The Authors Guild v. Google, Inc.

Filing 181

REPLY BRIEF, on behalf of Appellant Jim Bouton, Joseph Goulden, Betty Miles and The Authors Guild, FILED. Service date 07/24/2014 by CM/ECF. [1279110] [13-4829]

13-4829-cv
United States Court of Appeals
for the

Second Circuit
THE AUTHORS GUILD, BETTY MILES, JIM BOUTON, JOSEPH
GOULDEN, individually and on behalf of all others similarly situated,
Plaintiffs-Appellants,
HERBERT MITGANG, DANIEL HOFFMAN, individually and on behalf of all
others similarly situated, PAUL DICKSON, THE MCGRAW-HILL
COMPANIES, INC., PEARSON EDUCATION, INC., SIMON & SCHUSTER,
INC., ASSOCIATION OF AMERICAN PUBLISHERS, INC., CANADIAN
STANDARD ASSOCIATION, JOHN WILEY & SONS, 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

REPLY BRIEF FOR PLAINTIFFS-APPELLANTS
(UN-SEALED REDACTED VERSION)

FRANKFURT KURNIT KLEIN & SELZ, P.C.
488 Madison Avenue, 10th Floor
New York, New York 10022
[phone]
– and –
JENNER & BLOCK
1099 New York Avenue, NW, Suite 900
Washington, DC 20001
[phone]
Attorneys for Plaintiffs-Appellants

TABLE OF CONTENTS
Page
ARGUMENT......................................................................................................... 1
I.

COPYING MILLIONS OF BOOKS FOR INGESTION INTO A HIGHLY
COMMERCIAL SEARCH ENGINE IS NOT FAIR USE........................... 2

II.

GOOGLE’S DISPLAY OF LARGE PORTIONS OF COPYRIGHTED
WORKS IS NOT FAIR USE ..................................................................... 13

III.

GOOGLE’S COPYING AND DISTRIBUTION OF BOOKS TO
LIBRARIES IS NOT FAIR USE ............................................................... 19

IV.

THE AUTHORS GUILD HAS ASSOCIATIONAL STANDING ............. 27

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

TABLE OF AUTHORITIES
Page(s)
Cases
Am. Geophysical Union v. Texaco Inc.,
60 F.3d 913 (2d Cir. 1994)................................................................. 7, 8, 16, 26
American Broad. Cos. v. Aereo, Inc.,
134 S. Ct. 2498 (2014).....................................................................................21
Authors Guild, Inc. v. HathiTrust,
No. 12-4547, 2014 WL 2576342 (2d Cir. June 10, 2014)..........................passim
Authors Guild v. Google, Inc.,
282 F.R.D. 384 (S.D.N.Y. 2012)......................................................................16
Authors Guild v. Google Inc.,
770 F. Supp. 2d 666 (S.D.N.Y 2011) ..................................................... 3, 19, 28
Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 2006)...............................................................................3
Blanch v. Koons,
467 F.3d 244 (2d Cir. 2006)...............................................................................5
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994)..................................................................................passim
Cartoon Network LP v. CSC Holdings, Inc.,
536 F.2d 121 (2d Cir. 2008).............................................................................20
CBS Broad., Inc. v. EchoStar Comn’ns Corp.,
450 F.3d 505 (11th Cir. 2006)..........................................................................28
Field v. Google Inc.,
412 F. Supp. 2d 1106 (D. Nev. 2006).................................................................6
Folsom v. Marsh,
9 F. Cas. 342 (C.C.D. Mass 1841) ...................................................................17

ii

HarperCollins Publishers L.L.C. v. Gawker Media LLC,
721 F. Supp. 2d 303 (S.D.N.Y. 2010) ..............................................................18
Infinity Broadcasting Corp. v. Kirkwood,
150 F.3d 104 (2d Cir. 1998)............................................................... 2, 3, 19, 23
Olan Mills, Inc. v. Linn Photo Co.,
795 F. Supp. 1423 (N.D. Iowa 1991), rev’d on other grounds, 23
F.3d 1345 (8th Cir. 1994).................................................................................28
Princeton Univ. Press v. Michigan Document Servs., Inc.,
99 F.3d 1381 (6th Cir. 1996)..........................................................................3, 9
Pryor v. Warner/Chappell Music, Inc.,
CV 13-04344, 2014 WL 2812309 (C.D. Cal. June 20, 2014) ...........................18
Ringgold v. Black Entm’t Television, Inc.,
126 F.3d 70 (2d Cir. 1997)...............................................................................10
Roy Exp. Co. Establishment of Vaduz, Liechtenstein, Black Inc., A. G.
v. Columbia Broad. Sys., Inc.,
503 F. Supp. 1137 (S.D.N.Y. 1980), aff’d, 672 F.2d 1095 (2d Cir.
1982) ...............................................................................................................18
U.S. v. ASCAP,
599 F. Supp. 2d 415 (S.D.N.Y. 2009) ........................................................19, 23
United States v. Carroll Towing Co.,
159 F.2d 169 (2d Cir. 1947).............................................................................12
Statutes
17 U.S.C. § 106 ..............................................................................................11, 19
17 U.S.C. § 107(1) ..................................................................................................4
17 U.S.C. § 501(e) ................................................................................................28
Other Authorities
Jonathan Band, The Long and Winding Road to the Google Books
Settlement, 9 J. Marshall Rev. Intell. Prop. L. 227 (2010) ................................22

