The Authors Guild v. Google, Inc.

Filing 138

MOTION, to file amended sealed amicus curiae brief, to file supplemental appendix, on behalf of Amicus Curiae Morton Beebe, Leland Bobbe, John Francis Ficara, Graphic Artists Guild, Ed Kashi, David W. Moser, North American Nature Photography Association, Picture Archive Council of America, Inc., Professional Photographers of America, Al Satterwhite, John Schmelzer, Leif Skoogfors, Simms Taback and The American Society of Media Photographers, Inc., FILED. Service date 02/27/2013 by CM/ECF. [859475] [12-3200]--[Edited 02/28/2013 by KG] [Entered: 02/27/2013 07:39 PM]

No. 12-3200
IN THE UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT

THE AUTHORS GUILD, INC., et al.,
Plaintiffs-Appellees,
v.
GOOGLE, INC.,
Defendant-Appellant.

On Appeal from an Order Granting Certification of a Class Action, Dated May 31,
2012, by the United States District Court for the Southern District of New York,
No. 1:05-cv-08136 Before the Honorable Denny Chin

DECLARATION IN SUPPORT OF MOTION FOR LEAVE TO FILE AN
AMENDED SEALED AMICUS BRIEF AND SUPPLEMENTAL APPENDIX
[REDACTED VERSION]
Mark A. Berube hereby declares as follows:
1.

I am a partner in the law firm of Mishcon de Reya NY LLP, attorneys

for Amici Curiae American Society of Media Photographers, Inc., Graphic Artists
Guild, Inc., Picture Archive Counsel of America, Inc., North American Nature
Photography Association, Professional Photographers of America, Leif Skoogfors,
Al Satterwhite, Morton Beebe, Ed Kashi, John Schmelzer, Simms Taback, Leland
Bobbe, John Francis Ficara and David W. Moser (“Amici Curiae”). I submit this
Declaration in support of the Amici Curiae’s motion (“Motion”) for leave to file

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an amended sealed Amicus Brief (“Sealed Brief”) and to submit a supplemental
appendix (“Supplemental Appendix”) in support thereof consisting of three (3)
documents that were produced in a companion copyright infringement lawsuit to
the one at issue on this Appeal against Defendant-Appellant Google, Inc.
(“Google”), currently pending before the Honorable Denny Chin. See The Am.
Soc’y of Media Photographers, et al. v. Google, Inc., No. 10 CV 02977 (DC)
(S.D.N.Y.) (“ASMP Action”).
2.

Amici Curiae are plaintiffs in the ASMP Action, a companion

copyright infringement lawsuit to the Authors Guild v. Google Inc., Civil Action
No. 05 CV 8136 (DC) (“AG Action”), the lawsuit at issue in the instant Appeal.
3.

The Amici Curiae sought and obtained consent from all parties to file

an Amicus Brief (“Brief”) in support of Plaintiffs-Appellees’ request that the
Second Circuit affirm the District Court’s Order granting Plaintiffs’ Motion for
Class Certification, dated May 31, 2012.
4.

The Amici Curiae sought consent from all parties to file this

subsequent Sealed Brief and Supplemental Appendix. Plaintiffs-Appellees consent
to the filing and Google opposes.
5.

In support of the Sealed Brief, the Amici Curiae move for leave to

submit three (3) documents that were recently produced by Google to Amici Curiae
in the related ASMP Action and designated as “Confidential” or “Highly

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Confidential” pursuant to the Protective Order (Docket No. 68) in that case. True
and correct copies of the Sealed Brief and Supplemental Appendix containing
these three documents are annexed hereto as Exhibits A and B, respectively.
6.

As part of its production in the ASMP Action, Google produced the

entirety of its production in the AG Action (“AG Production”) to Amici Curiae (the
ASMP plaintiffs). The Amici Curiae have reviewed the AG Production and have
confirmed that none of the documents in the Supplemental Appendix were
produced in the AG Action.
7.

On or about December 2, 2005, Google served

a true and correct copy of
which is annexed as Exhibit C.
8.

On or about February 2, 2012, Google served

a true and
correct copy of which is annexed as Exhibit D.
9.

Because of the Protective Order in the ASMP Action, the Amici

Curiae could not provide these documents to Plaintiffs-Appellees.
10.

In accordance with the Protective Order, the Amici Curiae submitted a

letter request to Judge Chin for permission to submit the documents in the

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Supplemental Appendix to the Second Circuit under seal in connection with the
Motion.
11. On February 14, 2013, the Amici Curiae filed a motion for extension
of time to file the Sealed Brief from February 15, 2013 to February 22, 2013, in
order to allow Judge Chin time to consider Amici Curiae’s request. See Docket
No. 88.
12. On February 15, 2013, the original deadline for the Brief, Judge Chin
granted the Amici Curiae’s request in the ASMP Action and a copy of Judge
Chin’s Order was submitted to the Second Circuit on February 20, 2013. See
Docket No. 116-2. Since the Second Circuit did not rule on the Amici Curiae’s
motion for extension of time to file before the Brief was due, the Amici Curiae
filed the Brief on February 15, 2013. See Docket No. 107.
13. On February 22, 2013, the Second Circuit granted the Amici Curiae’s
request for a one-week extension of time. See Docket No. 126. Since the Amici
Curiae could not have the Sealed Brief printed in time by a vendor to meet the
February 22, 2013 extended deadline they requested and obtained a three (3)

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business-day extension, until February 27, 2013, to file the Sealed Brief and this
Motion.
I declare that the foregoing is true and correct, in accordance with 28 U.S.C.
§ 1746.
Executed this 27th day of February.
/s/Mark A. Berube
Mark A. Berube

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a

(;+,%,7 $

12-3200-cv
IN THE

United States Court of Appeals
FOR THE SECOND CIRCUIT

d

THE AUTHORS GUILD, INC., Associational Plaintiff, BETTY MILES,
JOSEPH GOULDEN, and JIM BOUTON, individually and
on behalf of all others similarly situated,
—against—

Plaintiffs-Appellees,

GOOGLE INC.,
Defendant-Appellant.
ON APPEAL FROM AN ORDER GRANTING CERTIFICATION OF A CLASS ACTION,
ENTERED ON MAY 31, 2012, BY THE UNITED STATES DISTRICT COURT FOR
THE SOUTHERN DISTRICT OF NEW YORK, NO. 1:05-CV-08136-DC
BEFORE THE HONORABLE DENNY CHIN

AMENDED BRIEF FOR AMICI CURIAE THE AMERICAN SOCIETY
OF MEDIA PHOTOGRAPHERS, INC., GRAPHIC ARTISTS GUILD, INC.,
PICTURE ARCHIVE COUNCIL OF AMERICA, INC., NORTH AMERICAN
NATURE PHOTOGRAPHY ASSOCIATION, PROFESSIONAL
PHOTOGRAPHERS OF AMERICA, LEIF SKOOGFORS,
AL SATTERWHITE, MORTON BEEBE, ED KASHI, JOHN SCHMELZER,
SIMMS TABACK, LELAND BOBBE, JOHN FRANCIS FICARA AND
DAVID W. MOSER IN SUPPORT OF APPELLEES AND AFFIRMANCE
[REDACTED VERSION]

