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Authors Guild v. Google: Understanding Transformative Use

by | Mar 9, 2021 | Firm News

Authors Guild et al v. Google, Inc.
United States Court of Appeals for the Second Circuit
Docket No. 13-4829-cv

On October 16, the Second Circuit Court of Appeals ruled in favor of Google, Inc.’s book scanning project (the “Library Project”) in Authors Guild v. Google, Inc. (hereinafter “Author’s Guild”), upholding the District Court’s decision which found that Google’s activities were “highly transformative” and therefore “fair use.”

Depending upon your perspective, “fair use” is either a defense to a claim of copyright infringement or an affirmative right of the public to use a copyrighted work in certain ways. In either case, a “fair use” is one that may be freely engaged in without having to obtain permission from the copyright owner.

Section § 107 of the Copyright Act does not define “fair use,” but provides examples of uses that might be considered fair, and a set of criteria (the “four factors”) that were first suggested in a decision by Justice Joseph Story in Folsom v. Marsh, a case from 1841. [1] The statute mentions copying “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research,” but this list is only suggestive, not exhaustive, and in some circumstances even these uses may not fall under “fair use.” The four factors, which may be given varying weight, are:
(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.
One might ask what the word “transformative” has to do with “fair use,” when the word isn’t mentioned in the statute. The answer, in part, goes back to an article written by Judge Pierre Leval (the same judge who wrote the Author’s Guild decision) entitled “[] Toward a Fair Use Standard,” published in the Harvard Law Journal in 1990.[2] In that article, Judge Leval seizes upon the words of Justice Story that a fair appropriation would be one that “superseded the objects” of the original. In other words, Leval argued, the question “turns primarily on whether, and to what extent, the challenged use is “transformative. The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original.”[3] Judge Leval then goes on to criticize the Supreme Court in Harper & Row, Publishers, Inc. v. Nation Enterprises (471 U.S. 539, 547 (1985)) for choosing the fourth factor as the “single most important” factor under the “fair use” test. “Quoting,” Judge Leval wrote,
is not necessarily stealing. Quotation can be vital to the fulfillment of the public-enriching goals of copyright law. The first fair use factor calls for a careful evaluation whether the particular quotation is of the transformative type that advances knowledge and the progress of the arts or whether it merely repackages, free riding on another’s creations. If a quotation of copyrighted matter reveals no transformative purpose, fair use should perhaps be rejected without further inquiry into the other factors. Factor One is the soul of fair use. A finding of justification under this factor seems indispensable to a fair use defense. The strength of that justification must be weighed against the remaining factors, which focus on the incentives and entitlements of the copyright owner. [Citations omitted.]
Four years later, when the Supreme Court had an opportunity to revisit the “fair use” doctrine in Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994), the Supreme Court adopted Judge Leval’s reasoning:
[The first factor] asks, in other words, whether and to what extent the new work is “transformative.” Although such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright, and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use. [Citations omitted.]
Fast forward to 2015, and Judge Leval was faced with the question of whether the Library Project’s scanning and permitting consumers to view “snippets” of books against the copyright owner’s wishes constituted fair use. Now sitting on the Second Circuit Court of Appeals, Judge Leval faced three questions: (1) was Google’s copying (digitizing) the books an infringement of copyright; (2) are snippet views showing 3-line excerpts from the books an infringement of copyright; and (3) does Google’s commercial interest override any finding of the transformative nature of the Library Project.

The first question was quickly dispatched with a reference to the Second Circuit’s decision in Authors Guild, Inc. v. HathiTrust, 755 F. 3d 87 (2d Cir. 2014), and the observation that the digital copies made by Google are not publicly accessible and therefore could not serve as a market substitute for the originals (or potentially licensed derivatives). The sole purpose of digitalization, the Second Circuit found, was to allow “searchers to identify and locate the books in which words or phrases of interest to them appeared:”
As with HathiTrust (and iParadigms), the purpose of Google’s copying of the original copyrighted books is to make available significant information about those books, permitting a searcher to identify those that contain a word or term of interest, as well as those that do not include reference to it. In addition, through the ngrams tool, Google allows readers to learn the frequency of usage of selected words in the aggregate corpus of published books in different historical periods.
The Second Circuit had “no doubts” that the copying was transformative, and “fair use,” at least when practiced by the not-for-profit HathiTrust. It was less clear about “snippet view,” but ultimately concluded that it, too, was transformative. On the one hand, Google’s snippets are “designed to show the searcher just enough context surrounding the searched term to help her evaluate whether the book falls within her scope of interest (without revealing so much as to threaten the author’s copyright interests).” On the other hand, although “snippet view” “does not give searchers access to effectively competing substitutes,” the court did recognize
that the snippet function can cause some loss of sales. There are surely instances in which a searcher’s need for access to a text will be satisfied by the snippet view, resulting in either the loss of a sale to that searcher, or reduction of demand on libraries for that title, which might have resulted in libraries purchasing additional copies. But the possibility, or even the probability or certainty, of some loss of sales does not suffice to make the copy an effectively competing substitute that would tilt the weighty fourth factor in favor of the rights holder in the original. There must be a meaningful or significant effect “upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4).

