Kremer 1

Searching for Fair Use:

Authors Guild, Inc. v. HathiTrust and Authors Guild, Inc. v. Google, Inc.

By: Anthony Kremer

I. Introduction

The way society accesses and processes information is changing. Books that once took

months to transcribe by hand can now be downloaded with the simple click of a mouse button.

The only thing more astonishing than these developments in technology is the rate at which they

are occurring. Robert Darnton, director of the Harvard Library, has written extensively on the

history of books and understands that society’s ability to express itself and then study that

expression is changing at an exponential rate.1 In a collection of his essays entitled “The Case

for Books,” he asserted, “[t]he pace of change seems breathtaking: [to go] from writing to the

codex [took] 4,300 years; from the codex to the movable type, 1,150 years; from movable type to

the Internet, 524 years; from the Internet to search engines, 17 years; from search engines to

Google’s alogithmic relevance ranking, 7 years[.]”2 If this short history is any indication, the

way mankind writes, researches, and expresses itself could look very different just a few years

from now.

As these developments continuously occur, it is important to remember that original

works of authorship are what make these developments possible and relevant. Books, texts,

pictures, and other original works fuel this development, and as they do, their value to and

impact on society increases greatly. As the value and uses for these works continue to grow, it is

1 Robert Darnton, THE CASE FOR BOOKS 23 (2009). 2 Id.

Kremer 2

important that authors remain encouraged and motivated to produce more original works.

Protecting the copyrights that authors have in their works is critical to accomplishing this.

Organizations like Google and their library partners, some of which have teamed up to

form an organization called the HathiTrust, pose a drastic threat to the copyrights of authors.

With its Google Books program, Google is copying entire books, many of which are subject to

copyrights, to create a digital database of books that can be searched by users. Recent cases

from the Second Circuit and the Southern District of New York have indicated that such use of

copyrighted works by Google and its partners will continue to be allowed under the fair use

doctrine. This is due, in large part, to the suspect conclusion that these databases are

“transformative” uses of original works that pose no economic threat to copyright holders’

original works. The goal of this casenote is to demonstrate that these actions cannot be defended

by the fair use doctrine and are contrary to the fundamentals of United States Copyright law.

Part II of this casenote will provide a basic framework of copyright law and the fair use

doctrine as discussed under federal statute and case law. It will also discuss the Authors Guild v.

HathiTrust and Authors Guild v. Google, Inc. decisions and their findings that full-text search

databases are fair use.3 Part III will critique the HathiTrust and Google decisions’ analysis of the

four fair use factors enacted by Congress and comment on the implications of the impending

Google appeal currently in front of the Second Circuit. Part IV will summarize issues presented

and provide reflection.

3 Google and the HathiTrust use their digital l ibraries to provide other services that are not at issue for the

purposes of this casenote

Kremer 3

II. Background

A. Related Statutes and Cases

The basis of the United States’ copyright law comes from the Constitution. Article I,

section 8, clause 8 states that Congress has the power, “To promote the progress of science and

useful arts, by securing for limited times to authors and inventors the exclusive right to their

respective writings and discoveries[.]”4 “Science” refers to copyrights, while “useful arts” refers

to another area of intellectual property law known as patents.5 The Supreme Court has declared

a function of copyright law in the United States is to encourage expression that will benefit the

public by protecting an author’s right to use and economically benefit from their works.6

Acting under the powers vested in it, Congress has passed several comprehensive

copyright acts. The most recent of these was the Copyright Act of 1976, embodied in Title 17 of

the United States Code (“the USC”). Section 102 of Title 17 of the USC grants a copyright to an

author for a work that is “original” and “fixed in any tangible medium expression.”7 While facts

and ideas cannot be copyrighted by authors, an author’s original expression regarding facts and

ideas can be.8 A copyright gives certain rights to the holder of it. Included among these rights is

the ability to produce and distribute copies of the work and to prepare “derivative” works of the

original.9 Derivative works are defined in § 101 of Title 17 as:

a work based upon one or more preexisting works, such as a. . . motion picture

version. . . abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions. . .

4 U.S. Const. art. I, § 8, cl. 8. 5 See 1 Melvil le B. Nimmer and David Nimmer, NIMMER ON COPYRIGHT § 1.02 (Matthew Bender, Rev. Ed.). 6 See Mazer v. Stein, 347 U.S. 201, 219 (1954). 7 17 U.S.C.S. § 102(a) (LexisNexis 2014). 8 See Baker v. Selden, 101 U.S. 99, 103-04 (1879). 9 17 U.S.C.S. § 106(1), (2) (LexisNexis 2014).