February 27, 2013

JAMES J. MCGUIRE
MARK A. BERUBE
MISHCON DE REYA NEW YORK LLP
750 Seventh Avenue, 26th Floor
New York, New York 10019
[phone]
Attorneys for Amici Curiae The American
Society of Media Photographers, Inc.,
Graphic Artists Guild, Inc., Picture Archive
Council of America, Inc., North American
Nature Photography Association, Professional
Photographers of America, Leif Skoogfors,
Al Satterwhite, Morton Beebe, Ed Kashi,
John Schmelzer, Simms Taback, Leland Bobbe,
John Francis Ficara and David W. Moser

CORPORATE DISCLOSURE STATEMENT
In accordance with Rules 26.1 and 29(c)(1) of the Federal Rules of
Appellate Procedure, amici curiae, the American Society of Media Photographers,
Inc., Graphic Artists Guild, Inc., Picture Archive Counsel of America, Inc., North
American Nature Photography Association, and Professional Photographers of
America, certify as follows:
None of these entities has a parent corporation, and no publicly held
corporation owns 10% or more of their respective stock.
Amici curiae Leif Skoogfors, Al Satterwhite, Morton Beebe, Ed Kashi, John
Schmelzer, Simms Taback, Leland Bobbe, John Francis Ficara, and David W.
Moser are all natural persons.

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TABLE OF CONTENTS
CORPORATE DISCLOSURE STATEMENT ..........................................................i
REQUEST FOR ORAL ARGUMENT.. ............................................................... viii
INTEREST OF AMICI CURIAE..............................................................................1
SUMMARY OF ARGUMENT .................................................................................4
STANDARD OF REVIEW .......................................................................................6
ARGUMENT .............................................................................................................7
I

THE DISTRICT COURT PROPERLY FOUND THAT THE INDIVIDUAL
NAMED PLAINTIFFS ADEQUATELY REPRESENT THE CLASS
BECAUSE THERE EXISTS NO CONFLICT OF INTEREST.....................7
A.

II

Even If There Was Evidence That GBS Benefits Some
Class Members, The Illegality Of The Program Renders
Any Potential Conflict Irrelevant As A Matter Of Law........................8

THE DISTRICT COURT PROPERLY
CERTIFIED THE CLASS UNDER RULE 23(B)(3). ..................................13
A.

Common Questions Predominate With
Respect To Google’s Fair Use Defense. .............................................14

B.

The District Court Properly Found That Individual
Ownership Issues Do Not Predominate. .............................................24

CONCLUSION........................................................................................................29

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TABLE OF AUTHORITIES
Page(s)
CASES
A&M Records, Inc. v. Napster, Inc.,
239 F.3d 1004 (9th Cir. 2001) ............................................................................20
Am. Geophysical Union v. Texaco Inc.,
60 F.3d 913 (2d Cir. 1995) .................................................................................22
Apple Inc. v. Psystar Corp.,
673 F. Supp. 2d 943 (N.D. Cal. 2009)................................................................27
Bresson v. Thomson McKinnon Sec. Inc.,
118 F.R.D. 339 (S.D.N.Y. 1988) ........................................................................12
Brooklyn Ctr. for Independence of the Disabled v. Bloomberg,
No. 11 Civ. 6690(JMF), 2012 WL 5438849 (S.D.N.Y. Nov. 7, 2012)..............11
Brown v. Kelly,
609 F.3d 467 (2d Cir. 2010) .................................................................................6
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994)................................................................................15, 17, 20
Columbia Pictures Indus., Inc. v. Fung,
No. CV 06-5578 SVW, 2010 U.S. Dist. LEXIS 91169 (C.D. Cal. May
20, 2010) .............................................................................................................27
Conn. Bar Assoc. v. United States,
620 F.3d 81 (2d Cir. 2010) .................................................................................13
Engel v. Scully & Scully, Inc.,
279 F.R.D. 117 (S.D.N.Y. 2011) ........................................................................13
Fonar Corp. v. Domenick,
105 F.3d 99 (2d Cir. 1997) .................................................................................26
Freeland v. AT & T Corp.,
238 F.R.D. 130 (S.D.N.Y. 2006) ....................................................................8, 21

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Goto.com, Inc. v. Walt Disney Co.,
202 F.3d 1199 (9th Cir. 2000) ............................................................................27
Hyderi v. Wash. Mut. Bank,
235 F.R.D. 390 (N.D. Ill. 2006)..........................................................................12
In re Enron Corp.,
419 F.3d 115, 126 (2d Cir. 2005) .......................................................................13
In re Flag Telecom Holdings, Ltd. Sec. Litig.,
574 F.3d 29 (2d Cir. 2009) ...................................................................................6
In re Potash Antitrust Litig.,
159 F.R.D. 682 (D. Minn. 1995) ........................................................................11
In re Visa Check/MasterMoney Antitrust Litig.,
280 F.3d 124 (2d Cir. 2001) .....................................................................8, 14, 25
Infinity Broad. Corp. v. Kirkwood,
150 F.3d 104 (2d Cir. 1998) .........................................................................22, 23
Iowa State Univ. Research Found., Inc., v. Am. Broad. Cos.,
621 F.2d 57, 61 (2d Circ. 1980)..........................................................................23
Jacobi v. Bache & Co., Inc. et al.,
No. 70 Civ. 3152, 1972 WL (S.D.N.Y Feb. 8, 1972).........................................10
Jermyn v. Best Buy Stores, L.P.,
276 F.R.D. 167 (S.D.N.Y. 2011) ........................................................................13
JP Morgan Chase Bank v. Altos Hornos De Mexico, S.A. DE C.V.,
412 F.3d 418 (2d Cir. 2005) ...............................................................................13
L.A. Printex Indus., Inc. v. Le Chateau, Inc.,
No. 11 CIV. 4248 LTS, 2012 WL 987590 (S.D.N.Y. Mar. 23, 2012)...............27
Marisol A. v. Giuliani,
126 F.3d 372 (2d Cir. 1997) ...............................................................................21
Maywalt v. Parket & Parsley Petroleum Co.,
147 F.R.D. 51 (S.D.N.Y. 1993) ..........................................................................25

