Case 12-4547, Document 66, 03/04/2013, 863629, Page1 of 36
`
`IN THE
`
`United States Court of Appeals
`
`FOR THE SECOND CIRCUIT
`
`12-4547-cv
`d
`
`AUTHORS GUILD, INC., AUSTRALIAN SOCIETY OF AUTHORS LIMITED, UNION
`DES ECRIVAINES ET DES ECRIVAINS QUEBECOIS, PAT CUMMINS, ANGELO
`LOUKAKIS, ROXANA ROBINSON, ANDRE ROY, JAMES SHAPIRO, DANIELE
`SIMPSON, T.J. STILES, FAY WELDON, AUTHORS LEAGUE FUND, INC., AUTHORS’
`LICENSING AND COLLECTING SOCIETY, SVERIGES FORFATTARFORBUND, NORSK
`FAGLITTERAER FORFATTER0OG OVERSETTERFORENING, WRITERS’ UNION OF
`CANADA, PAT CUMMINGS, ERIK GRUNDSTROM, HELGE RONNING, JACK R.
`SALAMANCA, JAMES SHAPIRO, DANIELLE SIMPSON,
`
`—against—
`
`Plaintiffs-Appellants,
`
`HATHITRUST, REGENTS OF THE UNIVERSITY OF MICHIGAN, REGENTS OF THE
`UNIVERSITY OF CALIFORNIA, BOARD OF REGENTS OF THE UNIVERSITY OF
`WISCONSIN SYSTEM, TRUSTEES OF INDIANA UNIVERSITY, CORNELL UNIVERSITY,
`(caption continued on inside cover)
`
`ON APPEAL FROM THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`BRIEF FOR AMICUS CURIAE THE ASSOCIATED PRESS
`IN SUPPORT OF NEITHER PARTY
`
`ELIZABETH A. MCNAMARA
`ALISON B. SCHARY
`(admission pending)
`COLLIN J. PENG-SUE
`DAVIS WRIGHT TREMAINE LLP
`1633 Broadway, 27th Floor
`New York, New York 10019
`(212) 489-8230
`Attorneys for Amicus Curiae
`The Associated Press
`
`

`

`Case 12-4547, Document 66, 03/04/2013, 863629, Page2 of 36
`
`JULIA DONOVAN DARLOW, LAURENCE B. DEITCH, DENISE ILITCH, OLIVIA P.
`MAYNARD, ANDREA FISCHER NEWMAN, ANDREW C. RICHNER, S. MARTIN
`TAYLOR, in his official capacity as the Regents of the University of Michigan,
`KATHERINE E. WHITE, in her official capacity as the Regents of the University of
`Michigan, RICHARD C. BLUM, DAVID CRANE, WILLIAM DE LA PENA, RUSSELL
`GOULD, EDDIE ISLAND, ODESSA JOHNSON, GEORGE KIEFFER, SHERRY L.
`LANSING, MONICA LOZANO, HADI MAKARECHIAN, GEORGE M. MARCUS,
`ALFREDO MIRELES, JR., NORMAN J. PATTIZ, BONNIE REISS, FRED RUIZ, LESLIE
`TANG SCHILLING, BRUCE D. VARNER, PAUL WACHTER, in his official capacity as
`the Regents of the University of California, CHARLENE ZETTEL, in his official
`capacity as the Regents of the University of California, JEFFREY BARTELL, MARK
`J. BRADLEY, JUDITH V. CRAIN, JOHN DREW, TONY EVERS, MICHAEL J. FALBO,
`EDMUND MANYDEEDS, KATHERINE POINTER, CHARLES PRUITT, TROY
`SHERVEN, BRENT SMITH, MICHAEL J. SPECTOR, S. MARK TYLER, JOSE F.
`VAZQUEZ, in his official capacity as the Regents of the University of Wisconsin
`System, DAVID G. WALSH, in his official capacity as the Regents of the University
`of Wisconsin System, WILLIAM R. CAST, PATRICK A. SHOULDERS, MARYELLEN
`KILEY BISHOP, BRUCE COLE, PHILIP N. ESKEW, JR., CORA J. GRIFFIN, THOMAS
`E. REILLY, JR., DERICA W. RICE, in his official capacity as the Trustee of Indiana
`University, WILLIAM H. STRONG, in his official capacity as the Trustee of Indiana
`University, NATIONAL FEDERATION OF THE BLIND, GEORGINA KLEEGE, BLAIR
`SEIDLITZ, COURTNEY WHEELER,
`
`Defendants-Appellees,
`NATIONAL FEDERATION OF THE BLIND, GEORGINA KLEEGE,
`BLAIR SEIDLITZ, COURTNEY WHEELER,
`Intervenor Defendants-Appellees.
