The Authors Guild v. Google, Inc.

Filing 57

AMICUS BRIEF, on behalf of Amicus Curiae International Publishers Association, International Association of Scientific, Technical and Medical Publishers, International Federation of Reproduction Rights Organisations and Marybeth Peters, FILED. Service date 04/14/2014 by CM/ECF. [1201097] [13-4829]--[Edited 04/15/2014 by KG]

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 OF AMICI CURIAE INTERNATIONAL PUBLISHERS
ASSOCIATION (IPA), INTERNATIONAL ASSOCIATION OF
SCIENTIFIC, TECHNICAL AND MEDICAL PUBLISHERS
(STM), INTERNATIONAL FEDERATION OF
REPRODUCTION RIGHTS ORGANISATIONS (IFFRO),
AND FORMER U.S. REGISTER OF COPYRIGHTS
MARYBETH PETERS IN SUPPORT OF APPELLANTS
JOAN MORGAN MCGIVERN
Attorney for Amici Curiae
110 East 57th Street, Suite 14H
New York, New York 10022
[phone]

CORPORATE DISCLOSURE STATEMENT
Pursuant to Federal Rule of Appellate Procedure 26.1, the undersigned
attorney of record for Amici Curiae certifies as follows:
1.

The International Publishers Association has no parent corporation,

and no publicly held company holds more than 10% of its stock.
2.

The International Association of Scientific, Technical and Medical

Publishers has no parent corporation, and no publicly held company holds more
than 10% of its stock.
3.

The International Federation of Reproduction Rights Organisations

has no parent corporation, and no publicly held company holds more than 10% of
its stock.
4.

Former Register of Copyrights Marybeth Peters is an individual.

DATED: April 14, 2014

By: /s/ Joan Morgan McGivern
Joan Morgan McGivern
Attorney for Amici Curiae

i

TABLE OF CONTENTS
Page
INTERESTS OF AMICI CURIAE ............................................................................ 1
SUMMARY OF ARGUMENT ................................................................................ 3
ARGUMENT ............................................................................................................ 6
I.

The District Court’s Approach To Fair Use Is Inconsistent
With The International Obligations Of The United States. ............................ 6
A.

The United States Has Agreed To Ensure That All Limitations
On The Exclusive Rights Of Copyright Owners
Will Comply With A “Three-Step Test.”............................................. 6
1.
2.

Limitations Must Not Conflict With The Normal
Exploitation Of Works...............................................................11

3.
B.

Limitations Must Be Confined To Certain Special Cases. .......10

Limitations Must Not Unreasonably Prejudice
The Legitimate Interests Of Copyright Owners. .......................13

The Scope And Impact Of Google’s Mass-Digitization Project Do
Not Meet The International Norm Of The Three-Step Test. ............. 14
1.
2.

II.

The District Court Did Not Confine Its Fair Use
Holding To Certain Special Cases............................................14
The District Court Did Not Take Into Account The
Legitimate Interest Of Publishers In Entering And
Developing Markets For Digital Exploitation
Of Their Works. .........................................................................16

Requiring Google To Pay For The Right To Digitize Books
Would Better Serve The Purposes Of Copyright Law. ................................ 19
A.

Finding Google Liable Would Not Necessarily
Put An End To Google’s Digitization Project. .................................. 19

ii

TABLE OF CONTENTS
Page
B.

Equitable Solutions For Mass Digitization
Are Already In Place In Other Countries. .......................................... 24

CONCLUSION ....................................................................................................... 29
CERTIFICATE OF COMPLIANCE WITH
FEDERAL RULE OF APPELLATE PROCEDURE 32(A)........................ 30
CERTIFICATE OF SERVICE ............................................................................... 31

iii

TABLE OF AUTHORITIES
Page(s)
CASES
Abend v. MCA, Inc.,
863 F.2d 1465 (9th Cir. 1988) ............................................................................ 21
Am. Geophysical Union v. Texaco Inc.,
60 F.3d 913 (2d Cir. 1994) .................................................................5, 12, 18, 25
Associated Press v. Meltwater U.S. Holdings, Inc.,
931 F. Supp. 2d 537 (S.D.N.Y. 2013) ................................................................ 20
Authors Guild, Inc. v. Google Inc.,
954 F. Supp. 2d 282 (S.D.N.Y. 2013) .........................................................passim
Basic Books, Inc. v. Kinko’s Graphics Corp.,
758 F. Supp. 1522 (S.D.N.Y. 1991) ................................................................... 13
Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 2006) .........................................................................12, 19
Blanch v. Koons,
467 F.3d 244 (2d Cir. 2006) ............................................................................... 19
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) .....................................................................................passim
Cariou v. Prince,
714 F.3d 694 (2d Cir. 2013) ........................................................................... 3, 11
Carter v. Helmsley-Spear, Inc.,
71 F.3d 77 (2d Cir. 1995) ..................................................................................... 7
eBay, Inc. v. MercExchange, LLC,
547 U.S. 388 (2006) ................................................................................21, 22, 23
Golan v. Holder,
132 S. Ct. 873 (2012) ...................................................................................... 6, 13
Harper & Row, Publishers, Inc. v. Nation Enters.,
471 U.S. 539 (1985) ............................................................................................ 12
iv

TABLE OF AUTHORITIES
(continued)
Page(s)
Kelly v. Ariba Soft Corp.,
336 F.3d 811 (9th Cir. 2003) .............................................................................. 19
Muchnick v. Thomson Corp.,
509 F.3d 116 (2d Cir. 2007) ............................................................................... 24
Muchnick v. Thomson Corp.,
654 F.3d 242 (2d Cir. 2011) ............................................................................... 24
Murray v. The Charming Betsy,
6 U.S. (2 Cranch) 64 (1804) ................................................................................. 9
N.Y. Times v. Tasini,
533 U.S. 483 (2001) ................................................................................21, 24, 25
Reed Elsevier, Inc. v. Muchnick,
559 U.S. 154 (2010) ............................................................................................ 24
Salinger v. Colting,
607 F.3d 68 (2d Cir. 2010) ................................................................................. 21
UMG Recordings, Inc. v. MP3.com, Inc.,
92 F. Supp. 2d 349 (S.D.N.Y. 2000) .................................................................. 18
United States v. Am. Soc’y of Composers, Authors and Publishers:
In the Matter of the Application for the Determination of
Reasonable License Fees for Performances via Wireless
Transmissions and Internet Transmissions by
AT&T Wireless f/k/a Cingular Wireless,
599 F. Supp. 2d 415 (S.D.N.Y. 2009) ................................................................ 20
United States v. Weingarten,
632 F.3d 60 (2d Cir. 2011) ................................................................................... 9
Universal City Studios v. Sony Corp. of Am.,
659 F.2d 963 (9th Cir. 1981) .............................................................................. 20
Zomba Enters. v. Panorama Records, Inc.,
491 F.3d 574 (6th Cir. 2007) .............................................................................. 12
v

