Google Print or Library – Who is the "Copier" according to Law?

Has Author’s Guild sued the wrong party? We remain convinced that what Google is doing – or planning to do, by offering snippets of an existing database for its search engine, is permissible transformative use – and thus fair use under § 107 of the U.S. Copyright Act. But what about the library (libraries) in question? Is it not the library (libraries) who – in the eyes of the law – is (are) actually making the copies of its (their) collection(s)? Should the Author’s Guild have sued the library (libraries) and not Google? We examine this issue, inter alia, below.

For some background information see the Google Print Project (which could take a decade, if allowed to proceed), Google Publisher Program, University of Michigan FAQ (“We get a copy of the digital files with no significant constraints on our ability to use them in ways that are consistent with copyright law. The value of these files is significant, as it would have taken us 1600 years and hundreds of millions of dollars to convert these materials on our own”…”It will be approximately six years until the collections at the University Library are converted in their entirety.”), AAUP Statement, WebProWorld, Chronicle of Higher Education.

Who Owns the Words?

Please read Righting Copyright: Fair Use and “Digital Environmentalism” by Robert S. Boynton at Book Forum. It is a superb overview article about copyrights in the digital age. As analyzed in our previous postings, we are of the opinion that the case of Author’s Guild v. Google ultimately turns on the question of whether the Google Print Project is a legally permissible transformative fair use, which we think it is, and which we hope will be so adjudicated. See the transformative use standard, which we think is the only copyright standard which has the logic to withstand the long-term demands of copyright law in our modern digital age.

The Applicable Law

For persons not familiar with intellectual property law, we briefly summarize the basic applicable copyright law (many links here) as follows:

The Constitution of the United States

Article I, Section 8 [clause 8] of the Constitution of the United States is the legal basis for copyright protection in the United States. That article provides that “The Congress shall have power…”:

“To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

United States Federal Law
(see U.S. Copyright Office, LII Cornell)

Pursuant to the power granted to it by the US Constitution, Congress has enacted federal legislation, the U.S. Copyright Act, 17 U.S.C. §§ 101 – 810, which governs U.S. copyright law. State and other laws are specifically preempted by § 301(a).

Copyright Office of the Library of Congress

The U.S. Copyright Act is administered by the “Register of Copyrights as director of the Copyright Office of the Library of Congress” (§ 701).

Exceptions to the Right of Copyright

The right of copyright is not a “natural” property right but is a man-made right specifically created by legislation. That legislation also provides for several limitations on exclusive rights. One of these is the “library” exception.

The Library Exception to Copyrights

The library exception at 17 U.S.C. § 108. Limitations on exclusive rights: Reproduction by libraries and archives provides inter alia as follows:

“(a) Except as otherwise provided in this title and notwithstanding the provisions of section 106, it is not an infringement of copyright for a library or archives, or any of its employees acting within the scope of their employment, to reproduce no more than one copy or phonorecord of a work, except as provided in subsections (b) and (c), or to distribute such copy or phonorecord, under the conditions specified by this section, if—
(1) the reproduction or distribution is made without any purpose of direct or indirect commercial advantage;”

Everyone thus far, including the Author’s Guild, has presumed that if a copyright infringement is taking place, then it is Google who is the infringer. Hence the entire discussion has centered on Google (which has all the money – billions – and this suit is in our opinion about money, and not about author’s rights. That is why Google and not the libraries have been sued).

However, Google is copying library books under a contract with the library (libraries), so that for all practical legal purposes, it is the library (libraries) that is (are) legally responsible for the copying, and not Google. Google is merely permitted by the contract as a part of its remuneration to use the database it is creating for the library (libraries) on its Google search engine under the conditions already discussed in other postings.

But is the library entitled to make these copies (or have these copies made for hire?)

Under §108 of the U.S. Copyright Act the library is entitled to make ONE copy of copyrighted works, provided that “the reproduction or distribution” must be made “without ANY purpose of direct or indirect commercial advantage”.

Kenneth D. Crews in Copyright Law, Libraries, and Universities comments Section 108 as follows:

“Section 108 is generally not regarded as the source of rights for reserve operations. Reserve room copies are made pursuant to fair use law; reserve rooms may be located in libraries, but they function as an extension of classroom teaching. The distinction between Section 108 and 107 for reserve rooms is important. Section 108 provides only for single copies of items, while the fair use statute specifically permits some multiple copies for classroom use, although subject to the four factors of fair use. Multiple copies are often essential for effective reserves.”

It would seem then that the library (libraries) can not rely on §108 to make more than ONE copy of a copyrighted work (they are making two in this case – one for the library and one for Google) and that copying can have not even an “indirect” commercial advantage, which it might have for Google (though it is not clear whether or not the decade-long venture may cost Google much more than it will earn – presuming that Google even exists in 10 years).

