On June 10, 2014, the Second Circuit issued its decision in Authors Guild v. HathiTrust, a copyright case involving mass digitization of university library collections. The case centered on whether three actions would be considered fair uses: (1) scanning copyrighted works to create a full-text searchable database of copyrighted works in order to create card catalog-like search results; (2) providing the full text of copyrighted works in formats accessible to the print-disabled; and (3) maintaining full copies of copyrighted works for preservation purposes. The court held that creating such a full-text searchable database and providing access to the print-disabled were fair uses; however, it found that the record was insufficient to rule on the preservation use, vacating the lower court’s judgment on that issue and remanding for further proceedings. 

The Second Circuit carefully tied its decision to the facts before it, noting that end users would be provided only with a list of pages where a term appears, and would not be able to view any portion of the works themselves, that the digital copies in question were adequately secured; and that there were no more copies of the database than necessary for its operation. Based on this record, it held that the “balance of relevant factors” favored the defendants; however, the court specifically noted that its decision would not “foreclos[e] a future claim based on circumstances not now predictable, and based on a different record.” 

The court also made key clarifications to the law regarding transformative use. First, it criticized the district court’s reliance on the perceived public benefit and added utility of the HathiTrust project in its transformative-use inquiry: “Contrary to what the district court implied, a use does not become transformative by making an ‘invaluable contribution to the progress of science and cultivation of the arts.’” The court went on to explain that “[a]dded value or utility is not the test: a transformative work is one that serves a new and different function from the original work and is not a substitute for it.” Second, although it agreed with the district court that providing access to the print-disabled was a fair use, it rejected the district court’s reasoning that this use was transformative. Instead, the court drew on legislative history and Supreme Court precedent—as well as the other Section 107 factors—to conclude that the use was fair despite its lack of transformation. 

The court found that the Authors Guild did not have standing to assert copyright claims on behalf of its members, and as a result, it vacated the lower court’s decision with respect to HathiTrust’s mass digitization for preservation purposes. The case was remanded for the district court to consider whether the remaining plaintiffs have standing to challenge HathiTrust’s preservation use. Finally, the Second Circuit found that the Authors Guild’s claims regarding HathiTrust’s orphan works project was not ripe, since HathiTrust had suspended the program shortly after the complaint was filed. 

The HathiTrust case has been watched closely as a precursor to the Google Books case (Authors Guild v. Google), which is currently before the Second Circuit. Given this context, it is noteworthy that the court took pains to keep its findings tied to the fact pattern before it and walked back much of the district court’s sweeping language with respect to transformative use. The court held that in general, enabling new and larger audiences to access copyrighted works was not transformative. The court also placed the question of substitution front and center in its fair-use analysis. As it stated: “[t]he [fair use] doctrine is generally subject to an important proviso: A fair use must not excessively damage the market for the original by providing the public with a substitute for that original work.” These features of the HathiTrust decision may well figure prominently in the upcoming Google Books oral argument and eventual decision. 

Davis Wright Tremaine filed an amicus brief in the HathiTrust case on behalf of The Associated Press, and it filed an amicus brief in Authors Guild v. Google on behalf of The Copyright Alliance.