It is time to take another break from discussing patent reform to address a recent copyright infringement decision by the U.S. Court of Appeals for the Second Circuit (the “Second Circuit”) regarding the legality of Google’s Library Project and Google Books website. In Authors Guild et al. v. Google, Inc., the Second Circuit held that the project and the website were protected from copyright infringement claims via the fair-use doctrine in a decision issued on Oct. 16, 2015.

The decision may have relevance to readers of this blog who have published textbooks that can be found in various libraries throughout the U.S. (and even the entire world).

Google’s Library Project and Google Books Website

Google’s Library Project is a massive book-copying project that began in 2004. Through the project, Google obtained copies of various books from libraries for scanning. Each book was scanned and entered into Google’s databases for cataloging. Google also obtained various bits of statistical information about the contents of the books through the project.

Once Google obtained a digital copy of a book, they made the digital copy available to the library that provided the paper copy of the book. Google placed certain restrictions on what the library could do with the digital copy.

Google set up a website called Google Books that provided limited access to over 20 million books. Some of these books are protected by copyright. Others are in the public domain.

Members of the public can use the Google Books website to search for books. The website allows users to obtain certain information through Google’s search tools. For some books, Google will allow users to view “snippets” of text in order to confirm that the search results are relevant.

The Court’s Fair-Use Determination

In 2005, the plaintiffs attempted to bring a class-action lawsuit against Google alleging that the Library Project and the Google Books website constituted copyright infringement. The parties attempted to negotiate a settlement for six years before reaching a tentative settlement. However, the district court that was presiding over the case rejected the settlement.

The lawsuit resumed in 2012. Google brought a summary judgment motion shortly thereafter and claimed that both projects were protected by the fair-use doctrine. The district court granted the motion in 2013, which allowed the plaintiffs to appeal to the Second Circuit.

The Second Circuit examined the four statutory factors that courts must consider in a fair-use analysis: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of use; and (4) the effect of the use upon the potential market. See 17 U.S.C. § 107. The court concluded that Google’s use of the books constituted fair use and placed a heavy emphasis on the “transformative” nature of Google’s use.

The term “transformative use” within the context of a fair-use analysis generally means that the alleged infringer has added new meaning or value through its use of the copyrighted work.

Other Issues That Were Addressed

The Second Circuit rejected three more arguments made by the plaintiffs. First, the plaintiffs argued that Google was creating derivative works by making “snippets” of the books available to the general public. Second, the plaintiffs argued that Google was exposing the books to a potential risk that hackers could access the books and make illegal copies. Third, the plaintiffs argued that by making the digital copies available to libraries, Google was making it possible for the libraries to distribute the books illegally.

The court rejected each of the arguments as being theoretical or inconsistent with its finding of fair use.

What Happens Next

The Authors Guild decision was issued by a panel of three judges within the Second Circuit. It is possible that the plaintiffs will ask the entire court to review the decision. The plaintiffs may also ask the Supreme Court to review the decision.

If the decision is not reviewed and reversed by the entire Second Circuit or by the Supreme Court, the decision will have the force of law in New York, Connecticut and Vermont. Courts within the other 11 regional circuits may find the decision to be persuasive as well. As a result, this decision may provide a framework for analyzing whether future massive book-digitization projects are permitted under the fair-use doctrine.