The Authors Guild v. Google, Inc.

Filing 82

AMICUS BRIEF, on behalf of Amicus Curiae The Copyright Alliance, FILED. Service date 04/14/2014 by CM/ECF, US mail. [1201817] [13-4829]--[Edited 04/16/2014 by KG]

13-4829-cv

d
IN THE

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,

—against—
GOOGLE, INC.,

Defendant-Appellee.
ON APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK

BRIEF FOR THE COPYRIGHT ALLIANCE AS
AMICUS CURIAE IN SUPPORT OF PLAINTIFFS -APPELLANTS

ELIZABETH A. MCNAMARA
LINDA STEINMAN
ALISON SCHARY
DAVIS WRIGHT TREMAINE LLP
1633 Broadway, 27th Floor
New York, New York 10019
(212) 489 -8230
Attorneys for Amicus Curiae
The Copyright Alliance

CORPORATE DISCLOSURE STATEMENT
Pursuant to Rules 26.1 and 29(c)(1) of the Federal Rules of Appellate
Procedure, amicus curiae the Copyright Alliance states that it has no parent
corporation and that no publicly held company owns more than 10% of its
stock.

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TABLE OF CONTENTS
CORPORATE DISCLOSURE STATEMENT ....................................................... i
TABLE OF AUTHORITIES .................................................................................. iv
INTEREST OF AMICUS .........................................................................................1
SUMMARY OF ARGUMENT ...............................................................................2
ARGUMENT ............................................................................................................4
I.

MASS DIGITIZATION IS A COMPLEX ISSUE THAT SHOULD
BE ADDRESSED BY ALL STAKEHOLDERS...........................................4
A.
B.

II.

The District Court Focused on The Google Books Search
Engine, Not the Mass Copying that Preceded It ...........................4
Fair Use Is Being Used to Legislate A Vast New Use,
Preempting Ongoing Policy Discussions .......................................5

THE DISTRICT COURT ERRED IN APPLYING THE FAIR USE
DOCTRINE ..................................................................................................11
A.

The First Factor Analysis Was Deeply Flawed ............................13
1.
2.

Where an Allegedly Transformative Use Is for a New
Functional – Not Expressive – Purpose, this Court
Should Be Especially Careful in Its Analysis .....................15

3.
B.

The District Court Misapprehended the Commercial
Nature of Google’s Principal Use ........................................13

A Proposed Mode of Analysis for Functional Use
Cases.........................................................................................24

The District Court’s Analysis of the Second Factor Placed
Undue Emphasis on the Works’ Factual Nature .........................28

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C.

The District Court’s Analysis of the Third Factor Mistakenly
Focused Only on the Amount Displayed in Google Books,
Rather than the Amount Taken through Mass Digitization ......30

D.

The District Court Erred in Finding that the Fourth Factor
Favors Google ...................................................................................32

CONCLUSION ......................................................................................................34
CERTIFICATE OF COMPLIANCE ....................................................................35

iii

TABLE OF AUTHORITIES
Cases
American Geophysical Union v. Texaco,
60 F.3d 913 (2d Cir. 1994) ....................................................................24, 31, 32
Associated Press v. Meltwater U.S. Holdings,
931 F. Supp. 2d 537 (S.D.N.Y. 2013) .............................................................. 26
Authors Guild v. Google Inc.,
954 F. Supp. 2d 254 (S.D.N.Y. 2013) ..................................................12, 30, 31
Authors Guild v. Google Inc.,
770 F. Supp. 2d 666 (S.D.N.Y. 2011) .............................................................. 15
AV ex rel. Vanderhye v. iParadigms,
562 F.3d 630 (4th Cir. 2009) ............................................................................. 16
Basic Books v. Kinko’s Graphics Corp.,
758 F. Supp. 1522 (S.D.N.Y. 1991) .................................................................. 29
Bill Graham Archives v. Dorling Kinderlsey,
448 F.3d 605 (2d Cir. 2006) .............................................................................. 23
Blanch v. Koons,
467 F.3d 244 (2d Cir. 2006) .............................................................................. 22
Campbell v. Acuff-Rose Music,
510 U.S. 569 (1994).....................................................................................passim
Castle Rock Entm’t v. Carol Publ’g Grp.,
150 F.3d 132 (2d Cir. 1998) .............................................................................. 31
Eldred v. Aschroft,
537 U.S. 186 (2003).............................................................................................. 7
Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539 (1985)......................................................................................29, 32

iv

HarperCollins Publishers v. Open Road Integrated Media,
--- F. Supp. 2d ---, 2014 WL 1013838 (Mar. 14, 2014) ..................................... 5
Infinity Broad. Corp. v. Kirkwood,
150 F.3d 104 (2d Cir. 1998) .......................................................................passim
Kelly v. Arriba Soft,
336 F.3d 811 (9th Cir. 2003) .................................................................16, 20, 25
Monge v. Maya Magazines,
688 F.3d 1164 (9th Cir. 2012) ........................................................................... 20
Nihon Keizai Shimbun v. Comline Business Data, Inc.,
166 F.3d 65 (2d Cir. 1999) ................................................................................ 19
On Davis v. The Gap,
246 F.3d 152 (2d Cir. 2001) .............................................................................. 32
Pacific & Southern Co. v. Duncan,
744 F.2d 1490 (11th Cir. 1984) ......................................................................... 21
Perfect 10 v. Google,
508 F.3d 1146 (9th Cir. 2007) ........................................................................... 16
Princeton Univ. Press v. Michigan Doc. Serv. Inc.,
99 F.3d 1381 (6th Cir. 1996). ...................................................................... 24, 29
Random House v. Rosetta Books,
150 F. Supp. 2d 613 (S.D.N.Y. 2001) ................................................................ 5
Sony Corp. v. Universal Studios,
464 U.S. 417 (1984).............................................................................................. 7
Twin Peaks Prods. v. Publ’ns Int’l,
996 F.2d 1366 (2d Cir. 1993) ............................................................................ 23
United States v. ASCAP,
599 F. Supp. 2d 415 (S.D.N.Y. 2009) .............................................................. 21
Video Pipeline v. Buena Vista Home Entm’t,
342 F.3d 191 (3d Cir. 2003) .............................................................................. 21
v

