The Authors Guild v. Google, Inc.

Filing 114

AMICUS BRIEF, on behalf of Amicus Curiae American Society of Journalists and Authors, Inc., FILED. Service date 04/17/2014 by CM/ECF. [1205016] [13-4829]--[Edited 04/21/2014 by KG]

13-4829-CV
IN THE

United States Court of Appeals
FOR THE SECOND CIRCUIT

>>
THE AUTHORS GUILD , B ETTY M ILES , J IM BOUTON,
J OSEPH GOULDEN, individually and
on behalf of all others similarly situated,
Plaintiffs-Appellants,
and

HERBERT MITGANG, DANIEL HOFFMAN, individually and on behalf of all others similarly
situated, PAUL DICKSON, THE MCGRAW-HILL COMPANIES, INC., PEARSON EDUCATION, INC.,
S IMON & S CHUSTER , INC ., ASSOCIATION OF AMERICAN P UBLISHERS , INC ., C ANADIAN
STANDARD ASSOCIATION, J OHN W ILEY & S ONS , INC., individually and on behalf of all
others similarly situated,
Plaintiffs,

v.

GOOGLE, INC.,
Defendant-Appellee.
On Appeal from the United States District Court
for the Southern District of New York (New York City)

BRIEF OF AMICUS CURIAE AMERICAN SOCIETY
OF JOURNALISTS AND AUTHORS IN SUPPORT
OF PLAINTIFFS-APPELLANTS AND REVERSAL
David Leichtman
Hillel I. Parness
Jonathan J. Marcus
R OBINS , KAPLAN , M ILLER & C IRESI L.L.P.
Counsel for Amicus Curiae American Society
of Journalists and Authors

601 Lexington Avenue, Suite 3400
New York, New York 10022
212-980-7400
[e-mail]
[e-mail]
[e-mail]

CORPORATE DISCLOSURE STATEMENT
Amicus Curiae American Society of Journalists and Authors, Inc. (“ASJA”)
is a non-governmental, 501(c)(6) not for profit organization incorporated in the
State of New York with a membership of approximately 1,400 outstanding
freelance writers of magazine articles, trade books, and many other forms of
nonfiction writing. ASJA has no parent corporation, and no publicly held
corporation owns 10% or more of its stock.

i

TABLE OF CONTENTS
Page
CORPORATE DISCLOSURE STATEMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . i
TABLE OF AUTHORITIES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . iii
I.

INTEREST OF AMICUS CURIAE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

II.

STATEMENT OF ARGUMENT. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

III. ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
A. The District Court Erroneously Relied on the “Importance”
of Google Books in Making Its Fair Use Finding . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
B. The Decision Violates the Principles of the District Court’s
Prior Order Rejecting The Proposed Settlement, Which
Was Correct Then And Is Still Correct . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
C. The District Court Misunderstood and Misapplied Judge
Leval’s Fair Use Writings And Supreme Court Precedent . . . . . . . . . . . . . . . 12
D. Reversal Is Of Particular Importance To Journal Authors
And Authors Of Shorter Works . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23
E. Non-Productive (Even If Innovative) Technology Is Not
Sufficient to Circumvent Copyright . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24
1. Google’s Users Do Not Transform the Infringing Copies . . . . . . . . . . . 24
2. Technological Advances In Distribution Do Not
“Transform” A Work. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
IV. CONCLUSION . . . . . .. . . .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . 29
CERTIFICATE OF COMPLIANCE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30
CERTIFICATE OF ELECTRONIC FILING. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31

ii

TABLE OF AUTHORITIES
Page
Cases
A&M Records, Inc. v. Napster, Inc., 114 F. Supp.2d 896
(N.D.Cal. 2000), aff’d in part, 29 F.3d 1004 (9th Cir. 2001) . . . . . . . . . . . . . . 10, 11
Am. Geophysical Union v. Texaco, Inc., 60 F.3d 913(2d Cir. 1994),
aff’g, 802 F. Supp. 1 (S.D.N.Y. 1992). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16, 26
Authors Guild v. Google Inc., 770 F. Supp.2d 666 (S.D.N.Y. 2011). . . . . . . . . . . . . . . . . 9
Author’s Guild, Inc. et al. v. Google, Inc.,
954 F. Supp.2d 282 (S.D.N.Y. 2013) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim
Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994) . . . . . . . . . . . . . . . . . . . . . . . 13, 14, 19
Cariou v. Prince, 714 F.3d 694(2d Cir.), cert. denied,
134 S.Ct. 618 (2013). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) . . . . . . . . . . . . . . . . . . . . . 17, 18
Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539 (1985) . . . . . . . . . . . . . . . 19, 21
House of Bryant Publ’ns, LLC v. A&E TV Networks,
Civ. No. 09-0502, 2009 U.S. Dist. LEXIS 101878
(M.D. Tenn. Oct. 30, 2009) .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
In re: Aimster, 334 F.3d 643 (7th Cir. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27
Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104 (2d Cir. 1998) . . . . . . . . . . . 24, 25, 26
Iowa State Univ. Research Found., Inc. v. Am. Broad. Cos.,
621 F.2d 57 (2d Cir. 1980) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd.,
545 U.S. 913 (2005) .. . . .. . .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7, 27, 28
Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc.,
166 F.3d 65 (2d Cir. 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
3