But if libraries are relying on § 107 of the U.S. Copyright Act to make multiple copies of copyrighted works for “archival” purposes, are they not running foul of the precedent in the Texaco case:

American Geophysical Union v. Texaco, Inc. 60 F.3d 913 (2d Cir. 1995), cert. dismissed , 116 S.Ct. 592 (1995), which Crews comments as follows:

“The Texaco decision is a significant endorsement of the Copyright Clearance Center. If permissions are easily forthcoming through the CCC, then fair use is of lessened importance for fulfilling research objectives–according to this case. That decision from the court is both stunning and foreboding, although it is still limited to fair use in the profit sector.”

Here, the libraries are in the non-profit sector.

Moreover, as Crews observes:

[in the Texaco case] “[T]he copies had a harmful effect on the potential market value of the copyrighted work.”

Since the library (libraries) are non-profit institutions, this is not an issue for their making copies of their collections, and the case is thus not directly applicable.

Another interesting twist is that the library position is the exact reverse of the situation in Princeton University Press v. Michigan Document Serv., 99 F.3d 1381 (6th Cir. 1996), cert. den., 137 L. Ed. 2d 495 (1997), where it was opined:

“It is true that the use to which the materials are put by the students who purchase the coursepacks is noncommercial in nature. But the use of the materials by the students is not the use that the publishers are challenging. What the publishers are challenging is the duplication of copyrighted materials for sale by a for-profit corporation that has decided to maximize its profits — and give itself a competitive edge over other copyshops — “

In the Michigan Document case the court did not concentrate on the non-profit USE to which the students were putting the coursepacks (this would correspond to the for-profit subsequent USE by Google in the instant case) but stated rather that the issue of duplication for profit by the document company was determinative (so that this would correspond to the non-profit duplication by the library (libraries) and not to any use by Google).

Using the logic of the Michigan Document case, the court must FIRST assess whether the copying of books in the instant case by the library (libraries) is permissible fair use or not, and only then could the court go to the question of whether the use to which Google has or intends to put the resulting database is transformative use or not.

The suit by the Author’s Guild thus puts the cart before the horse.

The Fair Use Exception to Copyrights

The fair use limitation on copyrights as referred to above is found in 17 U.S.C. §107 which provides:

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, 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—
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(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.
The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.”

To see how the courts might apply that provision to Google Print see our analysis of Transformative Use.

We hope in any case that the courts resolve this case in a manner which suits our modern digital era. Lawrence Lessig’s writings on this topic are recommended readings for any man or woman today sitting on the bench.

International Agreements

Internationally, the United States is also a signatory to:

1. The Paris Convention for the Protection of Industrial Property (since May 30, 1887); (see WIPO here and here);

2. The Berne Convention for the Protection of Literary and Artistic Works, (since March 1, 1989) See Berne Convention (both of these Conventions are administered by the WIPO); and,

3. TRIPs, the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)
TRIPs incorporates numerous provisions of both the Paris and Berne Conventions and other treaties. . The WTO site also has a discussion of the interrelationship of all these agreements, but see also 17 U.S.C. §301(e) which provides for federal preemption in the U.S.

Some additional postings and articles on these issues are found at:
Jessica Litman
Ronald B. Standler
Journal of Intellectual Property Law
Eugene Volokh

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No Patents on Software in the EU – A Judge Explains

In the England and Wales High Court (Patents Court) Decisions, we have found a readable opinion by Deputy Judge Mr Peter Prescott (sitting as a Deputy Judge) IN THe MATTER OF Patent Applications GB 0226884.3 and 0419317.3 by CFPH L.L.C., [2005] EWHC 1589 (Pat) in which Judge Prescott writes about “what is an invention” in the EU and about the prohibition of software patents in Article 52 of the European Patent Convention (EPC). We have omitted the footnotes and our excerpted text of the opinion is as follows:

“The reason why computer programs, as such, are not allowed to be patented is quite different. Although it is hotly disputed now by some special interest groups, the truth is, or ought to be, well known. It is because at the time the EPC was under consideration it was felt in the computer industry that such patents were not really needed, were too cumbersome (it was felt that searching the prior art would be a big problem), and would do more harm than good. I shall not go into details here but it is worth noting that the software industry in America developed at an astonishing pace when no patent protection was available. Copyright law protects computer programs against copying. A patent on a computer program would stop others from using it even though there had been no copying at all. So there would have to be infringement searches. Furthermore you cannot have a sensible patent system unless there exists a proper body of prior art that can be searched. Not only are most computer programs supplied in binary form – unintelligible to humans – but most of the time it is actually illegal to convert them into human-readable form. A patent system where it is illegal to search most of the prior art is something of an absurdity.

Recently, the scope of this exclusion has been under re-consideration by the European Union. The Commission wanted to harmonise the law by defining the line between inventions that are properly patentable and mere computer programs. Although not strictly relevant to what I have to decide, I must admit I watched developments with some anxiety. Had the proposal succeeded it would have entrenched a test involving ‘technical contribution’ and ‘technical features’ that I suspect is too vague to be workable at the margin. On 6 July 2005 the proposed directive was defeated in the European Parliament and it will not be re-introduced.”

