Authors Guild v. Google: Is Fair Use Fair?

Google

On November 14, 2013, U.S. Circuit Court judge Denny Chin (sitting by designation in the U.S. district court for the southern district of New York) concluded 8 years of copyright infringement litigation with an order dramatically expanding the “fair use” defense. Seemingly somewhat out-of-sync with the Napster decision a few years ago, the order permits Google to continue to freely copy the entire contents of millions of copyright-protected books and distribute them, or at least significant portions of them, to the public free of charge, without either getting permission from the authors or paying them royalties for their works.

The Google Books project may well be the greatest boon to researchers there has ever been. In the old days, you would need to make a lot of telephone calls and perhaps drive a long distance to a library to track down, say, an exact quotation from a particular nineteenth century physics textbook. With Google, you simply type the name of the text and a few key words into a search bar, and within seconds a link to a copy of the page of the book on which the quotation you seek appears on your screen. Follow the link and the quotation, along with a considerable amount of additional text from the book, instantly appears on your screen. It is a researcher’s dream come true. But what about the rights of authors? Is it fair to them to allow people to read unauthorized copies of their books without having to pay for them? Certainly there can be no  complaint about works that are so old as to have entered the public domain. But what about books that are still protected by copyright?

The Copyright Act prohibits the reproduction of copyright protected books. 17 U.S.C. § 106(1) (2013). It also prohibits the distribution of books that are protected by copyright.  17 U.S.C. § 106(3) (2013). And it prohibits the unauthorized display of protected works. 17 U.S.C. § 106(5) (2013). As part of its “Library Project,” Google digitally scanned millions of books in the Library of Congress, the New York Public Library and several university libraries, and then made them available to the public to view and download for free. Not having obtained permission from the authors and publishers of these books, Google committed millions of violations of each of these laws. The upshot was a class action copyright infringement lawsuit by the Authors Guild on behalf of book authors everywhere.

After more than eight years of litigation, a U.S. district court judge determined that Google had indeed infringed the copyrights of scores of books authors, but refused to hold the company liable for it. Instead, the judge ruled that the massive copying and distribution program upon which Google had embarked came within the “fair use” defense to copyright infringement.

The “fair use” doctrine permits limited use of copyrighted works under some circumstances, in the interest of fostering the development of arts and science.  Because of it, no permission is needed to copy small amounts of  a book for the purpose of criticism, comment, news reporting, teaching, scholarship or research. What Google did went far beyond that, though. Google’s activities involved copying, distributing, and in some cases displaying the entire contents of copyright protected books without permission.

The company was able to secure a favorable ruling by invoking the four-prong “fair use” test set out in the Copyright Act. Under 17 U.S.C. § 107 (2013), an infringing use of copyright protected work is permitted “fair use” if the following factors, on balance, favor unauthorized use of the work:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The judge found that, on balance, the factors weighed in favor of Google’s massive copying and distribution project. He emphasized the great benefit to the public of having access to a large number of works all at the same time. He rejected the authors’ argument that Google’s scans serve as a market replacement for the books, depriving authors of payment for their work. “Google does not sell its scans,” he noted.

Of course, this ignores the fact that the purpose of copyright is not simply to prevent others from profiting, but to ensure authors a fair return for their labor. According to the judge, though, Google Books actually helps authors sell their books because “patrons use Google Books to identify books to purchase.”

Do people really use Google search to locate nonfiction books to buy? Or do they only read so much of the text as they want or need at that particular moment, thereby alleviating the need to buy the whole book? And does having all the text of a book available for free online remove, or at least decrease, the incentive for libraries to acquire copies for the use of their patrons?

Well, but the judge has this to say:

“[Google Books] 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.”

Creating a searchable index of books clearly is a transformative use. As such, it should easily fall squarely within the “fair use” doctrine. Had Google simply created an index that displayed a list of books in which the search terms appear, without displaying the actual text of these books, there would be no question that the creation of the indexing system would have been a fair use. Enabling users to also read entire pages from the books — and in some cases, the entire book — after identifying and locating them, without anybody having to actually pay anything for a copy of the book is a different story.

Predictably, librarians, Internet surfers and Google officials are thrilled with the decision. Authors, not so much. An appeal is almost certain, although all indications are that the Second Circuit probably will affirm the decision.

You can read a copy of Judge Chin’s ruling here:

http://publishersweekly.com/binary-data/ARTICLE_ATTACHMENT/file/000/001/1887-2.pdf

 

Some thoughts about “The Slants”

Citing Section 2a of the Lanham Act, the Trademark Trial and Appeals Board has affirmed the rejection, earlier this year, of the band name “The Slants.” Section 2a prohibits, among other things, the registration of “matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.” The examiner felt the name was offensive to people of East Asian origin. The applicant, Simon Tam, argued that the term has not been used as a racial slur since the 1940’s. He has filed an appeal.

The Trademark Board’s decision seems strange, given that all the members of the band are of Asian origin. Their expressed intention was to “take ownership” of the racist history connoted by the term, not to disparage themselves or to bring themselves into contempt or disrepute. It does not appear that any evidence of anyone actually being offended by the band’s use of the term was introduced.

Although the parties have focused their arguments on the question whether the term is a disparaging one or not, to my mind the case raises an important First Amendment issue: Is a grant of authority to a federal official, to withhold trademark registration on the basis of what the official thinks might be offensive, consistent with the First Amendment? The USPTO thinks it is, reasoning that a refusal of registration does not prevent a band from using the name, and therefore does not suppress expression. In re McGinley, 211 USPQ 672 (1981). But is this reasoning really valid? It is true that denial of registration does not prevent an applicant from using the name, but registration does confer a special status that determines eligibility for important federal benefits, not the least of which is the benefit of a presumption of a right to exclusive use of the name. It is a fundamental tenet of First Amendment law that even when the government regulates in a way that impacts or discourages speech without actually prohibiting it altogether, it must do so in a content-neutral way. Some content-specific regulation is permitted in the case of commercial speech. Even commercial speech regulation must be “narrowly tailored” to serve a substantial government interest, though. Central Hudson Gas & Electric v. Public Service Commission, 447 U.S. 557 (1980). Can authority to deny federal benefits on the basis of an official’s belief that it “may disparage” a person or a belief really be said to be “narrowly tailored” to serve an important government interest? If so, then how is it that a firm using the word “Squaw” to sell skis, or a record company calling itself “True Niggas Only,” can claim benefits offered by the federal trademark office, but a band calling itself The Slants cannot?

There are signs that the Supreme Court may be moving toward subjecting regulations of commercial speech to the same strict scrutiny analysis that is applied to regulations of other kinds of speech activity. The distinction between commercial and artistic expression is neither clear nor clearly mandated by the language and history of the First Amendment. The time may be ripe for a constitutional challenge to Section 2a.