2005 B.C. Intell. Prop. & Tech. F. 110301
Google's Literary Quest in Peril
Dr. Michael Goldstein [a1]
November 3, 2005
Recently, Google, Inc. (hereinafter “Google”), owner of the eponymous search engine, partnered with several libraries, in an effort to make their collections available for search on the Internet. This project has come under attack by The Author’s Guild (hereinafter “The Guild”). The Guild complains that scanning and uploading copyrighted works without the authors’ consent violates their rights under the Copyright Act. Google counters that its use of sections from the copyrighted works falls under the “fair use” doctrine described in the Copyright Act. However, the Guild notes that in order to use these sections, Google first reproduced the entire work, violating the rights to reproduction that are protected by the Act.
The question is whether Google’s actions do indeed violate the copyrights of the plaintiffs or whether these actions are protected by the Fair Use Doctrine. Part II of this note will review the facts of this case and its prior history. Part III will discuss the law relevant to the dispute. Finally, Part IV will approach potential arguments for either side, addressing strengths, faults, and previous interpretations of the law.II. JUST THE FACTS
This case is a dispute about Google’s alleged violation of The Guild‘s rights under the Copyright Act of 1976 through Google Print. Before discussing the facts of the case, a brief history of the two parties is provided in order to illustrate their points of view. Insight into the establishment and goal of the two parties will give credibility to both and eliminate bias to either.
In 1996, two doctoral students at Stanford University developed the basic theory of what would later be known as Google. Larry Page and Sergey Brin hypothesized that an Internet search engine could be based on the relationship between various websites. Between 1997 and 1999, Page and Brin formally registered the domain name “www.google.com” and incorporated Google. In 2001, Google was awarded a patent for its method of ranking websites. United States Patent 6,285,999 was assigned to The Board of Trustees of the Leland Stanford Junior University, with Page named as the inventor.
i. A PERFORMANCE ENHANCER
Due to the extremely large breadth of information provided by the Internet, users frequently use search engines. A popular search engine can perform over 30 million searches in a single day. The older techniques of retrieving websites for a particular search provided a large number of results, but lacked the ability to prioritize results by quality.
These techniques included citation counting. In this method, the search engine totals the number of backlinks, or citations and then ranks them from most relevant to least relevant according to the number of backlinks: the greater the number of backlinks, the higher the rank. This technique is not useful in a database containing large quantities of both high and low quality documents, because a low quality page with one citation and a high quality page with one citation will be awarded the same rank.
The technique invented by Page takes the citation technique a great deal further, and ranks documents or sites by importance rather than solely by backlinks. Page’s invention determines whether a document is important based on the number of citations it receives from other documents; however, only citations from other highly cited documents are considered “important” citations. This method allows Google to retrieve and display the websites that are of most relevance to a particular search.
B. THE GUILD
The Guild was established in 1912 as the Authors League of America. The Guild represents more than 8,000 writers in protecting First Amendment rights of its members and improving contracts and royalties. Its members include popular authors such as Michael Crichton and Mary Higgins Clark, both of whom are officers of The Guild, and Judy Blume, who holds the position of Vice-President. The Guild is an organization similar to the ACLU in that it advocates for rights, in the The Guild’s case; specifically for author’s rights. The Guild’s attorneys advise members on legal issues regarding copyright, First Amendment privileges, and contracts.
C. WAGING WAR: GOOGLE v. THE GUILD
In December of 2004, Google introduced its library initiative, Google Print. The process involves scanning the collections of five libraries: the New York Public Library, as well as the Harvard, Oxford, Stanford, and University of Michigan libraries, and making them available for search on the Internet.
On September 20, 2005, The Guild filed a lawsuit against Google in the U.S. District Court for the Southern District of New York. The Guild claimed that Google Print violates copyright law by infringing on an author’s exclusive right to reproduction, distribution, and display of his works.
Google responded to allegations of copyright infringement by asserting that only small portions of copyrighted works, about three lines, are displayed on Google Print, unless the copyright owner consents to displaying more. Furthermore, Google stated that it respects the wishes of copyright owners, and upon request, will refrain from including a work in the project. However, The Guild maintains that, in order to display any section on the Internet, Google had to initially scan the entire work, thereby violating the authors’ rights.III. THE LETTER OF THE LAW
The five fundamental rights that the Copyright Act gives to copyright owners: the exclusive rights of reproduction, adaptation, publication, performance, and display, are stated generally in section 106. These exclusive rights are cumulative and may overlap in some cases. While the copyright statute is quite extensive, this section provides the fundamental provisions of copyright protection.
