A copyright win in the Internet Archive lawsuit

Book publishers have won their lawsuit against the Internet Archive. What does it mean for copyright owners? Cokato Copyright Attorney Tom James explains.

New York Public Library public domain image; this is NOT the library that is involved in this lawsuit.

In a previous blog post, I wrote about a lawsuit that book publishers Hachette Book Group et al. have filed against Internet Archive (“IA”) et al. The lawsuit alleges that IA scans copyright-protected printed books into a digital format, uploads them to its servers, and distributes these digital copies to members of the public via a website – all without a license and without paying the authors and publishers. The lawsuit asserts claims of copyright infringement.

A permanent injunction

Judge John Koeltl has now approved a consent judgment providing for a permanent injunction that prohibits Internet Archive from scanning and distributing copyrighted books. It applies only to books that copyright owners have already published and made available in e-book format. As Judge Koeltl put it: “The Court has narrowly tailored the injunctive relief in this case to cover only copyrighted works, like the Works in Suit, that are available from the Publishers in electronic form.”

IA reportedly plans to appeal.

A new lawsuit

This month, Sony Music Entertainment et al. filed a similar copyright infringement lawsuit against IA. This complaint alleges that IA digitized and distributed digital copies of 78 rpm records by Frank Sinatra, Billie Holiday, and other recording artists in violation of the rights of copyright owners.

Copyright owners prevail in Internet Archive lawsuit

A federal district court has ruled in favor of book publishers in their copyright infringement lawsuit against Internet Archives

In June, 2020 four book publishers filed a copyright infringement lawsuit against Internet Archive. The publishers asserted that the practice of scanning books and lending digital copies of them to online users infringed their copyrights in the books. On Friday, March 24, 2023, a federal district court judge agreed, granting the publishers’ motion for summary judgment.

The Internet Archive operation

Internet Archive is a nonprofit organization that has undertaken several archiving projects. For example, it created the “Wayback Machine,” an online archive of public webpages. This lawsuit involves another of its projects, namely, the creation of a digital archive of books. Some of these are in the public domain. Also included in this archive, however, are over 3 million books that are protected by copyright. The judge determined that 33,000 of them belong to the plaintiffs in the lawsuit.

According to the Order granting summary judgment, after scanning the books, Internet Archive made them publicly available online for free, without the permission of the copyright owners.

“Fair Use”

According to the Order, Internet Archive did not dispute that it violated copyright owners’ exclusive rights to reproduce the works, to make derivative works based on them, to distribute their works, to publicly perform them (Internet Archive offered a “read aloud” function on it website), and to display them (in this case, on a user’s browser.) In short, the Order determined that the operation violated all five of the exclusive rights of copyright owners protected by the United States Copyright Act (17 U.S.C. sec. 106).

Internet Archive asserted a “fair use” defense.

In previous cases involving massive operations to scan and digitize millions of books, Authors Guild v. Google., Inc. and Authors Guild v. HathiTrust, judicial analyses resulted in “fair use” determinations unfavorable to copyright owners. Internet Archive, of course, invited the judge to do the same thing here. The judge declined the invitation.

The judge distinguished this case from its predecessors by ruling that unlike the uses made of copyrighted works in those cases, the use in this case was not transformative. For example, Google had digitized the entire text of books in order to create a searchable index of books. “There is nothing transformative,” however, about copying and distributing the entire texts of books to the public, the judge declared.

The judge observed that Google reproduces and displays to the public only enough context surrounding the searched term to help a reader evaluate whether the book falls within the range of the reader’s interest. The Court of Appeals in Google had warned that “[i]f Plaintiff’s claim were based on Google’s converting their books into a digitized form and making that digitized version accessible to the public,” then the “claim [of copyright infringement] would be strong.”

The judge also determined that the alleged benefit to the public of having access to the entire text of books without having to pay for them “cannot outweigh the market harm to the publishers.”

Ultimately, the judge concluded that all four “fair use” factors (character and purpose of the use, nature of the work, amount and substantiality of the portion copied, and the effect on the market for the work) weighed against a finding of fair use.

What’s next?

Internet Archive apparently intends to appeal the decision. In the meantime, it appears that it will continue other kinds of digitized book services, such as interlibrary loans, citation linking, access for the print-disabled , text and data mining, purchasing e-books, and receiving and preserving books.

The Internet Archive Lawsuit

Thomas James (“The Cokato Copyright Attorney”) explains how Hachette Book Group et al. v. Internet Archive, filed in the federal district court for the Southern District of New York on June 1, 2020, tests the limits of authors’ and publishers’ digital rights in their copyright-protected works.

