HathiTrust Summary Judgment (8)
Factor 3: Amount and Substantiality of the Portion Used
At a deep, theoretical level, factor three is an utter nightmare when considering indices of any kind... and non-human-generated indices even more so. Does an index "use" the material to which it is referring? Does any such use rise from being a statement of fact about the copyrighted work to being an extraction of expression from the copyrighted work? Does the preparation method applied to the copyrighted work prior to actually creating the index itself independently "use" the work? It should really surpise no one that these questions did not get answered. Leaving aside some dubious lawyerly performance, it is not strategically in any party's best interest to try to answer them, let alone for less than the universe of all copyrightable works... and even if it was in their interest, that's at least as much a legislative task as is the orphan works problem.41
So, then, what did Judge Baer do with what was in front of him on this factor? Recalling yet again that this concerns only the Exhibit A works — the vast majority of which are not themselves factual compilations — the entire discussion in the opinion is this:
The third fair-use factor considers whether the amount of copying was reasonable in relation to the purpose. "[T]he extent of permissible copying varies with the purpose and character of the use." The question is whether "no more was taken than necessary." Sometimes it is necessary to copy entire works. "Intermediate" copies may not be infringing when that copying is necessary for fair use. Here, entire copies were necessary to fulfill Defendants’ purposes of facilitation of searches and access for print-disabled individuals ("If Arriba only copied part of the image, it would be difficult to identify it, thereby reducing the usefulness of the visual search engine."). Plaintiffs argue that Defendants did not need to retain copies to facilitate searches; however, the maintenance of an electronic copy was necessary to provide access for print-disabled individuals.26
26. Not to mention that it would be a tremendous waste of resources to destroy the electronic copies once they had been made for search purposes, both from the perspective of the provision of access for print-disabled individuals and from the perspective of protecting fragile paper works from future deterioration.
(slip op. at 18–19, internal citations omitted, footnote in original, emphasis added).
Within the strictures that Judge Baer believes the existing precedent imposes upon him, this is probably about right. This is neither the time nor the place to argue about what Arriba Soft means, or whether Campbell's conception of "amount taken" was restricted to creation of a nonfactual work.42 Neither is it the time or place to note the circularity of reasoning inherent in factor-three analysis; that's a matter for the legislature that establishes the factors. All of that said, the third factor no longer seems relevant in most fair-use decisions,43 and if one accepts Judge Baer's reasoning on the first factor as to the works before him this rationale is almost unimpeachable.
That is, it is probably about right until one reads footnote 26 of the decision, at which point the fifth fair use factor — the nonstatutory one — begins to become apparent. First, one should note that the "fragile paper copies" premise in footnote 26 is true only for the broad universe of all works in the University of Michigan (et al.) libraries... but not, on the record before Judge Baer, for the works on Exhibit A, and not even for all orphan works. Remember, the fragility issue matters only if those fragile copyrighted works are still in copyright; if the works are not in copyright, we don't even reach the fair use issues!
Second, the phrase that I've put in bold reveals what is really going on here. This case is not about any particular work, or any particular use of a work; it is about administrative efficiency and convenience for the copying party. This will become even more apparent when considering the fourth statutory factor, and I'll try to tie it up in a separate discussion (short preview: Indefensible interpretation as a matter of policy, of constitutional law, of treaty obligations, and of statutory interpretation... but nonetheless the prevailing view in the judiciary in general and the Second Circuit in particular). That the briefs in this matter essentially treat fair use as a right and privilege, and not a defense that must be proven by the weight of the evidence,44 represents a fairly serious error by plaintiffs and plaintiffs' counsel. And it's an error that's going to force virtually every plaintiff's counsel hereafter to exceed page limits in briefs both explaining the limits of this decision and showing how that works at issue in that later action don't align with the seventy-odd works at issue in this one. Thank you, Authors' Guild.
- It's rather interesting that, at this writing, it appears that the Copyright Office is going to try to supplement its short-sighted, unsatisfactory orphan works report. Register of Copyright, Report on Orphan Works (Jan. 2006). This is a necessary, logical, and frustratingly late consequence of the ongoing process on "small copyright claim" resolution. See Remedies for Small Claims, U.S. Copyright Office Inquiry (27 Oct 2011). There are rumors afoot that the Copyright Office will be issuing a formal inquiry notice shortly, but has not done so as of this writing.
- Kelly v. Arriba Soft Corp., 77 F. Supp.2d 1116 (C.D. Cal. 1999), rev'd in part, 280 F.3d 934 (9th Cir. 2002), revised on reh'g broadening reversed portion, 336 F.3d 811 (9th Cir. 2003); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994); cf. also Sundeman v. Seajay Soc’y, Inc., 142 F.3d 194, 206 (4th Cir. 1998).
Although this is not the place to argue about what Arriba Soft means, it is the place to note that in Arriba Soft the actual creation of digital representations of photographs was done by the complaining copyright holder, not by the defendant; the defendant merely gathered and transformed the equivalent of existing index entries into a new index. Whether this should make a difference in the long run to a fair use analysis is beyond the scope of this essay; it nonetheless seriously undercuts the strength of Arriba Soft as even persuasive precedent for this matter. Then, too, there's the substitution question that will be more apparent in factor 4.
- I have been unable to find a reported decision this century (or, for that matter, an unreported decision in the Federal Appendix) on fair use finding that "excessive use" was enough to outweigh the other three factors, however egregious. Of course, it would be rare indeed for such a matter to proceed to an opinion; it would much more likely be settled or resolved on a default judgment.
- Not to mention that, as a summary judgment matter, the evidence in question must be essentially unopposed as to all material facts. If a reasonable factfinder could find otherwise on any of the necessary material facts, it is a jury matter and not proper for summary judgment. Cf. Ellison v. America Online, Inc., 357 F.3d 1072, 1080 (2004) ("[defendant] allowed notices of potential copyright infringement to fall into a vacuum and to go unheeded; that fact is sufficient for a reasonable jury to conclude that [defendant] had not reasonably implemented its policy against repeat infringers") (n.b. I was lead counsel for the winning plaintiff in that matter).