TABLE OF AUTHORITIES
(continued)
Page(s)
STATUTES
Berne Convention Implementation Act of 1988,
Pub. L. No. 100-568, 102 Stat. 2853 ............................................................4, 7, 8
Copyright Act, 17 U.S.C.
§§ 101, et. seq. ............................................................................................2, 6, 21
§ 107........................................................................................................4, 10, 15
§ 110(5) ............................................................................................................... 8
§ 411.................................................................................................................. 24
§ 502(a) ............................................................................................................. 21
Copyright Act of the Republic of Korea, art. 31(3) and (5) (2013) ........................ 17
Digital Millennium Copyright Act,
tit. I, Pub. L. No. 105-304, 112 Stat. 2860, 2861 (1998) .................................. 2, 4
Law No. 2012-287 of March 1, 2012 on the Digital Exploitation
of Unavailable Books of the Twentieth Century (French System) .................... 26
Swedish Act on Copyright in Literary and Artistic Works,
Article 42h (2013) ............................................................................................... 26
United Kingdom Enterprise and Regulatory Reform Act 2013,
pt. 6, sec. 77 ........................................................................................................ 26
Uruguay Round Agreements Act,
Pub. L. No. 103-465, 108 Stat. 4809 (1994) .................................................... 2, 4
OTHER AUTHORITIES
1996 World Intellectual Property Organization’s Copyright Treaty
Dec. 20, 1996, 36 I.L.M. 65..........................................................................2, 4, 7
Agreement on Trade-Related Aspects of Intellectual Property Rights,
Apr. 15, 1994, Marrakesh Agreement Establishing the
World Trade Organization, Annex 1C,
1867 U.S.T. 154, 33 I.L.M. 81 ....................................................................passim
vi

TABLE OF AUTHORITIES
(continued)
Page(s)
Andre Lucas & Pascal Kamina, France, § 8[2][e][iv],
in 1 INTERNATIONAL COPYRIGHT LAW & PRACTICE
(P.E. Geller & M.B. Nimmer, eds., 2013) ....................................................27, 28
Berne Convention for the Protection of Literary and Artistic Works,
Sept. 9, 1886 (Paris Text 1971, as amended Sept. 28, 1979),
25 U.S.T. 1341, 828 U.N.T.S. 221 ................................................................... 4, 6
Eric J. Schwartz & David Nimmer, United States, § 1[1][a],
in 2 INTERNATIONAL COPYRIGHT LAW AND PRACTICE
(P.E. Geller & M.B. Nimmer, eds., 2013) ............................................................ 6
European Commission, Memorandum of Understanding on Key
Principles on the Digitisation and Making Available of Out-ofCommerce Works (2011).................................................................................... 17
Jo Oliver, Copyright in the WTO:
The Panel Decision on the Three-Step Test,
25 COLUM. J.L. & ARTS 119 (2002)....................................................8, 13, 16, 23
John Plender, The Great Google, Facebook and Apple Cash Pile,
FINANCIAL TIMES, Dec. 31, 2013 ........................................................................ 23
Legal Issues In Mass Digitization:
A Preliminary Analysis and Discussion Document,
U.S. Copyright Office (2011) ......................................................................passim
Matt Williams, Recent Second Circuit Opinions Indicate That
Google’s Library Project Is Not Transformative,
25 Cardozo Arts & Ent. L.J. 303 (2007) ............................................................ 19
MIHALY FICSOR, THE LAW OF COPYRIGHT AND THE INTERNET
280-88, 300-03 (2002) .......................................................................................... 7
4 M.B. NIMMER & D. NIMMER, NIMMER ON COPYRIGHT
§ 13.05 (2013) ..................................................................................................... 22
5 NIMMER ON COPYRIGHT
§ 14.06 [A][5][d]................................................................................................. 22
vii

TABLE OF AUTHORITIES
(continued)
Page(s)
III PAUL GOLDSTEIN, GOLDSTEIN ON COPYRIGHT
§ 18.3 (2013) ......................................................................................................... 7
Press Release, Conference of European National Libraries, et al.,
Making Out-of-Commerce Works Available in EU Member States
(Sept. 2012). ........................................................................................................ 27
Press Release, VG Wort, New German Legislation on Orphan
and Out-of-Commerce Works ............................................................................. 26
Rep. of the Panel, United States – Section 110(5) of the U.S.
Copyright Act, WT/DS160/R (June 15, 2000) ............................................passim
Rep. on the WIPO Copyright Treaty (WCT) and WIPO Performances
and Phonograms Treaty (WPPT), S. Comm. on Foreign Relations,
S. EX. REP. NO. 105-25 (1998).............................................................................. 7
Richard Dannay, Copyright Injunctions and Fair Use:
Enter eBay – Four Factor Fatigue or Four-Factor Freedom?,
55 J. Copyright Soc’y U.S.A. 449 (2008) .......................................................... 22
I SAM RICKETSON & JANE C. GINSBURG, INTERNATIONAL COPYRIGHT
AND NEIGHBOURING RIGHTS § 4.38 (2d ed. 2006) ................................................ 8
Tarja Koskinen-Olsson, Collective Management
in the Nordic Countries, in
COLLECTIVE MANAGEMENT OF COPYRIGHT AND RELATED RIGHTS
283-306 (D. Gervais, ed., 2d ed., 2010) ............................................................. 25
U.K. Intellectual Property Office, Extending the Benefits
of Collective Licensing: Consultation on the U.K.’s
New Extended Collective Licensing System (2013) ............................................ 26

viii

INTERESTS OF AMICI CURIAE
The International Publishers Association (“IPA”) is the international
industry federation representing all aspects of book and journal publishing.1
Established in 1896, IPA actively fights against censorship and promotes
copyright, literacy, and freedom of speech on behalf of its member associations
and publishers in more than 55 countries.2
The International Association of Scientific, Technical & Medical Publishers
(“STM”) was founded in 1969 and has its Secretariat in the Netherlands. STM is
the voice of scholarly and academic publishers world-wide and comprises
approximately 120 scientific, technical, medical, and scholarly publishers,
collectively responsible for more than 65% of the global annual output of scientific
and technical research articles, over half the active research journals, and hundreds
of thousands of print and electronic books, reference works, and databases.
The International Federation of Reproduction Rights Organisations
(“IFRRO”), based in Brussels, and its 143 member organizations worldwide,
represent millions of authors and publishers who work to increase the lawful use of
text- and image-based copyrighted works and to eliminate unauthorized copying,

All parties consented to Amici filing this brief. No party’s counsel authored any
part of this brief. Only Amici contributed money to fund this brief.

