild is not precluded from making the (IMNSHO futile) argument that it can be a representative for the actual rightsholders of orphan works. It passes the "nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law" scrutiny required by Fed. R. Civ. Proc. 11(b)(2), however wasteful and confusing to others it may be.

15. "Agency capture," also called "regulatory capture", occurs when the industry or activity that is supposed to be regulated by an administrative agency ends up actually controlling that agency's decisionmaking process. See, e.g., Rachel Barkow, Insulating Agencies: Avoiding Capture Through Institutional Design, 89 Tex. L. Rev. 1 (2010) (PDF). In this instance, it is perhaps most helpful to follow the later employment of Copyright Office employees... almost all of whom end up working for copyright exploiters. In particular, some prior senior counsel are now employed in-house by scanning/digitizing companies like Microsoft... and Google.

    There's one additional irony involved here. Judge Chin and the Register of Copyright, among many others, called for Congressional action on orphan works. Unlike most administrative agencies, the Copyright Office is not either part of the executive branch or an "independent agency"; it is, instead, part of the Library of Congress.

16. U.S. Const. Art. I § 8 cl. 8 ("The Congress shall have Power... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries").
17. 28 U.S.C. § 2201.
18. See, e.g., Federal Judicial Center, Manual for Complex Litig. (4th) (2004) (PDF). Ironically, the MCL is just about due for a decennial revision...
19. There's one conflict that was not discussed in that opinion that is not quite an elephant in the room — perhaps it is only a hippopotamus, or a very angry rhinoceros. And that is the Bankruptcy Code. All it would take to torpedo this entire litigation is for one of the many named plaintiffs to enter bankruptcy; given the ill health of the publishing world, that's a more than trivial possibility. Hell, all it would take would be for one of the named-plaintiff authors to become seriously ill outside of his/her health insurance coverage! Or, worse yet, for one of the named plaintiffs to be a successor in interest to a debtor that had been discharged in bankruptcy.
20. See Parklane Hosiery v. Shore, 439 U.S. 322 (1979).
21. 17 U.S.C. § 107.
22. Quoted above at note 9.
23. This is not precisely an unconsidered, but rather a neglected, instance in both the Copyright Act and in public discussion. It's not precisely "orphanage" in the sense that no "parent" can be located. I'd call this the "terminated parental rights" variety of copyright orphans, except for the improper implication that the state somehow then has the power to determine who the parent is. Instead, this is much closer to the corporate governance concept of excusing demand on the board when such a demand would be futile... and that's a morass itself! The law is not a seamless web — it's rather seamy indeed; it is, instead, better thought of as a hobbyist's workshop full of tools, and the challenge is the use the right tool for the job.
24. One should note that those foreign parties would have been better advised to have different lawyers who made all of the necessary arguments explicitly, instead of relying on being carved out.
25. At last, we turn to the merits. If you compare this essay form of "Suing HathiTrust" to the actual blawg entries, you'll notice that I never actually posted the discussion of the merits last year; that's because a formal consult came in as I was ready to post, making a public statement inappropriate. (Although the legal ethics rules don't require silence from attorneys and other professionals involved in a filed-and-live matter, mine do.) Thus, this is the first time I've actually commented on the merits madness without method in the Authors' Guild's attack on HathiTrust. It's actually much easier to understand Judge Baer's grant of summary judgment to the library parties on their affirmative defense of fair use if one understands the not-quite-fatal-by-themselves-but-utterly-insane-nonetheless flaws in the complaint that HathiTrust filed. Thus, that's where I'll start, in very abbreviated form; only then will I get to Judge Baer's flawed (but consistent with Second Circuit law) discussion of fair use as a defense, and how that insane complaint made that defense both a complete defense and a possible one.

