The modern war of the titans –
Zeus, will you prevail again?

In the fall of 2005, Google was sued for unauthorized reproduction and display of copyrighted works in its Google Book Search database. Google claimed that the use of the copyrighted matter is fair as it is de minimis, and benefited the people and the copyright holders by enabling access to books searched. This seemingly benevolent action was not met with absolute enthusiasm, as after all, every business has the two devils called “profit” and “competition”. The Constitution allows for monopolistic virtues of copyright protection for two reasons – incentive to creators to ensure a consistent flow of works and public benefit. The framers of the Constitution did not however, intend for there to be an unchecked usurping of the rights of creators in the name of public benefit. Fair use is fair when within the boundaries elucidated on by the Copyright Statute and interpreted by the Courts of Law in the United States. Analogically, a balancing act between benefit and incentive indicates deference needs to be paid to principles of law and ethics of fair play. Google’s claim of fair use might prevail on the display of snippets, but it might be qualified by the requirement of sharing revenue, as the snippets would not have been available without the unauthorized reproduction.

Mythology came forth in this hour with Google in the shoes (or shall I say the robe) of Zeus and the copyright holders bravely dawning the cape of the Titans. What is going to prevail – guerilla warfare tactics or the law? Time has changed dramatically and Zeus might actually have to exchange the robe for running shoes; if not to escape, then atleast to keep up with reality. This hour does not require force to sculpt the future, but correct application of the Copyright Act to arrive at the truth. The Copyright Act, 17 U.S.C. §106 grants to the owners of copyright in a work, the exclusive rights of reproduction, adaptation, publication, performance, and display of their works, as stated generally. The copyright owner has these bundles of rights “to do or authorize the doing of” such that the use by a non-owner without permission, is a violation. Google Inc. (hereinafter “Google”), used its advanced technology to scan and index books, making copies in its database and displaying snippets online. It did this through the Print Publisher Program (hereinafter the “Publisher Program”) and the Print Library Program (hereinafter the “Library Program”). The programs involve the scanning of books, both in the public domain and the copyrighted, and dissemination is based on search queries. The question arises whether the Titans are being deprived of a potential market for eBooks or is the Library Program a non-violative use?

II. Are the titans united or divided

A. Author’s guild and the publisher’s revolt

The Author’s Guild (hereinafter “AG”) is advocating against the violation of the copyright interests of published writers it represents. These writers are plaintiffs in associational standing with AG, who has brought a class action lawsuit[1]. The Library Program is allegedly violating the exclusive rights of the authors by reproducing and displaying their copyrighted work without authorization, for commercial purposes.[2] AG claimed damages and sought a judgment declaring the Library Program illegal.

Under the Publisher’s Program, Google takes permission from the Association of American Publishers (hereinafter “AAP”) before it scans books to be indexed. AAP has however, brought a suit against Google under the Library Program[3]. Google scanned the publisher’s books not available under the Print Program, but available at the libraries, without permission of the copyright holder.

Google placed the responsibility of identifying non- scannable works on the AAP shifting the burden from the seeker to the sought after. This is not reflected as the correct balance in the Copyright Act.[4] AAP did not request damages, but demanded that the Court issue injunctive relief by ordering the deletion of the infringing copies scanned without permission.

B. Bifurcation of ideals

The Library Program scans the entire book, indexes it online and upon a search query, provides:
(i) the entire text for public domain works
(ii) few sentences of the copyrighted work based on the search query

It does not provide a full page in response to the search query for a copyrighted work, unless it is under the Publisher Program.

The common claim under the Library Program for both AG and AAP is unauthorized reproduction, made when an entire book is scanned without permission for the Google Book Search database and that there is unauthorized display when the book’s contents are shown on the internet as a result of a query.

A prima facie case of copyright infringement requires that:
(i) there be a valid ownership of copyright, and
(ii) the protectable copyrightable elements are copied

On the face of it, it seems puzzling why both the AG and the APP sued Google for the violation of the same rights – unauthorized reproduction and unauthorized display, but in different law suits. The answer to that may lie in the speculation that the authors might or might not have given their publishers the right to reproduce the work digitally. Assuming the contracts between the authors and publishers categorically restricted the reproduction right to paper and no conflicting clause exists which necessitates reproduction for promotion in any form, then the authors have the right over digital reproduction. The AAP’s suit reflects that under the Print Program, it was promoting digitization of books for inclusion in search engines.[5] The terms of the contract will clarify who is the rightful claimant. Furthermore, instances of a reversion clause if any, implying that the copyrights have been reverted back to the Author when the book goes out of print, exposes yet another issue. If the books in the Print Program are interpreted as the books being in print, then the rightful claimants are the publishers instead of the authors.

