Complex copyright law and fair use issues may lie at the heart of the Authors Guild vs. Hathitrust case, but in opposition filings submitted by the parties last week, another institution also seems to be on trial: Congress. In the filings, submitted in response to the June 29th cross motions for summary judgment, HathiTrust attorneys argue that the Authors Guild is essentially asking the court to “punt,” on digitization, with the “hope that Congress will catch the ball.” The Authors Guild, meanwhile, counters that “impatience with the legislative process” is not an excuse for libraries to undertake a project that “fundamentally reshapes copyright law.”

The filings are the latest exchange in the Authors Guild's bid to halt the HathiTrust digitization and preservation program, a cooperative effort of more than 40 research libraries made possible by a scanning partnership with Google. The submissions also include an opposition brief filed by the National Federation of the Blind, intervenors in the case, in support of the HathiTrust.

The briefs seek to rebut some of the key arguments laid out in last month’s summary judgment motions and amicus briefs, and represent yet another step along the path to trial. Next up, the parties are due to file replies to the opposition briefs this Friday, July 27. Barring a victory in the following weeks at the summary judgment stage, (or on one of the other outstanding motions) the case will then be fully briefed, setting the stage for oral arguments to begin in early November.

Fair Use, Section 108

In its filing, the Authors Guild responds in more detail to the HathiTrust’s fair use argument, arguing that “any public benefit” offered by the HathiTrusts’s mass digitization program is “outweighed by the actual and potential harm to authors’ interests.” However, much of the AG’s argument against fair use falls back on its core argument—that the so-called library exemption, (Section 108), explicitly governs the digitization program.

“Defendants would have this Court ignore the careful consideration Congress gave to competing interests in enacting Section 108 by permitting them to digitize all of the books in their collection under the flag of preservation,” the AG argues. “If Defendants’ preservation needs are not being met by the statutory allowance, their remedy is to either lawfully purchase digital copies of the books they wish to keep or to petition Congress to amend the statute. They may not take copyright law into their own hands.”

The HathiTrust, in its submission, pushes back against what it calls the AG’s “baseless” Section 108 argument, arguing that the Authors Guild fundamentally misunderstands, or misapplies the law. Nothing in Section 108 “preempts application of Section 107,” HathiTrust attorneys argue, reiterating that the law goes so far as to expressly state that nothing in section 108 “in any way affects the right of fair use as provided by section 107.”

HathiTrust attorneys also argue that the Authors Guild cannot establish prima facie infringement for the vast majority of works in the HathiTrust archive, noting the lack of facts in the record. In essence, despite the AG's assertions about Section 108, the HathiTrust brief argues that the AG cannot establish that a vast majority of the works it alleges were scanned illegally were not reproduced within the bounds of Section 108.

The libraries also seek to bolster their fair use argument, reiterating that the scanning of books for the purposes of indexing, preservation, and access for the print disabled are within the scope of the law.

[The Authors Guild] essentially argues that, even in the absence of any demonstrable harm, no purpose could ever justify copying millions of works—not even for non-expressive, non-superseding uses that benefit the public. This is simply incorrect,” the brief argues. “The distinction between infringement and fair use is not the number of works that were copied, but rather the purpose and character of the uses, and it is their repurposing that make the Libraries’ uses transformative and fair.”

Both parties also address the HathiTrust's now-shelved orphan works program. The AG presses its case that the court should enjoin the libraries from undertaking an orphan works program, again insisting this is the sole domain of Congress. The libraries, meanwhile, argue that because the program has been halted, and no works were ever made available, the issue should not be adjudicated at this time. But, attorneys add, if they had to, they would prove that the program is indeed legal. If the Court intends to rule on the now defunct program, the libraries requested a chance to more fully brief the issue.

Real World vs. “Potential” Harm?

With the latest round of briefs, the parties also offer a deeper look at the expert statements and evidence, and the rebuttals of evidence, that could play at trial.

In its filings, the libraries point to an existing, useful, beneficial service to the academic community, with no "cognizable" harm to authors. None of the copyrighted text scanned is made available for display, and there is no evidence of piracy. And the libraries anchor their case in a practical, real world setting: expert statements point to a market rife with inefficiencies, where books go out of print quickly, and can become hard to locate, and where entire libraries can be wiped out slowly, due to deterioration, or in an instant, due to natural disaster. Indeed, the libraries suggest, preservation by its nature is a preemptive enterprise—you can’t make a preservation copy of a book after it has been damaged or destroyed.

