The Authors Guild v. Google, Inc.

Filing 60

AMICUS BRIEF, on behalf of Amicus Curiae Motion Picture Association of America, Inc., FILED. Service date 04/14/2014 by CM/ECF. [1201114] [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 AMICUS CURIAE THE MOTION
PICTURE ASSOCIATION OF AMERICA
IN SUPPORT OF APPELLANTS AND REVERSAL

ROBERT H. ROTSTEIN
MITCHELL SILBERBERG & KNUPP LLP
11377 West Olympic Boulevard
Los Angeles, California 90064
[phone]

J. MATTHEW WILLIAMS
MITCHELL SILBERBERG & KNUPP LLP
1818 N Street, NW, 8th Floor
Washington, DC 20036
[phone]

Attorneys for Amicus Curiae

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

The Motion Picture Association of America, Inc. has no parent

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

DATED: April 14, 2014

MITCHELL SILBERBERG & KNUPP LLP
Robert H. Rotstein
J. Matthew Williams

By: /s/ Robert H. Rotstein
Robert H. Rotstein
Attorneys for Amicus Curiae

i

TABLE OF CONTENTS
INTERESTS OF AMICUS CURIAE ........................................................................ 1
SUMMARY OF ARGUMENT ................................................................................ 2
ARGUMENT ............................................................................................................ 5
I.

The District Court Applied An Overly Expansive Definition Of
“Transformative” Under The First Fair-Use Factor. ...................................... 5

II.

Under The Fourth Fair-Use Factor, The District Court Failed To
Consider Harm To Existing And Likely To Be Developed Markets. .......... 11
1.

There Is A Market For Access To Excerpts. .............................14

2.

There Is A Market For Searchable Databases. ........................15

CONCLUSION ....................................................................................................... 18
CERTIFICATE OF COMPLIANCE WITH FEDERAL RULE OF
APPELLATE PROCEDURE 32(A) ............................................................ 20
CERTIFICATE OF SERVICE ............................................................................... 21

ii

TABLE OF AUTHORITIES

CASES
A & M Records, Inc. v. Napster, Inc.,
239 F.3d 1004 (9th Cir. 2001) .............................................................................. 9
Am. Broad. Cos. v. Aereo, Inc.,
874 F. Supp. 2d 373 (S.D.N.Y. 2012) .................................................................. 9
Am. Geophysical Union v. Texaco Inc.,
60 F.3d 913 (2d Cir. 1994) ..........................................................................passim
Associated Press v. Meltwater U.S. Holdings, Inc.,
931 F. Supp. 2d 537 (S.D.N.Y. 2013) ................................................................ 14
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) ..................................................................... 9
Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 2006) ................................................................................. 6
Blanch v. Koons,
396 F. Supp. 2d 476 (S.D.N.Y. 2005) .................................................................. 4
Blanch v. Koons,
467 F.3d 244 (2d Cir. 2006) ............................................................................. 2, 6
Brownmark Films, LLC v. Comedy Partners,
682 F.3d 687 (7th Cir. 2012) ................................................................................ 2
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) .....................................................................................passim
Cariou v. Prince,
714 F.3d 694 (2d Cir. 2013) ................................................................................. 6

iii

Elektra Records Co. v. Gem Elec. Distrib., Inc.,
360 F. Supp. 821 (E.D.N.Y. 1973) ....................................................................... 9
Golan v. Holder,
132 S. Ct. 873 (2012) .......................................................................................... 18
Harper & Row, Publishers, Inc. v. Nation Enters.,
471 U.S. 539 (1985) ........................................................................................ 3, 14
Infinity Broad. Corp. v. Kirkwood,
150 F.3d 104 (2d Cir. 1998) ...................................................................5, 7, 8, 11
Kelly v. Arriba Soft Corp.,
336 F.3d 811 (9th Cir. 2003) ................................................................................ 8
Leibovitz v. Paramount Pictures Corp.,
137 F.3d 109 (2d Cir. 1998) ............................................................................. 2, 5
N.Y. Times Co. v. Tasini,
533 U.S. 483 (2001) ............................................................................................ 15
Nihon Keizai Shimbun, Inc. v. Comline Bus. Data,
166 F.3d 65 (2d Cir. 1999) ................................................................................... 7
NXIVM Corp. v. Ross Inst.,
364 F.3d 471 (2d Cir. 2004) ................................................................................. 6
Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146 (9th Cir. 2007) .............................................................................. 8
RCA Records v. All-Fast Sys., Inc.,
594 F. Supp. 335 (S.D.N.Y. 1984) ....................................................................... 9
Rogers v. Koons,
960 F.2d 301 (2d Cir. 1992) ............................................................................... 12
Sony BMG Music Entm’t v. Tenenbaum,
672 F. Supp. 2d 217 (D. Mass 2009) .................................................................... 9
Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984) ............................................................................................ 13

