By Mary Rasenberger
In a new twist in the Google Books case, it appears that the publishers and authors may be going separate ways. The parties had a conference with Judge Denny Chin this past Thursday September 15th. Judge Chin had admonished the parties in the last conference on July 20th to hasten their settlement discussion and to come prepared on September 15th with a new settlement agreement, and if no settlement could be reached, a discovery and briefing schedule on the merits. From the start of the conference, it was clear that the parties had not come prepared to discuss a new settlement.
Michael Boni, the attorney for the Authors Guild, commenced the conference by proposing a scheduling order that provides for discovery and briefing on Summary Judgment to be completed by the end of July 2012. Judge Chin followed up with the obvious question - whether this meant they had given up on settlement. The parties indicated that settlement discussions will continue as they proceed on the merits. Bruce Keller for the publishers and Daralyn Durie for Google stated that they were close to settlement. Keller explained that the publishers believed they had made sufficient movement forward that they did not think they would need to rely on the schedule. Durie agreed that it "appears to be probable" that they will reach a settlement. The Authors Guild did not appear as optimistic about settling, although Boni conceded that the authors would like to "continue a dialogue."
Boni and Keller also indicated that they may want to separate their cases (by filing amendments to the joint third Amended Complaint); further suggesting that the publishers may settle without the authors and the Authors Guild might proceed alone with the suit on the merits. When asked if Google was agreeable to the proposed schedule, Durie stated that Google would like to see the proposed amendments to the complaint before it agrees to the schedule.
Judge Chin agreed to the scheduling order proposed by the Authors Guild. Noting that the case would then continue for almost another year, he called the schedule "generous," but agreed with Keller that the parties may need extra room in the schedule to continue settlement discussions. The schedule will have discovery completed by the end of May and all briefs on summary judgment motions submitted by the end of July 2012. Judge Chin noted that he would pick a day for a hearing, but that they will have to find another courtroom, as he will finally lose his in the Southern District (having been promoted to the Second Circuit over a year ago).
Judge Chin seemed anxious to see a settlement in the case and asked if there was anything the court could do to help the parties reach a settlement, offering first to obtain a mediator, which was rejected by Google as unhelpful, since the discussions had thus far been among principals. He then discussed finding a new magistrate judge to assist with settlement if needed, and identified Judge James Cott, the magistrate assigned to the parallel photographers' case against Google. (Judge Chin reported that Judge Eaton, the magistrate judge originally assigned to the case, has since retired - the case was originally filed in 2005 after all.) The Authors Guild is amenable to such assistance, according to Boni, who did not think the discussions necessarily had to continue between principals of the parties, rather than the attorneys.
More GBS Litigation: Authors Guild et al. v. HathiTrust et al.
Another indication of a possible rift between the publishers and authors regarding Google Books is the complaint filed last Monday in the Southern District of New York (see: http://authorsguild.org/advocacy/articles/authors-3.attachment/authors-v-hathitrust-9834/Authors%20v.%20HathiTrust%20Complaint.pdf ) by the Authors Guild --without the publishers--against the principal libraries participating in the Google Books Search case, only several days before the awaited conference in the Google Books case. The Authors Guild, together with authors' groups from Australia, Quebec, the U.K. and a small group of authors, sued HathiTrust and 5 state universities whose libraries are participating in HathiTrust's digital repository, 4 of which have also joined a consortium of HathiTrust members called the HathiTrust Orphan Works Project.
Although key participants in the Google Books Search project (as Google scanned books in the libraries' collections to create the Google Books Search database), the libraries were not part of the Google Books litigation and only participated in the periphery of settlement discussions. Pursuant to separate agreements with Google, each participating library had agreed to let Google scan the books in its library and Google in return agreed to provide the library digital copies of the scans to use for its own purposes. The HathiTrust, a partnership of more than 50 research institutions, was formed to combine the partners' digital libraries, which are comprised largely of the Google scans delivered to the libraries thus far, to create a shared digital repository. According the authors' complaint, approximately 73% of the 10 million volumes already in this digital collection, called the HathiTrust Digital Library, are protected by copyright.
Users can search bibliographic data of the scanned works in the HathiTrust Digital Library and can search the texts for the number of times a search term appears. In addition, full access to works identified as "orphaned" is provided to authorized users. The Orphan Works Project was initiated by HathiTrust to identify those works for which a copyright owner could not be found and to make those works available online through the HathiTrust Digital Library. Using a modified version of the "reasonable search" requirement outlined in the several iterations of the never-enacted orphan works legislation, the Orphan Works Project, led by the University of Michigan library, is researching the ownership status of various works. According to the HathiTrust's protocol, if a copyright owner cannot be identified through a specified multi-step diligence process, the HathiTrust will then post the work on a HathiTrust Orphan Candidates webpage for 90 days. If no copyright owner comes forward during that 90 day period, the work is made available for "full" view to authenticated users of the universities' libraries, including students, faculty, other staff and possibly alumni.
The complaint alleges infringement of the reproduction right by virtue of the various copies of copyrighted works in the HathiTrust Digital Library made in the course of scanning, ingesting, storing and preserving digital copies, providing back-ups and access to bibliographic data or search and, in the case of the designated orphans, full viewing. In addition, the complaint alleges unauthorized distribution, presumably of the designated "orphans." The authors also noted concerns with the security employed by the HathiTrust against further copying and distribution of the works in the HathiTrust repository. Wherein the proposed Google Books Settlement, rejected by Judge Chin, the authors and publishers had negotiated an agreement with Google to provide specific robust security measures; it is not clear how the works will be protected in this repository.
Oddly, the complaint also alleges violations of § 108 of the Copyright Act, which contains specific exceptions applicable to libraries and archives, including for preservation of unpublished works, making replacement copies of damaged or destroyed published works and for certain inter-library loans. One condition to the preservation and replacement exceptions is that any digital copies not be made available outside of the premises of the library or archive. While the activities of the HathiTrust alleged in the compliant are certainly outside the scope of what is permitted under § 108, it is difficult to see how those acts are "violations" of § 108 rather than violations of the § 106 reproduction, distribution and display rights that fail to qualify under the § 108 exceptions. (Section 108 sets out exceptions, not a basis for a separate cause of action.) It is all the more peculiar in that § 108(f)(4) expressly states that nothing in § 108 "in any way affects the right of fair use as provided by section 107." Fair use, of course, is the defense the HathiTrust and participating libraries are relying upon (in addition to the fact they are each state entities and so protected from damages by sovereign immunity).
In the meantime, according to the Authors Guild, it, its members, and others have identified or found leads to the owners of the literary property rights to 50 of the 167 or so books that the Orphan Books Project had already identified as orphaned and was ready to be made available next month. In a statement (located at: http://www.lib.umich.edu/news/u-m-library-statement-orphan-works-project) released last Friday by the University of Michigan Library, the Library announced the temporary suspension of the Orphan Works project due to errors that had been discovered, stating: "The close and welcome scrutiny of the list of potential orphan works has revealed a number of errors, some of them serious. This tells us that our pilot process is flawed." Michigan promised to re-examine its procedures for identifying orphans, explaining that it has no intention to make available any works that are not in fact orphaned. In the statement, the library explained: "The widespread dissemination of the list [on the HathiTrust Orphan Candidates webpage] has had the intended effect: rights holders have been identified, which is in fact the project's primary goal. And as a result of the design of our process, our mistakes have not resulted in the exposure of even one page of in-copyright material."
*Submitted by Mary Rasenberger, Partner, Cowan DeBaets Abrahams and Sheppard.
**Any views expressed in this blog are personal views of the author and not of Cowan DeBaets or any client of the firm.