On October 16, the United States Court of Appeals for the Second Circuit held that Google's unauthorized digitizing and selective provision of copyrighted works through its Google Books and Library Project is noninfringing fair use, despite the commercial purpose of Google's service.The Authors Guild et al. v. Google, Inc., Case No. 13-4829 (2d Cir. Oct. 16, 2015).

The decision comes after more than 10 years of litigation with authors representing a putative class. The court held that Google's creation of search functionality and display of snippets of those works were sufficiently transformative to provide a valuable public benefit without substituting for the authors' works in the marketplace.

The decision underscores that consideration of the harm that the secondary use can cause to the market for, or the value of, the copyright for the original work is the most important element of fair use. The court also rejected the authors' argument that Google had usurped their exclusive market for derivative works, as Google had not merely converted the books into a digitized form but rather disseminated information about the original work.

The Second Circuit's Decision

Google's "transformative" purposes were at the heart of the court's fair use analysis, which considers the following four factors: (i) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (ii) the nature of the copyrighted work; (iii) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (iv) the effect of the use upon the potential market for or value of the copyrighted work.

The court, in noting that the four factors do not bear equal weight, and declining any "bright-line" rules from prior dicta, focused on the particular facts surrounding Google's technology. First, for the Library Project, Google's bilateral agreements with major research libraries allowed each participating library only to download digital copies of the books that that particular library had provided to Google. As part of this arrangement, each library committed in writing to use its digital copies only in a manner consistent with copyright law.

Google's Library Project enabled Google to create its Google Books search engine, which provides search functions across the entire digital corpus. Specifically, users can search for specific terms, learn the titles and number of books in which those terms appear (and how many times in each), and view up to three "snippets" using a term to understand how it is being used. The court discussed the numerous ways in which Google limited these "snippets," including disabling the snippet view for works such as books of short poems or cookbooks for which one excerpt could satisfy the searcher's need for the book, and excluding a book altogether upon request by the rights holder.

The public contributions resulting from the Library Project appeared to influence the court's analysis as the court noted that Google's Library Project has allowed Google to scan, render text-readable, and index more than 20 million books, both copyrighted and in the public domain, the vast majority of which are no longer in print. The court also discussed how Google's database has made possible new forms of "text mining" and "data mining" research—that is, Google's "ngrams" research tool furnishes statistical information about the usage of words and phrases that has enabled significant linguistic and other academic research and scholarship.

Notably, the court began its discussion of fair use by stating that the "ultimate goal of copyright is to expand public knowledge and understanding," i.e., "To promote the Progress of Science." (citing U.S. Const., Art. I, § 8, cl. 8). The court started its analysis of the first factor—purpose and character of the use—by stating that Google's use of the copyrighted works "involves a highly transformative purpose." As in Authors Guild, Inc. v. HathiTrust, 755 F.3d 87 (2d Cir. 2014), the court concluded that "both the making of the digital copies and the use of those copies to offer the search tool were fair uses." (citing 755 F.3d at 98). Both Google and HathiTrust download and store complete digital copies of the entire books, but they do so in order to make significant information about those books available.

The court then addressed two potentially important distinctions between the cases: first, while Google Books allows searchers to read snippets where HathiTrust does not, Google's snippet function provides enough context to help evaluate searches in a way that contributes to that transformative purpose: providing a more useful search function. Second, while Google may have an indirect profit motive by providing these services, commercial motive is not dispositive of fair use.

The court noted that the dictum cited by the plaintiff authors—that "every commercial use of copyrighted material is presumptively … unfair" (Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 451 (1984))—has been recognized as "enormously overstated." Not all educational purposes will qualify as fair use, and neither will all commercial purposes fail. Although the authors argued that Google's search functionality detracts from the potential market for licensed search functions that would pay the authors, the court also emphasized that Google received no advertising or other revenue for the searcher's use of this feature. Google's commercial motivations did not outweigh the fact that its uses were transformative and were not a significant substitute that would compete with the original works.

The court noted that the second factor—the nature of the copyrighted work—rarely plays a significant role in the determination of a fair use dispute, and repeated its conclusion that Google's secondary use "transformatively provides valuable information about the original, rather than replicating protected expression in a manner that provides a meaningful substitute." 

Similarly, as to the third factor, "the amount and substantiality of the portion used in relation to the copyrighted work as a whole," the copied work would not serve as a market substitute for the original. Citing the numerous restrictions Google's technology imposes on the snippet views, the court held that the minimal amount of text revealed, combined with the fragmentary nature in which it is revealed, prevent that revelation from being "substantial."

For the fourth factor, "the effect of the [copying] use upon the potential market for or value of the copyrighted work," the court recognized that the snippet function could cause some loss of sales but held that that possibility or even certainty "does not suffice to make the copy an effectively competing substitute." The kind of lost sales that disallowing Google's uses would prevent, such as historical facts that searchers might find in the snippet view, are not related to interests protected by copyright. Given the disjointed and incomplete nature of the snippets available for a copyrighted work, the court opined it "would be a rare case in which the searcher's interest in the protected aspect of the author's work [i.e., the authorial expression] would be satisfied by what is available from snippet view, and rarer still" that any combination of snippets could substitute for buying the actual book.

As to the authors' claim that Google's uses infringed the authors' exclusive right as copyright owners to prepare derivative works, the court cited itsHathiTrust opinion of a year earlier that "[p]aradigmatic examples" of derivative works include translations, adaptations, "or the recasting of a novel as an e-book or an audiobook." 755 F.3d 87, 95 (2d Cir. 2014). The court noted that here, Google's copying of the original to comment on it or to provide information about it was "transformative" and that the plaintiffs' authorship does not include "an exclusive right to furnish the kind of information … that Google's programs provide to the public." 

If Google had converted the authors' books into a digitized form and made that digitized version accessible to the public, the plaintiffs would have a strong claim, but as is, the plaintiffs' challenge to Google's dissemination of information about the original works fails because the supposed loss of the authors' potential licensing revenue was too speculative. Finally, while the court acknowledged as "theoretically sound" the plaintiffs' argument about their exposure to piracy—i.e., potential hacking of Google's or its library partners' copies of their works—it held that it was "not supported by the evidence." In particular, Google's digital protections and its library partners' assurances that they would take precautions to prevent dissemination were adequate in the absence of any factual basis that such hacking was more than a "speculative possibility."

Ramifications of the Decision

The Second Circuit's holding ends a decade-long battle over Google's digitizing of copyrighted works and immunizes its transformative use as fair use. The court also identified the standards that a copier needs to meet in order to show how a secondary use is a productive use that builds on the work of others and contributes to public knowledge and society, and whether the copier has legal and technological measures in place to prevent a secondary use from substituting for the original work in the market.