    You're about to read a story about lawyers and an organizational client who didn't understand what they had; who wrote badly in support of what they thought they had; and who ultimately ended up making things much harder for the actual — not associational — clients: The authors and actual creators of works protected by copyright. This insanity reflects very, very poorly on the fitness of both the Authors' Guild (and its sockpuppet individual representatives) and its counsel to serve as class representatives and class counsel in the other Google Book Scan litigation... but nobody is going to pay a lot of attention to that, I'm afraid.

26. See Doc. 4 (first amended complaint). Because the First Amended Complaint was filed before any response by any defendant, and is largely an amendment concerned with housekeeping matters caused by some ridiculous mistakes in the initial complaint, I'm going to refer to this as the "complaint" for the remainder of this discussion.
27. Doc. 4 at ¶¶ 40–47. There's even less excuse in this instance, as the president of the AG at the time this monstrosity was filed is an experienced lawyer... and litigator. Mr Turow would never have let a criminal complaint be filed under his signature, when he was an Assistant US Attorney, that made the panoply of rhetorical errors apparent in this one.

    There's a darned good reason that a complaint begins with the facts and ends with the legal statement of why those facts entitle the plaintiff to relief: Law is bound by context. Further, in this particular instance the "attack the defense and the character of the defendants first" organization is a subtle signal to the judge that the plaintiffs, and plaintiffs' counsel, don't think the judge is sophisticated enough to wait for the defendants to actually present their defense. In short, the complaint is subtly a putdown of not just the defendants, but of the judge; and anyone who thinks an implicit accusation that any federal judge (let alone one in the Southern District of New York) is unsophisticated and will be fooled by the purported "good character" of a party is him/herself rather unsophisticated.

