A big ruling for copyright fair use. This one, in an academic setting, springs from events that took place at Georgia State University (GSU).
In a move not uncommon at universities, GSU permitted students to share digital copies of academic texts the school “housed” in its electronic library system.
Based on this, several publishers, including heavy hitters Cambridge University Press and Oxford University Press Inc. sued the school for copyright infringement. The suit alleged that the school and it’s top brass (or top mortar boards as the case may be) had a policy of “digitally distributing course reading materials” in violation of the Copyright Act.
The complaint asserted that “Georgia State provides its students (and until recently, the general public) the ability to view, download, and print without authorization a number and range of copyrighted works that vastly exceeds the amount and type of copying that might credibly be justified as fair use.”
As a reminder, 17 U.S.C. § 107 provides that the “fair use” of a copyrighted work “is not an infringement of copyright,” but making the determination as to whether “fair use” applies is a case-by-case analysis.
Generally speaking, in determining whether the fair use defense applies, courts consider “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107.
The complaint against GSU alleged hundreds of instances of infringement. By the time of trial that was whittled down to 74.
(How does this happen? What happened to the remainder of the claims? How do hundreds of claims simply disappear? Uhh, duty to investigate prior to pleading? The Rule 11 certification represents that counsel has done a prefiling examination of the facts that is reasonable under the circumstances. Zaldivar v. City of Los Angeles, 780 F.2d 823, 831 (9th Cir. 1986). “Reasonable inquiry” requires attorneys to seek credible information rather than proceed on mere suspicions. California Architectural Building Products, Inc. v. Franciscan Ceramics, Inc., 818 F.2d 1466, 1472 (9th Cir. 1987). The test is “whether a reasonable inquiry would have revealed there was no basis in law or fact for the asserted claim.” (internal quotes omitted). Ali v. Mid-Atlantic Settlement Services, Inc., 233 F.R.D. 32, 39 (D. D.C. 2006).)
In any event, U.S. District Judge Orinda D. Evans ruled that 69 of the 74 remaining claims of infringement were protected by the fair use doctrine, a decision that may signal an isoquantic shift in the treatment of claims founded on digital sharing.
In a nutshell, Judge Evans said that GSU’s sharing qualified for protection under the fair use doctrine’s limited allowance of protected works for academic purposes. He ruled that, as to the those works, GSU had made just a small percentage of them available online and had done so without any intention of financial profit. Further, the court found that, by adopting an electronic sharing policy in 2009, GSU “tried to comply with the Copyright Act” and conceded that “The truth is that fair use principles are notoriously difficult to apply.”
As to the remaining five claims of infringement, the court held that GSU was not entitled to the fair use defense given that it had provided free electronic access to chapters of textbooks for which the publishers had actually established a licensing program to sell access them on a chapter-by-chapter basis. In other words, the school took a substantial amount of the work (the entire chapter of the chapter that was offered for sale), and that taking substantially effected the potential market for or value of the copyrighted work. See 17 U.S.C. § 107.
So what gets me is why GSU didn’t argue that it was immune from a claim for copyright infringement. The United States District Court for the Southern District of California ruled in February 2008 that the Copyright Remedy Clarification Act (“CRCA”) “is not a valid exercise of Congress’s power under Section 5 of the Fourteenth Amendment”, thereby holding that a State, employee of a State (acting within his or her official capacity) or instrumentality of a State cannot be held liable for copyright infringement. See Marketing Information Masters, Inc. v. The Board of Trustees of the California State University System, et. al. 552 F. Supp. 2d 1088 (S.D. Cal. 2008).
Congress passed the CRCA, which expressly provided that “[a]ny State, instrumentality of a state… or employee of a State or instrumentality of a State… shall not be immune, under the Eleventh Amendment” to a suit for copyright infringement. 17 U.S.C. Section 511(a). However, the court in Marketing Information Masters held that the CRCA “was not passed pursuant to a valid exercise of [Congress's] Fourteenth Amendment enforcement powers,” and that “the CRCA does not constitute a valid abrogation of state sovereign immunity.”
In reaching this ruling, the Court noted that the “Eleventh Amendment provides a state immunity from suit unless the state consents to be sued or Congress validly overrides the state’s immunity.” (Citing Green v. Mansour, 474 U.S. 64, 68 (1985)).
To determine if Congress validly overrode a state’s immunity, the Court said that it “looks to two factors: (1) whether Congress expressed a clear intent to override the state’s immunity and (2) whether Congress acted pursuant to a congressional grant of authority.” (Citing Seminole Tribe of Florida v. Florida, 517 U.S. 44, 55 (1996)).
Moreover, to determine whether an act constitutes a valid exercise of Congress’s power under Section 5 of the Fourteenth Amendment, the Court said that it must find that Congress identified “‘conduct transgressing the Fourteenth Amendment’s substantive provision, and… tailor[ed] its legislative scheme to remedying or preventing such conduct.’” (Citing City of Boerne v. Flores, 521 U.S. 507 (1997), and quoting Florida Prepaid v. College Savings Bank, 527 U.S. 627 (1999)).
While neither the Supreme Court, nor the Ninth Circuit has addressed the issue of whether the CRCA is a valid abrogation of state sovereign immunity, the Supreme Court struck down as unconstitutional two similar “remedy clarification” acts involving intellectual property rights. See Seminole Tribe, supra (invalidating the Patent and Plant Remedy Clarification Act) and College Savings Bank v. Florida Prepaid Postsecondary Education Expense Fund, 527 U.S. 666 (1999) (invalidating the Trademark Clarification Act).
The bottom line is that, just as the Marketing Court held that the CRCA did not survive constitutional scrutiny under the enforcement clause of the Fourteenth Amendment, so too might the court in Cambridge University Press et al. v. Mark P. Becker et al. (case number 1:08-cv-01425) have reached this decision had the defendants asked the U.S. District Court for the Northern District of Georgia to similarly find that a state university is entitled to immunity in copyright infringement claims brought against a State or State-actor when the latter is acting in his or her official capacity.
Jonathan Pink heads the Internet and New Media Team at Bryan Cave, LLP. His practice focuses on intellectual property litigation including copyright, trademark and right of publicity issues. He is resident in Los Angeles and Irvine and can be reached at firstname.lastname@example.org