Prescott has an equally cogent statement on the exclusion of patents for business methods:

“Now let us consider business methods. What is the policy reason that lies behind the exclusion of those? It is because, historically, patents for business methods were never granted yet business innovation went on very well without the benefit of that protection and without the red tape. Businessmen have been every bit as inventive as engineers. It was probably business administrators (and not poets or priests) who made the greatest “invention” of all time: phonetic writing. Consider as further examples: the invention of money; of double-entry bookkeeping; of negotiable bills of exchange; of joint-stock companies; of insurance policies; of clearance banking; of business name franchising; of the supermarket; and so on. None of these needed patent protection to get started. A patent system is always a burden on trade, commerce and industry: if only because of the “red tape” effect. The only question is whether the benefits outweigh the burdens. That has to be demonstrated by those who assert it is so, and in any case the decision is for the legislature. In this country and in Europe the legislature has not yet been persuaded.”

Everyone interested in intellectual property law should read this beautifully written decision.

Via (hat tip).
See also European Patent Convention (EPC)
nipc IP/it Update (nipcLaw Blog) – at that site Oracle, Software Patents Revisited

Crossposted to EUPundit.

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Bloggers re Author’s Guild v. Google Print

We have been scanning the blogs for additional opinions on the Author’s Guild lawsuit against Google Print (GooglePrint), some of which we have already referenced in previous postings on this topic here and here. These are now the blog additions with some interesting new legal aspects:

Balkinization on Author’s Guild v. Google Print

Things do not look good for the Author’s Guild when people like Jack M. Balkin, Knight Professor of Constitutional Law and the First Amendment and also Director of The Information Society Project at Yale Law School, write that the lawsuit “is just plain silly”. Balkin comments in his September 28, 2005 posting titled Search Me. Please.:

“As an author who is always trying to get people interested in my books, including (Warning: shameless self promotion ahead) my first book, my second book, my third book, my fourth book, my fifth book, and my sixth book, I have to agree with Tim O’Reilly’s op-ed: the Author’s Guild suit against Google is counterproductive and just plain silly.”

Go to Balkinization to read more.

Legal Theory Blog

Lawrence Solum hits the nail on the head when he writes as follows about the Author’s Guild filing the complaint as a class action:

“Putting on my proceduralist hat for a moment, there is a very substantial problem with class certification. The complaint defines the class as follows:

‘The Class is initially defined as all persons or entities that hold the copyright to a literary work that is contained in the library of the University of Michigan.’

That class includes many authors who would be injured if the plaintiffs were to prevail–including, for example, me! I am member of the plaintiff class–owning the copyright to at least three or four dozen works in the University of Michican library. I have a very strong objective interest in Google Print succeeding–because as a scholar, I benefit from the dissemination of my works and because reaching agreement with Google will be costly to me and Google, essentially killing the project. A substantial intraclass conflict of interest destroys “adequacy of representation,” making class certification inappropriate, both under the federal rules of civil procedure and under the due process clause of the fifth amendment of the U.S. Constitution. Opt out is not a solution–because that would create an affirmative duty to monitor the litigation and opt out (in order to preserve a constitutional right), and the Supreme Court has made it clear that no such duty should be created in a number of cases, including Phillips Petroleum v. Shutts. Pro-bono representation for intervenors opposing certification, anyone?”

The Law Pundit also has one book in the University of Michigan Library. We thus join Solum in his arguments and find that a class certification in this case is inappropriate.

Media Law Prof Blog

Christine A. Corcos refers to an article by Findlaw’s Julie Hilden titled “Authors Sue Google Over Its “Print for Libraries” Project: Will the Suit Succeed? Should It? And Why, As An Author, I’m Opting Out of Any Class Action“. Hilden discusses the class certification issue in practical detail.

Lenz Blog

Karl-Friedrich Lenz sees reproduction per se as the main legal issue, as he posts here, here and here.

There is no issue that Google “reproduces” copyrighted material in a database. We disagree here with Lenz on this point, however, and think that the issue is not reproduction per se, but rather whether the use of that reproduction is transformative, which, on the other hand, is permissible fair use.

Open Access News Blog and the L.A. Times

Via the Open Access News Blog.

Xeni Jardin in his September 25, 2005 article in the L.A. Times, You authors are saps to resist Googling, writes regarding the Author’s Guild lawsuit:

“If the paranoid myopia that drives such thinking penetrates too deeply into the law, search engines will eventually shut down. What’s the difference, after all, between a copyrighted Web page and a copyrighted book? What if Internet entrepreneurs could sue Google for indexing their websites? What if the law required search engines to get clearance for every Web page? Even a company as large and well-funded as Google couldn’t pull that off because what’s on the Internet, and who owns that content, changes constantly.

As one author told me, “fear of obscurity, not digital indexing, is what keeps most authors awake at night.”

