Intellectual Property

Digitization and Display of Books by Google Constitutes Fair Use

November 19, 2013

200px-Copyrightsvg-Google Books is a groundbreaking project launched in 2004 to scan and digitize books all over the world.  Currently more than 20 million books have been digitized and are available for searching, with “snippets” of books being presented to users as search hits. In 2005, the Authors Guild and several other plaintiffs filed suit against Google in the Southern District of New York, alleging that the digitization and display of millions of books not within the public domain constituted copyright infringement. Last week, the court issued a decision on cross-motions for summary judgment on the sole issue of whether Google Books constitutes fair use under 35 U.S.C. § 107.  The Authors’ Guild, Inc. v. Google Inc., 05 Civ. 8136 (DC) (S.D.N.Y. Nov. 14, 2013).  After first assuming that the plaintiffs had established a prima facie case of copyright infringement, Judge Chin analyzed the four statutory fair use factors individually and concluded that Google’s actions do indeed constitute fair use.

a.      Purpose and Character of Use

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.” Here, Judge Chin found that Google Book’s use of the copyrighted works was “highly transformative,” as the snippets allow users to identify and locate books.  Further, the ability to data mine the digitized books has resulted in entirely new fields of research.  Judge Chin also noted that Google does not sell the scans it creates and does not run ads on the pages that contain snippets. Accordingly, this factor weighed strongly in favor of Google.

b.      Nature of the Copyrighted Works

The second factor is “the nature of the copyrighted work,” with works of fiction typically entitled to greater copyright protection.  Since the Google Books database is overwhelmingly non-fiction, with only about 7% of the books constituting fiction, this factor favored fair use.

c.       Amount and Substantiality of the Portion Used

The third factor is “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.”  Although Google reproduces the entirety of the books that it scans, it limits the amount of text that is displayed to the user in response to a search of the Google Books database.  Without any significant analysis, Judge Chin held that this factor weighed “slightly against” a finding of fair use.

d.      Effect of Use Upon Potential Market or Value

The fourth and final factor is “the effect of the use upon the potential market for or value of the copyrighted work.”  The plaintiffs argued that Google Books negatively impacts the market for books by effectively serving as a market replacement.  Refuting this argument, Judge Chin countered that “a reasonable factfinder could only find that Google Books enhances the sales of books to the benefit of copyright holders,” as consumers use Google Books to identify books that otherwise would be left undiscovered.  As a result, the fourth factor also weighed strongly in favor of fair use. Weighing all four factors together, Judge Chin ruled that Google Books constitutes fair use and advances the progress of the arts and sciences while concurrently considering the rights of authors and copyright holders. Higher Education Digitization Projects Many colleges and universities are repositories of books with questionable or unclear copyright status, and several have considered or begun digitization projects.  Following this decision and a comparable decision in Authors Guild v. HathiTrust 902 F.Supp.2d 445 (S.D.N.Y. Oct. 10, 2012) under a similar set of facts, these digitization projects may have a strong foundation in fair use if they are non-commercial, limit the amount of a work displayed, and largely focus on non-fiction works. The HathiTrust decision has already been appealed, and many predict that the Google decision will have a similar fate.  Stay tuned here for future developments.

Announcing the Winter 2013 IP & Technology Newsletter from Bond, Schoeneck & King

February 24, 2013

The Intellectual Property & Technology Group at Bond, Schoeneck & King, PLLC is pleased to announce the Winter 2013 IP & Technology Newsletter.  This edition of Bond’s quarterly newsletter includes the following articles:

  • "Supreme Court Decisions Will Have Major IP Impact in 2013" (by Jeremy P. Oczek)
  • "Protecting Trade Secrets and Other Confidential Business Information" (by Scott M. Philbin)
  • "Color Prevails: Louboutin Retains 'Red Sole' Trademark" (by Philip I. Frankel)
  • "Design Patents: Effective Tools in a Patent Portfolio" (by David L. Nocilly)
  • News & Highlights

Copyright and the Public Domain in 2013

February 20, 2013

Like patent protection, copyright protection is limited in time.  For example, a work published in the United States is eligible for copyright protection for the life of the author plus 70 years.  Anonymous works, pseudonymous works, and works made for hire are eligible for a term of the shorter of 95 years from publication or 120 years from creation.  For more information about copyright term, see here. For example, a work authored by Author X in 1980, who died on May 4, 1994, would be eligible for copyright protection until May 4, 2064.  And due to 17 USC § 305, the term of copyright would extend throughout the remainder of 2064.  So, the work would enter the public domain on January 1, 2065. However, copyright term has not always been so long.  For example, a work published before the 1976 Copyright Act extended copyright term would have originally been eligible for 56 years of copyright protection (an initial 28-year term plus a 28-year renewal).  Under this pre-1976 regime, works published in 1956 would have entered the public domain on January 1, 2013.  Due to the 1976 Copyright Act these works will not enter the public domain until January 1, 2052 (95 years from publication, provided that certain formalities were met and the copyright was renewed after the initial 28 year term). Center for the Study of the Public Domain Every year, Duke University's Center for the Study of the Public Domain releases a list of famous works that would have entered the public domain on January 1st under the pre-1976 Copyright Act regime. Works that would have entered the public domain on January 1st, 2013 include famous books (e.g., Philip K. Dick’s “Minority Report”), famous periodicals (e.g., the first issue of MAD magazine), famous movies (e.g., The King and I starring Yul Brynner), and famous songs (e.g., In the Still of the Night performed by The Five Satins). For the full list see the Center’s post at “What Could Have Entered the Public Domain on January 1, 2013?”  Also, for more information about copyright and the public domain, see the “Public Domain Day Frequently Asked Questions.”

Announcing the Spring 2012 IP & Technology Newsletter from Bond, Schoeneck & King

May 23, 2012

The Intellectual Property & Technology Group at Bond, Schoeneck & King, PLLC is pleased to announce the official publication of the Spring 2012 IP & Technology Newsletter (pdf).  This second edition of Bond's quarterly newsletter includes articles on:

  • The U.S. Supreme Court’s Prometheus decision and the future of diagnostic patents (by Jeremy P. Oczek)
  • Recent developments to streamline e-discovery in patent cases (by Fred J.M. Price)

And don't miss the inaugural Winter 2012 edition of the IP & Technology Newsletter.