1

Although the Association of American Publishers, Inc. (“AAP”) is a member of
IPA, it has not participated in the preparation or submission of this brief.

2

1

by promoting efficient collective rights management through Reproduction Rights
Organisations (“RROs”) to complement the efforts of authors, publishers and other
copyright owners.3
Marybeth Peters served as the top copyright official in the United States
government – Register of Copyrights for the Copyright Office of the Library of
Congress – from 1994 to 2010. She has also taught copyright law at the
Columbus School of Law of the Catholic University of America, Georgetown
University Law Center, University of Miami Law School, and John Marshall Law
School. As Register of Copyrights, she testified before Congress on more than 40
occasions. During her tenure, she was instrumental in the consideration and
enactment of many amendments to the Copyright Act, including in particular those
aimed at bringing U.S. copyright law into compliance with international treaty
standards. Examples include the Uruguay Round Agreements Act of 1994, which
implemented the World Trade Organization’s Agreement on Trade-Related
Aspects of Intellectual Property Rights (“TRIPs”), and the Digital Millennium
Copyright Act, which implemented the 1996 World Intellectual Property
Organization’s Copyright Treaty (“WCT”) and Performances and Phonograms
Treaty (“WPPT”). Ms. Peters is currently a Senior Counsel in the law firm Oblon,
Spivack, McClelland, Maier & Neustadt, LLP.
3

AAP is also a member of IFRRO.
2

Collectively, Amici have strong interests in U.S. compliance with copyrightrelated international treaties and agreements and with preserving an effective level
of copyright protection for authors and copyright owners from the U.S. and abroad.
Their breadth of experience with how copyright laws facilitate creative output
around the world provides them with a unique perspective on Google’s massdigitization efforts and on the district court’s erroneous approach to the fair use
doctrine.
SUMMARY OF ARGUMENT
The district court’s fair use analysis conflicts with this Circuit’s precedents,
which require courts to assess each instance of copying on a “case-by-case” basis
to determine, inter alia, whether the defendant has created a transformative work
that provides the public with “new expression, meaning, or message,” or has
instead merely repurposed copyrighted material for commercial purposes in a
manner that harms the copyright owner’s potential markets for exploiting the work.
See, e.g., Cariou v. Prince, 714 F.3d 694, 705-06 (2d Cir. 2013). The district
court’s approach also raises serious questions regarding whether the United States
is complying with its international obligations. Reversing and remanding the case
could lead to a more equitable, calibrated solution, similar to the licensing
solutions that have emerged in other cases and countries.

3

In the past several decades, the United States has embraced and joined the
international system for protecting the exclusive rights of copyright owners,
including by implementing the Berne Convention,4 the WTO TRIPs Agreement,5
and the WIPO Copyright Treaty.6 To ensure that member nations provide an
adequate and effective level of protection for authors and other copyright owners,
these agreements only allow exceptions to exclusive rights, including the
reproduction right, if a “three-step” test is satisfied. E.g., TRIPs, art. 13; WCT, art.
10(2); Berne Convention, art. 9(2). Under this test, all exceptions must be limited
to (1) certain special cases (2) that do not conflict with the normal exploitation of
works and (3) do not unreasonably prejudice the legitimate interests of copyright
owners. Id.
Properly construed, the non-exhaustive statutory factors that Congress has
instructed courts to consider when analyzing the fair use defense – see 17 U.S.C. §

Berne Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886
(Paris Text 1971, as amended Sept. 28, 1979), 25 U.S.T. 1341, 828 U.N.T.S. 221
[hereinafter “Berne Convention”]; see also Berne Convention Implementation Act
of 1988, Pub. L. No. 100-568, 102 Stat. 2853 (implementing Berne Convention).

4

Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15,
1994, Marrakesh Agreement Establishing the World Trade Organization, Annex
1C, 1867 U.S.T. 154, 33 I.L.M. 81 [hereinafter “TRIPs”]; see also Uruguay Round
Agreements Act, Pub. L. No. 103-465, 108 Stat. 4809 (1994) (implementing
TRIPs).

5

WIPO Copyright Treaty, Dec. 20, 1996, 36 I.L.M. 65 [hereinafter “WCT”]; see
also Digital Millennium Copyright Act, tit. I, Pub. L. No. 105-304, 112 Stat. 2860,
2861 (1998) (implementing WCT).

6

4

107 – reflect the same concerns as the three-step test regarding overly expansive
exceptions to exclusive rights. Congress, and the courts, developed the factors to
prevent an exception from swallowing the rule. However, the district court’s
approach to fair use, which absolves Google of all liability for digitizing millions
of books in order to create a publicly accessible database, gave short shrift to these
concerns. The exclusive rights of authors and publishers cannot be allowed to
wither on the vine just because technological progress has made it possible to
render works published in traditional formats more accessible. Thus, Amici
respectfully urge the Court to reverse the district court’s indiscriminate fair use
holding and to remand the case for a more nuanced analysis of the types of books
that Google copied and the various potential markets that already exist for
exploiting those books, and could grow more robustly, but for the hindering effect
of this case.
Under U.S. law and international norms, it is simply not enough to conclude,
as the district court did, that Google’s unauthorized uses are lawful because they
have some social “benefits.” Authors Guild, Inc. v. Google Inc., 954 F. Supp. 2d
282, 287-88, 293 (S.D.N.Y. 2013). Instead, the district court should have explored
thoroughly how “widespread” copying of the type at issue here could harm the
publishing industry. See Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 928
(2d Cir. 1994). Given that copyright owners in other countries are already being
5

paid – through, for example, collective licensing mechanisms – for the types of
uses that Google has unilaterally undertaken, harm is apparent. Thus, even if the
public interest favors Google’s project remaining operational, the proper
mechanism for proceeding would be a calibrated finding of liability, combined
with a measured approach to relief, which should include payments to certain
authors and publishers. Such an approach would be viable under international
norms that bind the U.S.; the district court’s boundless approach to fair use is not.
ARGUMENT
I.

The District Court’s Approach To Fair Use Is Inconsistent With The
International Obligations Of The United States.
A.

The United States Has Agreed To Ensure That All Limitations On
The Exclusive Rights Of Copyright Owners Will Comply With A
“Three-Step Test.”

