Publishers, IA Differ on Scope of Injunction to Bar Scanning of Physical Books
A permanent injunction barring Internet Archive from scanning print copies of physical books and lending the digital copies to users of IA’s website without the publishers’ permission would take effect immediately under a proposed consent judgment IA and four book publishers sent Friday in a letter (docket 1:20-cv-04160) to U.S. District Judge John Koeltl for Southern New York in Manhattan. Koeltl granted summary judgment for copyright infringement March 24 and gave the parties until April 7 to propose the appropriate procedure to determine the judgment to be entered in the case (see 2303270006).
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Ten deadline postponements later, the parties reached agreement on a framework that would preserve IA’s right to appeal Koeltl’s ruling, and agreed not to stay the injunction pending that appeal, said their submission. IA agreed to pay the publishers a monetary judgment for its infringement, but the terms are confidential, it said. But the parties reached an impasse on the scope of the injunction, and agreed to ask Koeltl to adjudicate the dispute.
The parties agree on “most aspects” of the definition of “covered books” that would be subject to the injunction, said the proposed consent judgment. The publishers want the definition to include books “commercially available in any format,” but IA wants the definition to include only books commercially available with an ebook component, it said.
IA wants to be free to scan and distribute digital copies of any print books the publishers or their authors “have affirmatively decided not to publish as ebooks at this time,” the publishers wrote Koeltl in a separate letter. The plaintiffs’ position “is in keeping with the nature of exclusive rights under the Copyright Act and ample precedent,” said the publishers. In making the decision to offer a work for sale in a given format, “the copyright owner is not in a race to the market with downstream parties who have no copyright interests in the work and have done nothing to contribute to or finance the creative expression,” they said.
In those limited instances in which the author and publisher decided to publish a book only in a print edition, IA “creates clear potential market harm to the print book market for the work,” said the publishers. That’s because “its straight, verbatim digital copy of the entire work is an obvious competing substitute for the original,” they said.
The court already “forcefully ruled” that IA “has no right to digitize and distribute a third party’s print book as an ebook, even if it retains a physical copy of the book,” said the publishers. As the March 24 summary judgment order “underscored,” it’s the “rightsholder, not IA, who holds the exclusive right to prepare and distribute derivative works, such as ebooks,” they said.
Those conclusions “apply equally in instances in which the print book publisher has decided to issue the work as an ebook and those limited circumstances in which it has decided not to do so,” said the publishers. “IA has no right to rob publishers of the right to make that decision," they said. Though the plaintiffs publish “the vast majority of their books in both print and eBook formats,” they “periodically decide” not to create ebook editions of certain print books that are “poorly suited to the digital realm,” including some illustrated children’s books and cookbooks, they said.
But IA thinks the injunction’s scope should be limited to books that, like the 127 “works in suit,” are available for electronic licensing, the defendant told the judge in a separate letter. “Because an injunction should be narrowly tailored to the issues addressed in the case, and this case involved only books available for electronic licensing, injunctive relief here should likewise be limited to books available for electronic licensing,” it said.
An injunction covering all in-print books would go well beyond the scope of the issues tried in the case, said IA. “That limitation follows from black-letter principles of remedies,” it said. The case involved only works that the publishers make available as ebooks, “and so the scope of any injunction should be limited accordingly,” it said.
That all 127 works in suit are available as authorized ebooks that may be purchased by retail customers or licensed to libraries was “relevant” to Koeltl’s “fair-use analysis” in his March 24 opinion and order, said IA. The order emphasized there’s a thriving ebook licensing market for libraries, it said. It also concluded that IA supplants the publishers’ place in this market because it brings to the marketplace a competing substitute for library ebook editions of the works in suit, it said. That would not be true for works that the publishers don’t make available as ebooks, “none of which were litigated in this suit,” it said.
Other courts have said “the unavailability of digital library licensing of particular works weighs in favor of fair use under the fourth fair use factor as to those works,” said IA. The parties didn’t have the opportunity in this case “to litigate the degree to which the unavailability of digital library licensing would affect the fair use analysis,” it said. It’s therefore “inappropriate for an injunction in this case, by its breadth, to effectively prejudge the outcome of that question,” it said.