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Wednesday, October 26, 2005

Search Or Seizure?

Whenever possible over the last week, I've been making my way through some of the avalanche of background materials and commentary concerning the two Google Print (or more specifically, Google Library) lawsuits now pending in the Southern District of New York (one brought by the Authors Guild and three individual plaintiffs, and the most recent, filed last week, brought by five publishers). Charles W. Bailey, Jr.'s extensive bibliography is an excellent starting point if you too are seeking to better comprehend what is at stake and the potential outcomes. I agree with John Battelle that this shapes up as a long and hard fought battle with ripple (or perhaps tidal wave) effects extending into many areas beyond text search. I also agree with the commentators who suspect one or both of these cases will travel through the docket of the U.S. Supreme Court before they see the finish line. In these initial stages of the proceedings, the plaintiffs and their advocates appear to be putting all their chips on the square marked "Second Circuit's narrow interpretation of commercial fair use." There is no telling how that gamble will pay off, or how the Supreme Court will respond if it does, but the following points are likely to be important along the way.

Of Black Hats And Kettles

As any IP lawyer, and the Stanford Copyright & Fair Use resources, will tell you, many fair use cases turn on the so-called "fifth factor" in the traditional analysis. As the Stanford folks put it, "Despite the fact that the Supreme Court has indicated that offensiveness is not a fair use factor, you should be aware that a morally offended judge or jury may rationalize its decision against fair use." This begs the question: who is wearing the black hat in the Google Library cases? There is heated debate on the subject, and a growing body of statements by those involved who hope to win hearts and minds to their view. Derek Slater, who has been characteristically thoughtful and prolific on this subject, points to Tim Lee and asks, "Would we be better off with opt-in search engines?" From a public policy standpoint, it's difficult to imagine a court answering "yes" to that one. But John Battelle understands that a court's analysis won't stop at whether Google Library benefits humanity. It will instead look closely at the economics (this is, after all, a commercial undertaking on Google's part), and the fate of data. Depending on your perspective Google Library is either compelling or threatening, but there is a common thread underlying both positions: nothing like it has ever been undertaken and brought to life. Google has resources and capacity that libraries lack. (Want proof the plaintiffs understand perfectly the importance of hat color here? Note that though both complaints challenge actions taking place under the auspices of the University of Michigan, there is but one defendant: Google Inc.) When those resources and capacity are brought to bear, many works that have not previously enjoyed a digital existence suddenly will. So, though Derek urges that "Google is not Napsterizing books; they're showing small snippets and need to copy the whole books as only an intermediate step to showing snippets to individuals," there is no denying that as a by-product of Google Library — poof! — digital copies will exist that did not before, and they will be under the control of a private, commercial party. In addressing the Napsterization specter (which I think will undoubtedly play a role in the fair use analysis), Google would be wise to focus on the legal considerations ensuring that if it does do something "evil" with the copies it makes, it will be held accountable. In other words, I don't think it's enough for the plaintiffs to merely assert that bringing these copies into being in a manner the plaintiffs do not control defeats fair use. I think they'll also have to show they are without recourse in the event the works are somehow "Napsterized" (and I think they'll have to explain how that can be given authorities like MGM v. Grokster). After all, the fact that Google is going down this road at this time is something of an accident of history. This genie was not going to stay in its bottle forever. Ten or twenty years down the road, the "black hat" points a party might earn by creating digital copies would be diluted to insignificance by the fact that, simply as a function of time and technology, so many by then will be available.

Thus, the perceived equities in this case will play a pivotal role, and Google can't be cast as the bad guy simply because it is a for-profit company making unauthorized copies of copyrighted works. By the same token, the plaintiffs can't be cast as the good guys simply because, as the publishers' complaint emphasizes, they're trying to accomplish similar ends on their own terms through participation in the Open Content Alliance. Peter Suber's take on the opt-out question sets the stage:

The authors—and the publishers who share the same grievance—are getting far too much mileage from the claim that Google's opt-out policy turns the usual copyright rule on its head. This claim has a deceptive strength. It's strong because it would be valid for most full-text copying. It's deceptive because it assumes without proof that the Google copying is not fair use. Hence it begs the question at the heart of the lawsuit. If the Google copying is fair use, then no prior permission is needed and the opt-out policy is justified. Moreover, Google has several good arguments that its copying really is fair use, most notably its argument that its indexing will enhance rather than diminish book sales and its analogy to long-accepted opt-out policies for search-engine indexing of other copyrighted content.

The plaintiffs in both lawsuits want the court to understand that copyright law isn't vitiated by providing and honoring an "opt out" from activities that are alleged to be otherwise infringing. Well and good. But the publishers' complaint, with its citation of the Open Content Alliance to show that they actually "feel your pain" when it comes to the inaccessibility of printed works and that they are doing something about it, fails to recognize an inescapable corollary: the copyright holder's voluntary actions, however laudable, don't vitiate fair use. And when it comes to fair use and these lawsuits, Professors Lessig and Patry make some particularly resonant points.

Professor Lessig observes:

This is the best case to illustrate the story I told at the start of Free Culture. Property law since time immemorial had held that your land reached from the ground to the heavens. Then airplanes were invented – a technology oblivious to this ancient law. A couple of farmers sued to enforce their ancient rights – insisting airplanes can't fly over land without their permission. And thus the Supreme Court had to decide whether this ancient law – much older than the law of copyright – should prevail over this new technology.

The Supreme Court's answer was perfectly clear: Absolutely not. "Common sense revolts at the idea," Justice Douglas wrote. [...]

He goes on argue that if fair use permits commercial enterprises to copy and index the copyrighted works populating the Internet, it must also encompass the Google Library concept, and if it does not, something is seriously amiss.