28. Doc. 4 at ¶¶ 48–54. All other references to bare paragraph numbers will be to this first amended complaint.
29. Doc. 23.
30. Sadly, this denial later turned out to be itself false, or at least misleading, due to the inept implementation of an orphan works program by HathiTrust and its members. For our purposes, though, this is a flaw that doesn't really matter to the result.
31. 26 U.S.C. § 6050I, 31 U.S.C. § 5331; see also, e.g., Man Pleads Guilty to Currency Structuring to Evade IRS Reporting Requirements (19 Dec 2011) (describing guilty plea, but neglecting to identify a whistleblower).
32. Interestingly, although it goes largely unremarked, some of the works in Exhibit A are US works, but the Exhibit does not disclose registration numbers. This was a defense that should have been raised in the answer, and pressed; however, it was not. See Doc. 23 at 24 ¶ U.
33. 17 U.S.C. § 107.
34. See, e.g., NXIVM Corp. v. Ross Inst. Corp., 364 F.3d 471, 477–78 (2d Cir. 2004) ("to the extent that [defendants] knew that [their] access to the manuscript was unauthorized or was derived from a violation of law or breach of duty, this consideration weighs in favor of plaintiffs") (cited in slip op. at 15–16). Without going too deeply into a secondary decision that binds Judge Baer, I think this interpretation wrong as a matter of law, both in the context of the the HathiTrust action and in NXIVM itself. That said, my goal in this essay is to explain what is going on in HathiTrust, its limits, and what opportunities there are on appeal; arguing that the Second Circuit's law on fair use continues to derive from inconsistent common-law interpretations under the 1909 Act that ignore the statutory imposition of an entirely different framework in the 1976 Act, and that such a continuation essentially acts as an improper judicial amendment of — not merely a proper judicial interpretation of — a statutory scheme that was part of a treaty-compliance effort is for another time. I am disclosing my deep skepticism of the data, as a lab-trained scientist tends to do when the data and the theory don't seem to be entirely consistent (instead of merely assuming that prior theory means I should ignore the data that doesn't fit...).
35. See generally Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). It's worth noting that Grokster postdates all of the Second Circuit law cited in Judge Baer's decision on this factor...
36. Calling an index of one kind an index of another kind also has truly disturbing implications for fair-use analysis in the visual arts. Again, analysis is beyond the scope of this essay, but a quick reference to the ceiling of the Sistine Chapel should suffice. Remember, that's a multidimensionally curved surface... and virtually every reproduction is flat, and at best an "index" to the original in the same way that a KWIC index is a reference to its original.
37. 17 U.S.C. § 121 (explicitly providing a separate defense sharing no factors in common with fair use).
38. Slip op. at 14 n.18. Because the ownership of the works not found on Exhibit A is contested, those works are not properly subjects for summary judgment. See Fed. R. Civ. Proc. 56(a) (summary judgment proper only if "there is no genuine dispute as to any material fact").
39. Procedurally, there's a simple solution to this. If for political and strategic reasons it's considered necessary to join otherwise-dissimilar works in the same lawsuit, there's little good reason to not have subclaims for relief based on subclasses of similar works. In the HathiTrust complaint, there is only one count and claim for relief. It would have been better to have additional counts for each of the coherent subsets by nature of the work at issue; for example, a Count II dealing with the commercial category fiction (primarily Ms Weldon's works), a Count III dealing with the general-reader nonfiction, and so on. In turn, this would have forced both the parties and Judge Baer to grapple with the differing natures of the works when it came time to deal with fair use. Had counsel utterly failed to anticipate that a fair use defense was going to be raised, that would amount to legal malpractice so egregious that it implicates N.Y.R. Prof. Conduct 1.1, codified at 22 N.Y.R.C.C. Part 1200 (PDF), particularly in light of half a decade of GBS litigation raising such a defense; perhaps there was a conscious decision made to simplify in this instance, but if so it was ill-considered.
40. Cf., e.g., Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) and the cases cited therein. That this acceptance of an outdated common-law conception is logically inconsistent with the emphasis on statutory standing deserves more attention... in another forum entirely.
41. It's rather interesting that, at this writing, it appears that the Copyright Office is going to try to supplement its short-sighted, unsatisfactory orphan works report. Register of Copyrights, Inquiry on Orphan Works and Mass Digitization, 77 Fed. Reg. 64555 (22 Oct 2012); (PDF) Register of Copyrights, Report on Orphan Works (Jan. 2006). This is a necessary, logical, and frustratingly late consequence of the ongoing process on "small copyright claim" resolution. See Register of Copyrights, Inquiry on Remedies for Small Claims (27 Oct 2011).
42. Kelly v. Arriba Soft Corp., 77 F. Supp.2d 1116 (C.D. Cal. 1999), rev'd in part, 280 F.3d 934 (9th Cir. 2002), revised on reh'g broadening reversed portion, 336 F.3d 811 (9th Cir. 2003); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994); cf. also Sundeman v. Seajay Soc’y, Inc., 142 F.3d 194, 206 (4th Cir. 1998).

    Although this is not the place to argue about what Arriba Soft means, it is the place to note that in Arriba Soft the actual creation of digital representations of photographs was done by the complaining copyright holder, not by the defendant; the defendant merely gathered and transformed the equivalent of existing index entries into a new index. Whether this should make a difference in the long run to a fair use analysis is beyond the scope of this essay; it nonetheless seriously undercuts the strength of Arriba Soft as even persuasive precedent for this matter. Then, too, there's the substitution question that will be more apparent in factor 4.