`
`

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`Case 12-4547, Document 66, 03/04/2013, 863629, Page3 of 36
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`
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`CORPORATE DISCLOSURE STATEMENT
`
`Pursuant to Rules 26.1 and 29(c)(1) of the Federal Rules of Appellate
`
`Procedure, amicus curiae The Associated Press states that it has no parent
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`corporation and that no publicly held company owns more than 10% of its stock.
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`Case 12-4547, Document 66, 03/04/2013, 863629, Page4 of 36
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`
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`TABLE OF CONTENTS
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`Page
`
`CORPORATE DISCLOSURE STATEMENT ......................................................... i
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`INTEREST OF AMICUS .......................................................................................... 1
`
`SUMMARY OF ARGUMENT ................................................................................. 6
`
`ARGUMENT ............................................................................................................. 8
`
`I.
`
`II.
`
`THE COURT SHOULD CAREFULLY CONFINE ITS
`ANALYSIS TO CASES WHERE THE END PRODUCT
`DISPLAYS NO COPYRIGHTABLE MATERIAL ............................. 8
`
`A TRANSFORMATIVE USE MUST NOT SUPERCEDE THE
`OBJECTS OF THE ORIGINAL WORK ........................................... 11
`
`A.
`
`B.
`
`The Core of the Transformative Use Doctrine Focuses on
`New Expressive Uses of the Original Work ............................. 12
`
`Even Those Cases Recognizing A Functional Use As A
`Transformative Use Have Required That The New Work
`Not Be Capable of Serving the Same Purpose As The
`Original ..................................................................................... 22
`
`CERTIFICATE OF COMPLIANCE ....................................................................... 29
`
`
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`Case 12-4547, Document 66, 03/04/2013, 863629, Page5 of 36
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`
`
`CASES
`
`A.V. ex rel Vanderhye v. iParadigms, LLC ,
`562 F.3d 630 (4th Cir. 2009) ............................................................ 10, 18, 23, 24
`
`Associated Press v. All Headline News Corp.,
`608 F. Supp. 2d 454 (S.D.N.Y. 2009) .................................................................. 3
`
`Associated Press v. Meltwater,
`No. 12-1087 (S.D.N.Y. filed Feb. 14, 2012) ...................................................... 10
`
`Associated Press v. Moreover Technologies, Inc.,
`No. 07 Civ. 8699 (S.D.N.Y. filed Oct. 9, 2007) ................................................... 3
`
`Authors Guild, Inc. v. HathiTrust,
`No. 11 CV 6531 (HB), 2012 WL 4808939 (S.D.N.Y. Oct. 10, 2012). ............ 1, 9
`
`Bill Graham Archives v. Dorling Kindersley, Ltd.,
`448 F.3d 605 (2d Cir. 2006) ................................................................... 16, 20, 21
`
`Blanch v. Koons,
`467 F.3d 244 (2d Cir. 2006) ................................................................... 13, 17, 20
`
`Campbell v. Acuff-Rose Music, Inc.,
`510 U.S. 569 (1994) .....................................................................................passim
`
`Infinity Broad. Corp. v. Kirkwood,
`150 F.3d 104 (2d Cir. 1998). .................................................................. 18, 19, 27
`
`Kelly v. Arriba Soft Corp.,
`336 F.3d 811 (9th Cir. 2003) .......................................................................passim
`
`Lennon v. Premise Media Corp.,
`556 F. Supp. 2d 310 (S.D.N.Y. 2008) ................................................................ 17
`
`Maxtone-Graham v. Burtchaell,
`803 F.2d 1253 (2d Cir. 1986) ............................................................................. 17
`
`Monge v. Maya Magazines, Inc.,
`688 F.3d 1164 (9th Cir. 2012) ........................................................................ 7, 21
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`Case 12-4547, Document 66, 03/04/2013, 863629, Page6 of 36
`
`
`
`New Era Publ’ns Int’l, ApS v. Carol Publ’g Group,
`904 F.2d 152 (2d Cir. 1990) ............................................................................... 17
`
`Nihon Keizai Shimbun v. Comline Business Data, Inc.,
`166 F.3d 65 (2d Cir. 1999) ................................................................................. 17