On Davis v. The Gap, Inc., 246 F.3d 152 (2d Cir. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
Rogers v. Koons, 960 F.2d 301(2d Cir.),
cert. denied, 506 U.S. 934 (1992). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
Sony Corp of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
UMG Recordings v. MP3.com, Inc.,
92 F. Supp.2d 349, 352 (S.D.N.Y. 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20, 25, 26
U.S. v. ASCAP, 599 F. Supp.2d 415, 432, n. 16 (S.D.N.Y. 2009) . . . . . . . . . . 21, 25, 26
Warner Bros. Entertainment, Inc. v. RDR Books,
575 F. Supp.2d 513 (S.D. N.Y. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
Rules
Fed. R. App. P. 29(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
Fed. R. App. P. 29(c)(5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
Rule 29.1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
Other Authorities
Hearing on the Scope of “Fair Use,” Before the H. Comm.
on the Judiciary, 113th Cong.
(Jan. 28, 2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23
Pierre N. Leval, Campbell v. Acuff-Rose: Justice Souter’s Rescue
of Fair Use, 13 Cardozo Arts & Ent. L.J. 19, 23 (1994)
(“Leval II”) . . . . . . . .. .. . . .. . .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14, 19, 21, 23
Pierre N. Leval, “Toward a Fair Use Standard,”
103 Harv. L. Rev. 1105, 1111 (1990) (“Leval I”) . . . . . . . . . . . . . 12, 17, 18, 19, 20

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I.

INTEREST OF AMICUS CURIAE
Amicus curiae American Society of Journalists and Authors, Inc. (“ASJA”),

founded in 1948, is a non-governmental, 501(c)(6) not for profit organization with
headquarters in New York City and active regional chapters in Arizona, Chicago,
New York City (local chapter separate from headquarters), Northern California,
Southern California, the Rocky Mountains region (Denver area), the Southeast
(Atlanta area), the Upper Midwest (Minneapolis area), upstate New York
(Rochester area), and Washington, DC.1
ASJA has a membership of approximately 1,400 outstanding freelance
writers of magazine articles, trade books, and many other forms of nonfiction
writing, each of whom has met ASJA’s exacting standards of professional
achievement. The requirements for membership in the organization are stringent:
an author is required to demonstrate a substantial professional resume before being
admitted to membership. Nonfiction book authors qualify with two or more
traditionally published nonfiction books, or one book with a second under contract.
Article authors must provide a minimum of six substantial by-lined articles written
on a freelance basis in national publications that pay for content. A reader
1

Pursuant to Fed. R. App. P. 29(c)(5) and Rule 29.1 of the Local Rules of the
Second Circuit, ASJA states that no party or their counsel authored this brief in
whole or in part; no party or party’s counsel contributed money intended to fund
preparing or submitting this brief; and no person — other than ASJA, its members,
and its counsel — contributed money to this brief. Pursuant to Fed. R. App. P.
29(a), ASJA also states that all parties have consented to the filing of this brief.
1

browsing any U.S. news stand would find many articles by ASJA members. See
generally, http://www.asja.org/our-members/member-news/.
ASJA offers extensive benefits and services focusing on professional
development, including regular confidential market information, meetings with
editors and others in the field, an exclusive referral service, seminars and
workshops, discount services and, above all, the opportunity for members to
explore professional issues and concerns with their peers.
Additionally, ASJA is the publisher and author of several works. Therefore,
ASJA is a member of the putative class, and has a great interest in the outcome of
this appeal on behalf of its members and itself. ASJA supports PlaintiffAppellant’s appeal of the opinion of the District Court finding that Google, Inc.’s
(“Google”) use of copyrighted works in the Google Books project constitute fair
use.
II. STATEMENT OF ARGUMENT
The District Court’s opinion below finding Google Books to be a fair use
should be reversed for numerous reasons. In addition to those reasons cited in the
brief of Plaintiffs-Appellants, amicus provides five reasons for reversal. First, the
scanning of millions of copyrighted works are not made justifiably
“transformative” simply because the copies purportedly have become important to
some third-party end-users. The books and articles copied have not been altered or

2

imbued with new meaning, and Google’s uses are the same as those that the works’
creators intended. They have not been transformed; they merely have been copied.
Second, the ruling below provides Google with the benefits of the failed settlement
in this case, without any compensation to the authors of the works it copied. Third,
the decision violates the principles set forth in numerous Supreme Court and
Second Circuit precedents as well as Judge Leval’s extrajudicial writings. Fourth,
it harms a majority of all authors, and those who write nonfiction books and
articles even more than the three authors whose books were at issue. Finally, it
places non-productive technological advances above the law in a manner not
intended by the Copyright Act.
III. ARGUMENT
A.

The District Court Erroneously Relied on the “Importance” of
Google Books in Making Its Fair Use Finding

One particularly troubling aspect of the court’s opinion is its reliance on the
“importance” of the Google Books service to consumers, which has grown over the
eight-year course of this case, to reach the conclusion that Google’s large-scale
copyright infringement is now “highly transformative.”
The structure of the District Court’s opinion moves directly from the court’s
conclusion about the importance or popularity of the service to a very pro forma
application of the fair use factors based largely on that conclusion. The opinion’s
section entitled “The Benefits of the Library Project and Google Books” influences
3

systemically the remaining fair use analysis. The court begins by asserting that
“[t]he benefits of the Library Project are many,” and then lists five separate
supposed benefits of the program. Author’s Guild, Inc. et al. v. Google, Inc., 954
F. Supp.2d 282, 287-88 (S.D.N.Y. 2013). Most of these benefits relate to the
libraries whose collections were copied and new services those libraries can offer;
none pertain to the “snippets view” aspect of Google Books, to which the court
appears to have paid relatively little attention but which is the most offensive
aspect of Google’s use to copyright.2
The chief benefit (hereafter, the “library uses”), according to the court, is the
following:
Google Books has become an essential research tool, as
it helps librarians identify and find research sources, it
makes the process of interlibrary lending more efficient,
and it facilitates finding and checking citations. Indeed,
Google Books has become such an important tool for
researchers and librarians that it has been integrated into
the educational system – it is taught as part of the
information literacy curriculum to students at all levels.