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Merkos L’Inyonei Chinuch, Inc. v. Otsar Sifrei Lubavitch, Inc.,
312 F.3d 94 (2d Cir. 2002) .................................................................................22
Music v. Heiman,
No. 09-cv-341-bbc, 2010 WL 1904341 (W.D. Wis. May 11, 2010) .................27
Nowalk Care v. Norwalk Redevelopment Agency
395 F.2d 920, 937 (2d Cir. 1968) .......................................................................10
Olan Mills, Inc. v. Linn Photo Co.,
23 F.3d 1345 (8th Cir. 1994) ..............................................................................28
Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146 (9th Cir. 2007) ............................................................................28
Princeton Univ. Press v. Mich. Document Servs.,
99 F.3d 1381 (6th Cir. 1996) ..............................................................................28
Ruggles v. Wellpoint, Inc.,
272 F.R.D. 320 (N.D.N.Y. 2011) .......................................................................10
Shahriar v. Smith & Wollensky Rest. Group, Inc.,
659 F.3d 234 (2d Cir. 2011) .................................................................................6
Shelter Realty Corp. v. Allied Maint. Corp.,
574 F.2d 656 (2d Cir. 1978) ...............................................................................11
Trautz v. Weisman,
846 F. Supp. 1160 (S.D.N.Y. 1994) ...................................................................25
Triad Sys. Corp. v. Se. Express Co.,
64 F.3d 1330 (9th Cir. 1995) ..............................................................................27
UMG Recordings, Inc. v. MP3.com, Inc.,
92 F. Supp. 2d 349 (S.D.N.Y. 2000) ..................................................................20
Wal-mart Stores, Inc. v. Dukes,
131 S. Ct. 2541 (2011)..................................................................................13, 14
Warner Bros. Entm’t Inc. v. Carsagno,
No. 06 CV 2676(NG)(RLM), 2007 WL 1655666 (E.D.N.Y. June 4,
2007) ...................................................................................................................28

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Weber v. Goodman,
9 F. Supp. 2d 163 (E.D.N.Y. 1998) ....................................................................12
Weissmann v. Freeman,
868 F.2d 1313 (2d Cir. 1989) .............................................................................22
Wilder v. Bernstein,
499 F. Supp. 980 (S.D.N.Y 1980) ......................................................................10
Wu v. Pearson Educ., Inc.,
277 F.R.D. 255 (S.D.N.Y. 2011) ........................................................................12
STATUTES
17 U.S.C. § 117(c) ...................................................................................................27
17 U.S.C. § 501..........................................................................................................4
17 U.S.C. § 502(a) ...................................................................................................28
17 U.S.C.A. § 107(1-4) ............................................................................................15
RULES
Fed. R. Civ. P. 23(a)(2)...........................................................................................13
Fed. R. Civ. P. 23(a)(4)................................................................................5, 7, 8, 12
Fed. R. Civ. P. 23(b)(3)......................................................................................13, 14
Fed. R. Civ. P. 23 (c)(1)(C) .....................................................................................21
Local Rule 29.1 ..........................................................................................................1
OTHER AUTHORITIES
1 A. Conte, Herbert Newburg, NEWBERG ON CLASS ACTIONS §3:30 (4th ed.)........10
5 James William Moore et al., MOORE’S FEDERAL PRACTICE § 23.25[2][b][ii]
(3d ed.1998) ..........................................................................................................8
5 James William Moore et al., MOORE’S FEDERAL PRACTICE §
23.25[2][b][iii] (3d ed.1998)...............................................................................10

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vi

Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1124
n.84 (1990)..........................................................................................................23

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vii

REQUEST FOR ORAL ARGUMENT
The amici curiae respectfully request oral argument on this Appeal. Oral
argument will allow the amici curiae to explain to this Court the postures of the
various interested parties, the issues in dispute, and to address the applicable law in
that context.

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viii

Amici curiae respectfully submit this Amicus Brief in support of Appellees,
the Authors Guild, Inc., Betty Miles, Joseph Goulden, and Jim Bouton, and request
that the Court affirm the District Court’s Order Granting Plaintiffs’ Motion for
Class Certification, dated June 11, 2012 (“Order”). All parties originally consented
to the submission of a brief by amici curiae. However, Defendant-Appellant
Google (“Google”) now opposes amici curiae’s submission of the Supplemental
Appendix (“SA”) and argument concerning those documents.1
INTEREST OF AMICI CURIAE
The American Society of Media Photographers, Inc. (“ASMP”) is a not-forprofit corporation that since its 1944 founding has been the leading advocate for
copyright and contractual rights of freelance published photographers. ASMP,
through its 39 nationwide chapters, represents more than 7,000 members, including
some of the world’s foremost photographers. ASMP’s activities on behalf of its
members include participating in significant copyright cases in U.S. Courts, policy
discussions and testimony before the Copyright Office, consideration of copyright
reform legislation in Congress, and educational campaigns providing useful
information to its members about copyright law, contractual issues, and good
business practices.
1

Pursuant to Local Rule 29.1, no party’s counsel authored this Brief in whole or part. No party
and no party’s counsel contributed money intended to fund preparing or submitting the Brief.
No person other than the amici curiae herein and their counsel contributed money intended to
fund preparing or submitting this Brief.
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Graphic Artists Guild, Inc. (“GAG”) is a not-for-profit corporation and
national union of graphic artists dedicated to promoting and protecting the social,
economic, and professional interests of its members. GAG’s members include
graphic designers, web designers, digital artists, illustrators, cartoonists, animators,
art directors, surface designers, and those working in various combinations of these
disciplines. Founded in 1967, GAG has established itself as the leading advocate
for the rights of graphic artists on a wide range of economic and legislative issues
from copyright to tax law.
Picture Archive Counsel of America, Inc. (“PACA”) is a not-for-profit
corporation representing the vital interests of stock archives of every size, from
individual photographers to large corporations, licensing images for commercial
reproduction. Founded in 1951, its membership includes over 100 companies in
North America and over 50 international members. Through advocacy, education,
and communication, PACA strives to foster and protect the interests of the picture
archive community. Accordingly, PACA strives to develop useful business
standards, promote ethical business practices, and actively advocate copyright
protection.
North American Nature Photography Association (“NANPA”) is a not-forprofit corporation committed solely to serving the field of nature photography.

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NANPA promotes the art and science of nature photography and provides
information, education, and opportunity for those interested in such photography.
Professional Photographers of America (“PPA”) is the world’s largest notfor-profit association for professional photographers, with more than 20,000
members in 54 countries. The association seeks to increase its members’ business
savvy as well as broaden their creative scope, and is a leader in the dissemination
of knowledge in the areas of professional business practices and creative imagemaking.
Leif Skoogfors, Al Satterwhite, Morton Beebe, Ed Kashi, Leland Bobbe,
John Francis Ficara, and David W. Moser are published photographers, and John
Schmelzer and Simms Taback are published illustrators, whose works are
contained in books and periodicals in the libraries of the Universities of California,
Michigan, Virginia, and Wisconsin, Stanford University, and/or other libraries
whose books and periodicals Google has reproduced or indicated its intention to
reproduce, as well as books and periodicals published by Google’s publishing
partners.
The Google Books Search program (“GBS”) involves the en masse scanning
and electronic display and distribution of the associational members’ and
individual amici’s photographs, illustrations, graphic art, and other visual images
not in the public domain (collectively, “Visual Works”) and contained in the

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aforementioned books and periodicals. The individual amici and associations
(collectively, “Amici Visual Artists”) share a strong interest in protecting the
copyright in their or their members’ Visual Works in general, and as a direct result
of Google’s unlawful practices. To that end, the Amici Visual Artists are similarlysituated plaintiffs in a related copyright infringement class action lawsuit brought
against Google, pursuant to 17 U.S.C. § 501, now pending before the Honorable
Denny Chin, styled The American Society of Media Photographers, Inc. v. Google
Inc., Civil Action No. 10 Civ. 2977 (DC) (S.D.N.Y. filed Apr. 7, 2010) (“ASMP
Action”). Because this Court’s decision may well have a bearing on the Amici
Visual Artists’ ability to certify their class in the ASMP Action, the Amici Visual
Artists also have a strong interest in seeing that this Court affirm the District
Court’s decision below certifying the class.
SUMMARY OF ARGUMENT
First, Google’s argument that there exists a conflict of interest between class
representatives and certain members of the class, precluding class certification
under Federal Rule of Civil Procedure 23(a)(4), fails for a host of reasons. As the
District Court correctly found, Google’s survey “evidence” is wholly unreliable
and irrelevant. Further, the purported position of opposed class members would
amount to advocating that Google’s unlawful infringement continue -- a position
that the law will not countenance in determining whether a conflict exists.

