The Authors Guild v. Google, Inc.

Filing 55

BRIEF & SPECIAL APPENDIX, on behalf of Appellant Jim Bouton, Joseph Goulden, Betty Miles and The Authors Guild, FILED. Service date 04/11/2014 by CM/ECF. [1200323] [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

BRIEF AND SPECIAL APPENDIX
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

CORPORATE DISCLOSURE STATEMENT
The undersigned, counsel for Plaintiffs-Appellants, certifies that none of the
Plaintiffs-Appellants have any parent corporation and no publicly-held corporation
owns 10% or more of any of the Plaintiffs-Appellants’ stock.

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

TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES ................................................................................ iii
PRELIMINARY STATEMENT............................................................................ 1
JURISDICTIONAL STATEMENT ....................................................................... 5
STATEMENT OF ISSUES PRESENTED AND STANDARD OF REVIEW ....... 6
STATEMENT OF THE CASE .............................................................................. 6
I. Google’s Digital Books Program ................................................................. 7
A.

Google’s Licensed Partner Program......................................... 7

B.

Google’s Unlicensed Library Project ..................................... 8
1.

Mass Digitization of Copyrighted Books ....................... 8

2.

Agreements with Library Partners.................................12

3.

Google’s Overriding Commercial Purposes ..................14

4.

Impact on the Authors’ Books ......................................15

II. Procedural History ..................................................................................... 17
A.

The Lawsuit ............................................................................17

B.

Settlement History ..................................................................18

C.

Class Certification ..................................................................20

D.

The Decision Below................................................................21

SUMMARY OF ARGUMENT ............................................................................21
ARGUMENT........................................................................................................22
I. THE DISTRICT COURT ERRED IN DETERMINING THAT THE
LIBRARY PROJECT MAKES FAIR USE OF THE AUTHORS’
COPYRIGHT-PROTECTED BOOKS .......................................................22
i

A.

Purpose and Character of the Use ...........................................24
1.

Google’s Uses Are Highly Commercial ........................24

2.

Google’s Uses Are Not Transformative ........................31

B.

Nature of the Copyrighted Work.............................................40

C.

Amount and Substantiality of the Portion Used.......................42
1.
2.

D.

Google’s Uses Far Exceed That Necessary for the
Search and Text Mining Functions......................43
Snippets May Contain the “Heart” of the Book.............44

The Effect of the Use Upon the Market for or Value of
the Work .......................................................................46
1.

Google Destroyed Existing and Emerging Markets
for Digital Books ................................................47

2.

The District Court Ignored Evidence of the Risk
and Immense Consequences of a Data
Breach...............................................................522

3.

The District Court’s Decision Clears the Way for
Other, Less Responsible Parties to Engage
in Their Own Mass Digitization Programs ..........55

II. A FUNDAMENTAL CHANGE IN THE BALANCE BETWEEN
THE RIGHTS OF COPYRIGHT HOLDERS AND USERS MUST
BE MADE BY CONGRESS, NOT BY A PRIVATE COMMERCIAL
ENTITY .................................................................................................... 56
CONCLUSION ................................................................................................... 58

ii

TABLE OF AUTHORITIES
Page(s)
Cases
Am. Geophysical Union v. Texaco Inc.,
802 F. Supp. 1 (S.D.N.Y. 1992), aff’d, 60 F.3d 913 (2d Cir. 1995)...........passim
Associated Press v. Meltwater U.S. Holdings, Inc.,
931 F. Supp. 2d 537 (S.D.N.Y. Mar. 21, 2013) ................................................31
Authors Guild, Inc. v. Google Inc.,
721 F.3d 132 (2d Cir. 2013).............................................................................20
Authors Guild, Inc. v. HathiTrust,
902 F. Supp. 2d 445 (S.D.N.Y. 2012) ........................................................36, 44
Authors Guild v. Google, Inc.,
282 F.R.D. 384 (S.D.N.Y. 2012)......................................................................20
The Authors Guild v. Google, Inc.,
770 F. Supp. 2d 666 (S.D.N.Y. 2011) .......................................................passim
Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 2006)........................................................... 28, 29, 30, 38
Blanch v. Koons,
467 F.3d 244 (2d Cir. 2006)................................................................. 28, 29, 30
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994)..................................................................................passim
Cariou v. Prince,
714 F.3d 694 (2d Cir. 2013)........................................................... 28, 31, 35, 37
Castle Rock Entm’t v. Carol Publ’g Grp.,
150 F.3d 132 (2d Cir. 1998).............................................................................37
Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539 (1985)....................................................................... 44, 45, 47, 56
HarperCollins Publishers L.L.C. v. Gawker Media LLC,
721 F. Supp. 2d 303 (S.D.N.Y. 2010) ........................................................37, 45
iii

Heim v. Universal Pictures Co.,
154 F.2d 480 (2d Cir. 1946).............................................................................46
Infinity Broad. Corp. v. Kirkwood,
150 F.3d 104 (2d Cir. 1998)......................................................................passim
Kelly v. Arriba Soft Corp.,
336 F.3d 811 (9th Cir. 2003)................................................................ 34, 38, 39
New Era Publ’ns Int’l., ApS v. Carol Publ’g Grp.,
904 F.2d 152 (2d Cir. 1990).............................................................................41
On Davis v. The Gap, Inc.,
246 F.3d 152 (2d Cir. 2001).............................................................................24
Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146 (9th Cir. 2007)........................................................ 31, 34, 38, 39
Princeton Univ. Press v. Michigan Document Servs., Inc.,
99 F.3d 1381 (6th Cir. 1996)........................................................................... 30
Salinger v. Random House, Inc.,
811 F.2d 90 (2d Cir.), cert. denied, 484 U.S. 890 (1987) .................................55
Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984)............................................................................... 4, 28, 47
Twin Peaks Prods., Inc. v. Publications Int’l, Ltd.,
996 F.2d 1366 (2d. Cir. 1993)..........................................................................37
UMG Recordings, Inc. v. MP3.com, Inc.,
92 F. Supp. 2d 349 (S.D.N.Y. 2000) ..........................................................30, 33
United States v. ASCAP,
599 F. Supp. 2d 415 (S.D.N.Y. 2009) .................................................. 30, 38, 51
Video Pipeline, Inc. v. Buena Vista Home Entm’t, Inc.,
342 F.3d 191 (3d Cir. 2003).......................................................................39, 40
Statutes
17 U.S.C. § 106 ........................................................................................ 23, 55, 57

iv

17 U.S.C. § 107 .............................................................................................passim
17 U.S.C. § 108 ........................................................................................ 12, 13, 57
28 U.S.C. § 1291.....................................................................................................5
28 U.S.C. § 1338(a) ................................................................................................5
Other Authorities
2013 Data Breach Investigations Report (2013),
http://www.verizonenterprise.com/ DBIR/2013 ...............................................52
Eric Pfanner, Google Has Deal in France for Book-Scanning Project,
N.Y. Times, June 12, 2012.........................................................................16, 50
Fred von Lohmann, Google Book Search Settlement: A Reader’s
Guide, Electronic Frontier Foundation Deep Links Blog (Oct. 31,
2008), http://www.eff.org/deeplinks/2008/10/google-bookssettlement-readers-guide ..................................................................................27
Gini Graham Scott, The Battle Against Internet Book Piracy (2013) ....................54
Melville B. Nimmer & David Nimmer, Nimmer On Copyright (2011) ..... 32, 42, 46
Norway Decided to Digitize All the Norwegian Books, The Atlantic,
December 3, 2013,
http://www.theatlantic.com/technology/archive/2013/12/norwaydecided-to-digitize-all-the-norwegian-books/282008/;.....................................49
3 Omnibus Copyright Revision Legislative History 120-27 (George
Grossman ed., 2001) ........................................................................................57
Pierre N. Leval, Toward A Fair Use Standard, 103 Harv. L. Rev.
1105 (1990) .....................................................................................................33
Richard Pérez-Peña, Campuses Face Rising Threat from Hackers,
N.Y. Times, July 17, 2013 .........................................................................17, 53
S. Rep. No. 105-90 (1998) ..............................................................................54, 57
Sweden’s Digital Library, March 3, 2011, http://slidesha.re/1luSlna.....................50

v

Wallace D. Loh, UMD Data Breach: Update #6 (Feb. 25, 2014),
http:// uhr.umd.edu/2014/02/umd-data-breach-update-6-02252014............17, 53

vi

PRELIMINARY STATEMENT
This case tells the story of how Google Inc. (“Google”), a commercial
enterprise with virtually unlimited resources, enhanced its search engine, drove
potential book purchasers away from online book retailers, increased its
advertising revenue and stifled its competition by digitizing, distributing and
monetizing millions of copyright-protected books without permission or payment.
When the mass digitization of books became technologically feasible,
companies other than Google approached the opportunity with an appropriate
respect for copyright. In 2003, Amazon asked publishers for permission to scan
entire books and display up to twenty percent of those books in response to
customer searches. (A56.)1 After reaching agreements with over 190 publishers,
including many of the largest in the United States, Amazon launched its “Search
Inside the Book” program, with over 120,000 books and 33 million pages available
for search and partial display. (A1292-93.) In order to use the service, Amazon
required users to have an account with a credit card number attached to it so that
the searchable books were only one click away from purchase. (A1293.) With this
program, Amazon provided a retail environment where rightsholders could choose
to make their books available for sale.

1

As used herein, citations of the form “A___” refer to the Joint Appendix,
“CA____” to the Joint Confidential Appendix, and “SPA___” to the Special
Appendix.

Amazon’s Search Inside the Book program threatened Google’s dominance
as the place people go to find information. (See A1294-98.) Indeed, just four
months before Google’s initial public offering in August 2004, Amazon launched
its own search engine, A9.com, that included the materials licensed from
rightsholders. But Google found a way to beat the competition by scanning
copyright-protected books without permission from rightsholders. This way, it
would avoid having to negotiate with publishers and authors—as Amazon did—
about critical issues such as the extent of permitted text display, the security of the
books and reasonable compensation. (See A1298-99.) In other words, Google
would “neatly leapfrog” its competitors by ignoring copyright law and trampling
the right of authors to control their works. (A1298.)
In December 2004, Google struck back, shocking the literary community by
launching its unprecedented “Library Project,” through which Google partnered
with some of the world’s largest libraries to gain free access to millions of
copyright-protected books. Google emptied the shelves of libraries and delivered
truckloads of printed books to scanning centers, where the books were converted
into digital format. The resulting e-books were then copied onto Google’s servers
and ingested into its search engine. Google was savvy enough not to pay the
libraries in cash for the incredible commercial advantage it gained from these

2

books. Instead, it provided the libraries with e-books worth millions of dollars as
payment for their participation in the Library Project.
Google’s ambitious Library Project was designed to lure potential book
purchasers away from online retailers like Amazon—a website focused on selling
books—and drive them to Google, a website focused on selling advertisements and
keeping the resulting revenue. (CA440.)

Google’s conduct also exposed the authors’ works to new and
serious security risks by converting their print books into digital format, storing the
resulting e-books on multiple servers connected to the Internet and distributing
millions of additional copies to the libraries, all without any promises to prevent
loss of their property in the event of a data breach.
The District Court upheld Google’s Library Project in its entirety, only a
little more than two years after it had rejected a settlement that would have
permitted Google’s use of copyrighted works while providing rightsholders with
revenue and security. At that time, the District Court had been broadly critical of
Google’s actions. See The Authors Guild v. Google, Inc., 770 F. Supp. 2d 666,
669, 682-83 (S.D.N.Y. 2011) (observing that the settlement would reward Google
for “engaging in wholesale copying of copyrighted works without permission”).

3

The District Court concluded that fundamental changes in copyright law in the face
of technological innovation are best left to Congress. See id. at 677-78 (citing
Eldred v. Ashcroft, 537 U.S. 186, 212 (2003) (“it is generally for Congress, not the
courts, to decide how best to pursue the Copyright Clause’s objectives”)). Accord
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984).
Now the District Court has endorsed each and every aspect of Google’s
Library Project by applying an unprecedented, expansive and erroneous
interpretation of the fair use doctrine. The District Court essentially ignored the
inherently commercial nature of the Library Project and wrongly determined that
the entire program is “transformative.” In doing so, the District Court failed to
separately evaluate whether each of Google’s uses, including its reproduction,
archival storage and distribution of the books in full, passes the transformative use
test. The District Court further disregarded that, in order for Google’s search
function to operate, Google did not need to distribute the e-books to its Library
Partners, display “snippets” of search results to its users or store multiple copies of
the e-books on online servers. The District Court brushed aside the actual and
potential harm to the literary market inflicted by the Library Project. And the
District Court failed to heed one of the Supreme Court’s key mandates in Campbell
v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994), by failing to acknowledge that
its ruling will open the door for others to copy, display and distribute digital

4

versions of copyrighted works for their own commercial advantages and subjecting
those works to further security risks.
For the reasons set forth herein, Appellants request that this Court reverse
the District Court’s grant of summary judgment in favor of Google, grant
Appellants’ motion for partial summary judgment and hold Google liable for its
copyright infringement. The case should be remanded to the District Court for the
fashioning of an appropriate remedy. Authors wrote the books that fill the shelves
of our bookstores and libraries. Appellants seek fair compensation for Google’s
commercial use of their books and for Google’s distribution of their e-books to
libraries. Google also must be required to remove its unauthorized digital library
from servers connected to the Internet and otherwise to ensure that much of the
world’s literary heritage is not left susceptible to data breaches that would lead to
widespread piracy and dissemination.
Google must not be permitted to build its financial empire on the backs of
authors.
JURISDICTIONAL STATEMENT
The District Court had subject-matter jurisdiction over this action pursuant
to 28 U.S.C. § 1338(a) because it arises under the copyright laws of the United
States. (A177.) This Court has jurisdiction over this appeal pursuant to 28 U.S.C.

5

§ 1291. The District Court entered judgment on November 27, 2013 (SPA31-32),
and an Amended Judgment entered on December 10, 2013 (SPA33-34).
The Notice of Appeal was timely filed on December 23, 2013. (A1639.)
STATEMENT OF ISSUES PRESENTED AND STANDARD OF REVIEW
I.

Did the District Court err when it held that Google’s unauthorized

copying of millions of copyright-protected literary works as part of its Library
Project is fair use under the Copyright Act?
Standard of Review: De Novo
II.

Did the District Court err when it held that Google’s unauthorized

distribution of millions of copyright-protected works to its Library Partners is fair
use under the Copyright Act?
Standard of Review: De Novo
III.

Did the District Court err when it held that Google’s unauthorized

display of millions of copyright-protected literary works is fair use under the
Copyright Act?
Standard of Review: De Novo
STATEMENT OF THE CASE
This is an appeal from the grant of summary judgment in favor of Google by
the United States District Court for the Southern District of New York (Chin, J.)
and the denial of the motion by the Appellants for partial summary judgment on

6

the issue of liability. (See SPA1-30); Authors Guild, Inc. v. Google Inc., 954 F.
Supp. 2d 282, 292 (S.D.N.Y. 2013). In the District Court, Appellants The Authors
Guild, Inc., Betty Miles, Joseph Goulden and Jim Bouton (collectively, the
“Authors”) argued that Google’s copying, distribution and display of millions of
copyrighted books without permission of the copyright holders infringed their
rights under the Copyright Act, 17 U.S.C. § 101 et seq. The District Court held
that Google’s entire Library Project is protected fair use and that Google owes no
compensation to rightsholders for the commercial use of their books.
I.

Google’s Digital Books Program
A.

Google’s Licensed Partner Program

In October 2004, Google announced its original digital books program,
calling it Google Print. (See CA3; CA40-41.) Significantly, Google Print included
a program that displayed portions of books only with the permission of the
publishers of each book (the “Partner Program”). (See A931 ¶¶ 22-24.)2 The
Partner Program allowed publishers and other rightsholders to permit Google to
display their works in exchange for a split of ad revenue. Partners decided “how
much of the book is browsable” on Google, “anywhere from a few sample pages

2

As of early 2012, the Partner Program included approximately
books, by permission of approximately 45,000 rightsholders, with the number of
partners continuing to grow. (CA92.) By early 2012, Google had phased out
advertising adjacent to the display pages of books in the Partner Project.
(CA1603.)
7

to the whole book.” (A581.) In return, Google agreed to share with its partners
a portion of the revenue it earned from ads shown next to pages of books
searched in the Partner Program. (CA92.)
B.