“Congress [has] determined that U.S. interests [a]re best served by our full
participation in the dominant system of international copyright protection.” Golan
v. Holder, 132 S. Ct. 873, 894 (2012). Thus, beginning in the 1970’s, Congress
passed a series of laws to bring the U.S. Copyright Act into accord with
international norms. See Eric J. Schwartz & David Nimmer, United States, §
1[1][a], in 2 INTERNATIONAL COPYRIGHT LAW AND PRACTICE (P.E. Geller & M.B.
Nimmer, eds., 2013) (listing statutory amendments).
Now, inter alia, the U.S. is obligated to meet the minimum standards for
copyright protection required of members of the Berne Convention, the WTO
6

TRIPs Agreement, and the WCT.7 In exchange for the U.S. recognizing the rights
of foreign nationals, other member nations also protect the rights of U.S. authors
and copyright owners under the principle of national treatment, which “obligates a
country to protect the works of foreign nationals on at least the same terms that it
extends to works of its own nationals.” III PAUL GOLDSTEIN, GOLDSTEIN ON
COPYRIGHT § 18.3 (2013).
This international regime requires the U.S. to provide copyrightable works
of authorship, including virtually all the works contained in the books that Google
copied, with certain exclusive rights, including the right to reproduce the works in
copies and to display the works publicly. Berne Convention, arts. 2, 9(1); TRIPs,
art. 9; WCT, art. 8. The regime also prohibits the U.S. from creating any
exceptions to these exclusive rights, other than (1) in certain special cases that do
not (2) conflict with the normal exploitation of works or (3) unreasonably
prejudice the legitimate interests of copyright owners. See MIHALY FICSOR, THE
These treaties and agreements are not self-executing. See Carter v. HelmsleySpear, Inc., 71 F.3d 77, 83 (2d Cir. 1995). Thus, U.S. accession to these treaties
and compliance with these agreements is based on a determination by the
President, ratified by the Senate, that U.S. law (including the scope of exclusive
rights and exceptions thereto) was fully compliant with the obligations in those
treaties and agreements. See, e.g., WIPO Copyright Treaty (WCT) and WIPO
Performances and Phonograms Treaty (WPPT), S. Comm. on Foreign Relations, S.
EX. REP. NO. 105-25, at 17 (1998) (“[T]he Committee’s resolution of ratification
contains a proviso that prohibits the United States from taking the final step in the
ratification process – the deposit of instruments of ratification for these Treaties –
until the President has signed into law a bill that implements the Treaties.”).
7

7

LAW OF COPYRIGHT AND THE INTERNET 280-88, 300-03 (2002) (discussing article
9(2) of the Berne Convention and article 13 of the TRIPs Agreement). This
standard for judging the legitimacy of limitations and exceptions, which is a
pervasive feature of the entire international copyright system, is referred to as the
“three-step test.”
When a signatory to the TRIPs agreement fails to provide the requisite level
of protection, other WTO members can bring dispute-resolution proceedings
against that country. See I SAM RICKETSON & JANE C. GINSBURG, INTERNATIONAL
COPYRIGHT AND NEIGHBOURING RIGHTS § 4.38 (2d ed. 2006) (summarizing articles
63 and 64 of TRIPs). If a WTO-appointed panel determines that insufficient
protection is provided, monetary sanctions can result. Id.
In one such case, the European Union brought a dispute against the United
States based on overly broad exceptions, contained in section 110(5) of the
Copyright Act, to the exclusive right to publicly perform musical works. See
generally Jo Oliver, Copyright in the WTO: The Panel Decision on the Three-Step
Test, 25 COLUM. J.L. & ARTS 119 (2002). In an authoritative and detailed opinion,
a WTO panel defined the requirements of the three-step test and concluded that the
U.S. statute violated the test by exempting millions of bars, restaurants and other
venues from paying royalties to songwriters and music publishers. See Rep. of the
Panel, United States – Section 110(5) of the U.S. Copyright Act, WT/DS160/R
8

(June 15, 2000) [hereinafter “WTO Report”].8 Subsequently, the U.S. has paid the
E.U. millions of dollars of compensation.9
Ever since the Supreme Court’s decision in Murray v. The Charming Betsy,
6 U.S. (2 Cranch) 64 (1804), U.S. courts have been bound to interpret and apply
statutes passed by Congress in a way that avoids conflicts with the law of nations,
particularly explicit obligations that the U.S. has undertaken by negotiating and
ratifying international treaties. See United States v. Weingarten, 632 F.3d 60, 6465 (2d Cir. 2011) (“[A]n act of Congress ought never to be construed to violate the
law of nations if any other possible construction remains.”) (citation omitted).
Thus, U.S. courts are required to apply the fair use doctrine in a manner that
satisfies the requirements of the three-step test, if there is “any possible
construction” of fair use that would do so. And, in fact, there is no logical reason
why fair use cannot be applied consistently with the three-step test. Indeed,
traditional fair use principles line up with the three-step test quite well. The
decision below is a striking outlier in this regard.

The report is available here:
http://www.wto.org/english/tratop_e/dispu_e/cases_e/ds160_e.htm.
8

The United States Trade Representative summarizes the dispute and payments
here: http://www.ustr.gov/trade-topics/enforcement/dispute-settlementproceedings/united-states-%E2%80%94-section-1105-us-copyright-ac.

9

9

1.

Limitations Must Be Confined To Certain Special Cases.

The first step in the three-step test requires limitations and exceptions to be
confined to “certain special cases.” TRIPs, art. 13. “Certain” cases are those that
are “clearly defined,” such that they provide “a sufficient degree of legal
certainty.” WTO Report ¶ 6.108. “Special” cases are “limited in [their] field of
application or exceptional in [their] scope. In other words, an exception or
limitation should be narrow in [a] quantitative as well as a qualitative sense.” Id. ¶
6.109.
Consistent with this first step of the three-step test, fair use also requires a
“case-by-case” analysis. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577
(1994). The analytical factors identified in the statute’s non-exhaustive list, such
as the “purpose and character of the use,” the “nature of the copyrighted work,”
and “the effect of the use upon the potential market for or value of the copyrighted
work,” call out for such individualized consideration. 17 U.S.C. § 107. Thus, fair
use decisions cannot validly declare broad, vague swaths of conduct to be
categorically lawful for all works, and traditionally they have not done so. Instead,
courts must adjudicate the merits of particular instances of copying by specific
defendants of certain copyrighted works for specific purposes, as well as the
impact of such copying on particular markets.

10

This Court’s recent opinion in Cariou v. Prince, 714 F.3d 694, exemplifies
this well-settled “case-by-case” approach. In Prince, the Court considered 30
instances of copying by a painter of works by a single photographer. Even though
all the works were of the same kind, created by the same author, and copied by the
same copyist, the court examined each use individually, and concluded that while
25 of the 30 were fair uses, remand was necessary for the district court to assess
whether a different outcome should apply to the other 5 instances. This type of
“context-sensitive inquiry” (id. at 704) renders fair use, when properly applied,
available as a defense only in certain special cases, as the first of the three steps
binding on U.S. courts requires.
2.