Technology that makes it easier to find, buy and read books is good for everyone — even the authors suing Google.”

Copyfight and the E-LawLibrary

Copyfight and E-LawLibrary have noted the Patry reversal on the case, which we mentioned previously.

Joe Gratz and Seth Finkelstein covers the issue of copyright infringement and statutory damages as it potentially applies to Google, referring to Seth Finkelstein’s InfoThought, which comments on the same issue via Ed Felten’s Freedom to Tinker.

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Law Schools and Law Firms: The "Millennials" Have Arrived

At the Law School Academic Support Blog we are informed that the “Millennials” have arrived at law schools and law firms. This is a good read on the new post-1981 youth generation.

Roberts Confirmed as Chief Justice of the US Supreme Court by the US Senate 78-22

As reported by Reuters, the US Senate has just confirmed John Roberts as the 17th Chief Justice of the United States Supreme Court.

Bravo to the Senate and also to the 22 Democrats and 1 independent who voted for Roberts, who thereby joined all 55 Senate Republicans who voted unanimously for confirmation.

Perhaps this vote will foster less partisanship in US politics and help to solidify the people’s necessary feeling that they are Americans first and only political partisans second.

This has already been commented at the Legal Theory Blog (Lawrence Solum).

We find Solum’s analysis of the political side of the confirmation issue to be a bit too pessimistic. We think that many US Senators decided that the man was competent for the job.

We might add here as an aside that we also found two other recent postings at Solum’s blog which we found to be of interest,

one on copynorms, which Solum calls:

“one of the most important topics in contemporary IP scholarship”

and the other on

theories about judicial holdings

where Solum writes:

“[T]here are different theories about holdings, realist and formalist. What is the debate between these two theories about?”

Read his posting to find out.

Transformative Use Justifies GooglePrint Scans of Entire Books as Fair Use

As is clear from our previous posting, the lawsuit by Author’s Guild against Google turns – in our opinion – on the issue of non-infringing “transformative use” (something that Judge Posner (see further below), e.g. calls “complementary copying“). This is opposed to infringing “superseding use” (which e.g. Judge Posner calls “substitutional use“).

The transformative use to which GooglePrint (viz. Google Print) converts its scans of library holdings – in our opinion – justifies scans of entire books in libraries as fair use. We think that is the major legal issue in this case.

We find that James DeLong (short bio) at IPcentral has framed that issue best in compact form as follows in his September 21, 2005 posting:

Google’s response to the Authors Guild lawsuit is:

We regret that this group chose to sue us over a program that will make millions of books more discoverable to the world — especially since any copyright holder can exclude their books from the program. What’s more, many of Google Print’s chief beneficiaries will be authors whose backlist, out of print and lightly marketed new titles will be suggested to countless readers who wouldn’t have found them otherwise.

It adds:

Let’s be clear: Google doesn’t show even a single page to users who find copyrighted books through this program (unless the copyright holder gives us permission to show more). At most we show only a brief snippet of text where their search term appears, along with basic bibliographic information and several links to online booksellers and libraries.

Under the last paragraph, the issues are fascinating. To show only the limited info described by Google would, IMHO, pretty clearly be a fair use. So the authors must be objecting to the fact that an entire book is being copied without permission, even if it is then hidden in an electronic vault. But what is the objection, if only snippets are shown? Is it a fear of Napsterization — that once the digital copy is made it could escape into the world? Or is it simply a naked assertion of right — “copyright law says no copying, so you must pay me to do it, even if it would actually be in my interest to have snippets made available.”

Applying the logic of the reasoning used by Judge Thomas G. Nelson of the Ninth Circuit Appeals Court for the ruling in Kelly v. Arriba Soft Corporation, the provision of such “snippets of text” by search engines is analogous to the provision of “thumbnails of graphics”, which was found to be fair use in Kelly v. Arriba.

Kelly v. Arriba also found that:

[A]lthough Arriba did copy each of Kelly’s images as a whole, it was reasonable to do so in light of Arriba’s use of the images. It was necessary for Arriba to copy the entire image to allow users to recognize the image and decide whether to pursue more information about the image or the originating web site. If Arriba only copied part of the image, it would be more difficult to identify it, thereby reducing the usefulness of the visual search engine.

Similarly, of course, GooglePrint could not provide accurate, truly informational snippets of text as search results if they did not scan books in entirety. Hence, in our view, the permissible transformative use engaged in by GooglePrint also permits the copying (scanning) of entire books as “reasonable” “in light of [their] use of the [snippets].

The fact that Google permits copyright owners to opt-out of the library scanning and listing project is irrelevant to the direct copyright issue, since transformative use requires no permission from the copyright owner.

However, the opt-out alternative for copyright owners is relevant indirectly to the fair use copyright issue since it demonstrates “good faith” on the part of Google, which is not trying to infringe copyright material but rather to use already published material in a permissible transformative manner.

In our view, the Author’s Guild has little chance to win this lawsuit, but then again, the judges decide. That’s their job.