Google’s Unlicensed Library Project

In December 2004, Google embarked on a new program to digitize millions
of books without the permission of rightsholders. Google entered into
agreements with several university libraries and the New York Public Library to
“digitally scan books from their collections so that users worldwide can search
them in Google.” (A556.) In consideration for access to a library’s print books,
Google distributed copies of the resulting e-books to the contributing library.
(A592; CA28.) Google referred to this endeavor as its “Library Project.”
(CA25-26; A583-85.) Since launching the Library Project, Google has entered
into agreements with additional libraries, developed and patented scanning
technology and copied over twenty million books. (A932 ¶¶ 27-29.)
1.

Mass Digitization of Copyrighted Books

Google engaged in “bulk scanning,” with libraries providing “carts of
books” for Google to scan. (CA21, 43.)

Some libraries (e.g., the New
York Public Library, Harvard, Columbia, and Princeton) allowed Google to scan

8

only public domain works, while others (e.g., the Universities of California,
Michigan and Wisconsin) allowed Google to scan copyright-protected works as
well. (See CA22; A593-684; CA116-308.)
In scanning upwards of four million books per year, Google did not
independently assess the copyright status, commercial availability or content of
any particular book. (CA63, 377.) Rather, Google copied every book its Library
Partners provided, unless (a) Google determined that it already had copied or was
scheduled to copy the book from another library, (b) the book was physically not
fit to be copied, or (c) Google had received a specific request from a copyright
owner not to scan the book. (CA316-17, 345, 377.)
Once a Library Partner’s books were selected, they were shipped to
Google’s scanning centers to be digitized and indexed, a process that yielded
numerous digital copies of each book.

9

The scanning process resulted in an index that contains the complete text of
all the books copied in the Library Project. The index is integrated into Google’s
all-purpose search index, so that regardless of whether a user submits a search via a
general “Web” query or a “Books” query, Google will search the Library Project
index and return results from Library Project books to the user. (CA48, 76.)
If a user clicks on a search result referring to a particular book, she will be
taken to an “About the Book” page for that book. Since 2005, Google has
displayed verbatim text from copyrighted books on these pages. (A699; CA38485.) Google generally divides each page image into eighths, which it calls
“snippets.” (A706; CA383-84.) Once a user retrieves a book through her initial
search, she can enter any other search terms she chooses, and the author’s
verbatim words will be displayed in three snippets for each search. Although
Google has stated that any given search by a user “only” displays three snippets of
each book (A699), a single user can view far more than three snippets from a

10

Library Project book by performing multiple searches using different terms,
including terms suggested by Google. (See A445-509; CA28.) Even minor
variations in search terms will yield different displays of text. (Compare A51115, with A517-21; see also CA28.)3 Google displays snippets from each book,
except that it withholds display of 10% of the pages in each book and of one
snippet per page. (A225 ¶ 10; CA383-84.) Thus, Google makes the vast majority
of the text of these books—in all, 78% of each work—available for display to its
users.4
Although snippets are shown in connection with user searches, they are not
necessary to the indexing or other non-display functions upon which Google has
sought to justify the Library Project. (See CA381-82; CA49.) Indeed, the Library
Partners created a search engine for the e-books they received from Google that
3

The Record includes examples of verbatim text displays for one book of each of
the three named Authors. (See A982-1073 (222 unique snippets and ~11,611
words of text from Bouton’s Ball Four); A1074-1171 (220 unique snippets and
~9,676 words of text from Goulden’s The Super-Lawyers); A1172-1203 (61
unique snippets and ~1,760 words of text from Miles’s The Trouble with
Thirteen).)
4

Google has disabled the display function for certain limited categories of works it
has chosen to exclude,

In limiting the display of these books but not
others, Google recognizes that in some instances showing even a “snippet” of a
work may operate as a substitute for the original.

11

does not display any copyrighted book content. See HathiTrust Digital Library,
http://www.hathitrust.org.
To date, Google has scanned over twenty million books through its
Library Project, and it has made over four million in-copyright English language
books available for snippet display. (A588; see CA25-26.) Google did not seek
or obtain permission from the Authors or any other rightsholders before it made
these uses, and it has not compensated them. (A701-03.)
2.

Agreements with Library Partners

Pursuant to its agreements with its Library Partners, Google distributes
digital copies of e-books to the providing library as payment for permission to
scan. (CA28; CA504-05 ¶ 64.)5 The providing library “owns” the digital copies
distributed by Google. (CA505-06 ¶¶ 68-70.) As of March 26, 2012, Google had
distributed 2.7 million of scanned books to the Library Partners. (A430.)
Google has little control over what the Library Partners do with their ebooks; indeed, its library agreements presume the Library Partners’ further use of
the digitized works. (CA506 ¶ 71.)6 For example, Google’s agreement with the

5

Google distributes copies to libraries through an online portal that allows Library
Partners to request and download e-book versions of the books they provided to
Google. (A396-7.)
6

The agreements make no effort to comply with Section 108 of the Copyright Act,
which expressly governs permissible copying by libraries. Among other things,
12

University of Michigan specifically provides that Michigan’s copies may be
used for “inclusion in Michigan’s search services” (A594); the university has
since deposited those files—including files of works that are in-copyright—in
its HathiTrust database index, which is accessible to anyone in the United States
with an Internet connection (CA426, 429). Similarly,

Section 108 requires that any copying or distribution be “made without any
purpose of direct or indirect commercial advantage” (17 U.S.C. § 108(a)), allows
copying for preservation purposes only where a work is unpublished (17 U.S.C. §
108 (b)), and allows copying for replacement of “damaged, deteriorating, lost or
stolen” books only if new copies are not commercially available at a fair price (17
U.S.C. § 108(c)).

13

3.

Google’s Overriding Commercial Purposes

It is undisputed that the motivation behind Google’s systematic digitization
of millions of copyrighted works,

Google operates the largest Internet search engine in the world, which it
monetizes by displaying advertisements in response to search queries (CA46).
Google reported over $36.5 billion in advertising revenues for 2011, up from $28
billion in 2010. (A563, 566-67.) The Library Project gives Google access to a
vast universe of searchable data: the contents of millions of in-copyright books.
Google’s competitors, of course, do not have access to this material; on the
contrary, they limited their own digitization projects to public domain or
authorized works (see A56; A67). Thus, as Yahoo! explained in its objection to
the proposed settlement in this case, the Library Project gives Google a distinct
edge over competitors on its flagship product:
With sole access to [its unauthorized scans], Google can better refine
its search algorithm and gain a tremendous advantage against other
search providers. . . . As a consequence of Google’s singular position
in the emerging book search marketplace . . . Google will gain a
tremendous advantage in its core business area: Google Search.
(A81; see also A79; A941 ¶ 75-77.)
Indeed, Google launched the Library Project in direct response to Amazon’s
announcement that it was introducing a licensed full-text book search portal.

14

(A1298-99.)

4.

Impact on the Authors’ Books

Google’s massive, unauthorized digitization campaign has acutely harmed
the interests of the Authors and other rightsholders whose works have been copied.
Most directly, Google has lured potential book buyers away from online
bookstores and provided no compensation to rightsholders for Google’s revenuegenerating uses of their books (A702-03).
The Library Project also has impeded the emerging market for digital uses of
books by search engines, libraries and others. Collective management
organizations (“CMOs”) typically pay rightsholders based on actual use of their
works (A786-87), which can result in substantial revenue. For example, the
Copyright Clearance Center (“CCC”), which licenses printed material of the
same nature as that scanned by Google (A785), paid rightsholders more than
$171 in 2011 (A791). Although collective licensing markets often have emerged

15

in response to new technologies (A785-786, 795), Google’s indiscriminate and
unauthorized uses “thwart the development of collective management systems
for the digital use of book and book excerpts that authors and publishers would
otherwise likely develop.” (A796.) Significantly, there is strong evidence that a
collective license approach would develop here, as evidenced both by the
proposed settlement to this action (see generally A83-126) and by agreements
reached abroad by Google, among others, regarding book digitization. 7
Moreover, Google has subjected copyright-protected books to unacceptable
security risk. Google acknowledges that its “security measures may be breached
due to the actions of outside parties, employee error, malfeasance, or otherwise,
and, as a result, an unauthorized party may obtain access to our data or our users’
or customers’ data.” (A562.) Worse, Google is not contractually obligated to, and
does not in practice, monitor or control the security of the e-books it distributes to
Library Partners. (See CA508 ¶ 108.) The risk of a potential security breach is
exacerbated by this distribution, as the Library Partners’ copies are stored on
campus servers connected to the Internet—a prime target for hackers and activists.

7

See, e.g., Pls’ Reply Br. Summ. J. at 16, ECF No. 1085 (citing Eric Pfanner,
Google Has Deal in France for Book-Scanning Project, N.Y. Times, June 12,
2012, at B5); see also Alexis C. Madrigal, Norway Decided to Digitize All the
Norwegian Books, The Atlantic, December 3, 2013,
http://www.theatlantic.com/technology/archive/2013/12/norway-decided-todigitize-all-the-norwegian-books/282008/.

16

(A802-03; see also Richard Pérez-Peña, Campuses Face Rising Threat from
Hackers, N.Y. Times, July 17, 2013, at A1.; Wallace D. Loh, UMD Data Breach:
Update #6 (Feb. 25, 2014), http://uhr.umd.edu/2014/02/umd-data-breach-update-602252014.) As the number of unlawful copies of an in-copyright book
increases, so does the risk of further infringement and piracy of the work.
(A801-02, 805-06.) In this way, even one security breach could devastate the
literary market. (A806.)
II.

Procedural History
A.

The Lawsuit

This action was commenced on September 20, 2005. The original plaintiffs
were The Authors Guild, which sued as an associational plaintiff on behalf of its
members, as well as a number of individual authors, suing on their own behalf and
on behalf of those similarly situated. Plaintiffs filed amended complaints on July
26, 2006 (ECF No. 36), October 31, 2008 (ECF No. 59), November 16, 2009 (ECF
No. 782), and October 14, 2011 (ECF No. 985). The now-operative Fourth
Amended Class Action Complaint alleges that Google’s Library Project constitutes
copyright infringement on a massive scale. (A176.)
The Authors Guild, the nation’s largest membership organization of
published authors, advocates for and supports the copyright and contractual
interests of published writers. (A547.) It seeks equitable relief for authors affected

17

by Google’s copyright infringement. The representative plaintiffs are the authors
of published, in-copyright books that have been copied, distributed, and displayed
by Google without the Authors’ permission. Jim Bouton holds the copyright in
Ball Four (A435-37); Betty Miles holds the copyright in The Trouble With
Thirteen (A438-40); and Joseph Goulden holds the copyright in The Superlawyers
(A441-43). The representative plaintiffs seek damages in addition to injunctive
and declaratory relief.
B.

Settlement History

Initial settlement discussions began in the fall of 2006. After more than two
years of negotiations, the parties filed a proposed settlement agreement on October
28, 2008. The agreement was preliminarily approved by Judge John E. Sprizzo on
November 17, 2008. (Order, ECF No. 64.) Notice of the proposed settlement
triggered a number of objections, in response to which the parties entered into
further negotiations. On November 13, 2009, the parties executed and filed a
motion for approval of a proposed Amended Settlement Agreement (“ASA”). (See
ECF No. 768.) Judge Chin entered an order preliminarily approving the ASA on
November 19, 2009. (Order, ECF No. 772.)
Under the ASA, Google was to pay to plaintiff class members 63% of the
revenues earned from specific, circumscribed uses, in the United States, of certain
copyrighted works. (A85-87, 112-113.) Google also was to pay $34.5 million to

18

fund a Book Rights Registry, managed jointly by authors and publishers, that
would locate rightsholders, maintain a database of their contact information,
collect and pay revenues to the rightsholders for Google’s use of works and
otherwise protect and represent rightsholders’ interests. (A85-87, 116-26.) Google
further agreed to pay a minimum of $45 million to rightsholders in consideration
for the release of Plaintiffs’ claims for past copyright infringement. (A85.)
Significantly, under the ASA, rightsholders were to retain control over the
scanning, storage, display and sale of their works. In addition, because Google’s
rights were to be non-exclusive, rightsholders could license the same works to
others, including Google’s competitors. (A87-111.)
Notice of the ASA triggered another round of objections. The objections
varied widely, raising copyright, antitrust, privacy and international law concerns.
Judge Chin conducted a fairness hearing on February 18, 2010. On March 22,
2011, he rejected the ASA, holding that it “contemplates an arrangement that
exceeds what the Court may permit under Rule 23” and thus failed to meet the
“fair, reasonable, and adequate” standard. Authors Guild, 770 F. Supp. 2d at 667.
Judge Chin emphasized that the issues raised by Google’s mass digitization were
“a matter more suited for Congress than this Court.” Id. at 677.

19

C.

Class Certification

On October 14, 2011, in the wake of the rejection of the ASA, Plaintiffs
filed the Fourth Amended Class Action Complaint. (A175-90.) On December 12,
2011, the representative plaintiffs moved for class certification, and on December
22, 2011, Google moved to dismiss the Authors Guild’s claims under Rule
12(b)(1) for lack of associational standing. On May 31, 2012, Judge Chin granted
the representative plaintiffs’ motion for class certification and denied Google’s
motion to dismiss. Authors Guild v. Google, Inc., 282 F.R.D. 384 (S.D.N.Y.
2012).
On July 27, 2012, Plaintiffs moved for partial summary judgment on their
copyright infringement claims, and Google cross-moved for summary judgment
based on its fair use defense. (ECF Nos. 1031, 1044.) On September 17, 2012,
before summary judgment briefing was completed, this Court stayed proceedings
in the District Court pending Google’s appeal of the class certification order. (ECF
No. 1063.) On July 1, 2013, this Court, in a per curiam opinion, vacated the
certification order, concluding that “resolution of Google’s fair use defense in the
first instance will necessarily inform and perhaps moot our analysis of many class
certification issues,” and remanded the case “for consideration of the fair use
issues.” Authors Guild, Inc. v. Google Inc., 721 F.3d 132, 134-35 (2d Cir. 2013).
The parties then completed briefing on their summary judgment motions.

20

D.