Wainwright Securities, Inc. v. Wall St. Transcript Corp.,
558 F.2d 91 (2d Cir. 1977) ................................................................................ 19
Weissmann v. Freeman,
868 F.2d 1313 (2d Cir. 1989) ............................................................................ 30
Statutes
17 U.S.C.
§ 106...................................................................................................................... 5
§ 108.................................................................................................................... 10
Rules
Fed. R. App. P. 29(c)(5) ........................................................................................... 1
Other Authorities
Claire Cain Miller, The Plus in Google Plus? It’s Mostly for Google, N.Y.
Times, Feb. 14, 2014 ......................................................................................... 13
H.R. Rep. No. 94-1476, at 74 (1976), reprinted in 1976 U.S.C.C.A.N.
5659..................................................................................................................... 14
Maria A. Pallante, U.S. Copyright Office, Priorities and Special Projects
of the United States Copyright Office October 2011-October 2013 (Oct.
25, 2011) ............................................................................................................... 7
Miguel Helft, Microsoft Will Shut Down Book Search Program, N.Y.
Times, May 24, 2008 ........................................................................................... 8
Pierre N. Leval, Commentaries: Toward a Fair Use Standard, 103 Harv.
L. Rev. 1105 (1990) .....................................................................................17, 18
Preservation and Reuse of Copyrighted Material: Hearing before the H.
Subcomm. on Courts, Intellectual Property, and the Internet, 113th
Cong. (2014) (statement of Richard S. Rudick) .............................................. 8
The Scope of Fair Use: Hearing before the H. Subcomm. on Courts,
Intellectual Property, and the Internet, 113th Cong. (2014) (statement
of June M. Besek) ............................................................................................ 5, 6
vi

Supplementary Report of the Register of Copyrights on the General
Revision of the U.S. Copyright Law: 1965 Revision Bill, 89th Cong.,
1st Sess. (House Comm. Print 1965) ........................................................11, 24
U.S. Copyright Office, Legal Issues in Mass Digitization: A Preliminary
Analysis and Discussion Document (Oct. 2011) ........................................7, 8, 9

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INTEREST OF AMICUS1
The Copyright Alliance is a non-profit organization representing
artists, creators and innovators who depend on copyright laws to protect
their work, including trade groups, companies, associations, and
thousands of individuals.

Its members represent a wide spectrum of

creative disciplines, from movies, to music, to photographs, to literature. It
seeks to ensure that copyright jurisprudence continues to spur the
development of creative works for the benefit of the public by protecting
the rights of those who invest in the development of creative works to be
fairly compensated for their efforts.
The Copyright Alliance has a significant interest in the outcome of
this dispute. The district court’s decision represents an unprecedented
expansion of the fair use provisions of the Copyright Act – a doctrine
historically created to permit one-off uses of an author’s work for such

Pursuant to FRAP 29(c)(5), the Copyright Alliance states that no counsel
for a party authored this brief in whole or in part, and no person or entity
other than the Copyright Alliance and its counsel made a monetary
contribution to the preparation or submission of this brief. Although the
Association of American Publishers, Inc. (“AAP”) is a member of the
Copyright Alliance, AAP has not participated in any way in the
preparation or submission of this amicus curiae brief. All parties in this
matter have consented to the filing of this brief.
1

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purposes as criticism, commentary or news reporting – to authorize a
commercial enterprise to create and profit from a massive digital archive of
20 million books without rightsholders’ consent. Further, since this case
and its companion, Authors Guild v. Hathitrust, are the first cases where the
Second Circuit will address fair use in the context of search engines, or
where the new use is justified as serving a different “functional purpose”
without the creation of a new expressive work, it is critical that this Court
adopts a mode of analysis that is clear and sufficiently protective of
copyright owners to serve the overall purposes of the Copyright Act.
SUMMARY OF ARGUMENT
A digital library of this nation’s books, with a strong search function,
is unquestionably a desirable goal. That has never been the issue in this
case. Instead, the question in this case is whether Section 107 should be
expanded beyond its traditional contours to permit a private, for-profit
company to create a permanent digital repository of, and display excerpts
from, over 20 million books without the consent of the rightsholders, and
the broader policy ramifications of such a decision. Mass digitization is a
complex issue that is currently being considered by Congress and the
Copyright Office. Nevertheless, Google unilaterally appropriated to itself
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the right to decide the rules of mass digitization, to the exclusion of all
others. In its enthusiasm for the convenience of search technology, the
district court effectively cut off the ongoing policy discussions about how
best to incorporate this new technology into a modern, sound copyright
policy and ensure that mass digitization has the potential to benefit all
stakeholders – including technology companies, libraries, authors, and
members of the reading public.
As set forth in Point I, instead of legislating new copyright
exemptions through fair use, this Court should allow Congress and the
Copyright Office to proceed with their ongoing consideration of mass
digitization, rather than pre-empting processes better suited to considering
the interests of all constituencies.
As set forth in Point II, we respectfully submit that fair use cases fall
into two categories: (1) where the secondary work aims to serve a new
expressive use; and (2) where the secondary work aims to serve a different
functional purpose. “Functional use” cases should be analyzed slightly
differently than “new expressive use” cases – both because they are not at
the core of the doctrine historically and because they pose the threat of
different and greater harms to the copyright holder. As set forth below, for
3

these “functional use” cases, there should be a heightened and
sophisticated examination of whether the new use is capable of
supplanting the original.
ARGUMENT
I.

MASS DIGITIZATION IS A COMPLEX ISSUE THAT SHOULD
BE ADDRESSED BY ALL STAKEHOLDERS
A.