Kremer 4

elaborations, or other modifications which, as a whole, represent an original work of authorship, is a ‘derivative work.’10

The doctrine of fair use stands as an exception to the exclusive rights of copyright

holders. The doctrine allows for the unauthorized copying of copyrighted works under certain

circumstances. Congress enacted § 107 to codify the fair use doctrine which was previously a

common law doctrine.11 Section 107 can be divided into two main parts. The first part is the

preamble. It states, in relevant part, that works can be copied by parties that are not the

copyright holders, “for purposes such as criticism, comment, news reporting, teaching. . .

scholarship, or research. . .”12 The uses listed in the preamble are not meant to be exhaustive, but

are instead illustrative of the types of uses that can result in a finding of fair use.13 The second

part of the statute lists factors courts should consider when the defense of fair use is raised.14

These factors include, but are not limited to,

(1) The purpose and character of the use, including whether such use is of a

commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted

work.15

The legislative history of § 107 reveals that Congress, in passing the statute, did not

intend to “freeze” the court’s conception of fair use as it existed in 1976.16 Instead, it envisioned

10 17 U.S.C.S. § 101 (LexisNexis 2014). 11 H.R. Rep. No. 94-1476, at 65-66 (1976); See also Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 445-46 (1984). 12 17 U.S.C.S. § 107 (LexisNexis 2014). 13 See H.R. Rep. No. 94-1476, at 65; See also 17 U.S.C.S. § 101. “The terms ‘including’ and ‘such as ’ are i l lustrative and not l imitative”. 14 17 U.S.C.S. § 107. 15 Id. 16 H.R. Rep. No. 94-1476, at 66.

Kremer 5

that the courts would continue to adapt “during a period of rapid technological change.”17 This

language was quoted by the Supreme Court in Sony Corp. of Am. v. Universal City Studios, Inc.,

a landmark decision regarding fair use.18 There, the Court found that the use of video cassette

recorders in homes to copy copyrighted broadcasts, a revolutionary technological development at

that time, constituted fair use.19

The Supreme Court’s most recent, influential, and in-depth analysis regarding fair use

came in Campbell v. Acuff-Rose Music.20 In that case, Acuff-Rose Music (“Acuff-Rose”) filed a

copyright infringement action against the music group 2 Live Crew.21 Acuff-Rose asserted that

2 Live Crew infringed on one of Acuff-Rose’s songs, entitled “Oh, Pretty Woman,” by writing a

song that sounded very similar.22 2 Live Crew maintained the song was a parody of Acuff-

Rose’s song.23 The district court ruled against Acuff-Rose, declaring that 2 Live Crew’s song

was a fair use.24 The Sixth Circuit Court of Appeals, however, reversed and remanded the

case.25 The court noted that the commercial nature of the parody and the belief that 2 Live Crew

had taken the “heart” of Acuff-Rose’s song resulted in copying that weighed against a finding of

fair use.26 As a result, 2 Live Crew had infringed on Acuff-Rose’s copyright.27

On appeal, the Supreme Court reversed the Sixth’s Circuit’s decision.28 In doing so, it

cited the judicial history of the fair use doctrine and analyzed each of the four fair use factor

17 Id. 18 Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 447 (n.31) (1984). 19 See Id. at 455. 20 See Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994). 21 Id. at 572. 22 Id. 23 Id. 24 Id. at 573. 25 Id. 26 Id. 27 Id. 28 Id. at 594.

Kremer 6

listed in § 107.29 The Court’s analysis of the first factor has since served as a ritualistic utterance

for all courts in their own analysis of fair use. To the Court, an often critical inquiry in analyzing

the first factor is to determine whether the work in question is “transformative.”30 In determining

if a work is transformative, courts must consider, “whether the new work merely ‘supersede[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[.]”31 However,

the Court noted that transformative uses are not always necessary for a finding of fair use.32 The

court also declared that whether the copyrighted work was used for commercial purposes by the

alleged infringer is an important consideration, but is dispositive, when examining the first fair

use factor and the fair use analysis as a whole.33

Regarding the second factor of §107, the Court asserted that the type of work potentially

being infringed upon is relevant to the fair use inquiry.34 For example, fictional and creative

works, the Court observed, should receive more protection than factual works.35 However, the