The Decision Below

In an opinion dated November 14, 2013, the District Court denied Plaintiffs’
summary judgment motion and granted Google’s motion, holding that “Google’s
use of the copyrighted works is ‘fair use’ under the copyright laws.” (SPA16.) For
the reasons set forth below, the District Court’s decision must be reversed,
summary judgment granted to the Authors and the case remanded to the District
Court so that it can fashion a remedy that provides compensation to the Authors
and security for their works.
SUMMARY OF ARGUMENT
The District Court erred in determining that Google’s wholesale
reproduction, storage, dissemination and display of millions of in-copyright works
is fair under 17 U.S.C. Section 107. As shown herein, application of the four
factors to each of Google’s uses weighs against a finding of fair use.
As to first factor—the purpose and character of the use—the District Court
did not accord any meaningful weight to Google’s overriding commercial purpose,
failed to consider each of Google’s uses separately and erred in finding that such
uses are “highly transformative.” Next, in light of the vast number of highly
creative and original works copied, distributed and displayed by Google,
application of the second factor—the nature of the copyrighted work—also weighs
against fair use. Google’s indiscriminate copying, distribution and near-complete

21

display of copyrighted works plainly is far in excess of what it needed even to
achieve the search and text mining functionality of the Library Project that the
District Court found to be transformative. Accordingly, the third factor weighs
heavily in the Authors’ favor. Finally, as to the fourth factor, Google’s uses inflict
significant harm on the market and value of the Authors’ works. Not only did
Google fail to pay the Authors, but the Library Project undermines existing
licensing markets and impedes the development of emerging ones. It also subjects
the Authors’ works to new risks of digital piracy and theft.
Because all four statutory factors weigh against fair use, Google’s
reproduction, distribution and display of e-books infringed the Authors’
copyrights. Further, any change in the established balance between rightsholders
and users should be made by Congress, not a private commercial entity like
Google.
ARGUMENT
I.
THE DISTRICT COURT ERRED IN DETERMINING THAT THE
LIBRARY PROJECT MAKES FAIR USE OF
THE AUTHORS’ COPYRIGHT-PROTECTED BOOKS
The District Court recognized that “Google has digitally reproduced millions
of copyrighted books, including the individual plaintiffs’ books,” that “Google has
made digital copies available for its Library Project partners to download,” and that
“Google has displayed snippets from the books to the public”—all “without license
22

or permission from the copyright owners.” (SPA15-16.) Thus, it is undisputed
that Google violated the Authors’ exclusive rights of reproduction, distribution and
display under Sections 106(1), (3) and (5) of the Copyright Act. The sole question
on this appeal is whether the District Court erred in ruling that these acts are noninfringing because each and every part of Google’s Library Project constitutes a
fair use of the Authors’ books.8
In the pages below, the Authors will show that the uses challenged here,
including reproducing and storing the entirety of millions of copyrighted books,
distributing those e-books to libraries as payment for access to their collections and
displaying 78% of the e-books to the public—do not, and as a matter of sound
copyright policy, should not constitute fair uses under the Copyright Act. While
Google may have figured out a way to transform the creative output of authors into
additional advertising dollars for Google’s shareholders, Google’s unauthorized
commercial uses are not transformative within the meaning of copyright law.
Far from encouraging creative expression, Google has profited handsomely
from the labors of the Authors while leaving them nothing for their efforts.
Properly applied, all four factors militate strongly against a finding of fair use.

8

Fair use is an affirmative defense as to which the alleged infringer has the burden
of proof. Campbell, 510 U.S. at 590.

23

A.

Purpose and Character of the Use
The first statutory factor, “the purpose and character of the use,” 17 U.S.C. §

107(1), is “[t]he heart of the fair use inquiry.” On Davis v. The Gap, Inc., 246 F.3d
152, 174 (2d Cir. 2001). In considering this factor, a court examines “whether the
new work merely ‘supersede[s] the objects’ of the original creation . . . or instead
adds something new, with a further purpose or different character, altering the first
with new expression, meaning, or message; it asks, in other words, whether and to
what extent the new work is ‘transformative.’” Campbell, 510 U.S. at 579
(citations omitted). By express statutory instruction, the Court must also consider
“whether the use is of a commercial nature” or whether it is “for nonprofit
educational purposes.” 17 U.S.C. §107.
1.

Google’s Uses Are Highly Commercial

The District Court failed to give any meaningful weight to the undisputed
fact that the nature of Google’s Library Project is highly commercial. At most, the
court gave lip service to the statutory language, merely mentioning “[t]he fact that
a use is commercial ‘tends to weigh against a finding of fair use,’” (SPA21
(quoting Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 562
(1985))), and then essentially disregarding it.
The District Court, however, trivialized Google’s overriding commercial
purpose. While acknowledging that Google “benefit[s] commercially in the sense

24

that users are drawn to the Google websites by the ability to search Google books,”
it stated that Google “does not sell the scans it has made of books[,] . . . does not
sell the snippets that it displays[,] and . . . does not run ads on the About the Book
pages that contains snippets.” (SPA21-22.) It found support for its position in
cases that could hardly be more different than the case before this Court—cases
involving creative secondary uses of a single or small number of copyrighted
works. In its ruling, the District Court completely ignored evidence demonstrating
that (a) Google’s embarked on its Library Project for the sole purpose of gaining a
competitive advantage and increasing revenues, and (b) the scope of Google’s
Library Project dwarfs that of any prior fair use case.
Google’s brazen mass digitization project was designed and has helped
Google to dominate the search engine market and reap vast corporate profits.

25

As Yahoo! explained in its objection to the ASA, “the more data available
. . . the better the search engine” (A81); as a result, the Library Project has given
Google “a tremendous advantage in its core business area: Google Search.” (Id.;
see also A1298-99 (Google began digitizing copyright-protected books in direct
response to Amazon’s announcement that it was launching a licensed full-text
book search portal).)
The District Court makes much of the fact that Google “does not run ads on
the About the Book pages that contain snippets.” (SPA21-22.) This reflects a
fundamental misunderstanding of Google’s business model. The main source of
Google’s advertising profits does not come from the “About the Book” pages, but
rather the ad-laden search results pages that link to them. When Google’s millions
of U.S. users come to the site every month to locate relevant information, the
results pages display content from, and links to, all of the content in Google’s
massive database, including content ingested from the Library Project. In many
instances, this content runs alongside paid advertisements tied to the search results.
For example, a search for “Steve Hovley” yielded not only an excerpt from
Plaintiff-Appellant Jim Bouton’s Ball Four, but also paid advertisements for three
public records search services and eBay. (A242.) In this way, Google derives
direct commercial benefit from the Authors’ words, phrases, and creative
expression.

26

Google also uses the copyrighted material for myriad commercial purposes
beyond advertising, all designed to enhance the functionality of Google’s services
and, as a result, increase its dominance in the information technology market. As
one commentator explained in connection with the proposed settlement:
It seems likely that the ‘nondisplay uses’ of Google’s scanned corpus
of text will end up being far more important than anything else in the
agreement. Imagine the kinds of things that data mining all the
world’s books might let Google’s engineers build: automated
translation, optical character recognition, voice recognition
algorithms. And those are just the things we can think of today.
Under the agreement, Google has unrestricted, royalty-free access to
this corpus.
Fred von Lohmann, Google Book Search Settlement: A Reader’s Guide, Electronic
Frontier Foundation Deep Links Blog (Oct. 31, 2008),
http://www.eff.org/deeplinks/2008/10/google-books-settlement-readers-guide.
Thus, while its competitors went through the “painstaking” and “costly”
process of obtaining permission before scanning copyrighted books, “‘Google by
comparison took a shortcut by copying anything and everything regardless of
copyright status.’” Authors Guild, 770 F. Supp. 2d at 679 (quoting Hr’g Tr. 43
(Thomas Rubin, counsel for Microsoft)). “As one objector put it: ‘Google pursued
its copyright project in calculated disregard of authors’ rights. Its business plan
was: So, sue me.’” Id. (quoting Obj. of Robert M. Kunstadt to Proposed
Settlement at 3, ECF No. 74).

27

Because this case involves the wholesale digitization and use of millions of
works for commercial purposes, it is vastly different from the many fair use cases
that challenged an artist’s or author’s unauthorized use of one or a small handful of
copyrighted works for the purpose of creating a new work of creative expression.
See, e.g., Campbell, 510 U.S. at 571-72 (rap group’s use of iconic guitar riff and
lyrical refrain to create a parody of the original); Cariou v. Prince, 714 F.3d 694,
699-702 (2d Cir. 2013) (appropriation artist’s use of photographs to create new
artwork); Blanch v. Koons, 467 F.3d 244, 246 (2d Cir. 2006) (visual artist’s use of
single photograph in creating a new collage painting); Bill Graham Archives v.
Dorling Kindersley Ltd., 448 F.3d 605, 607 & n.1 (2d Cir. 2006) (use of seven
Grateful Dead concert posters in book about the band).
In Am. Geophysical Union v. Texaco Inc., 802 F. Supp. 1 (S.D.N.Y. 1992),
aff’d, 60 F.3d 913, 923 (2d Cir. 1995), then-District Judge Pierre Leval observed
an analytic distinction between “productive” copying cases (i.e., the “classic” fair
use cases like those described above that involve the limited use of a pre-existing
work to create something truly new) and “nonproductive” copying cases (i.e., less
common cases that involve mechanical copying on a larger scale). Judge Leval
noted that, in the wake of the Supreme Court’s ruling in Sony Corp. of America v.
Universal City Studios, Inc., 464 U.S. 417 (1984), courts had held that certain

28

nonproductive copying could be fair use, id. at 12-13, but only where such uses
were noncommercial:
What has emerged . . . seems to be a two-track pattern of
interpretation of the first factor: Secondary users have succeeded in
winning the first factor by reason of either (1) transformative (or
productive) nonsuperseding use of the original, or (2) noncommercial
use, generally for a socially beneficial or widely accepted purpose.
Id. at 12. For classic “productive” fair use cases, the transformative use test has
dominated the first-factor inquiry. See id. By contrast, where the challenged use
adds nothing new to the original by “altering the first with new expression,
meaning, or message,” Campbell, 510 U.S. at 579, the commerciality of the use is
paramount. See Texaco, 802 F. Supp at 13.
Here, the District Court erred by employing a fair use analysis designed and
best suited for cases involving use of a single or small number of copyrighted
works. Thus, the District Court’s reliance on cases like Blanch and Bill Graham
Archives, in which the challenged use was deemed fair despite having a
commercial aspect (i.e., selling artwork or books), is misplaced. (SPA20-21.) In
those cases, an artist or author took a small number of pre-existing works for the
purpose of creating a new work of expression. By contrast, Google used millions
of pre-existing works to build its search engine and drive advertising revenue.
Google’s commercial enterprise stands in stark contrast to the lone visual artist
creating a collage in his studio out of images scanned from glossy magazine

29

photographs, see Blanch, 467 F.3d at 247, or a Grateful Dead enthusiast collecting
concert posters to include in a biographical anthology about the band, see Bill
Graham, 448 F.3d at 607.
When considering the commercial aspect of Google’s enterprise, a far more
analogous case is Princeton Univ. Press v. Michigan Document Servs., Inc., in
which the Sixth Circuit held that the duplication of copyrighted materials by a copy
shop was “for sale by a for-profit corporation that has decided to maximize its
profits—and give itself a competitive edge over other copy shops—by declining to
pay the royalties requested by the holders of the copyrights.” 99 F.3d 1381, 1386
(6th Cir. 1996). See also United States v. ASCAP, 599 F. Supp. 2d 415, 429
(S.D.N.Y. 2009) (“Because the [free ringtone] previews constitute a form of
advertisement for applicant’s ringtones and ringback tones . . . , applicant’s use of
ASCAP music to increase revenues from sales of ringtones and ringback tones is
commercial.”); UMG Recordings, Inc. v. MP3.com, Inc., 92 F. Supp. 2d 349, 351
(S.D.N.Y. 2000) (commercial use where defendant offered free subscriptions to its
service and did not sell the songs it had illegally copied in order “to attract a
sufficiently large subscription base to draw advertising and otherwise make a
profit”).
Contrary to the District Court’s holdings, the commerciality of Google’s
uses weighs very strongly against a finding of fair use.

30

2.

Google’s Uses Are Not Transformative

The reproduction, distribution and display of millions of in-copyright works
do not constitute transformative uses.9 In Campbell, the Supreme Court stated that
a use is transformative when it “adds something new, with a further purpose or
different character, altering the first with new expression, meaning, or message.”
510 U.S. at 579 (1994) (emphasis added). The requirement that the use have “a
further purpose or different character” does not stand alone, but instead modifies
the ultimate requirement that the secondary use “adds something new.” Id. As a
result, merely articulating a new “purpose” for a use of a copyrighted work,
without changing or adding anything new, is not enough to render the work
transformative. See id.; Cariou, 714 F.3d at 706 (while a work need not “comment
on the original or its author in order to be considered transformative,” it still must
“alter[] the original with new expression, meaning or message”). Indeed, if a

9

These uses must be analyzed separately. Section 107 of Copyright Act requires
an examination of “whether the use made of a work in any particular case is a fair
use.” 17 U.S.C. § 107 (emphasis added). It does not ask whether all of an
infringer’s various uses, taken in the aggregate, are fair. Cf. Cariou, 714 F.3d at
711-12 (holding “all except five” of alleged infringer’s artworks to be fair use and
remanding remaining five for further analysis); Associated Press v. Meltwater U.S.
Holdings, Inc., 931 F. Supp. 2d 537, 557 (S.D.N.Y. Mar. 21, 2013) (“The fact that
[defendant] also offers a number of analysis tools does not render its copying and
redistribution of article excerpts transformative.”); Perfect 10, Inc. v. Amazon.com,
Inc., 508 F.3d 1146, 1169-73 (9th Cir. 2007) (upholding as fair use one of
Google’s uses (thumbnail displays of images), but determining that Google could
be liable for another use (in-line linking to full-sized infringing images)).

31

“further purpose” alone were sufficient, a secondary user could always claim
transformativeness merely by articulating some different purpose when infringing
on a copyright. “Such a strategy empties the term of meaning—for the
‘transformative’ moniker to guide, rather than follow, the fair use analysis, it must
amount to more than a conclusory label.” 4 Melville B. Nimmer & David
Nimmer, Nimmer On Copyright § 13.05[A][1][b] (2011).
In its analysis, the District Court seized on certain features of the Library
Project, labeled those uses “transformative,” and then applied that label to the
entirety of the Library Project. In doing so, the Court transformed
“transformative” into exactly the kind of conclusory label Professor Nimmer
warned against.
(a)

Reproducing and Storing Exact Digital Copies Are Not
Transformative Uses

Google has scanned over four million in-copyright print books into e-books
and has permanently stored multiple copies of those e-books on its servers. This
use—mechanical conversion—is not transformative. Digitization, like
photocopying, “merely transforms the material object embodying the intangible
article that is the copyrighted original work.” Texaco, 60 F.3d at 923 (emphasis
added); see Princeton Univ. Press, 99 F.3d at 1389 (“mechanical ‘transformation’”
of photocopying “bears little resemblance to the creative metamorphosis
accomplished by the parodists in the Campbell case”). Converting print books into
32

e-books adds no “new information, new aesthetics, [or] new insights and
understandings,” to the copyrighted books. Pierre N. Leval, Toward A Fair Use
Standard, 103 Harv. L. Rev. 1105, 1111 (1990). See Infinity Broad. Corp. v.
Kirkwood, 150 F.3d 104, 108 (2d Cir. 1998) (retransmission of radio broadcast,
which merely repackages the original, is not transformative because it adds
“neither new expression, new meaning nor new message”) (quotation omitted).
While mass digitization operations “may be innovative, they are not
transformative.” UMG Recordings, Inc. v. MP3.Com, Inc., 92 F. Supp. 2d at 351
(claim that the conversion of CDs into computer files is transformative “is simply
another way of saying that the unauthorized copies are being retransmitted in
another medium—an insufficient basis for any legitimate claim of
transformation”).
The District Court sidestepped Google’s reproduction and creation of
millions of e-books, instead improperly focusing its analysis of transformativeness
on the Library Project’s independent search index and text mining functions. In
determining that the Library Project “transforms expressive text into a
comprehensive word index” and “has transformed book text into data for purposes
of substantive research,” it concluded that “Google’s use of the copyrighted works
is highly transformative.” (SPA19-20.) However, to the extent that either of those
purposes fits within the rubric of fair use (and it is the Authors’ contention that

33

they do not), Google should not be permitted to make uses unnecessary to those
purposes. See Campbell, 510 U.S. at 589 (remanding to determine whether
defendant’s repetition of the copyrighted song’s bass riff was excessive copying in
light of the song’s parodic purpose). Because Google’s permanent storage of
multiple digital copies of every digitized book on its servers is entirely unnecessary
for purposes of the Library Project’s search index and text mining functions (see
CA70, 352-53, 381-82), those purposes cannot render Google’s reproduction
transformative.
The Ninth Circuit cases cited by the District Court, Perfect 10, Inc. v.
Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), and Kelly v. Arriba Soft Corp.,
336 F.3d 811 (9th Cir. 2003), which address the legality of copying web pages for
the purpose of creating a search index, are easily distinguishable. Unlike Google’s
perpetual storage of high resolution image files and text files of every book it
scans, the images copied by the search engines in Kelly and Perfect 10 were not
permanently stored. See Kelly, 336 F.3d at 815 (after copying full size images onto
its server for the purpose of creating “thumbnails,” the search engine deletes the
original copy from its server) (emphasis added); Perfect 10, Inc., 508 F.3d at 115657 (noting that “Google does not store the images” and that “Google’s cache
contains the text of the webpage as it appeared at the time Google indexed the
page, but does not store images from the webpage”) (emphasis added). Here,