Digital books might not seem like an uncomfortable idea to the generation which will grow up with all things electronic. The race for getting a slice of this cake is for obvious reasons, everybody’s prerogative. The rights affected are the same, but the different suits represent different claimants, for controlling tomorrow.

III. Enter Zeus - Google’s intent and policy

Google claimed that the amount taken was de minimis and fair use under 17 U.S.C §107. Furthermore, by making available access to a list of books, Google stresses that such taking is for benefit copyright holders by increasing the market for authors [6] and for the public too. Though the issue roots at large from this unauthorized coping for enabling indexing, there is a notable violation by the libraries in accepting the electronic copy Google supplies, in exchange for effecting reproduction.

IV. The War –

A. Fair Use: the equitable rule of reason

17 U.S.C § 107 (2005) enumerates four factors to be considered while determining fair use as an affirmative defense in a suit for copyright infringement.

The first factor is “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.” 17 U.S.C. § 107(1) (2005). In American Geophysical v Texaco, 60 F.3d 913, 35 U.S.P.Q.2d (BNA) 1513, 144 A.L.R. Fed. 745 (2d Cir. N.Y. 1994) the Court held that the objective of photocopying eight articles by a researcher in the company was archival and the widespread act of photocopying would cause Texaco to forego profit it could make by selling more copies of its magazines. The Court held such photocopying as unfair use. Google’s act of scanning the entire books and keeping a copy in its database to enable indexing would go against the finding of fair use, as archiving usurps the right of copyright holders to make or license the making of electronic reproductions. The Library Program earns advertising revenue and is directed towards commercial gain. See Campbell v Acuff-Rose, 510 U.S. 569, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (“Commercial nature of the work tends to weigh against the finding of fair use”). Commercial motives militate against the finding of fair use and the only escape clause in the first factor is the transformative nature of the work. The question asked is whether there is actual contribution to the common culture or is there mere mechanical and non-transformative copying? In Sony Computer Entm’t., Inc. v Connectix Corp. 203 F.3d 596 (9th Cir. 2000) the Court determined that transformative implies that something of value has been added and the use of the work is not one that supersedes the original. Google Book Search makes unauthorized copies in its database by simply changing the medium and does not add anything of value to the work itself. Intermediate use has been described in Sega Enters. v Accolade, Inc., 977 F.2d 1510, 24 U.S.P.Q.2D (BNA) 1561 (9th Cir. 1992) as that being “legitimate, of essentially non-exploitative purpose… and the commercial aspect if best described as of minimal significance.” Google makes a defense of benefit to the public and copyright holders by enabling indexing which identifies websites where the books may be purchased. However, finding of fair use in favor of Google is hard, as the nature of the use i.e. making unauthorized copies, is commercial and exploitative and lacks in being transformative or intermediate. The database enables indexing which initiates advertisement revenue. There is a direct correlation between the existence of the unauthorized database and indexing, which makes the use of these unauthorized copies a commercial and exploitative use. The Ninth Circuit in Kelly v Arriba, 336 F.3d 811 67 U.S.P.Q.2d 1297 (9th Cir. 2003) held that the defendant’s act of displaying thumbnail pictures was fair as the indexing resulted in lower resolution pictures (implying de minimis use) with a link to the original website resulting in improved access instead of using artistic expression unfairly. This would favor Google except that the Ninth circuit decision is not binding on the Second Circuit, where AAP and AG have filed their suit. Assuming arguendo that the Second Circuit was inclined to apply the cited case’s analogy, a number of facts may be distinguished in the case of Google. Arriba crawled websites to collect its information and instead of substituting the market for the plaintiff, furthered access. Google is collecting information from libraries which lack the authorization, to make such electronic copies[7] contractually with enterprises that make copies for commercial purposes. Google is a for-profit organization and its commercial ability is witnessed by the advertisement revenue generated when the book indexes are available online. Furthermore, the libraries allowed mass scale copying potentially substituting purchases of the electronic versions of the work which would normally require Google to approach the copyright holders to license rights to makes making reproductions[8]. Thus, there is unauthorized reproduction and market substitution for a potential purchase. When a website does not want to be crawled by a spider, it simply puts a virtual door sign saying that it doesn’t want to be searched. This is in the function of a robot.txt[9]. The plaintiff in Arriba did not place such notice until after the photographs had been indexed. The Court found that the defendant’s act of indexing was valid as it improved access. Thus, the relationship between a search engine and a website intended to be indexed, is that the search engine orders a spider to crawl the website and the website is seen as voluntarily agreeing to such search, if there is no robot.txt. A spider simply follows orders, be it from the search engine or the website crawled. Google is attempting to transpose this technical underpinning into the physical world. Google goes from library to library deliberately scanning the copyrighted books believing that the publishers should engage in the “opt out” policy if they do not want their books included. The difference is that a website has already published its copyrighted material electronically, whereas the publisher has not been the first one to publish electronically, its material. Though there is no legal doctrine saying that a copyright holder must have the first right of publication in a particular medium, in light of market substitution as the fourth prong of the fair use test, a copyright holder has a strong argument in the loss of licensing revenue from a potential market. Furthermore, in Arriba it was held that the use of the crawler improved access and thus the use was fair. Google does not even provide access to the digital database of scanned books! Conclusively, Google is in essence making unauthorized reproductions, usurping a potential market and making revenue from such act. Google could argue that the display of the snippets was transformative. In Arriba the defendant’s intent was cataloguing where the use was functional, the service transformative and the use did not supersede the original illustrative intent. Google did make unauthorized reproductions, but did so without the use of crawlers and displayed not entire books, but snippets.