The District Court Focused on The Google Books Search
Engine, Not the Mass Copying that Preceded It

The district court’s most fundamental error was to analyze this case
by focusing almost exclusively on the excerpts displayed in Google Books
search results. Only in passing did the court acknowledge that to create
this search database, Google has systematically, and without consent, made
itself digital copies of 20 million books – including innumerable books
available for purchase in digital form – and has permanently stored those
books. Google has made no promises on the future uses of that massive
repository; nor would such unilateral promises be legally binding. Indeed,
Google could make future internal uses of its repository without even the
knowledge of the rightsholders.
Transforming a print book into an electronic work has long been
understood as one stick in the bundle of a copyright holder’s exclusive
4

rights, including the right to reproduce the work. 17 U.S.C. § 106.2 By
authorizing Google’s antecedent mass digitization as fair use based on the
output in this instance – search results – the district court’s decision
effectively removed this valuable derivative right from copyright holders.
It is critical for this Court to address mass digitization head on.
B.

Fair Use Is Being Used to Legislate A Vast New Use,
Preempting Ongoing Policy Discussions

Many commentators have voiced concern that the fair use doctrine is
being expanded beyond its original intent, and the pendulum has now
swung dramatically in favor of fair use. See, e.g., The Scope of Fair Use:
Hearing before the H. Subcomm. on Courts, Intellectual Property, and the
Internet, 113th Cong. (statement of June M. Besek) (Jan. 28, 2014) (“Besek
Testimony”), at 13. As the examples listed in the preamble to Section 107
demonstrate, mass digitization of all published works by a for-profit
company is far afield of the paradigmatic functions – biography, criticism,
teaching – that Congress contemplated as fair use.
Random House v. Rosetta Books, 150 F. Supp. 2d 613 (S.D.N.Y. 2001)
(recognizing that digital publication right is distinct from print publication
right and must be specifically granted by license); HarperCollins Publishers
v. Open Road Integrated Media, --- F. Supp. 2d ---, 2014 WL 1013838, at *6-7
(Mar. 14, 2014) (citing Rosetta Books with approval but distinguishing its
result based on the relevant contract terms).
2

5

While the preamble is not meant to be exhaustive, this Court has
recognized that “the illustrative nature of the categories should not be
ignored.” Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104, 107 (2d Cir. 1998).
The obvious mismatch between the one-off uses listed in Section 107 and
the systematic mass copying at issue here should counsel courts to proceed
with caution. Nevertheless, the opposite seems to be happening: the vast
scale of the use implicated in mass digitization led the district court to
apply a lower level of scrutiny to the impact on any individual rightsholder
– or on the copyright regime as a whole. As Professor June Besek recently
noted in Congressional testimony, “It’s as though courts are according
some kind of ‘volume discount’ for fair use, where a massive taking
justifies a lower level of scrutiny in a fair use determination.’”

Besek

Testimony at 12.
The fair use doctrine is ill-suited to address the many complex issues
raised by mass digitization. As a highly fact-specific inquiry, the doctrine
was designed primarily to address individual uses on a “case by case”
basis, considering each use “in light of the ends of copyright law.”
Campbell v. Acuff-Rose Music, 510 U.S. 569, 581 (1994).

Its fact-specific

nature is ill-suited to tackle fundamental shifts in technology. “Repeatedly,
6

as new developments have occurred in this country, it has been the
Congress that has fashioned the new rules that new technology made
necessary.” Sony Corp. v. Universal Studios, 464 U.S. 417, 430-31 (1984).
Sound policy, as well as history, supports our consistent
deference to Congress when major technological innovations
alter the market for copyrighted materials. Congress has the
constitutional authority and the institutional ability to
accommodate fully the varied permutations of competing
interests that are inevitably implicated by such new technology.
Id; see also Eldred v. Aschroft, 537 U.S. 186, 212 (2003) (“[I]t is generally for
Congress, not the courts, to decide how best to pursue the Copyright
Clause’s objectives.”).
The policy discussion regarding mass digitization – and market
experimentation – are well underway. In 2011, the Copyright Office issued
an in-depth report, surveying existing projects and considering various
licensing frameworks.

U.S. Copyright Office, Legal Issues in Mass

Digitization: A Preliminary Analysis and Discussion Document (Oct. 2011)
(“Mass Digitization Report” or “MDR”). Mass digitization remains on the
Copyright Office’s priorities list,3 and Congress is hearing testimony on

Maria A. Pallante, U.S. Copyright Office, Priorities and Special Projects of the
United States Copyright Office October 2011-October 2013, at 5 (Oct. 25, 2011).
3

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mass digitization as it considers comprehensive copyright reform.4
Moreover, Google’s approach to creating a mass digital repository without
rightsholders’ consent was by no means the only alternative to the creation
of such a digital archive. For example, in 2006, Microsoft began its own
book-digitization venture that scanned only works that were either in the
public domain or for which it received consent from copyright holders. It
was widely understood that that venture was shuttered when it became
clear Microsoft could not compete with Google’s no-consent-requested
approach. See Miguel Helft, Microsoft Will Shut Down Book Search Program,
N.Y. Times, May 24, 2008 (shutdown decision came “in the face of
competition from Google, the industry leader”). In many other countries,
national libraries have spearheaded digitization efforts. MDR at 10-11, 1516 & Appendix C (describing efforts underway involving, e.g., national
libraries in France, Netherlands, Britain, Sweden, and China, and among a
consortium of European governments).

