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Google Books Protected as Fair Use: SDNY
Practical Law Legal Update 7-549-3102 (Approx. 5 pages)
Google Books Protected as Fair Use: SDNY
by Practical Law Intellectual Property & Technology
| Published on 18 Nov 2013 • USA (National/Federal) |
In The Authors Guild, Inc. v. Google Inc., the US District Court for the Southern District of New York granted Google's motion for summary judgment on The Authors Guild's claims of copyright infringement, finding Google was protected by the fair use doctrine.
On November 14, 2013, the US District Court for the Southern District of New York issued a decision in The Authors Guild, Inc. v. Google Inc., granting Google's motion for summary judgment on The Authors Guild's copyright infringement claims and denying The Authors Guild's motion for same. The district court found that Google's unauthorized digitization of copyrighted books was protected by the fair use doctrine.
Background
In 2004, Google launched two digital book projects:
- The Partner Program which involved hosting and displaying material provided by book publishers and other rights holders.
- The Library Project which involved digitally scanning books contained in library collections, including the New York Public Library, the Library of Congress and a number of university libraries.
Collectively, both projects are known as Google Books, which is comprised of all types of books, the majority of which are non-fiction works and books that are now out-of-print.
Google Books Project
As part of the Partner Program, approximately 2.5 million books are displayed with permission of 45,000 rights holders with the aim of helping publishers sell books and having books be discovered. To this end, publishers provided Google with a digital copy of their book if one exists, or a physical copy for Google to scan if no digital copy is available. Publishers also determine how much of the book Google may make browsable by users. While Google initially shared any advertising revenue it received from ads displayed on Partner Program book pages with the publishers or other rights holders, it no longer displays ads in connection with all Google Books pages. Lastly, Google provides an "About the Book" page for each book that offers links to various book-selling outlets and libraries listing the book in their collection.
As part of the Library Project, participating libraries provided Google with more than 20 million books which it scanned and uploaded to its servers. Libraries could then download a digital copy of each book scanned from their collection but could not download a digital copy created from another library's book. While each library determined whether to allow Google to scan in-copyright books as well as public domain works, Google did not seek or obtain permission from the copyright holders to digitally copy or display verbatim copies of in-copyright books, nor has Google compensated copyright holders.
The most notable feature of the Google Books project is that Google analyzes each scan of each book and creates an index of all scanned books which links each word or phrase in a book with all of the locations in all of the books in which the word or phrase is found. This functionality allows a user to search the full text of all books in the Google Books compendium.
When users search Google Books, Google returns a list of books which include the search term. Users can then see a snippet of text that includes the search term. To prevent users from viewing a complete copy of a particular book, Google limits the search results by:
- Fixing the position of each snippet so that users cannot manipulate their view of the text surrounding the search term.
- Limiting the search results to the first responsive snippet available on any given page.
- Black-listing one of the snippets on each page.
- Black-listing at least one out of ten pages in each book.
Procedural History
In 2005, The Authors Guild, Inc., along with three individual authors whose books were scanned by Google without their permission (together, The Authors Guild), brought a class action suit against Google for copyright infringement. The Authors Guild claimed that Google engaged in massive copyright infringement by:
- Reproducing in-copyright books.
- Distributing these reproductions to libraries.
- Publicly displaying snippets of these works in response to online search requests.
Google argued it was protected by the fair use doctrine under Section 107 of the Copyright Act.
After negotiations, the parties entered into a proposed class-wide settlement. The district court found the initial settlement to be unfair, inadequate and unreasonable. Subsequently, after the plaintiffs filed a class certification motion and Google filed a motion to dismiss, the distinct court issued an opinion denying the motion to dismiss and granting the motion for class certification.
However, in July 2013, the US Court of Appeals for the Second Circuit issued an opinion vacating the class certification, finding that Google's fair use defense must be considered before a class could be certified and remanding the case for consideration of fair use issues. For more information on the Second Circuit opinion, see Legal Update, Class Certification Premature in Google Books Case: Second Circuit.
Outcome
On remand, the district court considered both Google's and The Authors Guild's motions for summary judgment and weighed the four non-exclusive statutory factors to determine that Google's use of copyrighted works for its Google Books project was fair use under the Copyright Act.
Purpose and Character of the Use
The court found that the nature and character of the use weighed in Google's favor because:
- Google Books is highly transformative. Here, the court equated the display of snippets of text for search as similar to the display of thumbnail images of photographs for search, citing the US Court of Appeals for the Ninth Circuit's decision in Perfect 10, Inc. v. Amazon.com, Inc.
- Although Google is a for-profit entity and Google Books is a commercial enterprise, Google Books serves several important educational purposes.
Factors supporting the court's finding of transformativeness included that:
- The digitization of the copyrighted books transforms expressive text into a comprehensive word index that helps users find books.
- The display of snippets of text in search results acts as pointers directing users to a broad selection of books.
- Google Books transformed book text into data for purposes of substantive research, including data mining and text mining.
- Google Books does not supersede or supplant books because it is not a tool to use to read books.
Although the court acknowledged that a commercial use usually weighs against a finding of fair use, it noted that Google does not:
- Sell the scans it made for Google Books.
- Sell the snippets it displays.
- Run ads on the pages that contain snippets.
Because Google does not directly engage in the direct commercialization of copyrighted books, the court found that the first factor strongly favored a finding of fair use.
Nature of the Copyrighted Works
The court also found that the nature of the copyrighted works weighed in favor of fair use because the books at issue are already published and available to the public. In addition, it found the vast majority of the works are non-fiction and not entitled to an increased level of protection.
Amount and Substantiality of the Portion Used
Although Google scans full books in their entirety, the court noted that the copying of an entire work of art may still be fair use. The court noted that a defining feature of Google Books is that it offers a full-text search of books, making full-work reproduction necessary. In addition, Google limits the amount of text it displays in search results. However, even given these facts, the court found this factor to weigh slightly against a finding of fair use.
Effect on the Potential Market
The Authors Guild argued that Google Books would negatively impact the market for books and that Google Books would serve as a market replacement for books. The court rejected these arguments finding that:
- Google does not sell its scans and the scans do not replace the books.
- Although Library Project libraries can download a scan of a book in their collection, this does not affect the market for the book because the library already owns a physical copy of the book.
- It is unlikely that someone would attempt to manipulate the search function to view enough snippets to make up an entire book, especially given Google's security measures.
- A reasonable factfinder would conclude that Google Books would enhance the book sales because it provides users with a way of discovering books they might not otherwise have known.
Accordingly, the court found that the final factor weighed strongly in favor of fair use.
Overall Assessment
Weighing these factors and considering the significant public benefits of Google's service, the court found Google's actions to be fair use.
The court also found that Google would not be held liable, including under a theory of secondary liability, for making scanned copies available to libraries because this enables the libraries to use the digitized books in ways protected under copyright law.
Practical Implications
While the defendants have indicated that they will appeal the district court's ruling, this decision is noteworthy for the court's strong consideration of the public benefits arising from Google's disruptive technology. In both its recitation of the facts of the case and its weighing of the fair use factors, the court gave great weight to the ways in which Google's technology benefits society by expanding access to books and providing a valuable research tool, even where the company had engaged in the wholesale copying of copyrighted works and their conversion into a digital format.
In its findings, the court articulated the grounds on which the digitization of copyrighted works that facilitates non-expressive uses of those works may be protected.