iv

Swatch Grp. Mgmt. Servs. v. Bloomberg L.P.,
742 F.3d 17 (2d Cir. 2014) .........................................................................7, 8, 11
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) ................................................................ 14
UMG Recordings, Inc. v. MP3.com, Inc.,
92 F. Supp. 2d 349 (S.D.N.Y. 2000) .................................................................... 9
Universal City Studios, Inc. v. Corley,
273 F.3d 429 (2d Cir. 2001) ................................................................................. 9
Video Pipeline v. Buena Vista Home Entm’t,
342 F.3d 191 (3d Cir. 2003) ............................................................................... 14
WPIX, Inc. v. ivi, Inc.,
691 F.3d 275 (2d Cir. 2012) ............................................................................... 10
STATUTES
Copyright Act of 1976, 17 U.S.C. §§ 101, et seq. ............................................passim
§ 106.................................................................................................................... 18
§ 107.............................................................................................................passim
§ 108.................................................................................................................... 12
OTHER AUTHORITIES
Jessica E. Vascellaro & Geoffrey A. Fowler, Tech’s Bigs Put
Google’s Books Deal In Crosshairs, WALL ST. J., Aug. 21, 2009 ..................... 16
2 M.B. Nimmer & D. Nimmer, NIMMER ON COPYRIGHT
§ 8.03 (2013) ....................................................................................................... 12
Maria A. Pallante, U.S. Copyright Office, Priorities and Special
Projects of the United States Copyright Office: October 2011 –
October 2013 (2011) ........................................................................................... 17
Orphan Works and Mass Digitization; Request for Additional
Comments and Announcement of Public Roundtables, 79 Fed.
Reg. 7,706 (Feb. 10, 2014) ................................................................................. 17
v

1 Paul Goldstein, GOLDSTEIN ON COPYRIGHT
§ 1.14 (3d ed. 2014) ............................................................................................ 10
Pierre Leval, Toward a Fair Use Standard,
103 HARV. L. REV. 1105 (1990) ..................................................................... 4, 18
U.S. Copyright Office, Legal Issues in Mass Digitization: A
Preliminary Analysis and Discussion Document (2011).................................... 17
U.S. Dept. of Commerce, Copyright Policy, Creativity, and
Innovation in the Digital Economy (2013) ......................................................... 17

vi

INTERESTS OF AMICUS CURIAE
The Motion Picture Association of America, Inc. (“MPAA”) is a not-forprofit trade association founded in 1922 to address issues of concern to the motion
picture industry.1 MPAA member companies include Paramount Pictures Corp.,
Sony Pictures Entertainment Inc., Twentieth Century Fox Film Corp., Universal
City Studios LLC, Walt Disney Studios Motion Pictures, and Warner Bros.
Entertainment Inc. These companies and their affiliates are the leading producers
and distributors of filmed entertainment in the theatrical, television, and homeentertainment markets.
MPAA’s members depend upon effective copyright laws to protect the
films, television shows, and new media content that they invest in, create and
disseminate. Unlicensed copying on the scale at issue in this case could cause a
fundamental upheaval in the operation of the traditional copyright system. As a
result, MPAA’s members have a significant interest in the important questions that
this case presents concerning the interpretation of the Copyright Act, 17 U.S.C. §§
101, et seq.
MPAA members both enforce their copyrights and heavily rely on the fair
use doctrine in producing and distributing their expressive works. Thus, MPAA

All parties consented to Amicus filing this brief. No party’s counsel authored any
part of this brief. No person other than Amicus contributed money intended to fund
the preparation of this brief.
1