Update, 28 September 2005

Useful Websites on the Fair Use Issue

Stanford Copyright & Fair Use

Berkeley Copyright and Intellectual Property Rights

Cornell Legal Information Institute

Case Law

New York Times Co. v. Tasini, 533 U.S. 483 (2001), affirming 206 F.3d 161 (2d Circ. 2000).(inclusion of individual freelance copyrighted works in databases which permit complete access to the full text of such copyrighted articles). The copying in GooglePrint is to be clearly distinguished from the inclusion of copyrighted works in databases which then offer the copyrighted works in whole to the public, which is quite clearly a copyright infringement. Tasini clearly decided the issue that electronic RE-PUBLICATION of copyrighted works is a right which belongs to the copyright-owning authors. GooglePrint does not however involve electronic republication of such works. The sole issue in GooglePrint is whether Google can scan published copyrighted works for use in information search through “text snippets”. That is an entirely different legal question.

Harper & Row, Publishers, Inc., et al. v. Nation Enterprises et al., 471 U.S. 539; 105 S. Ct. 2218; 85 L. Ed.2d 588; 53 U.S.L.W. 4562 (1885) (use of excerpts totalling 13% of an unpublished manuscript). The case is found at FindLaw and BitLaw.

Ty, Inc. v. Publications International Ltd., 292 F.2d 512 (7th Cir. 2002). Probably the best treatment by a judge of the fair use exception is found in Judge Posner’s opinion in this case where he writes about book review citations from books as being “permissible” fair use, inter alia because they “serve the reading public as a useful guide” . We would find such book review citations as comparable to Google’s “snippets” as “guides” for the public. Posner writes:

“The defense of fair use, originally judge-made, now codified, plays an essential role in copyright law. Without it, any copying of copyrighted material would be a copyright infringement. A book reviewer could not quote from the book he was reviewing without a license from the publisher. Quite apart from the impairment of freedom of expression that would result from giving a copyright holder control over public criticism of his work, to deem such quotation an infringement would greatly reduce the credibility of book reviews, to the detriment of copyright owners as a group, though not to the owners of copyright on the worst books. Book reviews would no longer serve the reading public as a useful guide to which books to buy. Book reviews that quote from (“copy”) the books being reviewed increase the demand for copyrighted works; to deem such copying infringement would therefore be perverse, and so the fair-use doctrine permits such copying. Desnick v. American Broadcasting Companies, Inc., 44 F.3d 1345, 1351 (7th Cir. 1995) (dictum); William M. Landes, “Copyright, Borrowed Images, and Appropriation Art: An Economic Approach,” 9 Geo. Mason L. Rev. 1, 10 (2000); Lawrence Lessig, “The Law of the Horse: What Cyberlaw Might Teach,” 113 Harv. L. Rev. 501, 528 (1999). On the other hand, were a book reviewer to quote the entire book in his review, or so much of the book as to make the review a substitute for the book itself, he would be cutting into the publisher’s market, and the defense of fair use would fail. Harper & Row, Publishers, Inc. v. Nation Enterprises, 723 F.2d 195, 215 (2d Cir. 1983) (dissenting opinion), rev’d, 471 U.S. 539 (1985); see Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 562 (1985); Worldwide Church of God v. Philadelphia Church of God, Inc., 227 F.3d 1110, 1118 (9th Cir. 2000); Consumers Union of United States, Inc. v. General Signal Corp., 724 F.2d 1044, 1051 (2d Cir. 1983).

Generalizing from this example in economic terminology that has become orthodox in fair-use case law, we may say that copying that is complementary to the copyrighted work (in the sense that nails are complements of hammers) is fair use, but copying that is a substitute for the copyrighted work (in the sense that nails are substitutes for pegs or screws), or for derivative works from the copyrighted work, see 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright sec. 13.05[B][1], p. 13-193 (2002), is not fair use. On Davis v. The Gap, Inc., 246 F.3d 152, 175-76 (2d Cir. 2001); Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1277 (11th Cir. 2001) (concurring opinion); Wendy J. Gordon, “Fair Use as Market Failure: A Structural and Economic Analysis of the Betamax Case and Its Predecessors,” 82 Colum. L. Rev. 1600, 1643 n. 237 (1982); see Consumers Union of United States, Inc. v. General Signal Corp., supra, 724 F.2d at 1051. If the price of nails fell, the demand for hammers would rise but the demand for pegs would fall. The hammer manufacturer wants there to be an abundant supply of cheap nails, and likewise publishers want their books reviewed and wouldn’t want reviews inhibited and degraded by a rule requiring the reviewer to obtain a copyright license from the publisher if he wanted to quote from the book. So, in the absence of a fair-use doctrine, most publishers would disclaim control over the contents of reviews. The doctrine makes such disclaimers unnecessary. It thus economizes on transaction costs.