Limitations Must Not Conflict With The Normal Exploitation Of
Works.

The second step of the three-step test prohibits limitations and exceptions
that conflict with the normal exploitation of works. TRIPs, art. 13. “Normal”
exploitations include those that are regular or significant in the current
marketplace, as well as those that could become regular or significant in the future
as technology progresses. WTO Report ¶ 6.180. A limitation “conflict[s]” with
normal exploitations if it “enter[s] into economic competition with the ways that
right holders normally extract economic value” from works. Id. ¶ 6.183.
Fair use analysis under U.S. law overlaps considerably with this second step
when U.S. courts consider the fourth statutory factor, namely “the effect of the use
11

upon the potential market for or value of the copyrighted work.” See, e.g., Texaco,
60 F.3d at 930 (fourth fair use factor involves assessing what impact a defendant’s
use could have on all of the plaintiff’s “traditional, reasonable, or likely to be
developed markets”). Courts also assess, under the first statutory factor, whether
the nature of a defendant’s use makes it likely to compete with uses that authors
typically exploit. See Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S.
539, 550 (1985) (“[T]he fair use doctrine has always precluded a use that
‘[supersedes] the use of the original.’”) (citation omitted). This analysis includes,
importantly, determining whether a use is “transformative.” See Bill Graham
Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 608 (2d Cir. 2006) (“The
question is ‘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.’”) (citations
omitted). Where a use is not transformative, the “commercial” nature of a use
weighs more heavily against a fair use finding, because commercial uses are more
likely to supplant methods of normal exploitation. See Campbell, 510 U.S. at
579.10
Commercial enterprises cannot stand in the shoes of their customers who make
non-commercial uses. See, e.g., Zomba Enters. v. Panorama Records, Inc., 491
F.3d 574, 582 (6th Cir. 2007) (“[T]he end-user’s utilization of the product is
largely irrelevant; instead, the focus is on whether alleged infringer’s use is
transformative and/or commercial.”).

10

12

3.

Limitations Must Not Unreasonably Prejudice The Legitimate
Interests Of Copyright Owners.

The third step in the three-step test prohibits limitations and exceptions that
unreasonably prejudice the legitimate interests of copyright owners. TRIPs, art.
13. The “legitimate” interests of copyright owners include those that are consistent
with copyright’s underlying purpose and goals, both economic and moral. See
WTO Report ¶ 6.224. A limitation unreasonably prejudices those interests where
it “causes, or has the potential to cause, an unreasonable loss of income to
copyright owners,” if the limitation were widely used.11 Id. at ¶¶ 6.225, 6.226,
6.229.
As the Supreme Court has regularly articulated, the purpose of copyright law
is to provide incentives for authors and their business partners to generate and
disseminate new works of authorship. See, e.g., Golan, 132 S. Ct. at 889 (“Our
decisions . . . recognize that ‘copyright supplies the economic incentive to create
and disseminate ideas.’”) (emphasis in original) (citation omitted); see also Basic
Books, Inc. v. Kinko’s Graphics Corp., 758 F. Supp. 1522, 1529-30 (S.D.N.Y.
1991) (“The copyright law, through the fair use doctrine, has promoted the goal of
encouraging creative expression and integrity by ensuring that those who produce
intellectual works may benefit from them.”).
Where allowing an unlicensed use would unreasonably prejudice the legitimate
interests of copyright owners, a compulsory license or some form of compensation,
at least, must be provided for. See Oliver, supra p. 8, at 169.

11

13

In order to ensure that the fair use defense does not undermine these
incentives, courts consider, under the fourth statutory factor, whether creative
output could be inhibited by allowing a defendant, and all persons similarly
situated to that defendant, to engage in a use without authorization. See Campbell,
510 U.S. at 590 (The fourth U.S. fair use factor “requires courts to consider not
only the extent of market harm caused by the particular actions of the alleged
infringer, but also ‘whether unrestricted and widespread conduct of the sort
engaged in by the defendant . . . would result in a substantially adverse impact on
the potential market’ for the original.”) (citation omitted). Thus, the fair use
factors, when properly construed, shield creators from the same harms, and protect
the public from the same threats to its welfare that the three-step test is designed to
prevent.
B.

The Scope And Impact Of Google’s Mass-Digitization Project Do Not
Meet The International Norm Of The Three-Step Test.
1.

The District Court Did Not Confine Its Fair Use Holding To
Certain Special Cases.

The scope of Google’s copying is mind-boggling. The Internet giant has
copied tens of millions of books. Anything between two covers was fair game,
without regard to whether the books were in-print or out-of-print; whether they
were published last week, last year, or 50 or 100 years ago; whether their contents
were fiction or non-fiction, prose or poetry; whether they were first published in
14

the U.S. or abroad; whether they were best sellers or self-published works of
obscurity. Compilations, reference books, romance novels, technical manuals, and
works of literary criticism, for example, were all digitized verbatim and in toto.
Perhaps due to the unprecedented amount of copying at issue here, the
district court did not analyze the nature of each copied work separately; nor did it
even attempt to engage in a “case-by-case” analysis of any of the categories into
which these works could reasonably have been classified. Authors Guild, 954 F.
Supp. 2d at 291-94. Instead, just as Google copied every book without
discrimination or differentiation, so too the court below considered all this copying
en masse, and concluded that all of it was lawful because it serves the beneficial
purpose of “expand[ing] access to books.” Id. at 288, 293.
This approach disrespected the long U.S. legal tradition of requiring nuanced
analyses of fair use defenses, and cannot be squared with the binding obligation
that U.S. law confine exceptions to copyright protection to “certain special cases.”
TRIPs, art. 13. It is self-evident that the operation of any of the section 107
statutory factors, or of the second and third “steps” of the international three-step
test, could vary dramatically among the different categories of publications
involved. While Amici recognize that the unprecedented scope of massdigitization projects such as Google’s puts the long-standing norm that fair use
must be assessed on a “case-by-case” basis under considerable stress, that norm
15

was authoritatively established as Supreme Court law in Campbell, 510 U.S. at
577, and the court below was bound to follow it. As well, it defies logic that an
exception to copyright protection that allows every book in massive university
libraries to be copied in its entirety, without discriminating among the differential
impacts of such copying on different categories of works or the different audiences
they seek to serve, could be considered an exception that applies only to “certain
special cases.” Since a copyright exception must satisfy all three of the steps in the
international standard in order to be acceptable (Oliver, supra p.8, at 150-51), the
divergence between the first step and the approach taken by the court below should
be sufficient by itself to require a remand.
2.