E.g., Preservation and Reuse of Copyrighted Material: Hearing before the
H. Subcomm. on Courts, Intellectual Property, and the Internet, 113th
Cong. (statement of Richard S. Rudick) (Apr. 2, 2014).
4

8

In the Mass Digitization Report, the Copyright Office recognized that
digitization raises difficult issues that “require public discussion,” and
urged “further discussions among all stakeholders.” MDR at ii, 16, 40. But
by declaring Google’s mass digitization to be fair use, the district court
effectively cut off that ongoing discussion and other alternatives built on
author consent – and instead legislated a vast new use through Section 107.
This approach is problematic for a number of reasons.
First, by evaluating the complex issues of mass digitization through
the lens of a fair use defense raised by a single defendant in a single case
regarding a single end use, the district court’s decision necessarily ignored
– and thereby foreclosed – many important considerations identified in the
Mass Digitization Report. Such a piecemeal approach inevitably leads to a
skewed result.
Second, the structure of the Copyright Act cautions against using fair
use to grant categorical exemptions from copyright liability. Congress has
granted many specific exemptions for categories of use, set out in Sections
108-122 of the Copyright Act. These exemptions are carefully crafted to
balance the interests of rightsholders and users, after extensive public

9

comment. This is the proper route for such large-scale changes to the
Copyright Act.
Moreover, the district court’s decision runs roughshod over one of
those negotiated exemptions, namely Section 108, which carefully lays out
the conditions under which libraries may copy works. Section 108 limits
the number of copies; the purposes for which copies can be made; and who
can make them. 17 U.S.C. § 108. While Section 108 does not preclude fair
use claims, it provides guidance for balancing the relevant interests. The
district court failed to grapple with the relationship between Sections 107
and 108; instead, by finding unauthorized mass digitization by a for-profit
entity that obtained its books from libraries to be a fair use, it effectively
read Section 108 and its carefully crafted bargains out of the Copyright Act.
Finally, the legislative history of the 1976 revision to the Copyright
Act makes clear that Congress intended the protections for rightsholders in
the revised Act to be sufficiently broad to encompass “unforeseen technical
advances.” Presciently, Congress acknowledged the inevitable blind spots
in any contemporaneous assessment of a use enabled by new technology:
Obviously, no one can foresee accurately and in detail the
evolving patterns in the ways author’s works will reach the
public 10, 20, or 50 years from now. Lacking that kind of
10

foresight, the bill should, we believe, adopt a general approach
aimed at providing compensation to the author for future as
well as present uses of his work that materially affect the value
of his copyright. . . .
[A] particular use which may seem to have little or no economic
impact on the author’s rights today can assume tremendous
importance in times to come. A real danger to be guarded
against is that of confining the scope of an author’s rights on
the basis of the present technology so that, as the years go by,
his copyright loses much of its value because of unforeseen
technical advances.
Supplementary Report of the Register of Copyrights on the General
Revision of the U.S. Copyright Law: 1965 Revision Bill, 89th Cong., 1st Sess.
(House Comm. Print 1965) (“Supplementary Report”), at 13-14. In sum, it
is critical that courts not legislate in a manner that favors a particular new
technology at the expense of the rights accorded to copyright holders
under the Act, but rather stay true to the core intent of the Act.
II.

THE DISTRICT COURT ERRED IN APPLYING THE FAIR USE
DOCTRINE
The district court’s sweeping fair use analysis under the four

statutory factors was deeply flawed. While we leave it to Appellant to
discuss the particular application of each factor, including to the excerpts
provided by Google Books, we focus on the larger conceptual problems.

11

At a global level, in addition to effectively overlooking Google’s mass
digitization, the opinion exhibits two overarching problems:

First, the

district court’s decision was driven almost entirely by its finding of
transformative use, giving short shrift to the other fair use factors. Second,
the district court’s conclusion was fueled by its conviction that Google
Books “provides significant public benefits.” Authors Guild v. Google Inc.,
954 F. Supp. 2d 254, 293 (S.D.N.Y. 2013). But the proper analysis under the
fair use doctrine is not the unmoored question of whether a use provides
“public benefits” – which is a highly subjective concept. Undoubtedly,
many consumers would love to see all books, movies, songs, and
photographs available in full for free in every medium. Rather, the proper
question is whether a finding of fair use would, overall, further the
purposes of the Copyright Act to promote the arts and sciences. To assess
the public benefits of a specific use, courts must look at the impact on the
incentives of creators, not just users, of copyrighted works. In the end, the
interests of creators and the public are intertwined: when copyright works
for creators, it ensures the development and dissemination of works that
benefit the public at large.5 The district court opinion never addressed the
5

While Campbell references “social benefit,” the full quote makes plain that
12

impact on copyright holders of allowing a commercial actor to maintain a
digital repository of all of their works and to monetize that database
without agreeing to terms of use or providing any compensation to
rightsholders.
A.

The First Factor Analysis Was Deeply Flawed
1.

The District Court Misapprehended the Commercial
Nature of Google’s Principal Use

The district court’s initial error under the first factor was to woefully
undervalue the highly commercial nature of the Google Books service.
While the district court briefly acknowledged that this case involves a
commercial actor, it minimized that commerciality by focusing on the lack
of advertising on Google Books. This misapprehends Google’s principal
commercial interest in the collection of data about individual user activity
across all Google products for use in targeted advertising. See Claire Cain
Miller, The Plus in Google Plus? It’s Mostly for Google, N.Y. Times, Feb. 14,
2014. Knowing what types of books its users search for online is a valuable
piece of data in building profiles for targeted advertising, whether that

it must be interpreted within the context of the Copyright Act’s goals.
Campbell, 510 U.S. at 579 (parody “can provide social benefit, by shedding
light on an earlier work, and, in the process, creating a new one”).
13

advertising is served up on Google Books or elsewhere on the Google
platform. Moreover, the book index is integrated into Google’s general
search index, thus enhancing its search engine, its core product.6
Furthermore, the district court failed to acknowledge the unfair
commercial advantage it was bestowing upon Google over competitors
who might seek to enter the market for digital preservation or search. To
bestow this advantage, the district court incorrectly assumed that libraries
can contract their Section 108-exempt functions to a private third party. See
H.R. Rep. No. 94-1476, at 74 (1976), reprinted in 1976 U.S.C.C.A.N. 5659,
5688 (explaining that “it would not be possible for a non-profit institution,
by means of contractual arrangements with a commercial copying
enterprise, to authorize the enterprise to carry out copying and distribution
functions that would be exempt if conducted by the non-profit institution
itself”).