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Second, Google’s own actions in copying and distributing plaintiffs’ works
en masse without performing the individualized analysis it now avers is required
undercuts its position that common questions do not predominate because the
District Court must conduct a book-by-book inquiry to determine fair use. The
fact that Google itself has moved for summary judgment on fair use, arguing that
this defense can be adjudicated on a classwide basis, further undercuts its position.
As Google has previously argued, and as the District Court correctly determined,
fair use can be addressed through generalized proof and analysis.
Finally, the District Court properly concluded that ownership issues can be
addressed at the remedies stage without undue difficulty, and that individualized
issues do not predominate for this reason. Indeed, the necessary information is
largely publicly available from Copyright Office records.

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STANDARD OF REVIEW
This Court reviews the District Court’s determination of class certification
for abuse of discretion. Brown v. Kelly, 609 F.3d 467, 475 (2d Cir. 2010)
(affirming lower court’s decision to certify); Shahriar v. Smith & Wollensky Rest.
Group, Inc., 659 F.3d 234, 250 (2d Cir. 2011) (same). Under the abuse of
discretion standard, this Court reviews factual findings underlying the
determination for clear error. See id. This Court also provides greater deference to
the District Court in its review of a decision granting certification -- as here -- as
opposed to one denying certification. Brown, 609 F.3d at 485; In re Flag Telecom
Holdings, Ltd. Sec. Litig., 574 F.3d 29, 34 (2d Cir. 2009) (affirming class
certification; where certification granted, “we accord the district court noticeably
more deference than when we review a denial of class certification.”).

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ARGUMENT
I
THE DISTRICT COURT PROPERLY FOUND THAT THE INDIVIDUAL
NAMED PLAINTIFFS ADEQUATELY REPRESENT THE CLASS
BECAUSE THERE EXISTS NO CONFLICT OF INTEREST.
Rule 23(a)(4) of the Federal Rules of Civil Procedure requires that class
representatives “fairly and adequately protect the interests of the class.” Fed. R.
Civ. P. 23(a)(4). Here, the District Court concluded that they do. See SPA30-32.
Indeed, Google itself, when its interests were different and it was advocating that
the District Court approve the Amended Settlement Agreement, filed Nov. 13,
2009, Docket No. 770-2 (“Settlement Agreement”), reached the same conclusion -“[n]o one could seriously question that plaintiffs are adequate representatives of
the class members’ interests.” Brief of Google Inc. in Support of Motion for Final
Approval of Amended Settlement Agreement, dated February 11, 2010, Docket
No. 941 (“Brief in Support of Final Approval”) at 24.
Google now argues that because some class members purportedly feel that
they benefit from GBS, the class representatives’ objectives are “fundamentally at
odds with a significant portion of the proposed class.” Thus, Google contends the
District Court erred in finding that they adequately represent the class. Brief for
Appellant, dated November 9, 2012, Docket No. 37 (Case No. 12-3200)

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(“Google’s Brief”) at 18-25. Google’s argument -- as the District Court properly
found -- is without merit and fails as a matter of law.
“[T]he conflict that will prevent a plaintiff from meeting the Rule 23(a)(4)
prerequisite must be fundamental, and speculative conflict should be disregarded at
the class certification stage.” In re Visa Check/MasterMoney Antitrust Litig., 280
F.3d 124, 145 (2d Cir. 2001) (affirming class certification) (superseded on other
grounds); Freeland v. AT & T Corp., 238 F.R.D. 130, 141 (S.D.N.Y. 2006) (same);
5 James William Moore et al., MOORE’S FEDERAL PRACTICE § 23.25[2][b][ii] (3d
ed.1998) (to find inadequacy of representation “the conflict must be more than
merely speculative or hypothetical”). Here, not only is there no fundamental
conflict, there is no legally cognizable one.
A.

Even If There Was Evidence That GBS Benefits Some
Class Members, The Illegality Of The Program Renders
Any Potential Conflict Irrelevant As A Matter Of Law.

Google argues as follows:
While Plaintiffs object to [GBS] and seek to enjoin
Google’s searchable index and its display of snippets,
many absent class members benefit from [GBS] and want
to see it continue, because it makes their books more
widely known and accessible. That clash of interests
between Plaintiffs and a large portion of the class
precludes certifying a class here. If Plaintiffs were to
prevail, they would deprive many authors of the benefits
they obtain from [GBS].
See Google’s Brief at 14.

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The library associations who filed an amicus brief in support of Google
(“Amici Libraries”) argue that the scope of statutory damages for which Google
could be responsible -- should the District Court ultimately decide in plaintiffs’
favor -- might be so astronomical that GBS may need to be shut down, resulting in
a de facto injunction and impairing some authors’ interests. See Brief for Amici
Curiae the American Library Association, the Association of College and Research
Libraries, and the Association of Research Libraries in Support of DefendantGoogle and Reversal, dated November 16, 2012, Docket No. 55 (Case No. 123200) (“Libraries’ Amicus Brief”) at 7-9.
These conflict challenges are untenable. As an initial matter, the survey
“evidence” Google relies upon, as the District Court found and as demonstrated
upon this appeal, is fatally flawed. See SPA31-32; Brief for Appellees, dated
February 8, 2013, Docket No. 81 (Case No. 12-3200) (“AG’s Brief”) at 21-33.
However, even if there was legally sufficient evidence of a conflict, Google’s and
the Amicis Libraries’ arguments still miss the mark for a host of reasons. First,
Google mischaracterizes the scope of injunctive relief sought by Appellees.
Appellees do not seek to “dismantle” the GBS program as Google contends. See
AG’s Brief at 22-24 (clarifying scope of remedy).
Moreover, as the District Court properly found, a Court cannot, as a matter
of law, countenance alleged beneficial unlawful conduct, such as copyright

