In Authors' Suit Against Libraries, an Attempt to Wrest Back Some Control Over Digitized Works

September 14, 2011

The copyright-infringement lawsuit brought on Monday by the Authors Guild and others against the HathiTrust digital repository, the University of Michigan, and four other universities could have a major impact on research libraries and the fate of millions of book scans created by recent mass-digitizing efforts. The plaintiffs seek to take control of those files out of the hands of libraries until Congress establishes guidelines for the use of digital libraries and orphan works—those that are subject to copyright but whose rights holders can't be identified or located.

But Paul Courant, dean of libraries at Michigan, said the libraries and the trust are in the right and will go on with their work. "We still think it's entirely legal, and we're going to continue to do what we're doing," he said. And at least for the short term, the suit has few implications for individual scholars.

The lawsuit was brought in the U.S. District Court in New York by the guild, the Australian Society of Authors, the Quebec writers' union, and eight individual authors. It names Cornell University, Indiana University, the University of California, and the University of Wisconsin, along with Michigan and HathiTrust, a large-scale digital repository that has partnerships with more than 50 institutions to digitize and preserve books and other material. The suit says that the defendants have engaged in "the systematic, concerted, widespread, and unauthorized reproduction and distribution" of some seven million copyrighted works, a handful of which are listed in the brief. It says that the plaintiffs and Google, which has provided most of the digital scans at issue, did not seek permission to digitize those works.

It asks the court to impound and lock up "all unauthorized digital copies" of copyright-protected works in the defendants' possession, pending some appropriate action by Congress. It requests the court to prevent the defendants from giving Google clearance to scan more copyrighted works. It also seeks the suspension of Michigan's Orphan Works Project, which seeks to identify orphan works and make them more widely available.

The plaintiffs expressed concerns about the security of the digitized files in HathiTrust's possession, saying that their copyright value would vanish if the scans were distributed widely and without authorization on the Internet.

"These books, because of the universities' and Google's unlawful actions, are now at needless, intolerable digital risk," the Authors Guild's president, Scott Turow, said in a statement that announced the lawsuit.

All the defendants participate both in HathiTrust and the Orphan Works Project. HathiTrust digital repository and the University of Michigan say the lawsuit will not derail their efforts. They told The Chronicle they plan to push ahead with the Orphan Works Project. The first batch of works—26 titles—is scheduled to be released on October 13.

Preservation Mission at Stake

Mr. Courant and John Wilkin, executive director of HathiTrust, said they expect to prevail in court, based on their readings of fair use and libraries' rights in Sections 107 and 108 of the U.S. copyright code. But they also argued that a win for the plaintiffs could put not only the Orphan Works Project but HathiTrust and its preservation mission at risk. The repository contains as many as 10 million volumes in all, including many public-domain works. "The whole HathiTrust effort is incredibly important for libraries in terms of how to deal with the preservation question," Mr. Wilkin said. If the plaintiffs win, "it would undermine our ability to collaborate effectively around research collections."

As for the security of the digitized works, Mr. Wilkin and Mr. Courant said they knew of no breaches so far. They outlined strict procedures in place that limit users' access to material in the repository. Mr. Courant said that even he can't get access as a reader to in-copyright works in HathiTrust.

According to Mr. Courant and Mr. Wilkin, the lawsuit came as a surprise. They said that the Authors Guild had been in touch with them over the last month, wanting to know more about the repository and the Orphan Works Project. There had been talk that an Authors Guild representative might pay a visit to Ann Arbor.

Paul Aiken, executive director of the Authors Guild, confirmed that conversations had been taking place and said that his group is still willing to talk. But he said the imminent rollout of the Orphan Works Project prompted the plaintiffs to go ahead and file their complaint. The timing gave the lawsuit "immediacy and urgency," he said. But the guild's main concerns center not on that project but on "the entire database of copyright-protected books that's being hosted at Michigan and the mirror site at Indiana," he said.

The plaintiffs consider it too risky to have seven million copyrighted works held by universities that can't be sued for damages because as state institutions they enjoy sovereign-immunity protection from prosecution, he said. Because of that, the plaintiffs aren't seeking monetary damages, but they do ask the court to stop the scanning and impound the digital files.

"Believe me, this is not a lawsuit that anyone looks forward to bringing," Mr. Aiken said. "But these are real property rights that real authors have. It's their hard work, and even an institution with the best of intentions that loses seven million unencrypted PDF's of the world's greatest literature can do a huge amount of damage to the value of those works."

The decision to put copyrighted work at risk "should not be made by anyone other than the rights holder—anyone other than the author," Mr. Aiken added. He said it's critical to have agreements in place that make sure "everybody involved has a financial stake in making sure that these things are secured."

A Voice for Authors

According to Mr. Aiken, it shouldn't be up to HathiTrust and its institutional partners alone to decide what happens to the material in the repository. Authors have a stake and should have a say. "It's not just for one group with their own interests to decide the fate of these works," even if that group is a nonprofit organization, he said.

Mr. Aiken acknowledged that the lawsuit could put a damper on author-library relations. "Authors have depended on libraries forever," he said. "This is not an action that we were eager to bring. But it's a necessary action, unfortunately."

The guild's members have been "overwhelmingly supportive," he said. "I hope that the librarians would understand that, in the online world as in the print world, there has to be a way to protect authors' rights and their works" as well as to make sure that the works are available to readers and scholars.

The plaintiffs include one academic author: James Shapiro, a Shakespeare scholar who is a professor of English at Columbia University and the author of several books. Mr. Shapiro is on sabbatical and did not have any immediate comment.

For the most part, the legal action does not appear to have had much impact on individual scholars. "This is really strictly about the libraries at the moment," says James Grimmelmann, an associate professor at New York Law School. HathiTrust does not plan to make books available "unless they can't find the author or publisher, and this is a very small slice of books."

That's a very different situation than the one that would have been created by a settlement proposed in another lawsuit involving millions of scanned books. In 2005, the Authors Guild and other plaintiffs sued Google over its Book Search project. A federal judge shot down a settlement deal that would have cleared the way for Google and academic libraries to make much greater use of those millions of digitized works.

Although the parties agreed to try to recast the settlement to deal with the judge's objections, most observers expect that last-ditch effort to fail. A status conference in that case is scheduled for Thursday. "The Google settlement really had the potential to reshape the marketplace for books," Mr. Grimmelmann says. The HathiTrust lawsuit "is very much about how far the scope of an academic library goes."

But Mr. Grimmelmann points out that the HathiTrust case does have the potential to determine how much material scholars get to see and use. The question for researchers isn't "Does this affect my life now?", he says, but "what the future of access to scholarly books in the digital age is going to be."

Academic librarians will be watching the case closely. On Tuesday, the Association of Research Libraries issued a resource packet on orphan works that responds to the issues raised in the lawsuit.

Jonathan Band, a copyright lawyer who works closely with the library community, helped prepare the association's packet. In an interview, he said he considers the lawsuit "a failure to understand what HathiTrust was doing," and says it's based on a misreading of the relevant copyright law. "It's a very curious suit," he said.

Based on his understanding of the copyright code, Mr. Band doesn't see much cause for libraries to worry. "From the substantive point of view, the legal position of the libraries is extremely strong," he said.