43. I have been unable to find a reported decision this century (or, for that matter, an unreported decision in the Federal Appendix) on fair use finding that "excessive use" was enough to outweigh the other three factors, however egregious. Of course, it would be rare indeed for such a matter to proceed to an opinion; it would much more likely be settled or resolved on a default judgment.
44. Not to mention that, as a summary judgment matter, the evidence in question must be essentially unopposed as to all material facts. If a reasonable factfinder could find otherwise on any of the necessary material facts, it is a jury matter and not proper for summary judgment. Cf. Ellison v. America Online, Inc., 357 F.3d 1072, 1080 (2004) ("[defendant] allowed notices of potential copyright infringement to fall into a vacuum and to go unheeded; that fact is sufficient for a reasonable jury to conclude that [defendant] had not reasonably implemented its policy against repeat infringers") (n.b. I was lead counsel for the winning plaintiff in that matter).
45. I must admit to more than a bit of frustration at the way this factor was handled, but not so much with Judge Baer's handling of this factor (as he believes himself bound by some dubious precedent). I do not have access to the discovery that the parties engaged in; I only have access to what they filed with the court. The defendants' presentations will win no prizes, as they frequently involve speculation on market values and processes by people with little or no actual knowledge of or engagement with market values and processes (let alone for self-publishing, the most-frequent way for authors to bring older works back into availability these days). The plaintiffs' presentations, however, are much, much worse, and reflect inadequate consideration of what proof would be necessary when structuring the complaint, inadequate discovery, and poor preparation for the actual motion practice... all of which, unfortunately, come back to the Authors' Guild's arrogance in refusing to accept input from (and assistance from) authors' organizations — primarily organizations that specialize in categories of publishing, and in particular in various types of commercial category fiction — at any stage, let alone an early enough stage to make a difference.
46. Slip op. at 19 n.27 (internal record citation omitted).
47. Leaving aside for the moment that if the defendants' activities are lawful, and if they act as "libraries," the defendants are no more responsible for what their patrons do with electronic materials obtained from the library than they are for physical materials. Ripping copies of CDs, DVDs, Blu-Ray discs, etc. happens all the time... and the less said about off-campus copy shops and the fate of overnight loans from the reserve shelf, the better. Cf. Princeton Univ. Press v. Michigan Document Servs. Inc., 855 F. Supp. 905 (E.D. Mich. 1994), aff'd en banc, 99 F.3d 1381 (6th Cir. 1996). In short, this is a stupid argument, and the authors' groups should be glad that Judge Baer did not stomp on them more thoroughly.
48. Hopefully, these will be better precautions — even for display of "snippets" — than Amazon took with its Search Inside the Book program. Fifteen minutes and double-checking of a couple of command-line parameters for open-source and freeware utilities resulted in a working, kludged PERL script to retrieve the entire work from SITB after landing on the first page of the text...
49. Slip op. at 20 (citations and footnote omitted).
50. Slip op. at 20–21 (record citations in original, citations to authority omitted).
51. The Second Circuit's fate in front of the Supreme Court on this type of issue is disturbingly instructive. Compare In re Literary Works in Electronic Databases Copyright Litig., 509 F.3d 116 (2d Cir. 2007) (holding that individual authors have no right to object to a settlement because there is no subject-matter jurisdiction over unregistered copyright interests) with Reed Elsevier, Inc. v. Muchnick, 130 S.Ct. 1237 (2010) (reversing and holding that individual authors do have the right to be properly represented, even absent registration of copyright interests, because registration is only a procedural element and not a jurisdictional requirement); see also New York Times Co. v. Tasini 533 U.S. 483 (2001) (holding especially at 497–98 n.6 that individual authors have an absolute right to determine the treatment of their own copyrighted works, independent of any purported benefit to otherwise licensed users).
52. Doc. 119 ¶¶ 17–25 (redacted; however, the redactions appear immaterial).
53. n.b. I have been personally responsible for clearing permissions and establishing budgets for doing so on a number of works, and conversely for granting permissions on a number of others. Bluntly, Mr Waldfogel's declaration does not even begin to approach comparability to my experiences, demonstrating yet again that there is no monolithic/unitary publishing industry — just the bastard offspring of a three-century-long orgy among thirteen distinct and independent industries.
54. Cf., e.g., Entergy Corp. v. Riverkeeper, Inc., 129 S. Ct. 1498 (2009) (underlying statute explicitly allows, or indeed requires, a cost-benefit analysis in certain circumstances).