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members are steadfast proponents of the fair use doctrine, which serves to protect
the free speech interests of filmmakers and their distributors. See, e.g., Brownmark
Films, LLC v. Comedy Partners, 682 F.3d 687 (7th Cir. 2012); Leibovitz v.
Paramount Pictures Corp., 137 F.3d 109 (2d Cir. 1998). Accordingly, the MPAA
is well positioned to provide the Court with a unique and balanced perspective on
the proper contours of the fair use defense generally, as well as its application in
the context of mass digitization specifically.
SUMMARY OF ARGUMENT
The Supreme Court has held that a use is “transformative” under the first
fair-use factor (17 U.S.C. § 107) where the defendant incorporates copyrighted
content into a “fresh,” expressive work of authorship that “adds something new,
with a further purpose or different character, altering the first [work] with new
expression, meaning, or message.” Campbell v. Acuff-Rose Music, Inc., 510 U.S.
569, 579-80 (1994). See also Blanch v. Koons, 467 F.3d 244, 255 (2d Cir. 2006)
(transformative use requires “a genuine creative rationale for borrowing” from a
copyrighted work) (emphasis added). In systematically copying millions of
copyrighted books without authorization, Appellee Google Inc. created no new
expression, meaning, or message.
Nevertheless, the district court found Google’s conduct to be “highly
transformative” under the first fair-use factor merely because Google’s copying
2

provides the public benefit of “expand[ing] access to books.” Authors Guild, Inc.
v. Google Inc., 954 F. Supp. 2d 282, 288, 291 (S.D.N.Y. 2013). But under
applicable law, a use is not transformative simply because it increases public
access to a copyrighted work. Indeed, if the district court were correct, all
unrestrained infringement might be deemed transformative. See Harper & Row,
Publishers, Inc. v. Nation Enters., 471 U.S. 539, 569 (1985) (“Any copyright
infringer may claim to benefit the public by increasing public access to the
copyrighted work.”).
Moreover, the Supreme Court has cautioned against undue reliance on a
single fair-use factor. Campbell, 510 U.S. at 578 (“Nor may the four statutory
factors be treated in isolation, one from another. All are to be explored, and the
results weighed together, in light of the purposes of copyright.”). When
considering a fair use defense, courts must look at each instance of unlicensed
copying on a “case-by-case” basis to assess whether allowing the use serves “the
purposes of copyright” (i.e., preserving incentives to create and disseminate new
works for the ultimate benefit of the public). Campbell, 510 U.S. at 577-78. Here,
the district court failed to adhere to these principles and instead allowed its firstfactor analysis of the benefits of Google’s copying to color its consideration, under
the fourth fair-use factor, of the potential negative economic effects that Google’s
uses could have on the publishing industry. The court did not give due
3

consideration to the harm that Google’s uses could cause to all “reasonable[] or
likely to be developed markets” for exploiting various categories of books. Am.
Geophysical Union v. Texaco Inc., 60 F.3d 913, 930 (2d Cir. 1994). Instead, the
court considered only whether the traditional market for sales of entire books
would be harmed, without inquiring into whether Google’s copying could
undermine emerging markets for licensing the creation of digital databases and
access to book excerpts. Authors Guild, 954 F. Supp. 2d at 292-93.
By misconstruing the first factor and giving short shrift to the fourth, the
district court failed to engage in the kind of case-by-case approach to fair use that
the Supreme Court requires. Campbell, 510 U.S. at 577. Unless corrected, the
district court’s analytical errors could alter the course of fair use jurisprudence and
in future cases “excessively diminish[] the incentives for creativity” that copyright
protection provides. Blanch v. Koons, 396 F. Supp. 2d 476, 480 (S.D.N.Y. 2005),
(quoting Pierre Leval, Toward a Fair Use Standard, 103 HARV. L. REV. 1105,
1110 (1990)). Amicus therefore urges this Court to reverse and remand the case so
that the district court can engage in the “subtle, sophisticated” analysis that the fair
use doctrine demands. Texaco Inc., 60 F.3d at 921. The district court must
consider the specific non-transformative uses made by Google, taking into account,
under the fourth factor, the specific potential markets for the specific categories of
works at issue.
4

ARGUMENT
I.

