28 September 2011

Google Book Scan

Authors' Guild v. HathiTrust:
II. Entering the Procedural Jungle

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

By the time we're through here, and finally reach all of the nerdy policy stuff relating to the merits that everyone has been debating without considering how the procedural jungle shapes that debate, we'll definitely be agreeing with Captain Willard after encountering a tiger while looking for mangoes:

'Never get out of the boat.' Absolutely god-damned right.

This really is a jungle, and unfortunately I don't see much chance for Clean and Chef and the Chief to survive this little trip up the Nung River to a place where there is no method — only insanity — and accusing someone of infringing nebulous, unclear, or unclearly owned rights is all too much like handing out speeding tickets at the Indy 500. If all of that seems a bit too surreal for you, I suggest that you withhold judgment until you've spent a little bit of time in the jungle with me.

I'm going to start by considering how some of the civil procedure issues — in particular, the remedies and the parties' limited representativeness ‐ shape the complaint, the litigation, and the debate on the merits. (I'll try to withhold discussing the merits themselves until we reach Part III, but that's going to prove exceedingly difficult.) I will then describe some of the civil procedure issues raised by the complaint as filed that are somewhat more specific to the complaint. I will close this preliminary trip through the jungle by suggesting some procedural alternatives that avoid some of these problems... and describing some of the additional problems that those alternatives reveal themselves.

(a) Potential Remedies as Overriding Limits

I hinted in Part I that the potential remedies have a constitutional dimension to them concerning the jurisdiction of the federal courts over this lawsuit. The complaint itself is more than a bit vague on what it is requesting:

WHEREFORE Plaintiffs demand that:

(a) Pursuant to 28 U.S.C. § 2201, this Court declare that:

   (i) Defendants' systematic digitization and distribution of copyrighted materials without authorization constitutes unlawful copyright infringement in violation of Sections 106 and 108 of the Copyright Act; and

   (ii) Defendants' distribution and display of copyrighted works through the HathiTrust Orphan Works Project will infringe the copyrights of Plaintiffs and others likely to be affected;

(b) Pursuant to 17 U.S.C. § 502, this Court issue an injunction enjoining Defendants from:

   (i) systematically reproducing, distributing and/or displaying Plaintiffs' or any other copyrighted works without authorization except as specifically provided by 17 U.S.C. § 108;

   (ii) providing to Google for digitization copyrighted works without authorization;

   (iii) proceeding with the HathiTrust Orphan Works Project, including without limitation, from displaying, distributing or otherwise making available any so-called orphan work protected by copyright.

(c) Pursuant to 17 U.S.C. § 503, this Court order the impoundment of all unauthorized digital copies of works protected by copyright within the Defendants' possession, custody or control, including works whose copyrights are held by Plaintiffs, to be held in escrow under commercial grade security, with any computer system storing the digital copies powered down and disconnected from any network, pending an appropriate act of Congress.

(d) Pursuant to 17 U.S.C. § 505 this Court award Plaintiffs their attorneys' fees and other costs; and

(e) Plaintiffs be granted such other relief as may be deemed just and equitable.7

Then, a vague prayer for relief is both traditional and expected at this stage of a lawsuit. No discovery has been taken; no defendant has asserted any specific defense; and on this issue in particular, the underlying law is about as clear as the mud at the bottom of the Nung River. But how does this shape the lawsuit?

First, note that the request for declaratory relief in (a) is inconsistent with the request for injunctive relief in (b) and the request for impoundment in (c). This complaint is plainly trying to have things both ways by getting both a forward-looking declaration of who has what rights and a backward-looking remedy to stop infringement both permanently in (b) and during the pendancy of the suit in (c). At least it avoided the more-obvious Eleventh Amendment trap of requesting damages that I discussed before; the problem is that the request for attorneys' fees might also constitute a federal-court-ordered expenditure by an arm of the state that implicates the Eleventh Amendment.8

Leaving the inconsistencies aside, though, the remedies requested also will shape this litigation because they are founded on largely incompatible interpretations of potential evidence and potential legal arguments. The declaratory judgment requested in (a) essentially asks the court to determine whether under the particular evidence eventually entered into the record the HathTrust program constitutes an infringement of these plaintiffs' copyright rights. That kind of declaration is very fact-specific and fact-bound. The impoundment requested in (c) is also fact-specific and fact-bound to the particular program in question. The injunction requested in (b), however, is not; in fact, by its very terms it inverts the evidentiary considerations by concerning itself not with actual behavior, but potential future behavior engaged in "without authorization". At this point, it is worth recalling footnote 6 of Tasini — a comment that for copyright matters in the digital age may end up being the equivalent of footnote 4 in Carolene Products:

The dissenting opinion suggests that a ruling for the Publishers today would maintain, even enhance, authors' "valuable copyright protection." We are not so certain. When the reader of an article in a periodical wishes to obtain other works by the article's author, the Databases enable that reader simply to print out the author's articles, without buying a "new anthology … or other collective work." In years past, books compiling stories by journalists such as Janet Flanner and Ernie Pyle might have sold less well had the individual articles been freely and permanently available on line. In the present, print collections of reviews, commentaries, and reportage may prove less popular because of the Databases. The Register of Copyrights reports that "freelance authors have experienced significant economic loss" due to a "digital revolution that has given publishers [new] opportunities to exploit authors' works."

