Google Books' Library Project is fair use

Author: Eleonora Rosati (University of Cambridge)

The Authors Guild, Inc and Others v Google Inc, USDC SDNY 05 Civ 8136 (DC)

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpt240, first published online: January 8, 2014

In late 2013, Judge Chin issued his much-awaited summary judgment in the long-running dispute between the Authors Guild and Google over the latter's Library Project, and held that Google's activities were protected as fair use.

Legal context

Under 17 USC s 107, the following factors must be considered in order to determine whether the use made of a copyright-protected work may be considered fair: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes (a key consideration in relation to this factor is whether the use is transformative, ie whether the new work merely supersedes or supplants the original creation or whether, instead, it adds something new, with a further purpose or different character); (2) the nature of the copyright work; (3) the amount and substantiality of the portion used in relation to the copyright work as a whole; and (4) the effect of the use upon the potential market for or value of the copyright work.

Facts

Since 2004, Google has scanned over 20 million books—both in-copyright and public domain works—in their entirety (with approximately 93 per cent of books being non-fiction, and the great majority of works being out-of-commerce), delivered digital copies to participating libraries, created an electronic database of books and made text available for online searches through the use of snippets. Although users can search the full text of all the books in the corpus, it is not possible to view a complete copy of a snippet-view book. Participating libraries may download a digital copy of each book scanned from their collections, but not copies from other libraries' collections.

In 2005, five member publishers of the Association of American Publishers (AAP) and the Authors Guild sued Google for copyright infringement over unauthorized scanning of books. In late 2012, Google and the AAP concluded a settlement agreement, which however did not affect litigation between the Authors Guild and Google. Shortly after the conclusion of the settlement agreement, Google submitted a brief to the US Second Circuit Court of Appeals, in which it sought to reject Judge Denny Chin's ruling earlier that year, a ruling that let the Authors Guild sue Google on behalf of all authors whose books were scanned without permission. The Second Circuit substantially accepted Google's submission and held that Judge Chin's class certification had been premature in the absence of a determination by Judge Chin himself of the merits of Google's fair use defence pursuant to 17 USC s 107.

Analysis

Before considering the four fair-use factors, Judge Chin highlighted the benefits of the Library Project, including that fact that it: (a) provides a new and efficient way for readers and researchers to find books; (b) promotes a type of research known as data or text mining; (c) expands access to books, for example by providing print-disabled individuals with the potential to search for books and read them in a format that is compatible with text enlargement software, text-to-speech screen access software and Braille devices; (d) helps preserve books and give them new life, for example out-of-commerce works; (e) helps authors and publishers, by offering links to sellers of the book and/or libraries listing the book as part of their collections.

Overall, the judge found that Google's use of copyright-protected content is highly transformative, and that Google Books does not supersede or supplant books, in that it is not a tool to be used to read books. Although

Google is a for-profit entity and Google Books is largely a commercial enterprise … even assuming Google's principal motivation is profit, the fact is that Google serves several important educational purposes.

These considerations led the judge to conclude that the first fair use factor weighed in favour of Google. As regards the second factor, two features of the Library Project favoured a finding of fair use, these being that most scanned works were non-fiction books, and that the books were published works. In relation to the amount and substantiality of the portion used, although Google limits the amount of text displayed in response to a search, the fact that Google scanned full texts and offers full-text search of books could weigh slightly against a finding of fair use. However, Google does not sell its scans, and the scans do not replace the books. These, together with further consideration that Google Books actually enhances the sales of books to the benefit of copyright holders, were all viewed favourably in respect of the fourth fair use factor.

The judge concluded that, overall, the Library Project provides significant public benefits, and thus granted Google's motion for summary judgment.

Practical significance

Although the Authors Guild has already announced its intention to appeal, Judge Chin's summary judgment order represents an important victory for Google. The decision also provides a significant interpretation of the controversial notion of commercial use in the first use factor. Judge Chin appeared to approve implicitly the Second Circuit in Blanch v Koons, 467 F3d 244 (2d Cir 2006), which held (at 253) that a commercial use should weigh against a finding of fair use only when the defendant ‘directly and exclusively acquires conspicuous financial use of the copyrighted material’. As a matter of practice, distinguishing commercial and non-commercial uses may be difficult, as most publicly disseminated uses involve some monetary gain, whether direct or indirect (William F Patry, Patry on Fair Use, Thomson Reuters, Eagan (MN, USA) (2013) 105–106.)

The decision is also extremely relevant outside the USA, in that it elicits further reflection on three key issues in current EU copyright reform debate. First, there is no mention of orphan works in Judge Chin's opinion. In rejecting the proposed revised settlement agreement between Google, AAP and the Authors Guild in 2011, among other things, the judge held that the questions of who should be entrusted with guardianship over orphan books, under what terms and with what safeguards were matters more appropriately decided by US Congress than through an agreement among private, self-interested parties. Omission of orphan works issues from the ruling might lead to the conclusion that—even lacking specific legislation in the USA—presence of orphan works in libraries does not represent an insurmountable obstacle to digitizing and placing them online.

Secondly, Judge Chin's understanding of text and data mining is that these are activities which fall outside the scope of copyright protection tout court. Unlike current EU debate (especially within the recent initiative from the Commission on ‘Licences for Europe’), text and data mining activities would require neither a licence nor a specific copyright exception or limitation.

Finally, the main issue remains that of copyright exceptions and limitations, as codified in Article 5 of Directive 2001/29. It is unlikely that current EU legislative framework would permit national courts to achieve outcomes similar to that of the US District Court for the Southern District of New York. As such, it is almost unavoidable that the decision on the Google Books Library Project will inform discussions on whether the EU should reform its enumerated system of exceptions and limitations and, if so, whether it should broaden their scope or even opt for an open-ended clause altogether, possibly modelled on the US fair-use doctrine.