The district court should have recognized the potential for

antitrust concerns, as it did in its prior decision, when it noted that the
previously proposed settlement in this case “would give Google a right,
The district court also improperly characterized Google’s use as
“educational.” Under proper fair use analysis, the court must focus on the
nature of the primary user – Google – “not the acts of [its] end-users.”
Infinity, 150 F.3d at 108.
6

14

which no one else in the world would have … to digitize works with
impunity, without any risk of statutory liability, for something like 150
years,” thereby “arguably giv[ing] Google control over the search market.”
Authors Guild v. Google Inc., 770 F. Supp. 2d 666, 682 (S.D.N.Y. 2011). While
the district court’s opinion technically allows other private companies to
engage in the same digitization as Google, the immense scale of Google’s
library – created without the costs of licensing – gives it an effective
monopoly over this market and imposes enormous barriers to entry for
other entities. In effect, the district court has anointed Google, a private
actor, as the nation’s designated depositor of copyrighted works.

The

Alliance respectfully submits that this designation should come not from a
court on a fair use decision, but from Congress, and should include
appropriate restrictions to guard against an abuse of market power.
2.

Where an Allegedly Transformative Use Is for a New
Functional – Not Expressive – Purpose, this Court
Should Be Especially Careful in Its Analysis

This Court’s approach to the transformative use analysis is critical.
Because this case and Authors Guild v. Hathitrust are the first cases in which
the Second Circuit addresses the fair use doctrine in the context of search
engines, its mode of analysis will have a broad impact on a wide range of
15

fact settings not before the Court. We respectfully submit that fair use
cases should be viewed as falling into two categories:

(1) where the

secondary work aims to serve a new expressive use; and (2) where the
secondary work aims to serve a different functional purpose.
The first category would incorporate all uses of copyrighted works in
books, newspapers, magazines, art, film, music, theater, dance, and other
creative works that are within the general subject matter of copyright. For
these works, courts should be guided by traditional fair use principles,
relying on the guidance of previous cases distinguishing between fair uses
and derivative works that must be licensed.
The second category – where the use under review serves a new
functional purpose – would encompass such cases as the Ninth Circuit’s
decisions in Kelly v. Arriba Soft, 336 F.3d 811 (9th Cir. 2003), and Perfect 10
v. Google, 508 F.3d 1146 (9th Cir. 2007), as well as AV ex rel. Vanderhye v.
iParadigms, 562 F.3d 630 (4th Cir. 2009).

In these cases, the plaintiffs

asserted that their use performs a useful function that advances “Science
and the Arts” – such as providing an electronic pointer or detecting
plagiarism – even though the end use does not itself comment upon the
original.
16

While we recognize the benefits to society from new technologies, we
respectfully submit that “functional use” cases should be analyzed
differently than “new expressive use” cases – both because they are not at
the core of the fair use doctrine historically and because they pose the
threat of different and greater harms to the copyright holder. For these
“functional” use cases, there should be a heightened examination of
whether the new use is capable of supplanting the original.
As the Supreme Court has instructed, “The central purpose of [the fair
use] investigation is to see, in Justice Story’s words, whether the new work
merely ‘supercede[s] the objects’ of the original creation … or instead adds
something new, with a further purpose or different character, altering the
first with new expression, meaning or message; it asks, in other words, whether
and to what extent the new work is ‘transformative.’” Campbell, 510 U.S. at
579 (emphasis added, internal citations omitted). The transformative use
doctrine has its origins in an article by Judge Pierre N. Leval, titled
“Commentaries: Toward a Fair Use Standard.” 103 Harv. L. Rev. 1105
(1990).

Leval made plain that the doctrine’s core aim is to advance

expressive uses of a prior author or creator’s works. Fair use, he explained,
is necessary for two reasons: “First, all intellectual creative activity is in
17

part derivative. … Each advance stands on building blocks fashioned by
prior thinkers. Second, important areas of intellectual activity are explicitly
referential. Philosophy, criticism, history, and even the natural sciences
require the continuous reexamination of yesterday’s theses.” Id at 1009.
See also Campbell, 510 U.S. at 575 (quoting Justice Story). Leval’s examples
are telling: “Transformative uses may include criticizing a quoted work,
exposing the character of the original author, proving a fact, or
summarizing an idea argued in the original in order to defend or rebut it.
They also may include parody, symbolism, aesthetic declaration, and
innumerable other uses.” Id. at 1111.
The Supreme Court’s decision in Campbell likewise was very focused
on fair use as a means of permitting the use of an earlier work to advance a
new expressive purpose. The case arose in the context of a song parody – a
new expressive use – and the Court’s analysis is deeply moored to that
context. Moreover, the case clearly addressed a one-time use, not a
commercial business built on the systematic exploitation of copyrighted
works created by others.

The Supreme Court emphasized that the

transformative-use inquiry “may be guided by the examples given in the
preamble to § 107, looking to whether the use is for criticism, or comment,
18

or news reporting.” Id. at 578-79. The Campbell Court likewise made clear
that new uses that largely re-package the original are not transformative,
observing that a work “composed primarily of an original, particularly its
heart, with little added or changed” “reveal[s] a dearth of transformative
character or purpose under the first factor” and “is more likely to be a
merely superseding use, fulfilling demand for the original.” Id. at 587-88.
To date, the Second Circuit cases upholding a finding of fair use have
overwhelmingly involved a new work that uses the original work for a
new expressive purpose.