The second factor is “the nature of the copyrighted work.” 17 U.S.C. § 107(2) (2005). The Library Program involves scanning of many works which are within the copyright protection. Copyright registration “shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” 17 U.S.C. § 410 (2005). The copyrighted work reproduced into the Google Book Search database is close to the core of copyright protection and this will militate against the finding of fair use for unauthorized reproduction. The unauthorized display of snippets includes copyrighted work too.

The third factor is “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” 17 U.S.C. § 107(3) (2005). The amount scanned from the book and fed into the database is in its entirety. The copying is not de minimis. In Ringgold v Black Entm’t. TV, 126 F3d 70 (2nd Cir. 1997) use of the pictorial quilt in a two minute segment on television was de minimis quantitatively as “the technical violation of the right was so trivial that the law will not impose legal consequences”. The Court found in favor of the defendant as the copying was insufficient to prove actual copying. However, in Harper v Row, 471 U.S. 539 (1985) “verbatim copying of excerpts of the manuscript's original form of expression would constitute infringement unless excused as fair use”. See M. Nimmer, Copyright 2.11[B], p. 2-159 (1984). Thus verbatim copying reflects on the question whether the use is transformative or is there greater harm to market potential? The snippets display words verbatim from the copyrighted works. Though the Belgian Court in Copiepresse v Google (2006) Que le Tribunal de Première Instance séant à Bruxelles [Court of First Instance Brussels (Belgium)] found that snippets of news information was not fair use, Courts in United States might not agree as in light of Kelly v Arriba, 336 F.3d 811 67 U.S.P.Q.2d 1297 (9th Cir. 2003) the use is transformative and it does render books more accessible. This factor will weigh in favor of Google on the issue of displaying snippets, but not for unauthorized reproduction.

The fourth factor is “the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4) (2005). In Campbell v Acuff-Rose, 510 U.S. 569, 114 S. Ct. 1164, 127 L. Ed. 2d 500, the Court considered whether:
“(i) the extent of regular market harm that defendant caused, and
(ii)the extent of market harm on potential market for the original that would occur if there is ‘unrestricted and widespread conduct of the sort engaged in by the defendant.’”

In today’s day and age, a large amount of businesses use the internet as an effective tool to reach out to its consumers. The Library Program has usurped a potential market for licensing the reproduction of eBooks. However, there doesn’t seem to be any harm to the current market structure or a potential one for displaying snippets. Yet, there is possibility that such market structure tomorrow might turn on its heel and give results like Youtube.com. Is there sufficient digital rights management and technological protection measures in place to confirm that the snippets are all that will be displayed?