iii

Edward Lee, Technological Fair Use, 83 S. Cal. L. Rev. 797 (2010)....................23
“Press Release: Google Inc. Announces Second Quarter 2014 Results
and Management Change,” July 17, 2014, http://goo.gl/5jbWWV.....................4
S. Rep. No. 190, 105th Cong., 2d Sess. (1998) .....................................................12
Ryan Singel, Feds Charge Activist as Hacker for Downloading
Millions of Academic Articles, Wired, July 19, 2011, available at
http://goo.gl/JqfWDe .......................................................................................13
U.S. Census Bureau, “Service Annual Survey 2012, Table 8:
Estimated Revenue by Product and Class of Customer for
Employer Firms,” Dec. 18, 2013,
http://www2.census.gov/services/sas/data/table8.xls..........................................5

iv

ARGUMENT
Google is asking this Court to rewrite copyright law. It submits that the
Copyright Act allows a commercial enterprise to copy and display the text of
millions of books, for profit, without having to pay authors a dime. To reach that
implausible result, Google urges this Court to disregard almost all of the statutory
factors used to determine whether the use of copyrighted material is fair.
In Google’s view, it does not matter that Google undertook this massive
venture for a highly commercial purpose—to feed Google’s hugely profitable
search engine, now generating over $50 billion a year in revenue, while at the same
time preventing competitors from achieving comparable results. Nor does it matter
that Google’s unilateral action closed the door on the potential for authors to
receive revenue from new commercial uses of their works in this age of dwindling
book sales. It does not matter that the Library Project (unlike the HathiTrust
index) displays verbatim text from the digitized books, allowing people to browse
and read key portions of books without buying or borrowing them. Likewise,
Google argues that it does not matter that it gave full digital copies of the books to
its library partners for no reason other than as payment for their cooperation.
All of these facts must be disregarded, argues Google, because its search
product allows users to discover and research information contained in books—
supposedly a transformative purpose. And once there is a finding that one aspect

of its use is transformative, Google claims, all the other fair-use factors should be
thrown out the window. That is not, and should not become, the law.
To the contrary, under the Copyright Act, Google should have obtained
licenses from rightsholders. Rectifying that failure would not require the
destruction of Google’s search index or the digitized books. Rather, appropriate
relief could come in the form of damages and ongoing royalties, combined with an
injunction to forestall future infringement and requiring Google to implement and
maintain appropriate security measures. Granting such relief would mean that
authors, the very creators whose work so enhanced Google’s search engine, would
finally be treated fairly, retrospectively and prospectively.
I.
COPYING MILLIONS OF BOOKS FOR INGESTION INTO A HIGHLY
COMMERCIAL SEARCH ENGINE IS NOT FAIR USE
Turning first to the legality of Google’s massive book copying, Google
argues that the social utility of allowing people to search the full text of books
justifies Google’s refusal to seek licenses from copyright holders. But that is the
wrong focus. While a Google user might use Google Books for any number of
reasons, including scholarship and personal entertainment, Google’s own purposes
are entirely commercial. Google copied the books to enrich the content of its
crown jewel: its enormously profitable search engine. And it is Google’s purpose,
not that of its users, which matters when determining fair use. See Infinity

2

Broadcasting Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir. 1998) (“[I]t is
[defendant’s] own retransmission of the broadcasts, not the acts of his end-users,
that is at issue here . . . .”).1
By digitizing and indexing the entirety of millions of copyright-protected
print books, Google offers users the ability to search premium content that is
unavailable elsewhere. This drives more traffic to Google’s search engine, which
in turn increases page views and Google’s resulting advertising revenue. Google’s
Library Project gave Google a tremendous advantage over its competitors and
helped it dominate the search-engine market, an anticompetitive feat that
previously drove the District Court to reject a settlement agreement because it left
Google’s monopoly over book search untouched. See Authors Guild v. Google
Inc., 770 F. Supp. 2d 666, 682-83 (S.D.N.Y 2011) (Chin, J.).

1

Google attempts to distinguish Infinity on its facts (Opp. Br. at 55), but this
Court’s holding—that it is the purpose of the alleged infringer, not end users, that
counts when looking at the first fair-use factor—remains good law. See Princeton
Univ. Press v. Michigan Document Servs., Inc., 99 F.3d 1381, 1389 (6th Cir. 1996)
(“The courts have . . . properly rejected attempts by for-profit users to stand in the
shoes of their customers making nonprofit or noncommercial uses.”) (quoting
William Patry, Fair Use in Copyright Law, at 420 n.34). See also Campbell v.
Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (analyzing parodic purpose of band,
not the band’s listeners, in determining whether unauthorized use of song was fair
use); Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir.
2006) (analyzing biographical purpose of anthologist, not his readers, in
determining whether use of posters was fair).
3