Court also noted this factor’s limited influence.36 In analyzing the third factor, the Court noted

that determining how much copying occurred given the type of use by the potential infringer is

relevant, especially in considering the analysis of the fourth factor and the economic

consequences of the copying.37

Finally, the Court analyzed the fourth factor. It espoused that courts must determine

“whether unrestricted and widespread conduct. . . by the defendant. . . would result in a

29 See Id. at 575. 30 Id. at 578-79. 31 Id. at 579. The Supreme Court’s standard for transformative uses quotes and borrows heavily from Pierre Leval’s Toward a Fair Use Standard. 103 Harv. L. Rev. 1105, 1111 (1990). 32 Id. (citing Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 at 455 (1984)). 33 Id. at 584. 34 Id. at 586. 35 Id. Ideas cannot be copyrighted under U.S. law. See Baker v. Selden, 101 U.S. 99, 103-04 (1879). 36 Id. 37 Id. at 586-87.

Kremer 7

substantially adverse impact on the potential market for the original” and noted this inquiry must

also consider “harm to the market for derivative works.”38 Applying its analysis of §107, the

Supreme Court ultimately concluded the following: (1) 2 Live Crew’s song, as a parody of the

original, was transformative, (2) copying the “heart” of the creative and original song was

necessary to the parodic use of the work, and (3) 2 Live Crew’s song did not replace Acuff-

Rose’s song on the market.39 As a result, the Court found that the use was fair despite the fact

that it resulted in commercial gain for 2 Live Crew.40 Since the decision was written, Campbell,

its standard for transformative uses, and its analysis of the fair use doctrine have played a major

role in determining fair uses cases such as HathiTrust and Google.

B. Main Cases

i. Google Books and the HathiTrust

Google, one of the world’s most popular internet search engines, currently operates the

Google Books program, which digitizes books for various purposes.41 One of the facets of this

program is the “Library Project.”42 Under the Library Project, Google works with participating

libraries to digitize their book collections.43 These libraries consist of both public domain works

(works no longer protected by copyright) and copyrighted works, but some of the libraries only

allow Google to copy public domain works.44 Google has not sought any permission from

copyright holders before making digital copies of the copyrighted works within these libraries,

38 Id. at 590. (internal quotations omitted). 39 See Id. at 579-95. 40 Id. at 571. 41 Authors Guild v. Google, Inc., 954 F. Supp. 2d, 282, 285 (S.D.N.Y. 2013). 42 Id. 43 Id. at 286. 44 Id. at 285-86.

Kremer 8

and Google distributes digital copies to member libraries.45 University libraries participating in

the program include the University of Michigan, Cornell University, and Indiana University.46

Some of the participating universities, working with other organizations, formed the

HathiTrust.47 The HathiTrust pooled together the collections of digital copies it received from

Google to create a research database accessible by the public called the HathiTrust Digital

Library (HDL).48 Users can search for keywords in the HDL, and the database runs those terms

against the text of the digital copies, compiles a list of book titles that contain the keywords, and

states all of the pages and the number of times the keywords appeared within those books.49

Users of the HDL database cannot access the full digital copies, and the search results give no

previews or “snippet[s]” of the book.50 The HathiTrust also uses the database of digital books

for other purposes, such as providing copies of the text to students with disabilities and replacing

lost or damaged books that could not be replaced easily or cheaply.51

In addition to providing the libraries of the HathiTrust with digital copies of the books

contained in their own libraries, Google uses those digital copies, as well as copies provided

voluntarily by some copyright owners, in its own search engines.52 In contrast to the

HathiTrust’s HDL database, by searching for keywords in Google’s database, users can see

“snippets” of books that contains the keywords of their search.53 However, Google prevents

users from viewing an entire work by implementing certain protective measures. One such

45 Id. 46 Authors Guild v. HathiTrust, 755 F.3d 87, 90 (2nd Cir. 2014). 47 Id. 48 Id. at 91. 49 Id. 50 Id. 51 Id. at 91-92. Again, those uses will not be at issue for the purposes of this case note. 52 Authors Guild v. Google, Inc., 954 F. Supp. 2d, 282, 286 (S.D.N.Y. 2013). 53 Id. at 286-87.

