By Tim Faith, Esq.

The case brought by the Author’s Guild against Google, for scanning of millions of books without any author’s permission, ended without a trial when Judge Chin granted a motion for summary judgment in favor of Google at the end of 2013. In his thirty page opinion, Judge Chin agreed that Google’s conduct is affirmatively protected by section 107 of the Copyright Act, which sets out the factors that courts consider when determining if a use of another’s copyrighted work is “fair,” meaning the defendant is not required to obtain a license or pay a royalty for the use.

This controversy started almost ten years earlier when Google began its “Library Project” to scan and index books from a variety of library collections, including Harvard, the University of Michigan, the New York Public Library, Oxford and Stanford.[1] Millions of books were to be scanned and indexed using Google’s engineering expertise and search engine, including some books that remain under copyright protection. Google also established a “Partner Program” under which Google worked with publishers and rights holders to index and display books with permission from the owner of the rights in the work.[2] By Judge Chin’s decision last year, more than twenty million books had been scanned and indexed into the Google Books project.[3]

Google’s database of books includes a full digital copy of each book it scans. Each such book is indexed for searching. Users can navigate to books.google.com and search through the index using queries of their own design. In response, the search engine will return a list of books from the index that are relevant to the query. Clicking on a particular book will take the user to a page which displays the cover of the book and a short summary of the content. If the book was scanned through the Partner Program, the user is able to view what the author or publisher has consented to display on the results page. If the book is in the public domain, the user is able to view the entire book and also to download the electronic version of the book. However, for books still under copyright protection but not available from the Partner Program, the search result displays the book in “snippet view.”[4] “Snippet view” is the source of controversy for the plaintiffs in the Author’s Guild because Google did not obtain permission to show portions of the indexed book in search results.[5]

 

Copyright infringement is the invasion of an exclusive right of an original work by another. Among the exclusive rights of authors are the rights to reproduce, distribute, and publicly display their works.[6] Fair use is an affirmative defense to a claim of copyright infringement. Under section 107, courts consider four factors when determining if a defendant’s infringing use is “fair:” (a) the purpose and character of the defendant’s use, (b) the nature of the plaintiff’s work, (c) the amount and substantiality of the work used by the defendant, and (d) the impact of the use on the plaintiff’s market for his work.[7] Determining whether fair use applies depends on the facts and circumstances of each case.[8] Judge Chin emphasizes in his opinion that “transformative” uses of copyrighted material are more likely to be a fair use. Citing Campbell v. Acuff-Rose,[9] the court defines “transformative” uses of a work as the creation of a new work from an old one, where the new work has a different purpose or character and the fair user alters the original expression resulting in a new work with a new meaning or message.

 

Fair use has been heavily litigated because the defense turns on the specific facts of each case. In addition, while the Google Books case is an important one, it is not the first case to raise the issue of fair use in the context of technology on the internet. More than ten years ago, the Ninth Circuit confronted a search engine that was sued for copyright infringement by a photographer, Leslie Kelly, whose photographs had ended up indexed into Arriba Soft Corp.’s internet image search engine.[10] In that case, Kelly created, sold and licensed landscape photographs of the American West, which he made available for sale through his website. The defendant, Arriba Soft, had crawled and indexed images available from public internet web sites, including Kelly’s web site. The Ninth Circuit held that Arriba Soft’s use of Kelly’s photographs was transformative. Kelly’s purpose in creating his photographs was aesthetic: people would purchase Kelly’s works to have a framed photograph of a landscape in their home. In contrast, Arriba Soft used Kelly’s photographs to create thumbnails which were placed into a search database so that search users could use keywords to find related images.[11] The thumbnails could not supplant the original aesthetic use of the works because the thumbnails were at a considerably lower resolution. Ultimately, Arriba Soft prevailed on the basis that its use of Kelly’s works was a fair use.[12] Amazon obtained a similar outcome in the case Perfect 10, Inc. v. Amazon.com, 508 F.3d 1146 (9th Cir. 2007).

 

In the Google Books case, the court also found that Google’s use of the plaintiff’s works was transformative: “Google Books digitizes books and transforms expressive text into a comprehensive word index that helps readers, scholars, researchers, and others find books. Google Books has become an important tool for libraries and libraries and cite-checkers as it helps to identify and find books.”[13] The court continued: “Similarly, Google Books is also transformative in the sense it has transformed book text into data for purposes of substantive research, including data mining and text mining in new areas, thereby opening up new fields of research.”[14]

 

The court held that the second factor – the nature of the plaintiff’s works – also favored a finding of fair use, because most of the books indexed by Google, 93%, were non-fiction, and all of the books had been published before Google indexed them. A court is less likely to find fair use when the defendant has used highly creative works, or works that are not yet published. The court held that on balance, the third factor – the amount and substantiality of the use of the plaintiff’s works by Google – weighed slightly against a finding of fair use because Google had used all of the works verbatim, though that was required for the purpose of Google’s use.[15]

 

Finally, the court held that the last factor – the impact on the plaintiff’s market for its works – also strongly supported a finding of fair use. In this case, the court found that the plaintiff’s market for its original works would be very unlikely to be supplanted by the “snippet” view that was available through Google’s website in response to user searches for keywords. To the contrary, the court found that Google’s database would most likely enhance the sales of the plaintiff’s works.[16]

As a result, the court found that Google’s use of the plaintiff’s works was a fair use and entered judgment for Google. The Author’s Guild filed notice of its intention to appeal, and subsequently filed an appeals brief with the Second Circuit in April. Google’s reply is due in July. Stay tuned for further developments!

About Tim Faith

Tim Faith is an attorney in private practice and an Assistant Professor at the Community College of Baltimore County (CCBC), where he teaches business law and legal writing.  Since 2009, Tim has provided legal advice on a variety of matters, including business law, copyright and trademark, and estate planning.  Tim is also an information technology consultant, with over fifteen years of experience with application development, database administration, networking, and management.  You can read more about Tim on his practice website, http://faithatlaw.com.

[1] http://books.google.com/intl/en/googlebooks/about/history.html

[2] The Author’s Guild, Inc. v. Google, Inc., 1:05-cv-08136-DC 5 (S.D.N.Y. Nov. 14, 2013) (appeal pending in 2d circuit in case number 13-4829 CV).

[3] Id. at 1.

[4] https://support.google.com/books/answer/43729?topic=9259&hl=en

[5] A careful reader will note that Google also has a complete digital copy of each book it scans, which Google backs up to backup media and shares with the source library that provided the work to be scanned. Plaintiffs alleged that these acts violate the authors’ exclusive rights of reproduction and distribution.

[6] 17 U.S.C. § 106.

[7] Id. at § 107.

[8] The Author’s Guild, Inc. at 16-17.

[9] 510 U.S. 569 (1994).

[10] Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003).

[11] Id. at 818.

[12] Id. at 822.

[13] The Author’s Guild, Inc. at 19.

[14] Id. at 20.

[15] Id. at 22-23.

[16] Id. at 25.