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infringement, in evaluating whether a conflict of interest exists. SPA31 (“[t]hat
some class members may prefer to leave the alleged violation of their rights
unremedied is not a basis for finding the lead plaintiffs inadequate”). “Adequacy is
not undermined where the opposed class members’ position requires continuation
of an allegedly unlawful practice.” Ruggles v. Wellpoint, Inc., 272 F.R.D. 320,
338 (N.D.N.Y. 2011); Wilder v. Bernstein, 499 F. Supp. 980, 993 (S.D.N.Y 1980)
(“The fact that some members of the class may be personally satisfied with the
existing system and may prefer to leave the violation of their rights unremedied is
simply not dispositive of a determination under Rule 23(a)”); 5 James William
Moore et al., MOORE’S FEDERAL PRACTICE § 23.25[2][b][iii] (3d ed.1998) (“[a]
court will not refuse to certify a class solely because some of the class members
prefer to leave their rights unremedied”); 1 A. Conte, Herbert Newburg, NEWBERG
ON CLASS ACTIONS

§3:30 (4th ed.) (“[t]he class member who wishes to remain a

victim of unlawful conduct does not have a legally cognizable conflict with the
class representative”) (citing Jacobi v. Bache & Co., Inc. et al., No. 70 Civ. 3152,
1972 WL 560, *2 (S.D.N.Y. Feb. 8, 1972) (“[t]he fact that some members of the
class may differ as to the desirability of a particular remedy for the anti-trust
violation, or even desire the maintenance of the status quo, does not preclude their
being included within the class bringing the action”) and Norwalk Core v. Norwalk
Redevelopment Agency, 395 F.2d 920, 937 (2d Cir. 1968) (“The fact that some

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members of the class were personally satisfied with the defendants’ [alleged
unlawful activity] is irrelevant.”)); In re Potash Antitrust Litig., 159 F.R.D. 682,
692 (D. Minn. 1995) (rejecting defendant’s argument regarding inadequacy, where
illegally controlled market tended to favor interest of class members; “[t]his is not
an interest the law is willing to protect.”).
Google’s and Amici Libraries’ entire position is inappropriately premised on
the assumption that GBS is lawful. See also Brief of Amici Curiae Academic
Authors in Support of Defendant-Google And Reversal, dated November 16, 2012,
Docket No. 57 (Case No. 12-3200) at 16 (“There is, in our view, no infringement
that requires the grant of injunctive or monetary relief.”) Indeed, it is hard to
imagine how anyone could argue straight-faced that should GBS be found
unlawful, Google should not be subject to damages and an injunction. Nearly
every argument advanced by Google and its supporters, as will be discussed further
below, flows from this defective premise -- that the merits have already been
decided in Google’s favor.2 However, at the class certification stage, the truth of
plaintiffs’ allegations must be assumed. See Shelter Realty Corp. v. Allied Maint.
Corp., 574 F.2d 656, 661 n.15 (2d Cir. 1978) (“it is proper to accept the complaint
allegations as true in a class certification motion”); Brooklyn Ctr. for Independence
2

Indeed, the Amici Libraries’ argument concerning the breadth of potential statutory damages is
particularly misplaced. This is not the proper forum to attack the scope of statutory damages
available under the Copyright Act. If the Amici Libraries feel that the legislated statutory
damages are too high, they should raise this matter with Congress.

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of the Disabled v. Bloomberg, No. 11 Civ. 6690(JMF), 2012 WL 5438849, *6
(S.D.N.Y. Nov. 7, 2012) (certifying class; same). Hence, the fact of infringement
(unlawful activity) must be assumed at this stage, simply because plaintiffs have
pleaded infringement. Accordingly, the purported interest of certain authors in
perpetuating an illegal policy for their own benefit -- namely copyright
infringement -- is simply not a cognizable reason to find a conflict and deny class
certification.
For the foregoing reasons, this Court should affirm the District Court’s
finding of adequacy pursuant to Rule 23(a)(4).3

3

Google also incorrectly contends that there are “superior” ways to resolve the issues than
through class litigation, such as by “separate cases involving smaller groups of works whose
owners really do want their books excluded” or through “individual suits.” Google’s Brief at 25,
n.6. Google fails to explain how either of these alternatives could actually work as a practical
matter or how such alternatives would be “superior” as compared to a class action. Google
further claims that there is a “sufficient incentive to bring individual suits given the availability
of statutory damages and the ability to recover attorneys’ fees and costs under the Copyright
Act.” Id. Google is wrong. First, it is preposterous to suggest that individual plaintiffs would
sue to recover $750 in statutory damages on the off chance that the District Court might exercise
its discretion under the Copyright Act and award them 100% of their legal fees and costs (as
almost any lower award would make the litigation unprofitable). See Weber v. Goodman, 9 F.
Supp. 2d 163, 170-71 (E.D.N.Y. 1998) (class action superior method, where only small damages
award available to individual plaintiffs under Fair Debt Collection Practices Act); cf. Bresson v.
Thomson McKinnon Sec. Inc., 118 F.R.D. 339, 345 (S.D.N.Y. 1988) (class action superior
method, where average investment amounted to $8600 in investors’ action against brokerage
firm). Further, Google fails to cite a single case in the copyright context. Google’s Brief at 25,
n.6 (citing Hyderi v. Wash. Mut. Bank, 235 F.R.D. 390, 404 (N.D. Ill. 2006)) (discussing
availability of statutory damages under Real Estate Settlement Procedures Act). Moreover, even
as Hyderi indicates, “the availability of attorneys fees and costs is not a per se bar against class
certification.” 235 F.R.D. at 404; see also Wu v. Pearson Educ., Inc., 277 F.R.D. 255, 271
(S.D.N.Y. 2011) (rejecting defendant’s argument, in copyright infringement action, superiority
not met due to “availability of attorney fees and statutory damages,” because “[t]his fact alone
does not determine the issue of superiority.”).

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II
THE DISTRICT COURT PROPERLY
CERTIFIED THE CLASS UNDER RULE 23(B)(3).
Certification is permissible under Rule 23(b)(3), where “questions of law or
fact common to class members predominate over any questions affecting only
individual members.” See Fed. R. Civ. P. 23(b)(3).4 Predominance is established,