34

Google not only copies books for the purpose of ingesting the content into its
search index, but it also permanently stores complete copies of the books for future
exploitation and distribution to the libraries. Even if the Ninth Circuit considered
the mechanical indexing of the words in a book to be “transformative,” it does not
follow that Google’s reproduction, storage and distribution of unaltered copies of
the books also is transformative. See Texaco, 60 F.3d at 924 (“In this case, the
predominant archival purpose of the copying tips the first factor against the copier,
despite the benefit of a more usable format.”).
(b)

Disseminating Millions of Copyrighted Books to Google’s
Library Partners is a Not Transformative Use

Google has distributed a vast number of copyright-protected e-books to its
Library Partners. As of March 2012, the Library Partners had received over 2.7
million e-books. (A430.) Google is obligated to provide these e-books as in-kind
payment for the Library Partners’ allowing Google to digitize and commercially
exploit their print collections. (CA28; CA504-05 ¶ 64.) Like Google’s other
challenged uses, this distribution-as-payment does not “alter the original[s] with
‘new expression, meaning or message’” and thus is plainly non-transformative.
Cariou, 714 F. at 706.
To the extent the District Court addressed this issue in isolation, it did so
only with reference to the purposes of the Library Partners to which Google has
distributed its digital copies. It held that “Google’s actions constitute fair use [with
35

regard to distribution] as well,” relying entirely on the determination that “the
libraries . . . use these digital copies in transformative ways.” (SPA26-27.) But the
purposes of Google’s end users, as opposed to those of Google, are irrelevant to a
fair use analysis. See Infinity, 150 F.3d at 108 (“[I]t is [defendant’s] own
retransmission of the broadcasts, not the acts of his end-users, that is at issue
here.”).
Like the radio re-transmitter in Infinity, who sold “access to unaltered radio
broadcasts,” id., Google has sold to its Library Partners access to unaltered
copyrighted books. Moreover, pursuant to their agreements with Google, the
Library Partners are not restricted to the uses that Judge Baer found transformative
in Authors Guild, Inc. v. HathiTrust, 902 F. Supp. 2d 445 (S.D.N.Y. 2012), and on
which Judge Chin relied in his analysis. Indeed, the agreement between Stanford
and Google contemplates possible commercial uses of unauthorized e-books.
(CA133-34.) Accordingly, there is a “total absence of transformativeness in
[defendant’s] acts.” Infinity, 150 F.3d at 109.10

10

Even if the Court determines that the Library Partners’ uses are relevant when
considering the fairness of Google’s uses, the Authors disagree that the libraries’
conduct, which is in direct contravention of the restrictions in Section 108 of the
Copyright Act, is non-infringing. The Authors Guild and other authors and rights
organizations have appealed Judge Baer’s dismissal of their copyright claims
against certain of Google’s Library Partners. That appeal now is sub judice before
this Court. See Authors Guild, Inc. v. HathiTrust, No. 12-4547.

36

(c)

Displaying Large Portions of Millions of Copyrighted Books
is Not Transformative

Google’s display of 78% of the verbatim text of millions of in-copyright
books is non-transformative because it does not “alter the original[s] with ‘new
expression, meaning or message.’” Cariou, 714 F. 3d at 706 (quoting Campbell at
589). Indeed, this Court has declined to find the use of verbatim excerpts
transformative even where the use was less extensive and more creative than
Google’s unauthorized display. See Castle Rock Entm’t v. Carol Publ’g Grp., 150
F.3d 132, 141-143 (2d Cir. 1998) (use of forty-one verbatim quotations in trivia
book that “involve[d] some creative expression” held non-transformative); Twin
Peaks Prods., Inc. v. Publications Int’l, Ltd., 996 F.2d 1366, 1372-77 (2d. Cir.
1993) (chapter of trivia questions featuring one page of verbatim quotations from
television series held non-transformative).
The District Court erred in accepting Google’s argument that helping readers
“determine whether [a particular book] may be of interest” is a “different purpose
for the book.” (SPA20.) While the unauthorized display of snippets may
incidentally inform readers whether a particular book is of interest, allowing users
to view verbatim copyrighted material is a non-transformative and infringing
substitute. See, e.g., HarperCollins Publishers L.L.C. v. Gawker Media LLC, 721
F. Supp. 2d 303, 306 (S.D.N.Y. 2010) (blog that displayed excerpts from
forthcoming book had “not used the copyrighted material to help create something
37

new” but “merely copied the material in order to attract viewers”); ASCAP, 599 F.
Supp. 2d at 424 (“Applicant’s use of [ringtone] previews is not transformative. It
is undisputed that the music segments used in applicant's previews are exact copies
of ASCAP music.”); see also Texaco, 60 F.3d at 923 (“[A]n untransformed copy is
likely to be used simply for the same intrinsic purpose as the original”). According
to the District Court’s logic, any otherwise non-transformative use would be
deemed fair so long as it also attracts readers to the original.
Similarly, the District Court’s reliance on the Bill Graham case in this
Circuit and Perfect 10 and Kelly from the Ninth Circuit is misplaced. Bill Graham
involved a 480-page book about the Grateful Dead. Id. at 607. The book included
2,000 images presented in chronological order, combining those images with text
and graphic art to convey the history of the band. Id. At issue were seven of those
images, photographs of concert posters greatly reduced in size for the book format
and interspersed with narrative text and graphic art about those concerts. Id. This
Court held the use transformative because “enhancing the biographical information
in Illustrated Trip [was] a purpose separate and distinct from the original artistic
and promotional purpose for which the images were created.” Id. at 610. Here, by
contrast, Google has displayed copyrighted language verbatim without
incorporating it into any new work. Google did not, for example, publish an
original biography about Jim Bouton’s major league baseball career, using the

38

cover page and brief excerpts from Ball Four as part of that biography to illustrate
that career.
Perfect 10 and Kelly each held that a search engine’s display of thumbnail
images was transformative. In those cases, however, the copyright holders
voluntarily placed their content on publicly-accessible webpages which, by default,
are copied by “web crawlers” and ingested into their dispatchers’ search engines.
Indeed, webpages are there to be located and accessed. Here, the Authors did not
upload the content of their books onto the Web to be copied, indexed, stored and
disseminated by search engines.
The Third Circuit case, Video Pipeline, Inc. v. Buena Vista Home Entm’t,
Inc., 342 F.3d 191 (3d Cir. 2003), is far more analogous to this case. There, the
defendant compiled movie trailers and clips and copied them into a database
without authorization. Id. In rejecting the defendant’s reliance on Kelly to argue
that its database of video clips was fair use, the Third Circuit held:
Video Pipeline’s database does not, however, serve the same function
as did Arriba Soft’s search engine. As used with retailers’ websites,
VideoPipeline.net does not improve access to authorized previews
located on other websites. Rather, it indexes and displays
unauthorized copies of copyrighted works. VideoDetective.com does
permit viewers to link to legitimate retailers’ web sites, but a link to a
legitimate seller of authorized copies does not here, if it ever would,
make prima facie infringement a fair use.

39

Id. at 199; see also id. at 200 (Video Pipeline’s clip previews lack any significant
transformative quality and the commercial nature of the clip previews weighs more
strongly against their use).
Finally, even if certain of Google’s uses of copyrighted books are found to
be transformative, the inquiry must not end there. As the Campbell court made
clear, the extent to which a new work transforms the copyrighted work is simply a
factor that is balanced against the other fair use factors. 510 U.S. at 577-78. Here,
Google gained an enormous commercial and competitive advantage from its use of
others’ copyrighted works and, as described above and reiterated in the analysis of
factor four below, stopped the emergence of a licensed market (already begun by
Amazon) in its tracks. Google could have paid for the right to include copyrighted
works in its search engine, as it agreed to do in the ASA, or worked to establish a
collective licensing scheme of the sorts now being adopted in other countries.
Google should not be permitted to reap enormous financial rewards on the backs of
authors even if the Court finds that making books searchable is transformative.
B.

Nature of the Copyrighted Work
Just as the District Court essentially wrote out of the statute the explicit

requirement that the commercial nature of the use be considered as part of the first
factor, it essentially eliminated factor two. The second statutory factor “calls for
recognition that some works are closer to the core of intended copyright protection

40

than others, with the consequence that fair use is more difficult to establish when
the former works are copied.” Campbell, 510 U.S. at 586. While the District
Court found that the “vast majority” of the books in the Library Project are nonfiction and published (SPA22-23), the works digitized, distributed and displayed as
part of the Library Project include every conceivable type of book, including
fiction and non-fiction, obscure academic works and bestsellers. In making its
selections, Google gave no consideration to the nature of the books copied. (A93233 ¶¶ 32-34.) Under the unusual and unprecedented circumstances of this case,
where Google indiscriminately scanned millions of books in assembly-line fashion,
Google cannot meet its burden of showing that the nature of the copyrighted work
favors a finding of fair use.
The proposition that the second factor can be found to favor this massive
prima facie infringement is troubling. As this Court recognized in the context of a
single author’s copyrighted works, “there is no easy distinction between works that
are factual on the one hand, and ‘creative’ or expressive on the other, because
creation of a nonfiction work, even a compilation of pure fact, entails originality.”
New Era Publ’ns Int’l., ApS v. Carol Publ’g Grp., 904 F.2d 152, 158 (2d Cir.
1990) (internal citation and quotation marks omitted). Had Google scanned the
entirety of a single work of fiction, the second factor presumably would have
weighed in the favor of the rightsholder. The answer cannot be different where

41

Google scanned hundreds of thousands of works of fiction, along with a vast
number of non-fiction works.
C.

Amount and Substantiality of the Portion Used
The District Court’s disregard of the second fair use factor pales in

comparison with its treatment of the third factor, which considers “the amount and
substantiality of the portion used in relation to the copyrighted work as a whole,”
or whether “the quantity and value of the materials used[] are reasonable in relation
to the purpose of the copying.” Campbell, 510 U.S. at 586 (internal quotation
marks and citations omitted). This factor “recognizes that the more of a
copyrighted work that is taken, the less likely the use is to be fair, and that even a
less substantial taking may be unfair if it captures the essence of the copyrighted
work.” Infinity, 150 F.3d at 109. “Though not an absolute rule, ‘generally, it may
not constitute a fair use if the entire work is reproduced.’” Id. (quoting Nimmer,
§ 13.05[A][3] at 13-178).
Here, the third fair use factor takes on particular significance because
truckloads of books were digitized, copied and disseminated in their entirety. 78%
of each of these books was made available for public display. But while the
District Court correctly found that “Google scans the full text of books—the entire
books,” it concluded that “the third factor weighs slightly against a finding of fair
use.” (SPA23-24) (emphasis added). It held that “full-work reproduction is

42

critical to the functioning of Google Books” and that because “Google limits the
amount of text it displays in response to a search,” Google’s unbounded uses were
mitigated. (SPA23.) Neither of these considerations stand to reason: the former is
simply not true, and the latter ignores quantitative and the qualitative substantiality
of snippets.
1.

Google’s Uses Far Exceed That Necessary for the Search and Text
Mining Functions

The District Court’s reference to “the functioning of Google Books” is
vague; given that its analysis of Google’s purpose centers entirely on the search
and text mining functions, it may be assumed that it was referring to those
functions in finding that “full-work reproduction is critical” here. (SPA23.)
However, even accepting, arguendo, that it might be fair use to digitize books as
an intermediate step in the creation of a searchable index and text mining database,
the facts show that Google has gone much further than necessary to accomplish
these purposes. Cf. Campbell, 510 U.S. at 589 (remanding case to determine
whether the repetition of original song’s iconic bass riff was excessive).
Google made and has kept multiple copies of the image and text files, but it
has not demonstrated any search-related purpose served by the retention of such
files after they are ingested into the search index. It made digital copies of the
books available to its Library Partners (A396-97), not in furtherance of its search
project, but rather as in-kind payment for access to the libraries’ massive
43

collections of print books (CA28; CA504-05 ¶ 64). As part of the search function,
Google displays significant portions of the books, even though its Library Partners
concluded that no such display was required to fulfill the index and search
purposes. HathiTrust, 902 F. Supp. 2d at 448. Far from being “critical” to the
search index and text mining functions, the reproduction, distribution and display
of e-books are completely unnecessary to the functioning of the search engine.
In short, the District Court minimized Google’s taking of copyrighted works
by focusing on one aspect of Google’s program—search—in isolation, and
ignoring the broader picture. As explained above, separate uses must be analyzed
separately, and courts have refused to allow an activity that may qualify as fair use
to excuse infringing activities that do not. The District Court erred in allowing
Google’s search function to excuse all its other uses of the Authors’ copyrighted
materials.
2.

Snippets May Contain the “Heart” of the Book

The District Court’s search-centric analysis also glosses over the great extent
to which Google displays the Authors’ works, minimizing the significance of this
taking by relying on the bare fact that “Google limits the amount of text it displays
in response to a search.” (SPA23.) Putting aside that Google collectively displays
78% of each book, even single snippets are highly expressive and indeed may take
“what [is] essentially the heart of the book.” Harper & Row, 471 U.S. at 564-65

44

(internal quotation marks omitted); see id. at 565 (that quoted passages
“qualitatively embodied [the author’s] distinctive expression” weighs against
finding of fair use); see also HarperCollins Publishers L.L.C, 721 F. Supp. 2d at
305-06 (“images of portions of 12 pages” of memoir “amounts to a substantial
portion of the Book”).
By disabling snippet view for recipes, cookbooks, and other reference
works, Google has implicitly acknowledged the threat that public display of even
short excerpts may pose to the “heart” of a book. But why should Google be
allowed to make the decision as to which works fall into which category and which
categories present a risk to Authors’ rights? Google’s own examples of allegedly
lawful display from Ball Four, Jim Bouton’s memoir about Steve Hovley,
demonstrate the important difference between a mere index and the display of
expressive text from a copyrighted work:
Steve Hovley has been called up. Old Tennis Ball Head hasn’t had a
haircut since he left. Which means Joe Schultz had four comments to
him the very first day. “Where’s your barber?” “Don’t you need a
haircut?”
***
Moments later, perhaps feeling bad about his comment, or perhaps
wishing to stick the needle in further, Pattin approaches Hovley and
says, “I don’t care you long you wear your hair, Hovley. You can
wear it down to your ass as far as I’m concerned.”
(A246.)

45

If the Library Project were merely to enable a user to search for books that
reference “Steve Hovley,” or view the number of times that the name “Steve
Hovley” appears in a book, that would be one thing. But permitting users to read
excerpts that bring to bear all of the author’s originality, subjective insights,
creative spirit and unique voice—is quite another. See Heim v. Universal Pictures
Co., 154 F.2d 480, 488 (2d Cir. 1946) (a single phrase may be sufficiently
“idiosyncratic in its treatment” so as to receive protection). These, of course, are
but two examples. Google users are able to view other displays of expression from
millions of in-copyright books ad infinitum. Google’s appropriation and display of
expression has occurred on a massive, unprecedented scale that goes far beyond
what is meaningfully connected to search and indexing functions.
D.