    An efficient cost-benefit regime related to copyright itself would acknowledge that the actual cost of registration is far, far less than the $35-and-up charged for that dubious "privilege" for works that are neither tracked like a real property interest nor the subject of court actions... and the latter can be managed by charging a fee for the mandatory report of action to the Register. See AO–121. That is, since the only real benefit of registration is access to the courts, the cost should not be recovered from individual rightsholders until and unless access to the courts is actually sought.

55. C.I.R. v. Clark, 489 U.S. 726, 739 (1989).
56. Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006). It's worth reemphasizing that this Second Circuit opinion is — however flawed — binding precedent on Judge Baer, which put him into the position of either agreeing with it or demonstrating that it is not relevant. He's not allowed to merely disagree with it, absent a Supreme Court decision... or a change in the statute. It is beyond the scope of this essay, though, to do more than remark that the Second Circuit has not paid nearly enough attention to the changes in the statute between the 1909 Act and the 1976 Act. Cf., e.g., Warner Bros. v. American B'dcasting Cos., 720 F.2d 231 (2d Cir. 1983) (relying almost entirely on fair use analysis under the 1909 Act for a 1976 Act case). Sadly, this blind spot is not limited to fair use.
57. Sorry, Professor Patry, but it was. Not for the reasons or under the analysis of the Second Circuit, but easy nonetheless.
58. I suppose I should get one other aspect of this mess out of the way. The defendants — and Judge Baer — tacked on a discussion concerning the right of those with visual disabilities to access the texts. See slip op. at 22–23, citing 17 U.S.C. § 121. This is both entirely irrelevant to the conduct at issue (nobody — and I'm not making a literary judgment here — is going to convert Fay Weldon's works that are already available in library large-type and Braille printed editions to electronic texts for the sole purpose of making them available to the visually impaired) and a vast overreading of the statutory language. Then, too, there's the untrustworthiness and post hoc rationalizations of some of the individuals involved. Admittedly, that last is my personal evaluation after dealing with them personally and probably should not be imputed to the parties in this matter.

    Then there's the problem that merely because use X arises from defense X, that does nothing — nothing — to even persuade, let alone foreclose, a case for infringement from use Y or to validate defense Y.

59. Cf. Berne Conv. on Copyright Art. 3(3). That's right: I'm one of those silly people who believes in thinking about non-US law in purportedly US-law disputes, even/especially when some of the parties are non-US parties and the US has treaty obligations...
60. See ABKO Music Inc. v. Harrisongs Music, Ltd., 944 F.2d 971 (2d Cir. 1991); Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27 (2d Cir. 1982). On one hand, both of these cases read too much into the statute itself. On the other hand, there is no circuit split — that is, all of the Courts of Appeal that have ruled on this issue are consistent in direction, if not in fine detail, with the Second Circuit, and the fine detail appears rather unlikely to matter on these facts. See, e.g., Silvers v. Sony Pictures Entertainment Inc., 402 F.3d 881 (9th Cir. 2005). Whether this should be the law is largely a matter for legislative, and not judicial, determination; it is arguably inconsistent with both the IP Clause (U.S. Const. Art. I. § 8 cl. 8) and the Berne Convention (see note 58 supra), a treaty that is entitled to substantial deference under Article VI cl. 2 of the Constitution.
61. See Part I supra; see also, Miccosukee Tribe v. Florida State Athletic Com'n, 226 F. 3d 1226 (11th Cir. 2000); Shands Teaching Hosp. & Clincs v. Beach Street Corp. 208 F. 3d 1308 (11th Cir. 2000).

    Note that the Eleventh Circuit is the origin of the Supreme Court's most illogical (and relevant here) Eleventh Amendment jurisprudence: the self-referential nightmare of Florida Prepaid. College Savings Bank v. Florida Prepaid Postsecondary Ed. Expense Bd., 527 U.S. 666 (1999); Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U.S. 627 (1999). That "666" is part of the official citation of one of these devilish cases — ironically, the more problematic one — is rather delicious.

