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Abstract
This article will look at the recent Hachette decision against the Internet Archive, analyzing how the court’s reliance on past authorities with insufficient context distorted their meanings. It will focus only on the controlled digital lending (CDL) aspect, not discussing the other claims in the suit or exploring the specific implementation of CDL by the Internet Archive (IA). Since CDL programs can vary widely, IA is better situated than others to identify missing context related to the analysis of the unique components of their efforts. And other libraries engaging in CDL should be able to easily see where their programs differ from the judge’s description of IA’s. For that reason, the analysis below only delves into the language that might be used to chill all CDL programs or innovation more generally.
Notes
1 Some scholars have already shown the possibility of bias in the precedents that judges cite. See, for example, Anthony Niblett & Albert H. Yoon, Friendly Precedent, 57 Wm. & Mary L. Rev. 1,789 (2016) (noting that Republican-appointed panels more frequently cite conservative precedents, while Democratic-appointed panels lean toward liberal ones). But using authority outside of context is an issue separate from cherry-picking cases; bias may give greater weight to some cases than to others, but it does not consciously distort a specific case’s holdings.
2 Hachette Book Group, Inc. v. Internet Archive, 2023 WL 2623787 (S.D.N.Y.) (2023).
3 For a description of CDL, see Lila Bailey et al., Position Statement on Controlled Digital Lending by Libraries, https://controlleddigitallending.org/statement/.
4 Hachette, supra note 2 at 11. The judge’s reasoning was arguably faulty in that, at least in some instances, IA did comply with CDL own-to-loan principles (e.g., the first copy of book that it made available for digital lending, as IA owned a print copy in storage and the e-copy was used in place of the owned copy)). However, the court made no such distinction between the copies or the uses, lumping them all together. Therefore, the instances where the definition of CDL was met could be raised on appeal as deserving independent analysis. The court’s finding that IA did not adhere to own-to-loan was highly consequential. On one hand, it essentially deprived IA of the analysis detailed in CDL literature and gave the court leverage to treat every copy that IA used as an unauthorized extra copy added to the market. When the failure to comply with own-to-loan is treated by the court as fact, the fact becomes inseparable from its entire analysis. On the other hand, it turned all the court’s language directly applicable to CDL into dicta, because the facts it cited made CDL irrelevant to the case before it. For example, while the Hachette court did briefly hypothesize on how compliance with own-to-loan might affect the first factor, based on its own findings, such compliance was absent in the case it was deciding.
5 Hachette, supra note 2. The following recitation of facts from pages 1–4 of the opinion with regard to IA is limited only to those related to the operation described as CDL.
6 Id. at 5.
7 Id. at 15.
8 “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.” U.S. Const. Art I, Sec 8, Cl 8.
9 U.S.C. §106.
10 U.S.C. §109.
11 U.S.C. §108.
12 U.S.C. §121.
13 U.S.C. §107.
14 Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994), quoting Stewart v. Abend, 495 U.S. 207, 236, 110 S. Ct. 1750, 109 L. Ed. 2d 184 (1990). 4 Nimmer on Copyright § 13.05 (2018).
15 Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73 at 81 (2d Cir. 2014).
16 Campbell, supra note 14 at 577–78.
17 Supra note 3.
18 Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015).
19 Id. at 206–08.
20 Id. at 225.
21 Authors Guild, Inc. v. HathiTrust, 755 F.3d 87 (2d Cir. 2014).
22 Id. at 101–2.
23 Hachette, supra note 2 at 7 (citing HathiTrust, supra note 21 at 101–2).
24 HathiTrust, supra note 21 at 101–2.
25 Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 104 S. Ct. 774, 776, 78 L. Ed. 2d 574 (1984).
26 Hachette, supra note 2 at *8.
27 Sony, supra note 25 at 449.
28 Capitol Recs., LLC v. ReDigi, Inc., 910 F.3d 649, n. 6 (2d Cir. 2018).
29 Hachette, supra note 2 at 10.
30 ReDigi, supra note 28 at 659.
31 Id. at n. 7.
32 Hachette, supra note 2 at 13 (citing ReDigi, supra note 28 at 662).
33 H.R. Rep. No. 94-1476, at 65 (1976).
34 Hachette, supra note 2 at 10, 15.
35 See, for example, Pierre N. Leval, Toward A Fair Use Standard, 103 Harv. L. Rev. 1105 (1990); Wendy J. Gordon, Fair Use as Market Failure: A Structural and Economic Analysis of the Betamax Case and its Predecessors, 82 Colum. L. Rev. 1600 (1982); Brian L. Frye, Against Creativity, 11 NYU J.L. & Liberty 426, 429 (2017).