The District Court Did Not Take Into Account The Legitimate
Interest Of Publishers In Entering And Developing Markets For
Digital Exploitation Of Their Works.

Markets for mass digitization of books are already emerging in the U.S. and
abroad. As the U.S. Copyright Office discussed in its 2011 report, Legal Issues In
Mass Digitization: A Preliminary Analysis and Discussion Document [hereinafter
“Legal Issues”],12 the Nordic countries (Denmark, Finland, Iceland, Norway and
Sweden) have had in place for some years privately-negotiated, collective licensing
agreements, buttressed by statutes that extend their terms to significant numbers of
works. See infra section II(B). More recently, the European Commission
The report is available here: http://www.copyright.gov/docs/massdigitization/,
follow link to “Full Discussion Document.”
12

16

facilitated a privately-negotiated memorandum of understanding (“MoU”)
regarding the digitization and making available of out-of-print works by non-profit
libraries through collective licenses.13 Id. Since that time, several E.U. countries
have adopted schemes to implement such licensing practices.14 Id.
As the world increasingly becomes an interconnected, digital marketplace,
exploiting opportunities for digital distribution and display is increasingly
“normal.” Google’s commercial mass-digitization project hinders authors’ and
publishers’ negotiations with other potential licensees, and thus conflicts with, and
unreasonably prejudices, publishers’ efforts to compete in the digital arena.15 For
example, the ability of Google to make unauthorized databases available for free
interferes with the launch of licensed databases, including those which could
provide more unrestricted access to books – and thus could be of greater and more
certain public benefit – than what even the district court’s vague conception of fair
use allows Google to offer. Valuable and socially beneficial business models may
The MoU is available here:
http://ec.europa.eu/internal_market/copyright/docs/copyright-infso/20110920mou_en.pdf.

13

South Korea has also adopted a regime for mass digitization within libraries
whereby the libraries compensate copyright owners. See Copyright Act of the
Republic of Korea, art. 31(3) and (5), available at http://eng.copyright.or.kr/.

14

Google benefits commercially because the availability of digitized books
through the Google search engine draws users to Google’s service. See Authors
Guild Brief at 14-15, 24-30. Google, among other things, collects data on the
searches and other online activities of consumers, which enables it to deliver
advertisements to them more efficiently and in a more targeted fashion.

15

17

never see the light of day because unfair competition from Google reduces
incentives by cutting into the profits that licensed services could otherwise yield.
As this Court has recognized, almost all commercial, non-transformative
uses, such as Google’s, that do not involve the creation of new works of
authorship, present this kind of unfair competition with authorized offerings. See
Texaco, 60 F.3d at 923 (“Rather than making some contribution of new intellectual
value and thereby fostering the advancement of the arts and sciences, an
untransformed copy is likely to be used simply for the same intrinsic purpose as
the original, thereby providing limited justification for a finding of fair use.”).
That is why the Supreme Court has said that transformative uses should be favored
under the first statutory factor: they are unlikely to “supersede the objects of the
original.” Campbell, 501 U.S. at 578-79.
Since Campbell, courts in this Circuit have rejected the argument that using
a work in a new format, alone, renders the use transformative. See, e.g., UMG
Recordings, Inc. v. MP3.com, Inc., 92 F. Supp. 2d 349, 351 (S.D.N.Y. 2000)
(“[D]efendant adds no ‘new aesthetics, new insights and understandings’ to the
original music recordings it copies, [] but simply repackages those recordings to
facilitate their transmission through another medium. While such services may be
innovative, they are not transformative.”) (citation omitted). Yet, the district court
based its view of transformation on Ninth Circuit cases that are inconsistent with
18

this Circuit’s own precedents. See generally Matt Williams, Recent Second Circuit
Opinions Indicate That Google’s Library Project Is Not Transformative, 25
Cardozo Arts & Ent. L.J. 303 (2007) (distinguishing Kelly v. Ariba Soft Corp., 336
F.3d 811 (9th Cir. 2003) from Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006) and
Bill Graham Archives, 448 F.3d 605). The district court’s expansive definition of
“transformative,” which lacks any contours and merely asks whether a use has
public benefits, undercuts the legitimate expectations of copyright owners and
undermine copyright’s objectives. Because this approach to fair use favors users
who threaten the welfare of individual copyright owners and also weakens the
economic scheme for stimulating creative production, it does not satisfy the second
and third steps of the three-step test.
II.

Requiring Google To Pay For The Right To Digitize Books Would
Better Serve The Purposes Of Copyright Law.
A.

Finding Google Liable Would Not Necessarily Put An End To
Google’s Digitization Project.

The court below acted as if it faced a Hobson’s Choice between shutting
down a mass-digitization program with undisputed social benefits, or changing the
fair use analysis to allow Google to make complete copies of any and all works it
chose to exploit. This was a false dichotomy. If the district court had analyzed the
fair use factors according to their different impacts on different categories of books
(as both the “case by case” fair use doctrine and the three-step test would have
19

required), it could have concluded that the mass digitization of some categories
respected the bounds of fair use while mass copying of other categories exceeded
those bounds.
For example, many researchers often seek out only as much information as
would be contained in one or a few “snippets.” While displaying snippets of
lengthy novels might not harm the markets for those books, displaying snippets
from technical manuals, scientific treatises, or other non-fiction works used for
research purposes impacts existing markets for those works. See Associated Press
v. Meltwater U.S. Holdings, Inc., 931 F. Supp. 2d 537, 560-61 (S.D.N.Y. 2013)
(making available small portions of news stories was not fair use); United States v.
Am. Soc’y of Composers, Authors and Publishers: In the Matter of the Application
for the Determination of Reasonable License Fees for Performances via Wireless
Transmissions and Internet Transmissions by AT&T Wireless f/k/a Cingular
Wireless, 599 F. Supp. 2d 415, 431-33 (S.D.N.Y. 2009) (making available small
portions of songs for online listening was not fair use).
If the district court had found Google liable for some, or even for all, of its
copying, fashioning the appropriate damages and injunctive relief would,
admittedly, be a very difficult task. “[T]he difficulty of fashioning relief cannot,
however, dissuade the federal courts from affording appropriate relief to those
whose rights have been infringed.” Universal City Studios v. Sony Corp. of Am.,
20