The Effect of the Use Upon the Market for or Value of the Work
The fourth fair use factor, “the effect of the use upon the potential market for

or value of the copyrighted work,” 17 U.S.C. § 107(4),
requires courts to consider not only the extent of market harm caused
by the particular actions of the alleged infringed, but also “whether
unrestricted and wide-spread conduct of the sort engaged in by
defendant . . . would result in a substantially adverse impact on the
potential market” for the original.
Campbell, 410 U.S. at 590 (quoting Nimmer, § 13.05[A][4]). The copyright
holder need not show either “actual present harm” or “with certainty that future
harm will result,” but rather “a showing by a preponderance of the evidence that

46

some meaningful likelihood of future harm exists.” Sony, 464 U.S. at 451
(emphasis in original). Courts must consider not only any damage caused to the
original work, but also any harm to the market for derivative uses. Harper & Row,
471 U.S. at 568. As with the other fair use factors, Google bears the burden of
showing that its use does not harm the Authors’ interests. Infinity, 150 F.3d at 110.
Speculating that “Google Books enhances the sales of books to the benefit of
copyright holders,” the District Court concluded that “the fourth factor weighs
strongly in favor of a finding of fair use.” (SPA24.) This conclusion totally
disregards existing and emerging markets for the uses at issue in this case. The
District Court failed to consider the consequences its ruling will have on uses of
copyrighted works by actors other than Google, and it ignores the reality of today’s
digital world, in which the question is not if, but when, a data breach will occur.
1.

Google Destroyed Existing and Emerging Markets for Digital
Books

It is well established that the “impact on potential licensing opportunities for
traditional, reasonable or likely to be developed markets should be legally
cognizable when evaluating a secondary use’s ‘effect upon the potential market for
or value of the copyrighted work.’” Texaco, 60 F.3d at 930. The undisputed
evidence establishes that Google’s activities will harm the Authors by undermining
existing and emerging licensing opportunities.

47

In Texaco, this Court considered whether a corporate library’s systematic
photocopying of scientific journal articles for research and archival purposes was
fair use. 60 F.3d at 91. In analyzing whether it was appropriate for the district
court to have considered the increase in publishers’ revenue that would result if
Texaco’s unauthorized copying was not permitted as fair use, this Court observed
that “the publishers still have not established a conventional market for the direct
sale and distribution of individual articles[.]” Id. Nevertheless, the Court found
that “they have created, primarily through [the Copyright Clearance Center], a
workable market for institutional users to obtain licenses for the right to produce
their own copies of individual articles via photocopying.” Id. The Court reasoned
that:
it is not unsound to conclude that the right to seek payment for a
particular use tends to become legally cognizable under the fourth fair
use factor when the means for paying for such a use is made easier.
This notion is not troubling: it is sensible that a particular
unauthorized use should be considered “more fair” when there is no
ready market or means to pay for the use, while such an unauthorized
use should be considered “less fair” when there is a ready market or
means to pay for the use.
Id. at 930-931.
Here, there is a “ready market or means” for Google’s uses. A prime
example is Google’s own Partner Program, in which more than 45,000
rightsholders have given Google permission to display partial book content on the
Internet in exchange for compensation from ad revenues. (CA92.) Beginning in
48

2004, the Partner Program allowed publishers and other rightsholders to permit
Google to display their works in exchange for a split of ad revenue. Google could
have extended this licensing model to meet the broader aims of the Google Books
project. Indeed, Google has paid for the ability to use millions of copyrighted
works; it just hasn’t paid the Authors. Instead, it has opted to pay independent
contractors and scanning vendors hundreds of millions of dollars, and it has paid
libraries with the currency of infringing e-books.
Further, as described in detail in the expert report of Professor Daniel
Gervais, collective management organizations provide a market-based mechanism
by which libraries could compensate authors and rightsholders in exchange for a
license to mass digitize and make various uses of copyrighted books in their
collections. (See A785-87.) Just as in Texaco, the CCC and other collective
management organizations around the world presently license the same types of
materials that are scanned by Google, generating a significant stream of revenue
for rightsholders. (A785, 791.) For example, authors and their associational
representatives in Norway and Sweden have entered into or are finalizing license
agreements to permit their national libraries to digitize entire collections of books
in exchange for royalty payments.11 In 2012, Google announced that in France “it

11

See Alexis C. Madrigal, Norway Decided to Digitize All the Norwegian Books,
The Atlantic, December 3, 2013,
http://www.theatlantic.com/technology/archive/2013/12/norway-decided-to49

had an industrywide book-scanning agreement in place to cover works that are out
of print but still under copyright—a category that covers most of the world’s
books,” and that Google was “interested in exporting these deals elsewhere.” Eric
Pfanner, Google Has Deal in France For Book-Scanning Project, N.Y. Times,
June 12, 2012, at B5.
Although the District Court ultimately rejected the Amended Settlement
Agreement, the proposed resolution provides further compelling evidence that
there is a ready market or means to pay for the uses that Google is making.
Among other things, the ASA provided a mechanism to compensate the millions of
authors whose copyrighted works had been digitized by Google without
authorization. (A85-87, 116-26.) Under the ASA, the class of affected authors and
rightsholders, including the Authors, would have granted a license to Google to
digitize works and sometimes sell, display and make certain non-display uses of
the works it had scanned, in exchange for a portion of the revenues earned from
those uses. (A85-87, 112-13.) As part of this license, Google was expressly
authorized to index the contents of the digitized works for search purposes and to
allow researchers to conduct “non-consumptive research” using the digitized
corpus (ASA, ECF No. 770-1 at § 7.2(d).) The ASA shows how a collective

digitize-all-the-norwegian-books/282008/; Jerker Rydén, Sweden’s Digital
Library, March 3, 2011, http://slidesha.re/1luSlna.

50

management system might work to permit Google’s activities in this case while
providing compensation to copyright owners.
In addition to thwarting the development of emerging and potential markets,
Google’s various unauthorized uses also undermine existing licenses for the use of
the Authors’ books. Rightsholders routinely grant online distributors a license to
index their books and make them searchable as part of a commercial arrangement
intended to promote book sales. (See, e.g., A56; A67.) Amazon’s Search Inside
the Book program, described above, is a prime example. See supra at 2-3.
Google’s Library Project was designed to drive traffic away from Amazon, an
online retailer, and toward Google. (CA 440). As courts have held, a secondary
use that replaces a comparable service licensed by the copyright holder, even
without charge, may cause market harm. See Infinity, 150 F.3d at 111 (although
copyright holder provided a comparable service to its customers at no additional
cost, defendant’s use “replaces” the broadcaster “as the supplier of those
broadcasts to meet the demand of his customers”); ASCAP, 599 F. Supp. 2d at 422,
432 (performance rights organization established existence of market for ringtone
previews by showing that musicians generally granted a license to online
distributors to allow their users to search for and play ringtone clips for
promotional purposes).

51

2.

The District Court Ignored Evidence of the Risk and Immense
Consequences of a Data Breach

Google is playing with fire. Google’s Library Project converts print books
into digital files and then replicates those files, stores them on multiple servers
connected to the Internet, and grants its Library Partners access to an online portal
that permits them to simultaneously download millions of e-books onto their own
computers. These unauthorized activities subject the Authors’ books to the same
types of risks of digital piracy that battered the market for sound recordings. While
this issue was fully briefed below, the District Court failed to address it at all.
(Compare Mem. Supp. Pls.’ Mot. Summ. J. at 45-46, ECF No. 1050; Pls.’ Reply
Supp. Mot. Summ. J. at 16-17, ECF. No. 1085, with SPA24-28.)
The risks of data breaches are real and on the rise,12 leading many
information security professionals acknowledge that breaches are sure to occur. A
day hardly passes without reports of damaging cyberattacks on even the most
sophisticated technology companies, including Google. There are people who
specifically target digital libraries and similar databases, and they have succeeded.
In 2011, an activist was indicted for hacking into a proprietary database of journal
articles by sneaking into a network interface closet in the MIT library, hooking his

12

See, e.g., 2013 Data Breach Investigations Report (2013),
http://www.verizonenterprise.com/
DBIR/2013/.

52

laptop directly into the network and downloading over 4.8 million articles, with the
intent to disseminate the archive throughout the Internet. See Indictment, U.S. v.
Swartz, No. 11-CR-10260 (D. Mass. July 14, 2011).
As it must, Google acknowledges there is a risk that its “security measures
may be breached due to the actions of outside parties, employee error,
malfeasance, or otherwise, and, as a result, an unauthorized party may obtain
access to our data or our users’ or customers’ data.” (A562.) To make matters
worse, Google does not monitor or control the security of the e-books it provides to
its Library Partners (see CA508 ¶ 108), subjecting rightsholders to the potentially
inadequate security measures of libraries and exacerbating the risk of a security
breach (A802-03). In this way, Google’s unauthorized uses create new risks to the
literary market, further demonstrating that the Library Project is likely to cause
harm to the “potential market” for the Authors’ books.
Google, for its part, dismisses plaintiffs’ security concerns as “doomsday
hacker scenarios” (Google Opp’n Br. at 35, ECF No. 1072.) But there is nothing
remote or speculative about such online security risks. See, e.g., Richard PérezPeña, Campuses Face Rising Threat from Hackers, N.Y. Times, July 17, 2013, at
A1; Wallace D. Loh, UMD Data Breach: Update #6 (Feb. 25, 2014), http://
uhr.umd.edu/2014/02/umd-data-breach-update-6-02252014/ (“In the past couple of
years, some 20 large universities across the country have [] reported major data

53

breaches. There is an arms race between hackers playing offense and universities
playing defense.”).
Nor is there anything remote or speculative about the fact that piracy can
have devastating consequences for rightsholders. See, e.g., S. Rep. No. 105-90, at
61 (1998) (recognizing “risk that uncontrolled public access to [libraries’] copies . .
. in digital formats could substantially harm the interests of the copyright owner by
facilitating immediate, flawless and widespread reproduction and distribution of
additional copies . . . of the work”). Indeed, a 2010 study showed that publishers
lost almost $3 billion in sales as a result of e-book piracy. Gini Graham Scott, The
Battle Against Internet Book Piracy 12 (2013). Even if Google has thus far
avoided a data breach, there is no assurance it will succeed in the future. Security
could be compromised by increased pressure from hackers, foreign governments or
private actors determined to disrupt American interests, budget cuts, a disgruntled
employee or mistakes that lead to the release of copyright-protected materials.
The ASA reflected the importance of allowing rightsholders to decide
whether and how to make their works available on the Internet. It included
specific security procedures agreed upon by authors, a procedure for security
audits and remedies in the event of any potential breaches. (See ASA, ECF No.
770-1, Art. VIII.) In sharp contrast, Google’s unilateral mass digitization offers
none of these protections.

54

Finally, it is the Authors, not Google, who should be entitled to decide
whether “to reproduce” and “to authorize” others “to reproduce” their works into
digital format, 17 U.S.C. § 106, and thereby subject their works to risks of piracy.
See Salinger v. Random House, Inc., 811 F.2d 90, 99 (2d Cir. 1987), (author “has
the right to change his mind” regarding whether or not to publish work and is
“entitled to protect his opportunity to sell his [works]”). By undermining Authors’
rights to control whether, how and by whom their works are to be digitally
exploited, Google disempowers Authors and diminishes the value of their works.
3.

The District Court’s Decision Clears the Way for Other, Less
Responsible Parties to Engage in Their Own Mass Digitization
Programs

In analyzing the fourth factor, a court must consider the consequences to the
market if the infringer’s conduct were to become “unrestricted and widespread.”
Campbell, 510 U.S. at 590; see Texaco, 60 F.3d at 927 n.12. If this Court upholds
the District Court’s determination that the Library Project constitutes fair use, it
will open the door to others to engage in their own unauthorized digitization
programs, further exacerbating the harm to the Authors and putting more books
within the reach of digital thieves on countless more servers. Absent a legal
obligation, these actors are unlikely to implement the security measures necessary
to safeguard intellectual property that does not belong to them, especially when
armed with a decision that the public interest in disseminating information easily

55

trumps the interests of copyright holders.13 Even if these actors may want to
implement necessary security measures, they may not have the technological or
financial means to do so. As a result, the security risk posed by Google’s uses,
already multiplied by Google’s distribution to its Library Partners, would be
multiplied yet again.
For all these reasons, the fourth factor, like all of the factors in this fair use
analysis, weighs against Google.
II.
A FUNDAMENTAL CHANGE IN THE BALANCE BETWEEN THE
RIGHTS OF COPYRIGHT HOLDERS AND USERS MUST BE MADE BY
CONGRESS, NOT BY A PRIVATE COMMERCIAL ENTITY
In determining whether Google’s mass digitization program constitutes fair
use, the Court should also take account of the fact that in drafting the Copyright
Act, Congress recognized and granted rightsholders protections against the dangers
inherent in copying protected works into digital format. As early as 1963, at a
Copyright Office hearing, witnesses expressed concerns over the rise of computer
technology and the rightsholders’ loss of control that would result if users were
permitted to copy books and other works into machine-readable format without
13

Accord Harper, 471 U.S. at 559 (“[T]o propose that fair use be imposed
whenever the social value [of dissemination] . . . outweighs any detriment to the
artist, would be to propose depriving copyright owners of their right in the property
precisely when they encounter those users who could afford to pay for it.”)
(alteration in original, internal quotation marks omitted).

56

authorization. These and other concerns led to the inclusion in Section 106 of the
Copyright Act of language clarifying that rightsholders have the exclusive right “to
do and to authorize” others to copy, display and distribute copyrighted works,
including in digital format. See 3 Omnibus Copyright Revision Legislative History
120-27 (George Grossman ed., 2001).
Moreover, Section 108 of the Copyright Act, which gives libraries and
archives the right to make copies of printed books in their collections under very
limited circumstances (see supra note 6), was enacted after years of debate over
the appropriate balance between rightsholders and users. It was not until the 1998
passage of the Digital Millennium Copyright Act that Section 108 was amended to
permit libraries to make and use copies of books in digital format. However, the
amended statute included important restrictions on libraries’ ability to use digital
copies, including that no more than three digital copies could be made and that
digital copies not be “made available to the public in that format outside the
premises of the library or archives in lawful possession of such copy.” 17 U.S.C §
108(c)(2). Congress placed these restrictions on digital copying “in recognition of
the risk that uncontrolled public access to the copies [] in digital formats could
substantially harm the interests of the copyright owner by facilitating immediate,
flawless and widespread reproduction and distribution of additional copies [] of the
work.” S. Rep. No. 105-90, at 61-62 (1998).

57

These very specific rights and limitations addressing libraries and archives
make it doubly implausible to read the Act as authorizing a commercial entity like
Google to expose copyrighted works to the very risk Congress sought to address.
As the District Court noted in rejecting the ASA, if there is going to be a major
change in the established balance between rightsholders and users, it should be
made by Congress not Google. See Authors Guild, 770 F. Supp. 2d at 677.
CONCLUSION
Plaintiffs-Appellants respectfully request that this Court vacate the Judgment
of the District Court; mandate that the District Court grant the Authors’ motion for
summary judgment and remand the case for consideration of a proper remedy that
includes payment to Authors for the use of their works, an end to Google’s
provision of e-books to libraries and real protections from the risk of theft and
dissemination.

58

Dated: New York, New York
April 7, 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

59

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 13,583 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: April 7, 2014

By:

/s/ Edward H. Rosenthal
Edward H. Rosenthal

SPECIAL APPENDIX

i
SPECIAL APPENDIX
TABLE OF CONTENTS
Page
Opinion and Order or the Honorable Denny Chin,
dated November 14, 2013 ......................................

SPA-1

Judgment, dated November 27, 2013 ........................ SPA-31
Amended Judgment, dated December 10, 2013 ........ SPA-33
17 U.S.C. §106 ........................................................... SPA-35
17 U.S.C. §107 ........................................................... SPA-36
17 U.S.C. §108 ........................................................... SPA-37

SPA-1
Case 1:05-cv-08136-DC Document 1088

Filed 11/14/13 Page 1 of 30

usnc SDN.l'
USOCSDN.¥
··DOC{]M~NT
·DOCl1M~NT

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

ELECTQONIC~LLY ·FILED
ELECTRON[C~LL ¥ ·fILED

-x

THE AUTHORS GUILD, INC., and
BETTY MILES, JOSEPH GOULDEN,
and JIM BOUTON, on behalf of
themselves and all others
similarly situated,

DOC#:_____~"'I-""--....
DOC #: _ _--:~__:_......