36 See, for example, HathiTrust, supra note 21 at 95.
37 Though the inputs have not often been discussed, many other scholars have criticized the economic theory of copyright as being unable to explain copyright’s entirety or as being inadequate to meet copyright’s intended purpose. See, for example, Robert P. Merges, Justifying Intellectual Property 3–4 (2011); Oren Bracha & Talha Syed, Beyond Efficiency: Consequence-Sensitive Theories of Copyright, 29 Berkeley Tech. L.J. 229 (2014); James Boyle, A Theory of Law and Information: Copyright, Spleens, Blackmail, and Insider Trading, 80 Cal. L. Rev. 1413, 1443-57, 1461–70 (1992); Steven J. Horowitz, Copyright’s Asymmetric Uncertainty, 79 U. Chi. L. Rev. 331 (2012); Alfred C. Yen, Restoring the Natural Law: Copyright As Labor and Possession, 51 Ohio St. L.J. 517 (1990); Frank P. Darr, Testing an Economic Theory of Copyright: Historical Materials and Fair Use, 32 B.C. L. Rev 1027 (1991); Brian L. Frye, Plagiarism Is Not A Crime, 54 Duq. L. Rev. 133 (2016); Shubha Ghosh, Copyright As Privatization: The Case of Model Codes, 78 Tul. L. Rev. 653 (2004); David A. Simon, Culture, Creativity, & Copyright, 29 Cardozo Arts & Ent. L.J. 279, 313 (2011).
38 Letter from Joel Barlow to the Continental Congress (1783), Primary Sources On Copyright (1450–1900) (L. Bently & M. Kretschmer, eds.), www.copyrighthistory.org. Original source: The National Archives, Center for Legislative Archives: Papers of the Continental Congress, RG 360, 4: 369-373 (No. 78).
39 U.S. Copyright Office, Copyright Laws Of The United States Of America, 1783–1862, at 1 (1962).
40 Phillip Wittenberg, The Protection Of Literary Property 33 (The Writer Inc., rev. ed. 1978).
41 The only exceptions were Pennsylvania and Virginia, which also extended the right to those who bought the rights to books from authors. Primary Sources, supra note 38, Pennsylvania Copyright Statute, Pennsylvania (1784) & Virginia Copyright Statute, Virginia (1785).
42 Google, supra note 18 at 212.
43 That copyright can be used for profit—and that the Founders knew this—does not mean that the purpose was profit. As an analogy, consider that public office can be used for personal gain and that the Federalist Papers make clear that the Founders knew that anyone occupying public office would likely be self-interested. See, for example, Federalist Paper 6. They established public offices anyway. Though these offices can be used for personal advantage, the creation of them was not intended to further personal gain. The establishment of public offices was simply what they had determined to be a necessary part of creating a republic, and they felt that a republic held benefits over divided states or other forms of government.
44 Michelle M. Wu, Defeating the Economic Theory of Copyright: How the Natural Right to Seek Knowledge Is the Only Theory Able to Explain the Entirety of Copyright’s Balance, https://scholarship.law.georgetown.edu/facpub/2495 (prepublication draft, forthcoming in IDEA: The Law Review of the Franklin Pierce Center for Intellectual Property) (setting forth the more detailed explanation for why the economic theory has never explained copyright’s history or practice).
45 In 2022, it was estimated that every minute, 66K photos are shared on Instagram, 500 hours of video are uploaded to YouTube, 527,760 photos are shared on Snapchat, and 231.4M email message are sent. DOMO, Data Never Sleeps 10.0, https://www.domo.com/data-never-sleeps# (last visited Mar. 29, 2023).
46 Some YouTubers do make money from their postings, but most do not. An unofficial estimate notes that approximately 0.25% of YouTube channels make money. https://alanspicer.com/what-percentage-of-youtubers-make-money/.
47 Many of the uses described in note 25 (e.g., YouTube videos) not only create new copyright works but qualify as copyright use (e.g., video that incorporates preexisting music or program footage). Note that the point is not that these activities cannot be monetized; after all, the platforms hosting some of these creations do make money from the content. However, the users and creators of copyrighted works themselves have no commercial intent. That copyright can be monetized is a separate question from whether monetization is the purpose of copyright.
48 The average costs of copyright litigation today (not including appeal) are $161K for cases worth up to $1M; $882K for cases worth $1–10M; $1.125M for cases worth $10–25M; and $2.501M for cases worth more than $25M (costs inclusive of discovery, motions, and claim construction). Am. Intellectual Prop. Law Assoc., 2021 Report of the Economic Survey, I-208–214 (2021).
49 Hachette, supra note 2 at 6.
50 Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir. 1998) (quoting Leval, supra note 35 at 111).