62. See Parklane Hosiery, supra note 20.
63. See, e.g., Suja A. Thomas, The Fallacy of Dispositive Procedure, 50 Boston Coll. L. Rev. 759 (2009) (PDF); see also John H. Langbein, The Disappearance of Civil Trial in the United States, ___ Yale L.J. ___ (forthcoming 2012) (PDF); Howard M. Wasserman, The Roberts Court and the Civil Procedure Revival, 31 Rev. Litig. 311 (2012) (PDF).

    To me, the more-interesting theoretical question is whether the action of the arm-of-the-state actors might have constituted a "taking" of a property right belonging to the plaintiffs. There is precious little jurisprudence on whether intellectual property is even subject to a Fifth Amendment takings analysis. At first impression, though, it seems no less amenable to such analysis (or, at least, a parallel due process analysis) than are welfare benefits. Cf. Mathews v. Eldridge, 424 U.S. 319 (1976) (emphasizing the property-interest nature of already granted welfare benefits). But then, I'm a nerd, and I'm not sure just how "special" intellectual property is or should be, so I tend to ask questions like this that don't have clear answers.

64. The horse may be dead and occupying a glue bottle in some home-improvement store, but I must note my early and continued criticism of the AG attack directly on Google... in which I pointed out that it was a serious procedural and strategic error to attempt to divide Google from the libraries in the first place.
65. Authors Guild, Inc. v. HathiTrust, No. [20]12–4547 (PDF) (2d Cir. 10 Jun 2014) (slip op.) ("HathiTrust 2").
66. Slip op. at 12–13 (hyperlinks added).

    Whether this reasoning and line of cases remains good law in light of Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010), was apparently not raised. It continues to be an ongoing controversy; by the literal wording of the statute, an author could transfer the explicit right to sue a certain class of infringer to the organization and thereby have transferred "an exclusive right under a copyright." That position has been rejected by other courts. See, e.g., Righthaven llc v. Hoehn, 716 F.3d 1166 (9th Cir. 2013); accord, Silvers v. Sony Pictures Entertainment, Inc., 402 F.3d 881, 890–91 (9th Cir. 2005) (en banc) (holding that "exclusive rights" are limited to those listed in § 106 of the Copyright Act, which do not include the right to sue to stop infringement). However, the Supreme Court implicitly held in Muchnick that a class representative would have such standing, despite not owning the respective right to any work other than her own. Perhaps the reasoning continues to apply to associational standing without modification; the bare statement made in this opinion, however, is too broad.

67. Cf., e.g., Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1159–71 (9th Cir. 2007) (citing Ellison v. Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004) (in which my efforts continue to make the 'net safer for free airbrushed porn to this day)).
68. This is a critically important question for another time. As a matter of law, unions in the US (whether they're called "union", "association"... or "guild") are limited to employees, each of whom passes the multifactor IRS test for distinguishing between "employee" and "independent contractor." One slightly outdated explanation of this test appears in Joint Committee on Taxation, Present Law and Background Relating to Worker Classification for Federal Tax Purposes (PDF) 3–5 (2007). An even cursory examination of this list of factors (neither exhaustive nor, in detail, the current state of the law) discloses that freelance authors simply are not "employees"... and therefore are not eligible to unionize. Whether freelance authors — and artists, and musicians, and so on — should be so eligible is a separate question. The irony that only those creating work for hire (none of whom can be properly represented by the Guild in this litigation, because none of them own any exclusive copyright rights either) can be "employees" is perhaps a bit much. And if a group of otherwise independent businesses gets together and colludes to restrict price, output, or anything else, we call that an antitrust violation.

69. [T]he remedy for illegal [antitrust] conduct is a complaint lodged with the proper law enforcement offices or a civil suit or both. Another company's alleged violation of antitrust laws is not an excuse for engaging in your own violations of law. Nor is suspicion that that may be occurring a defense to the claims litigated at this trial.