The distinction between complementary and substitutional copying (sometimes–though as it seems to us, confusingly–said to be between “transformative” and “superseding” copies, see, e.g., Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)) is illustrated not only by the difference between quotations from a book in a book review and the book itself, Marion B. Stewart, “Calculating Economic Damages in Intellectual Property Disputes: The Role of Market Definition,” 77 J. Patent & Trademark Office Society 321, 332 (1995), but also by the difference between parody (fair use) and burlesque (often not fair use). A parody, which is a form of criticism (good-natured or otherwise), is not intended as a substitute for the work parodied. But it must quote enough of that work to make the parody recognizable as such, and that amount of quotation is deemed fair use. Campbell v. Acuff-Rose Music, Inc., supra, 510 U.S. at 579, 580-81 and n. 14, 588; Suntrust Bank v. Houghton Mifflin Co., supra, 268 F.3d at 1271; Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 114 (2d Cir. 1998); Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1400 (9th Cir. 1997); 4 Nimmer & Nimmer, supra, sec. 13.05[C], pp. 13-203 to 13-218….

Book reviews and parodies are merely examples of types of work that quote or otherwise copy from copyrighted works yet constitute fair use because they are complements of (though sometimes negative complements, as in the case of a devastating book review) rather than substitutes for the copyrighted original. The commonest type is simply a quotation from a copyrighted work in a book or article on the same or a related subject. The complementary effect may be quite weak, but the quotation is unlikely to reduce the demand for the copyrighted work; nor could the copyright owner command a license fee commensurate with the costs of transacting with the copier. Such copying is therefore fair use.”

Concerning this case, see Ivan Hoffman and the Beanie Babies Collector’s Guide.

Hoffman writes regarding the fair use cases:

“Thus, clearly there is a conflict between the rights of the copyright owner and the rights of the user of the material, as there is in any fair use case.”

Posner writes in this regard in a later opinion in the case of Chicago Board of Education v. Substance, Inc. (7th Cir. 2003) as follows:

“So where to draw the line? The question cannot be answered precisely. The fair use defense defies codification. As we said in Ty, the four factors that Congress listed when it wrote a fair use defense (a judicial creation) into the Copyright Act in 1976 are not exhaustive and do not constitute an algorithm that enables decisions to be ground out mechanically. Ty, Inc. v. Publications Int’l Ltd., supra, 292 F.3d at 522; see also Campbell v. Acuff-Rose Music, Inc., supra, 510 U.S. at 577-78; Harper & Row, Publishers, Inc. v. Nation Enterprises, supra, 471 U.S. at 560. The general standard, however, is clear enough: the fair use copier must copy no more than is reasonably necessary (not strictly necessary—room must be allowed for judgment, and judges must not police criticism with a heavy hand) to enable him to pursue an aim that the law recognizes as proper, in this case the aim of criticizing the copyrighted work effectively. Ty, Inc. v. Publications Int’l Ltd., supra, 292 F.3d at 521; Kelly v. Arriba Soft Corp., 336 F.3d 811, 820-21 (9th Cir. 2003); Sundeman v. Seajay Society, Inc., supra, 142 F.3d at 206.

The burden of proof is on the copier because fair use is an affirmative defense, Campbell v. Acuff-Rose Music, Inc., supra, 510 U.S. at 590; Harper & Row Publishers, Inc. v. Nation Enterprises, supra, 471 U.S. at 561; Video Pipeline, Inc. v. Buena Vista Home Entertainment, Inc., 342 F.3d 191, 197 (3d Cir. 2003)….”

A closing comment: if the judges find against Google Print, they basically have to invalidate the entire process of search engine servers storing masses of online copyrighted material, the corpus of which they access in order to provide useful search results in “snippet” form. A decision for the Author’s Guild would simply lead to internet search chaos, and that is not the role of the courts. They have to apply the law sensibly. Hence, we think Google Print will win.

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Author’s Guild v. Google Print (GooglePrint)

With reference to our immediately previous posting, we have looked around the blogosphere for important opinions on the suit by the Author’s Guild against Google and have found the following, to which we add our own grain of salt, as appropriate.

Lawrence Lessig at Lessig Blog comments:

“So too should common sense revolt at the claims of this law suit. I’m an academic, so this is a bit biased, but: Google Print could be the most important contribution to the spread of knowledge since Jefferson dreamed of national libraries. It is an astonishing opportunity to revive our cultural past, and make it accessible.”

Eric Goldman in his Technology & Marketing Law Blog comments on the precedential case of Kelly v. Arriba Soft Corporation, writing:

The Ninth Circuit found that displaying thumbnail versions of photographs was fair use. The Ninth Circuit also originally found that displaying the full-size versions of the photos would not be fair use, although the Ninth Circuit (18 months later) realized that it had ruled on a question that neither party had litigated, and it withdrew that part of the opinion. The resulting mess of the case is so confusing and questionable as precedent that I don’t teach the case in Cyberlaw.”