In the case at hand, plaintiff argues that defendant violated its rights through unauthorized reproduction, distribution, and display of copyrighted works on a massive scale. The following subsections break down the basic rights provided by each.
Under the Copyright Act of 1976, the right to reproduce the copyrighted works in copies or phonorecords lies exclusively in the rights of the owner of the copyright, as prescribed by Section 106(1) of Title 17 of the United States Code.
Clause (3) of Section 106 provides the copyright owner the exclusive right to distribute copies of his or her work to the public. The rights protected under this section give the copyright owner control over the first distribution of an authorized copy of the work. However, this right does not apply to a particular copy once ownership has been transferred, due to the First Sale Doctrine.
The First Sale Doctrine under Section 109 of the Copyright Act provides the owner of a particular copy of a work with the right to sell or otherwise dispose of that copy exclusive of permission of the copyright owner. In C. M. Paula Co. v. Logan, for example, the Court explained, the “ copyright proprietor … [has] no further right of control over the use or disposition of the individual copies of the work once he has sold or otherwise disposed of them.” In effect, the First Sale Doctrine makes it easier for owners of particular copies to distribute or sell lawfully made copies that they purchase.
C. PUBLIC DISPLAY
The public display rights under Section 106(5) of the Copyright Act are less clear than the other rights. This clause states that the owner of a copyright maintains the right to publicly display his or her copyrighted work. However, the interpretation of this clause has proceeded more on a case by case basis than the other clauses.
D. FAIR USE
In response to the above allegations, Google claims that its use of the copyrighted literature falls under “fair use.” Under Section 107 of the Copyright Act, the author’s exclusive rights are limited to allow the use or reproduction of a work for purposes such as criticism, comment, news reporting, and teaching. The Court considers four factors in determining whether a given use is a fair use:
(1) the purpose and character of the use;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
A. THE GUILD AND REPRODUCTION RIGHTS
As previously stated, Section 106 of Title 17 protects the copyright owners’ exclusive right to making copies or phonorecords of his or her work. In accusing Google of violating this right, The Guild alleges that for its Google Print project, Google made copies of copyrighted works without first obtaining authorization from the copyrights owners in order to make them available for search on the Internet.
The Supreme Court’s opinion in New York Times Co., Inc. v. Tasini is remarkably applicable to the case against Google. In Tasini, the Court held that print and electronic publishers infringe copyrights of freelance authors, where, under agreements with print publishers, but without freelancers' consent, electronic publishers place copies of freelancers' articles into computer databases. In the case against Google, the “print publishers” are analogous to the five libraries that gave Google permission to scan the works for the Google Print project, the “electronic publishers” play the same role as Google, and the freelance authors are analogous to the writers that The Guild represents. The works of the writers in the case at hand, are also equivalent to the articles written by freelancers in that they are independently copyrightable. Thus, the Supreme Court’s opinion in Tasini suggests that the libraries and Google infringes copyrights of The Guild, when under agreements with the libraries, Google places copies of the writers’ works without their consent into a computer database, such as Google Print.
Google might counter that Google Print only displays a small portion of the works. However, even to display small portions of the works, Google had to initially reproduce the entire work. As Tasini indicates, this reproduction seems to infringe on the rights embodied in Section 106 of Title 17.
While the right to reproduction is exclusive, it is limited by the Fair Use Doctrine.  However, the Fair Use Doctrine does not allow wholesale reproduction of copyrighted works. In Salinger v. Random House, Inc., the Court held that quoting and close paraphrasing over 10 percent of unpublished letters of a famous author exceeded fair use. Thus, Google’s reproduction of even one work from the Libraries appears to exceed fair use. In effect, reproduction rights protect the authors of the books scanned by Google from exactly the kind of copying that was necessary to provide Google Print with its virtual library.
B. THE RIGHT TO DISTRIBUTION
Distribution and reproduction rights, while closely linked, are distinguishable as two separate rights that cover two separate actions. Reproduction rights deal with copying copyrighted work, while distribution rights assume that a copy has already been made. However, it is also important to note that the link between the two is substantial insofar as argumentation is concerned. In Hotaling v. Church of Jesus Christ of Latter-Day Saints, the Court held that placing a copy of a work in library collection, listing it in a catalog, and making it available to the public qualify as distribution of the work, so that if the copy is unauthorized, infringement would result.”