Google attempts to obfuscate its commercial motives by noting that the
“About the Book” page created by Google for each scanned book contains no
advertising and that Google receives no payment when a “buy the book” link is
clicked. Opp. Br. at 8. But as was shown in Google’s own brief, when a user
searches the database for “Steve Hovley” (a baseball player), the results page
displays not only a list of books and excerpts that contain that name, but also at
least four advertisements, in the right hand margin, triggered by that particular
search. See id. Given that search results pages are the greatest source of Google’s
advertising revenue, Google and the District Court are wrong to disregard the fact
that Google profits by placing ads that are triggered by, and displayed alongside,
content from the Authors’ digitized books.
Google is further mistaken in contending that “[t]he fact that Google is a
commercial entity does not weigh against fair use.” Opp. Br. at 32. In applying
the first fair-use factor, Congress specifically instructed courts to consider
“whether such use is of a commercial nature or is for nonprofit educational
purposes.” 17 U.S.C. § 107(1). The commerciality of a project matters because it
demonstrates an ability of the copier to pay for the use and, most importantly, a
fundamental fairness in requiring the copier to do so.2 Google, one of the world’s

2

Google’s annual revenue from search engine advertising exceeds $50 billion and
it has more than $60 billion in cash reserves. See “Press Release: Google Inc.
Announces Second Quarter 2014 Results and Management Change,” July 17,
4

wealthiest corporations, established industrial-scale scanning operations
throughout the country and scanned, digitized and reproduced the entirety of
millions of copyright-protected books for the primary purpose of ingesting the
content into its search engine and using the content to amass advertising revenue.
Google has the means and ability to pay for the right to scan and use the books in
its profitable search engine, but instead it did so for free, without permission.
Here, where any “transformativeness” is accompanied by immense financial
benefits derived from the direct copying and use of entire works, it would be error
to ignore or trivialize the commercial nature of the use. See Campbell, 510 U.S. at
591; Blanch v. Koons, 467 F.3d 244, 262 (2d Cir. 2006) (Katzmann, J., concurring)
(where a use is “not for one of the archetypal purposes specifically contemplated
by Congress . . . it is uncertain whether we have license to ‘discount’ its
commercial nature, as opposed to balancing that consideration against the use’s
transformativeness and other countervailing concerns—particularly because

2014, http://goo.gl/5jbWWV. By contrast, the entire U.S. publishing industry
generates less than $30 billion annually. See U.S. Census Bureau, “Service Annual
Survey 2012, Table 8: Estimated Revenue by Product and Class of Customer for
Employer Firms,” Dec. 18, 2013,
http://www2.census.gov/services/sas/data/table8.xls. And, of course, authors
receive only a small portion of publishers’ revenues in the form of royalty
payments or otherwise.
5

consideration of a use’s commercial nature (unlike its ‘transformativeness’) is
explicitly part of our statutory mandate”).3
Google argues that two features of the indexed books—that they are
published and mostly non-fiction—weigh in favor of a fair-use finding. But the
fact that a book has been published does not make it fair game for ingestion into an
online search engine. Publishers of web pages impliedly license search engines to
copy and index their work by sharing it on the Internet without employing
available technical means to restrict access. See Field v. Google Inc., 412 F. Supp.
2d 1106, 1116-17 (D. Nev. 2006). Authors of print books grant no such license.
See Br. for Authors Malcolm Gladwell et al. as Amici Curiae in Supp. of PlaintiffsAppellants, ECF No. 73. Authors, not Google, have the right to decide whether to
permit their books to be digitized, used and commercially exploited by search
engines.
As for the predominance of non-fiction works, two points bear emphasis.
First, Google copied and exploits hundreds of thousands, if not millions, of works

3

The commercial nature of the Library Project stands in stark contrast to the index
and search functions of the not-for-profit, academically driven HathiTrust Digital
Library found to be fair use in Authors Guild, Inc. v. HathiTrust, No. 12-4547,
2014 WL 2576342 (2d Cir. June 10, 2014). Thus, even if, as this Court held, the
creation of a full-text searchable database by a non-profit, educational institution or
library is transformative, the commercial nature of the Library Project (among
other factors discussed herein) distinguishes this case from HathiTrust.
6

of fiction. Second, as discussed below, Google’s displays are more likely to harm
the economic interests of authors of non-fiction works. Such works are often
consulted in searches for relatively narrow types of information that can readily be
found by reviewing small portions of a work without ever accessing the full text.
In arguing that the Library Project could not possibly cause any market
harm, Google states that “[a]uthors and publishers traditionally have not received
license fees for the types of uses Google Books makes of their works, namely
indexing and the display of short snippets.” Opp. Br. at 16. The facts indicate
otherwise. In 2004, when Google first launched the Library Project, corporations
like Microsoft and Amazon were also establishing book digitization programs.
Unlike Google, they limited their scanning to authorized works and works in the
public domain. (See A56, A67.) Given the competitive landscape and immense
commercial value that a full-text searchable database of copyright-protected books
brings to a search engine or an online bookseller, a market for indexing, search and
snippet display was, at that time, both “reasonable” and “likely to be developed.”
Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 930 (2d Cir. 1994). However,
Google pre-empted that emerging market by proceeding to scan and capitalize
upon copyrighted books without a license.

7

Now, Google claims “it is implausible that rightsholders would be paid
anything at all for the search and snippet uses of the Library Project.” Opp. Br. at
49.4 But who would pay for a license after Google copied and indexed virtually all
of the world’s books for free? If this Court affirms the District Court’s decision,
potential licensees who otherwise would have paid for the right to make these uses
now will be permitted to do so without a license, forever precluding authors from
realizing a new revenue stream while further entrenching Google’s monopoly. See
Campbell, 510 U.S. at 590 (fourth factor “requires courts to consider not only the
extent of market harm caused by the particular actions of the alleged infringer, but
also ‘whether unrestricted and widespread conduct of the sort engaged in by the
defendant . . . would result in a substantially adverse impact on the potential
market’ for the original”).

