Losing the Right to Fight? Associations Can’t Pursue Copyright Claims on Behalf of Their Members

Meredith L. Ainbinder

By Meredith Ainbinder. A member of our Litigation Practice Group

January 2013 IP Update

One of the biggest innovations to hit the publishing world has been Google’s ability to digitize and provide search access to millions of books.  A corresponding phenomenon has hit the legal world: copyright disputes concerning Google’s activities in this realm.

The Authors Guild Inc. v. HathiTrust is one of the latest of these lawsuits.  The Authors Guild is a U.S. trade association for published authors.  HathiTrust is a partnership of nearly 70 universities and affiliated entities that is creating a digital repository that now includes more than five million digital books.

HathiTrust and its members have contracted with Google to digitize their library collections in order to facilitate searching, to preserve works, and to provide access to individuals who are print-disabled.

Certain HathiTrust members have also announced a special project for “orphan works,” those for which the copyright owner cannot be reached or identified.  These members are compiling a list of such works with the intention of permitting online access to them, but limiting the number of simultaneous users to the number of print copies in the members’ libraries.

The plaintiffs objected to all of this digitization, claiming that it violated various provisions of the copyright law and must be terminated.  Judge Harold Baer, Jr., of the federal district court in Manhattan, recently ruled in favor of most elements of HathiTrust’s digitization project, ruling that they represented fair use.

His finding of fair use extended to digitization for the purpose of preserving books; for rendering books accessible to those with impaired sight; and for adding text searching that, with respect to works under copyright, returns only the pages where the search term occurs. He left for a later day consideration of the orphan works project, which he deemed too early in its development to judge.

At the same time, Judge Baer cast doubt on the right of associations like The Authors Guild to attempt to vindicate the copyrights of authors.

He held that the Authors Guild and other associations that brought the lawsuit on behalf of their members lack standing to pursue the case.  In doing so, the court considered two requirements: standing under the U.S. Constitution, and standing under the Copyright Act.

Standing to sue refers to a party’s ability to demonstrate sufficient connection to, or harm from, the action being challenged to support that party’s participation in the litigation.  In considering standing under the “case or controversy” clause of the U.S. Constitution, the district judge relied on Supreme Court precedent concerning associations.

In Washington State Apple Advertising Commission v. Hunt (1977), the Supreme Court named three factors supporting an association’s standing to sue: “(a) its members would otherwise have standing to sue in their own right; (b) the interests it seeks to protect are germane to the organization’s purpose; and (c) neither the claim asserted nor the relief requested requires the participation of individual members in the lawsuit.”

In HathiTrust, Judge Baer determined that the U.S. associations satisfied this constitutional test of standing.  But the court ruled otherwise on standing under the Copyright Act.  According to 17 USC § 501(b), “The legal or beneficial owner of an exclusive right under a copyright is entitled …to institute an action for any infringement ….”

In deciding that The Authors Guild lacked standing under this statute, the court reasoned that, while the statute does not use a word like “only” to limit who can bring a copyright action, the specific listing of who is permitted to bring an action under the Copyright Act should be read as excluding others from doing so.

The court also noted that the purpose of copyright law — to encourage creativity by granting a limited monopoly — supports a finding that the Copyright Act restricts standing to the “legal or beneficial owner” mentioned in the statute.

The outcome represents a big win for the universities and the fair use defense, and a major blow to The Authors Guild and other U.S.-based associations of copyright owners.

In an appeal to the Second Circuit, the Guild seeks to revisit the standing issue and other substantive copyright matters.  If the Guild is unable to pursue this type of litigation, it could lose considerable clout as an organization.

Meanwhile, its members, whose individual resources are generally more limited, may find it prohibitive to pursue their rights in court.  The Second Circuit will have an opportunity to interpret the Copyright Act and determine who fights these battles.