In a blow to the Internet Archive’s (IA) Open Library project and potentially to the concept of controlled digital lending (CDL), Judge John Koeltl of the United States District Court in the Southern District of New York on March 24 granted a summary judgment in favor of Hachette Book Group, HarperCollins, John Wiley & Sons, and Penguin Random House in their lawsuit against IA. The lawsuit was filed on June 1, 2020, in response to the March 24 launch of IA’s “National Emergency Library,” which temporarily offered unlimited simultaneous access to IA’s collection of 1.4 million digitized books during the initial wave of the COVID-19 pandemic, when many K–12, public, and academic libraries had been suddenly closed.

“Teachers are trying to support their students, and they’re cut off from books in their classroom,” IA founder Brewster Kahle told LJ at the time, estimating that “90 percent” of ebooks from the collection were being checked out for less than 30 minutes—indicating they were being used for reference, fact checking, or browsing. Chris Freeland, director of IA’s Open Library project, added that “we keep running into this story day in and day out…. A school district has purchased ‘X’ number of copies of a book, but they can’t get access to them…and the school doesn’t have the budget to buy [duplicate] ebook licenses.”

Although the National Emergency Library program was shut down on June 16, 2020, the lawsuit has continued, with the publishers contending that IA’s Open Library program violates copyright protections for their works. The Open Library project was founded in 2006 with the goal of scanning donated and purchased books and harvesting metadata for every book ever published. The physical copies of the scanned books were then put into storage owned and maintained by IA. In 2011, the project began loaning digital copies of its scanned books on a one user, one physical copy, one digital rights management software protected ebook basis to anyone who provided an email address. This lending model is now known as CDL. While CDL operates in a hazy copyright law space, many libraries support the concept, and believe it is a solution for multiple problems—including making it possible to digitally circulate orphan works and older books that are “still under copyright but unlikely to ever be offered digitally by commercial services,” according to controlleddigitallending.org. Koeltl’s judgment could point to an uphill battle for the future of CDL.

“At bottom, IA’s fair use defense rests on the notion that lawfully acquiring a copyrighted print book entitles the recipient to make an unauthorized copy and distribute it in place of the print book, so long as it does not simultaneously lend the print book,” Koeltl wrote. “But no case or legal principle supports that notion. Every authority points the other direction.”

The judgment goes point-by-point through fair use exemptions, noting that the party in a lawsuit asserting fair use bears the burden of proof.

“The Publishers have established a prima facie case of copyright infringement,” the judgment states. “First, the Publishers hold exclusive publishing rights in the Works in Suit pursuant to 17 U.S.C. § 106, and the Works were timely registered with the Copyright Office…. Second, IA copied the entire Works in Suit without the Publishers’ permission…. Specifically, IA does not dispute that it violated the Publishers’ reproduction rights, by creating copies of the Works in Suit; the Publishers’ rights to prepare derivative works, by ‘recasting’ the Publishers’ print books into ebooks; the Publishers’ distribution rights, by distributing ebook copies of the Works in Suit to IA’s users; the Publishers’ public performance rights, through the ‘read aloud’ function on IA’s Website; and the Publishers’ display rights, by showing the Works in Suit to users through IA’s in-browser viewer.”

IA argued that its CDL program should be protected by fair use doctrine, but Koeltl’s judgment contends that “There is nothing transformative about IA’s copying and unauthorized lending of the Works in Suit,” and “An ebook recast from a print book is a paradigmatic example of a derivative work.”

Koeltl also cited the recent precedent of Authors Guild v. Google, Inc. In that case, Google was sued for scanning the full text of copyrighted books and enabling users of books.google.com to search the contents of the books online. While public domain titles can be read in their entirety with the free service, users can only view “snippets” of copyrighted books. After a legal battle that lasted almost a decade, Judge Denny Chin of the United States Court of Appeals for the Second Circuit issued a summary judgment in favor of Google, writing that the program met all legal requirements for fair use. Following an appeal by the Authors Guild, the Second Circuit unanimously affirmed the judgment in October 2015.

In this case, Koeltl wrote that the Google Books ruling had cautioned that “‘[i]f Plaintiffs’ claim were based on Google’s converting their books into a digitized form and making that digitized version accessible to the public,’ precisely what the Publishers allege in this case, the ‘claim [for copyright infringement] would be strong.’ If [Authors Guild, Inc. v.] HathiTrust and Google Books demarcated the boundaries of fair use, this case shows what conduct remains squarely beyond fair use.”

First-sale doctrine—the U.S. legal doctrine that enables libraries to loan out print books and other physical materials without obtaining permission from publishers—does not apply to ebooks and other digital content, since circulating a digital file such as an ebook necessitates that the lender make a copy of the entire work.

In his oral arguments, IA’s lawyer, Joseph Gratz, had cited Sony Corp. of America v. Universal City Studios, Inc., a case in which Sony had been sued for manufacturing its Betamax home videotape recorders, which enabled users to record entire, copyrighted movies and shows from television broadcasts for home use. In 1984, the U.S. Supreme Court ruled that home recording devices were “capable of substantial noninfringing uses. Private, noncommercial time-shifting in the home satisfies this standard of noninfringing uses both because respondents have no right to prevent other copyright holders from authorizing such time-shifting for their programs and because the District Court’s findings reveal that even the unauthorized home time-shifting of respondents’ programs is legitimate fair use.”

Koeltl dismissed the comparison, writing that “Sony is plainly inapposite. IA is not comparable to the parties in Sony—either to Sony, the alleged contributory copyright infringer, or to the home viewers who used the Betamax machine for the noncommercial, nonprofit activity of watching television programs at home. Unlike Sony, which only sold the machines, IA scans a massive number of copies of books and makes them available to patrons rather than purchasing ebook licenses from the Publishers. IA is also unlike the home viewers in Sony, who engaged in the ‘noncommercial, nonprofit activity’ of viewing at a more convenient time television programs that they had the right to view for free at the time they were originally broadcast…. The home viewers were not accused of making their television programs available to the general public. Although IA has the right to lend print books it lawfully acquired, it does not have the right to scan those books and lend the digital copies en masse.”

In a statement issued after the ruling, Kahle said the organization would appeal, arguing that “libraries are more than the customer service departments for corporate database products. For democracy to thrive at global scale, libraries must be able to sustain their historic role in society—owning, preserving, and lending books. This ruling is a blow for libraries, readers, and authors and we plan to appeal it.”

Maria A. Pallante, president and CEO of the Association of American Publishers issued a statement as well, saying, in part, that “In rejecting arguments that would have pushed fair use to illogical markers, the Court has underscored the importance of authors, publishers, and creative markets in a global society. In celebrating the opinion, we also thank the thousands of public libraries across the country that serve their communities every day through lawful ebook licenses.”

For more news, opinion, and official statements on this topic, see the roundup posted by Gary Price on LJ infoDOCKET.