The District Court Applied An Overly Expansive Definition Of
“Transformative” Under The First Fair-Use Factor.
The district court concluded that Google’s copying of books was “highly

transformative” under the first fair-use factor because it provides the societal
“benefit” of “expand[ing] access to books.” Authors Guild, 954 F. Supp. 2d at
287-88, 291. The court held that Google: (1) “transform[ed] expressive text into a
comprehensive word index[;]” (2) “use[d] snippets of text to act as pointers
directing users to a broad selection of books[;]” and (3) “transformed book text
into data for purposes of substantive research.” Id. at 291.
As a matter of Supreme Court and Second Circuit law, however, a
defendant’s copying is transformative where it creates a new expressive work that
“adds something new, with a further purpose or different character, altering the
first [work] with new expression, meaning, or message.” Campbell, 510 U.S. at
579. In the words of this Court, “difference in purpose is not quite the same thing
as transformation.” Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104, 108-09 (2d
Cir. 1998) (retransmitted radio broadcasts were not transformative).
In light of this definition, the Second Circuit has found copying to be
transformative in only a handful of cases, all of which are consistent with the
mandate of Campbell and Kirkwood. In Leibovitz v. Paramount Pictures Corp.,
137 F.3d 109, 114-15 (1998), the Court concluded that parodying a high art
5

photograph of a pregnant actress in a low art movie poster for a slapstick comedy
qualified as transformative. In NXIVM Corp. v. Ross Inst., 364 F.3d 471, 477 (2d
Cir. 2004), the Court determined that quoting portions of copyrighted course
materials on a website that criticized the plaintiff’s seminars was transformative.
In Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 609 (2d Cir.
2006), the Court found that reproducing reduced size copies of concert posters in a
book that analyzed the historical impact of a rock n’ roll band constituted a
transformative use because the book’s author used the posters as a means of more
effectively conveying commentary on the band’s history. Finally, in the specific
circumstances presented in Blanch v. Koons, 467 F.3d 244, 253 (2d Cir. 2006) and
Cariou v. Prince, 714 F.3d 694, 706-07 (2d Cir. 2013), the Court decided that
appropriating copyrighted content for the purpose of incorporating it into new,
original, and singular works of fine art sometimes qualified as transformative.
In each of these cases, the defendants created a new expressive work,
consistent with the purposes of the Copyright Act. See Campbell, 510 U.S. at 579
(“[T]he goal of copyright, to promote science and the arts, is generally furthered by
the creation of transformative works.”). Conversely, where a defendant’s use of a
plaintiff’s work does not result in the creation of a new expressive work, this
Circuit has found such use non-transformative. E.g., Texaco, 60 F.3d at 920-23
(rejecting defendant’s argument that photocopying a journal article was
6

transformative because it “separated it from a bulky journal, made it more
amenable to markings, and provided a document that could be readily replaced if
damaged in a laboratory, all of which ‘transformed’ the original article into a form
that better served [defendant’s] research needs”). This is true even where, as here,
the defendant’s use purportedly increases public access to the plaintiff’s work.
E.g., Kirkwood, 150 F.3d at 108-09 (“[T]he public benefit from other uses of
[Defendant’s technology] . . . is simply not enough to justify [his] nontransformative retransmissions.”).2
Indeed, as recently as a few months ago, this Court concluded that where a
defendant news organization “obtained a sound recording and written transcript of
[a plaintiff’s conference call with investors] and made them both available online,
without alteration or editorial commentary, to subscribers to [the defendant’s]
online financial research service” the use was “nontransformative.” Swatch Grp.
Mgmt. Servs. v. Bloomberg L.P., 742 F.3d 17, 22, 27 (2d Cir. 2014). Significantly,
the Court so concluded even though it found that the defendant’s use had
significant public benefit. Id. at 27, 35.3

Moreover, where the defendant engages in copying that merely supersedes a clear
derivative market for a plaintiff’s work, the use is not transformative. See Nihon
Keizai Shimbun, Inc. v. Comline Bus. Data, 166 F.3d 65, 72 (2d Cir. 1999) (direct
translations of plaintiff’s articles were not transformative).
2

The Court in Swatch ultimately found fair use, in part because under the first
factor, the defendant’s use of the sound recording was newsworthy – a favored
7