51 HathiTrust, supra note 21 (full text to print-disabled); Field v. Google, Inc., 412 F.Supp.2d 1106 (D. Nev. 2006) (caching); Google, supra note 18 at 228 (digital copies to libraries).
52 In explaining that copyright protects only a work, Nimmer says “… a movie is copyrightable to the extent there is information on a film (or videotape), which presents sights and sounds when played on a projector (or television). A software program may contain copyrightable audiovisual information, which will be visible and audible when booted up into a computer. However, the projector, the television, and the computer are not themselves copyrightable; each is a machine, usable by all (unless subject to an applicable patent) for individual copyrightable works.” 1 Nimmer on Copyright § 2.09 (2023).
53 Pub. L. 105-304, 112 Stat. 2860 (1998).
54 U.S.C. §102.
55 “Similarly, a given motion picture constitutes a work of authorship whereas its copies may take different forms, such as celluloid, videotape, Blu Ray discs, and the like. There is but a single work of authorship, no matter how numerous and diverse the copies.” 1 Nimmer on Copyright § 2.03 (The Scope of Protectable Works under Statutory Copyright) (2023). See also 1 Nimmer on Copyright § 3.04 (Derivative or Collective Work) (2023). Note: many changes in format also incorporate changes or additions to content, such as an audiobook, which adds a narrator’s voice. Any additional content can qualify for copyright protection by itself, could be protected as a derivative work, or could qualify for protection as a compilation. For example, an audiobook would qualify for protection as a derivative work and a sound recording, where the tone, timbre, cadence, etc. of the voice is protected separately from the words of the book. The protection of the book’s original words remains unchanged; it is exactly the same with or without the existence of the audiobook version. An example of compilation protection can be found in an article that is selected for publication in a journal. The article has its own copyright, but the journal issue in which it is published is a compilation. The copyright for the article protects the article’s words; the copyright for the compilation protects the selection and order of the articles included in the issue and not the words itself. See, generally, 1 Nimmer on Copyright § 3.04 and ch. 2 (Subject Matter of Copyright) (2023).
56 “IA exploits the Works in Suit without paying the customary price. IA uses its Website to attract new members, solicit donations, and bolster its standing in the library community … IA receives these benefits as a direct result of offering the Publishers’ books in ebook form without obtaining a license. Although it does not make a monetary profit, IA still gains “an advantage or benefit from its distribution and use of” the Works in Suit “without having to account to the copyright holder[s],” … The commercial-noncommercial distinction therefore favors the Publishers.” Hachette, supra note 2 at 9.
57 See, for example, Campbell, supra note 14.
58 See, for example, Campbell, id. at 591–92 (citing Benjamin Kaplan, An Unhurried View of Copyright 69 [1967]): “We do not, of course, suggest that a parody may not harm the market at all, but when a lethal parody, like a scathing theater review, kills demand for the original, it does not produce a harm cognizable under the Copyright Act,” because “parody may quite legitimately aim at garroting the original, destroying it commercially as well as artistically.”).
59 One might argue that each time a user checks out an e-book, a new copy is made, but since all e-copies are protected by DRM, all expire, and because no two copies can be used simultaneously, each copy still retains the description as being a replacement copy, not an additional copy to the market. Even though a user might try to break DRM to retain a copy of the book, in such an instance, the user might be held liable under both infringement and anticircumvention statutes, but that independent user action should not be conflated with the library’s CDL operation. An analog parallel is where a user checks out a library book and photocopies it to keep a copy. That the user has arguably infringed on copyright would not make the library’s initial lending of the book illegal.
60 Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 546, 105 S. Ct. 2218, 2223, 85 L. Ed. 2d 588 (1985).
61 A longer discussion of the public’s natural rights to use information can be found in Wu, supra note 44.
62 Hachette, supra note 2 at 5.
63 Mike Masnick, Amazon Gives In to Ridiculous Authors Guild Claim: Allows Authors to Block Text-To-Speech, Techdirt (Feb. 27, 2009), https://www.techdirt.com/2009/02/27/amazon-gives-in-to-ridiculous-authors-guild-claim-allows-authors-to-block-text-to-speech/ (text to speech); Nick Statt, Major Book Publishers Sue Amazon’s Audible over New Speech-to-Text Feature (Aug. 23, 2019), https://www.theverge.com/2019/8/23/20830057/amazon-audible-speech-to-text-feature-lawsuit-major-book-publishers (speech to text).
64 See, for example, the YouTube Partner Program, https://support.google.com/youtube/answer/94522?sjid=13686113306724872621-NA.
65 Hachette, supra note 2 at 9.