The libraries also reiterate their assertion that no existing licensing solution could likely ever offer the kind of comprehensive preservation program the libraries have created. “Voluntary collective licensing,” for example, through an organization like the Copyright Clearance Center, “is destined to fail,” the libraries argue, citing the expert declaration of Joel Waldfogel, who estimates that it would cost “a staggering $569 million” to simply identify the copyright holders and to seek a license,” not including any potential license fees, or that there would inevitably be missing copyright owners, or those who would decline, leading to an incomplete, and inferior research corpus.

In its submissions, the Authors Guild seems to acknowledge the tricky position it is in, suing libraries. AG attorneys insist that “authors recognize the important role that libraries play,” and suggest they do not want to deprive the disabled of access to books. But no matter “how noble” the libraries’ intentions, “unauthorized digitization,” the AG asserts, “threatens to destabilize the careful equilibrium of copyright law by depriving writers of valuable sale and licensing opportunities and exposing their intellectual property to security risks without accountability.”

The evidence referenced in the AG briefs, however, seems, by comparison, thin, at least at this stage. For example, without showing an actual security breach, the Authors Guild relies on a declaration from Benjamin Edelman, an economist, who states that the HathiTrust corpus could be hacked. Edelman, however, also admits he is not familiar with “all of the security systems” the libraries have in place. That approach, the libraries counter, is “akin to assessing the safety of commercial air travel by summarizing the ways in which a plane may fall from the sky without taking note of all of the steps taken by the aviation industry to guard against such calamity.”

In terms of licensing a search market, the AG evidence points to licensing agreements made with for its Search Inside the Book program. "Edelman says that authors are only willing to suffer the security risks of online services such as Amazon if they receive contractual guarantees as to the steps being taken to mitigate that risk, or if they receive appropriate compensation if that occurs," the Hathrust brief states. "Yet Amazon’s license agreement for its Search Inside program—through which numerous Plaintiffs license digital copies of their works—offers no contractual guarantees as to risk mitigation, nor any compensation at all in case of breach."

For its claim that the Hathitrust's copying affects the market and deprives authors of sales, the AG cites the statement of award-winning author T.J. Stiles, a named plaintiff, who states that he lost one sale when the HathiTrust scanned his book rather than purchasing or licensing a digital edition "which could easily have been legally acquired for archival or other purposes." However, the libraries stress, they generally cannot “buy” digital editions, only license access to them, and those e-book licenses limit the uses libraries can make, such as making preservation copies.

The larger question, however, in terms of "balancing the equities" to determine fair use, may be whether the potential loss of a single e-book sale to a library that has already purchased the work, and is making a digital copy in order to make that work preservable, and searchable (but not accessible) to scholars and students, is really among the AG’s stronger arguments for demonstrating market harm? In other words, does the potential loss of a single royalty to an author for a digitized book that cannot be read justify a court order to mothball such a beneficial digitization program?

The AG arguments, rather, boil down to a more principled point: that the libraries are positing a “disturbing notion that it is permissible to steal the goods if they are too expensive to buy." However, “[b]ecause obedience to the law might be inconvenient or expensive is not a valid excuse for flouting a statute.”


In sum, the AG repeats its insistence that mass digitization is the sole domain of Congress, and that libraries must therefore be enjoined from taking matters into their own hands.

"As the As the Constitution makes clear, it is Congress that has the power to strike the appropriate balance between the interests of authors in controlling their work and society’s often opposing interest of accessing it freely," the AG brief argues, adding that history shows that Congress is fairly active in amending copyright. "Congress has repeatedly revisited and amended the copyright law, often in response to technological innovation that opens the door to unprecedented uses of copyrighted works. When new uses emerge with the potential to transform the copyright landscape, the stakeholders express their interests to Congress, which then balances the varied interests through legislation."

The libraries, on the other hand, reject the notion that the court "should deny fair use in order to prompt Congress to develop a collective licensing scheme," and argue that Congress has already acted. They compare the current situation to the landmark Sony/Betamax case. In that case, the brief notes, the movie studios were similarly "unwilling to demand the destruction of videotape recorders," and urged the Court "to leave it to Congress" to address the issues. "The Supreme Court, however, empowered without further legislation than Section 107, upheld the sale of videotape recorders by a for-profit entity even though they were being used to copy complete motion pictures."

The replies to these opposition briefs, due at the end of the week, will further illuminate where the parties stand. Meanwhile, it is setting up to be a busy week for Authors Guild lawyers. Motions for summary judgment in the Authors Guild lawsuit against Google are also due on July 27.