4

The Amici Libraries also take issue with the District Court’s finding of commonality under
Rule 23(a)(2). See Libraries’ Amicus Brief at 9-17. However, this argument is waived because
Google not only failed to raise it in its opening brief, but agreed below that commonality was
satisfied. See SPA29 (“Google does not dispute that the proposed class satisfies the numerosity,
commonality, and typicality requirements of Rule 23(a).”); Conn. Bar Assoc. v. United States,
620 F.3d 81, 88 n.7 (2d Cir. 2010) (challenge to statutory provision waived because not raised at
district court level) (citing In re Enron Corp., 419 F.3d 115, 126 (2d Cir. 2005) (“federal
appellate courts will generally not consider an issue or argument not raised in the district
court”)); JP Morgan Chase Bank v. Altos Hornos De Mexico, S.A. DE C.V., 412 F.3d 418, 428
(2d Cir. 2005) (“[a]rguments not made in an appellant’s opening brief are waived even if the
appellant pursued those arguments in the district court or raised them in a reply brief”).
However, even if this Court were to consider the Amici Libraries’ argument -- which it should
not -- the commonality prong has been met. To meet the requirement of commonality, class
members must “have suffered the same injury” and “their claims [must] depend on a common
contention . . . that is capable of classwide resolution.” SPA23-24 (citing cases). “Even a single
question of law or fact common to the members of the class will satisfy the commonality
requirement.” Wal-mart Stores, Inc. v. Dukes, 131 S. Ct. 2541, 2562 (2011); Engel v. Scully &
Scully, Inc., 279 F.R.D. 117, 128 (S.D.N.Y. 2011) (commonality met, where “[t]he critical
questions of the defendant’s business practices and willfulness are common to all class members,
and are likely to generate common answers which drive the resolution of the litigation”; “A
single common issue of law may be sufficient to satisfy the commonality requirement . . .”).
The Amici Libraries misinterpret and misapply Wal-mart. In Wal-mart, the Supreme Court
found commonality was not satisfied because of lack of proof of a “general policy of
discrimination.” Id. at 2553; see also id. at 2547 (“Pay and promotion decisions at Wal-mart are
generally committed to local managers’ broad discretion, which is exercised in a largely
subjective manner.”) (internal quotations and citation omitted); Jermyn v. Best Buy Stores, L.P.,
276 F.R.D. 167, 172 (S.D.N.Y. 2011) (denying motion to decertify class; “[h]ad the [Wal-mart]
plaintiffs actually alleged a general, non-discretionary corporate policy disfavoring women and
offered some proof that such a policy existed, then obviously the case could have and would
have proceeded as a class action.”). Here, Google’s GBS policies are as global as can be
imagined. Further, as discussed in Section IIA, infra, it is absurd for the Amici Libraries to
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if the legal or factual questions that can be resolved through generalized proof
“predominate over those issues that are subject only to individualized proof.” In re
Visa Check/MasterMoney Antitrust Litig., 280 F.3d at 136. For the reasons
discussed below, the District Court properly certified the class pursuant to Rule
23(b)(3).
A.

Common Questions Predominate With
Respect To Google’s Fair Use Defense.

The District Court correctly found that Google’s affirmative defense of fair
use can be resolved on a classwide basis. SPA32-33. For purposes of determining
whether the use of a copyrighted work is “fair,” a Court must consider four
statutory factors:
(i) the purpose and character of the use, including
whether such use is of a commercial nature or is for
nonprofit educational purposes;
(ii) the nature of the copyrighted work;
(iii) the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
suggest that the fair use inquiry can be decided on a classwide basis by only analyzing factor
one, and at the same time argue that such a classwide resolution of the transformative use
question under factor one is not a common answer. How could an across the board finding as to
fair use not be a common answer? In any event, common questions capable of generating
common answers include, for example, whether Google’s use is a fair use (as all four factors can
be analyzed on a classwide basis, a position Google itself has taken, see Defendant Google Inc.’s
Memorandum of Points and Authorities In Support of Its Motion For Summary Judgment or in
the Alternative Summary Adjudication, dated July 27, 2012, Docket No. 1032 (“Fair Use Brief”)
at 2-3), whether Google’s use is commercial (which Google continues to deny, see Defendant
Google Inc.’s Answer to Plaintiffs’ Fourth Amended Complaint, Docket No. 985, at ¶¶ 5, 33),
and whether Google’s other asserted statutory defenses are applicable (Id., Fifth Defense).
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(iv) the effect of the use upon the potential market for or
value of the copyrighted work.
See 17 U.S.C. § 107(1-4). This test requires that all four factors be considered and
weighed together. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994)
(“Nor may the four statutory factors be treated in isolation, one from another. All
are to be explored, and the results weighed together, in light of the purposes of
copyright.”).
Google’s stance on fair use and that of the amici supporting it is filled with
internal inconsistencies and is a paradigm of seeking to have one’s cake and eat it,
too. First, they acknowledge that all four factors of the fair use test must be
independently evaluated. See Fair Use Brief at 20 (citing four factors “to be
considered”); Google’s Brief at 26-27, 35 (same; “fair use analysis requires the
district court to balance each factor in combination”); Libraries’ Amicus Brief at
12-13 (“The Copyright Act requires all four factors to be considered together in
determining whether the use made of a work in any particular case is fair. No
single factor may be considered in a vacuum ... . A single fair use factor viewed in
isolation, even if it could be decided on a classwide basis, has no independent
significance and will not generate common answers to the question of fair use.”).
They then assert, upon this Appeal that factors two through four must be evaluated
on a book-by-book basis and cannot be evaluated based upon generalized proof.
See Google’s Brief at 29 (“Three of the four statutory fair use factors require
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careful individual analysis before Google’s fair use defense can be denied: ‘the
nature of the copyrighted work’ (factor two), ‘the amount and substantiality of the
portion used’ (factor three), and ‘the effect of the use upon the potential market for
or value of the copyrighted work’ (factor four).”).
Thereafter, Google’s and its supporters’ arguments are rife with
inconsistencies. Initially, after having argued that all four factors must be
evaluated together, and for individual, book-by-book review, they contend in the
same breadth that the District Court could find the entire GBS project a fair use by
considering factor one in isolation -- the transformative nature of the use.5 See
Google’s Brief at 28, 29-30 (“Google has argued, in turn, that the transformative
nature of [GBS] and the significant public benefits of the project render the entire
project fair use and defeat the infringement claim of every member of the proposed
class. . . . If Google’s argument based on the first factor (along with the overall,
beneficial nature of the project) does not uniformly prevail, its fair use defense also
turns on book specific reasons why its uses of individual books are fair.”);
Libraries’ Amicus Brief at 14, n.5 (“Of course, if the District Court were to find
that the entire GBS project is legitimate based on the transformative purpose and

5

Mirabile dictu, Google and its supporting amici somehow ignore that under their own reasoning
the District Court could find that the entire GBS project is not fair use by deciding it is not
transformative. They assume that the District Court would necessarily have to evaluate the last
three factors on a book-by-book basis, giving GBS a second bite at the apple. As noted
previously, the arguments advanced by Google and its supporters arrogantly assume victory on
the merits at every turn.

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16

character of the use, then it could find fair use without having to consider each
individual work.”). Such audacity is breathtaking. So contending, they somehow
ignore when convenient both their own prior arguments and the most recent and
controlling decision of the Supreme Court on fair use in Campbell, which counsels
that no factor can be evaluated in isolation. 510 U.S. at 578.
Further, Google, in its pending motion before the District Court seeking
summary judgment as to its fair use defense, avers that all four factors can be
analyzed generally on a classwide basis. See Fair Use Brief at 2-3. For instance,
factor two (the nature of the work), which Google argues here requires a book-bybook analysis (Google’s Brief at 33-34), can, when convenient for Google upon its
motion for summary judgment, be evaluated generically: “the Google Books
corpus contains works of every type, and thus the nature of the works does not
weigh one way or the other on a classwide basis.” Fair Use Brief at 2.
Remarkably, Google attempts to obfuscate this point and contend that only
plaintiffs have taken the position that fair use can be decided in a global,
generalized manner: “[p]laintiffs have nonetheless sought to litigate their claims on
an all-or-nothing basis, arguing that [GBS] is a ‘single program’ that is either
unlawful or not. Dkt. No. 1008, at 2.” Google’s Brief at 28. Google neglects to
inform this Court that it has taken the precisely same position in its own summary
judgment papers filed with the District Court on the same day as plaintiffs’. It is