659 F.2d 963, 976 (9th Cir. 1981), rev’d on other grounds by 464 U.S. 417 (1984).
That “appropriate relief” might well have included allowing the program to
continue so long as provision was made for compensation to the copyright owners
whose rights had been infringed.
The Copyright Act states that a court “may” enjoin infringement. 17 U.S.C.
§ 502(a). Thus, U.S. courts have made clear that issuing permanent injunctions in
copyright cases is a matter of discretion. Sometimes, injunctions are not in the
public interest. See, e.g., Campbell, 510 U.S. at 578 n.10 (“[T]he goals of
copyright law . . . are not always best served by automatically granting injunctive
relief.”); N.Y. Times v. Tasini, 533 U.S. 483, 505 (2001) (“[I]t hardly follows from
today’s decision [finding infringement] that an injunction . . . must issue.”); Abend
v. MCA, Inc., 863 F.2d 1465, 1479 (9th Cir. 1988) (“[W]here great public injury
would be worked by an injunction, the courts might . . . award damages or a
continuing royalty instead of an injunction in such special circumstances.”)
(citation omitted), aff’d sub nom. Stewart v. Abend, 495 U.S. 207 (1990).
In eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), the Supreme
Court ruled that even where a court determines that infringement has occurred, it
must carefully assess whether equity favors the issuance of a complete injunction.
See Salinger v. Colting, 607 F.3d 68, 76-83 (2d Cir. 2010) (remanding for

21

reconsideration of injunctive relief analysis in case involving unauthorized sequel
to Catcher In The Rye).
According to well-established principles of equity, a plaintiff seeking
a permanent injunction must satisfy a four-factor test before a court
may grant such relief. A plaintiff must demonstrate: (1) that it has
suffered an irreparable injury; (2) that remedies available at law, such
as monetary damages, are inadequate to compensate for that injury;
(3) that, considering the balance of hardships between the plaintiff and
defendant, a remedy in equity is warranted; and (4) that the public
interest would not be disserved by a permanent injunction.
eBay, 547 U.S. at 391.
Here, even if the district court found infringement, it would have needed to
consider these factors, and to determine what scope of injunctive relief was most
appropriate, including whether ordering Google to pay copyright owners in
exchange for the continued operation of some aspects of its accessible database
would better serve the public interest than shutting down the project entirely. See 4
M.B. NIMMER & D. NIMMER, NIMMER ON COPYRIGHT § 13.05 (2013) (endorsing
concept that courts may order infringers to make mandatory ongoing payments
rather than issuing permanent injunctions); 5 NIMMER ON COPYRIGHT § 14.06
[A][5][d](“exceptional cases can arise” where the public interest does not favor the
issuance of permanent injunctions against infringers who assert unsuccessful fair
use defenses); Richard Dannay, Copyright Injunctions and Fair Use: Enter eBay –
Four Factor Fatigue or Four-Factor Freedom?, 55 J. Copyright Soc’y U.S.A. 449,
459 (2008) (“The threat of injunctive relief has always been the 800-pound gorilla
22

in the fair use road. The additional eBay four-factor test . . . should compel more
serious attention to the propriety of the remedy in each case.”) (emphasis in
original).
If this Court reverses the district court’s blanket fair use ruling, it should also
remand with instructions to the district court to carefully conduct the eBay
analysis, should the case proceed to its merits. A solution that would lead Google
to make appropriate payments, rather than issuing a complete injunction, would not
only fulfill eBay’s requirements, but could also satisfy the three-step test (1) by
refining the scope of the allowable uses to specified cases; (2) acknowledging the
copyright owner’s exclusive right to exploit the market for access to digital copies
of her works; and (3) “curing” through monetary compensation the unreasonable
prejudice to the copyright owner’s legitimate interest in exploiting that market.
See Oliver, supra p. 8, at 169 (international law allows for compensating authors
for unauthorized exploitations in some circumstances).16

Google clearly has the resources to compensate authors and publishers for using
their works. See Authors Guild, 954 F. Supp. 2d at 285 (“Google is a for-profit
entity, and for the year ended December 31, 2011, it reported over $36.5 billion in
advertising revenues.”); John Plender, The Great Google, Facebook and Apple
Cash Pile, FINANCIAL TIMES, Dec. 31, 2013, available at
http://www.cnbc.com/id/101302701. Further enriching this corporation at the
expense of creators by diminishing copyright protection is perverse, when the law
provides a channel for a more equitable outcome.

16

23

Remand would also put the case in a posture where the parties would be
more likely either to explore the option of seeking a legislative resolution, or to
agree upon an appropriate licensing solution. The latter is what happened after the
Supreme Court, in Tasini, affirmed this Court’s opinion and held that electronic
database providers infringed the copyrights in myriad news articles by copying
them and rendering them accessible without the permission of their authors. See
Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 158-59 (2010) (describing
subsequent settlement). There, after remand, court-ordered mediation led the
parties to a deal that provided compensation to authors and also enabled the articles
to remain accessible via the databases. Muchnick v. Thomson Corp., 509 F.3d 116,
120 (2d Cir. 2007).17 Here too, a finding of liability could, after remand, result in a
negotiated solution that benefits copyright owners, Google, and the public.
B.

Equitable Solutions For Mass Digitization Are Already In Place In
Other Countries.

Negotiated solutions to the problems presented by mass-digitization projects,
in the form of extended collective licenses (“ECLs”),18 compulsory collective

Although this Court initially rejected the settlement after concluding that it
covered claims that the Court lacked jurisdiction to hear under 17 U.S.C. § 411,
which requires copyright registration prior to bringing a lawsuit, the Supreme
Court reversed that holding. Muchnick, 559 U.S. at 160. This Court then
remanded the case to the district court for proper class certification. See generally
Muchnick v. Thomson Corp., 654 F.3d 242 (2d Cir. 2011).
17

Extended collective licenses involve government authorization of collective
organizations to negotiate licenses for a particular class of works or a particular
24

18

management, or on the basis of a legal presumption of representation by collective
management organizations, have been implemented abroad, and here, through
private negotiations (see supra section II(A), Tasini, 533 U.S. at 498).19 U.S.
courts should take these developments into consideration in cases involving mass
digitization, both in applying the fair use statutory factors (consistent with the
three-step test), and in fashioning the appropriate remedy for any infringement
found. See Texaco, 60 F.3d at 930 (availability of licenses for use at issue weighs
against fair use defense where use is not transformative).
Such licenses, which now cover certain types of mass digitization, have long
been in place in the Nordic countries, including Denmark, Finland, Iceland,
Norway, and Sweden. See Legal Issues, supra p. 16, Appendix F (summarizing
the Nordic systems); Tarja Koskinen-Olsson, Collective Management in the Nordic
Countries, in COLLECTIVE MANAGEMENT OF COPYRIGHT AND RELATED RIGHTS

class of uses. See Legal Issues, supra p. 16, at 35. Once the designated collective
organization freely negotiates a license for a particular class of works with a
particular class of users, that license is extended by statute and/or by regulation to
all of the works in that class, including works owned by persons who are not
members of the collective organization. Id. The licensed users then pay royalties
to the collective organization, which are distributed to copyright owners. Id. In
some instances, copyright owners can “opt out” of extended collective licenses. Id.
A publication jointly authored by WIPO and IFRRO that summarizes different
collective management models is available here:
http://www.ifrro.org/sites/default/files/wipo_ifrro_collective_management_1.pdf.