However, in the view of LawPundit, the logic of the court’s revised ruling in Kelly v. Arriba Soft Corporation on the “fair use” of thumbnail images by a search engine is in fact quite clear. We quote our excerpted version below, which omits original footnotes, although some of their relevant content is included by us in our own bracketed writing:

The Opinion filed February 6, 2002, slip op. 1953, and appearing at 280 F.3d 934 (9th Cir. 2002), is withdrawn. It may not be cited as precedent by or to this court or any district court of the Ninth Circuit….

T.G. NELSON, Circuit Judge [delivered the opinion of the Court]:

A claim of copyright infringement is subject to certain statutory exceptions, including the fair use exception. This exception
[citing Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1399 (9th Cir. 1997)] “permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.” The statute sets out four factors to consider in determining whether the use in a particular case is a fair use. [The four factors are: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (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. 17 U.S.C. § 107.] We must balance these factors in light of the objectives of copyright law, rather than view them as definitive or determinative tests. We now turn to the four fair use factors.

1. Purpose and character of the use.

[This part of the opinion can be applied in the case of Author’s Guild v. Google to the argument that Google’s Google Print project constitutes copyright infringement because Google is a commercial enterprise. This argument does not hold. Transformative use is permitted, also by commercial enterprises.]

The Supreme Court has rejected the proposition that a commercial use of the copyrighted material ends the inquiry under this factor. Instead, [citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)] “[t]he central purpose of this investigation is to see … whether the new work merely supersede[s] the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is transformative.”

The more transformative the new work, the less important the other factors, including commercialism, become. There is no dispute that Arriba operates its web site for commercial purposes and that Kelly’s images were part of Arriba’s search engine database. As the district court found, while such use of Kelly’s images was commercial, it was more incidental and less exploitative in nature than more traditional types of commercial use. Arriba was neither using Kelly’s images to directly promote its web site nor trying to profit by selling Kelly’s images.

Instead, Kelly’s images were among thousands of images in Arriba’s search engine database. Because the use of Kelly’s images was not highly exploitative, the commercial nature of the use weighs only slightly against a finding of fair use. The second part of the inquiry as to this factor involves the transformative nature of the use. We must determine if Arriba’s use of the images merely superseded the object of the originals or instead added a further purpose or different character. We find that Arriba’s use of Kelly’s images for its thumbnails was transformative.

Although Arriba made exact replications of Kelly’s images, the thumbnails were much smaller, lower-resolution images that served an entirely different function than Kelly’s original images. Kelly’s images are artistic works intended to inform and to engage the viewer in an aesthetic experience. His images are used to portray scenes from the American West in an aesthetic manner. Arriba’s use of Kelly’s images in the thumbnails is unrelated to any aesthetic purpose.

Arriba’s search engine functions as a tool to help index and improve access to images on the internet and their related web sites….

This case involves more than merely a retransmission of Kelly’s images in a different medium.

Arriba’s use of the images serves a different function than Kelly’s use — improving access to information on the internet versus artistic expression…. Because Arriba’s use is not superseding Kelly’s use but, rather, has created a different purpose for the images, Arriba’s use is transformative.

The Copyright Act was intended to promote creativity, thereby benefitting the artist and the public alike. To preserve the potential future use of artistic works for purposes of teaching, research, criticism, and news reporting, Congress created the fair use exception. Arriba’s use of Kelly’s images promotes the goals of the Copyright Act and the fair use exception. The thumbnails do not stifle artistic creativity because they are not used for illustrative or artistic purposes and therefore do not supplant the need for the originals. In addition, they benefit the public by enhancing information-gathering techniques on the internet.

[Those above statements in the opinion support Google Print. Indeed, this is Google’s strongest argument. Google Print actually promotes the INTENT of the Copyright Act.]

2. Nature of the copyrighted work.

[In the case of Google Print, the works to be scanned in libraries and to be listed on Google are published works which the copyright holders intended for public consumption. Accordingly, the public also has the RIGHT to be able to find these works and to discover what they are about using modern search methods, without this being a copyright infringement.]

[Citing A&M Records, 239 F.3d at 1016 (citing Campbell, 510 U.S. at 586)]
“Works that are creative in nature are closer to the core of intended copyright protection than are more fact-based works.” Photographs that are meant to be viewed by the public for informative and aesthetic purposes, such as Kelly’s, are generally creative in nature. The fact that a work is published or unpublished also is a critical element of its nature. Published works are more likely to qualify as fair use because the first appearance of the artist’s expression has already occurred….

3. Amount and substantiality of portion used.

[In the case of Author’s Guild v. Google, it would appear – according to the logic of Kelly v. Arriba Soft Corporation – that scanning of entire books is permitted if the purpose and character of use is transformative and such scanning is required to perform the permissible transformative use.]

