United States: Second Circuit Hints At Possible Google Books Outcome In Finding HathiTrust Digital Library Project Protected As Fair Use

Last Updated: June 19 2014
Article by Jenevieve J. Maerker

Earlier this week, the Second Circuit issued its ruling in the HathiTrust case, a potential precursor to the long-awaited resolution of the more prominent, and related, Google Books case. The decision upholds the district court's finding that the non-profit defendant is protected by the fair use doctrine, but leaves room for a potentially different outcome in the Google Books matter. As we have reported, the Google Books project aims to scan and digitize all the world's books and make them full-text searchable. As part of the "Library Project" arm of Google Books, several research universities have allowed Google to digitize their extensive libraries. In addition to the digital copies kept by Google, the universities created the HathiTrust to maintain a separate repository of the digitized texts generated by Google's scanners.

The Authors Guild Allegations

In the case challenging the HathiTrust's digital library, the Authors Guild, together with various foreign authors' organizations and several individual authors, alleged that their copyrights were infringed by the three uses HathiTrust allows of its digital collection: (1) full-text searching for the public, with results showing the number of times a search term appears on particular pages of a book; (2) access to full text for individuals with confirmed print disabilities; and (3) replacement of physical volumes in member libraries' collections that are lost or destroyed, if replacement copies cannot be purchased at a fair price. The District Court held that each was a fair use.

The Second Circuit Analysis

The Second Circuit first addressed the full-text searchable database, which it called "a quintessentially transformative use" because it is "different in purpose, character, expression, meaning, and message" from the books themselves. Similarly, the Court concluded that the search results showing the number of keyword hits on each page would in no way serve as a substitute for the actual books. Accordingly, the Court ruled that the full-text search is a fair use.

The Court also held that the provision of texts to the print-disabled is protected by the fair use doctrine. The Court explained that, although such use is not transformative, it is nevertheless a valid purpose under the first fair use factor (the purpose and character of the use), and it does not displace the market for the original since publishers rarely make books available in accessible formats.

With regard to the use of the HathiTrust's digital archive copies to replace lost physical library books, the Second Circuit did not reach the fair use analysis. The Court instead vacated the District Court's finding of fair use because the record did not demonstrate that any of the plaintiffs' copyrighted works were commercially unavailable and therefore at risk of being used for this purpose. The Court remanded for consideration of whether the plaintiffs had standing to challenge this aspect of the HathiTrust's activities.

Orphan Works

The Second Circuit also agreed with the District Court that the plaintiffs' challenge to the so-called Orphan Works Project undertaken by the University of Michigan, a HathiTrust member, was not ripe, since the project had been indefinitely suspended out of concern that its policies were not adequately identifying true "orphan works" for proposed distribution.

What's Ahead for Google Books?

The Second Circuit's opinion contains several clues that may foreshadow the outcome of the Authors Guild's parallel challenge to the Google Books project. That case, in which the district court likewise found the defendant protected by fair use, is currently on appeal before the Second Circuit.

First, in describing the HathiTrust's full-text search function, the opinion notes that the HathiTrust library "does not display to the user any text from the underlying copyrighted work (either in 'snippet' form or otherwise)." The mention of "snippets" is a deliberate reference to the Google Books model, which also offers a full-text search function, but instead of mere hit counts, in fact shows users short "snippets" of the copyrighted text. Given the Court's emphasis on the unsuitability of the HathiTrust's hit-count search results as a substitute for the copyrighted work, this difference in the appearance of search results could provide a hook for distinguishing the Google Books approach and holding that it is not a fair use.

The Court also criticized the District Court's expansive view of "transformative" use, observing that "a use does not become transformative by making an 'invaluable contribution to the progress of science and cultivation of the arts.'" This admonition could likewise foreshadow a different outcome for Google Books, which was deemed fair use by the District Court in part because it "advances the progress of the arts and sciences."

It remains to be seen whether the Second Circuit will "split the baby" by going the other way with the Google Books case, or if it will continue its fair-use-friendly approach to the mass digitization of copyrighted works. The full HathiTrust opinion, authored by Judge Barrington Parker, is available here.

To view Foley Hoag's Trademark and Copyright Law Blog please click here.

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