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ludicrous for Google to suggest that fair use can be decided on summary judgment
on a classwide basis, and in the same breath argue that the existence of
individualized factual issues as to this same fair use defense precludes class
certification. Otherwise put, Google’s position upon this Appeal as to the need for
individualized proof and a book-by-book evaluation, entirely undercuts its
competing stance that the District Court can grant it summary judgment on fair use
on a classwide basis. Google cannot have it both ways. Either a book-by-book
inquiry is required, or it is not.
The hypocrisy does not end with advancing conflicting positions on different
motions for different purposes. Google’s current position requiring a book-bybook analysis to adjudicate fair use is particularly incongruous, given that Google
has copied and distributed plaintiffs’ works en masse without performing the
individualized analysis it now alleges is required. Indeed, Google’s consistent
position to date has been that its actions are categorically protected as fair use
irrespective of the individual work at issue. Yet, as the District Court correctly
found:

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[G]iven the sweeping and undiscriminating nature of
Google’s unauthorized copying, it would be unjust to
require that each affected association member litigate his
claim individually. When Google copied works, it did
not conduct an inquiry into the copyright ownership of
each work; nor did it conduct an individualized
evaluation as to whether posting “snippets” of a
particular work would constitute “fair use.” It copied and
made search results available en masse. Google cannot
now turn the tables and ask the Court to require each
copyright holder to come forward individually and assert
rights in a separate action. Because Google treated the
copyright holders as a group, the copyright holders
should be able to litigate on a group basis.
SPA21.
Further, at bottom, Google’s position here, like that on ownership issues
addressed in the next section, is that if one engages in copyright infringement on a
grand enough scale, copyright holders are left with no effective remedy. The
combination of individualized issues, in large part the result of the scope of the
infringement, renders class certification unworkable and individual rightsholders
for all practical purposes powerless to obtain redress on their own. In sum,
according to Google, had it infringed 100 books group redress would be possible.
Because it has infringed millions, it is not. This cannot be the law.
While Google is correct to maintain that the fair use inquiry is a factual one
that must be evaluated on a case-by-case basis, this does not mean the evaluation
must occur on the micro, book-by-book level. It does not mean that the Court must
separately analyze each work, any more than Google did when it copied them all

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without discrimination. Campbell stands for the proposition that there are no
“bright-line rules” in the fair use context, and that balancing the factors will vary
with every situation. 510 U.S. at 577-79. That situation here is Google’s mass
copying and display of copyrighted works through GBS. To be sure, Courts often
engage in a general, categorical fair use analysis where defendant’s conduct is
pervasive, as here. See, e.g., UMG Recordings, Inc. v. MP3.com, Inc., 92 F. Supp.
2d 349, 350-52 (S.D.N.Y. 2000) (rejecting fair use defense after applying factors to
entire website (and not individual CDs or songs) permitting users to download
“tens of thousands of popular CDs” without permission); A&M Records, Inc. v.
Napster, Inc., 239 F.3d 1004, 1015-19 (9th Cir. 2001) (same). The District Court
correctly concluded that this is how GBS should be evaluated in this Action. See
SPA32-33 (“Every potential class member’s claim arises out of Google’s uniform,
widespread practice of copying entire books without permission of the copyright
holder and displaying snippets of those books for search. Whether this practice
constitutes copyright infringement does not depend on any individualized
considerations.”).
Turning to Google’s discussion of the elements of the fair use defense,
Google itself contends, as discussed above, that the first factor can be addressed
through generalized proof. Google’s Brief at 29-30.

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As to the second factor -- “the nature of the copyrighted work” -- the District
Court rightly concluded that the use of subclasses could obviate the need for
individualized determinations at the book-by-book level. See SPA33 (“[t]he
question of ‘fair use’ may be evaluated on a sub-class-wide basis. The Court
would determine whether the defense applies to a particular type of book,
obviating the need to evaluate each book individually”). Google has failed to
demonstrate why the District Court’s proposed use of sub-classes (such as by genre
of book) would not work, and merely faults the District Court for failing to
“explain” how the use of sub-classes would obviate the need for individual
determinations. See Google’s Brief at 35-36. However, the District Court’s failure
to define sub-classes at this stage is of no moment. See Fed. R. Civ. P. 23
(c)(1)(C) (“An order that grants or denies class certification may be altered or
amended before final judgment”); Marisol A. v. Giuliani, 126 F.3d 372, 379 (2d
Cir. 1997) (affirming class certification but instructing District Court to define
subclasses; “[t]he district court may allow additional discovery and hold
evidentiary hearings in order to determine which classifications may be
appropriate.”). “Rule 23 gives the district court flexibility to certify subclasses as
the case progresses and as the nature of the proof to be developed at trial becomes
clear.” Id. at 379; Freeland, 238 F.R.D. at 142 (same).

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On the third factor -- the amount and substantiality of the portion used -Google does not dispute that it copied entire books for its own use and distributed
entire digital copies of books to libraries. This uniform practice of wholesale
copying and distribution -- regardless of what was ultimately made publicly
available on GBS -- weighs in favor of plaintiffs. See Merkos L’Inyonei Chinuch,
Inc. v. Otsar Sifrei Lubavitch, Inc., 312 F.3d 94, 99 (2d Cir. 2002) (“Though not an
absolute rule, generally, it may not constitute a fair use if the entire work is
reproduced”) (citing Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104, 109 (2d Cir.
1998)); Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 926 (2d Cir. 1995)
(same); Weissmann v. Freeman, 868 F.2d 1313, 1325 (2d Cir. 1989) (same).
Google attempts to cloud and misdirect the issue, arguing that the Court
should compare the limited “snippets” text returned in response to a single search
against that quantity of text in the book as a whole. See Google’s Brief at 32-33.
This is an apples and oranges comparison. GBS is not a static device where only
one search is performed returning only one group of snippets. The snippets
displayed change in response to the search. Over time, GBS will display the vast
majority of a book to the public in the form of different snippets generated by
different searches.
As to the fourth factor -- market impact -- Google focuses almost
exclusively on the purported benefits of GBS. See Google’s Brief at 30-32.

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However, favorable market impact is not enough. Judge Leval, in his seminal
work on fair use, provides the following example:
If, for example, a film director takes an unknown
copyrighted tune for the score of a movie that becomes a
hit, the composer may realize a windfall from the
aftermarket for his composition. Nonetheless, if the
taking is unjustified under the first factor, it should be
considered infringement, regardless of the absence of
market impairment.
Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1124 n.84
(1990) (internal citations omitted). Such purported benefits are insufficient in and
of themselves, whether they inure to the benefit of copyright holders or the public
at large. “The fair use doctrine is not a license for corporate theft, empowering a
court to ignore a copyright whenever it determines the underlying work contains
material of possible public importance.” Iowa State Univ. Research Found., Inc.,
v. Am. Broad. Cos., 621 F.2d 57, 61 (2d Cir. 1980); see also Infinity Broad. Corp.,
150 F.3d at 110 (“societal benefit does not guarantee a finding of fair use”).

