An expensive nine year legal battle between Google and The Authors Guild, the nation’s largest organization of published authors, has ended in a victory for Google. Federal Judge Denny Chin, of the influential U.S. District Court for the Southern District of New York, awarded a summary judgment to Google with respect to copyright infringement claims brought by the Authors Guild and several other named authors as a result of Google’s mass digitization of literary works for its “Google Books” project. In legal parlance, a “Summary Judgment” is a judgment rendered by the court prior to a verdict because no material issue of fact exists and one party or the other is entitled to a judgment as a matter of law. In other words, the facts that are material to the decision are not disputed by the parties and, therefore, the judge can render a decision based on the relevant law.
So what started this massive lawsuit? For several years now, Google has embarked on a massive project, called Google Books, to make digital copies of entire books (not just portions of them) to enable full-text searching of the texts. While many of the books are no longer protected by copyright, an enormous number of them still are. So far, Google has digitized approximately twenty million books. The Authors Guild and the group of individual authors (collectively, the authors) sued Google, claiming that such copying amounted to a massive copyright infringement of millions of books.
The District Court held that Google’s use of digital copies for full-text searching was “transformative” (I’ll explain that in a minute) and thus constituted “fair use.” As a result, the court held that Google may make full digital copies of the works without authorization of the Authors.
I have discussed the Copyright Act’s fair use doctrine in a previous post. It continues to be one of the most litigated issues in copyright law. Just to recap from that earlier post, the Copyright Act sets forth a non-exhaustive list of four elements that the courts must consider in determining if any unauthorized use of a copyrighted work is a “fair use.” They are: (1) the purpose and character of the work (which is claimed to be a fair 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 use upon the potential market for or value of the copyrighted work. In addition to those four factors, the statute states that the court may consider other factors it deems relevant to the analysis.
As a result of the landmark 1994 U.S. Supreme Court decision in the case of Campbell v. Acuff-Rose Music (a case involving rapper Luther Campbell’s unauthorized cover version of Roy Orbison’s classic song, Oh, Pretty Woman), the courts have established another element to be considered: whether or not the unauthorized use is a “transformative use.” As I noted in the previous post, while some consider this to be a new “fifth element” to be considered, most legal scholars consider the “transformative work” test to be an element to be considered as part of the analysis of the first of the four statutory factors, i.e., the purpose and character of the work.
The Campbell Court stated that a derivative work becomes a “transformative work” (and, thus, entitled to fair use treatment) if it uses a source work in a completely new or unexpected way. In other words, even though the statute says that a copyright owner may stop others from preparing derivative works based on their copyrighted work, if that new work is “transformative” enough, the copyright owner may not be able to stop the use, even if the other four fair use factors set forth in the statute weigh against a finding of fair use. One thing that has led to quite a bit of confusion over the years is that the definition of a “derivative work” includes a work that is “transformed.” The test often applied is whether the new work “supplants” the original work. If so, it is not transformative.
OK, so how did the Google court apply the fair use analysis? Incorrectly, in my opinion.
In analyzing the first factor, i.e., the purpose and character of the Google works, the court concluded that Google’s use was “highly transformative” and, thus, that factor weighed heavily in favor of a finding of fair use. The court was impressed by Google’s digitization as a transformation of the books into a comprehensive word index that is designed to allow people to search through entire texts based on inputting search terms for any terms contained within that text. I fail to see how simply making copied text searchable is “transformative.” (I suspect the court of appeals might agree with me.) The court seemed to place a great deal of weight on the fact that Google’s scanning makes it easier for students, teachers, researchers and the public to find books. While the court acknowledged that Google’s use was commercial (which would tend to weigh against a finding of fair use) it nonetheless was impressed that researchers could use the indexed text without direct payment. What the court conveniently overlooked was that Google is a commercial enterprise and it generates millions of dollars in revenue as a result of ads and traffic on its site, including the Google Books pages.
The next factor the court discussed, the nature of the copyrighted work, i.e., books, once again would seem to weigh against a finding of fair use. However, the court said that the vast majority of the digitized books were non-fiction and thus entitled to little protection. Again, I disagree with that. While facts contained in non-fiction books are not protected by copyright, the choice of the way to express those facts is. While certain non-fiction works (for example, parts catalogs and phone directories) may have a very “thin” layer of copyright protection, other non-fiction works are highly creative. For example, does the court really think that Truman Capote’s classic, In Cold Blood, is not worthy of strong copyright protection just because it is not a work of “fiction?”
In analyzing the third factor, i.e., the amount and substantiality of the portion used, the court decided to use reason and stated that Google’s digization of entire works did weigh against a finding of fair use, but only “slightly” because Google takes steps to keep people from viewing complete copies of books online (even though the entire text is searchable).
In applying the final fair use factor, namely, the effect of the use on the market for the underlying work, the court opined that since Google does not sell the digitized versions, and only allows “snippets” of books to be viewed, Google Books are not a substitute for the original and will actually boost sales for the original works. The court stated that Google Books has given “new life” to “out-of-print and old books that have been forgotten in the bowels of libraries.” While Google’s legion of fans may love the convenience of being able to search millions of books this way, it is important to keep in mind that the authors feel that they have been economically harmed by this, notwithstanding the court’s view that the authors would benefit from it.
Judge Chin felt that the value of Google Books to researchers and other academics was compelling, stating that “Google Books provides significant public benefits.”
What is the impact of this decision (assuming that it is not overturned on appeal)? The decision gives a legal greenlight to search services that include images, text and other portions of works in the search results. Already, the courts have held that use of thumbnail images as part of a search engine is fair use. So long as such a search result does not act as a substitute for content by showing readers all of it, and instead simply shows where to find the rest of the content, the usage will be permitted.
Frankly, the court’s decision left me scratching my head wondering how it could reach some of these conclusions. My criticism of the decision is not so much the end result of a finding of fair use, but, rather, the court’s position on each of the four factors that led to that result. It is important to keep in mind that this decision (strangely taking nine years to get to summary judgment) likely will be appealed. I suspect that the court of appeals will agree with me and overturn this decision, but one thing that I have learned in my 28 years of law practice is that, when it comes to fair use cases, expect the unexpected. You can be certain that I (and others) will be watching this case closely.