3

Here, the district court incorrectly relied on two Ninth Circuit decisions
involving search engines that created reduced-size copies of images – Kelly v.
Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003), and Perfect 10, Inc. v.
Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) – for the conclusion that “use of
book text to facilitate search through the display of snippets is transformative.”
Authors Guild, 954 F. Supp. 2d at 291. In those cases, however, the Ninth Circuit
adopted an approach to transformation that this Court has never endorsed. The
Ninth Circuit reasoned that where a defendant’s use merely serves a “different
function” from the plaintiff’s use, such as “improving access to information on the
internet versus artistic expression,” that qualifies the use as transformative. Kelly,
336 F.3d at 819. But this analytical leap, which the district court here
unfortunately adopted, squarely conflicts with Campbell and this Court’s opinions
in Kirkwood and the other salient cases.
The district court’s failure to follow the law of this Circuit could have a
deleterious effect on future copyright infringement cases. Every instance of mass
copyright infringement arguably increases access to the infringed works and
thereby enables members of the public to use those works in their own creative or

category under section 107. In contrast, Google’s mass copying is not for the
purpose of news. Moreover, in Swatch, the Court undertook close analysis of a
single work, while here the district court failed to consider specific books at all, or
even specific categories of books. See discussion in section II, infra.
8

educational pursuits. Yet, this fact hardly makes the copying “fair.” See Am.
Broad. Cos. v. Aereo, Inc., 874 F. Supp. 2d 373, 404 (S.D.N.Y. 2012) (“The same
logic would support a finding that the public interest favors imposing no copyright
restrictions on any form of redistribution of Plaintiffs’ [works], as unrestrained
piracy of that content would also increase public access to content . . .”), aff’d on
other grounds 712 F.3d 676 (2d Cir. 2013); Sony BMG Music Entm’t v.
Tenenbaum, 672 F. Supp. 2d 217, 228 (D. Mass 2009) (“Nearly every unauthorized
reproduction or distribution increases access to some degree. . . . In any case, the
balance between unlimited public access and the desire to spur artistic creation is
the very policy choice embodied by the provisions of the Copyright Act. Congress
has purposefully restricted access by vesting an exclusive right in the copyright
holder.”) (emphasis in original), aff’d in part, rev’d in part on other grounds, 660
F.3d 487 (2011).4
A regime that fails to provide adequate copyright protection, while perhaps
providing greater initial public access to existing works of authorship, will
ultimately act as a disincentive to potential authors, thus depleting the number of
For this reason, courts often reject fair use arguments where large scale infringers
claim to be engaged in fair use. E.g., Elektra Records Co. v. Gem Elec. Distrib.,
Inc., 360 F. Supp. 821 (E.D.N.Y. 1973); RCA Records v. All-Fast Sys., Inc., 594 F.
Supp. 335 (S.D.N.Y. 1984); Basic Books, Inc. v. Kinko’s Graphics Corp., 758 F.
Supp. 1522 (S.D.N.Y. 1991); UMG Recordings, Inc. v. MP3.com, Inc., 92 F. Supp.
2d 349 (S.D.N.Y. 2000); Universal City Studios, Inc. v. Corley, 273 F.3d 429 (2d
Cir. 2001); A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001).
4

9

new expressive works. See WPIX, Inc. v. ivi, Inc., 691 F.3d 275, 287 (2d Cir.
2012) (“[T]he public has a compelling interest in protecting copyright owners’
marketable rights to their work and the economic incentive to continue creating
[them]. Inadequate protections for copyright owners can threaten the very store of
knowledge to be accessed; encouraging the production of creative work thus
ultimately serves the public’s interest in promoting the accessibility of such
works.”) (citations omitted); 1 Paul Goldstein, GOLDSTEIN ON COPYRIGHT § 1.14
(3d ed. 2014) (“To give fewer property rights than are needed to support this
investment [in creative production] would give users freer access, but to a less than
socially desirable number and quality of works.”). The district court’s approach to
fair use, if widely followed, could result in an unreasonably low level of copyright
protection and thereby threaten creative output. This Court should not take that
path.
In sum, the district court misapplied the transformative test by broadly
focusing on the so-called public benefit of Google’s copying. Rather than creating
a new work that conveys an expressive or meaningful message, however, Google
systematically copied books to increase their accessibility in a manner analogous to
other uses that this Court has found to be non-transformative. The district court’s
analytical approach, which is based on Ninth, not Second Circuit law, could
ultimately erode copyright protection and in future cases reward large-scale
10

infringers just because their acts increase public access to copyrighted works. This
Court should reaffirm its existing jurisprudence on transformation, as articulated in
opinions such as Kirkwood and Swatch, and reverse and remand to the district
court for further consideration of whether the first factor favors Google despite the
non-transformative nature of Google’s commercial copying.5
II.

