Discussing the decision of the US Court of Appeals for the Second Circuit in Hachette Book Group v. Internet Archive, our fellowship applicant Tanishka Goswami explains the implication of the decision on fair use. Tanishka is an advocate at the High Court of MP. She graduated from National Law University, Delhi in 2023 & enjoys reading and writing on copyright laws.
Hachette Book Group v Internet Archive: Archiving Access to Information or Strengthening Copyright Laws?
By Tanishka Goswami
Providing advantages of accessibility, affordability, and shareability among others, the swiftly expanding market for e-books stands at $17.20 billion today, only to grow manifold. E-books are available to readers through platforms such as Amazon Kindle and Kobo Books, and digital libraries such as Project Gutenberg and Internet Archive. While the former enable readers to purchase e-books on the payment of a certain cost, digital libraries provide access to an online database of books, journals, images and recordings free of cost.
In this backdrop, controlled digital lending (‘CDL’) mechanisms become relevant. They are digital equivalents of traditional libraries, through which readers can access books/audio-video material in a digital format under controlled conditions. CDL mechanisms of digital and shadow libraries are often under scanner for disturbing the balance between public benefit and the rights of copyright holders. Given this, when the Internet Archive, a non-profit digital library based in the US changed its digital lending policy in 2020, trouble ensued. Other than a brief period in 2020, the Archive maintained a one-to-one ratio of books owned by it in physical copies and made available digitally for users through its free digital library. However, through the “National Emergency Library” (‘NEL’), books owned by partner libraries in the physical format began to be included in the number of digital copies made available. Several users could borrow a scanned book at once.
Soon after, four major publishers – Hachette, Penguin Random House, Wiley, and HarperCollins, challenged this lending programme and sued the Archive for copyright infringement. Upholding the ruling given by the District Court, the US Court of Appeals for the Second Circuit gave a verdict in the publishers’ favour. The NEL was held to be a derivative work, and the Archive’s lending practices violative of copyright law. Through this post, I shall: firstly, examine the Appellate Court’s “fair use” analysis w.r.t. NEL; secondly, analyses its impact on CDL practices; and thirdly, maps the legal position in Indian copyright jurisprudence.
What the Second Circuit’s “Fair Use” Analysis tells us?
The Appellate Court had to determine whether/not the Archive’s scanning and distribution of scanned digital copies of copyrighted material, for free and without the publishers’/authors’ consent, amounted to fair use. To this end, it dealt with the four non-exclusive factors codified in 17 U.S. Code § 107 as follows:
- The purpose and character of the use
Taking a cue from Campbell v Acuff-Rose Music Inc., the Court assessed that the Archive’s distribution of digital copies of the concerned books was not transformative. Firstly, the FDL did not entail any criticism, commentary or information about the original books. Secondly, the digital copies “supplanted” the original texts (Warhol II called this the “problem of substitution”), leaving little reason for users to buy the books. Thirdly, the efficiencies possible only in digital copies were not starkly different from the publishers’ own E-books. Hence, even though the Archive’s use of the books was not “commercial”, the absence of transformativeness favoured the publishers.
- The nature of the copyrighted works
Since the works in question involved non-fiction books, the Archive argued for a greater scope of fair use. However, the Court noted that such books are also representative of the authors’ original and individualised expressions.
- The amount and substantiality of the use
Unlike the Google Books and Hathi Trust cases wherein copying the entirety of the books was essential to advance transformative purposes such as the search function and snippet view, no such transformative objects were serviced by the Archive’s making of unauthorised digital copies.
- Effect on the potential market for or value of the works
By providing the books without appropriate licensing from the Publishers, and free of cost to readers or libraries, the Archive “usurped” the market for the original works. The benefit to the public from such access was termed shortsighted, and detrimental to authors’ and creators’ motivation to produce new works.
Questions Arise for Access to Information & Learning
In this segment, we analyse the judgment from three perspectives: one, its impact on CDL and access to information; two, its contribution to the fair dealing jurisprudence in the US; and three, possible judicial response to a similar case in India.
- CDL and Access to Information
CDL principles mandate digital libraries to lend no more books/copies than they legally own, thereby maintaining an “owned to loaned” ratio. Since the Archive’s contentious lending programme violated this core principle, it may be argued that the judgment does not impact legal CDL practices per se and instead targets overstepping of such framework. However, the removal of over 500,000 books from the Open Library significantly reduces users’ access to digital literature and information. The removed books included rare and older editions of certain books, which have not been similarly preserved by E-Book platforms. The direction further extends a chilling effect on digital libraries engaged in/considering CDL practices.