Furthermore, individual uses of copyrighted

content have fared much better than commercial businesses built on the
systematic exploitation of copyrighted works. E.g., Nihon Keizai Shimbun v.
Comline Business Data, Inc., 166 F.3d 65 (2d Cir. 1999). As the Second Circuit
explained in Wainwright, “a classic illustration of fair use is quoting from
another’s work in order to criticize it . . . . Put more graphically, the
doctrine distinguishes between ‘a true scholar and a chiseler who infringes
a work for personal profit.’”7

Wainwright Securities, Inc. v. Wall St. Transcript Corp., 558 F.2d 91, 94 (2d
Cir. 1977) (internal citations omitted).
7

19

The Ninth and Fourth Circuits have found that a new functional
purpose can qualify as a transformative use in cases such as Kelly, Perfect 10
and iParadigms. But even these cases are carefully circumscribed to
situations in which the new use is not capable of serving the same intrinsic
purposes as the original work and thus could not supplant the original.
Kelly, 336 at 819. Moreover, the Ninth Circuit itself has recently reiterated
that “Campbell makes clear that the ‘heart’ of a claim for transformative use
is ‘the use of some elements of a prior author’s composition to create a new
one that, at least in part, comments on that author’s works.’” Monge v.
Maya Magazines, 688 F.3d 1164, 1175 (9th Cir. 2012) (quoting Campbell, 510
U.S. at 580).
Further, the Second Circuit has expressed concern with “different
functional use” arguments. This Court recognized the critical distinction
between a new expressive use and a different functional use in Infinity
Broad. Corp. v. Kirkwood, 150 F.3d 104 (2d Cir. 1998). There, the defendant
Dial-Up operated a radio monitoring service that re-transmitted free radio
broadcasts to subscribers.

Dial-Up was marketed to radio stations,

advertisers, talent scouts and performance rights organizations for
purposes such as verifying the broadcast of commercials, auditioning on20

air talent, and enforcing copyrights.

Id. at 106.

In some instances,

customers listened only to “mere snippets of Infinity’s broadcasts.” Id. at
109. Dial-Up argued that it was using the radio broadcasts for a different
functional purpose – namely, for information about the broadcasts rather
than entertainment. Although this Court noted that the beneficial aspects
of the service could be taken into account in assessing fair use, it concluded
that “difference in purpose is not quite the same thing as transformation
and Campbell instructs that transformativeness is the critical inquiry under
this factor.” Id. at 108. As it stated:
Here, as the district judge observed, “Kirkwood’s
retransmissions leave the character of the original broadcasts
unchanged. There is neither new expression, new meaning nor
new message.” … In short, there is no transformation.
Id (emphasis added).8 Ultimately, the Infinity decision concluded that a
different purpose alone did not carry the contested use into the zone of fair

See also Video Pipeline v. Buena Vista Home Entm’t, 342 F.3d 191, 198-99 & n.5
(3d Cir. 2003) (rejecting argument that defendant’s movie clip previews were
transformative because they allegedly served an “informational or
promotional” purpose, since previews were “part of – not information about”
plaintiff’s copyrighted works); United States v. ASCAP, 599 F. Supp. 2d 415,
424-27 (S.D.N.Y. 2009) (rejecting AT&T’s argument that ringtone previews
were transformative because they allegedly served the purpose of
informing customers about the ringtones, as opposed to the entertainment
purpose of the original music); Pacific & Southern Co. v. Duncan, 744 F.2d
21
8

use, and that a use which could serve the same purpose as the original for
even a small segment of users was not transformative.
In Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006), this Court again
expressed hesitation with an analysis focused solely on purpose – there, the
different purposes of an advertisement and a painting – stating that “[w]e
have declined to find a transformative use when the defendant has done no
more than find a new way to exploit the creative virtues of the original
work.” Id. at 252. It likewise took issue with a Seventh Circuit decision
holding that the exploitation of “new, complementary markets” qualified
as fair use and with a treatise stating that the fair use defense may be
invoked if the defendant’s work “performs a different function than that of
plaintiff’s” because these statements were “in tension with the Copyright
Act’s express grant to copyright holders of rights over derivative works.”
Id. at 252 n.4.9

1490, 1496 (11th Cir. 1984) (news clipping service was “neither productive
nor creative in any way”).
Thus, a different purpose is not a “catch-all” equating with transformative
use. While the Second Circuit’s decision in Bill Graham Archives v. Dorling
Kinderlsey discussed the different purpose of the use, the context was a
paradigmatic expressive use: illustrating a biographical work. The Second
Circuit underscored that although “there are no categories of
22
9

Fair use is not an “all or nothing matter” but rather focuses on
whether the challenged work serves the purposes of the Copyright Act “to
an insignificant or a substantial extent.” Twin Peaks Prods. v. Publ’ns Int’l,
996 F.2d 1366, 1374 (2d Cir. 1993). New expressive works that comment
upon the originals or use them as historical artifacts are most likely to
substantially advance the goals of the Copyright Act. But when it comes to
the unauthorized copying and dissemination of copyrighted works with
only a new functional purpose as the justification – such as facilitating
search – it is critical that the courts recognize such uses are far from the
heart of the transformative use doctrine, and that they condone such uses
as transformative uses, if at all, with the utmost of care and in the
narrowest of circumstances.

presumptively fair use … courts have frequently afforded fair use
protection to the use of copyrighted material in biographies, recognizing
such works as forms of historic scholarship, criticism, and comment that
require incorporation of original source material for optimum treatment of
their subjects.” 448 F.3d 605, 609 (2d Cir. 2006). With that critical backdrop, the court stressed that the images in the biographical work served as
“historical artifacts,” id. at 610, a distinct purpose from the original
promotional purpose of the images.
23

3.

A Proposed Mode of Analysis for Functional Use Cases

We respectfully submit that “functional use” cases should be
analyzed as follows:
First, courts must be wary of confusing “usefulness” with “fair use”
and keep in mind the deliberately technology-neutral posture of the
Copyright Act (see Supplementary Report at 13-14).

Courts have

repeatedly held that enhancing convenience and efficiency are not
transformative purposes.