[Citing Worldwide Church of God, 227 F.3d at 1118]
“While wholesale copying does not preclude fair use per se, copying an entire work militates against a finding of fair use.” However, the extent of permissible copying varies with the purpose and character of the use. If the secondary user only copies as much as is necessary for his or her intended use, then this factor will not weigh against him or her. This factor neither weighs for nor
against either party because, although Arriba did copy each of Kelly’s images as a whole, it was reasonable to do so in light of Arriba’s use of the images. It was necessary for Arriba to copy the entire image to allow users to recognize the image and decide whether to pursue more information about the image or the originating web site. If Arriba only copied part of the image, it would be more difficult to identify it, thereby reducing the usefulness of the visual search engine.

[That same logic applies to books and finding the material presented in them.]

4. Effect of the use upon the potential market for or value of the copyrighted work.

[There may be individual cases unknown to us where the scanning and listing of works on search engines might harm the potential market for or value of a copyrighted work, but 99% of all published works would not be harmed in their potential market or value in any way. Indeed, a good percentage of authors would find that the potential market or value of the copyrighted work would increase because Google Print would provide the opportunity that their works – and especially the content of those works – be findable by the public.]

This last factor requires courts to consider [citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590 (1994), quoting 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 13.05[A][4] (1993)] “not only the extent of market harm caused by the particular actions of the alleged infringer, but also ‘whether unrestricted and widespread conduct of the sort engaged in by the defendant . . . would result in a substantially adverse impact on the potential market for the original.'” A transformative work is less likely to have an adverse impact on the market of the original than a work that merely supersedes the copyrighted work…. Arriba’s use of Kelly’s images in its thumbnails does not harm the market for Kelly’s images or the value of his images. By showing the thumbnails on its results page when users entered terms related to Kelly’s images, the search engine would guide users to Kelly’s web site rather than away from it….


We hold that Arriba’s reproduction of Kelly’s images for use as thumbnails in Arriba’s search engine is a fair use under the Copyright Act.”

Scrivener’s Error points out accurately that the actual copyright to most trade books still resides with the author but then goes forward to make the error in thinking that Google’s opt-in or opt-out option has any major relevance for the judicial decision in this case. It does not. The major question is whether Google’s scanning of library books for the purposes of listing such books on a search engine is a transformative use – and the answer can only be – yes, it is, depending upon how that material is presented online. The opt-in or opt-out function has merely to do with the time at which a copyright holder gives permission – which is in fact not even required for a transformative use.

William Patry has changed his mind from his original opinion at The Patry Copyright Blog after reading Jonathan Band’s legal analysis in the interim. He writes at Google Revisited:

“So in the Google project, why should we care if there are server copies? The purposes for the copies in connection with the Print Library project is to give people access to knowledge about the existence of the book as well as a tiny amount of text. That is of great help to researchers and hopefully to authors and publishers of the books too. It in no way harms copyright owners unless the project becomes something else, namely a full-text service which then is a market substitute.”

Such a change of heart can only be based on a better subsequent analysis of the applicable law, which, in our view, clearly favors Google.

Mike Madison at the Conglomerate writes:

“Books are really, really important things culturally, particularly in Western culture. Have been for hundreds of years. Almost everyone loves books and depends on books. And books are absolutely central to modern copyright law, both conceptually and doctrinally. (They’re even more important than authors, in my view. But I’ll take on one controversial topic at a time.) Books are fixed, limited containers of creativity. Books have beginnings, middles, and ends. Without books, we wouldn’t have “works,” and without “works” we wouldn’t know how to process questions of incentives and questions of access. We wouldn’t know where to put the author’s “moral right,” if there is one; we wouldn’t know what to refer to when we make “fair use” of a work. We wouldn’t know what to distribute, and distribution of creativity is the ultimate goal of the whole system.”

Susan Crawford blog writes:

“Get interested in GooglePrint. It’s one of the best plans that Google has, and it needs to happen. No one is going to bring more books to the attention of the world — and help more authors — than Google. Here are all the reasons that we should applaud Google for going forward with GooglePrint, and all the reasons why Google will prevail in the (sadly) recently-filed lawsuit.”

Solveig Singleton at IPcentral Weblog predicts that Google will settle the case. Our opinion is that Google would be idiots to give in. They are in the right.

This class action is a violation of the spirit of the Class-Action Fairness Act of 2005. Some few are trying here to profit at the expense of the rest of the authors of the country. No damage has been done and yet some authors already want to obtain damage payments of some kind. The Author’s Guild has no right to try to represent copyright holders in a class action for a right which is individual to each copyright owner. The class action suit by the Author’s Guild against Google is nothing more than an attempted preemption of that individual right of copyright. This is a far greater danger to copyright owners’ rights than anything that Google is doing.

See also Scrivener’s Error for a listing of errors in the Author’s Guild class action complaint.

James DeLong at IPcentral Weblog observes:
“Google might well win a decision that copying a whole book so that individualized snippets can be made available is itself a fair use because it greatly reduces overall transaction costs in the society. I find this argument persuasive, though it would be interesting to hear the other side.”

Andrew Raff at IPTA Blog in “Google, Publishers, Copies and “Being Evil” has a good overview of blog postings on this topic.

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