HathiTrust Summary Judgment (7)
Factor Two: Nature of the Copyrighted Work
Taking this factor at face value, the works listed on Exhibit A do not have much in common other than "appeared in printed volumes in the English language." Most are U.S. works, some are not; some are fiction, some are nonfiction; a few have some serious (albeit not scholarly) aspects, virtually everything else does not; some are in print at this time and/or at the time of filing and/or at the time the initial GBS lawsuit was filed in 2005, some are not; some are the first publication of the respective material, some include previously published material; and so on. This is a relatively common problem with fair-use inquiries in non-work-specific litigation: Counsel (either purposely or otherwise) tends to make the panoply of works at issue as broad as possible. In turn, this results in decisions that are unfortunately taken as general statements of general principles that apply to all works, rather than concerned with the works actually at issue. Rhetorically, at least, that certainly happened in this matter!39
Turning to what Judge Baer actually said on the nature-of-the-copyrighted-work factor — and remembering that as a matter of law, he is considering only the works on Exhibit A, no matter how lofty his rhetoric — we find this:
"[S]ome works are closer to the core of intended copyright protection than others." Copying factual works is more likely fair use than copying creative works. However, where a use is transformative, the nature of the copyrighted works is not likely to "separate the fair use sheep from the infringing goats." Here, Plaintiffs identify 116 works that they allege were unlawfully digitized by Defendants as part of the [massive digitization program]. Approximately 76 percent of the identified works are fiction. In the [HathiTrust Digital Library] as a whole, approximately 9 percent consists of prose fiction, poetry, and drama. Because the use is transformative, intended to facilitate key-word searches or access for print-disabled individuals, the second factor is not dispositive ("[T]he second factor may be of limited usefulness where the creative work of art is being used for a transformative purpose.").
Slip op. at 18 (internal citations omitted). And that is the entire discussion.
In this instance, Judge Baer has been put in a bit of a bind by the Second Circuit. Remember, as a District Court judge sitting in the Second Circuit, he must treat interpretations of the underlying statute by the Second Circuit as the definitive ones, unless/until they are overturned by either changes to the statute or a Supreme Court decision. In this particular instance, the Second Circuit has incorrectly interpreted § 107's second factor as depending upon the resolution of the first factor. There's simply no way to defend this position based upon either reading the statute itself or reading the statute together with the legislative history of § 107, stretching all the way back to the initial study-group submission in the 1950s. The only way one reaches this result is by accepting the judge-made doctrine of fair use under the 1909 Act as not merely persuasive, but binding, interpretations of a doctrine codified anew in the 1976 Act.40
All of that said, this is by far the most unsatisfactory aspect of Judge Baer's opinion; it is the miracle on the chalkboard. Judge Baer has already (and, IMNSHO, correctly from both legal and policy perspectives) carved out a large number of works from consideration with his considerations on standing. The nature of the works at issue in the binding precedent deserved considerably greater discussion, particularly as compared to the works actually in front of him. Of the entire fair use discussion, this factor is the one that most clearly falls into the concluding-beyond-the-warrant trap. A better decision would have emphasized the distinctive natures of the individual works at issue. In the end, though, I'm not sure that would have led to a different result, particularly when considering the other four factors.
Wait a minute; if § 107 has four clearly numbered factors, and this is one of them, how are there four factors other than "nature of the copyrighted work"? We'll see that fifth, nonstatutory, and ultimately determinative factor more clearly when discussing the third statutory factor, and certainly when discussing the fourth one. For now, though, consider this a pathetic attempt at a cliff-hanger... all too appropriate given some of the particular works of fiction at issue...
- Procedurally, there's a simple solution to this. If for political and strategic reasons it's considered necessary to join otherwise-dissimilar works in the same lawsuit, there's little good reason to not have subclaims for relief based on subclasses of similar works. In the HathiTrust complaint, there is only one count and claim for relief. It would have been better to have additional counts for each of the coherent subsets by nature of the work at issue; for example, a Count II dealing with the commercial category fiction (primarily Ms Weldon's works), a Count III dealing with the general-reader nonfiction, and so on. In turn, this would have forced both the parties and Judge Baer to grapple with the differing natures of the works when it came time to deal with fair use. Had counsel utterly failed to anticipate that a fair use defense was going to be raised, that would amount to legal malpractice so egregious that it implicates N.Y.R. Prof. Conduct 1.1, codified at 22 N.Y.R.C.C. Part 1200 (PDF), particularly in light of half a decade of GBS litigation raising such a defense; perhaps there was a conscious decision made to simplify in this instance, but if so it was ill-considered.
- Cf., e.g., Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) and the cases cited therein. That this acceptance of an outdated common-law conception is logically inconsistent with the emphasis on statutory standing deserves more attention... in another forum entirely.