See SA13

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23

); SA26-27

SA28 (

I); SAil (
).

B.

The District Court Properly
Found That Individual Ownership
Issues Do Not Predominate.

The District Court properly concluded that ownership issues can be
addressed at the remedies stage without undue difficulty, and that individualized
issues do not predominate for this reason. See SPA17-18, 33. The submission of
evidence to establish membership in a class is common in class actions.

Scc AG’s

Brief at 51-53, 56-59. Google offers no rationale for treating this case differently
and requiring consideration of class membership issues at the certification, as
opposed to the remedies, stage.

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24

Further, Courts routinely consider far more complicated individualized
issues at the remedies stage in class actions than any presented here, including
individual damages assessments.6 See In re Visa Check/MasterMoney Antitrust
Litig., 280 F.3d at 139 (collecting cases); Trautz v. Weisman, 846 F. Supp. 1160,
1167 (S.D.N.Y. 1994); Maywalt v. Parket & Parsley Petroleum Co., 147 F.R.D.
51, 56 (S.D.N.Y. 1993).
In another example of Google’s inconsistency in support of its chameleon
legal positions, Google itself did not view ownership issues as overly complicated
when it negotiated and endorsed the Settlement Agreement later rejected by the
District Court, which sets forth procedures for establishing ownership and
submitting claims. See Settlement Agreement at Article XIII. When Google found
such procedures beneficial in the context of a favorable settlement, Google did not
view the sort of individualized ownership issues of which it now complains as
copious or insurmountable. Now that the settlement is off the table, those issues
have become so.
In addition, as Appellees argue at great length, proof of ownership is
available from readily accessible objective evidence, vitiating the need for
individualized determinations. See AG’s Brief at 43-59. A copyright registration
is prima facie evidence of ownership. In fact, when its interests were different and
6

Of course, such damages assessments are not implicated here, where the class has elected
minimum statutory damages.
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it was advocating approval of the Settlement Agreement, Google itself noted that
copyright records are easily searchable and submitting claims not particularly
burdensome or onerous. See Brief in Support of Final Approval at 61-63 (“For
Books registered since 1978, registration records are easily searchable on the
website of the United States Copyright Office, www.copyright.gov.” . . . [For
Books registered prior to 1978], Google scanned the entirety of the Catalog of
Copyright Entries . . . . Thus anyone - both Rightsholders and members of the
public - can research the registration status of a pre-1978 book electronically.”).
Google mistakenly now contends, while acknowledging that this
presumption arises and is thereafter rebuttable, that the burden remains on
plaintiffs throughout. See Google’s Brief at 46-47, n.13. To the contrary, the
burden shifts to defendant -- here Google -- to show that the facts contained in the
certificate are not true and that ownership should not be presumed. Fonar Corp. v.
Domenick, 105 F.3d 99, 104 (2d Cir. 1997) (“A certificate of copyright registration
is prima facie evidence that the copyright is valid. Moreover, possession of a
registration certificate creates a rebuttable presumption that the work in question is
copyrightable. [Plaintiff’s] proffer of its certificate of copyright registration thus
shifts to [defendant] the burden of proving the invalidity of the copyright, and there
the burden rests, unless the presumptions are rebutted.”) (internal quotations and

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citations omitted); L.A. Printex Indus., Inc. v. Le Chateau, Inc., No. 11 CIV. 4248
LTS, 2012 WL 987590, *3 (S.D.N.Y. Mar. 23, 2012) (same).
The Amici Libraries make the additional argument that individual ownership
issues would make an injunction prohibitively difficult to administer. See
Libraries’ Amicus Brief at 22-25. They are mistaken for a host or reasons. First, it
is Google’s burden, as the infringer, to find a way to comply with any injunction
that might be issued. See Triad Sys. Corp. v. Se. Express Co., 64 F.3d 1330, 1337
(9th Cir. 1995), superseded in part on other grounds by statute, 17 U.S.C. § 117(c)
(“Putting this burden on [defendant] is appropriate because [defendant] is the
infringer.”); Goto.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1211 (9th Cir.
2000) (same); Columbia Pictures Indus., Inc. v. Fung, No. CV 06-5578 SVW
(JCx), 2010 U.S. Dist. LEXIS 91169, *19 (C.D. Cal. May 20, 2010) (same).
Next, Courts around the nation have found that injunctive decrees -- in
particular in the copyright context -- can extend beyond those parties before the
Court. See Music v. Heiman, No. 09-cv-341-bbc, 2010 WL 1904341, *5-*6 (W.D.
Wis. May 11, 2010) (“the majority of courts that have decided cases similar to this
one have found that the broader injunction covering all ASCAP music is
appropriate in cases in which the copyright infringer has demonstrated his
unwillingness to obtain a license”); cf. Apple Inc. v. Psystar Corp., 673 F. Supp. 2d
943, 953 (N.D. Cal. 2009) (“an injunctive decree can reach beyond the four corners

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of the litigated copyrighted works to cover non-litigated items of similar
character”); Princeton Univ. Press v. Mich. Document Servs., 99 F.3d 1381, 1392
(6th Cir. 1996) (“The weight of authority supports the extension of injunctive relief
to future works.”); Warner Bros. Entm’t Inc. v. Carsagno, No. 06 CV
2676(NG)(RLM), 2007 WL 1655666, *5 (E.D.N.Y. June 4, 2007) (same, citing
extensive authority); Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1154
n.1 (9th Cir. 2007) (“[T]he Copyright Act gives courts broad authority to issue
injunctive relief. See 17 U.S.C. § 502(a). Once a court has jurisdiction over an
action for copyright infringement under section 411, the court may grant injunctive
relief to restrain infringement of any copyright, whether registered or
unregistered.”); Olan Mills, Inc. v. Linn Photo Co., 23 F.3d 1345, 1349 (8th Cir.
1994) (same).

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CONCLUSION
For all of the reasons discussed herein and in the remainder of the record,
this Court should affirm the District Court’s Order certifying the class.
Dated: New York, New York
February 27, 2013

Respectfully submitted,

By:

/s/James J. McGuire
.
James J. McGuire
Mark A. Berube
MISHCON DE REYA NEW YORK LLP
750 7th Avenue, Floor 26
New York, New York 10019
Telephone: [phone]
Facsimile: [phone]

Attorneys for Amici Curiae Visual Artists

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CERTIFICATE OF COMPLIANCE WITH RULE 32(A)
1.

This Brief complies with the type-volume limitation of Fed. R. App.
P. 32(a)(7)(B) and Fed. R. App. P. 29(d), because this Brief contains
6,993 words, excluding the parts of the Brief exempted by Fed. R.
App. P. 32(a)(7)(B)(iii).

2.

This Brief complies with the typeface requirements of Fed. R. App. P.
32(a)(5) and the typestyle requirements of Fed. R. App. P. 32(a)(6),
because this Brief has been prepared in a proportionally spaced
typeface using Microsoft Word 2003 in 14-point Times New Roman.

Dated: New York, New York
February 27, 2013

/s/Mark A. Berube
Mark A. Berube

Legal1US.96365.1

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