The Essence of the Google Book Search Project Litigation
The law and great ideas sometimes clash, especially when it comes to
new methods of delivering content. The birth of the Google Book Search
Project and the recent litigation it has encountered is certainly a
good example of that.
What is the Google Book Search Project?
Google, in its drive to create a mass searchable online database of
content, decided to scan the complete contents of every book in the
collections of university and public libraries, including the esteemed
Harvard, Michigan, Oxford and Stanford collections, as well as The New York Public Library’s.
Google also receives books to scan from publishers and authors. The
search company plans to make the digitized contents of these
collections and works completely searchable online, with the goal of
completing this project in upwards of 10 years at a cost of more than
Google will be scanning vast works that are subject to copyright, as
well as works already in the public domain. Public domain works will be
made available to end-users in their entirety. Those subject to
copyright will not be entirely viewable online, unless it is expressly
permitted by the book’s rights holder. Google is not attempting to
create an online library, so searchers who find a book will only be
able to see a snippet of the search results, including information
about the book, plus a few sentences of the search term in context.
Searchers will also receive a page showing the number of times the term
appears in various works, including, for up to three instances of the
term, a sentence or two on either side of the particular word or
phrase. Google will also provide bibliographic information, Internet
links to book sellers and libraries that have the book in their
collection, and links to online book reviews.
Similar to a card catalog, the goal is to help Google’s users discover
books, not read them. If any book’s rights holder does not want their
book searchable through Google, they can notify Google and the book
will be excluded from the database.
Why would Google want to do this?
Google Book Search is a book
marketing program that will: 1) make millions of books more
discoverable to a significantly broader audience; and 2) drive more
searches through Google and, therefore, create an opportunity for
Google to generate more advertising revenue through its site.
What’s the problem?
Google believes that it does not need to obtain permission from rights
holders to make use of otherwise protected works, because of the "fair
use" doctrine, discussed later in this article. Instead, it announced
an ﾑopt-out’ policy, discussed previously, whereby publishers may
provide Google with lists of books to be excluded. Publishers and
authors object, claiming that Google’s procedure shifts the
responsibility for preventing infringement to the copyright owner
rather than the user. When negotiations failed, lawsuits followed.
The first to file suit against Google was the Author’s Guild,
which represents more than 8,000 authors and named a few of its members
as representative plaintiffs. The complaint, filed in September 2005,
alleges that Google’s reproduction of protected works without
authorization from the copyright holders, and its planned reproduction
of digital copies for its own commercial use, constitute copyright
infringement. A few specific works by the named plaintiffs are
referenced, but the case seeks class action status and damages, as well
as injunctive relief.
In a second case, filed approximately a month later, a group of publishers including McGraw-Hill, Pearson Education, Penguin (USA), Simon & Schuster and John Wiley,
asserted similar claims to those in the Author’s Guild complaint.
However, these publishers seek only injunctive relief with respect to
certain specifically enumerated works. The relief requested includes
cessation of the Book Project with respect to those works that are
still subject to copyright protection and an order requiring Google to
delete copies of those works from its servers.
Google has answered the complaints in both actions, but no decisions of substance have been rendered in the cases.
The Copyright Fair Use Doctrine
While Google has asserted numerous defenses in the litigation, the
principle defense that it intends to raise is the copyright "fair use"
doctrine. The "fair use" doctrine, which is codified in the U.S.
Copyright Act, permits users of copyrighted material to avoid liability
for infringement under the rationale that in some cases, strict
adherence to infringement principles would stifle creativity. This,
after all, is what the copyright law was created to foster. Whether an
unauthorized use is "fair" in a particular case is a highly
Essentially, courts use a four factor (non-exhaustive) balancing test
when assessing whether a given use is "fair." The factors are: (1) the
purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit 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
Application of the Fair Use Doctrine to This Case
Since there is not enough space to analyze all of the factors, this
article will only focus on the fourth factor, which is pivotal in the
pending litigation. Google argues that by allowing potential customers
a "sneak-peek," it is making the works more marketable to a broader
audience than authors and publishers might reach. The authors and
publishers counter that Google is far from being altruistic, since its
revenues are primarily driven by advertising. So, they argue, the more
searchable content Google has, the more advertising it can sell. The
Author’s Guild complaint also emphasizes the commercial nature of the
project noting, "Google intends to derive revenue from the program by
attracting more viewers and advertisers to its site" and "Google
derives approximately 98% of its revenue directly from the sale of
The publishers’ lawsuit points out that the publishers have "developed
and are continuing to develop various means of making electronic copies
of their own works available consistent with their exclusive rights
under copyright." The publishers note that they generate important
ancillary revenue from the licensing of content and excerpts from
non-mass market titles.
Adding a layer of complexity is the trend of some courts to focus on
the "transformative" nature of the use, even in instances where the use
is clearly commercial. A use is arguably transformative if it serves a
different purpose than the original use. For example, the
transformative nature of the use weighed heavily in one decision
involving an Internet search engine that displayed low resolution
"thumbnail" versions of a photographer’s images. The finding was that
the thumbnails provided improved access to information and did not
serve the same artistic purpose as the original works. The court
reasoned that the thumbnails did not transplant the original use and
were therefore a "fair use."
However, in a recent decision, ironically against Google, a court in
the same judicial circuit found that Google’s use of thumbnails to
display photographs of nude models was not a transformative use,
because the copyright owner licensed thumbnails of its works to a
company that permitted users to download thumbnail images to cell
phones. Accordingly, the court found that Google’s use of thumbnails in
this case was trans- planting the market of the copyright holder.
The Publishers, in pointing out that they are developing technologies
to make their works accessible electronically, believe that the Book
Project does not meet the transformative use exception.
Resolution of the "Book Project" case, of course, lies with the court,
and it will most likely be several more months until the court reaches
a decision. That decision will likely be followed by appeals, so a full
resolution could be a year or more away. In the meantime, if you
are a content owner, be vigilant about protecting your works and making
sure they are not being exploited in media for which you have not given
your authorization. If you are a content distributor, be sure that you
clear the rights to works you are disseminating. Either way, if you
have any doubt, be sure to consult your copyright lawyer before
Leichtman is a litigation partner specializing in intellectual property
and other commercial litigation affecting the media and publishing
industries at Morgan, Lewis & Bockius LLP, a global law firm with more than 1,200 lawyers in 20 offices located around the world, including New York.