IP Law Daily GSU professors’ posting of academic book excerpts was fair use in 37 instances, infringement in 11 others
Thursday, March 5, 2020

GSU professors’ posting of academic book excerpts was fair use in 37 instances, infringement in 11 others

By Cheryl Beise, J.D.

District court re-analyzes fair use factors for the third time, focusing on likely market harm caused by Georgia State University’s digital posting of book excerpts.

In a third opinion regarding whether Georgia State University (GSU) officials infringed the copyrighted works of three academic book publishers by making digital copies of excerpts available to students, the federal district court in Atlanta has determined that GSU made fair use of the publishers’ works in 37 instances. However, the book publishers prevailed on 11 claims of copyright infringement. The Eleventh Circuit twice remanded the case to the district court to correct legal errors in its fair use analysis. In its present opinion, the court took care to focus on whether GSU’s use of the excerpts—taking into account the damage that might occur if "everybody did it"—would cause "substantial economic harm such that allowing it would frustrate the purposes of copyright" (Cambridge University Press v. Becker, March 2, 2020, Evans, O.).

Litigation history. In 2008, publishers Cambridge University Press, Oxford University Press, Inc., and Sage Publications, Inc., filed a complaint against officials of Georgia State University for direct, contributory, and vicarious copyright infringement. The publishers alleged a pattern and practice of distributing substantial unlicensed excerpts of their copyrighted works, and they sought to prove their claims based on a representative sample of infringements. The university asserted an affirmative defense of fair use. Following a bench trial in 2012, the district court found that GSU was liable for infringing five unlicensed excerpts from four copyrighted books by making them available electronically to students. The publishers established a prima facie case for the 48 instances of infringement, but GSU established its fair-use defense for 43 of the excerpts.

In 2014, the Eleventh Circuit upheld the district court’s analysis of the first and fourth fair-use factors, including its finding that widespread unlicensed use of 31 excerpts for which licenses existed could cause substantial harm to the potential markets. But the appellate court reversed and remanded the case to the district court to correct specific errors in its analysis of the second and fourth fair use factors. One such error was the use of a mathematical formula to equally balance the four statutory fair-use factors. Another was the insufficient weight the district court gave to the severe threat of market substitution under the fourth factor.

On remand from the first appeal, the district court made certain changes to its analysis in response to the appellate court’s holding, but ultimately reached similar results. The court again found fair use for each of the 43 excerpts for which it had originally done so. The court found one additional instance of fair use where it had previously found infringement. The district court reversed most of its original fourth-factor findings. It left unchanged only six of its 31 original findings that the threat of market harm weighed against fair use for excerpts for which licenses were available. The district court granted partial declaratory and injunctive relief against GSU. The university also was the prevailing party entitled to an award of costs and attorney fees under the Copyright Act.

In the second appeal, the Eleventh Circuit in October 2018 held that the district court misinterpreted the appellate court’s prior mandate and again misapplied the fair use test. The district court incorrectly assigned "initial, approximate respective weights of the four factors as follows: 25% for factor one, 5% for factor two, 30% for factor three, and 40% for factor four," the court said. The appeals court reiterated its holding in the first appeal that "the fourth factor looms large in the overall fair use analysis for each excerpt," but the court instructed the district court to evaluate the four factors qualitatively, not mathematically, and to take care to consider them holistically "in light of the purposes of copyright." The appeals court also found that the district court erred when it considered factor four. In vacating the district court’s orders and remanding the case, the Eleventh Circuit made the following instruction:

The district court must reinstate its earlier findings that factor four strongly disfavors fair use for 31 of the 48 excerpts. The district court must eschew a quantitative approach to the weighing and balancing of the fair use factors and give each excerpt the holistic, qualitative and individual analysis that the Act demands. And the district court must omit any consideration of price from its analysis of the third factor.

Present fair use analysis. In the present opinion, the district court was tasked with evaluating GSU’s affirmative fair use defense to 48 instances of alleged infringement arising from excerpts of the publishers’ copyrighted works electronically posted by 18 GSU professors during three semesters in 2009. Students enrolled in courses taught by the professors could access and copy the excerpts. No license fees were paid to the publishers for these uses.

The Copyright Act enumerates four factors to be considered in evaluating a claim for fair use: (1) the purpose and character of the use, (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 allegedly infringing use on the potential market for or value of the copyrighted work. The court evaluated each fair use factor for each instance of infringement. The district court expressly considered 10 directives issued by the Eleventh Circuit in its 2014 opinion.

The court maintained its prior position that factor one—the purpose and character of the use—favored fair use because GSU’s use was for a nonprofit educational purpose by a nonprofit institution. While factor two—the nature of the copyrighted work—was of "relatively little importance," the court considered this factor to be neutral or to weigh against fair use where the excerpts of the publishers’ works contained "evaluative, analytical or subjectively descriptive material that surpasses the bare facts necessary to communicate information, or derives from the author's experiences or opinions." Acknowledging that the third factor—determining the permissible quantity of materials that may be copied—was intertwined with the first and fourth factor, the court evaluated "not only ... the quantity of materials used, but ... their quality and importance, too."

For each work, the court provided a detailed analysis for the weighty fourth factor—the effect of the allegedly infringing use on the potential market for or value of the copyrighted work. The court noted that factor four considers the extent of market harm caused by GSU’s actions and "whether unrestricted and widespread conduct of the sort engaged in by the Defendants would result in a substantially adverse impact on the potential market." The court had to decide whether GSU’s use—taking into account the damage that might occur if "everybody did it"—would cause "substantial economic harm such that allowing it would frustrate the purposes of copyright." In its factual analysis of factor four, the court evaluated the market demand for each excerpt, considering such factors as the market value of the book from which the excerpts were taken and whether digital permissions were available for the excerpts in 2009. For example, the court found that GSU’s unpaid use of one excerpt caused Sage Publications, Inc., some actual harm—a loss of $467.31 in net revenue from permissions—but the widespread unpaid copying of excerpts of the book could cause substantial harm to the value of the copyrighted work. After analyzing each work, the court concluded that GSU infringed the publishers’ works in 11 instances, but made noninfringing fair use of the excerpts in 37 instances. Ten infringed excerpts were from works owned by Sage and one excerpt was from a work owned by Oxford University Press.

The court directed the publishers to propose the text of any injunctive or declaratory relief they desired, together with supporting rationale. GSU was invited to file objections and alternative orders. The court also directed both sides to confer and attempt to resolve disputes regarding entitlement to recovery of costs and attorney fees under the Copyright Act’s fee shifting provision. If an agreement cannot be reached, each side was directed to brief the court on its position.

This case is No. 1:08-cv-01425-ODE.

Attorneys: Edward Bryan Krugman (Bondurant Mixson & Elmore, LLP) and Jonathan Bloom (Weil Gotshal & Manges LLP) for Cambridge University Press, Oxford University Press, Inc., and Sage Publications, Inc. Anthony B. Askew (Meunier Carlin & Curfman, LLC) for Mark P. Becker.

Companies: Cambridge University Press; Oxford University Press, Inc.; Sage Publications, Inc.

MainStory: TopStory Copyright TechnologyInternet GeorgiaNews

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