Furthermore, the type of loss of sale envisioned above will generally occur in relation to interests that are not protected by the copyright. A snippet’s capacity to satisfy a searcher’s need for access to a copyrighted book will at times be because the snippet conveys a historical fact that the searcher needs to ascertain. For example, a student writing a paper on Franklin D. Roosevelt might need to learn the year Roosevelt was stricken with polio. By entering “Roosevelt polio” in a Google Books search, the student would be taken to (among numerous sites) a snippet from page 31 of Richard Thayer Goldberg’s The Making of Franklin D. Roosevelt (1981), telling that the polio attack occurred in 1921. This would satisfy the searcher’s need for the book, eliminating any need to purchase it or acquire it from a library. But what the searcher derived from the snippet was a historical fact. Author Goldberg’s copyright does not extend to the facts communicated by his book. It protects only the author’s manner of expression. [Citation omitted.] Google would be entitled, without infringement of Goldberg’s copyright, to answer the student’s query about the year Roosevelt was afflicted, taking the information from Goldberg’s book. The fact that, in the case of the student’s snippet search, the information came embedded in three lines of Goldberg’s writing, which were superfluous to the searcher’s needs, would not change the taking of an unprotected fact into a copyright infringement.

Even if the snippet reveals some authorial expression, because of the brevity of a single snippet and the cumbersome, disjointed, and incomplete nature of the aggregation of snippets made available through snippet view, we think it would be a rare case in which the searcher’s interest in the protected aspect of the author’s work would be satisfied by what is available from snippet view, and rarer still—because of the cumbersome, disjointed, and incomplete nature of the aggregation of snippets made available through snippet view—that snippet view could provide a significant substitute for the purchase of the author’s book.
The key to understanding the Court’s conclusion that “snippet view” would not have a significant impact on the copyright owner’s interest lies in understanding what “derivative rights” are granted to a copyright owner. § 106 of the Copyright Act grants to the copyright owner the exclusive right:
• making copies of the work (or if a sound recording, making “phonorecords,” a term that encompasses digital files)
• preparing derivative works.
• distributing copies or phonorecords to the public by sale or rental, lease or lending;
• for literary, musical, dramatic and choreographic works, pantomimes, motion picture and other audiovisual works, to perform the work publicly;
• for literary, musical, dramatic and choreographic works, pantomimes, and pictorial, graphic or sculptural works, including individual images of a motion picture or other audiovisual work, to display the work publicly; and
• for sound recordings, to perform the work publicly via digital audio transmission.
The phase “derivative works” is not defined in the law, but its scope is suggested by examples that include “a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, [or] condensation” and “any other form in which a work may be recast, transformed or adapted.” 17 U.S.C. § 101. As the Second Circuit points out, “derivative works generally involve transformations in the nature of changes of form,” rather than changes of purpose that defines “transformative” use. Using a book’s expressive content for purposes of criticism or commentary, or to provide information about the text, are examples of transformative purposes and are not considered derivative works. Weighing this definition against the manner and method of Google’s “snippet view,” the Court concluded that “the Plaintiffs’ authorship of their works does not include an exclusive right to furnish the kind of information about the works that Google’s programs provide to the public.”

