Divide and Conquer: Update on the Google Books Lawsuit
by George H. Pike
This year will mark the seventh anniversary of the lawsuit pitting the Google Books project against a coalition of authors, publishers, photographers, and other copyright owners. Notwithstanding the years that have passed, a series of recent developments have kick-started the lawsuit from settlement talks back to the litigation process. However, those same developments suggest a number of directions the lawsuit could take, ranging anywhere from a quick dismissal of the case to years of further litigation that could ultimately restructure U.S. and worldwide copyright law.
Google Print Library Project
The basic history of the Google Books lawsuit is now well-known. In 2004, Google initiated what was then called the Google Print Library Project, entering into agreements with several large academic and public libraries to scan the libraries’ books into Google’s servers. Web searches using Google are also run through the book collection, and relevant book results are presented as “snippets,” offering brief descriptions of the search terms and a few sentences from the book to provide context. While some books were already in the public domain and some publishers actually entered into agreements with Google, most of the books were scanned without obtaining permission from the copyright owners. Many of these books are so-called orphan works, books that are still under copyright protection, but the owner can no longer be identified or located.
Google was sued for copyright infringement by a host of players: first by The Authors Guild and several individual authors and then by The Association of American Publishers, along with several individual publishing companies that brought suit a few weeks later. Two other lawsuits garnered less publicity but weighed in with possibly equal or greater significance. The first was a lawsuit filed in the French courts by a number of French publishing companies in 2006, and the second was a suit filed by the American Society of Media Photographers, Inc., along with other photographer groups and individual photographers in 2010.
Using Fair Use Snippets
All of the lawsuits claimed that the project, now known as Google Books, infringed on copyrights owned by the various authors, publishers, and photographers. For its part, Google defended its actions, claiming that the copying and showing of snippets was a fair use of copyrighted material. The initial Authors Guild and publishers’ suits were merged by the courts, and the photographers joined the suit later. The French suit proceeded separately in the French courts.
Famously, a settlement of the guild and publishers’ suits was reached in 2008, which allowed Google to develop and to market the book database in return for payment of royalties to copyright owners. The creation of a registry was also mandated to manage the royalties, including holding royalties for copyright owners of potential orphan works. However, objections quickly mounted over what were seen as fundamental violations of owners’ rights to determine the use of their copyrights, as well as the exclusive rights that Google would obtain under the settlement. Early in 2011, a federal court rejected the settlement, indicating that Google went too far in violating fundamental copyright law and too far beyond the original scope of the lawsuit, which had been over the use of snippets and not full-text books.
Opt Out Versus Opt In
While settlement negotiations resumed, it quickly became clear that another full settlement was unlikely. The court had rejected the “opt out” scheme that automatically included all works in the database, subject to an owner being allowed to opt out. The alternate “opt in” scheme would have only allowed the database to contain books for which permission had been sought and granted. Many observers did not believe that would provide enough economic return on Google’s investment.
However, the underlying lawsuits, now joined by the photographers’ suit, still remained. By the end of 2011, both sides were taking action, with a motion by The Authors Guild to certify its case as a class action, a revised class action complaint by the photographers, and a motion by Google to dismiss both cases.
‘Legal or Beneficial Owner’
All three actions are interconnected with a basic concept of copyright law: In order to sue for copyright infringement, you need to be the “legal or beneficial owner” of a copyright. This is a threshold question that the courts will need to deal with before the questions of infringement or fair use are addressed.
Google’s dismissal motion targets the various associations that are behind the suits: The Authors Guild, the Media Photographers, and other organized groups. The motion asserts that the associations do not legally own any of the copyrights that Google is alleged to have infringed. Such associations can represent their members in a variety of legal and business activities, including lobbying in Congress and the U.S. Copyright Office, providing educational benefits on legal issues to their members; however, their role in litigation is often limited.
In order for an association to sue on behalf of its members, three factors must be met: First, there must be proof that the members could otherwise sue in their own right; second, that the subject matter is relevant to the organization’s purpose; and third, that the claim does not require the participation of the individual members. In this case, Google asserts that the third factor cannot be met. Google argues that not only does the copyright act require copyright ownership, but each owner’s situation is also unique. Google also asserts that its fair use defense would need to be decided on a case-by-case basis, depending on the facts and circumstances of each work. Consequently, the individual members must participate in the lawsuit, but the associations cannot.
The guild, the photographers, and the other associations involved are expected to respond that Google’s actions as a whole are so pervasively infringing that the individual members’ unique situations are not required to establish Google’s violation of copyright. Their motions and filings seeking class action status, which were filed just prior to Google’s motion to dismiss, seemed to indicate that they anticipated Google’s legal position. By asserting the case as a class action, several individual authors and photographers would represent all members of the class and be able to “participate” in a way that the associations cannot.
In addition, only the individual authors and photographers can assert specific damage claims for Google’s alleged infringement. If they are successful, damage claims can amount to as much as $150,000 per infringement. With thousands of authors and photographers asserting potentially millions of infringement claims, the damage potential is considerable. Google’s response is likely to mirror its motion for dismissal and will likely assert that each author and photographer’s individual circumstances are so unique that class action status can’t apply.
Google’s Divide and Conquer Strategy
In a nutshell, Google’s new divide and conquer strategy seems to be targeted toward defeating efforts for the case to be heard as a single, massive lawsuit. If that does not happen, it would be up to copyright owners to assert their individual claims. And while many would, the numbers and damage risk to Google would likely be far smaller than in a class action.
What has been notably absent from recent developments is any action by the publishers in their continuing lawsuit. Some commentators have suggested that the publishers may be closer to a revised and workable settlement. Given that Google has some licensing agreements already in place with individual publishers, those agreements could serve as a model for a settlement.
Of course, the best solution would be for changes in the copyright law to reflect the technological changes and social benefit that the Google book database unquestionably provides. The orphan works problem continues to loom; it inhibits not only Google but also any other organization that wants to digitize and make available any information that is copyrighted but does not have an identifiable owner. Millions of documents, photographs, works of music, and media items representing an extensive cultural and historical heritage exist in this netherworld, possessed by libraries and archives but limited to their dusty shelves.
Steps in the European Union
While changes in copyright law were recommended by the court as the best alternative to the rejected Google Books settlement, there does not seem to be any present action in Congress to suggest change. By contrast, the European Union has taken some steps in this direction that are worth noting. In 2009, the French courts ordered Google to shut down its digitization of copyrighted French works. In 2011, a European Union-backed project developed a registry into which information about orphan works rightsholders could be centralized. When a librarian or researcher identifies the ownership of an orphan work, he or she would make that information available to all via the registry.
This effort is working in conjunction with Europeana, a multinational portal that provides access to more than 15 million public domain digital works that have been made available by libraries, museums, and archives across Europe. A registry was part of the Google Books settlement, and while it was swept up in the overall rejection of the settlement, the European experience suggests that it could exist as a stand-alone development.
Google, The Authors Guild, and the photographers associations will soon file (or have filed) their responses to the recent motions. The court is expected to make its decisions on these motions later in the spring and, assuming the case continues, is targeting further action through the summer and fall.