Mary Siceloff

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. (2^nd 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.”

Everyone on the West Coast knows In-N-Out Burger. For some of us Californians, the burgers may even be considered a state treasure. Doordash, on the other hand, is much less recognizable. It is an on-demand delivery service that connects its customers with local businesses. According to Doordash, it enables its users to purchase food from merchants and have it delivered within 45 minutes. While providing this service, Doordash delivered In-N-Out food products to its customers all across the nation. Unfortunately for Doordash, this seemingly innocent, and mutually beneficial, conduct resulted in it being sued in the United States District Court for the Central District of California for trademark infringement, trademark dilution, and unfair competition.

In-N-Out filed its complaint against Doordash on November 6, 2015. In the complaint, In-N-Out contends that it has not authorized Doordash to deliver its food products and that Doordash is not its affiliate. Despite these facts, In-N-Out contends that Doordash delivers food from In-N-Out and utilizes a colorable imitation mark, as well as several of In-N-Out’s registered trademarks. According to In-N-Out, the intent of this conduct is to confuse consumers as to Doordash’s authority to deliver In-N-Out’s products.

In-N-Out also contends that despite Doordash’s delivery vehicles being mobile food facilities as defined by the California Retail Food Code, Doordash does not comply with the Food Code requirements.

In-N-Out contends that the requisite likelihood of confusion exists because actual and prospective customers are likely to believe that Plaintiff has approved or licensed Doordash’s use of In-N-Out’s marks. Alternatively, In-N-Out contends that consumers would assume that Doordash is somehow affiliated with In-N-Out. According to In-N-Out, Doordash’s use of the In-N-Out marks not only implies that Doordash sells In-N-Out products, but also that the quality and services are the same as if the consumers had purchased directly from In-N-Out. Now, I find that to be a bit of a stretch, and I’m curious to see how In-N-Out will establish that, but that is its contention. In-N-Out, however, claims that the quality of services offered by Doordash, are nowhere near those of In-N-Out. Specifically, In-N-Out alleges that Doordash does not adhere with the Food Code’s requirements concerning food safety and handling practices.

I suspect that these allegations concerning food safety and handling practices are the driving force behind this lawsuit. Although claims are regularly filed to protect trademark rights, this is an interesting situation when you take a step back. Here, Doordash’s delivery of In-N-Out’s food products to consumers could arguably help In-N-Out’s bottom line by making it available to its consumers who, for some reason, are unable to get to an In-N-Out. It is hard to see how the use of In-N-Out’s marks for this purpose could harm the burger conglomerate. But that conclusion assumes that there are no food safety compliance issues. If those allegations are true, In-N-Out’s objection to Doordash delivering its food seems reasonable. But I have some reservations regarding whether a trademark infringement/dilution lawsuit is the proper vehicle for a resolution.

I am uncertain whether In-N-Out will be able to demonstrate that consumers would actually place the blame for delivery issues, such as cold food, on In-N-Out. I have faith that consumers are more intelligent than that. But with that said, In-N-Out does not have to go that far to prove its case. It only needs to establish that Doordash’s use of the marks creates a likelihood of confusion regarding In-N-Out’s association or approval of Doordash’s services. And that is much easier.

Representing copyright owners attempting to enforce online infringement is often routine, but can sometimes prove challenging. This tends to be the case when a content owner is trying to address large scale infringement of one or multiple works. Most often ISPs are cooperative, but on occasion an ISP may resist responding to a content owner when the owner is represented by an organization like Rightscorp — often referred to as “copyright trolls.” Based on the recent ruling by the Eastern District Court of Virginia against Cox Communications, an ISP is taking a huge risk ignoring infringement notices sent by Rightscorp or any similar organization.

In December of 2014, music publishers BMG Rights Management US, LLC and Round Hill Music LP sued Cox Enterprises Inc. for contributory and vicarious copyright infringement. In the complaint the music publishers allege that the ISP waived its immunity from copyright infringement liability under the Digital Millennium Copyright Act (“DMCA”) by disregarding numerous takedown notices sent on their behalf by their agent, Rightscorp, and otherwise failing to terminate the accounts of repeat infringers.

The DMCA was enacted in 1998 to implement the World Intellectual Property Organization Copyright Treaty and to update domestic copyright law for the digital age. In particular, the DMCA established a series of four “safe harbors” that allow qualifying Internet service providers to limit their liability for claims of copyright infringement based on (a) “transitory digital network communications,” (b) “system caching,” (c) “information residing on systems or networks at [the] direction of users,” and (d) “information location tools.” 17 U.S.C. §§ 512(a)-(d). To qualify for protection under any of the safe harbors, the ISP must, among other requirements, adopt and implement a “repeat infringer” policy that provides for the termination of account holders.

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