The Paris High Court has found Google Inc liable for copyright infringement just as it is about to launch its new service, Google Editions, allowing consumers to purchase books that they have previewed on Google Books. On 18th December 2009 the court held that the search engine infringed numerous protected works by digitising and displaying them on Google Books, an online service enabling access to digitised books, without the authorisation of the relevant copyright owners. The court ordered Google Inc to:
- Pay damages of €300,000 for copyright infringement.
- Remove the infringing digital books from the search engine.
- Publish the judgment.
The plaintiffs - French, Swiss and US publishing companies Editions du Seuil SAS, Delachaux & Niestle SA and Harry N Abrams Inc, as well as professional associations the National Publishers Association and the French Authors Guild - argued that Google Inc and Google France had digitised books for which the exclusive rights were owned by the plaintiffs, and that Google Books users could access the covers and entire excerpts of the books without their authorisation. Editions du Seuil was also contesting the use of its trademarks EDITIONS DU SEUIL and SEUIL in the digitised copies.
The main issues raised in the case relate to the choice of law rules in international copyright conflicts and the different rights involved in such a huge project involving the digitisation of literary works.
Google argued that US law should be applied, referring to Article 5(2) of the Berne Convention, which states that the applicable law in matters of complex litigious acts realised on the Internet is that of the state territory where the acts occurred. In this case Google considered that the process of digitisation took place in the United States, thus concluding that the Copyright Act 1976 and the defence of “fair use” should prevail.
However, the judges decided that French law was to be applied, since numerous elements linked the case to France. It was not contested that:
- The digitised French books could be accessed by French users on the French territory.
- Several plaintiffs were French.
- Google France, the second defendant, was established in France.
- The domain name “www.books.google.fr” had an “fr.” extension and was written in French.
Since the illegal acts of digitising the works and displaying them online were demonstrated, and thus the unauthorised acts of reproducing and representing them were established, Google could argue only that its behaviour fell under exceptions to the monopoly granted to copyright owners, enabling it to pursue its activity without prior authorisation.
On the copyright issue, Google invoked the “short quotation" exception cited by Article L122-5 3 of the French IP Code. The article provides that copyright owners cannot prohibit “short quotations legitimized by the critical, polemic, educational, scientific or informative nature of the work in which they are incorporated”.
The court followed the case law in this matter and rejected Google’s argument, deciding that the book covers were communicated to the public in their entirety, and that even though they were displayed at a reduced size, the random aspect of the excerpts chosen meant that there was no informative purpose as required by Article L122-5 3. Thus, the main reason that the judges rejected the “short quotation" exception was that the infringed content was not pre-determined but randomly displayed, prohibiting any informative nature or use for comment.
If the court had found US law to be applicable, the aspects of the “fair use” defence argued by Google Inc could have constituted an efficient defence to copyright infringement.
On the trademark issue, Editions du Seuil alleged that Google Inc had infringed its French and Community trademarks, which were registered in Classes 9, 16, 28, 38, 41 and 42 of the Nice Classification. The court rejected the allegation of trademark infringement by confirming Google's affirmative defence, noting the lack of commercial use of the service marks by Google. The judges decided that Google had reproduced the trademarks only to inform users as to the identity of the publishers of the books cited in the search results, which was mandatory for citation purposes.
Moreover, the court partially revoked the trademark registrations for the services designating “access time location to a centre of data base related to literary, artistic or documentary works” on the grounds of non-use by their owner.
This ruling could increase the number of trials in France against Google for similar facts and may have a great impact on the potential partnership that the French government plans to establish with Google Inc. The government intends to rely on Google Inc to digitise millions of books for a universal digital library. The Report on the Digitisation of the Written Heritage, issued on 12th January 2010 and supervised by Marc Tessier, president of the Commission on the Digitisation of the Libraries’ Legacy Collection, still includes a project to form a partnership with Google, despite the desire to maintain a certain degree of control of French national cultural heritage. (The report is available online at www.culture.gouv.fr/mcc/Actualites/A-la-une/Mission-sur-la-numerisation-du-patrimoine-ecrit/Rapport-Tessier.)
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com