4

Recent developments outside the U.S. disprove this claim. As discussed in the
Authors’ opening brief (Br. at 49-50), Norway and Sweden have reached licensing
agreements providing for the digitization of their national collections, and Google
itself has reached an industrywide digitization agreement in France. The fact that
these collective arrangements may provide users with more functionality than
Google offers in the Library Project does not mean that a market for search
engines, libraries and other users to obtain licenses for the right to index and
display verbatim excerpts of books for commercial purposes is not “reasonable” or
“likely to be developed.” Texaco, 60 F.3d at 930.
8

Relying on HathiTrust, Google further claims that its foreclosure of a
licensed digitization market, like its commercial motives, is irrelevant because one
aspect of its use was found to be transformative. Opp. Br. at 46. However, the
Supreme Court in Campbell did not hold that the potential market harm caused by
a transformative use is irrelevant to the fair-use calculus. Rather, the Court held
that when “the second use is transformative, market substitution is at least less
certain, and market harm may not be so readily inferred.” Campbell, 510 U.S. at
591. Here, where a licensing market likely would have developed but for Google’s
usurpation of that market and the infringer’s business was built on the backs of
authors, the fourth factor weighs against fair use. See Princeton, 99 F.3d at 13851389 (unlicensed copying and sale of book excerpts for profit by commercial
enterprise is not fair use).5
Google and various amici proclaim that, far from foreclosing valuable
licensing rights, the Library Project stimulates the sale of books and is widely
embraced by authors. But that claim is without support in the record. Factually,
the most that Google can point to is unremarkable testimony that the discovery of a

5

If Google’s view were carried to its logical conclusion—that a transformative use
can never cause relevant market harm—it would mean that even if there were an
established market for licensing digital copies of printed books for search and
snippet display, Google could still proceed without a license because the
transformative nature of its use would render the existence of a market irrelevant.
9

book is a necessary precursor to a sale. See Opp. Br. at 12 (citing A210-14).
Google offers no evidence that users ever, much less frequently, click the
hyperlinks to Amazon or other book retailers upon discovering a book through the
Library Project.6 There is no question that Google, one of the most sophisticated
aggregators of data in the world, tracks the number of times users click on these
links to buy books. The absence of data in the record supports an inference that, in
fact, people generally use the Library Project to discover and browse information
contained in books (not just to discover the existence of a book), and once the
desired information is located, there is no need to buy the book from online
retailers.
As a legal matter, courts have properly rejected similar defenses of “our
unauthorized use only helped you get discovered.” See, e.g., Campbell, 510 U.S.
at 590 n.21 (increased sales of previously unknown song due to unlicensed use in
film does not make the copying fair); Ringgold v. Black Entm’t Television, Inc.,
126 F.3d 70, 81 n.16 (2d Cir. 1997) (no fair use “even if the unauthorized use of

6

Google has not submitted any evidence that the Library Project ever resulted in
the sale of a single book. (Cf. CA58, CA108.) Indeed, Google’s supposed expert
on this subject testified that she had “not done any empirical analysis of the sales
of books that were on Google Books.” (A894.)
10

plaintiff’s work in the televised program might increase [plaintiff’s] comic book
sales . . . .”).7
Finally, Google offers no persuasive response to the Authors’ concern about
the security of millions of unauthorized digital copies of their works stored on
Google’s servers. It argues that “[t]he scans are protected by the same security
systems Google uses to protect its own confidential information” and that it is
unaware of any thefts of works to date. Opp. Br. at 50-52.8 But these points do not
render the Authors’ concern about a data breach speculative. Google’s own public
filings disclose that Google “experience[s] cyber attacks of varying degrees on a

7

The fact that some authors, such as the 400 who make up the Authors Alliance,
may want their books to be freely available via Google’s search engine does not
mean that other authors, who make a living by being paid for use of their works,
must agree. After all, any author may choose to make his or her work freely
available on Google or anywhere else. Copyright law gives authors the exclusive
right to choose when and under which circumstances others may digitize and
commercially exploit their books. See 17 U.S.C. § 106. The Authors in this case,
the coalitions of authors and creators of content and art who were moved to submit
amicus briefs here and other like-minded stakeholders must be able to exercise
those rights. See Br. for Authors Malcolm Gladwell et al. as Amici Curiae in
Supp. of Plaintiffs-Appellants, ECF No. 73.
8

Google’s claim that its “digital scans are stored on computers that are not
connected to the public Internet” (Opp. Br. at 51) is misleading. In fact, the
declaration cited by Google in support of this claim states that “[t]he Google
servers which hold the complete scans of books and related information are not
publicly accessible.” (A393 ¶ 3) (emphasis added). This is a far cry from being
stored on an “offline” server, which is how the Authors demand that their digitized
books be maintained.
11