For his part, Professor Patry suggests that courts should be wary of sacrificing the policies underlying the fair use doctrine on the altar of its four factor test:

I have increasingly come to find the traditional four factor fair use analysis not only unhelpful, but harmful to looking at uses that may promote the progress of science and not injure copyright owners' interests. We would have been much better off had the 1976 Act simply said in Section 107 "Notwithstanding the provisions of Section 106, the fair use of a copyrighted work is not an infringement." Putting four factors in the statute has made courts and the rest of us think that Section 107 either "codifies" fair use (it doesn't), define fair use (no again), or somehow provide a way in a real case to assist in determining the outcome, and here I would say the statute does the most harm: the temptation is almost overwhelming to run through the factors, cite previous decisions about how and what the factor entails, is to be weighed etc. and then to tally up who was naughty and who was nice and to what degree. That's an artificial approach and maybe intellectually dishonest in some cases if we reach a conclusion first and then fill in the "reasoning" afterwards. [...]

The upshot, he says, is we should not let traditional fair use factor components, such as the extent of the copying, and the commercial motives of the copier, doom uses that on balance promote the interests that copyright law seeks to serve:

So in the Google project, why should we care if there are server copies? The purposes for the copies in connection with the Print Library project is to give people access to knowledge about the existence of the book as well as a tiny amount of text. That is of great help to researchers and hopefully to authors and publishers of the books too. It in no way harms copyright owners unless the project becomes something else, namely a full-text service which then is a market substitute.

Accordingly, though the procedural aspects of these cases will undoubtedly play an important role (particularly the arguments surrounding class certification in the authors' case), given what is at stake and who is lined up on either side I don't think there is any way these matters will be won or lost on procedural considerations. Regardless of how they get there, they will ultimately turn on the courts' balancing of the equities against the backdrop of the overarching goals of the Copyright Act.

Second Sight

Jonathan Band has succinctly analyzed how Google Library might fit into the search and fair use rubric laid out in Kelly v. Arriba Soft, 336 F.3d 811 (9th Cir. 2003). What remains to be seen is whether the Second Circuit will concur that Kelly was correctly decided, and if so, whether the principles set forth there, in the context of image search and thumbnails, apply equally here, in the context of text search and excerpts. What I have not yet seen assembled for public consumption (though you can be sure lawyers for the plaintiffs and Google have conducted their own analyses, or are doing so as we speak) is a survey of the Second Circuit's body of law on fair use, viewed through the lens of the issues in these lawsuits. (Please let me know if this has been done and I haven't seen it, or if it gets done in the near future; I'll update to include the link(s). Thus far, I have only noticed Professor Patry's parenthetical observation that "The Second Circuit is divided on whether bad faith is a fair use factor.") Whether or not you agree with its characterization of the Second circuit as the jurisdiction when it comes to IP law, this snippet from a Barbara Quint article underscores why a reading of the Second Circuit's fair use—and particularly commercial fair use—tea leaves is in order:

[A]nother legal expert advised me that the Kelly v. Arriba Soft Corp. case holds as mandatory precedent only within the Ninth Circuit's jurisdiction, rather than nationally as do cases decided by the Supreme Court. The appellate court with the largest body of intellectual property cases and the highest reputation in that area is the Second Circuit Court of Appeal, which is the jurisdiction to which the U.S. District Court for the Southern District of New York belongs. In fact, among the cases citing Kelly v. Arriba Soft Corp., the only one citing it with disfavor was from New York, the jurisdiction in which the Authors Guild suit [and now the publishers' suit—DH] is filed. Ultimately, however, both legal advisors with whom I spoke assured me that any case that elicits split rulings from these appellate courts would virtually assure an appearance before the Supreme Court.

Though there may be excellent reasons for the Second Circuit to follow the Ninth Circuit's lead in Kelly when it ultimately considers the issues the Google Library cases present, it doesn't have to. Whether it will, or whether it will chart a different course, remains to be seen, but there may well be clues in its body of fair use precedent to date.

Regarding the Quint article's reference to a New York or Second Circuit case negatively referencing Kelly, I don't see it. The one published decision to negatively reference Kelly appears to be Video Pipeline, Inc. v. Buena Vista Home Entertainment, Inc., 342 F.3d 191, 199 (3d Cir. 2003). That case involved a movie clip database (not a search engine), but did distinguish Kelly in a way the Google Library plaintiffs seem bound to emulate, namely: "Video Pipeline's database does not, however, serve the same function as did Arriba Soft's search engine. As used with retailers' web sites, does not improve access to authorized previews located on other web sites. Rather, it indexes and displays unauthorized copies of copyrighted works."

Parting Thoughts

Google should be analyzing the "white hat" and "black hat" aspects of its position with exacting care, paying particular attention to why fair use applies to commercial and noncommercial actors alike, and to demonstrating to the courts' satisfaction how the law will continue to protect the copyright owners' interests in a world that includes Google Library. For their part, the plaintiffs should be reminding themselves as often as possible that bluster, outrage, and underestimating the importance of fair use in the broader universe of copyright will not take them very far. And all concerned should be going to school (as I'm sure they already are) on the Second Circuit's fair use decisions.

[Update, 10/27] Here are some of Siva Vaidhyanathan's thoughts about the venue, which depart somewhat from those of Barbara Quint's source:

Look, when it comes to copyright, the Southern District of New York and the Second Circuit do not make good law. Learned Hand has been dead a long time. The chances of good law coming out of the home turf of Time Warner, Viacom, and the News Corporation at the behest of some punk-kid company from California are as slim as those of good wine coming from New York. I sure wish New York produced good wines. And I wish SDNY and the Second Circuit understood digital copyright better (see Universal v. Reimerdes). But we shall be waiting a long time for both these things.

And with that, I'm off to find a nice meritage.

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