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.

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