B. Possible outcome

An analysis of the factors concerning unauthorized reproduction indicates that no factor weighs in favor of Google Inc. Accordingly, on this issue alone, AG and AAP have a better case on the fair use issue. As regards, the de minimis display of snippets, the outcome is seems to favor Google as it is insufficient amount which is displayed, the use is transformative improving access and there is no potential market harm. However, the internet is a volatile environment especially targeted by code breakers and pirates. Thus, securitization against making available all copyrighted matter is imperative and affirmation can unfortunately hardly ever be certain in the realm of the internet.

VI. Conclusion

“Such are the paths of all who go after ill-gotten gain; it takes away the life of those who get it.”

– Bible, Warning Against the Invitation of Sinful Men (Pr 1:19)

The modern day Zeus – Google is caught in the web of power and ethics. The Titans – the copyright holders, though divided in the outcome are nonetheless united in their pledge. Google claims de minimis use in an attempt to cover up the violation of the right of reproduction of the copyright holder and undermines the very basis for which copyright law stands – incentive to promote creation and dissemination. The question lingering in the air is whether displaying a glimpse of your ill gotten gain would make the ill gotten gain itself, valid. Are the snippets valid when the snippets root from an illegal act? The Second Circuit has a novel situation before it and yet it seems that the novelty is superficial. Brush away the glittery sand and one is suspicious. Logic seems to lean towards finding an act, associated and based on another illegal act, illegal itself.

Sources

• Brief: Authors Guild v. Google Inc
• Brief: Association of American Publishers v Google Inc,
• 6Susan Wojcicki, 'Google Print and the Author's Guild', 20 September 2005
• David Drummond, 'Why we believe in Google Print', 19 October 2005 M. Nimmer, Copyright 2.11[B], p. 2-159 (1984)
• Bible, Pr-1:19
  [1] The doctrine of associational standing comes from Warth v. Seldin, 422 U.S. 490, 95 S.Ct. 2197 (1975); is where it was stated that:
  “a) An association has standing to bring suit on behalf of its members when
  (1) its members would otherwise have standing to sue in their own right;
  (2) the interests it seeks to protect are germane to the organization's purpose; and
  (3) neither the claim asserted nor the relief requested requires the participation in the lawsuit of each of the individual members.”
  [2] The Brief filed by The Authors Guild with associational authors who are plaintiffs. This was filed on September 20, 2005 in the United States District Court for the Southern District of New York (2nd Cir.)
  [3] The Brief filed by AAP who are plaintiffs. This was filed on October 19, 2005 in the United States District Court for the Southern District of New York (2d Cir.)
  [4] 17 U.S.C. § 106 gives the owner of a copyright “to do or authorize the doing of…” any of the exclusive rights.
  [5] The Brief filed by AAP who are plaintiffs. This was filed on October 19, 2005 in the United States District Court for the Southern District of New York (2d Cir.)
  [6] Susan Wojcicki, 'Google Print and the Author's Guild' (20 September 2005) at http://googleblog.blogspot.com/2005/09/google-print-and-authors-guild.html
  and David Drummond, 'Why we believe in Google Print' (19 October 2005) at http://googleblog.blogspot.com/2005/10/why-we-believe-in-google-print.html
  [7] 17 U.S.C §108 (2005) requires that for libraries and archives to make non-infringing copies, the copy must be made by a library or archive or by employees of such acting within the scope of their employment. These copies are made primarily for reasons of preservation. Further this copy should not be associated with any commercial purpose. Legislative history in H.R. Rep. No. 94-1476 at 74 has been interpreted to not permit "a non-profit institution, by means of contractual arrangements with a commercial copying enterprise, to authorize the enterprise to carry out copying and distribution functions that would be exempt if conducted by the non-profit institution itself."
  [8] 17 U.S.C § 108 (g) (2) (2005) says that “the rights of reproduction and distribution under this section …do not extend to cases where the library or archives, or its employee—
  engages in the systematic reproduction …of multiple copies …material described in subsection (d): Provided, That nothing in this clause prevents a library or archives from participating in interlibrary arrangements that do not have, as their purpose or effect, that the library or archives receiving such copies or phonorecords for distribution does so in such aggregate quantities as to substitute for a subscription to or purchase of such work.
  [9] See "dwfaq.com/Tutorials/Miscellaneous" (“The robots-txt file is added to the root directory of the websites to help control the indexing of the site by robots that ignore the convention. In this file are listed any pages that one doesn’t want searched and indexed”)