By Peter Karol. Peter is an Associate Professor Of Law, New England Law | Boston and Of Counsel To Sunstein Kann Murphy & Timbers LLP
The following article appeared first in Bloomberg BNA’s Patent, Trademark and Copyright Journal in a slightly different form. The article follows up on Prof. Karol’s previous article published here discussing a widely-followed copyright case involving the preparation of course packs for university students in which portions of copyrighted texts are electronically assembled. In the article below, Prof. Karol discusses an important but largely ignored aspect of the case, one that arises because the university in question was a state university. Prof. Karol assumes familiarity with the four-factor fair use analysis common to copyright cases that is explained in his earlier article.
The most significant—and difficult—aspect of the Eleventh Circuit’s recent opinion in the electronic course pack fair use fight known as Cambridge University Press v. Patton[1] might be the one that received the briefest treatment.
It took the district court just one paragraph to dispose of defendants’ contention that, as state actors sued in their official capacities as board members and officials of a state university, they were shielded from suit by Eleventh Amendment sovereign immunity. Through their failure to cross-appeal the issue, defendants waived the right to have the court of appeals consider that issue at all.[2]
The problem with this back-of-the-hand treatment, though, is not simply that the district court might have erred in its analysis of a hard issue. Plaintiffs had at least a decent argument, accepted by the district court, that the Ex parte Young exception (explained below) to that constitutional bar allowed it to hear a case against state actors accused of violating federal law on a continuing basis.
The trouble, rather, is that such a cursory disposition of the issue obscures the dramatic role that the Ex parte Young posture should be (and, quietly, is) playing in the litigation. Namely, Ex parte Young slants every aspect of a case towards the future. Its entire reason for being is to alter future conduct by state actors, and avoid future violations of federal law (especially, but not necessarily, the federal constitution).
Prospective, Retrospective Conflict. Yet the analytic fair use framework adopted by the court of appeals in its recent decision in Cambridge Univ. Press is purposefully retrospective. Through its insistence on work-by- work, particularized fair use inquiries, it focuses the litigation on a series of discrete, unique events (48 infringements, each alleged to be a fair use) in the past, by specific people far removed from the state apparatus (academic professors and librarians) at a few moments in time (namely, in 2009).
This deep and undiscussed conflict—between Ex parte Young’s prospective, and fair use’s retrospective, vantages—places the otherwise leading case on disconcertingly weak ground as general precedent.
To step back, in Cambridge Univ. Press a group of academic publishing houses sued officials and board members of Georgia State University in a challenge to that university’s institutional practices regarding so-called electronic or digital course packs. (Electronic course packs are the digital analog to paper course packs—usually collections of articles and book excerpts selected by professors for students to read in their courses. The selections are generally uploaded to password-protected electronic reserve systems maintained by university libraries for student access.)
The particular allegations in Cambridge Univ. Press shifted somewhat throughout the litigation. By the time of trial, however, the district court understood plaintiffs primarily to allege that Georgia State University’s 2009 copyright policy, because of its misapplication of fair use principles, caused professors and librarians (non-parties) to commit widespread copyright infringement as they, among other things, selected, scanned, and electronically posted unlicensed materials for students to read for their GSU courses.[3] The named defendants, in turn, were alleged to be responsible for that infringement (a theory sometimes considered an allegation of direct, and sometimes indirect, infringement). Plaintiffs urged the district court to sharply limit the practice going forward.
After some back and forth regarding the number of alleged infringements, all occurring in 2009, the district court found that of the 74 claimed infringements, plaintiffs had established a prima facie case in 48 infringements. It then proceeded to perform a fair use analysis on each of the 48 instances, concluding that fair use applied as a defense to infringement in all but five instances.[4] (More)
The most significant—and difficult—aspect of the Eleventh Circuit’s recent opinion in the electronic course pack fair use fight known as Cambridge University Press v. Patton[1] might be the one that received the briefest treatment.
It took the district court just one paragraph to dispose of defendants’ contention that, as state actors sued in their official capacities as board members and officials of a state university, they were shielded from suit by Eleventh Amendment sovereign immunity. Through their failure to cross-appeal the issue, defendants waived the right to have the court of appeals consider that issue at all.[2]
The problem with this back-of-the-hand treatment, though, is not simply that the district court might have erred in its analysis of a hard issue. Plaintiffs had at least a decent argument, accepted by the district court, that the Ex parte Young exception (explained below) to that constitutional bar allowed it to hear a case against state actors accused of violating federal law on a continuing basis.
The trouble, rather, is that such a cursory disposition of the issue obscures the dramatic role that the Ex parte Young posture should be (and, quietly, is) playing in the litigation. Namely, Ex parte Young slants every aspect of a case towards the future. Its entire reason for being is to alter future conduct by state actors, and avoid future violations of federal law (especially, but not necessarily, the federal constitution).
Prospective, Retrospective Conflict. Yet the analytic fair use framework adopted by the court of appeals in its recent decision in Cambridge Univ. Press is purposefully retrospective. Through its insistence on work-by- work, particularized fair use inquiries, it focuses the litigation on a series of discrete, unique events (48 infringements, each alleged to be a fair use) in the past, by specific people far removed from the state apparatus (academic professors and librarians) at a few moments in time (namely, in 2009).
This deep and undiscussed conflict—between Ex parte Young’s prospective, and fair use’s retrospective, vantages—places the otherwise leading case on disconcertingly weak ground as general precedent.
To step back, in Cambridge Univ. Press a group of academic publishing houses sued officials and board members of Georgia State University in a challenge to that university’s institutional practices regarding so-called electronic or digital course packs. (Electronic course packs are the digital analog to paper course packs—usually collections of articles and book excerpts selected by professors for students to read in their courses. The selections are generally uploaded to password-protected electronic reserve systems maintained by university libraries for student access.)
The particular allegations in Cambridge Univ. Press shifted somewhat throughout the litigation. By the time of trial, however, the district court understood plaintiffs primarily to allege that Georgia State University’s 2009 copyright policy, because of its misapplication of fair use principles, caused professors and librarians (non-parties) to commit widespread copyright infringement as they, among other things, selected, scanned, and electronically posted unlicensed materials for students to read for their GSU courses.[3] The named defendants, in turn, were alleged to be responsible for that infringement (a theory sometimes considered an allegation of direct, and sometimes indirect, infringement). Plaintiffs urged the district court to sharply limit the practice going forward.
After some back and forth regarding the number of alleged infringements, all occurring in 2009, the district court found that of the 74 claimed infringements, plaintiffs had established a prima facie case in 48 infringements. It then proceeded to perform a fair use analysis on each of the 48 instances, concluding that fair use applied as a defense to infringement in all but five instances.[4] (More)
[1] 769 F.3d 1232, 112 U.S.P.Q.2d 1697 (11th Cir. 2014)(88 PTCJ 1623, 10/24/14).
[2] Cambridge Univ. Press, 769 F.3d at 1255.
[3] Id. at 1242-1246.
[4] Id. at 1252.
