link to: 08:06 [GMT-6]

Authors' Guild v. HathiTrust:
Just When You Thought It Was Safe to Go Back to the Library

Suing HathiTrust (in essay form)
Proposed Settlement With Google (in essay form)
Suing Google (in essay form)

This is an initial review only of the third segment of the Google BookScan lawsuits, generally known as the "HathiTrust suit" and formally known as Authors' Guild, Inc. v. HathiTrust, No. 11–6351 (S.D.N.Y.) (Baer, J.). (As a side note, this matter was referred to Judge Chin for consolidation with the existing GBS suits, but was rejected as not sufficiently related... and inconsistent with Judge Chin's elevation to the Second Circuit, although the rejection did not emphasize that issue.)

Because I have a lot of gall, I am dividing this discussion into three parts. It is an unfortunate division caused, at least in major part, by a combination of bad drafting in Congress and ideologically directed docket-control measures by the Supreme Court... that, were the same cases being decided today, would probably be decided differently. Thus, this first part and entry will deal with the high-falutin' intellectualness of significant constitutional barriers under existing law to the suit proceeding in this form at all. The next part (which will probably require more than one entry) will deal with the geekiness of civil procedure and the challenges it presents. The third part (again, probably more than one entry) will deal with the nerdiness of the merits of the action, both in theory and as pled.

I. Constitutional Aspects

Constitutionally, this lawsuit is a mess. Part of that is as it should be; part of that... not so much, and resembling Catch-22 more than it probably should. It's actually easier to see the difficulties — as is all too often true in such policy-laden matters — by moving from the back to the front. In this instance, that means considering problems with hauling the defendants into court first, and then the problems with the plaintiffs.

The first, and perhaps most obvious, question is whether a United States District Court located in New York City has the power to hear a suit against the HathiTrust defendants in the first place. This breaks down into two subquestions: Personal jurisdiction and sovereign immunity. The personal jurisdiction question is not nearly as clear as one might think. The complaint names HathiTrust itself and the various regents and boards of the University of Michigan, the University of California, the University of Wisconsin, Indiana University, and Cornell University.¹ Although there is a longstanding doctrine of asserting personal jurisdiction in copyright matters where the harm would be felt,² this doctrine appears only to be asserted against non-governmental actors. Whether HathiTrust or some of its members qualify as non-governmental actors is an open question.³

The personal jurisdiction question, though, would be rather easily dealt with by either a transfer of venue to the Eastern District of Michigan or an original filing there. The fun part is the ability to sue these "arm of the state" defendants in federal court at all. Professor Grimmelmann provides a useful introduction to this morass at a general level. In summary, under the Eleventh Amendment, states (and arms of the state government) cannot be sued for damages in federal court. Under a misbegotten legal fiction known as Ex parte Young,⁴ one instead sues the particular officers of the state agency who have responsibility for performing an "unlawful act" for injunctive relief, but not damages. (This is why Mr. Gideon sued Mr. Wainwright, the warden of the Florida prison in which he was being held, and not the state of Florida itself.) The Authors' Guild did not, however, do so; suing the various boards is not the same thing as suing the officers who make up those boards (I did warn you that this was a legal fiction...).

Ultimately, this all comes down to whether Congress had the power, and appropriately exercised the power if it did, to take away the states' sovereign immunity. Unfortunately for everyone, the Supreme Court has decided that it did not.⁵ Further, this goes well beyond the Ex parte Young loophole; the Courts of Appeals have interpreted the Supreme Court's holdings to bar not just monetary relief, but all relief, against the states under the Copyright Act.⁶

Things don't get much better on the left side of the v., when considering the standing of the Authors' Guild and the various individuals also named as plaintiffs in the complaint. Standing to represent "orphan works" is, as Judge Chin noted when rejecting the GBS settlement, lacking and not even arguable, even though he didn't use the term "standing". The Authors' Guild (and its foreign counterparts) asserts "associational standing" for itself as a representative of interests, but this does not help much. First, associational standing is virtually never proper against private actors... and if HathiTrust and its members are not private actors, they're probably state actors, which just reinforces the sovereign immunity problems. Second, Judge Chin's decision holding that the Authors' Guild cannot represent authors of orphan works as a class representative — and is an inadequate representative for non-orphan works — cuts strongly against its associational standing in a parallel lawsuit based on the same transactions and operative facts.

In short, at a constitutional level there are so many questionable aspects of this case's very posture that I doubt it can, or will, get very far. Judge Chin's closing remarks — indicating that he believes this is properly a matter for Congress — are well-taken.

But is there a way to revise the posture so that it can proceed? Perhaps, and perhaps not. The obvious first attempt would be to file a deprivation-of-property-rights claim in the Michigan courts against the University of Michigan and HathiTrust. Leaving aside the whack-a-mole aspect of this "solution" — Michigan isn't the only U.S. state with a university library system, after all! — this does nothing for the problems with standing on the left side of the v.... and, perhaps more importantly, runs up against a collective-action-of-several-states problem that the Supreme Court has yet to resolve (having punted every time it had the opportunity to squarely confront it). Basically, that problem concerns whether the Eleventh Amendment applies against states acting in concert, or even in parallel without actual intent. It is as much a problem with the drafting of the Eleventh Amendment as anything else; such "interstate compacts" as defendants just were not considered, let alone when it's more a matter of "conscious parallelism" than anything else.

In any event, this is just the swamp. I disagree with Professor Grimmelmann on one thing: The civil procedure is not a mere swamp, but a jungle.

1. See Complaint (Doc. 1), ¶¶ 25–30.
2. See, e.g., MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (copyright suit against non-US corporation allowed to proceed in California).
3. Ironically, Cornell University is arguably an arm of the state of New York, as it is the land-grant college of New York. Really. Thus, all five of the named universities are state actors...
4. 209 U.S. 123 (1908).
5. College Sav. Bank, Inc. v. Florida Prepaid Postsecondary Education Expense Bd., 527 U.S. 666 (1999); Florida Prepaid Postsecondary Education Expense Bd. v. College Sav. Bank, Inc., 527 U.S. 627 (1999).

   These decisions are arguably part of the Rehnquist Court's long effort to shrink the ever-expanding federal court docket in the face of Congressional intransigience in providing the resources (primarily judges) to handle that docket. This realpolitik view of the "federalist resurgence" was as much ideological as anything else... with all of the attendant unintended consequences.

6. See, e.g., Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir. 2000) (explicitly considering the State Street Bank decisions cited in note 5). It is not a coincidence that the leading cases concerning this theory, at all levels of courts, arise from the Confederacy; one of the problems with the CSA was that it did not accept the concept of intellectual property rights, and certainly not when asserted against its even-more-sovereign-than-the-present-US states.

Labels: copyright, intellectual property, jurisprudence, publishing