This opinion is quite relevant to the Google case. Google made copies of a large number of copyrighted works without permission, rendering those copies unauthorized, and, as discussed in the Hotaling opinion, distributed them to the public via Google Print’s online database. As a result of distributing unauthorized copies, Google infringed on the distribution rights of all of the authors represented by The Guild.
However, even if Google had not illegally copied the works, it would still be liable. While Hotaling tells us that a distributor can be found liable if the copies are unauthorized, a more recent case dictates that violation of Section 106(1) is not a prerequisite for infringement under Section 106(3). In Ortiz-Gonzalez v. Fonovisa, the Court opined that a distributor can be found liable for copyright infringement where the plaintiff has not established that the producer is guilty of infringement, since § 106(3) explicitly grants to the copyright owner the exclusive right to distribute copies of work, and § 501(a) provides that anyone who violates any exclusive rights of a copyright owner infringes the copyright. Regardless of whether Google created copies unlawfully, the display of the copies on a public database violates the copyright owners’ distribution rights.
C. PUBLIC DISPLAY
Lastly, The Guild claims infringement of the exclusive right of public display under Section 106(5) of the Copyright Act. According to the statute, the term “public display” not only covers the initial showing or rendering, but also covers any future rendering or showing by which the work is transmitted or communicated to the public. The Google Print project effectively transmits thousands of books to the public all the given time; ergo, Google Print violates The Guild’s exclusive right to public display.
Public display is not limited to a viewing in a public place. Display also includes any projection of an image onto a screen – such as a computer screen – by any method. Thus, Google is infringing upon the rights of public display, because the Google Print process transmits copies of a copyrighted work onto a screen each time a user searches its library.
To tie these three arguments together, Google effectively violates all three rights – reproduction, distribution, and public display – in copyrighted piece of its virtual library. For each book, Google had to illegally copy the entire work by means of electronically scanning it, add to the Google Print database for unauthorized distribution to the public by way of a search engine, and finally, illegally display the information to the public with each unauthorized copy that is transmitted to a user’s screen. If Google Print has only 1,000 hits a day, that is 3,000 violations of copyright a day, 21,000 violations a week, and 1,092,000 violations in a single year.
D. FAIR USE
Google defends itself against this mountainous allegation by claiming that this use of the copyrighted works is protected under the Fair Use Doctrine embodied in Section 107 of the Copyright Act. As discussed in Part III, the criteria the Court considers to determine fair use include the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used, and said use’s potential effect on the market for the copyrighted work.
The Guild claims that Google cannot claim fair use for various reasons, including the effect its project would have on the sales of the writers’ works.81 In Harper & Row, Publishers, Inc. v. Nation Enterprises, the Court noted, “to negate a claim of fair use it need only be shown that if the challenged use should become widespread, it would adversely affect the potential market for the copyrighted work.” However, the Google Print project only displays a small amount of text from each book in response to a user search. The idea behind the project is to allow users to search for works with a certain criteria, and upon finding works fitting their needs, providing the users with information on where to purchase or borrow the works from a store or library.
With regard to the “purpose and character of use” fair use factor, the commercial motive of the user, in this case, Google, is key. In fact, the Court holds that commercial motive for using the copyrighted work makes the use presumptively unfair. Google Print is much closer to an advertising agency than a library and clearly has a commercial motive in displaying the books. Thus, this factor counts against Google.
The next factor, the inquiry into the nature of the copyrighted work generally focuses on the extent to which the work is creative. The more creative the work, the more copyright protection it is afforded. In this case, at least some of the works Google copied are undoubtedly works of fiction, which strike close to the creative heart of copyright protection. Thus, this factor also weighs against Google.
The third factor is the nature and substantiality of material used in relation to the copyrighted work as a whole. The Guild claims that Google had to reproduce a work in its entirety in order to make any small section of it available for online searches. In such cases, many Courts hold that the wholesale copying of copyrighted materials precludes application of the Fair Use Doctrine. For example, in Wihtol v. Crow, the Court observed, “it is not conceivable to us that the copying of all, or substantially all, of a copyrighted song can be held to be a 'fair use' merely because the infringer had no intent to infringe.” The Court in Encyclopaedia Britannica Educational Corp. v. Crooks held that the taping of entire copyrighted films was too excessive for the fair use defense to apply, although defendants were involved in non-commercial copying to promote science and education. These opinions make clear that use of a substantial amount of a copyrighted work, if not the entire work, negates the defense of fair use, even as far as educational purposes are concerned. But, both arguments have the same flaw with regard to the Google case. In both arguments, the user of the copyrighted material makes the entire work available to the public.