2

As discussed below, the fifth supposed benefit – the benefit to authors and
publishers – should not be taken into account at all.

4

Id. at 287 (emphasis added). The court also finds, “in addition to being an
important reference tool, Google Books greatly promotes a type of research
referred to as ‘data mining’ or ‘text mining.’” Id.3 (hereafter “data mining uses”).
The court then opens its legal discussion of the first fair use factor with the
conclusion that “Google’s use of the copyrighted works is highly transformative.”
Id. at 291. Hearkening back to the “Benefits” section, the court once again leads
with the growing “importance” of Google Books:
Google Books has become an important tool for libraries
and librarians and cite-checkers as it helps to identify and
find books.
Id. The court then engages in a huge leap of logic to declare without explanation
that “the use of book text to facilitate search through the display of snippets is
transformative,” and then closes out its analysis of the first fair use factor by once
again turning to the purported “importance” of Google Books:
[E]ven assuming Google’s principal motivation is profit,
the fact is that Google Books serves several important
educational purposes.
Id. at 292 (emphasis added).
Later, when addressing the third factor (amount and substantiality of the
portion used), the court acknowledges that Google makes, distributes, and retains,
full-length copies of the works at issue (and displays nearly all of the works),
3

It finds one example of such “mining,” about the singular or plural use of the
“United States,” which feels contrived.
5

which should have weighed strongly against Google. On Davis v. The Gap, Inc.,
246 F.3d 152, 175 (2d Cir. 2001) (“fragmentary copying is more likely to have a
transformative purpose than wholesale copying.”). But the court substantially
reduces the impact of this factor by once again turning to its conclusion that the
project was important: “one of the keys to Google Books is its offering of full-text
search of books, full-work reproduction is critical to the functioning of Google
Books.” Id. at 292 (emphasis added). But the “snippets view” aspect of Google
Books has nothing to do with the “data mining” or “library uses” that it
emphasized in its factual recitation of the purported benefits to the public.
The court’s reasoning is circular: full-length copying is “critical” to the
operation of Google Books, which the court determined “has become important”
during the eight-year pendency of the litigation, and thus the grandest scale
copyright infringement in the history of the world should be excused.
This logic is deeply flawed. Amicus is aware of no authority that supports a
finding of fair use based solely on how important or popular the infringing service
is to the public. To the extent there is any guidance in past precedent, it is strongly
to the contrary. For example, in the peer-to-peer music file sharing cases, which
made their way through the courts from 2000 to 2005, the Supreme Court
eventually rejected the notion that a service supplying copyrighted works that are

6

important to consumers can provide a justifiable excuse for copying works
wholesale.
In the Grokster case, the Supreme Court looked past the technological design
of the system and focused on the fact that those behind the file-sharing services
had designed their systems for the specific purpose of mass copying of music files,
finding no justification for such a taking. Metro-Goldwyn-Mayer Studios, Inc. v.
Grokster, Ltd., 545 U.S. 913 (2005). From this perspective, the Supreme Court’s
Grokster decision is paradigmatic of the need for courts in copyright cases to
terminate services that exploit consumers’ desire for free access to copyrighted
content without compensation to authors. In Grokster, no credit was given to the
defendant for the popularity of its system – that the service was an “important”
resource for people seeking music, or that the full-length copying facilitated by the
service was “essential” or “critical” to the peer-to-peer user base did not weigh in
the infringer’s favor.
Here, the situation is even worse as Google is not inducing copying by users,
but rather doing the copying directly and providing the copied content free to its
user base. That is, Google itself is violating the reproduction, distribution and
display rights that are the exclusive province of the author to exploit. If the
motivations of the Grokster defendants properly came under scrutiny in the

7

secondary liability context, Google’s motivations should also play a role when
considering the fair use defense here.4
The District Court’s repeated reference to the “essential” and “important”
nature of Google Books, as well as the “critical” need for Google to copy fulllength texts, and the apparent central role these conclusions played in its fair use
analysis, are of substantial concern to all copyright owners. The ruling threatens to
swallow copyright entirely because almost any act of copying can be said to be
“important” to someone. It is precisely because the Google Books service was up
and running for eight years before the District Court issued its fair use decision that
any consideration of how popular or important the service had become during that
time should have been excluded from the analysis. Instead, the analysis should have
applied each of the fair use factors to each separate aspect of the service in question,
as explained further below.

4

Google’s motives are covered in Plaintiff-Appellants’ brief and are not repeated
at length here. To the extent that Google may try to rely upon Sony Corp of Am. v.
Universal City Studios, Inc., 464 U.S. 417 (1984), that decision provides no
support. Although the Supreme Court there reached the conclusion that consumers’
time-shifting of television programming was a fair use, the content in question was
already being provided free to consumers, and the importance or popularity of the
service to consumers was not weighted in Sony’s favor.
8

B.

The Decision Violates the Principles of the District Court’s Prior
Order Rejecting The Proposed Settlement, Which Was Correct
Then And Is Still Correct.