DATE FltEtJ:
FltEJ):

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,

OPINION

Plaintiffs,

05 Civ. 8136 (DC)

­
- against GOOGLE INC.,
Defendant.
- -x
APPEARANCES:

(See last page)

CHIN, Circuit Judge

Since 2004, when it announced agreements with several
major research libraries to digitally copy books in their
collections, defendant Google Inc.
than twenty million books.

("Google") has scanned more

It has delivered digital copies to

participating libraries, created an electronic database of books,
and made text available for online searching through the use of

"snippets."

Many of the books scanned by Google, however, were

under copyright, and Google did not obtain permission from the
copyright holders for these usages of their copyrighted works.

As a consequence, in 2005, plaintiffs brought this class action
charging Google with copyright infringement.

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Before the Court are the parties' cross-motions for
summary judgment with respect to Google's defense of fair use
under § 107 of the Copyright Act, 17 U.S.C. § 107.

For the

reasons set forth below, Google's motion for summary judgment is
granted and plaintiffs' motion for partial summary judgment is
denied.

Accordingly, judgment will be entered in favor of Google

dismissing the case.
BACKGROUND
A.

The Facts
For purposes of this motion, the facts are not in

dispute.

(See 9/23/13 Tr. 10-11, 15, 25-28 (Doc. No. 1086)).1

They are summarized as follows:
1.

The Parties
Plaintiff Jim Bouton, the former pitcher for the New

York Yankees, is the legal or beneficial owner of the U.S.
copyright in the book Ball Four.

Plaintiff Betty Miles is the

legal or beneficial owner of the U.S. copyright in the book The
Trouble with Thirteen.

Plaintiff Joseph Goulden is the legal or

beneficial owner of the U.S. copyright in the book The

1

When pressed at oral argument to identify any factual
issues that would preclude the award of summary judgment,
plaintiffs' counsel was unable to do so. (Id. at 25-26).
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Superlawyers:

Filed 11/14/13 Page 3 of 30

The Small and Powerful World of the Great

Washington Law Firms.

(Google Resp. ¶¶ 1-3).2

All three books

have been scanned by Google and are available for search on
Google's website, without plaintiffs' permission.
¶ 4).

(Google Resp.

Plaintiff The Authors Guild, Inc., is the nation's largest

organization of published authors and it advocates for and
supports the copyright and contractual interests of published
writers.

(Google Resp. ¶¶ 7-8).
Google owns and operates the largest Internet search

engine in the world.

(Google Resp. ¶ 9).

Each day, millions of

people use Google's search engine free of charge; commercial and
other entities pay to display ads on Google's websites and on
other websites that contain Google ads.

(Google Resp. ¶ 10).

Google is a for-profit entity, and for the year ended December
31, 2011, it reported over $36.5 billion in advertising revenues.
(Google Resp. ¶ 11).

2

"Google Resp." refers to Google's Responses and
Objections to plaintiffs' Statement of Undisputed Facts in
Support of Their Motion for Partial Summary Judgment (Doc. No.
1077). "Pl. Resp." refers to plaintiffs' Response to Google's
Local Rule 56.1 Statement (Doc. No. 1071). I have relied on the
parties' responses to the statements of undisputed facts only to
the extent that factual statements were not controverted.
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2.

Filed 11/14/13 Page 4 of 30

The Google Books Project
In 2004, Google announced two digital books programs.

The first, initially called "Google Print" and later renamed the
"Partner Program," involved the "hosting" and display of material
provided by book publishers or other rights holders.
Resp. ¶¶ 13, 14).

(Google

The second became known as the "Library

Project," and over time it involved the digital scanning of books
in the collections of the New York Public Library, the Library of
Congress, and a number of university libraries.

(Clancy Decl. ¶

5 (Doc. No. 1035); Google Resp. ¶¶ 25, 26, 27; Pl. Resp. ¶ 14).
The Partner Program and the Library Project together
comprise the Google Books program ("Google Books").
Resp. ¶ 15).

(Google

All types of books are encompassed, including

novels, biographies, children's books, reference works,
textbooks, instruction manuals, treatises, dictionaries,
cookbooks, poetry books, and memoirs.
Decl. ¶ 4 (Doc. No. 1041)).

(Pl. Resp. ¶ 6; Jaskiewicz

Some 93% of the books are

non-fiction while approximately 7% are fiction.3

3

Both in-print

These estimates are based on studies of the contents of
the libraries involved. (Def. Mem. at 7 (Doc. No. 1032) (citing
Brian Lavoie and Lorcan Dempsey, Beyond 1923: Characteristics of
Potentially In-Copyright Print Books in Library Collections, 15D-Lib 11/12 (2009), available at http://www.dlib.org/dlib/
november09/lavoie/11lavoie.html (last visited November 12,
-4-

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and out-of-print books are included, although the great majority
are out-of-print.

(Jaskiewicz Decl. ¶ 4).

In the Partner Program, works are displayed with
permission of the rights holders.

(Google Resp. ¶ 16).

The

Partner Program is aimed at helping publishers sell books and
helping books become discovered.

(Google Resp. ¶ 18).

Initially, Google shared revenues from ads with publishers or
other rights holders in certain circumstances.

In 2011, however,

Google stopped displaying ads in connection with all books.
(Google Resp. ¶¶ 17, 21; Dougall Decl. ¶¶ 5-8 (Doc. No. 1076)).
Partners provide Google with a printed copy of their books for
scanning, or a digital copy if one already exists.
¶ 19).

Partners decide how much of their books -- from a few

sample pages to the entire book -- are browsable.
¶ 20).

(Google Resp.

(Google Resp.

As of early 2012, the Partner Program included

approximately 2.5 million books, with the consent of some 45,000
rights holders.

(Google Resp. ¶ 24).

As for the Library Project, Google has scanned more
than twenty million books, in their entirety, using newlydeveloped scanning technology.

2013)).
26).

(Google Resp. ¶¶ 28, 29).

The numbers are not disputed.

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(See 9/23/2013 Tr. at

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Pursuant to their agreement with Google, participating libraries
can download a digital copy of each book scanned from their
collections.

(Google Resp. ¶ 30).

Google has provided digital

copies of millions of these books to the libraries, in accordance
with these agreements.

(Google Resp. ¶ 85).

Some libraries

agreed to allow Google to scan only public domain works, while
others allowed Google to scan in-copyright works as well.
(Google Resp. ¶ 36).
Google creates more than one copy of each book it scans
from the library collections, and it maintains digital copies of
each book on its servers and back-up tapes.
41).

(Google Resp. ¶¶ 40,

Participating libraries have downloaded digital copies of

in-copyright books scanned from their collections.
¶¶ 53, 54).

(Google Resp.

They may not obtain a digital copy created from

another library's book.

(Jaskiewicz Decl. ¶¶ 6, 8).

The

libraries agree to abide by the copyright laws with respect to
the copies they make.

(Clancy Decl. ¶ 5).

Google did not seek or obtain permission from the
copyright holders to digitally copy or display verbatim
expressions from in-copyright books.

(Google Resp. ¶¶ 53, 54).

Google has not compensated copyright holders for its copying of
or displaying of verbatim expression from in-copyright books or
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its making available to libraries for downloading of digital
copies of in-copyright books scanned from their collections.
(Google Resp. ¶ 55).
3.

Google Books
In scanning books for its Library Project, including

in-copyright books, Google uses optical character recognition
technology to generate machine-readable text, compiling a digital
copy of each book.

(Google Resp. ¶ 62; Pl. Resp. ¶ 18;

Jaskiewicz Decl. ¶ 3).

Google analyzes each scan and creates an

overall index of all scanned books.

The index links each word or

phrase appearing in each book with all of the locations in all of
the books in which that word or phrase is found.

The index

allows a search for a particular word or phrase to return a
result that includes the most relevant books in which the word or
phrase is found.

(Clancy Decl. ¶ 6; Pl. Resp. ¶¶ 22-26).

Because the full texts of books are digitized, a user can search
the full text of all the books in the Google Books corpus.
(Clancy Decl. ¶ 7; Google Resp. ¶ 42).
Users of Google's search engine may conduct searches,
using queries of their own design.

(Pl. Resp. ¶ 10).

In

response to inquiries, Google returns a list of books in which
the search term appears.

(Clancy Decl. ¶ 8).
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A user can click

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on a particular result to be directed to an "About the Book"
page, which will provide the user with information about the book
in question.

The page includes links to sellers of the books

and/or libraries that list the book as part of their collections.
No advertisements have ever appeared on any About the Book page
that is part of the Library Project.

(Clancy Decl. ¶ 9).

For books in "snippet view" (in contrast to "full view"
books), Google divides each page into eighths -- each of which is
a "snippet," a verbatim excerpt.

(Google Resp. ¶¶ 43, 44).

Each

search generates three snippets, but by performing multiple
searches using different search terms, a single user may view far
more than three snippets, as different searches can return
different snippets.

(Google Resp. ¶ 45).

For example, by making

a series of consecutive, slightly different searches of the book
Ball Four, a single user can view many different snippets from
the book.

(Google Resp. ¶¶ 46, 47).
Google takes security measures to prevent users from

viewing a complete copy of a snippet-view book.

For example, a

user cannot cause the system to return different sets of snippets
for the same search query; the position of each snippet is fixed
within the page and does not "slide" around the search term; only
the first responsive snippet available on any given page will be
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returned in response to a query; one of the snippets on each page
is "black-listed," meaning it will not be shown; and at least one
out of ten entire pages in each book is black-listed.
Resp. ¶¶ 48-50; Pl. Resp. ¶¶ 35, 37-40).

(Google

An "attacker" who tries

to obtain an entire book by using a physical copy of the book to
string together words appearing in successive passages would be
able to obtain at best a patchwork of snippets that would be
missing at least one snippet from every page and 10% of all
pages.

(Pl. Resp. ¶ 41).

In addition, works with text organized

in short "chunks," such as dictionaries, cookbooks, and books of
haiku, are excluded from snippet view.
4.

(Pl. Resp. ¶ 42).

The Benefits of the Library Project
and Google Books
The benefits of the Library Project are many.

First,

Google Books provides a new and efficient way for readers and
researchers to find books.

(See, e.g., Clancy Decl. Ex. G).

It

makes tens of millions of books searchable by words and phrases.
It provides a searchable index linking each word in any book to
all books in which that word appears.

(Clancy Decl. ¶ 7).

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

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facilitates finding and checking citations.

(Br. of Amici Curiae

American Library Ass'n et al. at 4-7 (Doc. No. 1048)).

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.

(Id. at 7).

Second, in addition to being an important reference
tool, Google Books greatly promotes a type of research referred
to as "data mining" or "text mining."

(Br. of Digital Humanities

and Law Scholars as Amici Curiae at 1 (Doc. No. 1052)).

Google

Books permits humanities scholars to analyze massive amounts of
data -- the literary record created by a collection of tens of
millions of books.

Researchers can examine word frequencies,

syntactic patterns, and thematic markers to consider how literary
style has changed over time.

(Id. at 8-9; Clancy Decl. ¶ 15).

Using Google Books, for example, researchers can track the
frequency of references to the United States as a single entity
("the United States is") versus references to the United States
in the plural ("the United States are") and how that usage has
changed over time.

(Id. at 7).

The ability to determine how

often different words or phrases appear in books at different
times "can provide insights about fields as diverse as
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lexicography, the evolution of grammar, collective memory, the
adoption of technology, the pursuit of fame, censorship, and
historical epidemiology."

Jean-Baptiste Michel et al.,

Quantitative Analysis of Culture Using Millions of Digitized
Books, 331 Science 176, 176 (2011) (Clancy Decl. Ex. H).
Third, Google Books expands access to books.

In

particular, traditionally underserved populations will benefit as
they gain knowledge of and access to far more books.

Google

Books provides print-disabled individuals with the potential to
search for books and read them in a format that is compatible
with text enlargement software, text-to-speech screen access
software, and Braille devices.

Digitization facilitates the

conversion of books to audio and tactile formats, increasing
access for individuals with disabilities.

(Letter from Marc

Maurer, President of the National Federation for the Blind, to J.
Michael McMahon, Office of the Clerk (Jan. 19, 2010) (Doc. No.
858)).

Google Books facilitates the identification and access of

materials for remote and underfunded libraries that need to make
efficient decisions as to which resources to procure for their
own collections or through interlibrary loans.
Curiae American Library Ass'n at 5-6).

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(Br. of Amici

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Fourth, Google Books helps to preserve books and give
them new life.

Older books, many of which are out-of-print books

that are falling apart buried in library stacks, are being
scanned and saved.

See Authors Guild v. Google Inc., 770 F.

Supp. 2d 666, 670 (S.D.N.Y. 2011).

These books will now be

available, at least for search, and potential readers will be
alerted to their existence.
Finally, by helping readers and researchers identify
books, Google Books benefits authors and publishers.

When a user

clicks on a search result and is directed to an "About the Book"
page, the page will offer links to sellers of the book and/or
libraries listing the book as part of their collections.
Decl. ¶ 9).

(Clancy

The About the Book page for Ball Four, for example,

provides links to Amazon.com, Barnes&Noble.com, Books-A-Million,
and IndieBound.

(See Def. Mem. at 9).

A user could simply click

on any of these links to be directed to a website where she could
purchase the book.

Hence, Google Books will generate new

audiences and create new sources of income.
As amici observe:

"Thanks to . . . [Google Books],

librarians can identify and efficiently sift through possible
research sources, amateur historians have access to a wealth of
previously obscure material, and everyday readers and researchers
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can find books that were once buried in research library
archives."
B.

(Br. of Amici Curiae American Library Ass'n at 3).

Procedural History
Plaintiffs commenced this action on September 20, 2005,

alleging, inter alia, that Google committed copyright
infringement by scanning copyrighted books and making them
available for search without permission of the copyright holders.
From the outset, Google's principal defense was fair use under §
107 of the Copyright Act, 17 U.S.C. § 107.
After extensive negotiations, the parties entered into
a proposed settlement resolving plaintiffs' claims on a classwide basis.

On March 22, 2011, I issued an opinion rejecting the

proposed settlement on the grounds that it was not fair,
adequate, and reasonable.

Authors Guild v. Google Inc., 770 F.

Supp. 2d 666 (S.D.N.Y. 2011).
Thereafter, the parties engaged in further settlement
discussions, but they were unable to reach agreement.

The

parties proposed and I accepted a schedule that called for the
filing of plaintiffs' class certification motion, the completion
of discovery, and then the filing of summary judgment motions.
(See 9/16/11 Order (Doc. No. 982)).

Plaintiffs filed a fourth

amended class action complaint (the "Complaint") on October 14,
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2011.

(Doc. No. 985).

Filed 11/14/13 Page 14 of 30

While the dates in the schedule were

subsequently extended, the sequence of events was retained, with
the class certification motion to precede the summary judgment
motions, and adding dates for Google's filing of a motion to
dismiss the Authors Guild's claims.

(See, e.g., 1/17/12 Order

(Doc. No. 996); 3/28/12 Order (Doc. No. 1007)).
Plaintiffs filed their class certification motion and
Google filed its motion to dismiss the Authors Guild's claims.
On May 31, 2012, I issued an opinion denying Google's motion to
dismiss and granting the individual plaintiffs' motion for class
certification.

Authors Guild v. Google Inc., 282 F.R.D. 384

(S.D.N.Y. 2012).
On June 9, 2012, I issued an order re-setting the
briefing schedule for the summary judgment motions.
Order (Doc. No. 1028)).

(6/19/12

The parties thereafter filed the instant

cross-motions for summary judgment.

Before the motions were

fully submitted, however, the Second Circuit issued an order on
September 17, 2012, staying these proceedings pending an
interlocutory appeal by Google from my decision granting class
certification.

(9/17/12 Order (Doc. No. 1063)).

On July 1, 2013, without deciding the merits of the
appeal, the Second Circuit vacated my class certification
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decision, concluding that "resolution of Google's fair use
defense in the first instance will necessarily inform and perhaps
moot our analysis of many class certification issues."

Authors

Guild, Inc. v. Google Inc., 721 F.3d 132, 134 (2d Cir. 2013).
The Second Circuit remanded the case "for consideration of the
fair use issues."

