02 October 2011

Google Book Scan

Authors' Guild v. HathiTrust
II(b) Litigation Without Representation

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

It's time for a (seeming) side trip to find some mangoes, make a nice mango cream pudding... and discover that this lawsuit, for purely civil procedure reasons, means far less than most commentators have been willing to accept; there's a missing party necessary to make the lawsuit ultimately meaningful.

Remedy requests (a)(ii) and (b)(iii) explicitly contemplate relief against HathiTrust related only to orphan works; remedy request (c) implicitly includes relief against HathiTrust related to orphan works. In order to obtain such relief, though, holders of rights in orphan works must either be directly before the court as parties, or adequately represented in the litigation by appropriate representatives. Obviously, the holders of rights in orphan works are not directly before the court; by definition,13 if the party claiming rights in a work is directly before a court as a party, we're not talking about an orphan work. Thus, we're reduced to having representation for the owners of rights in orphan works... and Judge Chin has already held that neither the Authors' Guild nor individual members would be an adequate representative for orphan works rightsholders.14 Instead, the only proper representative who could be found would be... the United States itself.

That's right: The paper tiger of copyright litigation is the only proper representative of orphan rights holders. And not only is the relevant agency (the Copyright Office) more-than-arguably agency-captured15 and saddled with an obvious conflict of interest regarding registration (and recordation) fees and the registration (and recordation) process, but the Department of Justice was pretty harshly critical of the Authors' Guild in its objections to the Google settlement. At least politically (in the broad, nonideological sense of "political"), this explains why the proper party to represent orphan works is not in front of the court.

This also reflects the converse of Justice Ginsburg's comment in note 6 of Tasini quoted above. The Copyright Act has a truly awful logical hole in it: It does not provide for "private attorney general"-type actions. If one pays attention to the entire text of the Intellectual Property Clause,16 one would assume that the enabling legislation would provide for private enforcement in "public interest"-type actions, similar to those for environmental protection and civil rights. The Declaratory Judgment Act17 comes closest, with its slightly relaxed concept of standing... but it does not provide for any remedy other than a declaration of rights — no injunctions, no impoundment of copies — and binds only the parties actually in front of the court.

Thus, one can be reasonably certain that the civil procedure theory of the complaint is seriously flawed, if only because the identity of whom the complaint brought in front of the court reflects serious flaws in procedural thinking. Next: Continued exploration of the civil procedure theory of this complaint.

  1. Although not defined in the Copyright Act itself, "orphan works" are those for whom the present copyright holder cannot be located. Cf., e.g., U.S. Register of Copyrights, Report on Orphan Works 1 (Jan. 2006) (PDF) (defining an "orphan work" as "the situation where the owner of a copyrighted work cannot be identified and located by someone who wishes to make use of the work in a manner that requires permission of the copyright owner").
  2. Technically, this is not preclusive against the Authors' Guild for two reasons. First, it concerned representative capacity in a class action, under Fed. R. Civ. Proc. 23; this lawsuit was filed not as a class action, but alleging associational representation. The rules for associational standing are different from those for class actions... but arguably much more restrictive. The key point is the difference for this purpose.

    Second, Judge Chin's decision does not operate as a final judgment on the merits in the Google lawsuit. Thus, it is at most persuasive authority, not binding precedent. However persuasive and understated his reasoning, and despite his elevation to the Court of Appeals overseeing the court in which the HathiTrust action is being heard, the Authors' Guild is not precluded from making the (IMNSHO futile) argument that it can be a representative for the actual rightsholders of orphan works. It passes the "nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law" scrutiny required by Fed. R. Civ. Proc. 23(b)(2), however wasteful and confusing to others it may be.

  3. "Agency capture," also called "regulatory capture", occurs when the industry or activity that is supposed to be regulated by an administrative agency ends up actually controlling that agency's decisionmaking process. See, e.g., Rachel Barkow, Insulating Agencies: Avoiding Capture Through Institutional Design, 89 Tex. L. Rev. 1(2010) (PDF). In this instance, it is perhaps most helpful to follow the later employment of Copyright Office employees... almost all of whom end up working for copyright exploiters. In particular, some prior senior counsel are now employed in-house by scanning/digitizing companies like Microsoft... and Google.

    There's one additional irony involved here. Judge Chin and the Register of Copyright, among many others, called for Congressional action on orphan works. Unlike most administrative agencies, the Copyright Office is not either part of the executive branch or an "independent agency"; it is, instead, part of the Library of Congress.

  4. U.S. Const. Art. I § 8 cl. 8 ("The Congress shall have Power... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries").
  5. 28 U.S.C. § 2201.