In its March 2011 opinion, the District Court explained why it was rejecting
the proposed settlement of the case which would have permitted Google to
“implement a forward-looking business arrangement that would grant Google
significant rights to exploit entire books, without permission of the copyright
owners.” Authors Guild v. Google Inc., 770 F. Supp.2d 666, 669 (S.D.N.Y. 2011).
The court concluded that “the concerns raised in the objections would be
ameliorated if the [settlement agreement] were converted from an ‘opt-out’
settlement to an ‘opt-in’ settlement.” Id. at 686. The court’s message was that the
opt-out structure of the proposed settlement, which would have rewarded Google’s
decision to scan millions of books without permission, was unfair to copyright
holders.
Chief among the concerns of objectors and the District Court was that the
forward-looking arrangements in the proposed settlement, in essence, would
eliminate any competition by providers of similar services. The District Court thus
wrote that even though “Google engaged in wholesale, blatant copying, without first
obtaining copyright permissions,” nevertheless its competitors went “through the
‘painstaking’ and ‘costly’ process of obtaining permissions.” 770 F. Supp.2d
at 679 (quoting objection of Microsoft and adopting statement of another objector

9

that “Google pursued its copyright project in calculated disregard of authors’
rights.”). Of course, the result of the decision now appealed from provides authors
with an even worse scenario: at least under the rejected settlement authors would
have been paid for Google’s exploitation of their work.
The concern of the settlement objectors (and then of the District Court) echoes
those expressed in the early days of the file sharing cases discussed above. For
example, in one of the first of those cases, Napster had developed a popular service
as Google contends it has done here. See A&M Records, Inc. v. Napster, Inc., 114
F. Supp.2d 896, 902 (N.D.Cal. 2000) (“Although Napster was the brainchild of a
college student who wanted to facilitate music-swapping by his roommate, . . . it is
far from a simple tool of distribution among friends and family. According to
defendant's internal documents, there will be 75 million Napster
users by the end of 2000”) (record citations omitted), aff’d in part, 29 F.3d 1004
(9th Cir. 2001).
Yet the Napster trial judge enjoined the service and specifically rejected
Napster’s argument that:
[C]onsumers will not necessarily resume buying music if
Napster is enjoined; rather, they will go to other sites
offering free MP3 files. Indeed, as [plaintiffs’ expert]
avers, defendant has contributed to a new attitude that
digitally-downloaded songs ought to be free – an attitude
that creates formidable hurdles for the establishment of a
commercial downloading market.

10

Id., 114 F. Supp.2d 896, 910 (N.D. Cal. 2000) (emphasis in original) (granting
preliminary injunction). Both Napster then, and Google here, sought to avoid the
transaction costs of obtaining permission – but no court has held that wishing for
greater efficiency in the licensing markets makes mass copying a transformative
fair use.
Indeed, after Napster’s copyright gambit failed, a robust online marketplace
for downloading (and now streaming) of music proliferated, starting with the wild
success of Apple’s iTunes service. And in the wake of the failed settlement in this
case, the publisher plaintiffs settled by joining Google’s voluntary “opt in”
Partners Program, which created a competitive market for sharing books at the
behest of the copyright owners when they decide it suits them economically. Had
the Napster and Grokster decisions, or the proposed settlement in this case, gone
the other way, such markets would not have been created. The District Court was
thus right to reject the settlement, but its fair use decision undermines the results
that it achieved.
The court’s broad declaration of transformative use, based on extraordinarily
generalized principles, such as the increased “importance” of Google Books to
non-party users, was wrong. What the court has done, in effect, is exactly what it
said it would not do previously – it has rewarded Google for its sweeping and
undiscriminating (and unapologetic) campaign of mass copyright infringement,

11

with an equally sweeping and undiscriminating fair use holding. Google can now
scan any and all books it chooses for free, and use those books in the manner of the
Google Books project without ever notifying or compensating the copyright
owners, or making any effort whatsoever even to identify them. It is not clear what
happened to the same District Court’s concern for fairness to the authors and the
compensatory goal of copyright in the interim.
C.

The District Court Misunderstood and Misapplied Judge Leval’s
Fair Use Writings And Supreme Court Precedent

The District Court’s erroneous determination that Google transformed the
copyrighted works at issue infected its entire fair use analysis. By relying overly
on its “social benefit” theory, the District Court mistook a “revision of purpose”
for the required “revision of expression” that is required for there to be a
“transformation” as properly understood in fair use analysis.
For its understanding of “transformative” fair use, the District Court appears
to have relied exclusively upon Judge Leval’s 1990 article, “Toward a Fair Use
Standard,” 103 Harv. L. Rev. 1105, 1111 (1990) (“Leval I”). The District Court
summarily decided that the Google Books project, en grosse, “‘adds value to the
original,’ and allows for ‘the creation of new information, new aesthetics, new
insights and understandings.’” But it did so without dissecting each separate
aspect of the use put by Google to the copyrighted works, and simply concluded:
“Hence, the use is transformative.” 954 F. Supp.2d at 291.
12