Id. at 135.

On remand, the parties completed the briefing of the
summary judgment motions.
2013.

I heard oral argument on September 23,

I now rule on the motions.
DISCUSSION
For purposes of these motions, I assume that plaintiffs

have established a prima facie case of copyright infringement
against Google under 17 U.S.C. § 106.

See Feist Publ'ns, Inc. v.

Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).

Google has

digitally reproduced millions of copyrighted books, including the
individual plaintiffs' books, maintaining copies for itself on
its servers and backup tapes.

See 17 U.S.C. § 106(1)

(prohibiting unauthorized reproduction).

Google has made digital

copies available for its Library Project partners to download.
See 17 U.S.C. § 106(3) (prohibiting unauthorized distribution).
Google has displayed snippets from the books to the public.
17 U.S.C. § 106(5) (prohibiting unauthorized display).
-15-

See

Google

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has done all of this, with respect to in-copyright books in the
Library Project, without license or permission from the copyright
owners.

The sole issue now before the Court is whether Google's

use of the copyrighted works is "fair use" under the copyright
laws.
A.

For the reasons set forth below, I conclude that it is.

Applicable Law
Fair use is a defense to a claim of copyright

infringement.

The doctrine permits the fair use of copyrighted

works "to fulfill copyright's very purpose, '[t]o promote the
Progress of Science and useful Arts.'"

Campbell v. Acuff-Rose

Music, Inc., 510 U.S. 569, 575 (1994) (quoting U.S. Const., Art.
I, § 8, cl. 8)); accord Cariou v. Prince, 714 F.3d 694, 705 (2d
Cir. 2013).

Copyright law seeks to achieve that purpose by

providing sufficient protection to authors and inventors to
stimulate creative activity, while at the same time permitting
others to utilize protected works to advance the progress of the
arts and sciences.

See Eldred v. Ashcroft, 537 U.S. 186, 212

(2003); Blanch v. Koons, 467 F.3d 244, 250 (2d Cir. 2006); Hon.
Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev.
1105, 1107-08 (1990).

As the Supreme Court has held, "[f]rom the

infancy of copyright protection, some opportunity for fair use of
copyrighted materials has been thought necessary to fulfill
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copyright's very purpose."

Filed 11/14/13 Page 17 of 30

Campbell, 510 U.S. at 575; see also

Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539,
560 (1985) (recognizing "the latitude for scholarship and comment
traditionally afforded by fair use").
The fair use doctrine is codified in § 107 of the
Copyright Act, which provides in relevant part as follows:
[T]he fair use of a copyrighted work, . . .
for purposes such as criticism, comment, news
reporting, teaching (including multiple
copies for classroom use), scholarship, or
research, is not an infringement of
copyright. In determining whether the use
made of a work in any particular case is a
fair use the factors to be considered shall
include -(1) the purpose and character of
the use, including whether such use
is of a commercial nature or is for
nonprofit educational purposes;
(2) the nature of the copyrighted
work;
(3) the amount and substantiality
of the portion used in relation to
the copyrighted work as a whole;
and
(4) the effect of the use upon the
potential market for or value of
the copyrighted work.
17 U.S.C. § 107.
The determination of fair use is "an open-ended and
context-sensitive inquiry," Blanch v. Koons, 467 F.3d at 251, and
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thus the fair use doctrine calls for "case-by-case analysis,"
Campbell, 510 U.S. at 577; see also Harper & Row, 471 U.S. at
553.

The four factors enumerated in the statute are

non-exclusive and provide only "general guidance"; they are to be
explored and weighed together, "in light of the purposes of
copyright."
at 560-61.

Campbell, 510 U.S. at 578-79; Harper & Row, 471 U.S.
As fair use is an affirmative defense to a claim of

copyright infringement, the proponent carries the burden of proof
as to all issues in dispute.

Am. Geophysical Union v. Texaco

Inc., 60 F.3d 913, 918 (2d Cir. 1994); see also Campbell, 510
U.S. at 590.
A key consideration is whether, as part of the inquiry
into the first factor, the use of the copyrighted work is
"transformative," that is, whether the new work merely
"supersedes" or "supplants" the original creation, or whether it:
instead adds something new, with a further
purpose or different character, altering the
first with new expression, meaning, or
message; it asks, in other words, whether and
to what extent the new work is
"transformative."
Campbell, 510 U.S. at 579 (quoting Leval, Toward a Fair Use
Standard, 103 Harv. L. Rev. at 1111); accord Bill Graham Archives
v. Dorling Kindersley Ltd., 448 F.3d 605, 608 (2d Cir. 2006)

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("Most important to the court's analysis of the first factor is
'transformative' nature of the work."); Am. Geophysical Union, 60
F.3d at 923.

Although transformative use is not "absolutely

necessary" to a finding of fair use, "the goal of copyright, to
promote science and the arts, is generally furthered by the
creation of transformative works."
B.

Campbell, 510 U.S. at 579.

Application
I discuss each of the four factors separately, and I

then weigh them together.
1.

Purpose and Character of Use
The first factor is "the purpose and character of the

use, including whether such use is of a commercial nature or is
for nonprofit educational purposes."

17 U.S.C. § 107(1).

Google's use of the copyrighted works is highly
transformative.

Google Books digitizes books and transforms

expressive text into a comprehensive word index that helps
readers, scholars, researchers, and others find books.

Google

Books has become an important tool for libraries and librarians
and cite-checkers as it helps to identify and find books.

The

use of book text to facilitate search through the display of
snippets is transformative.

See Perfect 10, Inc. v. Amazon.com,

Inc., 508 F.3d 1146, 1168 (9th Cir. 2007) (holding that use of
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works -- "thumbnail images," including copyrighted
photographs -- to facilitate search was "transformative");

Kelly

v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003) (same); see
also Bill Graham Archives, 448 F.3d at 609-11 (holding that
display of images of posters in 480-page cultural history of the
Grateful Dead was transformative, explaining that "[w]hile the
small size [of the images of the posters] is sufficient to permit
readers to recognize the historial significance of the posters,
it is inadequate to offer more than a glimpse of their expressive
value").

The display of snippets of text for search is similar

to the display of thumbnail images of photographs for search or
small images of concert posters for reference to past events, as
the snippets help users locate books and determine whether they
may be of interest.

Google Books thus uses words for a different

purpose -- it uses snippets of text to act as pointers directing
users to a broad selection of books.
Similarly, Google Books is also transformative in the
sense that it has transformed book text into data for purposes of
substantive research, including data mining and text mining in
new areas, thereby opening up new fields of research.

Words in

books are being used in a way they have not been used before.
Google Books has created something new in the use of book
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text -- the frequency of words and trends in their usage provide
substantive information.
Google Books does not supersede or supplant books
because it is not a tool to be used to read books.

Instead, it

"adds value to the original" and allows for "the creation of new
information, new aesthetics, new insights and understandings."
Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. at 1111.
Hence, the use is transformative.
It is true, of course, as plaintiffs argue, that Google
is a for-profit entity and Google Books is largely a commercial
enterprise.

The fact that a use is commercial "tends to weigh

against a finding of fair use."

Harper & Row, 471 U.S. at 562;

accord Campbell, 510 U.S. at 585.

On the other hand, fair use

has been found even where a defendant benefitted commercially
from the unlicensed use of copyrighted works.

See, e.g., Blanch,

467 F.3d at 253; Bill Graham Archives, 448 F.3d at 612.

See also

Castle Rock Entm't, Inc. v. Carol Publ'g Grp., Inc., 150 F.3d
132, 142 (2d Cir. 1998) (observing that Second Circuit does "not
give much weight to the fact that the secondary use was for
commercial gain").

Here, Google does not sell the scans it has

made of books for Google Books; it does not sell the snippets
that it displays; and it does not run ads on the About the Book
-21-

SPA-22
Case 1:05-cv-08136-DC Document 1088

pages that contain snippets.

Filed 11/14/13 Page 22 of 30

It does not engage in the direct

commercialization of copyrighted works.

See 17 U.S.C. § 107(1).

Google does, of course, benefit commercially in the sense that
users are drawn to the Google websites by the ability to search
Google Books.

While this is a consideration to be acknowledged

in weighing all the factors, even assuming Google's principal
motivation is profit, the fact is that Google Books serves
several important educational purposes.
Accordingly, I conclude that the first factor strongly
favors a finding of fair use.
2.

Nature of Copyrighted Works
The second factor is "the nature of the copyrighted

work."

17 U.S.C. § 107(2).4

Here, the works are books -- all

types of published books, fiction and non-fiction, in-print and
out-of-print.

While works of fiction are entitled to greater

copyright protection, Stewart v. Abend, 495 U.S. 207, 237 (1990),
here the vast majority of the books in Google Books are
non-fiction.

Further, the books at issue are published and

4

The parties agree that the second factor plays little
role in the ultimate fair use determination. (Pl. Mem. at 36
n.18 (Doc. No. 1050); Def. Mem. at 25). See On Davis v. Gap,
Inc., 246 F.3d 152, 175 (2d Cir. 2001) ("The second statutory
factor, the nature of the copyrighted work, is rarely found to be
determinative.") (internal citation omitted).
-22-

SPA-23
Case 1:05-cv-08136-DC Document 1088

available to the public.
fair use.

Filed 11/14/13 Page 23 of 30

These considerations favor a finding of

See Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1078

(2d Cir. 1992) ("Whether or not a work is published is critical
to its nature under factor two because the scope of fair use is
narrower with respect to unpublished works.") (quoting New Era
Publ'ns Intern., ApS v. Carol Publ’g Grp., 904 F.2d 152, 157 (2d
Cir. 1990) (internal quotation marks ommitted)).
3.

Amount and Substantiality of Portion Used
The third factor is "the amount and substantiality of

the portion used in relation to the copyrighted work as a whole."
17 U.S.C. § 107(3).

Google scans the full text of books -- the

entire books -- and it copies verbatim expression.

On the other

hand, courts have held that copying the entirety of a work may
still be fair use.

See, e.g., Sony Corp. of Am. v. Universal

City Studios, Inc., 464 U.S. 417, 449-50 (1984); Bill Graham
Archives, 448 F.3d at 613 ("copying the entirety of a work is
sometimes necessary to make a fair use of the image").

Here, as

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.

Significantly, Google limits the

amount of text it displays in response to a search.

-23-

SPA-24
Case 1:05-cv-08136-DC Document 1088

Filed 11/14/13 Page 24 of 30

On balance, I conclude that the third factor weighs
slightly against a finding of fair use.
4.

Effect of Use Upon Potential Market or Value
The fourth factor is "the effect of the use upon the

potential market for or value of the copyrighted work."
U.S.C. § 107(4).

17

Here, plaintiffs argue that Google Books will

negatively impact the market for books and that Google's scans
will serve as a "market replacement" for books.
41).

(Pl. Mem. at

It also argues that users could put in multiple searches,

varying slightly the search terms, to access an entire book.
(9/23/13 Tr. at 6).
Neither suggestion makes sense.

Google does not sell

its scans, and the scans do not replace the books.

While partner

libraries have the ability to download a scan of a book from
their collections, they owned the books already -- they provided
the original book to Google to scan.

Nor is it likely that

someone would take the time and energy to input countless
searches to try and get enough snippets to comprise an entire
book.

Not only is that not possible as certain pages and

snippets are blacklisted, the individual would have to have a
copy of the book in his possession already to be able to piece
the different snippets together in coherent fashion.
-24-

SPA-25
Case 1:05-cv-08136-DC Document 1088

Filed 11/14/13 Page 25 of 30

To the contrary, a reasonable factfinder could only
find that Google Books enhances the sales of books to the benefit
of copyright holders.

An important factor in the success of an

individual title is whether it is discovered -- whether potential
readers learn of its existence.
1039)).

(Harris Decl. ¶ 7 (Doc. No.

Google Books provides a way for authors' works to become

noticed, much like traditional in-store book displays.
¶¶ 14-15).

(Id. at

Indeed, both librarians and their patrons use Google

Books to identify books to purchase.
American Library Ass'n at 8).

(Br. of Amici Curiae

Many authors have noted that

online browsing in general and Google Books in particular helps
readers find their work, thus increasing their audiences.
Further, Google provides convenient links to booksellers to make
it easy for a reader to order a book.

In this day and age of

on-line shopping, there can be no doubt but that Google Books
improves books sales.
Hence, I conclude that the fourth factor weighs
strongly in favor of a finding of fair use.
5.

Overall Assessment
Finally, the various non-exclusive statutory factors

are to be weighed together, along with any other relevant
considerations, in light of the purposes of the copyright laws.
-25-

SPA-26
Case 1:05-cv-08136-DC Document 1088

Filed 11/14/13 Page 26 of 30

In my view, Google Books provides significant public
benefits.

It advances the progress of the arts and sciences,

while maintaining respectful consideration for the rights of
authors and other creative individuals, and without adversely
impacting the rights of copyright holders.

It has become an

invaluable research tool that permits students, teachers,
librarians, and others to more efficiently identify and locate
books.

It has given scholars the ability, for the first time, to

conduct full-text searches of tens of millions of books.

It

preserves books, in particular out-of-print and old books that
have been forgotten in the bowels of libraries, and it gives them
new life.

It facilitates access to books for print-disabled and

remote or underserved populations.

It generates new audiences

and creates new sources of income for authors and publishers.
Indeed, all society benefits.
Similarly, Google is entitled to summary judgment with
respect to plaintiffs' claims based on the copies of scanned
books made available to libraries.

Even assuming plaintiffs have

demonstrated a prima facie case of copyright infringement,
Google's actions constitute fair use here as well.

Google

provides the libraries with the technological means to make
digital copies of books that they already own.
-26-

The purpose of

SPA-27
Case 1:05-cv-08136-DC Document 1088

Filed 11/14/13 Page 27 of 30

the library copies is to advance the libraries' lawful uses of
the digitized books consistent with the copyright law.

The

libraries then use these digital copies in transformative ways.
They create their own full-text searchable indices of books,
maintain copies for purposes of preservation, and make copies
available to

print-disabled individuals, expanding access

for them in unprecedented ways.

Google's actions in providing

the libraries with the ability to engage in activities that
advance the arts and sciences constitute fair use.
To the extent plaintiffs are asserting a theory of
secondary liability against Google, the theory fails because the
libraries' actions are protected by the fair use doctrine.
Indeed, in the HathiTrust case, Judge Baer held that the
libraries' conduct was fair use.

See Authors Guild, Inc. v.

HathiTrust, 902 F. Supp. 2d 445, 460-61, 464 (S.D.N.Y. 2012) ("I
cannot imagine a definition of fair use that would not encompass
the transformative uses made by Defendants' [Mass Digitization
Project] and would require that I terminate this invaluable
contribution to the progress of science and cultivation of the
arts that at the same time effectuates the ideals espoused by the
[Americans with Disabilities Act].").

-27-

The fair use analysis set

SPA-28
Case 1:05-cv-08136-DC Document 1088

Filed 11/14/13 Page 28 of 30

forth above with respect to Google Books applies here as well to

the libraries' use of their scans, and if there is no liability
for copyright infringement on the libraries' part, there can be
no liability on Google's part.
CONCLUSION

For the reasons set forth above, plaintiffs' motion for
partial summary judgment is denied and Google's motion for
summary judgment is granted.

Judgment will be entered in favor

of Google dismissing the Complaint.

Google shall submit a

proposed judgment, on notice, within five business days hereof.

SO ORDERED.
Dated:

November 14, 2013
New York, New York

~~a

\.

United States Circuit Judge
Sitting By Designation

-2828­

SPA-29
Case 1:05-cv-08136-DC Document 1088

Filed 11/14/13 Page 29 of 30

APPEARANCES

For Plaintiffs:

BONI & ZACK LLC
By: Michael J. Boni, Esq,
Joshua D. Snyder, Esq.
John E. Sindoni, Esq.
15 St. Asaphs Road
Bala Cynwyd, PA 19004

FRANKFURT KURNIT KLEIN & SELZ P.C.
By: Edward H. Rosenthal, Esq.
Jeremy S. Goldman, Esq.
488 Madison Avenue
New York, NY 10022

MILBERG LLP
By: Sanford P. Dumain, Esq.
1 Pennsylvania Plaza
New York, NY 10119

For Defendant Google, Inc.

