Cambridge Univ. Press v. Patton

• Decision Date: 17 October 2014
• Docket Number: Nos. 12–14676,12–15147.,s. 12–14676
• Citation: 769 F.3d 1232,112 U.S.P.Q.2d 1697
• Parties: CAMBRIDGE UNIVERSITY PRESS, Oxford University Press, Inc., Sage Publications, Inc., Plaintiffs–Appellants, v. Carl V. PATTON, et al., Defendants, J.L. Albert, in his official capacity as Georgia State University Associate Provost for Information System and Technology, Mark P. Becker, in his official capacity as President of Georgia State University, Kenneth R. Bernard, Jr., in his official capacity as member of the Board of Regents of the University System of Georgia., Robert F. Hatcher, in his official capacity as Vice Chair of the Board of Regents of the University System of Georgia, W. Mansfield Jennings, Jr., in his official capacity as member of the Board of Regents of the University System of Georgia, James R. Jolly, in his official capacity as member of the Board of Regents of the University System of Georgia, et al., Defendants–Appellees.
• Court: U.S. Court of Appeals — Eleventh Circuit

769 F.3d 1232

112 U.S.P.Q.2d 1697

CAMBRIDGE UNIVERSITY PRESS, Oxford University Press, Inc., Sage Publications, Inc., Plaintiffs–Appellants

v. Carl V. PATTON, et al., DefendantsJ.L. Albert, in his official capacity as Georgia State University Associate Provost for Information System and Technology, Mark P. Becker, in his official capacity as President of Georgia State University, Kenneth R. Bernard, Jr., in his official capacity as member of the Board of Regents of the University System of Georgia., Robert F. Hatcher, in his official capacity as Vice Chair of the Board of Regents of the University System of Georgia, W. Mansfield Jennings, Jr., in his official capacity as member of the Board of Regents of the University System of Georgia, James R. Jolly, in his official capacity as member of the Board of Regents of the University System of Georgia, et al., Defendants–Appellees.

Nos. 12–14676

12–15147.

United States Court of Appeals, Eleventh Circuit.

Oct. 17, 2014.

Robert Bruce Rich, Jonathan Bloom, Todd D. Larson, Randi Wolkenbreit Singer, Weil Gotshal & Manges, LLP, New York, NY, Edward B. Krugman, John H. Rains, IV, Bondurant Mixson & Elmore, LLP, Atlanta, GA, for Plaintiffs–Appellants.

Anthony B. Askew, Robin L. Gentry, Walter Hill Levie, III, Stephen M. Schaetzel, Meunier Carlin & Curfman, LLC, Laura Elisabeth Ashby, Miller and Martin, PLLC, Mary Katherine Bates, John W. Harbin, Kristen A. Lynn, Natasha H. Moffitt, King & Spalding, LLP, Richard William Miller, Ballard Spahr, LLP, Katrina M. Quicker, Baker & Hostetler LLP, Mary Josephine Leddy Volkert, Denise E. Whiting–Pack, Georgia Department of Law, Matthew P. Warenzak, Smith Gambrell & Russell, LLP, Atlanta, GA, Lisa Eskow, Law Office of Lisa Eskow, Austin, TX, for Defendants–Appellees.

Appeals from the United States District Court for the Northern District of Georgia. D.C. Docket No. 1:08–cv–01425–ODE.

Before TJOFLAT and MARCUS, Circuit Judges, and VINSON,^* District Judge.

Opinion

TJOFLAT, Circuit Judge:

Three publishing houses, Cambridge University Press, Oxford University Press, and Sage Publications, Inc. (collectively, “Plaintiffs”) allege that members of the Board of Regents of the University System of Georgia and officials at Georgia State University (“GSU”) (collectively, “Defendants”) infringed Plaintiffs' copyrights by maintaining a policy which allows GSU professors to make digital copies of excerpts of Plaintiffs' books available to students without paying Plaintiffs. Plaintiffs alleged seventy-four individual instances of infringement, which took place during three academic terms in 2009. The District Court issued an order finding that Plaintiffs failed to establish a prima facie case of infringement in twenty-six instances, that the fair use defense applied in forty-three instances, and that Defendants had infringed Plaintiffs' copyrights in the remaining five instances.

Finding that GSU's policy caused the five instances of infringement, the District Court granted declaratory and injunctive relief to Plaintiffs. Nevertheless, the District Court found that Defendants were the prevailing party and awarded them costs and attorneys' fees. Because we find that the District Court's fair use analysis was in part erroneous, we reverse the District Court's judgment; vacate the injunction, declaratory relief, and award of costs and fees; and remand for further proceedings consistent with this opinion.

I.

A.

