Judge's Decision Could Clear Path for Wider Use of Digital Library

U. of Michigan

John Wilkin, executive director of HathiTrust: "We did set out to do this, and we didn't flinch from doing it, and we've been doing it along the way."
October 22, 2012

HathiTrust, an online academic library that includes more than 10 million works, won a legal victory this month, strengthening the cause of fair use. The decision also brightened the prospects for making much more knowledge available online to researchers everywhere.

At issue is what uses can legally be made of HathiTrust's online repository, which was created by five university libraries, drawing on a partnership with Google to scan millions of books and other materials on their shelves.

The Authors Guild, along with other professional groups and individual authors, filed a lawsuit in September 2011, seeking to shut down what it called "the systematic, concerted, widespread, and unauthorized reproduction" of copyrighted material.

But on October 10, Judge Harold Baer Jr., of the U.S. District Court in Manhattan, declared that the project's scanning and use of copyrighted works counted as fair use under copyright law. In a summary judgment, he threw out the authors' arguments that HathiTrust and its partners had trampled copyright law by scanning millions of works, many still under copyright, and making them available for certain uses.

Library commentators, fair-use champions, and advocates for the visually disabled celebrated the decision. "On every substantive issue, HathiTrust won," said James Grimmelmann, a professor of law at New York Law School, in an analysis posted on his blog. His reaction summed up most of the extensive, academic-focused commentary on the decision.

Judge Baer agreed with the HathiTrust defendants that their handling of the scanned works did not violate the law. "Although I recognize that the facts here may on some levels be without precedent, I am convinced that they fall safely within the provision of fair use," he wrote. "I cannot imagine a definition of fair use that would not encompass the transformative uses made" by the defendants' mass-digitization project.

Those uses include making copies for preservation and full-text searching and indexing, and to help visually disabled patrons discover material. HathiTrust does not make copyrighted works openly available to the public. "The copies serve an entirely different purpose than the original works," the judge wrote. He noted that HathiTrust's search functions "have already given rise to new methods of academic inquiry such as text mining."

The Greater Good

The suit named HathiTrust and its five university-system partners—the University of Michigan, the University of California, Indiana University, Cornell University, and the University of Wisconsin. They argued that educational fair use allowed them to scan the material and make it available.

Several other groups, including the Library Copyright Alliance, the National Federation for the Blind, and some legal and digital-humanities scholars, weighed in on the defendants' side, arguing that HathiTrust's activities counted as fair use and contributed to the greater good.

The judge agreed, describing the mass-digitization work as an "invaluable contribution to the progress of science and cultivation of the arts that at the same time effectuates the ideals espoused by the ADA," the Americans With Disabilities Act.

HathiTrust is also likely to play a key role in the creation of a Digital Public Library of America, which is now in the planning stages.

The Library Copyright Alliance, which includes the American Library Association, the Association of College and Research Libraries, and the Association of Research Libraries, applauded the decision and said it would be useful to libraries. "Judge Baer's ruling not only allows HathiTrust to continue serving scholars and the print-disabled; it also provides helpful guidance on how future library services can comply with copyright law," the group said in a statement.

Paul N. Courant, dean of libraries at the University of Michigan, which is HathiTrust's parent institution, said the defendants had believed all along that their work was valuable as well as legal. "The judge basically said everything we're doing is in compliance with copyright law," he said.

Mr. Courant said the ruling would allow the HathiTrust partners to carry on with their primary mission of supporting scholarship and access: "On the things that matter most, it basically says that academic libraries are free to be academic libraries if they take appropriate care, and that's good news."

John P. Wilkin, executive director of HathiTrust, is Michigan's assistant university librarian for publishing and technology. The decision "doesn't materially change what we're doing," he said. "One of the nice stories here is that we did set out to do this, and we didn't flinch from doing it, and we've been doing it along the way."

He said the outcome might encourage other academic libraries to be bolder in making their own cases for fair use and access.

As Mr. Wilkin sees it, Judge Baer's decision also undercuts the idea that scholarship and business are at odds—that when one wins, the other loses. The judge did not see market harm or security risks for copyright holders in what HathiTrust is doing.

"Fair use, I believe, can only stimulate sales and interest in the materials," Mr. Wilkin said. "I hope we can get beyond that polarization of commerce and scholarship, and the purported threat that these sorts of uses have for the viability of publishing."

Issue of Orphan Works Remains

Judge Baer's decision leaves open the question of "orphan works," those whose rights-holders cannot be identified or located. That status makes it difficult to figure out how the works may be legally used. HathiTrust and Michigan's library set up an Orphan Works Project to identify such works from the period 1923-63 and sort out their copyright status. The project came under fire from the Authors Guild and others for not doing an effective job of finding rights holders.

The judge said he didn't have enough information to rule on that project. "Were I to enjoin the OWP, I would do so in the absence of crucial information about what that program will look like should it come to pass and whom it will impact," he wrote.

In a statement, the Authors Guild said it disagreed "with nearly every aspect of the court's ruling." It had the most to say about the orphan-works issue. The group's executive director, Paul Aiken, called Michigan's program "a haphazard mess." He said that "the temptation to find reasons to release these digitized books clearly remains strong."

In the guild's view, "the court's decision leaves authors around the world at risk of having their literary works distributed without legal authority or oversight," Mr. Aiken said.

Mr. Wilkin said the Orphan Works Project is not about "liberating" works but about getting a clearer sense of the rights landscape. "Unencumbered by the lawsuit, we can move forward with the work at hand, and that is copyright determination," he said.

Mr. Courant said he'd like to proceed with the orphan-works conversation. "I certainly am very interested in working with the community of academic libraries and other interested parties to put together a viable way of getting at orphan works, making them usable to our community," he said.

He added that the HathiTrust side's lawyers were studying the ruling for its full implications. The Authors Guild and its fellow plaintiffs have not said whether they will pursue an appeal.

The judge's decision comes a few weeks after a settlement of another lawsuit challenging the legality of Google's book scanning. In September, five publisher plaintiffs cut a deal with the search company, ending a lengthy lawsuit over alleged copyright infringement. The publishers and Google haven't revealed the details of their settlement, and it's not clear yet how other publishers will be affected.

In his analysis, Mr. Grimmelmann, of New York Law School, saw the outcome as part of a judicial trend that favors higher education. He also mentioned the Georgia State University e-reserves case, in which three publishers have been largely unsuccessful in proving copyright infringement by the university, and a case involving the use of streaming video at the University of California at Los Angeles. That case was quietly dismissed for the second time this month.

"Universities making internal technological uses of copyrighted works are doing quite well in court of late," Mr. Grimmelmann wrote. "Something significant in judicial attitudes toward copyright, computers, and education has clicked into place of late."