October 19, 2015
Intellectual Property Alert
Author(s): Troy K. Lieberman
On Friday, the Second Circuit ruled that Google’s project to digitize copyrighted content was legal under the doctrine of fair use. The Second Circuit affirmed the Southern District of New York’s dismissal of the case (a decision discussed in our earlier Intellectual Property Alert) and held that Google’s copying was transformative, did not offer the public a meaningful substitute for matter protected by copyright and, therefore, satisfied the statutory test for fair use.
Google’s Library Project began in 2004 and involves bi-lateral agreements between Google and major libraries whereby the participating libraries select books from their collections to submit for inclusion in the project. Google then makes a digital scan of each book, extracts machine-readable text and creates an index of the machine-readable text for each book. Since 2004, Google has scanned and indexed more than 20 million books, which are available for searching in its Google Books search engine. Members of the public can search words or terms and receive a list of all books in the database in which those terms appear. Also included is a brief description of each book, a snippet of text for context and a list of libraries where the book can be found. Sometimes, Google Books provides a link to buy the book online. The Google Books search engine also provides the ability to “text mine” or “data mine” statistical information across millions of books for research or analytics purposes.
Named plaintiffs Betty Miles, Jim Bouton and Joseph Goulden are authors of published books under copyright whose books were scanned by Google as part of its Google Books project without permission. They brought suit, as a putative class action, against Google for copyright infringement in 2005. The Southern District of New York granted summary judgment on Google’s fair use defense, finding Google’s uses of the copyrighted works were transformative, that its display of copyrighted material was properly limited and that Google did not impermissibly serve as a market substitute for the original works.
The Second Circuit analyzed whether Google’s actions were protected by the fair use doctrine, which is enumerated at 17 U.S.C. § 107:
[T]he fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
Noting that Supreme Court precedent in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) requires a case-by-case analysis and cautions that the statutory examples are merely “illustrative,” the Second Circuit analysed each of the factors against the Google Books project.
As to the first factor (purpose and character of use), the Second Circuit held that each part of the Google Books project was transformative of the original copyrighted material and therefore within the scope of the fair use defense. The court ruled that the purpose of the copying (to make available significant information about the book and then enabling searching) was “highly transformative.” Additionally, the “snippet” feature designed to show “just enough context surrounding the searched term to help [the searcher] evaluate whether the book falls within the scope of her interest (without revealing so much as to threaten the author’s copyright interest)” was also “highly transformative.” Finally, the court held that even though Google was a for-profit organization, it was still entitled to a fair use defense. “We see no reason in this case why Google’s overall profit motivation should prevail as a reason for denying fair use over its highly convincing transformative purpose, together with the absence of significant substantive competition, as reasons for granting fair use. Many of the most universally accepted forms of fair use, such as news reporting and commentary, quotation in historical or analytic books, reviews of books and performances, as well as parody, are all normally done commercially for profit.”
With respect to the second factor (nature of the copyrighted work), the Second Circuit noted it was rarely a significant factor that was often encompassed by the first. Nonetheless, the factor favored a finding of fair use because Google’s “secondary use transformatively provides valuable information about the original, rather than replicating protected expression in a manner that provides meaningful substitute for the original.”
As to the third factor (amount and substantiality used in relation to whole), the Second Circuit found that complete copying (such as Google’s actions for cataloguing purposes) was not a bar on the fair use defense. The court found important that even though Google copied the entire work, it did not offer the entire copied work to the public. “While Google makes an unauthorized digital copy of the entire book, it does not reveal that digital copy to the public. The copy is made to enable the search functions to reveal limited important information about the books.” (emphasis in original). The court found, as currently structured, Google’s snippet view did not offer a significantly competing substitute to the original copyrighted work. For example, the court noted Google limited views from its search results to one-eighth of a page and to no more than one out of every ten sequential pages. Importantly, the same snippets were shown regardless of how many times a search was run, so it was impossible to re-create an entire work. In fact, the plaintiffs were only able to reveal 16% of a book, which the court found was not a substantial amount and noted, “[e]ven if the search function revealed 100% of the words of the copyrighted book, this would be of little substantive value if the words were revealed in alphabetical order, or any order other than the order they follow in the original book.”
Finally, as to the fourth factor (effect on potential market), the court found that such limited available text (as described above, no more than 16% of a work) did not threaten the right holders with any significant harm to the value of their copyrights.
In finding all four factors favored a finding of fair use, the Second Circuit affirmed the lower court’s decision that Google did not infringe plaintiffs’ copyrights.
The court was not swayed by plaintiffs’ remaining arguments. First, it held that plaintiffs did not have derivative rights in Google’s application of search and snippet views. Derivative rights are typically works that simply represent the original such as translations, dramatizations or a motion picture version of a book. Second, the court held that Google made a sufficient showing that it did not expose plaintiffs’ works to hackers. The court noted the files were walled off from public access and were protected by the same “impressive security measures” Google used to guard its own confidential information. In fact, plaintiffs’ own expert remarked on the strength of Google’s security features. Finally, the court held that Google’s distribution of digital copies to participating libraries fell under fair use, as the libraries had the right to digitalize the works, so it was not infringement for them to contract with Google to do so.
In finding Google’s actions to be fair use, the Second Circuit has provided guidance to the scope of copyright protection in an increasingly digitalized world. While the Second Circuit noted a necessary case-by-case analysis and the numerous steps Google took to prevent full disclosure of an entire work, the decision likely will have implications in defining the scope of what is “transformative” and may have implications for other uses of “data mining” technologies.
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