The court thus bought into Google’s theme that simply changing the manner
in which the works are presented to users, without changing any of their expression,
could constitute fair use. Changing the context of a work alone is not
sufficient to make a transformation; rather, the second work must add something to
the expression of the work, not just take the original for some other use.
A non-superficial review of Judge Leval’s 1990 article reveals that it does
not go as far as the District Court took it. Nor does the Supreme Court’s decision
in Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994) authorize such an
expansion of fair use.
Judge Leval’s article was not about the wholesale copying of millions of
works verbatim. It was a reaction to express his view about how the Second
Circuit went awry in two cases involving biographies where the appellate court
reversed his decisions when he was sitting in the district court. And Acuff-Rose
was about whether the parody at issue in that case was akin to comment and
criticism as recited in the preamble of the fair use statute, not about mass
digitization. It did not even consider, let alone fully adopt, a “change in context is
sufficient” rule. As Judge Leval noted in a later article discussing the Acuff-Rose
decision, such a rule would be a step too far:
In my view some of these statements have been so extreme in
the proposition that any change rebuts infringement that they
threaten to swallow much of copyright law, leaving authors and
artists defenseless. If minor changes will circumvent the
13

protection of copyright law, what will protect the ability of
authors, composers, and artists to earn a living through their
creations?
Pierre N. Leval, Campbell v. Acuff-Rose: Justice Souter’s Rescue of Fair Use, 13
Cardozo Arts & Ent. L.J. 19, 23 (1994) (“Leval II”).
In Acuff-Rose, the Supreme Court first announced that an inquiry into
whether the use is “transformative” should be part of the first fair use factor. The
infringing work at issue was a parody, which the Court first found fell within the
purview of the statutory purpose because parody can be equated with criticism and
comment. 510 U.S. at 579-80. Having met that threshold, in its examination of
the first enumerated factor, purpose and character of the use, the Court said that
even where the second use is commercial in nature, the inquiry should include an
analysis of whether the second user’s effort was transformative in some sense, and
defined what it meant by “transformative”: whether it “adds something new, with a
further purpose or different character, altering the first with new expression,
meaning, or message.” Id. at 579 (emphasis added). 5 Here, Google has not altered
the works at all, or imbued them with new meaning or message. Their meanings
and messages are the same, particular the snippet view part of Google’s project.

5

The actual holding of Acuff-Rose is merely this: “[w]e thus line up with the
courts that have held that parody, like other comment or criticism, may claim fair
use under Section 107.” Acuff-Rose at 579.

14

As this court has stated, “If an infringement of copyrightable expression
could be justified as fair use solely on the basis of the infringer’s claim to a higher
or different [artistic] use . . . there would be no practicable boundary to the fair use
defense.” Rogers v. Koons, 960 F.2d 301, 310 (2d Cir.), cert. denied, 506 U.S. 934
(1992). More recently in Cariou, this Court reiterated: “A secondary work may
modify the original without being transformative. For instance, a derivative work
that merely presents the same material but in a new form. . . is not
transformative.” Cariou v. Prince, 714 F.3d 694, 708 (2d Cir.), cert. denied, 134
S.Ct. 618 (2013). Here, the snippet view aspect of Google Books is non- productive
– it allows readers to view creative excerpts without ever changing a word. It is as
if Google freely distributed books to students on the grounds that the mere fact they
were students is a transformative “productive” use. The fact that the District Court
assumed (without adequate proof) that 93% of the works were of the non-fiction
variety, makes it all the more troubling, since the very purpose of educational nonfiction books is for education and research. Indeed, it is not hard
to imagine groups of students each copying and pasting excerpts from the Google
snippets to make a nearly complete copy of a textbook they all can share instead of
buying multiple copies of the book. “Snippet view” is thus merely a nonproductive way to use the works for their originally intended purpose that make
reading a book a worse experience.

15

“Mechanical ‘copying’ of an entire document, made readily feasible by the
advent of xerography…, is obviously an activity entirely different from creating a
work of authorship. Whatever social utility copying of this sort achieves, it is not
concerned with creative authorship.” Am. Geophysical Union v. Texaco, Inc., 60
F.3d 913, 917 (2d Cir. 1994), aff’g, 802 F. Supp. 1 (S.D.N.Y. 1992). The District
Court’s decision cannot be reconciled with Texaco. It is hard to imagine that this
Court (or Judge Leval at the district court level) would have permitted Texaco to
launder its infringement by limiting what portions of the articles its scientists could
read. Suppose Texaco scanned all the articles into a database, letting its scientists
read only 7/8ths of each page and 90% of the entire Journals. Amicus submits that
case would not have had a different outcome. See Texaco, 802 F. Supp. 1 at 13-14
(wholesale copying of entire work where the purpose was to “advance scientific
discovery” was not the kind of productive use contemplated by the fair use
jurisprudence; “what was meant was that the copying should produce something
new and different from the original, and not that a superseding copy would qualify,
so long as it was made in pursuit of a beneficial cause. If the latter were the meaning
of the doctrine, precious little would be left of the copyright protection as applied to
scholarly or scientific writing.”).
Rather than being advocacy pieces to find more fair use, the main argument
in Judge Leval’s 1990 article and 1994 follow-up pointed to the problem of the

16

proper remedy for infringement in cases where the secondary use would be publicly
beneficial. It is important to recall that these articles pre-dated the Supreme Court’s
decision in eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), where the
Supreme Court first announced that irreparable harm should no longer be presumed
in intellectual property cases where the granting of injunctions against infringing
works was previously presumed. Placed in that context, Judge Leval’s main thesis
in both articles was that injunctions ought not to be freely
given in cases of infringement where the fair use question pertained to a social
benefit from the infringing use.
Judge Leval conceded, for example, that in his district court opinion in
Salinger v. Random House he should have paid more attention to specific acts of
copying and analyzed each separately (rather than treating the work as a whole)
because he was preoccupied with the need to grant an injunction which, pre-eBay,
would have been provided as of right. Leval I, at 1113 and 1131 n. 114 (“I confess
. . . [w]ith hindsight, I suspect my belief that the book should not be enjoined made
me too disposed to find fair use where some of the quotations had little fair use
justification.”).6 Judge Leval thus stated: “Courts must consider the question of