`
`Pacific and Southern Co. v. Duncan,
`744 F.2d 1490 (11th Cir. 1984) .......................................................................... 19
`
`Perfect 10, Inc. v. Amazon.com,
`508 F.3d 1146 (9th Cir. 2007) .......................................................... 10, 18, 24, 26
`
`Princeton University Press v. Michigan Document Serv.,
`99 F.3d 1381 (6th Cir. 1981) .............................................................................. 22
`
`Ringgold v. Black Entertainment Television, Inc.,
`126 F.3d 70 (2d Cir. 1997) ................................................................................. 17
`
`Rogers v. Koons,
`960 F.2d 301 (2d Cir. 1992) ............................................................................... 17
`
`Twin Peaks Prods. v. Publ. Int’l Ltd.,
`996 F.2d 1366 (2d Cir. 1993) ....................................................................... 17, 21
`
`U.S. v. ASCAP,
`599 F. Supp. 2d 415 (S.D.N.Y. 2009) .................................................... 10, 19, 27
`
`Video Pipeline, Inc. v. Buena Vista Home Entm’t,
`342 F.3d 191 (3d Cir. 2003) ......................................................................... 10, 19
`
`Wainwright Sec. Inc. v. Wall Street Transcript Corp.,
`558 F.2d 91 (2d Cir. 1977) ........................................................................... 17, 18
`
`
`
`OTHER AUTHORITIES
`89th Cong. 1st Sess, ser.8, pt.3 (1966) ....................................................................... 18
`
`Fed. R. App. P. 29(c)(5) ............................................................................................. 1
`
`Keiyana Fordham, Can Newspapers Be Saved? How Copyright Law Can
`Save Newspapers from the Challenges of New Media, 20 Fordham Intell.
`Prop. Media & Ent. L.J. 939 (2010) ..................................................................... 5
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`
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`Kimberly Isbell, The Rise of the News Aggregator: Legal Implications and
`Best Practices (Berkman Ctr. for Internet & Soc’y, Res. Publ’n Working
`Paper No. 2010) .................................................................................................... 5
`
`Pierre N. Leval, Commentaries: Toward a Fair Use Standard, 103 Harv. L.
`Rev. 1105 (1990) .................................................................................... 13, 14, 15
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`BRIEF OF AMICUS CURIAE
`THE ASSOCIATED PRESS
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`This brief is respectfully submitted by the Associated Press (“AP”) pursuant
`
`to Federal Rule of Appellate Procedure (“FRAP”) 29.1
`
`INTEREST OF AMICUS
`
`One of the district court’s several conclusions in this case was that “[t]he use
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`to which the works in the [HathiTrust Digital Library] are put” – namely, an index
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`containing only page numbers from relevant books – “is transformative because
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`the copies serve an entirely different purpose than the original works: the purpose
`
`is superior search capabilities rather than actual access to copyrighted material.”
`
`Authors Guild, Inc. v. HathiTrust, No. 11 CV 6531 (HB), 2012 WL 4808939, at
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`*11 (S.D.N.Y. Oct. 10, 2012). This brief is addressed solely to that holding and,
`
`more generally, the district court’s suggestion that superior search capabilities can
`
`constitute a transformative use under the fair use doctrine. As detailed below, it is
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`critical that this Court’s opinion be carefully confined to the narrow facts of this
`
`unusual case – namely a non-commercial use that provides no access to
`
`copyrighted material – since any broad-sweeping conclusion
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`that search
`
`
`1 Pursuant to FRAP 29(c)(5), AP states that no counsel for a party authored this
`brief in whole or in part, and no person or entity other than AP and its counsel
`made a monetary contribution to the preparation or submission of this brief. All
`parties in this matter have consented to the filing of this brief.
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`capabilities generally lead to transformative uses would have far reaching
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`implications for AP and the media industry as a whole.