As this Court noted in American Geophysical

Union v. Texaco:
Texaco’s photocopying converts the individual [journal] articles
into a useful format. … Nevertheless, whatever independent
value derives from the more usable format of the photocopy
does not mean that every instance of photocopying wins on the
first factor. In this case, the predominant archival purpose of
the copying tips the first factor against the copier, despite the
benefit of a more usable format.
60 F.3d 913, 923-24 (2d Cir. 1994). See also Infinity, 150 F.3d at 108 & n.2 (a
“change of format, though useful” is not transformative); Princeton Univ.
Press v. Michigan Doc. Serv. Inc., 99 F.3d 1381, 1389 (6th Cir. 1996).
Second, in keeping with Kelly and Infinity, the key question in
“functional use” cases should be whether the new use is capable of
substituting for the original. The Ninth Circuit in Kelly took pains to try to
24

harmonize its ruling with the Second Circuit’s decision in Infinity.

It

emphasized that in Infinity, even though the radio broadcasts were
transmitted “for the purpose of allowing advertisers and radio stations to
check on the broadcast of commercials or on-air talent, there was nothing
preventing listeners from subscribing to the service for entertainment purposes.
Even though the intended purpose of the retransmission may have been
different from the purpose of the original transmission, the result was that
people could use both types of transmissions for the same purpose.” 336
F.3d at 819 (emphasis added). Thus, even the Ninth Circuit has endorsed a
high standard requiring that the secondary use not be capable of serving
the same purpose as the original.
Third, courts should employ a sophisticated empirical examination
regarding whether the new use is truly acting as a pointer to the original –
or whether that is just a facile justification. In Associated Press v. Meltwater
U.S. Holdings, a district court found that the defendant, a media-monitoring
service that argued it functioned as a “search engine,” was not engaged in
fair use when it systematically delivered “snippets” of news articles, along
with a link to the original article. The district court underscored that, given

25

the fact-specific nature of fair use, merely invoking the mantle of a search
engine
does not relieve [the defendant] of its independent burden to
prove that its specific [use] qualifies as a fair use. In other
words, using the mechanism of search engines to scrape
material from the Internet and provide it to consumers in
response to their search requests does not immunize a
defendant from the standards of conduct imposed by law
through the Copyright Act, including the statutory
embodiment of the fair use defense.
931 F. Supp. 2d 537, 556 (S.D.N.Y. 2013). Finding that the defendant failed
to offer sufficient empirical evidence to support its argument that its
snippets drove users to the original work – thereby acting as a pointer,
rather than a substitute – the court held that the defendant’s service was
more akin to a clipping service and that the defendant did not meet its
burden of demonstrating transformative use. Id. at 554-56.
Fourth, there should be a sophisticated analysis of whether profits are
being diverted from the original creator. One of the core problems in the
digital world is the disaggregation of content from its initial publisher, and
therefore a siphoning off of profit. For example, a service that keeps users
within its own platform may deprive the original publisher of traffic – and
therefore advertising revenues. Courts should be especially vigilant that
26

the new functional use does not threaten rightsholders’ ability to be
compensated for their work, as Congress intended.
Finally, where the functional use at issue is systematic, courts should
be especially vigilant in weighing the additional considerations listed
above. A systematic use raises the stakes considerably for any fair use
inquiry, since the court’s decision may fundamentally change the market –
not only for the works at issue in the case, but for all copyrighted works
subject to the functional use proffered as transformative.
Very briefly, any application of these factors in this case must
recognize that, in contrast to Kelly and Perfect 10 – and similar to Infinity –
the copies of 20 million books in Google’s permanent repository are highresolution, machine-readable, copies of entire works. Although Google has
voluntarily placed certain restrictions on access to full text through Google
Books – for now – the copies in the repository are still fully capable of
substituting for the original works. Indeed, they are unchanged from the
original except in format and hence do not “alter[] the first with new
expression, meaning or message.”

Campbell, 510 U.S. at 579.

Despite

electronic rights being available for many of the works, Google has ignored
that basic fact and has systematically exploited the value of the books,
27

without compensating the rightsholders, in a fashion that may be
convenient for consumers, but should have been done with stakeholder
participation.

Further, Google’s massive digital library realistically

supplants the creation of a similar digital library governed by the terms
that the books’ rightsholders would have desired. Finally, in a world in
which serious security breaches are reported weekly in the news, Google
has created a digital repository that, if hacked, could lead to piracy writ
large, crippling the industry.
B.

The District Court’s Analysis of the Second Factor Placed
Undue Emphasis on the Works’ Factual Nature

In analyzing the second factor, the district court placed undue weight
on the fact that most of the books at issue are non-fiction, applying an allor-nothing approach in which factor two automatically weighs in favor of
the infringer where the works are not fictional. Especially where, as here,
the works Google copied are scholarly books, the result of extensive
scholarship and analysis, the district court’s holding cannot stand under
the Supreme Court’s decision in Harper & Row. It held that:
[E]ven within the field of fact works, there are gradations as to
the relative proportion of fact and fancy. One may move from
sparsely embellished maps and directories to elegantly written
biography. The extent to which one must permit expressive
28

language to be copied, in order to assure dissemination of the
underlying facts, will thus vary from case to case.
Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 563 (1985).
Thus, the second factor calls for courts to analyze the copyrighted
works along a continuum. Even though “the scope of fair use is greater
with respect to factual than non-factual works” (Basic Books v. Kinko’s
Graphics Corp., 758 F. Supp. 1522, 1532 (S.D.N.Y. 1991)), scholarly works are
entitled to robust copyright protection. As the Supreme Court expressed in
Harper & Row, the aim of copyright is “to stimulate the creation of useful
works for the general public good” – a “principle [which] applies equally
to works of fiction and nonfiction.”

471 U.S. at 546, 558.

“It is

fundamentally at odds with the scheme of copyright to accord lesser rights
in those works that are of greatest importance to the public.” Id. at 559.
Many courts analyzing fair use in the context of more sophisticated
factual works properly have found that the second factor weighs in favor of
the plaintiff or is at worst neutral.

In Harper & Row, which involved

President Ford’s autobiography, the Supreme Court found that the second
factor weighed in favor of the publisher. 471 U.S. at 564. The Sixth Circuit
reached the same conclusion in Michigan Doc. Servs., Inc., 99 F.3d at 1389,
29

when it analyzed copying of scholarly works for coursepacks.