    United States v. Apple, Inc., 952 F. Supp. 2d 638, 708 (S.D.N.Y. 2013). I'm sure that the highly sophisticated readers of this blawg understand full well that although the law is not a seamless web — indeed, and particularly in the arts, it's pretty damned seamy — there's considerable overlap... and that the relationship between antitrust and intellectual property is particularly close (and particularly seamy).

70. See part III.A, supra; see generally the discussion of the merits in the main GBS essay.
71. Indeed, the most form-neutral interpretation of "transformative use" turns almost entirely upon the administrative convenience (or, more to the point, inconvenience) of getting permission for every "transformative use" that is not somewhere on the parody/satire spectrum. Cf., e.g., Suntrust Bank v. Houghton Mifflin Co., 257 F.3d 1247 (11th Cir. 2001) with Dr. Seuss Enters. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997) and Mattel, Inc. v. Walking Mountain Prods., 353 F.3d. 792 (9th Cir. 2003).
72. Slip op. at 31 n.7 (hypertext added).
73. Slip op. at 27–28.

    We'll leave aside for the moment that if this analysis were to be applied to the text-search issue discussed in the slip opinion at 18–19 (and part B above), one would reach a different result: Not a result that rejects fair use, but one that denies summary judgment on fair use for an ill-defined, nonrepresentative subset of all literary works. That is, we're back to civil procedure again. Summary judgment may be granted only if "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law". Fed. R. Civ. Proc. 56; see also, e.g., Celotex Corp. v. Catrett, 477 U.S. 317 (1986); see generally Suja A. Thomas, Summary Judgment and the Reasonable Jury Standard: A Proxy for a Judge's Own View of the Sufficiency of the Evidence? 97 Judicature 222 (2014). Indeed, Professor Thomas's analysis exposes the reality of what appears to be going on here: A group of judges — and lawyers — evaluating evidence and imposing their own preferences without first-hand knowledge of how the creative process for broad categories of copyrightable works actually works, consistent with any of the Constitutional mandate, treaty duty under the Berne Convention, or implementing statute. In short, while charged with (perhaps) deciding, they're not competent to do so. Bleistein v. Donaldson Litho. Co., 188 U.S. 239, 251 (1903) ("It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits").

74. Then, too, the publishers are not parties for this suit. We have no idea whether the reason that the publishers have not made more works available for the visually disabled relates to the market for those works... or internal publisher evaluation of the profitability of its particular means of meeting that market. (Well, we do, but it's not in the record.) Then, too, the parties and Court do a remarkably poor job of determining whether the 78 works at issue are so available from the publishers (hint: a substantial proportion are), relying upon grandiose general statements made with little factual backup... or acknowledgement of the Library of Congress's own parallel programs.
75. Slip op. at 31–32 (citations omitted).
76. Slip op. at 34 (citation omitted).
77. See, e.g., Irish & Lesbian Gay Org. v. Giuliani, 143 F.3d 638 (2d Cir. 1998); see also, e.g., Hurley v. Irish-American Gay, Lesbian & Bisexual Group of Boston, Inc., 515 U.S. 557 (1995); Forsyth Cty. v. Nationalist Movement, 505 U.S. 123 (1992); United for Peace & Justice v. City of New York 243 F. Supp. 2d 19 (SDNY 2003).
78. 17 U.S.C. § 506(a)(1)(B), (C).
79. Author[']s Guild, Inc. v. Google, Inc., 770 F. Supp. 2d 666, 675 (SDNY 2001) ("The questions of who should be entrusted with guardianship over orphan books, under what terms, and with what safeguards are matters more appropriately decided by Congress than through an agreement among private, self-interested parties.")

Law and reality in publishing (seldom the same thing!) from the author's side of the slush pile, with occasional forays into military affairs, censorship and the First Amendment, legal theory, and anything else that strikes me as interesting.
 

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