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`AP is a not-for-profit news cooperative owned by its approximately 1,400
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`U.S. newspaper members. AP’s content – including articles, photographs, and
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`videos – is licensed to its member publishers, as well as to other licensees
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`including news agencies, research databases, government agencies, online news
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`aggregators, clipping services, search engines, and online publishers – many of
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`whom utilize “search capabilities.” AP has approximately 8,000 licensees who pay
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`fees to gain access to and legitimately use AP material in their products and
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`platforms. AP derives most of its revenues from membership and license fees,
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`which are critical to support its extensive newsgathering infrastructure worldwide.
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`As a publisher and licensor of content, AP has a broad interest in the
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`development of copyright law and the fair use doctrine – both in relation to its own
`
`use of third-party materials in news coverage and in protecting its own content.
`
`AP generates over a thousand articles each day, and in its news reporting it
`
`routinely relies on key copyright principles, including the fact/expression
`
`dichotomy and fair use, which serves an important function in allowing it to quote
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`from and comment upon everything from serious political books to pop lyrics. On
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`the other hand, copyright protection for AP’s content is critical to the company
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`when others seek to profit from AP’s enormous investments in newsgathering
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`through services that substitute for AP’s products. Accordingly, AP has been a
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`keen protector of its content when it believes it is being infringed in a systematic
`
`and ongoing manner.2
`
`AP has no particular interest in the outcome of this case on the merits.
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`Instead, AP submits this brief because it is concerned that an overly broad ruling –
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`one that does not take into account the peculiar fact pattern of this case discussed
`
`in more detail below – could constitute a fundamental shift in Second Circuit fair-
`
`use jurisprudence that would have a profound impact on the ability of content
`
`providers to protect their content and to continue earning licensing fees for their
`
`content from digital businesses. Although the district court’s opinion refers to
`
`“search capabilities” in its finding of transformative use, it is important to note that
`
`“search” is not a monolithic term. In today’s world, use of search technology is
`
`not the identifying feature of any one type of online business. Online services
`
`
`2 For example, AP successfully brought an action against All-Headline News,
`which offered a service that contained slightly re-written AP stories. Associated
`Press v. All Headline News Corp., 608 F. Supp. 2d 454 (S.D.N.Y. 2009). AP also
`sued Moreover Technologies, Inc., a media monitoring service which scraped AP
`content from member websites and sold aggregated excerpts of that content to its
`subscribers. Associated Press v. Moreover Technologies, Inc., No. 07 Civ. 8699
`(S.D.N.Y. filed Oct. 9, 2007). The action against Moreover was settled for a
`confidential amount. In 2012, AP brought suit against a commercial, subscription-
`based online clipping service, Meltwater News, for copyright infringement and
`hot-news misappropriation. The case, Docket No. 12-1087, is currently pending
`before the Hon. Denise L. Cote of the United States District Court for the Southern
`District of New York. AP is represented by the same counsel in both the
`Meltwater action and in its submission of this amicus brief.
`3
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`Case 12-4547, Document 66, 03/04/2013, 863629, Page11 of 36
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`employing search technology span a wide spectrum, including such varied
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`platforms as traditional free public search engines such as Google and Yahoo,
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`desktop services such as LexisNexis and Factiva, online aggregators of news
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`content such as the Huffington Post, and clipping services such as Burrelles Luce.
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`All of the companies mentioned – and thousands of other digital businesses –
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`license content from AP for use in their services.
`
`Fair use is a fact-specific inquiry, and the determination of whether any
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`particular service’s use qualifies as fair use should therefore be limited to the
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`particular facts of that use – and not turn broadly on whether search technology is
`
`involved. As the cases establish, the question of whether a particular defendant’s
`
`services qualify as transformative requires a nuanced, sophisticated analysis,
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`informed by a fact-specific examination that looks at whether the use is a one-time
`
`use or a systematic, exploitative use, the nature and amount of the expression
`
`copied, the presence or absence – and extent – of surrounding commentary and
`
`whether it requires the taking of the amount used, the purpose of the use, and
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`whether the use can act as a substitute for the original work, among other grounds.
`
`These are not issues subject to broad or glib pronouncements. Unfortunately,
`
`discourse on this topic has often generated too many unfounded sweeping
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`pronouncements – such as notions that if material is available for free on the
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`Internet, it is free for re-use (including for commercial purposes), or that any use
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`Case 12-4547, Document 66, 03/04/2013, 863629, Page12 of 36
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`should be fair if it is good for consumers, or that search engines are automatically
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`transformative uses.