Under The Fourth Fair-Use Factor, The District Court Failed To
Consider Harm To Existing And Likely To Be Developed Markets.
In Campbell, the Supreme Court “abandon[ed] the idea that any [fair-use]

factor enjoys primacy.” Texaco, 60 F.3d at 926. However, the district court
allowed its misinterpretation of the transformative test under the first factor to
overwhelm its analysis of the other factors, especially the fourth factor. That factor
requires courts to analyze “the effect of the use upon the potential market for or
value of the copyrighted work.” 17 U.S.C. § 107. This analysis involves assessing
what impact a defendant’s uses could have on all of the plaintiff’s “traditional,
reasonable, or likely to be developed markets.” Texaco, 60 F.3d at 930. Where
“there is a ready market or means to pay for the use,” that fact weighs against the
defendant under the fourth factor. Id. at 931. “The reason for this rule relates to a
central concern of copyright law that unfair copying undercuts demand for the

Although Google does not charge consumers to search its database of digitized
books, Google monetizes the database by gathering data regarding users, which
enables Google to attract users to its brand and to reap substantial profits from
targeted advertising across its properties.

5

11

original work and, as an inevitable consequence, chills creation of such works.”
Rogers v. Koons, 960 F.2d 301, 312 (2d Cir. 1992).
Moreover, under the fourth factor, courts must determine whether the
existence of other, specific exceptions in the Copyright Act “implicitly suggests
that Congress views [copyright owners] as possessing the right to restrict”
activities not covered by the exceptions. Texaco, 60 F.3d at 931. For example, in
Texaco, this Court held that the existence of the narrow exceptions set forth in
section 108 for copying by libraries and archives must be considered when
6

assessing copying that could have been, but was not, sanctioned by section 108.

Here, without considering how its decision interacts with section 108 or any
other statutory exception, the district court concluded that “the fourth factor weighs
strongly in favor of a finding of fair use.” Authors Guild, 954 F. Supp. 2d at 293.
In its view, “a reasonable factfinder could only find that Google Books enhances
the sale of books to the benefit of copyright holders” by “help[ing] readers find”
Section 108 allows a library or archive to make and distribute no more than one
copy of a work for certain purposes so long as the copy is not made for the purpose
of direct or indirect commercial advantage; the collection is open to the public or
to researchers who are not affiliated with the library or archive; and a copyright
notice is affixed on the copy. Section 108 also allows for three copies to be made
if done to preserve unpublished works or for the purpose of replacing damaged or
lost copies of published works when replacement copies cannot be obtained at a
fair price. In instances where libraries or archives distribute copies to individual
researchers, additional limitations apply. “Systematic” copying is not allowed.
For a general discussion of section 108, see 2 M.B. Nimmer & D. Nimmer,
NIMMER ON COPYRIGHT § 8.03 (2013).

6

12

books and by “provid[ing] convenient links to booksellers to make it easy for a
reader to order a book.” Id. In other words, simply because Google increased the
availability of books, which the district court found to be transformative, the court
found that no market harm was likely, especially because it is “not possible” for a
consumer to access an entire book through Google’s search engine. Id.
This approach to the fourth factor uses too broad a brush. First, it considers
only “traditional” markets for books (i.e., sales) and ignores other existing and
“likely to be developed markets.” Texaco, 60 F.3d at 930. Second, it fails to
acknowledge and address the different types of books at issue. See Sony Corp. of
Am. v. Universal City Studios, Inc., 464 U.S. 417, 455 n.40 (1984) (“[I]t is not true
that all copyrights are fungible. Some copyrights govern material with broad
potential secondary markets. Such material may well have a broader claim to
protection because of the greater potential for commercial harm.”). So, as the
Supreme Court instructs in Campbell, 510 U.S. at 577, the district court was
required to analyze fair use on a “case-by-case” basis. At the very least, that
analysis demanded that the court examine the different potential markets that may
be available for different categories of books.
Although it may be true that Google does not enable consumers to access
complete books and that Google’s efforts to direct users to online bookstores may,
at times, increase sales for some books, the district court should have considered
13

the possible harm to (1) potential revenues earned from monetizing the provision
of access to book excerpts; and (2) potential revenues earned from monetizing
searchable databases of books.
1.