19

25

283-306 (D. Gervais, ed., 2d ed., 2010) (same).20 Recently other E.U. countries,
including France, Germany, and the United Kingdom, have also allowed certain
types of mass digitization pursuant to specific terms, which include processes by
which copyright owners may proactively withdraw their works.21 These
developments took place after the European Commission “asked a group of
authors, publishers, and other stakeholders to develop a proposal for digitizing ‘out
of commerce’ (out-of-print) literary works . . . and for making these works
available to the public for noncommercial use.” Legal Issues, supra, at 36. The
discussions led to a memorandum of understanding (“MoU”) that enables “national
libraries and other cultural institutions to license [the right to copy and
The Swedish ECL regime for mass digitization, set forth in article 42h of the Act
on Copyright in Literary and Artistic Works, took effect in November 2013. An
unofficial English translation of the Swedish law is available here:
http://www.regeringen.se/content/1/c6/01/22/48/5956fbbf.pdf.

20

For information on the French system, see Law No. 2012-287 of March 1, 2012
on the Digital Exploitation of Unavailable Books of the Twentieth Century,
available at http://www.wipo.int/wipolex/en/details.jsp?id=12007. For
information on the German system, see Press Release, VG Wort, New German
Legislation on Orphan and Out-of-Commerce Works, available at
http://www.vgwort.de/fileadmin/pdf/allgemeine_pdf/German_legislation_on_orph
an_and_out-of-commerce_works.pdf. For information on the U.K. system, see
U.K. Intellectual Property Office, Extending the Benefits of Collective Licensing:
Consultation on the U.K.’s New Extended Collective Licensing System (2013),
available at http://www.ipo.gov.uk/consult-2013-ecl.pdf (describing process for
approving regulations to implement ECL regime); Enterprise and Regulatory
Reform Act 2013, pt. 6, sec. 77, available at
http://www.legislation.gov.uk/ukpga/2013/24/contents/enacted (setting out new
statutory provisions establishing ECL regime in U.K.). The U.K. has not yet fully
implemented its regime, which requires the adoption of governing regulations.

21

26

disseminate] books and journals from collective organizations[,]. . . although rights
holders would be allowed to opt out of the system and withdraw their works from a
particular project upon request.” Id.22
The French scheme provides a good specific example of how these systems
work generally. In France, books are now available for mass digitization if they
were first published in France before January 1, 2001, are not commercially
distributed by a publisher, and are no longer published in print or digital form. See
Andre Lucas & Pascal Kamina, France, § 8[2][e][iv], in 1, INTERNATIONAL
COPYRIGHT LAW & PRACTICE (P.E. Geller & M.B. Nimmer, eds., 2013).
Any person can request that these books be included in a public
database maintained by the National Library. During six months
following this inclusion, the author or prior publisher may object to it,
entitling it to bring the book back into exploitation within two years.
Failing such objection or exploitation, a collective-management
society will exercise the right to authorize the digital reproduction and
the representation of the book and to collect royalties for such use.
The author or publisher of the print version retains a right of
preference with regard to the exploitation proposed by this society. At
any stage, the author, if he has retained the relevant rights, or the
publisher under certain conditions, can terminate the exploitation
through the collective-management society, subject to transitional
arrangements. The fees collected by the collecting society are
distributed between known authors and publishers or retained for ten
years for orphan works, after which they are used for general
purposes.
Id.
See Press Release, Conference of European National Libraries, et al., Making
Out-of-Commerce Works Available in EU Member States (Sept. 2012), available
at http://www.ifrro.org/sites/default/files/2page_on_mou_oocw-omit_2.pdf.

22

27

Similarly, Sweden enacted a “general” ECL regime in 2013 that allows a
user to digitize published works and make them available, through the Internet or
otherwise, so long as a collective management organization that represents a
significant number of copyright owners has voluntarily negotiated an agreement
with the user or a group to which the user belongs. See note 20, supra. The
statute requires such a user to make payments to the organization, which any
copyright owner, including non-members, can collect if a request is made within
three years of the use. Id. All works by all authors are covered by this general
ECL scheme, unless an author files a statement with the contracting parties
instructing them not to use her works or “there are otherwise specific reasons to
assume that the author objects to the exploitation.” Id.
What both the French and Swedish approaches possess, consistent with other
collective licensing regimes across Europe, and what the district court’s blanket
endorsement of Google’s copying lacks, is (1) an acknowledgement that copyright
owners control the exclusive right to digitize their works, including the ability to
opt-out of future uses; (2) an element of negotiation between users and copyright
owners; (3) payments to organizations representing copyright owners; and (4)
different treatment for different categories of works and users – for instance,
whether the books were in print or out of print; whether they were first published
in the territory of the jurisdiction in question; or their age. These are among the
28

distinctions which the district court declined to make but that it should have
considered in order to act within the bounds of international norms that apply to
the United States. Some or all of these considerations could be part of any courtordered, or party-negotiated, restructuring of Google’s project, after a ruling on
liability. By contrast, affirming the district court would isolate the U.S. as one of
the few countries that deprives copyright owners both of control over, and of
compensation for, digitization of their works.
Reversing the district court’s finding on fair use, and remanding for
consideration of class certification issues, the scope of damages, and the scope of
injunctive relief, would replace the false Hobson’s Choice between complete
absolution and a permanent injunction with a more beneficial and equitable
outcome, similar to and informed by those that have emerged abroad, and in other
U.S. cases.
CONCLUSION
Amici respectfully urge the Court to reverse.
DATED: April 14, 2014

By: /s/ Joan Morgan McGivern
Joan Morgan McGivern
Attorney for Amici Curiae

29

CERTIFICATE OF COMPLIANCE WITH FEDERAL RULE OF
APPELLATE PROCEDURE 32(A)
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This brief complies with the type-volume limitation of Fed. R. App. P.

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brief exempted by Fed. R. App. P. 32(a)(7)(B)(iii).
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DATED: April 14, 2014

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Joan Morgan McGivern

30

CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on this 14th day of April, a true and correct copy
of the foregoing Amici Curiae Brief was served on all counsel of record in this
appeal via CM/ECF pursuant to Local Rule 25.1(h).
DATED: April 14, 2014

By:

/s/ Joan Morgan McGivern
Joan Morgan McGivern

31