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`But these sweeping generalities have little to do with what drives the fair use
`
`doctrine under the long-standing caselaw reviewed in this brief. And they fly in
`
`the face of the very purpose of copyright, to create an incentive to create. AP and
`
`its fellow news organizations invest time, money and lives to create the news they
`
`disseminate, and their role is critical in a democracy. The news media has been
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`highly concerned with the impact on their business of unlicensed news aggregators
`
`– whose services all rest on “search capabilities.”3 Unlicensed news aggregators
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`have a built-in advantage over the news media; news aggregation websites are able
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`to build their business models without incurring any of the necessary expenses
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`associated with being a news purveyor, including the costs to investigate, research,
`
`gather, write and edit news, and need only bear the minimal costs of distribution in
`
`the digital age.
`
`
`3 Keiyana Fordham, Can Newspapers Be Saved? How Copyright Law Can Save
`Newspapers from the Challenges of New Media, 20 Fordham Intell. Prop. Media &
`Ent. L.J. 939, 941-42, 983 (2010) (“studies indicate that online readers may use
`this feature [automatic news aggregation] as a news source instead of a reference
`tool, which . . . create[s] a news reporting purpose.”); see also Kimberly Isbell, The
`Rise of the News Aggregator: Legal Implications and Best Practices, at 11
`(Berkman Ctr. for Internet & Soc’y, Res. Publ’n Working Paper No. 2010) (noting
`that “feed” news aggregators “serve[] a similar function to a newspaper’s website –
`to collect and organize news stories so that they can be read by the public”)
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`An overly broad decision carries the risk of placing a permanent thumb on
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`the scale of the fair-use analysis – to the detriment of publishers and other content
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`creators – effectively creating a presumption that a broad array of uses of content
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`by digital services are transformative and fair. It would also deal a sharp blow to
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`content providers such as AP, which relies on licensing fees from digital
`
`businesses to support its news mission. AP therefore urges this Court to limit any
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`holding to the unique fact pattern before it in this case.
`
`SUMMARY OF ARGUMENT
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`The fair use doctrine, and in particular what qualifies as a transformative
`
`use, are centrally important in a broad array of cases affecting content creators and
`
`technology industries today. This is the first time the Second Circuit has addressed
`
`a claim that search technology can create a transformative use. Such an argument
`
`is based on the premise that a transformative use can be based on the use of the
`
`original works for a new functional purpose, rather than a new expressive purpose.
`
`The district court below found that the mass digitization of millions of books
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`qualified as fair use largely based on its conclusion that the subsequent use of those
`
`digital files to create a page-number index and copies accessible to the blind
`
`constituted transformative use. However, the facts of this case are very unusual
`
`because the principal end use examined by the court – namely, the search index –
`
`does not display the copyrighted works themselves and thus does not constitute an
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`Case 12-4547, Document 66, 03/04/2013, 863629, Page14 of 36
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`infringement in and of itself. 4 It is therefore critical that any holding be narrowly
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`focused so that it does not have unintended consequences in a wide variety of
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`circumstances that are not before this Court.
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`This amicus will address three points:
`
`First, it is crucial to tailor any holding to the facts at issue in this case:
`
`whether the reproduction of books for non-commercial purposes is a copyright
`
`violation where the resulting end product – here, a search index – does not display
`
`results that infringe those works at all.
`
`Second, the Court should reiterate that the core of the transformative use
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`doctrine is the protection of a new work that incorporates an earlier work in order
`
`to make a new expressive use. “Campbell makes clear that the ‘heart’ of a claim
`
`for transformative use is ‘the use of some elements of a prior author’s composition
`
`to create a new one that, at least in part, comments on that author’s works.’”
`
`Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1175 (9th Cir. 2012), quoting
`
`Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 580 (1994). To date, the
`
`Second Circuit has never held that a new functional, non-expressive purpose
`
`qualifies as a transformative use of another’s copyrighted content.
`
`
`4 This brief will not address the issues regarding the blind, which raise separate
`issues.
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`Third, to the extent the Court holds that a new functional purpose can
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`qualify as a transformative use, it should confine that holding to non-commercial
`
`uses that are not capable of serving the same intrinsic purpose as the original.
`
`ARGUMENT
`
`I.