There Is A Market For Access To Excerpts.

Where a segment of a work is entertaining or useful in itself, a potential
market for providing access to that segment exists. In other words, there is
“qualitative value” in a segment “whose power lies in the author’s individualized
expression.” Harper & Row, 471 U.S. at 563, 565. For authors and publishers of
at least some categories of books, digitization that enables public access to book
segments is an existing market with significant potential to expand. Indeed, before
Google began copying libraries full of books without authorization, it and Amazon
actually negotiated with copyright owners for permission to provide access to book
excerpts. See Authors Guild Brief at 1-3, 7-8, 51. Yet, the district court failed to
examine the effect of Google’s unauthorized mass copying on that market.
Moreover, markets for accessing segments from news stories, audiovisual
works, and musical works already exist. See Associated Press v. Meltwater U.S.
Holdings, Inc., 931 F. Supp. 2d 537, 560-61 (S.D.N.Y. 2013) (using automated
computer program to create and disseminate extracts from news stories was
infringing); Video Pipeline v. Buena Vista Home Entm’t, 342 F.3d 191, 202 (3d
Cir. 2003) (clips from movies for online viewing were infringing); United States v.
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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) (using unauthorized clips
from songs to enable online shoppers to preview sound recordings was not fair
use).
Indeed, MPAA members regularly license the use of film clips in a variety
of contexts. For example, licensed, advertising-supported websites enable
consumers to view brief clips from their favorite movies.7 There is no reason that,
absent unfair competition from mass copiers, publishers of at least some types of
books could not similarly exploit a business model that would provide access to
brief segments of text. Yet, the district court never considered such a market.
2.

There Is A Market For Searchable Databases.

The district court also failed to consider that numerous, licensed, searchable
databases of copyrighted works have developed via market forces. For example,
Hein Online, JSTOR, Lexis, and Westlaw all provide access to searchable
databases of copyrighted academic articles. Lexis and Westlaw also provide
access to databases of many other types of literary works, including newspapers
and legal treatises. See generally N.Y. Times Co. v. Tasini, 533 U.S. 483 (2001).
See AnyClip, http://www.anyclip.com/ (last visited Apr. 11, 2014); MovieClips,
http://movieclips.com/ (last visited Apr. 11, 2014).
7

15

Outside of the market for literary works, efforts to provide online, licensed access
to large numbers of works owned by large numbers of copyright holders, such as
via Corbis and Getty Images, Netflix, Spotify, or Apple’s iTunes, have also
succeeded.8 Similar models exist and are developing for access to books, as
Amazon’s licensed offerings and Google’s existing partnership program with
major publishers demonstrate. See Authors Guild Brief at 51. It is telling that
Google’s primary competitors – including Microsoft, Yahoo! and Amazon, which
have developed or would like to develop such models – have voiced concerns over
Google’s efforts to monopolize online access to books.9 See Jessica E. Vascellaro
& Geoffrey A. Fowler, Tech’s Bigs Put Google’s Books Deal In Crosshairs, WALL
ST. J., Aug. 21, 2009, at B1. The district court failed to inquire under the fourth
factor into what business models these other innovative companies would have
offered to the public had Google not undercut their efforts to provide access to
digitized books while at the same time complying with copyright law.

In the past, methods for collective licensing have also developed where
transaction costs impeded the negotiation of individual licenses. For example,
through the Copyright Clearance Center, users may obtain licenses to make copies
of articles. And the American Society of Composers, Authors, and Publishers
(ASCAP), Broadcast Music, Inc. (BMI), and SESAC, Inc. offer “blanket licenses”
to publicly perform extensive catalogues of musical works. Similarly,
SoundExchange, Inc. offers licenses to publicly perform sound recordings in
specific online contexts.