Even incomplete copying of a work can preclude fair use. For example, in Quinto v Legal Times of Washington, Inc., the Court held that publishing 92 percent of the plaintiff's article was not a fair use because it reprints practically the entire article and preempted the only market for the article.
Nearly the entire article was – here’s the keyword – published in a legal newspaper; all of it was made available to the public at once. Furthermore, in Radji v Khakbaz, the Court found that publishing excerpts amounting to 10 percent of plaintiff's book was too substantial to be fair use. The recurring motif in all of these cases is that the amount substantial enough to negate fair use was, in fact, used in transmission to the public. Consequently, these cases, and others like it, are not entirely relevant to applying the Fair Use Doctrine to Google Print.
In a case that is more relevant, Maxtone-Graham v. Burtchaell, the Court held that the quoting 4.3 percent of text from the plaintiff's book was a fair use. Furthermore, in Consumers Union of United States, Inc. v. General Signal Corp., the Court found that an advertisement using 29 words of a 2,100 word magazine article was a relatively insubstantial use, contributing to a finding of fair use. The cases above are more relevant to the case at instance, because the Google Print project only transmits to the public very small portions at a time. Maxtone-Graham and Consumers Union imply that the amount Google is displaying falls within fair use. Three lines or so of a book accounts for a much smaller percentage of the total work than the 4.3 percent found acceptable in Maxtone-Graham and the approximately 14 percent found acceptable in Consumers Union. This factor, in short, counts in Google’s favor.
The final fair use inquiry is the effect on the copyright owner’s potential market for his or her work. Google Print’s effect on this potential market is likely to be low. First of all, Google Print does not compete in the same market as the copyright holders: the authors sell books while Google sells advertisement by providing a mechanism for online literature searches. The authors might argue that Google invades their market by making their copyrighted works available online for mass reproduction. If this were the case, Google would indeed usurp the author’s market for their books by providing a free alternative. However, Google Print only makes available a small portion of the works. A consumer’s attempt to reproduce the authors’ work through Google Print would be, at best, tedious in the extreme, at worst, impossible. The process would involve gathering the work line by line through repeated online searches.
Arguably a potential consumer of an authors’ book would not bother to buy the book once she had found the information she needed. However, if the information the consumer needed was so little that she could find it in the small portion Google Print makes available, it seems unlikely she would have bought the book in any case. Moreover, the type of informational material which a searcher could find by searching Google Print would likely have little copyright protection in the first place. It seems less likely that a consumer could find all she needed in a short excerpt from a more creative work, because in a more creative work, such as a novel, each part tends to be more integrated into the whole. Thus, the consumer would be likely to buy the whole work regardless of its availability on Google Print.
Indeed, Google Print’s effect on the potential market for the works created by writers represented by The Guild is likely to be positive. Obscure works may be discovered and purchased. A larger audience would have access to the right book. Google Print would in fact act as a promoter of literary works to the thousands of Internet users that browse Google everyday.
In Harper, the court notes that the effect of the use upon the potential market for or value of copyrighted work is the single most important element of fair use. In Google’s case, this factor is overwhelmingly in Google’s favor. Moreover, it overwhelms the negative effect of the purpose and character of use factor and the amount and substantiality factor. Thus, Google’s potential response to The Guild’s allegation argument is very strong.
The Guild’s evidence behind the allegations shows that Google did in fact infringe on its exclusive reproduction rights. It also shows that Google Print distributes and displays to the public copyrighted works without permission. Google, however, has a strong argument that Google Print is protected by the Fair Use Doctrine. Google Print’s main effect in using copyrighted work is to promote the author’s works, not to compete with them. Furthermore, the portion actually transmitted to the public, generally three lines or less, accords with previous opinions regarding amount and substantiality. It seems likely that the market for the writers of the copyrighted works would only be benefited by the promotional effect of Google Print.
[a1] Dr. Michael Goldstein is a student at Penn College in association with Penn State University, pursuing a degree in legal studies with an intent to attend law school. He holds a doctorate degree in Fine Arts from Rochville University, as well as a degree in Surgical Technology from Star Institute. He currently has two comments under review.