regular basis, and as a result, unauthorized parties have obtained, and may in the
future obtain, access to [its] data or [its] users’ or customers’ data.” Google 10-K,
http://goo.gl/IzcXEz.
Moreover, “[s]ince there are occasions when every vessel will break from
her moorings,” it is not just the likelihood of a breach that concerns rightsholders,
but the lack of accountability to rightsholders and immense gravity of the harm that
would ensue if a data breach were to occur. United States v. Carroll Towing Co.,
159 F.2d 169, 173 (2d Cir. 1947) (Hand, J.). The database of books stored on
Google’s servers is a treasure trove of intellectual property; its theft would
decimate the literary market if it fell into the wrong hands. See S. Rep. No. 190,
105th Cong., 2d Sess. 61-62 (1998) (requiring libraries using digitized books to
implement security measures in recognition that “uncontrolled public access” to
digital copies of books “could substantially harm the interests of the copyright
owner by facilitating immediate, flawless and widespread reproduction”).
Google notes the absence of any prior cases in which the risk of a data
breach weighed against fair use, but no other case (other than HathiTrust) involved
the unauthorized reproduction and storage of millions of copyright-protected books
in digital format. While hackers and activists are unlikely to target a few “scans of
photographs,” “a database of student papers” or “computer software extracted from
a computer chip” (Opp. Br. at 52), they already have manifested a mission to
12

“free” the types of copyrighted works misappropriated by Google. See Ryan
Singel, Feds Charge Activist as Hacker for Downloading Millions of Academic
Articles, Wired, July 19, 2011, available at http://goo.gl/JqfWDe.
In sum, Google must not be permitted to rewrite copyright law and upset the
longstanding balance between the rights of copyright owners and users, simply to
grease the wheels of its own profit-making machine.
II.
GOOGLE’S DISPLAY OF LARGE PORTIONS OF COPYRIGHTED
WORKS IS NOT FAIR USE
This Court’s holding in HathiTrust, that the creation of a full-text
searchable database is transformative,9 does not mean that the display of verbatim
text from millions of copyrighted books is transformative as well. Google’s sole
justification for this use is that “‘snippets help users locate books and determine
whether they may be of interest.’” Opp. Br. at 31 (quoting SPA20). According to
Google, these displays of copyrighted material make the index “significantly more
valuable without in any way superseding use of the original books.” Id. at 32.
This conclusory analysis reflects a fundamental misconception about the way that
people experience and consume books.

9

The Authors respectfully submit that this holding, although binding here, was
erroneous and preserve the right to contest it in later stages of this case.
13

The HathiTrust Court understood the difference between creating a
searchable index of a book and displaying the book itself, emphasizing that
“[i]mportantly, as we have seen, the HDL does not allow users to view any portion
of the books they are searching.” HathiTrust, 2014 WL 2576342, at *7; see also
id. (“[T]he result of a word search is different in purpose, character, expression,
meaning, and message from the page (and the book) from which it is drawn.
Indeed, we can discern little or no resemblance between the original text and the
results of the HDL full-text search.”). The distinction drawn by the Court between
indexing and display uses reflects the fact that a transformative use is one that
“adds something new, with a further purpose or different character, altering the
first with new expression, meaning or message.” Id. at *6 (quotations omitted).
Unlike the creation of a searchable index, the display of verbatim text does nothing
more “than repackage or republish the original copyrighted work.” Id.
A comparison of HathiTrust’s index results and Google’s snippet display
shows how the latter merely repackages the books’ content into digital form.
Compare

14

id. at *1 (screenshot of the results of HathiTrust search that was deemed
transformative), with

Opp. Br. at 9-10 (citing A244, A246) (screenshot of results of Google Books
search displaying verbatim text from original work). Google’s self-serving claim
15

that its displays of copyrighted materials are used to point readers in the direction
of a book does not change the fact that Google has not transformed or added
anything new to the underlying text.
Moreover, other than post hoc pronouncements, Google has not met its
burden to show that the predominant use of snippets is to locate books of interest,
as opposed to obtaining information from those books. See Texaco Inc., 60 F.3d at
918 (“[T]he party claiming that its secondary use of the original copyrighted work
constitutes a fair use typically carries the burden of proof as to all issues in the
dispute.”) (emphasis added). Indeed, nothing in the record indicates that snippet
display is ever used in such a limited manner.10
People buy and access books for a variety of reasons and uses. While
Google suggests that books always are intended to be read cover-to-cover, at least

10

Amicus for Google, the Authors Alliance, makes much of the fact that Google’s
expert, Hal Poret, found that 45% of 880 respondents to a survey thought that
Google’s snippet view would improve sales of their books. See Br. for Amicus
Curiae Authors Alliance in Supp. of Defendant-Appellee and Affirmance at 27,
ECF No. 150. For a variety of reasons, these findings are irrelevant. The Authors
Guild and amici author associations obviously do not share in this view, and,
apparently, neither did the majority of Mr. Poret’s respondents. Moreover, Judge
Chin did not find this survey at all persuasive. See Authors Guild v. Google, Inc.,
282 F.R.D. 384, 394 (S.D.N.Y. 2012).
16

as often books are consulted for a specific piece of information.11 As already
noted, that is particularly true in the case of non-fiction works, which make up the
majority of the works at issue here. See Opp. Br.at 36. For readers using Google
Books to locate information, the “heart” of a book is defined not by an objective
standard (e.g., a U.S. President’s description of his decision to pardon his
predecessor or a famously descriptive scene from a novel), but subjectively—by
the very information sought by the user. For example, if a user wanted to learn
what Jim Bouton said about Steve Hovley in Ball Four, she could formulate a
search to display the portion of the book that contains the requested information—
in the same way that one browses a book when seeking specific answers. (A246.)
In short, Google’s snippet display allows users to get exactly what they seek
in a book without buying anything. Google “cites the most important parts of the
work, with a view, not to criticize, but to supersede the use of the original work,
and substitute the review for it,” and thus should “be deemed in law a piracy.”
Folsom v. Marsh, 9 F. Cas. 342 (C.C.D. Mass 1841).
Google attempts to piggyback its verbatim display of pages of copyrighted
books onto the full-text search found to be transformative in HathiTrust. But the

