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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