In answer to the last question – whether Google’s commercial motives disqualify its claim of “fair use,” the Court relied primarily on Campbell v. Acuff-Rose Music, as well as the Second Circuit’s own precedents. In Campbell, the Supreme Court emphasized that because most “fair use” activities were carried on for profit, the commercial or nonprofit character of a work was “not conclusive” but merely “a fact to be weighed along with others in fair use decisions.” Moreover, the Supreme Court taught, “the more transformative the [new] work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” Based on this reading, the Second Circuit concluded:
[W]e see no reason in this case why Google’s overall profit motivation should prevail as a reason for denying fair use over its highly convincing transformative purpose [as well as] the absence of significant substitutive competition, as reasons for granting fair use.
What the Court meant by “significant substitutive competition” are opportunities for exploitation that would have been open the copyright holder’s right but for Google’s use. In fact, the Court found no such opportunities. Just as copyright owners have no right to control critical reviews of their works, and cannot own the facts that are contained in their works, so they cannot restrict others from furnishing information about their works, so long as in doing so there is no substantial taking of expressive content. Ultimately, the Second Circuit’s decision rested on the limited nature of Google’s “snippet view” which, it found,
does not provide searchers with any meaningful experience of the expressive content of the book. Its purpose is not to communicate copyrighted expression, but rather, by revealing to the searcher a tiny segment surrounding the searched term, to give some minimal contextual information to help the searcher learn whether the book’s use of that term will be of interest to her.
Any broader use of the copyright owners’ texts by Google would almost surely have required licensing. (For this reason, the key findings of the Second Circuit with respect to “snippet view” are reproduced below.) [4]

[1] Folsom v. Marsh, 9 F. Cas. 342, 348 (C.C.D. Mass. 1841)
[2] Pierre N. Leval, “Toward a Fair Use Standard,” 103 Harv. L. Rev. 1105 (1990).
[3] Id., see Leval’s analysis under Factor 1.
[4] “Google has constructed the snippet feature in a manner that substantially protects against its serving as an effectively competing substitute for Plaintiffs’ books. In the Background section of this opinion, we describe a variety of limitations Google imposes on the snippet function. These include the small size of the snippets (normally one eighth of a page), the blacklisting of one snippet per page and of one page in every ten, the fact that no more than three snippets are shown—and no more than one per page—for each term searched, and the fact that the same snippets are shown for a searched term no matter how many times, or from how many different computers, the term is searched. In addition, Google does not provide snippet view for types of books, such as dictionaries and cookbooks, for which viewing a small segment is likely to satisfy the searcher’s need. The result of these restrictions is, so far as the record demonstrates, that a searcher cannot succeed, even after long extended effort to multiply what can be revealed, in revealing through a snippet search what could usefully serve as a competing substitute for the original.

“The blacklisting, which permanently blocks about 22% of a book’s text from snippet view, is by no means the most important of the obstacles Google has designed. While it is true that the blacklisting of 22% leaves 78% of a book theoretically accessible to a searcher, it does not follow that any large part of that 78% is in fact accessible. The other restrictions built into the program work together to ensure that, even after protracted effort over a substantial period of time, only small and randomly scattered portions of a book will be accessible. In an effort to show what large portions of text searchers can read through persistently augmented snippet searches, Plaintiffs’ counsel employed researchers over a period of weeks to do multiple word searches on Plaintiffs’ books. In no case were they able to access as much as 16% of the text, and the snippets collected were usually not sequential but scattered randomly throughout the book.

“Because Google’s snippets are arbitrarily and uniformly divided by lines of text, and not by complete sentences, paragraphs, or any measure dictated by content, a searcher would have great difficulty constructing a search so as to provide any extensive information about the book’s use of that term. As snippet view never reveals more than one snippet per page in response to repeated searches for the same term, it is at least difficult, and often impossible, for a searcher to gain access to more than a single snippet’s worth of an extended, continuous discussion of the term.

“The fact that Plaintiffs’ searchers managed to reveal nearly 16% of the text of Plaintiffs’ books overstates the degree to which snippet view can provide a meaningful substitute. At least as important as the percentage of words of a book that are revealed is the manner and order in which they are revealed. Even if the search function revealed 100% of the words of the copyrighted book, this would be of little substitutive value if the words were revealed in alphabetical order, or any order other than the order they follow in the original book. It cannot be said that a revelation is “substantial” in the sense intended by the statute’s third factor if the revelation is in a form that communicates little of the sense of the original. The fragmentary and scattered nature of the snippets revealed, even after a determined, assiduous, time-consuming search, results in a revelation that is not “substantial,” even if it includes an aggregate 16% of the text of the book. If snippet view could be used to reveal a coherent block amounting to 16% of a book, that would raise a very different question beyond the scope of our inquiry.