11

Google concedes this fact by disabling snippet view for certain categories of
works, such as dictionaries, books of short poems and cookbooks. See Opp. Br.
at 11.
17

HathiTrust Court rejected this approach, holding that making copyrighted works
available in formats accessible to the blind “enables a larger audience to read those
works, but is the same as the author’s original purpose.” 2014 WL 2576342, at
*11. Similarly, displaying verbatim text to users looking for that text may allow
more people to discover the work, but is the same as the author’s original purpose.
Because verbatim text display is a non-transformative use, Google is plainly
wrong when it dismisses concerns about market harm with regard to its displays of
copyrighted materials. See Opp. Br. at 46. Even if market harms caused by
transformative uses were categorically irrelevant under factor four (and they are
not, see supra at 9), the harm caused by the non-transformative displays, which
supersede the original works, weighs against fair use.
Finally, reproduction and display of excerpts, even short ones, have long
been held to be copyright infringements. See, e.g., Roy Exp. Co. Establishment of
Vaduz, Liechtenstein, Black Inc., A. G. v. Columbia Broad. Sys., Inc., 503 F. Supp.
1137, 1145 (S.D.N.Y. 1980), aff’d, 672 F.2d 1095 (2d Cir. 1982) (fifty-five
seconds of a one hour and twenty-nine minute film could be qualitatively
substantial); HarperCollins Publishers L.L.C. v. Gawker Media LLC, 721 F. Supp.
2d 303, 306 (S.D.N.Y. 2010) (“portions of 12 pages” of an entire memoir
“amounts to a substantial portion of the Book”); Pryor v. Warner/Chappell Music,
Inc., CV 13-04344, 2014 WL 2812309 (C.D. Cal. June 20, 2014) (defendants’ use
18

of half-second long, “two-word snippet” from 6-minute long musical recording
may be copyright infringement).
In fact, there is an existing market for licensing short excerpts. See, e.g.,
U.S. v. ASCAP, 599 F. Supp. 2d 415 at 422, 432 (S.D.N.Y. 2009) (performance
rights organization established market for ringtone previews). It therefore makes
sense that Amazon asked publishers for permission to scan entire books and
display up to twenty percent of those books in response to customer searches.
(A56.) Under Google’s scheme, a full 78% of any given work is susceptible to
display. Again, the fact that an end user may view three snippets at a time does not
weigh in favor of fair use where Google displays the majority of millions of books
in order to drive advertising revenue. See Infinity, 150 F.3d at 108.
III.
GOOGLE’S COPYING AND DISTRIBUTION OF BOOKS
TO LIBRARIES IS NOT FAIR USE
Google argues that making full-text digital copies for its library partners—
infringing conduct that has nothing to do with setting up or operating Google
Books—is non-infringing because (1) it does not implicate the distribution right
under 17 U.S.C. § 106(3), and (2) it assists the library partners’ fair uses. Google’s
first argument ignores that the reproduction right is squarely at issue, and its
second argument is legally irrelevant and factually incomplete. Analyzed properly,

19

Google’s non-transformative reproduction of copyrighted works for use as
currency is infringement, pure and simple.
Contrary to Google’s narrow framing of the issue (see Opp. Br. at 53-57),
the Authors have long contended that Google’s copying and dissemination of
digital books to the libraries implicates both the reproduction and distribution
rights under the Copyright Act.12 Moreover, the undisputed facts establish that
Google is responsible for the creation of the library copies. Upon a given library
partner’s request, Google’s GRIN system creates an additional full digital copy of
any book scanned from that library’s collections and makes that additional copy
available for download. (A396-97.) Independent of the copies made for search
and display purposes, Google has made copies of at least 2.7 million books for its
library partners through the GRIN system. (A430.)13

12

See, e.g., Br. at 35-36; Pls.’ Mem. of Law in Opp. to Google’s Mot. Summ. J. at
16, ECF No. 1070 (“Google engaged in repeated violations of plaintiffs’
Reproduction right under Section 106(1) by itself reproducing . . . millions of
books to be stored on the libraries’ own servers for the libraries’ own uses.”);
Mem. of Law in Supp. of Pls.’ Mot. for Partial Summ. J. at 14, ECF No. 1050;
Pls.’ Reply in Supp. of Mot. for Partial Summ. J. at 8, ECF No. 1085.
13

Google has correctly abandoned its earlier argument that because “[t]he GRIN
system makes no copies unless and until the user triggers the creation of copy,”
Google does not engage in volitional conduct sufficient to constitute direct
infringement. Reply in Supp. of Def.’s Mot. for Summ. J. at 12-14, ECF No. 1084.
That argument depended on a “bright-line rule” of volitional conduct derived from
Cartoon Network LP v. CSC Holdings, Inc., 536 F.2d 121 (2d Cir. 2008). In the
20

The GRIN system exists solely to make good on Google’s contractual
obligations to make digital copies of copyrighted works for its library partners.
Indeed, unlike Google’s declarations filed in support of summary judgment (which
are carefully drafted to track perceived loopholes in the copyright law), Google’s
agreements with the libraries make clear that Google, not the libraries, would be
the party responsible for making and disseminating the libraries’ digital copies.