6

As discussed in Plaintiffs-Appellants’ opening brief, there are many cases
holding that excerpts shorter than Google’s verbatim snippet views were not
transformative, despite having different purposes than the original. See, PlApp.Br. at 37-40; see also e.g., Iowa State Univ. Research Found., Inc. v. Am.
Broad. Cos., 621 F.2d 57, 59-62 (2d Cir. 1980) (finding no fair use in broadcast of
17

fair use for each challenged passage and not merely for the secondary work
overall.” Leval I, at 1112 (emphasis added). He continued: “Simply to appraise
the overall character of the challenged work tells little about whether the various
quotations of the original author’s writings have a fair use purpose or merely
supercede.” Id. Here, the District Court not only failed to examine the three
authors’ works at issue, but failed to examine any passages at all and issued such
sweeping pronouncements that it cannot possibly meet Judge Leval’s test.
To address difficult injunction problems, Judge Leval suggested a third
option beyond a thumbs-up or down on fair use:
In the center is a numerically small but important band
encompassing works which, although they fail the fair
use test, have originality and independent value, and
represent a sufficiently small threat to the economic
entitlements of the author of the original, so that the
three clips on different occasions collectively comprising 8% of the copyright
holder's 28-minute film, many of which comprised 7-to-12-second clips); Warner
Bros. Entertainment, Inc. v. RDR Books, 575 F. Supp.2d 513 (S.D. N.Y. 2008)
(Although the creation of a Harry Potter encyclopedia was determined to be
“slightly transformative” because it made the Harry Potter terms and lexicons
available in one volume, this transformative quality did not justify a fair use
defense because of the extensive verbatim use of text from the Harry Potter books);
House of Bryant Publ’ns, LLC v. A&E TV Networks, Civ. No. 09-0502, 2009 U.S.
Dist. LEXIS 101878 at * 18 (M.D. Tenn. Oct. 30, 2009) (“The transformative
nature of “Rocky Top” is unapparent from a basic viewing of the Episode. In the
Episode, there is no allusion to “Rocky Top” prior to its playing, and there is no
perceptible attempt to actually place “Rocky Top” in any sort of larger context. As
indicated above, just before “Rocky Top” plays, there is a general discussion of UT
being a haven for college football, but there is no commentary, criticism or even
discussion of “Rocky Top.” Rather, basically, the excerpt from “Rocky Top”
simply plays, fades, and then stops, and the Episode moves on to the next topic.”).
18

public-enriching objectives of the copyright law are
better served by withholding injunctive relief.
Leval II, at 24. The District Court here also seemed overly concerned that an
injunction would cut off the perceived public benefits of the indexing feature of the
Google Books project (no public benefit was annunciated as to the “snippets”
feature). But that is a question for the remedies phase (i.e., whether such
infringements should be compensated only by damages) – not one for the
underlying fair use analysis.
In Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539 (1985), which
was not overruled by Acuff-Rose, the Supreme Court overturned this Court’s
finding of fair use even though it recognized that the secondary works were for a
purpose stated in Section 107’s preamble because the second use qualified as
“news.” It did so because the second user simply took much, which it concluded
after a painstaking inquiry into what was actually taken, an exercise the District
Court here failed to perform. Indeed, the snippets at issue here can often be much
longer than the snippets of Gerald Ford’s memoir found to be unfair in Harper &
Row – which Judge Leval agreed was the correct result. See Leval I, at 1120
(quoting Harper & Row, 471 U.S. at 554-557, noting the Supreme Court’s
emphasis on the diminishment of the rewards of authorship and the likely
discouragement of authors from writing and publishing valuable memoirs); Leval I,
at 1123 (discussing third factor’s qualitative aspect: “In the case of President
19

Ford’s memoirs, a taking of no more than 400 words constitute[ed] the ‘heart of
the book’” causing the taking to be unfair, and the quantitative aspects: “the more
taken the greater the likely impact on the copyright holder’s market and the more
the factor favors a copyright holder.”).
The snippet view aspect of Google Books takes both – 100% of the works
(even if only 78% can be viewed) and all of the qualitative aspects of the books. It
is not anything like a “lengthy critical study” of a sonnet with “[f]ragments
dispersed throughout the work of criticism [that] may well quote every word of the
poem” and still be a fair use. Leval I, at 1123.
This is where the fourth factor picks up. The District Court speculated,
without any proof, that everyone – including the copyright owners – would benefit
from Google Books, and therefore found that the fourth factor supported fair use.
954 F. Supp.2d at 293. There is, indeed, doubt by a majority of authors that
Google Books helps sales for individual authors rather than hurting them. But the
District Court in any event missed the point of Judge Leval’s recitation of the
import of this factor. As Judge Leval notes, “the fact that the secondary use does
not harm the market for the original gives no assurance that the secondary use is
justified.” Leval I, at 1124; see also id., at 1124 n. 84.7

7

District courts in this circuit have also correctly rejected similar arguments about
the supposed benefit of the infringement to the copyright holders. See UMG
Recordings v. MP3.com, Inc., 92 F. Supp.2d 349, 352 (S.D.N.Y. 2000) (“any
20

