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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