SCOOP: Update on the Lawsuit Against Internet Archive 

Late last month, the trial court in the copyright infringement lawsuit filed by several publishers against the Internet Archive entered a judgment granting the publishers’ motion for summary judgment, which essentially concludes, for now, the case at the trial court level. The Internet Archive (IA) has indicated that it intends to appeal the trial court’s decision, but in the interim, libraries that have implemented controlled digital lending (CDL) are wondering what they should do. 

History of the Case 

For several years prior to the filing of this lawsuit, IA had engaged in the practice of CDL through its Open Library program, digitally lending scanned books to readers for a limited period of time. When the pandemic hit in March 2020, IA relaxed its lending parameters under its “National Emergency Library” program. In June 2020, several publishers who hold copyright to thousands of titles that had been lent under both the Open Library and the National Emergency Library program filed suit against IA. The publishers contended that CDL as practiced by IA constituted copyright infringement. IA, and groups filing amicus briefs on its behalf, contended that the fair use (17 U.S.C. § 107) and first sale (17 U.S.C. § 109) provisions of the U.S. Copyright Act permitted IA’s CDL activities.  

Both sides filed motions for summary judgment on these respective grounds, compelling the trial court to either deny the motions and send the case to trial or decide the case on the basis of the facts as presented under the law as currently written and interpreted. The trial court, only a few days after hearing oral arguments on the competing motions for summary judgment, issued a strongly worded judgment granting the publishers’ motion for summary judgment and denying IA’s motion. 

What Did the Summary Judgment Ruling Say? 

After determining that the publishers met their burden of establishing facts to support their claim of copyright infringement, the trial court undertook examination of IA’s fair use claim by analyzing each of the four factors.  

Factor One – Purpose and Character of the Use 

The trial court spent a large portion of its opinion examining the first factor of fair use. It first focused on the extent to which the use was transformative and found that there was nothing transformative about IA’s digital copying and lending of the copyrighted works. Shifting the format from print to digital is not transformative in the absence of some compelling expansion of utility, as was demonstrated in the Google Books and Hathi Trust cases, or improvement of efficiency in delivery of the content in a way that did not impact the publishers’ rights.  

The trial court also spent time explaining why it did not agree that IA is a non-commercial enterprise or that IA’s activities furthered the goal of the first sale doctrine. The trial court found that IA stood to realize monetary benefits through the lending of the books it digitized, negating a finding of non-commercial activity. The trial court further determined that the first sale doctrine did not serve to justify CDL under either the plain letter of that provision or fair use because the works were non-transformatively reproduced rather than lent in their original print form, and there was no guarantee that the print books had actually been removed from circulation by the partner libraries who retained those copies. The trial court did not find support in the law for the one-to-one, owned-to-loaned fair use rationale put forward to support CDL. 

Factor Two – Nature of the Copyrighted Works 

The trial court dispensed with the second factor swiftly, acknowledging that both fiction and nonfiction published works were utilized by IA and that as such “this dispute involves original works that are close to the core of copyright protection…[and] counsels against a finding of fair use.” 

Factor Three – Amount of the Works Used 

Similarly, the trial court expeditiously examined the third factor, finding that whole works were used for no transformative purpose and in competition with available licensed works and thus usage of the whole work did not have support in fair use for this purpose. 

Factor Four – Effect of the Use Upon the Market for the Copyrighted Work 

As with factor one, the trial court spent considerable time examining factor four. The trial court stated, “IA offers complete e-book editions of the works…without IA’s having paid the publishers a fee to license these e-books and offers…a way to help libraries avoid paying for licenses.” The trial court was not persuaded by evidence offered by IA that print sales did not decline and that Amazon rankings increased while the digitized versions were circulated. The trial court also did not find merit in IA’s assertion that the purchase of the print copies adequately compensated the publishers, holding that the publishers were entitled to revenue from all formats of the works. The fact that IA’s lending program enabled those without ready access to libraries to check out and read books was also not persuasive to the trial court. 

In summary, the trial court found in favor of the publishers on all four factors of fair use. It did state that the IA was entitled to continue scanning and circulating public domain works or works that were scanned for purposes previously deemed fair use in the Google Books and Hathi Trust cases. However, “fair use does not allow…mass reproduction and distribution of complete copyrighted works in a way that does not transform those work and that creates directly competing substitutes for the originals.” 

For those that are interested, the full forty-seven page judgment is available online.  

What Should Libraries Do Now? 

Library policy expert and copyright lawyer Jonathan Band said in a post-judgment interview: “Libraries can continue to provide digitized copies of materials to scholars and other patrons in a manner consistent with the document supply provisions of 17 U.S.C. 108(d) and (e). Libraries also will be able to continue their existing programs for providing access to digitized copies of orphan works and other out-of-commerce titles. The ruling only concerns the lending of titles that are available through commercial e-book licensing platforms such as OverDrive.” While awaiting the outcome of IA’s appeal and the outcome of any other lawsuits that publishers may now feel empowered to file in other jurisdictions in an effort to secure further dismantling of the legal framework constructed to support CDL as a practice, libraries should exercise caution and restrict their utilization of CDL. As always, libraries could confer with counsel, sharing the trial court’s judgment in this case, before starting new or continuing existing CDL operations. While the immediate judgment is only binding on the parties to this action, it is instructive to how libraries should conduct themselves while further proceedings are pending.  

Additional Reading 

Here are several write-ups about the March 24th decision: 

• From Inside Higher Ed, includes an interview with Chicago Theological Seminary’s Yasmine Abou-El-Kheir  
• An article from The Scholarly Kitchen 
• An article from Ars Technica
• An article from Publishers Weekly

The SCOOP, Scholarly COmmunication and Open Publishing, is a monthly column published to inform Atla members of recent developments, new resources, or interesting stories from the realm of scholarly communication and open access publishing.