14

Once that reality is established, the fair-use inquiry regarding the library
copies is quite straightforward. All four fair-use factors militate strongly against a
finding of fair use: Google’s purpose of using digital copies as payment is plainly

wake of American Broad. Cos. v. Aereo, Inc., 134 S. Ct. 2498 (2014), which
rejected a comparable volition argument, such a claim is no longer tenable.
14

Because the Authors have presented a prima facie case of infringement of the
reproduction right under Section 106(1), whether Google’s distribution to libraries
also constitutes distribution “to the public” under Section 106(3) (see Opp. Br. at
56-57) is of no moment: regardless of the answer to that question, Google has
reproduced copyrighted works for the libraries and is therefore liable for
infringement unless those particular copies are deemed to be fair use.
21

non-transformative; those copies are complete and contain material at the core of
copyright protection; and the use harms existing and developing markets for fulltext digitization.
With regard to factor one, it is important to recognize that Google’s copying
of books for library partners bears absolutely no functional or technological
relationship to the full-text search, Ngrams, or other uses that Google touts in
describing the Library Project. Rather, Google’s purpose in creating and
disseminating the library copies is purely one of business strategy: it uses the
digital books as currency, paying for the right to make and retain digital versions of
the libraries’ print copies by making more digital copies at a library partner’s
request. Thus, regardless of whether Google’s creation of full-text book search
engine is transformative, giving libraries digital copies of books as part of a
bargain is not.
Even pro-Google commentators concede this point. Jonathan Band, who
authored the American Library Association amicus brief, has written that “Google
made the library copies as consideration for obtaining access to the book for the
purpose of making the index copy.” The Long and Winding Road to the Google
Books Settlement, 9 J. Marshall Rev. Intell. Prop. L. 227, 257 (2010) (emphasis
added). Edward Lee, upon whose “technological fair use” framework the
Electronic Frontier Foundation bases an entire section of its amicus brief, has noted
22

that “[t]he library copies are not technologically necessary to create or operate
[Google Book Search],” concluding that “[s]uch ‘bargain’ uses . . . [must] be
analyzed under a standard fair use analysis,” rather than under his proposed
framework. Technological Fair Use, 83 S. Cal. L. Rev. 797, 798 (2010).
Nor can Google’s creation of the library copies be justified based on the uses
to which the libraries put those copies. As noted above, this Court has made clear
that the purposes of an infringer’s end users have no bearing on whether the
infringer’s conduct constitutes fair use. See Infinity, 150 F.3d at 108; see also
ASCAP, 599 F. Supp. 2d at 427. Rather than rebutting this authority, Google
simply continues to justify its copying based on “the libraries’ own fair uses of
creating a search tool and expanding access to books for print-disabled
individuals.” Opp. Br. at 55-56.
Putting aside the irrelevance of these uses, the library partners are not nearly
as constrained as Google suggests: under their agreements with Google, the library
partners have wide discretion to determine how to use their digital copies within
the bounds of copyright law, as the libraries perceive those bounds.

23

HathiTrust further supports the conclusion that the library copies are nontransformative. There, the Court made clear that “[a]dded value or utility is not the
test for whether a use is transformative” and, further, that a use does not become
transformative simply by making a “contribution to the progress of science and the
cultivation of the arts.” 2014 WL 2576342, at *6. Applying this principle, the
Court held that the defendants’ provision of the full text of copyrighted works to
print-disabled patrons was not transformative. Rather, the print-disabled copies
were on their face like “[p]aradigmatic examples of derivative works.” Id. at *11.
Here, Google’s use may create “added value or utility,” but it does not “add[]
something new to the copyrighted work.” Id. Instead, it “supersede[s] the
purposes of the original creation.” Id.
Of course, there is one critical difference between Google’s library copying
and the HathiTrust libraries’ print-disabled copying: no special carve-out exists for
the purpose of using books as in-kind payment. Because “the unique
circumstances presented by print-disabled readers” are not present here, there is
nothing that makes Google’s non-transformative purpose nevertheless “valid” for
purposes of the factor one analysis. Id. at *12. Accordingly, the first fair-use
factor weighs strongly against fair use.
HathiTrust’s analysis of the library defendants’ print-disabled copying is
equally applicable to the analysis of the second fair-use factor here. As in
24

HathiTrust, the relevant third parties—in this case, the library partners—“can
obtain [copies of] copyrighted works of all kinds, and there is no dispute that those
works are of the sort that merit protection under the Copyright Act.” Id.; see supra
at 6-7. Further, because the library partners’ uses are not limited to indexing and
snippet display, Google cannot argue, as it does elsewhere, that its use “does not
allow users to read expressive works as they would the original books.” Opp. Br.
at 23. “As a result, Factor Two weighs against fair use.” HathiTrust, 2014 WL
2576342, at *12. While the other fair-use factors mitigated this conclusion in
HathiTrust, they only reinforce it here.
The third fair-use factor “asks . . . whether [defendant’s] copying was
excessive in relation to any valid purposes asserted under the first factor.” Id. at
*6. It is undisputed that Google makes copies of the entirety of any work
requested by a library partner. Because Google has articulated no purpose that is
“valid” under the first factor, its copying of whole books for the library partners is
undoubtedly excessive. Nothing in Google’s brief—and nothing in the copyright
law—suggests otherwise.
Finally, Google simply ignores the fourth fair-use factor as it relates to the
library copies, failing to address the Authors’ evidence and arguments that this use
destroys potential and existing markets for copyrighted works and subjects those
works to heightened risks of online theft. With respect to the library copies, the
25