`
`THE COURT SHOULD CAREFULLY CONFINE ITS ANALYSIS TO
`CASES WHERE THE END PRODUCT DISPLAYS NO
`COPYRIGHTABLE MATERIAL
`
`It is essential to note that this is an unusual case. Plaintiffs brought this case
`
`based on concerns about the mass digitization of millions of books, the long-term
`
`retention of those digital files, and the HathiTrust “orphan works” program.
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`Because the district court decided that issues relating to the orphan works program
`
`were not ripe, the court’s decision ended up being an adjudication of whether the
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`digital copying of the books to create a) a page number index and b) resources for
`
`the blind constituted fair use – none of which were the focus of the original
`
`complaint.
`
`Instead of focusing on the mass digitization and retention of millions of
`
`books for multiple purposes – including for preservation and other future unknown
`
`uses – as the relevant use, the district court improperly analyzed the case solely
`
`through the lens of whether the end products of a search index and a platform
`
`providing access for the blind constituted fair use. Critically, as the district court
`
`noted, “no actual text from the book is revealed” in search results – instead, “a
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`search for a particular term reveals the pages on which the term is found and the
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`number of times the term is found on each page.” Authors Guild, 2012 WL
`
`4808939, at *10. Standing alone, therefore, the search index results do not
`
`constitute a prima facie infringement at all. This fact is key to the district court’s
`
`finding that the relevant purpose in this case is “superior search capabilities, rather
`
`than actual access to copyrighted material.” Id. at *11.
`
`Thus, the only question in this case is whether the prior reproduction –
`
`namely, the mass digitization of paper books – which was antecedent to creating
`
`these index results – constitutes fair use. In other words, the only alleged violation
`
`in connection with the index results is Section 106(1) (reproduction of copyrighted
`
`work in copies) – initial, antecedent mass digitization. This case does not involve
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`the preparation and distribution of derivative works based on a copyrighted work
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`(§ 106(2)); distribution of copies of the copyrighted work to the public (§ 106(3));
`
`public performance (§ 106(4)); or public display of the copyrighted work
`
`(§ 106(5)).
`
`This presents a highly unusual fact pattern. In most of the leading and
`
`pending cases considering transformative use, the “output” or “end product” at
`
`issue provided actual access to copyrighted material. In other words, the output
`
`itself constituted prima facie copyright infringement by violating one of the
`
`exclusive rights of the copyright holder set forth in Sections 106(2), (3), (4) and
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`(5). See, e.g., Associated Press v. Meltwater, No. 12-1087 (S.D.N.Y. filed Feb. 14,
`
`2012) (alleging prima facie infringement by unauthorized copying, distribution,
`
`and display of copyrighted news articles), Video Pipeline, Inc. v. Buena Vista
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`Home Entm’t, 342 F.3d 191 (3d Cir. 2003) (prima facie infringement of movie
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`trailers in “clip previews”); U.S. v. ASCAP, 599 F. Supp. 2d 415 (S.D.N.Y. 2009)
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`(prima facie infringement of musical works in ringtone previews) (hereinafter
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`“ASCAP”). Similarly, in Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003)
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`and Perfect 10, Inc. v. Amazon.com, 508 F.3d 1146 (9th Cir. 2007), the two cases
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`involving search engine results, the Ninth Circuit’s analysis turned on whether the
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`thumbnail images displayed to end users – which constituted a prima facie
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`infringement – were a fair use, implicating the exclusive rights of public display
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`and/or distribution.5
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`In sum, AP urges that the Court focus on the mass digitization and retention
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`of copyrighted works – as the Authors Guild has argued in its appeal brief – and
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`not just the end use of a page-number index that does not constitute independent
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`infringement. Furthermore, if and to the extent that Court finds fair use, the Court
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`5 A.V. ex rel Vanderhye v. iParadigms, LLC (hereinafter “iParadigms”), 562 F.3d
`630 (4th Cir. 2009), is one of the few cases that focuses on the antecedent act of
`digital copying rather than a user-facing end product that constitutes a prima facie
`infringement. See infra at 23-24. The Fourth Circuit’s broadly-worded decision is
`a cautionary tale to this Court; despite the unique facts of that case, the decision is
`often cited (including by the district court below) to argue that any change in
`purpose is sufficient to find transformative use.