 Class Action Complaint at ¶¶ 37-42, The Author’s Guild v. Google, Inc., 2005 WL 2463899 (S.D.N.Y. not decided) (No. 05-CV8136) [hereinafter Complaint].
 Tim O’Reilly, Search and Rescue, N.Y. Times, Sept. 28, 2005, at A27, available at http://www.nytimes.com/2005/09/28/opinion/28oreilly.html (last visited Sept. 30, 2005); see 17 U.S.C. § 107 (2005).
 Complaint, supra note 1, at ¶ 37-42; see § 106(1).
 Google, text-transform:uppercase'>Wikipedia (Nov. 3, 2005), at http://en.wikipedia.org/wiki/Google (last visited Nov. 3, 2005).
 U.S. Patent No. 6,285,999 (issued Sept. 4, 2001).
 Complaint, supra note 1, at ¶ 14.
 The Author’s Guild, Officers & Board, at http://www.authorsguild.org/?p=181 (last visited Nov 1, 2005).
 Complaint, supra note 1, at ¶¶ 14-15.
 Hector Duarte Jr., Google Sued for Copyright Infringement, All Headline News (Sept. 21, 2005), at http://www.allheadlinenews.com/articles/7000218030 (last visited Nov. 1, 2005).
 Eric Auchard, Google library push faces lawsuit by US authors, The Washington Post (Sept. 21, 2005), at http://www.boston.com/business/technology/articles/2005/09/21/google_library_push_faces_lawsuit_by_us_authors/?rss_id=Boston+Globe+--+Technology+stories (last visited Nov. 1, 2005).
 O’Reilly, supra note 2; Auchard, supra note 18.
 O’Reilly, supra note 2.
 17 U.S.C. § 106 (2005).
 See id.
 Complaint, supra note 1, at ¶¶ 37-42.
 § 106.
 Id. at ¶ 3.
 Id. at ¶ 3.
 See § 109.
 See id.
 355 F. Supp. 189, 192 (D.C.Tex. 1973).
 § 106, at ¶ 5.
 O’Reilly, supra note 2.
 § 107.
 § 106(1).
 533 U.S. 483, 506 (2001).
 See id.
 Complaint, supra note 1, at ¶¶ 31, 39. While this is an allegation, it certainly makes sense. Google Print makes entire books available so that no matter what a user searches for, it could pull something from a book; as such, it must scan an entire work in order to make it available to any number of searches.
 See § 106.
 See §§ 106-107.
 811 F.2d 90, 98-99 (2d Cir. 1987).
 Goldstein, Paul, Copyright, 1 (1989), 519, 1
 118 F.3d 199, 203 (4th Cir. 1997).
 See id.
 277 F.3d 59, 62 (1st Cir. 2002).
 § 101.
 See § 106; Tasini, 533 U.S. at 506; Hotaling, 118 F.3d at 203.
 § 107.
 471 U.S. 539, 541 (1985).
 Auchard, supra note 18.
 O’Reilly, supra note 2.
 Fin. Information, Inc. v. Moody's Investors Serv., Inc., 751 F.2d 501, 508 (2d Cir. 1984).
 Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 496 (1984) (“Thus, for example, informational works, such as news reports, that readily lend themselves to productive use by others, are less protected than creative works of entertainment.")
 § 107.
 Complaint, supra note 1, at ¶¶ 31, 39.
 See, e.g., Wihtol v. Crow, 309 F.2d 777, 780 (8th Cir. 1962); Quinto v. Legal Times of Washington, Inc., 506 F. Supp. 554, 560 (D.C.D.C. 1981); Encyclopaedia Britannica Educ. Corp. v. Crooks, 447 F. Supp. 243, 251, 252 (W.D.N.Y. 1978).
 309 F.2d at 780.
 447 F. Supp. at 251, 252.
 506 F. Supp. at 560.
 607 F. Supp. 1296, 1302 (D.C.D.C. 1985).
 631 F. Supp. 1432, 1437-38 (S.D.N.Y. 1986).
 724 F.2d 1044, 1050 (2d Cir. 1983).
 See Consumers Union, 724 F.2d 1050; Maxtone-Graham, 631 F. Supp. at 1437-38.
 See Consumers Union, 724 F.2d 1050; Maxtone-Graham, 631 F. Supp. at 1437-38; O’Reilly, supra note 2.
 17 U.S.C. § 107 (2005).
 Sony, 464 U.S. at 496.
 471 U.S. at 566.
 See O’Reilly, supra note 2.