In

Weissmann v. Freeman, this Court considered the educational use of journal
articles on nuclear medicine. 868 F.2d 1313 (2d Cir. 1989). In view of the
purpose of copyright – to “provide the economic incentive to research and
disseminate ideas” “whether in the nature of fiction or fact”– the court
concluded that “the incentive interests, in our view, balance the equitable
scales so that the nature of the work factor does not tip decidedly in favor
of either party.” Id. at 1325. The second factor should favor Appellant.
C.

The District Court’s Analysis of the Third Factor Mistakenly
Focused Only on the Amount Displayed in Google Books,
Rather than the Amount Taken through Mass Digitization

The district court’s improper framing of the use under review as the
display of excerpts in the Google Books service – rather than the antecedent
mass digitization – also led to the wrong result in its analysis of the third
factor. As the district court notes, it is undisputed that Google copies the
entirety of each book and retains more than one full copy of each work on
its servers.10 954 F. Supp. 2d at 286. Google’s copies are not simply an

Google has not merely ingested text to create an electronic index
verborum, a listing of words and locations where those words appear; it has
also built a digital repository holding multiple copies of each scanned work
in its original form, its text intact.

10

30

intermediate step to making available excerpts for Google Books; the
search results are merely one current product drawing from the massive
digital repository of full-text books that Google has permanently stored on
its servers. Google’s copying and maintenance of this digital repository,
without rightsholders’ permission, constitutes a taking of each work in its
entirety. The third factor should therefore weigh heavily – not just
“slightly” (954 F. Supp. 2d at 292) – against Google. See, e.g., Texaco, 60 F.3d
at 926.
Furthermore, the district court was required to determine whether
Google’s permanent storage of copies of each work is “necessary” for its
maintenance of the Google Books index. Castle Rock Entm’t v. Carol Publ’g
Grp., 150 F.3d 132, 144 (2d Cir. 1998). The district court’s conclusion that
Google’s actions were indeed necessary is problematic, since it ignores
alternative methods that Google could have taken to achieve the same
goals. For example, Google could have purchased existing digital copies of
books, or could have negotiated licenses with rightsholders, as it was
already doing through its Partner Program.

31

D.

The District Court Erred in Finding that the Fourth Factor
Favors Google

On the fourth factor, the district court erred again by not focusing on
the antecedent mass-digitization.

Here, there is a classic market harm

because Google did not “pay[] the customary price” to acquire digital
versions of the books. Harper & Row, 471 U.S. at 562. This Circuit has
repeatedly recognized that the loss of “potential licensing revenues” in
“traditional, reasonable or likely to be developed markets” represents
market harm under the fourth factor. Texaco, 60 F.3d at 929-30; On Davis v.
The Gap, 246 F.3d 152, 176 (2d Cir. 2001) (copyright owner “suffered market
harm through his loss of royalty revenue to which he was reasonably
entitled in the circumstances”).
Many of the books digitized by Google were available for purchase
or license in digital form. Moreover, the Copyright Clearance Center has a
long history of collectively licensing literary works. Texaco, 60 F.3d at 92931. Indeed, both Amazon’s arrangements with publishers for its “Search
Inside the Book” program and the fact that Google eventually negotiated
voluntary licenses with major publishers for many books through the
Google Partner Program illustrates that for innumerable books, a market

32

exists – one in which publishers could obtain terms to protect their
concerns. Even more alarming is the future market harm to all
rightsholders’ future ability to exploit their works, as the district court has
effectively granted a powerful private corporation carte blanche to build and
maintain its own free deposit library of every work published in the United
States.11

As for the search results, even here the district court’s analysis was too
cramped. There are other digital archives of books, such as Project Muse
and JSTOR, whose search functions could have potentially served as
opportunities for monetization by copyright holders if Google had not
captured the book-search field with Google Books. Furthermore, if Google
or its licensees marketed segmented search capacities – targeted, for
example, to travel books or algebra books or hair-grooming books – the
“snippets” might well substitute for purchase of the original.
11

33

CONCLUSION
For the reasons set forth above, amicus curiae The Copyright Alliance
respectfully asks this Court to reverse the district court’s decision.
Dated: April 14, 2014
Respectfully submitted,
DAVIS WRIGHT TREMAINE LLP

By: s/ Elizabeth A. McNamara
Elizabeth A. McNamara
Linda Steinman
Alison Schary
1633 Broadway
New York, NY 10019
Tel: [phone]
Fax: [phone]
Attorneys for Amicus Curiae
The Copyright Alliance

34

CERTIFICATE OF COMPLIANCE
This brief complies with the type-volume limitations of Fed. R. App.
P. 29(d) and Fed. R. App. P. 32(a)(7)(B) because it contains 6,989 words,
excluding exempted parts, as determined by the word-counting feature of
Microsoft Word.
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
it has been prepared in a proportionally spaced typeface using Microsoft
Word in 14-point Book Antiqua font.
Dated: April 14, 2014
By: s/ Elizabeth A. McNamara
Elizabeth A. McNamara
Attorney for Amicus Curiae
The Copyright Alliance

35

CERTIFICATE OF SERVICE

I hereby certify that on April 14, 2014, copies of the foregoing were
served by CM/ECF and first-class mail upon the following counsel:
Joseph C. Gratz
DURIE TANGRI
217 Leidesdorff Street
San Francisco, California 94111

Edward Rosenthal
FRANKFURT KURNIT KLEIN &
SELZ, P.C.
488 Madison Avenue, 10th Floor
New York, New York 10022

Seth P. Waxman
Randolph Daniel Moss
WILMER CUTLER PICKERING
HALE AND DORR LLP
1875 Pennsylvania Avenue, NW
Washington, DC 20006

Paul M. Smith
JENNER & BLOCK
1099 New York Avenue, NW,
Suite 900
Washington, DC 20001

Attorneys for Defendant-Appellee

Attorneys for Plaintiffs-Appellants
s/ Elizabeth A. McNamara
Elizabeth A. McNamara