The gravamen of the complaint is that Internet Archive (“IA”) allegedly scanned books and made them freely available to the public via an Internet website without the permission of copyright rights-holders. Book publishers filed this lawsuit alleging that IA’s activities infringe their exclusive rights of reproduction and distribution under the United States Copyright Act.

As of this writing, the case is at the summary judgment stage, with briefing currently scheduled to end in October, 2022. Whatever the outcome, an appeal seems very likely. Here is an overview to bring you up to speed on what the case is about.

The undisputed facts

Per the parties’ stipulation, the following facts are not disputed:

The case involves numerous published books which the publishers who filed this lawsuit (Hachette Book Group, HarperCollins, Penguin Random House, and John Wiley &  Sons) have exclusive rights, under the United States Copyright Act, to reproduce and distribute.

Internet Archive and Open Library of Richmond are nonprofit organizations the IRS has classified as 501(c)(3) public charities. These organizations purchased print copies of certain books identified in the lawsuit.

The core allegations

The plaintiffs allege that IA obtains print books that are protected by copyright, scans them into a digital format, uploads them to its servers, and then distributes these digital copies to members of the public via a website – all without a license and without any payment to authors and publishers. Plaintiffs allege that IA has already scanned 1.3 million books and plans to scan millions more. The complaint describes this as “willful digital piracy on an industrial scale.”

Defenses?

First sale doctrine

One justification that is sometimes advanced for making digital copies of a work available for free online without paying the author or publisher is the so-called “first sale” doctrine. This is an exception to copyright infringement liability that essentially allows the owner of a lawfully acquired copy of a work to sell, transfer or lend it to other people without incurring copyright infringement liability. For example, a person who buys a print edition of a book may lend it to a friend or sell it at a garage sale without having to get the copyright owner’s permission. More to the point, a library may purchase a copy of a print version of a book and proceed to lend it to library patrons without fear of incurring infringement liability for doing so.

The doctrine does not apply to all kinds of works, but it does generally apply  to print books.

The first sale doctrine only provides an exception to infringement liability for the unauthorized distribution of a work, however. It does not provide an exception to liability for unauthorized reproduction of a work. (See 17 U.S.C. § 109.) Scanning books to make digital copies is an act of reproduction, not distribution. Accordingly, the first sale doctrine does not appear to be a good fit as a defense in this case.

“Controlled digital lending”

Public libraries lend physical copies of the books in their collections to library patrons for no charge.  Based on this practice, a white paper published by David R. Hansen and Kyle K. Courtney makes the case for treating the distribution of digitized copies of books by libraries as fair use, where the library maintains a one-to-one ratio between the number of physical copies of a book it has and the number of digital “check-outs” of the digital version it allows at any given time.

The theory, known as controlled digital lending (“CDL”), relies on an assumption that the distribution of a work electronically is the functional equivalent of distributing a physical copy of it, so long as the same limitations on the ability to “check out” the work from the library are imposed.

Publishers dispute this assumption. They take the position that there are important differences between e-books and print books. They maintain that these differences justify the distribution of e-books under a licensing program separate and distinct from their print book purchasing programs. They also question whether e-books are, in fact, distributed subject to the same limitations that apply to a print version of the book.

Fair use

Whether a particular kind of use of a copyright-protected work is “fair use” or not requires consideration of four factors: (1) the nature of the work; (2) the character and purpose of the use; (3) the amount and substantiality of the portion copied; and (4) the effect of the use on the market for the work.

Supporters of free access to copyrighted works for all tend to focus on the “character and purpose” factor. They can be relied upon to argue that free access to literary works is a great benefit to the public. Authors and publishers tend to focus on the other factors. In this case, it seems possible that the factors relating to the amount copied and the effect of the use on the market for the work could weigh against a finding of fair use.  

The federal district court in this case is being called upon to evaluate those factors and decide whether they weigh in favor of treating CDL – or at least, CDL as IA has applied and implemented it – as fair use or not.

Subscribe to The Cokato Copyright Attorney

The Cokato Copyright Attorney (Minnesota lawyer Thomas B. James) will be following this case closely. Subscribe for updates as the case makes its way through the courts.

Contact attorney Thomas James

Need help registering a copyright or trademark, or with a copyright or trademark problem? Contact Cokato, Minnesota attorney Tom James.

%d bloggers like this: