United States: Judge Leval Illuminates Google Books Fair Use Issues - Second Circuit Affirms Summary Judgment For Defendant In Massive Copying Case

Based on the defense of fair use, the Second Circuit affirmed summary judgment for Google in the decade-long copyright battle between an authors group and the Internet search giant. The lawsuit concerned Google's right to copy millions of books in order to allow snippet searches and text/data mining of the works. Making digital copies "to provide a search function is a transformative use," the panel held, "which augments public knowledge by making available information about Plaintiffs' books without providing the public with a substantial substitute for matter protected by the Plaintiffs' copyright...." Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015).

To many legal observers, the outcome seemed obvious in light of the limited uses to which Google sought to affix the imprimatur of fair use. But the opinion, authored by Judge Pierre Leval, takes a number of original turns in reaching this conclusion. Twenty-five years ago, Judge Leval wrote the seminal copyright article on which rested the Supreme Court's "transformative fair use" analysis in Campbell v. Acuff-Rose, 510 U.S. 569 (1994).

The Google Books case gave Judge Leval an opportunity to return to the issue and elucidate transformativeness in a technology context.

Factual Background/Procedural Context

Beginning in 2004, Google began scanning and digitizing books in the collections of the New York Public Library, the Library of Congress, and various university libraries. The vast majority of the books were non-fiction, and most were out of print. The works included books still under copyright as well as books in the public domain.

Google's indexing allows users to search the full text of more than 20 million books. A list of books responsive to a search is made available, and the user can go to a page that provides links to websites offering the book for sale if still in print, and information including a list of the words and terms that appear most frequently in the book.

In "snippet view," Google also displays about an eighth of a page around the search term. Users cannot view or download the full texts, and Google has taken precautions to make it impossible, as a practical matter, for users to read all or a substantial part of a book through repeated searches. The Google Books service is free and there is no advertising on Google Books pages.

The Authors Guild and three author-plaintiffs filed suit in 2005. The relatively narrow fair use issue—whether it was legitimate for Google to copy the works and provide the search and snippet functions—was long overshadowed by controversies over an attempted settlement.

After the district court rejected the Google Books Settlement in 2011, the case moved forward on the merits. In November 2013, the court granted Google's motion for summary judgment based on fair use.

Legal Standards

"Fair use" is a judicially developed limitation on the scope of copyright, now codified in 17 U.S.C. § 107. The section provides courts shall consider four factors:

  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."

Ever since Acuff-Rose, whether the new work or the purpose of the use is transformative has been analyzed as part of the first factor and a touchstone of fair use. This inquiry asks:

[W]hether 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;... in other words, whether and to what extent the new work is "transformative."

Transformativeness and Google Books

In Google Books, Judge Leval began by cautioning, "The word 'transformative' cannot be taken too literally as a sufficient key to understanding the elements of fair use. It is rather a suggestive symbol for a complex thought...."

The court observed that "the word 'transform' also plays a role in defining 'derivative works'"—which (per 17 U.S.C. § 101) include "any... form in which a work may be... transformed." How are we to distinguish the transformations that others are fairly entitled to use from those that are within the exclusive rights of the original authors? Leval argues that "derivative works generally involve transformations in the nature of changes of form," as opposed to new works that criticize and comment on the original or provide information about it.

Regarding Google's snippet searches, the court had "no difficulty concluding" that "the creation of a full-text searchable database is a quintessentially transformative use." This is so because "the result of a word search is different in purpose, character, expression, meaning, and message from the page (and the book) from which it is drawn." Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir. 2014). And snippet view facilitates the informational function by putting the search hit in context.

Importantly, the court noted that search results "make[] possible new forms of research, known as 'text mining' and 'data mining.'"

The Google research tool:

[F]urnish[es] statistical information ... about the frequency of word and phrase usage over centuries. This tool permits users to discern fluctuations of interest in a particular subject over time and space by showing increases and decreases in the frequency of reference and usage in different periods and different linguistic regions. (footnote omitted).

Further, the Google functionality "allows researchers to comb over the tens of millions of books Google has scanned in order... to derive information on how nomenclature, linguistic usage, and literary style have changed over time."

Derivative Work Rights

The authors asserted that, even apart from the challenged copying, "they have a derivative right in the application of search and snippet view functions to their works, and that Google has usurped their exclusive market for such derivatives."

The court swiftly disposed of this claim: Google's search and snippet functions are means of providing information to users, and copyrights do "not include an exclusive right to furnish [this] kind of information about the works...."

The statutory definition of derivative, "while imprecise, strongly implies that derivative works over which the author of the original enjoys exclusive rights ordinarily are those that represent the protected aspects of the original work, i.e., its expressive content, converted into an altered form...." Google's search and snippet functions "do[] not allow access in any substantial way to a book's expressive content," therefore they do not impinge on the derivative right.

Turning to the other consideration under the first factor, whether the "use is of a commercial nature,"

Plaintiffs stress that Google is profit-motivated and seeks to use its dominance of book search to fortify its overall dominance of the Internet search market, and that thereby Google indirectly reaps profits from the Google Books functions.

The court held that this consideration is seldom given or entitled to much weight, particularly when there is a strong showing that the use is transformative and the new use does not act as a substitute for the original works.

Remaining Fair Use Factors

The second factor concerns "the nature of the copyrighted work," usually meaning whether it is factual as opposed to fiction. The books in the Google corpus are largely non-fiction, a consideration commonly said to tilt toward a fair use finding. But this was also of little moment to the court. "The second factor has rarely played a significant role in the determination of a fair use dispute," the court observed, almost dismissing the second factor completely.

The third statutory factor considers how much of the copyrighted work has been used. The court explained that this is a surrogate for the possible economic harm considered in the fourth factor because the more taken, the more likely that the use will serve as a substitute for the original work.

Not so in this case. Though Google copied the entirety of the works, there is no market substitution because the complete copies are not made available to the public. As the court explained, Google has limited the search and snippet features in various ways that make it impossible for users to read even a substantial part of an entire work in Google Book search.

Regarding the fourth factor, "the effect of the use upon the potential market for or value of the copyrighted work," the court acknowledged that snippet view could cause some loss of sales. Nonetheless, merely "some loss of sales" will not suffice; "[t]here must be a meaningful or significant effect 'upon the potential market for or value of the copyrighted work.'"

Further, in an unusual twist, Judge Leval focused on the nature of any adverse economic impact: "the type of loss of sale [possible here] will generally occur in relation to interests that are not protected by the copyright." Snippet search may sate a user's need for a copyrighted book because the snippet provides an historical fact the user seeks. But copyright protects expression, not facts, and "it would be a rare case in which the searcher's interest in the protected aspect of the author's work would be satisfied by what is available from snippet view."

The court concluded that Google's uses are fair.

Hacking

Plaintiffs argued that Google's copying should not be deemed a fair use because digitization and storage of plaintiffs' works exposes them to the risk that hackers might access and make the books widely available.

The court held the concern to be theoretically sound, but not supported by the evidence in this case. Google showed that the Google Books corpus was "protected by the same impressive security measures used by Google to guard its own confidential information," and Plaintiffs failed to rebut Google's showing.

The Library Copies

Finally, plaintiffs contended that providing digitized copies to the libraries that provided books for the project was not a fair use, and that plaintiffs were exposed to the risk that the libraries would use their copies in an infringing way or fail to secure them.

Since the libraries' intended or potential uses of the copies represented fair use, they had a right to have digitized copies created for them. The risk they might misuse their copies was speculative, and Google was not liable for that danger when the copies were given subject to an agreement that the libraries would use their copies in a manner consistent with copyright law.

Conclusion

Unless the Second Circuit was to ignore a substantial line of cases ascribing transformativeness to functional uses of expressive works, or was daunted by the scope of the copying, the conclusion that Google's use was fair seemed inevitable. The purposes were different from those of the original works. The uses did not displace the demand for the originals. And the authors' alleged derivative rights were not granted by copyright law.

The Second Circuit went beyond the predictable, however, on a number of points.

  • It distinguished between fair use transformations and derivative work transformations, based on whether the changes between the original and the new work are merely of form.
  • It broke new ground regarding the fourth factor: (1) by clarifying that adverse economic impact must be of a significant scope; and (2) by considering whether any adverse economic impact is based on the new work's exploitation of protected aspects of the original.
  • Finally, it confirmed in this case of first impression that copying to facilitate text and data mining is transformative and that data mining itself does not impinge on any rights of copyright holders.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
25 Sep 2018, Conference, California, United States

We're excited to introduce Women's IP Strategy, a 2-day conference that tackles both the IP, legal as well as broader career development obstacles, risks and rewards for women lawyers working in male-dominant industries.

2 Oct 2018, Webinar, California, United States

This CLE webinar will offer suggestions to litigators to help them comply with the new GDPR during e-discovery.

10 Oct 2018, Webinar, California, United States

For the past years, 3D printing has significantly revolutionized the business industry as it provides innovations and improvement to pre-existing processes.

Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
Brinks Gilson & Lione
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
Brinks Gilson & Lione
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions