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Attorneys

When Copying is Not Copyright Infringement

December 15 2015

By: Audrey A. Millemann

A longstanding battle between Google and the authors of published books has been resolved (at least for now) in favor of Google. The Second Circuit Court of Appeals has held that Google’s use of copyrighted books in its Library Project and Google Books website, without the permission of the authors, is fair use and therefore not copyright infringement. The Authors Guild v. Google, Inc. (2nd Cir. 2015) 804 F.3d 202.

In 2004, Google began its Library Project. Google entered into agreements with some of the world’s leading research libraries, including the University of California, the University of Michigan, Harvard, Stanford, Columbia, Princeton, the New York Public Library, and Oxford. Under the agreements, the libraries submitted certain books to Google which Google digitally scanned, made machine-readable texts, and indexed the texts. Google has now scanned and indexed over 20 million books. Some of the books were copyrighted, while others were in the public domain. Most of the books were out of print, non-fiction books. The digital copies are stored on Google’s servers.

The public can access Google’s database of machine-readable texts through the Google Books website. On the website, the user can search for key words and find all books that include the key words and the number of times the search terms appear in each book. The search results also include a short summary description of each book and may include a link to purchase the book or the names of the libraries where the book is located. The website also offers the user the ability to see up to three snippets (segments of about an eighth of a page) of the text of the book. Searches for different words will turn up different snippets, but one snippet out of every page and one page out of every ten pages of each book are permanently inaccessible to the user (referred to by Google as “blacklisted”). In 2005, Google agreed to remove the snippet feature for any book at the copyright owner’s request. Google does not permit advertising in the Google Books searches and does not get paid for any sales of books.

According to its agreement with the libraries, Google allows each library to download a digital image and a machine-readable text copy of every book that the library has submitted to Google. The libraries are required to follow copyright laws and police their users to prevent violations of copyright laws.

In 2005, the plaintiffs filed a putative class action against Google in the Southern District of New York, alleging copyright infringement. The district court granted class certification, but on appeal, the Second Circuit vacated the decision. The Second Circuit held that the district court should resolve Google’s fair use defense before deciding class certification.

Google moved for summary judgment on its fair use defense. The district court granted the motion in 2013, dismissing the case. The Second Circuit affirmed the district court’s decision on October 16, 2015.

The Court of Appeals explained that “the ultimate goal of copyright is to expand public knowledge and understanding . . . “ The doctrine of fair use, developed by the courts and now codified in section 107 of the Copyright Act of 1976, permits unauthorized copying in certain circumstances in order to promote the expansion of knowledge. Fair use is an affirmative defense, for which the defendant has the burden of proof. The analysis of fair use is not clear-cut, but depends on the particular facts of each case.

In determining whether the fair-use defense applies, courts must consider the following factors: (1) the purpose and character of the use (including commercial versus a nonprofit educational purpose); (2) the nature of the copyrighted work; (3) the amount and substantiality of the work copied; and (4) the effect of the use on the market for the copyrighted work. 17 U.S.C. §107. Courts have emphasized the fourth factor, the effect of the use on the market for the copyrighted work, noting the importance of protecting authors’ rights to profit from their work. The first factor, the nature and character of the use, is also important, especially if the use is for a new or transformative purpose that is not a substitute for the original work.

The Second Circuit applied the four factors of section 107 to Google’s Library Project and the Google Books website to decide whether Google’s use constituted fair use. As to the first factor, the court held that the factor was met because Google’s creation of a digital, searchable database and its provision of snippets of text to the user was a new and transformative use. The possibility that Google might indirectly profit from its Google Books website service was not significant enough to override the transformative nature of its use because the Google search was not a substitute for the original work. The court emphasized that even if Google’s use was commercial, a commercial use is not presumed to be unfair; for example, the copying of copyrighted works in news reporting, book reviews, and parody is done for a profitable purpose, but is almost always fair use. The court pointed out that the reverse is also true; copying done for a nonprofit educational purpose is not presumed to be fair use.

In addressing the second factor, the nature of the copyrighted work, the court said that this factor was rarely dispositive. The fact that the copyrighted works Google copied were nonfiction works did not change the court’s analysis or conclusion.

With respect to the third factor, the amount and substantiality of the work copied, the court explained that the copying of smaller or less significant portions of a copyrighted work is more likely to be fair use. The rationale is that such copying is less likely to be a substitute for the copyrighted work, and therefore, not likely to affect the copyright owner’s profits. However, the fact that Google had copied the entire book was not determinative. The court held that this factor was met because Google did not provide the entire copy to the public, but needed to make a copy of the entire work in order to provide its transformative use (the ability to search for a particular term throughout the entire work and find out how many times the term was used). The court said that Google’s restrictions on the snippet feature were substantial and would prevent the user from obtaining a substitute for the copyrighted work.

The fourth factor, the effect of the use on the market for the copyrighted book, is the most important factor. If the copy serves as a substitute for the copyrighted work, there is no fair use. The court found that Google’s searches and its snippet feature did not provide a substitute for the copyrighted work.

After thoroughly analyzing the four factors of section 107 and considering several other arguments made by the plaintiffs, the court held that Google’s use was a non-infringing fair use. In reaching this conclusion, the court reiterated the beneficial value to the public of Google’s Library Project and Google Books website, describing these uses as “highly transformative.”