DURIE TANGRI LLP
By: Daralyn J. Durie, Esq.
Joseph C. Gratz, Esq.
David McGowan, Esq.
Genevieve P. Rosloff, Esq.
217 Leidesdorff Street
San Francisco, CA 94111

-29-

SPA-30
Case 1:05-cv-08136-DC Document 1088

Filed 11/14/13 Page 30 of 30

For Amicus Curiae Digital
Humanities and Law Scholars:

SAMUELSON LAW, TECHNOLOGY & PUBLIC POLICY CLINIC
By: Jennifer M. Urban, Esq.
Babak Siavoshy, Esq.
Jason Schultz, Esq.
University of California, Berkeley,
School of Law
396 Simon Hall
Berkeley, CA 94720
- and Matthew Sag, Esq.
Loyola University of Chicago School of Law
25 East Pearson Street
Chicago, IL 60611

For Amicus Curiae American Library
Association, Association of
College and Research Libraries,
Association of Research Libraries,
and Electronic Frontier Foundation:

JONATHAN BAND PLLC
By: Jonathan Band, Esq.
21 Dupont Circle, NW
Washington, DC 20036

-30-

SPA-31
Case 1:05-cv-08136-DC Document 1089

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

- - - - - - - - - - - - - - - -x

Filed 11/27/13 Page 1 of 2

LSDC SDNY
LSDCSDNY
DOCUMENT
DOCUMENt'

ELECTRONICALLY FILED
DOC#:
.
.•. \
DATE F-IL-E-D:-·""nM'1d,~7~1~\¥.>
~::--""
DATE FILED: ·1 (

Ji]1 \

THE AUTHOR'S GUILD, et al.,
Plaintiffs,
JUDGMENT

- against ­-

05 Civ. 8136 (DC)
GOOGLE, INC.,
Defendant.
- - - - - - - - - - -

- - - - - - -x

CHIN, Circuit Judge

This matter having been duly heard by the undersigned
on the parties' cross-motions for summary judgment (the
IIMotions"),
"Motions"), and the Court having considered the memoranda and
declarations filed by the parties and amici curiae in support of

and in opposition to the Motions and the oral argument presented
at the hearing before the Court on September 23, 2013, and the
Court having granted the Motion of Defendant for summary
1031{
judgment, ECF No. 1031, and having denied the Motion of
Plaintiffs for partial summary judgment, ECF No. 1049,

NOW, upon this Court's opinion, entered November 14,
2013, ECF No. 1088, it is hereby

ORDERED, ADJUDGED, AND DECREED that,
1.

Plaintiffs' Motion for Partial Summary Judgment is
denied;

SPA-32
Case 1:05-cv-08136-DC Document 1089

2.

Filed 11/27/13 Page 2 of 2

Defendant's Motion for Summary Judgment is
granted;
grantedi

3.

Plaintiffs' claims are dismissed with prejudice;

4.

Costs in this action are awarded to Defendant, as
the prevailing party in this action; and

5.

Any application for attorneys' fees must be made
within 14 days after entry of judgment pursuant to
Fed. R. Civ. P. 54 (d) (2) (B) (i)..
(i)

SO ORDERED.
Dated:

C--'----

New York, New York
November 27, 2013
November 27,

~ ~____'_________
_
~

2013

~~ Circuit Judge
United States

United States Circuit Judge
Sitting by Designation

-2­
-2-

SPA-33
From Durie Tangri 1.888.231.9862 Man Dec
Tangr;
Mon

9 16:37:11 2013 MST Page 3 of 4

Case 1:05-cv-08136-DC Document 1091

Filed 12/10/13 Page 1 of 2

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YOP3

YORK
THE AUTHORS GUILD,
al . ,

e::
INC., et
JUDGMENT

Plaintiffs,

05 Civ. 8136 (DC)

v.
USJ)C SDN:Y
USOCSDNV

GOOGLE INC.,

DOC;UMENT
DOCUMENT
ELECTRONICALLY FILED. '
ELECTQ.ONICALL¥ FILED

Defendant.

DOC #:-----:-"".:::-""':,.......r-:::---'­
#:-----:~r_T_:::--'"
DATE FILED: I J.

LlOld;
Id.llo/ts

CHIN, Circuit Judge
This matter having been duly heard"by the undersigned on
heard,.by

the parties' cross-motions for summary jUdgment
judgment

(the "Motions"),

and the Court having considered the memoranda and declarations
amic
filed by the parties and amici curiae in support of and in

opposition to the Motions and the oral ar'gument pr'esented at the
or'al argument presented
hearing before the Court on September 23, 2013, and the Court
having gTanted th.e Motion of Defendant for summary judgment, ECF
granted the
No. 1031, and having denied the Motion of Plaintiffs for partial
summary judgment, ECF No. 1049,
NOW, upon this Court's opinion, entered November 14, 2013,

ECF No. 1088, it is hereby
it:
ORDERED, ADJUDGED, AND DECREED that,
1. laintiffs' Motion for Partial Summary Judgment is
Plainti ffs'
P

denied;
2. Defendant's Motion for Summary Judgment is granted;
Defendant's
3. Plaintiffs' claims are dismissed with prejudice;
Plaintiffs'

1

SPA-34
From Durie Tangri 1.888.231.9862 Mon Dec

9 16:37:11 2013 MST Page 4 of 4

Case 1:05-cv-08136-DC Document 1091

Filed 12/10/13 Page 2 of 2

4. Costs in this action are awarded to Defendant, as the
Costs
prevailing party in this action; and
prevail
parLy
5. Any application for attorneys' fees must be made within
a991ication

14 days of the final resolution of all appeals or, if no
appeal is taken, within 14 days after the expiration of

time for filing a notice of apgeal.
appeal.
SO ORDERED.

Dated:

YOrk~---------~YOrk~==:::=:::::::::"""""~_

New York, NevI
New
0
/e:>,
December 1 , 2013

DENNY CHIN
United States Circuit Judge
sitting
Sitting by Designation

SPA-35

17 U.S.C.
United States Code, 2012 Edition
Title 17 - COPYRIGHTS
CHAPTER 1 - SUBJECT MATTER AND SCOPE OF COPYRIGHT
Sec. 106 - Exclusive rights in copyrighted works
From the U.S. Government Printing Office, www.gpo.gov

§106. Exclusive rights in copyrighted works
Subject to sections 107 through 122, the owner of copyright under this title has the
exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by
sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works,
pantomimes, and motion pictures and other audiovisual works, to perform the
copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works,
pantomimes, and pictorial, graphic, or sculptural works, including the individual
images of a motion picture or other audiovisual work, to display the copyrighted
work publicly; and
(6) in the case of sound recordings, to perform the copyrighted work publicly by
means of a digital audio transmission.
(Pub. L. 94–553, title I, §101, Oct. 19, 1976, 90 Stat. 2546; Pub. L. 101–318, §3(d),
July 3, 1990, 104 Stat. 288; Pub. L. 101–650, title VII, §704(b)(2), Dec. 1, 1990, 104
Stat. 5134; Pub. L. 104–39, §2, Nov. 1, 1995, 109 Stat. 336; Pub. L. 106–44, §1(g)(2),
Aug. 5, 1999, 113 Stat. 222; Pub. L. 107–273, div. C, title III, §13210(4)(A), Nov. 2,
2002, 116 Stat. 1909.)

SPA-36

17 U.S.C.
United States Code, 2012 Edition
Title 17 - COPYRIGHTS
CHAPTER 1 - SUBJECT MATTER AND SCOPE OF COPYRIGHT
Sec. 107 - Limitations on exclusive rights: Fair use
From the U.S. Government Printing Office, www.gpo.gov

§107. Limitations on exclusive rights: Fair use
Notwithstanding the provisions of sections 106 and 106A, the fair use of a
copyrighted work, including such use by reproduction in copies or phonorecords or by
any other means specified by that section, for purposes such as criticism, comment,
news reporting, teaching (including multiple copies for classroom use), scholarship, or
research, is not an infringement of copyright. In determining whether the use made of
a work in any particular case is a fair use the factors to be considered shall include—
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted
work.
The fact that a work is unpublished shall not itself bar a finding of fair use if such
finding is made upon consideration of all the above factors.
(Pub. L. 94–553, title I, §101, Oct. 19, 1976, 90 Stat. 2546; Pub. L. 101–650, title VI,
§607, Dec. 1, 1990, 104 Stat. 5132; Pub. L. 102–492, Oct. 24, 1992, 106 Stat. 3145.)

SPA-37

17 U.S.C.
United States Code, 2012 Edition
Title 17 - COPYRIGHTS
CHAPTER 1 - SUBJECT MATTER AND SCOPE OF COPYRIGHT
Sec. 108 - Limitations on exclusive rights: Reproduction by libraries and archives
From the U.S. Government Printing Office, www.gpo.gov

§108. Limitations on exclusive rights: Reproduction by libraries and archives
(a) Except as otherwise provided in this title and notwithstanding the provisions of
section 106, it is not an infringement of copyright for a library or archives, or any of
its employees acting within the scope of their employment, to reproduce no more than
one copy or phonorecord of a work, except as provided in subsections (b) and (c), or
to distribute such copy or phonorecord, under the conditions specified by this section,
if—
(1) the reproduction or distribution is made without any purpose of direct or
indirect commercial advantage;
(2) the collections of the library or archives are (i) open to the public, or (ii)
available not only to researchers affiliated with the library or archives or with the
institution of which it is a part, but also to other persons doing research in a
specialized field; and
(3) the reproduction or distribution of the work includes a notice of copyright that
appears on the copy or phonorecord that is reproduced under the provisions of this
section, or includes a legend stating that the work may be protected by copyright if
no such notice can be found on the copy or phonorecord that is reproduced under
the provisions of this section.
(b) The rights of reproduction and distribution under this section apply to three
copies or phonorecords of an unpublished work duplicated solely for purposes of
preservation and security or for deposit for research use in another library or archives
of the type described by clause (2) of subsection (a), if—
(1) the copy or phonorecord reproduced is currently in the collections of the
library or archives; and
(2) any such copy or phonorecord that is reproduced in digital format is not
otherwise distributed in that format and is not made available to the public in that
format outside the premises of the library or archives.
(c) The right of reproduction under this section applies to three copies or
phonorecords of a published work duplicated solely for the purpose of replacement of

SPA-38

a copy or phonorecord that is damaged, deteriorating, lost, or stolen, or if the existing
format in which the work is stored has become obsolete, if—
(1) the library or archives has, after a reasonable effort, determined that an unused
replacement cannot be obtained at a fair price; and
(2) any such copy or phonorecord that is reproduced in digital format is not made
available to the public in that format outside the premises of the library or archives
in lawful possession of such copy.
For purposes of this subsection, a format shall be considered obsolete if the machine
or device necessary to render perceptible a work stored in that format is no longer
manufactured or is no longer reasonably available in the commercial marketplace.
(d) The rights of reproduction and distribution under this section apply to a copy,
made from the collection of a library or archives where the user makes his or her
request or from that of another library or archives, of no more than one article or other
contribution to a copyrighted collection or periodical issue, or to a copy or
phonorecord of a small part of any other copyrighted work, if—
(1) the copy or phonorecord becomes the property of the user, and the library or
archives has had no notice that the copy or phonorecord would be used for any
purpose other than private study, scholarship, or research; and
(2) the library or archives displays prominently, at the place where orders are
accepted, and includes on its order form, a warning of copyright in accordance with
requirements that the Register of Copyrights shall prescribe by regulation.
(e) The rights of reproduction and distribution under this section apply to the entire
work, or to a substantial part of it, made from the collection of a library or archives
where the user makes his or her request or from that of another library or archives, if
the library or archives has first determined, on the basis of a reasonable investigation,
that a copy or phonorecord of the copyrighted work cannot be obtained at a fair price,
if—
(1) the copy or phonorecord becomes the property of the user, and the library or
archives has had no notice that the copy or phonorecord would be used for any
purpose other than private study, scholarship, or research; and
(2) the library or archives displays prominently, at the place where orders are
accepted, and includes on its order form, a warning of copyright in accordance with
requirements that the Register of Copyrights shall prescribe by regulation.
(f) Nothing in this section—
(1) shall be construed to impose liability for copyright infringement upon a
library or archives or its employees for the unsupervised use of reproducing

SPA-39

equipment located on its premises: Provided, That such equipment displays a notice
that the making of a copy may be subject to the copyright law;
(2) excuses a person who uses such reproducing equipment or who requests a
copy or phonorecord under subsection (d) from liability for copyright infringement
for any such act, or for any later use of such copy or phonorecord, if it exceeds fair
use as provided by section 107;
(3) shall be construed to limit the reproduction and distribution by lending of a
limited number of copies and excerpts by a library or archives of an audiovisual
news program, subject to clauses (1), (2), and (3) of subsection (a); or
(4) in any way affects the right of fair use as provided by section 107, or any
contractual obligations assumed at any time by the library or archives when it
obtained a copy or phonorecord of a work in its collections.
(g) The rights of reproduction and distribution under this section extend to the
isolated and unrelated reproduction or distribution of a single copy or phonorecord of
the same material on separate occasions, but do not extend to cases where the library
or archives, or its employee—
(1) is aware or has substantial reason to believe that it is engaging in the related or
concerted reproduction or distribution of multiple copies or phonorecords of the
same material, whether made on one occasion or over a period of time, and whether
intended for aggregate use by one or more individuals or for separate use by the
individual members of a group; or
(2) engages in the systematic reproduction or distribution of single or multiple
copies or phonorecords of material described in subsection (d): Provided, That
nothing in this clause prevents a library or archives from participating in interlibrary
arrangements that do not have, as their purpose or effect, that the library or archives
receiving such copies or phonorecords for distribution does so in such aggregate
quantities as to substitute for a subscription to or purchase of such work.
(h)(1) For purposes of this section, during the last 20 years of any term of copyright
of a published work, a library or archives, including a nonprofit educational institution
that functions as such, may reproduce, distribute, display, or perform in facsimile or
digital form a copy or phonorecord of such work, or portions thereof, for purposes of
preservation, scholarship, or research, if such library or archives has first determined,
on the basis of a reasonable investigation, that none of the conditions set forth in
subparagraphs (A), (B), and (C) of paragraph (2) apply.
(2) No reproduction, distribution, display, or performance is authorized under this
subsection if—
(A) the work is subject to normal commercial exploitation;

SPA-40

(B) a copy or phonorecord of the work can be obtained at a reasonable price; or
(C) the copyright owner or its agent provides notice pursuant to regulations
promulgated by the Register of Copyrights that either of the conditions set forth in
subparagraphs (A) and (B) applies.
(3) The exemption provided in this subsection does not apply to any subsequent
uses by users other than such library or archives.
(i) The rights of reproduction and distribution under this section do not apply to a
musical work, a pictorial, graphic or sculptural work, or a motion picture or other
audiovisual work other than an audiovisual work dealing with news, except that no
such limitation shall apply with respect to rights granted by subsections (b), (c), and
(h), or with respect to pictorial or graphic works published as illustrations, diagrams,
or similar adjuncts to works of which copies are reproduced or distributed in
accordance with subsections (d) and (e).
(Pub. L. 94–553, title I, §101, Oct. 19, 1976, 90 Stat. 2546; Pub. L. 102–307, title III,
§301, June 26, 1992, 106 Stat. 272; Pub. L. 105–80, §12(a)(4), Nov. 13, 1997, 111
Stat. 1534; Pub. L. 105–298, title I, §104, Oct. 27, 1998, 112 Stat. 2829; Pub. L. 105–
304, title IV, §404, Oct. 28, 1998, 112 Stat. 2889; Pub. L. 109–9, title IV, §402, Apr.
27, 2005, 119 Stat. 227.)