Google Books Project Qualifies as Fair Use, Federal Judge Says

 NEW YORK — (Mealey’s) Citing the “significant public benefits” offered by the Google Books project, Judge Denny Chin of the Second Circuit U.S. Court of Appeals, sitting by designation in the U.S. District Court for the Southern District of New York, on Nov. 14 dismissed copyright infringement claims levied against Google Inc. (The Author’s Guild Inc. et al. v. Google Inc., No. 05-8136, S.D. N.Y.; See July 2013, Page 12).

Google Books not only advances the progress of the arts and sciences but does so “while maintaining respectful consideration for the rights of authors and other creative individuals, without adversely impacting the rights of copyright holders,” according to Judge Chin.

“It has become an invaluable research tool that permits students, teachers, librarians, and others to more efficiently identify and locate books. It has given scholars the ability, for the first time, to conduct full-text searches of tens of millions of books. It preserves books, in particular out-of-print and old books that have been forgotten in the bowels of libraries, and it gives them new life. It facilitates access to books for print-disabled and remote or underserved populations. It generates new audiences and creates new sources of income for authors and publishers. Indeed, all society benefits,” the judge held.

Digital Initiatives

In December 2004, Google announced two digital books initiatives. One, called “Google Print” and later renamed the “Partner Program,” involved the hosting and display of material provided by rights holders; the other, known as the “Library Project” or “Books Project,” involved the digital scanning of books from the collections of the New York Public Library, the Library of Congress and a number of university libraries. The Authors Guild Inc. in September 2005 sued Google in the District Court before Judge Chin, then a district judge, protesting Google’s plans to reproduce the authors’ works without permission. A group of publishers headed by McGraw-Hill Cos. Inc. filed a similar action a month later. After more than two years of negotiations, the parties proposed a settlement, but Judge Chin — who by then had been named to the Second Circuit but continued to oversee the case — refused to endorse the agreement, finding it to be neither reasonable nor fair because it would release claims not properly before the court.

The Authors Guild and three named plaintiffs then filed a fourth amended complaint in October 2011 on behalf of other author plaintiffs, alleging infringement and seeking injunctive and declaratory relief. A corresponding class certification motion identified plaintiffs Betty Miles, Joseph Goulden and Jim Bouton, who each own copyrighted works that have purportedly been digitized by Google without their permission. In May 2012, Judge Chin granted the author plaintiffs’ motion for class certification, finding that certification was warranted because the requirements of predominance and superiority were both met by the plaintiffs. In the same ruling, Judge Chin denied Google’s motion to dismiss on the basis that the plaintiffs allegedly lacked standing. Shortly thereafter, Judge Chin issued a corresponding order confirming the class certification and lead plaintiffs.

Google answered the fourth amended complaint in June 2012, denying the claims, asserting a fair use defense and seeking summary judgment. The plaintiffs counter-moved for summary judgment, and Google filed an appeal of the class certification to the Second Circuit. Although Judge Chin denied Google’s motion to stay the matter pending resolution of the certification appeal, the Second Circuit overruled that in September, ordering all trial court proceedings to be stayed. Google told the Second Circuit that it intended to assert a fair use defense in the trial court, which it said might moot the litigation, and the Second Circuit agreed. The case was then remanded to Judge Chin with instructions to address the question of fair use.

Value Added

As an initial matter, Judge Chin cited the holding in Campbell v. Acuff-Rose Music Inc., 510 U.S. 569, 575 (1994) , whereby an unauthorized use can qualify as fair if it fulfills “copyrights very purpose, to promote the Progress of Science and useful Arts.” [an enhanced version of this opinion is available to lexis.com subscribers]

Judge Chin then turned to the four factors necessary for a finding of fair use pursuant to Section 107 of the Copyright Act. With regard to the purpose and character of the use, Judge Chin deemed Google’s practice of providing book “snippets” highly transformative. Likening the practice to that of using thumbnail images for photography, Judge Chin wrote that “snippets help users locate books and determine whether they may be of interest.”

“Google Books thus uses words for a different purpose — it uses snippets of text to act as pointers directing users to a broad selection of books. Similarly, Google Books is also transformative in the sense that it has transformed book text into data for purposes of substantive research, including data mining and text mining in new areas, thereby opening up new fields of research. Words in books are being used in a way they have not been used before. Google Books has created something new in the use of book text — the frequency of words and trends in their usage provide substantive information. Google Books does not supersede or supplant books because it is not a tool to be used to read books. Instead, it ‘adds value to the original’ and allows for ‘the creation of new information, new aesthetics, new insights and understandings. . . . Hence, the use is transformative,’” Judge Chin added, citing Leval, “Toward a Fair Use Standard,” 103 Harv. L. Rev. at 1111[an enhanced version of this article is available to lexis.com subscribers].

Book Sales Improved

With regard to the second factor — the nature of the copyrighted work — Judge Chin noted that “the vast majority of the books in Google Books are non-fiction,” which favors a finding of fair use. Lastly, although the third factor — the amount and substantiality of the portion used — weighs slightly against fair use, in that Google scans the full text of each work, Judge Chin found that the fourth factor — the effect of the use upon the potential market for or value of the copyrighted work — lends strong support to the defendant. “A reasonable fact-finder could only find that Google Books enhances the sales of books to the benefit of copyright holders,” Judge Chin wrote, for “an important factor in the success of an individual title is whether it is discovered — whether potential readers learn of its existence.”

“Google Books provides a way for authors’ works to become noticed, much like traditional in-store book displays. Indeed, both librarians and their patrons use Google Books to identify books to purchase. Many authors have noted that online browsing in general and Google Books in particular helps readers find their work, thus increasing their audiences. Further, Google provides convenient links to booksellers to make it easy for a reader to order a book. In this day and age of online shopping, there can be no doubt but that Google Books improves books sales,” Judge Chin added.

Lawful Uses

Lastly, Judge Chin found that Google is also entitled to summary judgment on the plaintiffs’ claims as they relate to copies of scanned books made available to libraries because the libraries are provided only with the technological means to make digital copies of books they already own.

“The purpose of the library copies is to advance the libraries’ lawful uses of the digitized books consistent with the copyright law. The libraries then use these digital copies in transformative ways. They create their own full-text searchable indices of books, maintain copies for purposes of preservation, and make copies available to print-disabled individuals, expanding access for them in unprecedented ways. Google's actions in providing the libraries with the ability to engage in activities that advance the arts and sciences constitute fair use,” Judge Chin concluded.

The plaintiffs are represented by Michael J. Boni, Joshua D. Snyder and John E. Sindoni of Boni & Zack in Bala Cynwyd, Pa., Sanford P. Dumain of Milberg in New York and Edward H. Rosenthal and Jeremy S. Goldman of Frankfurt, Kurnit, Klein & Selz in New York. Daralyn J. Durie, Joseph C. Gratz, David McGowan and Genevieve P. Rosloff of Durie Tangri in San Francisco represent Google.

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