8

Among other things, these entities filed objections to the now defunct class-action
settlement.

9

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The ability to exploit searchable databases of books could become a
significant source of licensing or advertising revenue for publishers and authors.
Ongoing discussions are taking place on, inter alia, the very topic of how to
establish licensing mechanisms for mass digitization. See, e.g., Orphan Works and
Mass Digitization; Request for Additional Comments and Announcement of Public
Roundtables, 79 Fed. Reg. 7,706 (Feb. 10, 2014); see also U.S. Dept. of
Commerce, Copyright Policy, Creativity, and Innovation in the Digital Economy,
at 33-35 (2013). The Copyright Office has issued a detailed report on mass
digitization, outlining several global efforts to deal with the issue. See U.S.
Copyright Office, Legal Issues in Mass Digitization: A Preliminary Analysis and
Discussion Document (2011); see also Maria A. Pallante, U.S. Copyright Office,
Priorities and Special Projects of the United States Copyright Office: October
2011 – October 2013, at 5 (2011). In that report, the Copyright Office, which has
considerable expertise on fair use issues, found that “the large scale scanning and
dissemination of entire books is difficult to square with fair use.” Legal Issues in
Mass Digitization, at 23.
Yet despite prior examples of successful methods for licensing large
numbers of copyrighted works and the ongoing efforts to explore and develop
similar licensing mechanisms for books, the district court ignored the ways in

17

which Google’s uses could undermine efforts to facilitate licensing. As such, the
court below failed to consider harm to yet another potential market.
CONCLUSION
“Copyright supplies the economic incentive to create and disseminate
ideas.” Golan v. Holder, 132 S. Ct. 873, 889 (2012) (emphasis in original; citation
omitted). The Copyright Act therefore presumes that unless a statutory exception
applies, “the owner of copyright . . . has the exclusive rights to do and to
authorize” certain uses of copyrighted works, including their reproduction,
adaptation, distribution, public performance and public display. 17 U.S.C. § 106.
The fair use defense of section 107 is therefore an exception to a generally
applicable rule. “In analyzing a fair use defense, it is not sufficient simply to
conclude whether or not justification exists. The question remains how powerful,
or persuasive, is the justification, because the court must weigh the strength of the
secondary user’s justification against factors favoring the copyright owner.”
Leval, supra p. 4, at 1111.
The district court’s misconstruction of the first factor and concomitant
failure to give due weight to the fourth factor is squarely at odds, not only with
applicable law, but with copyright law’s salutary objectives. The availability of
Google’s unauthorized, digital copies could unfairly compete with and crowd out
legitimate, innovative digital offerings and business models that publishing
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companies are already developing. Because the district court failed to consider
rigorously whether this potential interference will improperly hinder further
development of these nascent markets, its incomplete examination of the issues
could ultimately result in reduced creative output. Unless this Court remands and
instructs the district court to apply this Circuit’s well-settled approach to fair-use
jurisprudence, creators and licensed distributors of copyrighted content could be
significantly harmed to the ultimate detriment of the general public, which would
be deprived of expressive works.
MPAA respectfully urges the Court to reverse and remand so that the district
court can conduct a proper fair use analysis of Google’s conduct.

DATED: April 14, 2014

MITCHELL SILBERBERG & KNUPP LLP
Robert H. Rotstein
J. Matthew Williams
By: /s/ Robert H. Rotstein
Robert H. Rotstein
Attorneys for Amicus Curiae

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CERTIFICATE OF COMPLIANCE WITH FEDERAL RULE OF
APPELLATE PROCEDURE 32(A)
1.

This brief complies with the type-volume limitation of Fed. R. App. P.

32(a)(7)(B) because: this brief contains 4,548 words, excluding the parts of the
brief exempted by Fed. R. App. P. 32(a)(7)(B)(iii).
2.

This brief complies with the typeface requirements of Fed. R. App. P.

32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because: this
brief has been prepared in a proportionally spaced typeface using Microsoft Word
2010 in 14 point, Times New Roman.

DATED: April 14, 2014

By:

/s/ Robert H. Rotstein
Robert H. Rotstein

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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on this 14th day of April, a true and correct copy
of the foregoing Amicus 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/ Robert H. Rotstein
Robert H. Rotstein

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