More to the point, even if the dissent is correct that some authors, in the long run, are helped, not hurt, by Database reproductions, the fact remains that the Authors who brought the case now before us have asserted their rights under [17 U.S.C.] § 201(c). We may not invoke our conception of their interests to diminish those rights.9

The "without authorization" language in the HathiTrust complaint's request for relief part (b) is a mirror of Justice Ginsburg's language in Tasini note 6. The complaint appears to contemplate a positive prior authorization by the authors, while Justice Ginsburg was primarily concerned with a positive objection to prior conduct. This is where it becomes impossible to separate the merits from the civil procedure issues, because some of the "authorization" (or, from the opposite perspective, limitations on rights to object) for activities depends not on the ordinary rights of copyright holders found in § 106, but on the particular privileges accorded to libraries in § 108.10

The remedies requested — and not requested — will also shape the litigation in two other respects. For one thing, the requested injunction in (b) does not necessarily reach either collective and collaborative action — hypothetically, each of several libraries providing enough of a work to fall inside of the fair use defense provided by § 107, but that collectively exceed whatever limit there may be to fair use11 — or the propriety of authorizing a third party such as Google to engage in conduct that the "libraries and archives" could do themselves, but could not otherwise be done by that third party because the third party itself does not fall under § 108(a)(1) or (2). For another, by limiting itself to nonmonetary remedies (excepting my musings on (d)'s request for attorney's fees as it may relate to the Eleventh Amendment), the request for relief essentially bars inquiry into the arrangements between HathiTrust and its members, and between the libraries (collectively and individually) and third parties like Google that actually created the digitized versions in question. These are both, however, inquiries that are critical to the policies and practices implicit in determining the merits of the action.

Finally for now, there is an implicit definition of "infringement" in the remedies that is inconsistent with the rights provided to copyright holders in § 106 of the Copyright Act. The remedies requested imply that an infringement is not complete until a copy is distributed to a third party. As I have noted before, this is an unduly restricted description of infringement, because making the copy in the first place — digitizing the works — is an infringement all by itself. This is a fundamental error by plaintiffs' counsel that is perhaps required by the Authors' Guild's prior errors in the litigation against Google... that reflects the Authors' Guild's unsuitability as a representative/associational plaintiff in this action. At least this lawsuit avoids mucking that problem up further with considerations of suitability as a class representative; however, it also fails to extend the statute of limitations as a class complaint would (echoing precisely the problems raised by Tasini itself!).12

Next time: Mangoes... and the civil-procedure theory of the complaint

  1. Complaint (Doc. 1) at 22–23 (hyperlinks added).

    As an aside, this prayer for relief is simultaneously unusually clear for copyright and other intellectual property litigation and incredibly sloppy for high-stakes litigation of any kind. It is unusually clear in that the prayer for relief itself cites the authority authorizing the court to grant such relief. It is incredibly sloppy in that it was not adequately proofread for either grammar and typography or parallelism (consider, for example, the inconsistent use of end-of-clause punctuation). As we will also see, it is also sloppy in that the relief requested in (a) is fundamentally incompatible with the relief requested in (b) based on the parties' status and character.

  2. Just to make things perfectly clear, I'm no fan of Eleventh Amendment jurisprudence on realpolitik, theoretical, practical, or ideological grounds. The Amendment is what it is, regardless of my dislike for the premises behind it. However, existing jurisprudence has failed to interpret it narrowly enough in light of the Fourteenth Amendment's Due Process and Privilege and Immunities clauses in particular and in the context of the Supremacy Clause in general. That, however, is an argument for another time; for the present, I will just continue thinking dark thoughts about the slaveholding origins of the Eleventh Amendment as essentially counting three-fifths of all other claims...
  3. New York Times, Inc. v. Tasini, 533 U.S. 483, 498–99 n.6 (2001) (internal citations omitted, hyperlink added); see also U.S. v. Carolene Products, Inc., 304 U.S. 144, 152–53 n.4 (1938) (concerning the scope and interaction of legislation, presumptions of constitutionality, and later-enacted restrictions). That note in Carolene Products has probably been dissected and written upon, by both scholars and practitioners, more than all other elements in that opinion combined... seldom reaching any defensible conclusion that is not subject to further hedging.
  4. Unfortunately, this also points out a fairly serious drafting error in the Copyright Act: There is no satisfactory definition — in § 108 or elsewhere — of "library or archives." In particular, it is unclear whether the "open to the public" language in § 108(a)(2) requires "without charge or other payment required for access," "without restriction," and/or "with anonymity." Further, § 108(a) is concerned with access to works... and silent regarding provision of (relatively) permanent copies of particular works that enlarges the number of copies, except by implication under § 108(g). There's no real question that this is something that Congress, and not the courts, must fix.
  5. See, e.g., Harper & Row, Pubs., Inc. v. Nation Enters., Inc., 471 U.S. 539 (1985) (holding that an extract from a book of less than 800 words exceeded fair use for that book... but explicitly refusing to establish a bright-line or proportionate test).
  6. See, e.g., Crown Cork & Seal Co. v. Parker, 462 U.S. 345 (1983); American Pipe & Constr. Co. v. Utah, 414 U.S. 538 (1974) (together, holding that the statute of limitations is extended for unnamed classmembers during the pendency of an otherwise-timely-filed class complaint concerning the same legal theory and operative facts or transaction).