- Fair Dealing Jurisprudence in the US
- Weighing Commercial Use vis-a-vis Transformativeness
The Archive’s “transformative use” defence, centred around how its Library made lending “more convenient and efficient”, was emphatically rejected by the Court. Here, analysing the relevance of Fox News v TVEyes is critical. In Fox News, the SCOTUS rejected a similar argument regarding TVEyes’ media monitoring service despite: one, the compilation of TV and radio recordings on the service being made available on a text-searchable database; and two, users being provided with the facility to view ten-minute-long clips of such content. While the Court found this to be “modestly transformative”, it found the “commercial nature” of TVEyes’ operation to weigh against it in the first-factor analysis. Ultimately, the Court restored the examination of potential market harm as the most significant in fair use discussions.
This weighted analysis in Fox News clarifies how a service that enabled viewers to access and download captured footage of video clips through keywords, time or date was also considered “modestly transformative” at best. In this context, the Archive’s lending of unlicensed content in violation of CDL norms surely falls short of being transformative. . However, in contrast to TVEyes, the use herein was unequivocally non-commercial. Hence, the question one may ask is, had the Archive introduced some “modestly transformative” features in its Library (while violating CDL principles), how would its non-commercial nature be weighed against the potential market harm caused to Publishers?
- How the First Sale Doctrine comes into play
Codified in 17 U.S. Code § 109, the first sale doctrine entitles the owner of a particular copy of a copyrighted work with the right to sell/dispose of the possession of such copy without the copyright owner’s consent. The Court did not comprehensively engage with this argument, despite the Archive’s submissions on the point in its opening brief. Irrespective, the Archive’s creation of digital copies of literary works of which it held neither ownership nor license to sell would not be safeguarded under the first sale doctrine.
However, similar to ordinary libraries, it is imperative to acknowledge CDL practices that flow from lawfully acquired works which are owned (not licensed) as permissible under the rights of first sale. On this point, the author differs from the following opinion expressed by Dr. Arul Scaria in The Hindu (Sept. 10):
“…if we extrapolate from the court’s logic in this decision, we could argue that even lending by physical libraries falls afoul of the law because book publishers could argue that physical libraries are eating into the sale of their books.”
Lending by physical libraries is safeguarded under the first-sale doctrine. Further, the Second Circuit recognised 17 U.S. Code § 108 (Reproduction by Libraries and Archives) and § 109 as acts balancing the rights of individual authors and public benefits of access to literature, music and arts.
- Digital Libraries in India and Copyright Laws
Recognising the need for improving accessibility to knowledge, digital libraries such as the National Digital Library of India, eGyanKosh, and the Parliament Digital Library have been popularised among students and researchers. Through its Copyright Guide, the NDLI cautioned digital libraries against reproduction of any works that may fall foul of “fair dealing” under section 52(1)(a) of the Copyright Act, 1957, thereby rendering them liable for “authorising infringement”.
Protection against copyright infringement under section 52(1)(n) of the Act is limited to electronic “storage” of works, the non-digital copies of which are possessed by “non-commercial public libraries”. To advance digital learning and extend public benefits of novel education and research, it is critical for CDL initiatives to be acknowledged as legal (explicitly or as “fair dealing”), and further expanded in India.
As recognized by the author here, uncertainties following the Delhi HC (DB)’s interpretation of section 52(1)(a) in the DU Photocopy case do not preclude its positive impact on access to knowledge in India. Ultimately, any challenges to CDL in India would involve: one, a case-by-case analysis based on peculiarities such as the owned-to-loaned ratio and extent of copying by the library; and two, an extension of the fair dealing standard under section 52(1)(a) to sections 52(1)(n) or other clauses. The ongoing litigation against shadow library websites SciHub and LibGen will further contextualise the debate on the right to access information vis-a-vis digital lending.
However, building on a previous post by Swaraj, it is imperative to view copyright as an “access” right in policy making. All-pervasive bans on digital libraries like the NEL exacerbate the barriers for students, academicians and other readers in accessing knowledge and research material. In the absence of any mandate on publishers to accessibly price scholarly works, public policy ought to be wary of rent-seeking business models in education.
Conclusion
Rebecca Tushnet’s expectations that Courts acknowledge various kinds of copying as vital to enable access to knowledge, and thereby facilitate free speech, have not quite been addressed in fair use jurisprudence. The Internet Archive appeal demonstrates the need to acknowledge the legality of CDL practices at par with offline libraries. However, for digital archives that seek to provide access to copyrighted material, what would be the standard for “modest transformativeness”? It is a testament to the Archive’s impact on knowledge-sharing that this article has also benefitted from resources made accessible on its database.
Positioning the public benefits of CDL against market harm (Google LLC v Oracle America) would be a slippery slope for courts and legislators. The Second Circuit’s finding that “short-term” benefits of the NEL are outweighed by a potential “dearth of creative activity” as a consequence merits critical assessment.