The failure of the earlier settlement in this case demonstrates the impairment
of the market for the purposes to which Google has put the plaintiff’s works as
seen in the statements of objectors who were prepared to pay and seek permission,
which would have established a competitive market. The court found this was a
good reason to reject those provisions of the settlement; yet the decision now
appealed from essentially gives Google the same benefit of such forward-looking
arrangements without any compensation to the authors. Google’s own Partners
Program is structural evidence that a licensing program, with permission obtained
first, is not only feasible but already exists. But Google’s use of the books at issue
in this case without permission, giving them away for free, has dampened any
potential competitor from establishing a similar service. Again, the saving of
transaction costs is a not a justifiable “transformation.”
Importantly, the question is not only whether the second work usurps the
market for the original, but also for the original’s derivatives. See Leval II, at 22
(“The fourth factor looks at the harm which the secondary work may do to the
copyright market of the original by offering itself as a substitute (for either the
original or its derivatives).”); see also Harper & Row, 471 U.S. at 568. This is of
allegedly positive impact of defendant’s activities on plaintiffs’ prior market in no
way frees defendant to usurp a further market that directly derives from
reproduction of the plaintiffs’ copyrighted works”); U.S. v. ASCAP, 599 F. Supp.2d
415, 432, n. 16 (S.D.N.Y. 2009) (“the suggestion that previews may increase sales
of ringtones, ringback tones and CDs…is irrelevant.”).
21

course axiomatic, because one of the rights under Section 106 of the Act is to give
the author the exclusive right to control the exploitation of derivative works. The
order appealed from denies such right and eliminates it completely. It thus
deprives the copyright owner of its right to make derivative works and choose
whether to take advantage him or herself of new technologies.
The question of whether to allow a “socially beneficial” use is a question of
the proper remedy, not a question of liability. Massive acts of enterprise-wide
reproduction, distribution, and display cannot be trumped by social utility, which
perhaps should be important but should not swallow Section 106. The District
Court’s decision devoured authors’ Section §106 rights without a proper inquiry
into each work scanned, let alone each of the separate uses Google has put them to.
It makes it too easy for defendants in future cases to declare they have a different
purpose than the original author, the categories for such purposes too broad, and
too capable of manipulation and contrivance. It also improperly changes the focus
of the fair use inquiry from the infringer to remote parties down the line (all
internet users in the case of snippets and data mining; libraries in the case of full
copies).
But the activity complained of is not that of those downstream users; it is the
activities of Google, which all but went ignored by the District Court. Essentially
the District Court threw up its hands and said that Google was “too big to

22

infringe.” As June Besek of Columbia Law School’s Kernochan Center has
testified, that effectively gives Google a “volume discount for copying.” Hearing
on the Scope of “Fair Use,” Before the H. Comm. on the Judiciary, 113th Cong.
(Jan. 28, 2014). Summary judgment of no liability was improper.
D.

Reversal Is Of Particular Importance To Journal Authors And
Authors Of Shorter Works

The impact of the District Court’s decision is particularly pernicious for
authors of non-fiction books and articles such as the many members of ASJA who
write journal articles and other short works. Such authors are often times paid by
“page views,” which the Google snippets program entirely usurps. For example,
an article on “7 tips for networking at holiday parties,” will receive many fewer
page views if the 7 tips are revealed in a Google snippet. A reference to the
underlying work or where it can be accessed or purchased still results in lost
income to the author. As Judge Leval noted in his 1994 article,
Artists, no matter how great, must pay for what they use in
making their works. They pay for paint, for canvas, for steel,
for clay, for a model's time. Why should they not also pay a
reasonable fee for the use of another artist's work as part of a
new work? A finding of such an obligation to pay need not
imply a derogatory judgment of the new appropriative work.

Leval II, at 24 (emphasis added).
This statement applies with even greater force here. The Google Books
project perhaps can benefit society and benefit authors at the same time – but that
23

is a question for the remedies phase. The wholesale appropriation of millions of
works is simply not a fair use.
E.

Non-Productive (Even If Innovative) Technology Is Not Sufficient
to Circumvent Copyright

While Google limits what it shows to users each time they search, the
“snippet” limitation does not justify the persistent infringing full copies maintained
by Google. The fundamental nature of the scanned books remains unchanged –
what Google has done is akin to photocopying an entire book and then allowing
people to read the book through a hole in a piece of cardboard. The user
experience is certainly constrained, but the unlicensed copy remains, and remains
unchanged. The fact that the user can only see bits at a time is irrelevant – the
infringer is Google which is making commercial use of the whole of the infringing
copy.
1. Google’s Users Do Not Transform the Infringing Copies
This Court’s 1998 decision in Infinity Broad. Corp. v. Kirkwood, 150 F.3d
104 (2d Cir. 1998) firmly rejects any argument that Google has transformed the
books it scanned based on the acts of its customers. Infinity considered whether
the retransmission of terrestrial radio broadcasts over telephone lines so that they
could be heard by people in the radio and advertising industries in other cities was
a fair use. Defendant argued that its “users transform the broadcasts by using them
for their factual, not entertainment, content.” Id., at 108. This Court rejected that
24

argument, writing that “it is Kirkwood's own retransmission of the broadcasts, not
the acts of his end-users, that is at issue here.” Id.
Similarly, in the MP3.com case, the fair use defense was rejected where the
service provided subscribers with on-line access to copies of music they already
owned on CD. The court found that “defendant adds no new ‘new aesthetics, new
insights and understandings’ to the original music recordings it copies, but simply
repackages those recordings to facilitate their transmission through another
medium. While such services may be innovative, they are not transformative.”
MP3.com, Inc., 92 F. Supp.2d at 351. Similarly, in 2009, Judge Conner
considered whether AT&T had a fair use defense to the public performance of
“previews” – short snippets of music played to people shopping for ringtones. In
an opinion that relied heavily on Infinity to find no transformation, the District
Court held that “any difference in applicant’s informational purpose in streaming
previews of ASCAP music from the original entertainment purpose of the music is
insufficient, by itself, to render applicant’s use transformative.” ASCAP, 599 F.
Supp.2d at 427 (noting that Infinity taught that the focus should be on the
defendant’s actions, not the motivations of its users.).
Merely changing the purpose of something cannot alone make a use
transformative, or else it would mean that people who translate books from English
to French enjoy a fair use defense, having transformed the use of the book from its