relevant markets are not the markets for search indices, snippets or related licenses,
but the markets for digitization licenses and full-text digital copies of copyrighted
works. Because Google’s copying for library partners is starkly nontransformative, the markets for these uses are highly relevant.
Rightsholders sell books to libraries. Google undercuts that market by
giving libraries millions of unauthorized copies for free. The Authors have pointed
to numerous other relevant markets in their opening brief, including markets in
which libraries participate. Br. at 49-50. The Copyright Clearance Center already
licenses a variety of digitization rights to businesses and academic institutions,
including the right to scan printed material into digital form when an electronic
version is not readily available. (A791.) Norway and Sweden are well on their
way to licensing the digitization of their national library collections, demonstrating
that collective licensing is not merely hypothetical. Br. at 49-50. Google attempts
to distinguish these markets by asserting that they are not “limited to indexing and
the display of snippets” (Opp. Br. at 48 n.19), but, again, this distinction simply
does not apply to Google’s full-text copying for and dissemination to its library
partners. Especially given the libraries’ broad discretion over their use of the fulltext copies, the dissemination of books to the libraries clearly has an “impact on
potential licensing revenues for traditional, reasonable, or likely to be developed
markets.” Texaco Inc., 60 F.3d at 930. Google could have paid copyright owners
26

for the right to digitize and use their works. It chose to pay its library partners
instead.15 In addition, the risks of security breach applicable to Google’s copying
and display for its own purposes apply a fortiori to the copies disseminated to the
library partners.
In sum, all four fair-use factors weigh strongly against a finding of fair use
as to the library copies.
IV.
THE AUTHORS GUILD HAS ASSOCIATIONAL STANDING
The Court in HathiTrust held that, “§ 501 of ‘the Copyright Act does not
permit copyright holders to choose third parties to bring suits on their behalf.’”
2014 WL 2576342, at *4 (quoting ABKCO Music, Inc. v. Harrisongs Music, Ltd.,
944 F.2d 971, 980 (2d Cir. 1991)). While acknowledging that the Court’s ruling is
binding on this panel, respectfully, the Authors Guild continues to believe that the
decision in HathiTrust was a misreading of the Copyright Act and a misapplication
of the law governing associational standing. Nothing in the Copyright Act
prevents an association from suing as a representative of its members pursuant to
associational standing under Hunt where, as here, the members of the association

15

As discussed in the Authors’ opening brief (Br. at 12-13 n.6, 57-58), Google’s
agreements with the library partners also circumvent specific limitations on digital
copying found in Section 108 of the Copyright Act. Congress put these limitations
in place specifically to protect the economic interests of copyright holders. See id.
27

meet the statutory requirements and individualized participation is
unnecessary. Authors Guild, 282 F.R.D. at 289 (“[T]he associations’ claims of
copyright infringement and requests for injunctive relief will not require the
participation of each individual association member.”). Indeed, other courts have
similarly held that the Copyright Act confers associational standing. See CBS
Broad., Inc. v. EchoStar Comn’ns Corp., 450 F.3d 505, 518 n.25 (11th Cir. 2006)
(association of television network affiliates with Hunt standing may bring
copyright claims on behalf of their members who satisfy the standing requirements
under 17 U.S.C. § 501(e)); Olan Mills, Inc. v. Linn Photo Co., 795 F. Supp. 1423,
1428 (N.D. Iowa 1991), rev’d on other grounds, 23 F.3d 1345 (8th Cir. 1994)
(association has standing under Hunt to bring copyright claim on behalf of its
member photographers who are the legal or beneficial owners of their copyrights).

28

CONCLUSION
For the reasons set forth herein and in the Authors’ opening brief, this Court
should vacate the judgment of the District Court and remand the case for entry of
judgment in favor of the Authors that includes fair compensation for use of their
works and protections against further infringement and the risk of security
breaches that could lead to widespread dissemination of copyrighted books.

Dated: New York, New York
July 24, 2014
FRANKFURT KURNIT KLEIN & SELZ, P.C.

By: /s/ Edward H. Rosenthal
Edward H. Rosenthal
Jeremy S. Goldman
Anna Kadyshevich
Andrew D. Jacobs
FRANKFURT KURNIT KLEIN & SELZ, P.C.
488 Madison Avenue, 10th Floor
New York, New York 10022
[phone]
Paul M. Smith
JENNER & BLOCK LLP
1099 New York Avenue NW, Suite 900
Washington, D.C. 20001
[phone]
Attorneys for Plaintiffs-Appellants

29

CERTIFICATE OF COMPLIANCE
This brief complies with the type-volume limitation of Fed. R. App. P.
32(a)(7)(B) because based on the word count of the word-processing system used
to prepare the brief (Microsoft Word), this brief contains 6,726 words, excluding
the part of the brief exempted by Fed. R. App. P. 32(a)(7)(B)(iii).
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 14-point Times New Roman.
Dated: July 24, 2014

By: /s/ Edward H. Rosenthal
Edward H. Rosenthal