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`should be very clear that its holding is confined to the context where the
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`reproduction is not made accessible to any member of public and the end product
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`does not provide any access to copyrightable material at all. 6
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`II. A TRANSFORMATIVE USE MUST NOT SUPERCEDE THE
`OBJECTS OF THE ORIGINAL WORK
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`The district court correctly focused on the fact that this case does not involve
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`actual access to copyrighted material, and this Court should retain that focus. We
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`strongly urge this Court to conclude that this is not the case to assess the abstract
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`value of aggregators or to weigh the intrinsic value of search capabilities. This
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`case does not raise any of those issues. Nor is this the platform to wade into
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`generalities about these issues. Aggregators come in many stripes and search is an
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`integral feature associated with myriad end products, including products sold and
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`licensed by the AP. At bottom, aggregation and search engines do not lend
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`themselves to per se rules; rather, any use of actual expressive content – absent
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`here – is a fact specific analysis.
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`Moreover, as set forth below, the transformative use doctrine, at its core, is
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`designed to protect new expressive uses of content.
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` Here, HathiTrust’s
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`transformative use argument is essentially an argument that it serves a different
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`functional purpose, namely to allow users to find books addressing their topics of
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`6 Moreover, any such holding should emphasize the important fact that this is a
`case involving a non-profit educational institution, rather than a use with a
`commercial purpose.
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`interest. The Second Circuit has never before held that a new functional use can
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`constitute a transformative use, and correctly has expressed significant concerns
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`about such arguments. As a contested new use moves farther away from the core
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`of the transformative use doctrine, it is all the more important to focus on whether
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`the new use “supercede[s] the objects of the original creation.” Campbell, 501
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`U.S. at 579. In this unusual case, in which an educational, non-commercial
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`institution has created an index that does not display any actual text from the
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`allegedly infringed works, the index – viewed in isolation without reference to the
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`mass digitization that preceded it – likely does not supercede the objects of the
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`copyrighted books. But in many other contexts, users – including commercial
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`aggregators – whose “purpose is superior search capabilities” do create secondary
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`works containing substantial excerpts or depictions of the original that can supplant
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`demand for the copyrighted work and can seriously damage the underlying purpose
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`of the Copyright Act: to create the monetary incentives to stimulate progress of
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`science and the arts.
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`A. The Core of the Transformative Use Doctrine Focuses on New
`Expressive Uses of the Original Work
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`The most critical inquiry under the first factor of the fair use analysis, and
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`modern fair use
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`jurisprudence generally,
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`is whether
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`the new work
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`is
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`transformative. As the U.S. Supreme Court has instructed, “The central purpose of
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`this investigation is to see, in Justice Story’s words, whether the new work merely
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`‘supercede[s] the objects’ of the original creation, Folsom v. Marsh [citation
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`omitted], accord, Harper & Row, [citation omitted] (“supplanting the original”), or
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`instead adds something new, with a further purpose or different character, altering
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`the first with new expression, meaning or message; it asks, in other words, whether
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`and to what extent the new work is transformative.” Campbell, 510 U.S. at 579
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`(emphasis added). As this Court has clarified:
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`If “the secondary use adds value to the original – if
`[copyrightable expression in the original work] is used as raw
`material, transformed in the creation of new information, new
`aesthetics, new insights and understandings – this is the very
`type of activity that the fair use doctrine intends to protect for
`the enrichment of society.”
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`Blanch v. Koons, 467 F.3d 244, 251-52 (2d Cir. 2006) (emphasis added), quoting
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`Castle Rock Entm’t Grp. v. Carol Publ’g, 150 F.3d 132, 142 (2d Cir. 1998)
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`(brackets in original).
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`The transformative use doctrine, as adopted by the Supreme Court in
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`Campbell, has its origins in an article written by Judge Pierre N. Leval titled
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`“Commentaries: Toward a Fair Use Standard.” 103 Harv. L. Rev. 1105 (1990).
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`The article makes eminently plain that the core aim of the doctrine is to advance
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`expressive uses of a prior author or creator’s works. Leval begins by establishing
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`that the goal of copyright is “to stimulate activity and progress in the arts for the
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`intellectual enrichment of the public,” and that “[t]his utilitarian goal is achieved
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`by permitting authors to reap the rewards of their creative efforts.” Id. at 1107. He
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`then explains: “Notwithstanding the need for monopoly pr