25

original purpose – to be read by English speakers – into a totally new use – to be
read by French speakers. See Nihon Keizai Shimbun, Inc. v. Comline Bus. Data,
Inc., 166 F.3d 65, 72 (2d Cir. 1999) (finding copyright infringement “not in the
least transformative . . . [because] the abstracts are for the most part direct
translations . . . ; defendants added almost nothing new in their works. This factor
weighs strongly against fair use.”). Nor is the use of new technology to make these
non-transformative copies sufficient. See Texaco, 60 F.3d at 917.
In this case, as in Texaco, Infinity, MP3.com and ASCAP, the focus should
be on Google and what it has done, rather than on Google’s users and how they are
using the Google system. Amicus urges this Court to reject any argument that
Google has transformed the books from entertainment to data (suitable for “data
mining”). Infinity teaches that what Google’s users do with the scanned books is
irrelevant.8
2. Technological Advances In Distribution Do Not “Transform” A
Work

There has been a growing trend among services exploiting the content of others to
try to build their systems in a manner that they argue are not – technically
– violating the Copyright Act. Most courts have sided with the copyright owners,

8

As for “data mining,” if that was really the purpose of the copying performed
here, Google could have disaggregated the data without the snippets and certainly
would have no need for retaining the copies of the full works.
26

the leading example being found in the Supreme Court’s decision in Grokster.
Despite injunctions against earlier services like Napster that offered the same
resulting infringing works, both the district court and the Ninth Circuit held that
Grokster was not liable as either a contributory or vicarious infringer because of
the particular encryption architecture of the peer-to-peer systems at issue in that
case. The lower courts both concluded that the design of the software – which
intentionally stripped the defendants of requisite knowledge or control – allowed
the defendants to evade both of the traditional tests for secondary liability.9
The Supreme Court took a more pragmatic approach in line with the purpose
of the Copyright Act’s incentive structure. Instead it ascribed copyright liability
based on the motivations of the defendants:
[O]ne who distributes a device with the object of promoting its use to
infringe copyright, as shown by clear expression or other affirmative
steps taken to foster infringement, is liable for the resulting acts of
infringement by third parties.
Grokster, 545 U.S. at 936-37.

9

In the Aimster litigation, by contrast, the Seventh Circuit compared the
defendant’s use of encryption to a drug trafficker who looked away to try to avoid
knowledge: “He did not escape liability by this maneuver; no more can Deep by
using encryption software to prevent himself from learning what surely he strongly
suspects to be the case: that the users of his service- maybe all the users of his
service- are copyright infringers.” In re: Aimster, 334 F.3d 643, 650 (7th Cir.
2003).

27

Google Books is no different. Google has built a business based on the
unauthorized copying of others’ copyrighted works. In an attempt to deflect
attention from its mass copying, Google designed a user interface that limits what
the users can see to “snippets,” arguing that because the users’ access to the
database is limited, Google is entitled to escape liability. But there is no
productive purpose to limiting users’ access to a “snippet” view. Snippet view is
an artificial construct for the sole purpose of fabricating a basis for a fair use
defense. Users are interested in free access to the content of copyrighted works
and in obtaining as much of that content as possible without constraints. In this
respect there is absolutely no difference in motivation between the users of the
peer-to-peer systems to obtain access to music and users of Google Books. Amicus
urges this Court to address Google Books “snippet view” with the same
pragmatism that the Supreme Court approached the Grokster defendants, and
decline to endorse those who seek to use technology for the sole purpose of
avoiding payment to authors incentivize them to create new works.

28

IV. CONCLUSION
For the foregoing reasons, ASJA respectfully requests that the District
Court’s finding of fair use be reversed.

Dated: April 14, 2014

Respectfully submitted,
/s/ David Leichtman
David Leichtman (DL7233)
Hillel I. Parness (HP1638)
Jonathan J. Marcus (JJ8402)
ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
601 Lexington Avenue, Suite 3400
New York, NY 10022
Telephone: [phone]
Facsimile: (212) 980–7499
[e-mail]
[e-mail]
[e-mail]
Counsel for Amicus Curiae The American Society
of Journalists and Authors

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CERTIFICATE OF COMPLIANCE WITH FRAP 32(a)

1. This brief complies with the type-volume limitation of Fed. R. App. P.
32(a)(7)(B) and 29(d) because this brief contains 6,981 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 type style requirements of Fed. R. App. P. 32(a)(6) because this brief
has been prepared in a proportionally spaced typeface using Microsoft Word in
Times New Roman, 14 point font.

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CERTIFICATE OF ELECTRONIC FILING
I hereby certify that on this 14th day of April, 2014, I caused a PDF version
of the foregoing brief to be filed electronically using the CM/ECF system.

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