Like many recent issues in copyright law, this is a case in which technological advances have created a new, more efficient means of delivery for copyrighted works, causing copyright owners and consumers to struggle to define the appropriate boundaries of copyright protection in the new digital marketplace. These boundaries must be drawn carefully in order to assure that copyright law serves its intended purpose, which is to promote the creation of new works for the public good by providing authors and other creators with an economic incentive to create. See Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156, 95 S.Ct. 2040, 2044, 45 L.Ed.2d 84 (1975). If copyright's utilitarian goal is to be met, we must be careful not to place overbroad restrictions on the use of copyrighted works, because to do so would prevent would-be authors from effectively building on the ideas of others. Some unpaid use of copyrighted materials must be allowed in order to prevent copyright from functioning as a straightjacket that stifles the very creative activity it seeks to foster. If we allow too much unpaid copying, however, we risk extinguishing the economic incentive to create that copyright is intended to provide.

The fair use doctrine provides a means by which a court may ascertain the appropriate balance in a given case if the market actors cannot do so on their own. Fair use is a defense that can excuse what would otherwise be an infringing use of copyrighted material. See 17 U.S.C. § 107 (“[T]he fair use of a copyrighted work ... is not an infringement of copyright.”). To prevail on a claim of fair use, a defendant must convince the court that allowing his or her unpaid use of copyrighted material would be equitable and consonant with the purposes of copyright. In order to make this determination, the court must carefully evaluate the facts of the case at hand in light of four considerations, which are codified in the Copyright Act of 1976: (1) the purpose of the allegedly infringing use, (2) the nature of the original work, (3) the size and significance of the portion of the original work that was copied, and (4) the effect of the allegedly infringing use on the potential market for or value of the original. Id. These factors establish the contours within which a court may investigate whether, in a given case, a finding of fair use would serve the objectives of copyright. Here, we are called upon to determine whether the unpaid copying of scholarly works by a university for use by students—facilitated by the development of systems for digital delivery over the Internet—should be excused under the doctrine of fair use.

Plaintiffs are three publishing houses that specialize in academic works. Plaintiff Cambridge University Press (“Cambridge”) is the not-for-profit publishing house of the University of Cambridge in England, having an American branch headquartered in New York City. Plaintiff Oxford University Press, Inc. (“Oxford”) is a not-for-profit United States corporation associated with Oxford University in England and headquartered in New York City. Plaintiff Sage Publications, Inc. (“Sage”) is a for-profit Delaware corporation, headquartered in Sherman Oaks, California.

Plaintiffs do not publish the large, general textbooks commonly used in entry-level university courses. Rather, Plaintiffs publish advanced scholarly works, which might be used in upper-level undergraduate and graduate courses. Cambridge and Oxford publish scholarly books and journals on niche subject areas. Their works involved in this case include research-based monographs, which are “small, single author books which give in-depth analysis of a narrow topic,” Cambridge Univ. Press v. Becker, 863 F.Supp.2d 1190, 1212 (N.D.Ga.2012) (footnote omitted), instructional books, trade books, and other works on academic topics. Sage primarily publishes books on the social sciences. All three plaintiffs publish, in addition to works by a single author, “edited books” which feature the contributions of multiple authors. Id.

Plaintiffs market their books to professors who teach at universities and colleges. Cambridge and Oxford regularly send complimentary copies of their publications to professors. Sage provides trial copies upon request. Plaintiffs intend that professors use Plaintiffs' publications in their work and assign them as required reading so that students will purchase them.

Rather than assigning whole books, some professors assign or suggest excerpts from Plaintiffs' books as part of the curriculum for their courses. Professors might do this by putting the work on reserve at the university library so that students can visit the library to read an assigned excerpt. Or, professors might prepare a bound, photocopied, paper “coursepack” containing excerpts from several works for a particular course. Often, a third-party copy shop assembles these coursepacks, performing the copying and binding, obtaining the necessary licenses from publishers, and charging students a fee for the finished coursepack. In recent years, however, universities—following the trend with regard to distribution of many forms of media the world over—have increasingly abandoned paper coursepacks in favor of digital distribution of excerpts over the Internet.¹

GSU is a public university in Atlanta, Georgia. It is part of the University System of Georgia, and is overseen by the Board of Regents of the University System of Georgia. GSU maintains two on-campus systems known as “ERes” and “uLearn” for digital distribution of course materials to students.

ERes (short for “E–Reserves”) is an “electronic reserve system” hosted on servers maintained by GSU and managed by GSU's library staff. Since 2004, GSU has used ERes to allow GSU students to access course materials—including course syllabi, class notes, sample exams, and excerpts from books and journals—on the Internet via a web browser. In order to place an excerpt from a book or journal on ERes, a professor must either provide a personal copy of the work to the GSU library staff or indicate that the GSU library owns a copy. A member of the library staff then scans the excerpt to convert it to a digital format and posts the scanned copy to ERes. GSU students are given access to an ERes website specific to the courses in which they are enrolled. On each course-specific ERes website, students find their reading assignments listed by title. The scanned excerpts are accessible via hyperlink. When a student clicks a link for a particular assignment, the student receives a digital copy of...