Kremer 9

measure “blacklists” or blocks certain portions of individual pages and ten percent of the pages

in the entire book from coming up in search results.54 In 2011, Google stopped putting up

advertisements on search results pertaining to works that it has received permission from

copyright holders to use.55 Google never put ads on digital results obtained from libraries.56

ii. The Litigation

The litigation surrounding the Google Books project and the HDL has extended down a

long, winding road. The original suit between the Authors Guild, consisting of authors and

others seeking to secure “copyright and contractual interests of published writers[,]”and Google

began in 2005.57 A far reaching settlement was proposed in 2008, but it was ultimately rejected

by the district court in 2011.58 Following the failed settlement, the Authors Guild moved for

class certification in the impending suit.59 While approved at the district court level, the Second

Circuit set aside that judgment, opining that Google’s fair use defense should first be decided.60

Subsequently, the Authors Guild also sued the HathiTrust.61

Currently, the litigation revolves around two main cases, Authors Guild v. HathiTrust and

Authors Guild v. Google. In HathiTrust, the Authors Guild sued the HathiTrust on the grounds

that by obtaining, storing, and utilizing unauthorized digital copies of copyrighted works, the

54 Id. at 287. 55 See Id. at 285-87. 56 See Id. at 286. 57 Id. at 284-85. 58 Id. at 288. The settlement was extremely controversial. 5 Melvil le B. Nimmer and David Nimmer, NIMMER ON

COPYRIGHT § 20.03 [D][1] (Matthew Bender, Rev. Ed.). Among other things, it involved an up-front payment by Google of at least $54 mill ion followed by a portion of the revenue stemming from the Google Books program. Id. In return, Google received a l icense to copy the books it already had copied as well as those that it would copy

moving forward. Id. The settlement was rejected by the district court in 2011 because of these far reaching implications. Id. at [D][2]. 59 Id. 60 See Id. at 288-89. 61 Authors Guild v. HathiTrust, 755 F.3d 87, 92-93 (2nd Cir. 2014).

Kremer 10

HathiTrust had infringed on the copyrights of many authors.62 After analyzing each of the fair

use factors of § 107, the Southern District of New York found in favor of the HathiTrust, stating

its use of the copyrighted works for the HDL database constituted fair use.63

On appeal, the Second Circuit agreed with the district court.64 In analyzing the first

factor of § 107, the court determined that the search functions of the database were

“quintessentially [a] transformative use.”65 Authors, the court contended, do not write their

books intending for them to be used in search databases and that “the HDL [search results add]

to the original [copyrighted books] something new with a different purpose and a different

character” that goes beyond “merely repackag[ing]. . . the original[s]. . . or merely recast[ing] ‘an

original work into a new mode of presentation[.]”66 In the end, the court found that the HDL

search results are so transformative that they have “no resemblance” to the digitized books it

searches through.67

In analyzing the second factor, the court admitted that the copyrighted works in the HDL

database merited protection under copyright law, but asserted the transformative nature of the

database greatly mitigated these concerns.68 The court also found in favor of the HathiTrust on

the third factor, observing that fair uses can result in the copying of entire works.69 Furthermore,

the court reasoned that in order for the HDL database to be effective for its transformative

purpose, it needed to contain full copies of the works.70 The court was not concerned with the

62 Id. at 93. 63 Id. 64 Id. at 101. 65 Id. at 97. 66 Id. 67 Id. 68 See Id. at 98. 69 Id. (citing Bil l Graham Archives v. Dorling Kindersley, 488 F.3d 605, 607, 614 (2nd Cir. 2006)). 70 Id.

Kremer 11

fact that the HathiTrust kept copies of the digitized works at multiple facilities, noting that this

was necessary for the HDL servers to more effectively process search inquiries and to prevent a

complete loss of the digitized works.71

In analyzing the fourth factor, the court agreed with the HathiTrust that the HDL database

posed no threat to the “potential traditional market” for printed books and did not threaten to

supplant the use of the original books in society.72 The court further declared that the copyright

holder’s loss of potential revenue from licensing to organizations that are creating text search

databases is irrelevant because the results do not replace the original work.73 The court also

quickly dismissed the notion that the HathiTrust library could be breached, resulting in

unauthorized copying and distribution of the digital text of the works.74 Weighing the four

factors together, the Second Circuit decided that the HDL was fair use of copyrighted works.75

A very similar scenario played out at the district court level in Authors Guild v. Google,

Inc. regarding Google’s own use of digitized copyrighted works. Notably, the district court

opinion was written by Judge Denny Chin, who is now a judge for the Second Circuit which will

be deciding the appeal of the Google decision.76 Judge Chin retained the case after being

appointed to the appellate court.77 Before analyzing whether Google’s use of the full-digitized

texts was fair use, the court outlined several of the benefits it saw in the Google Books project.78

These benefits included: (1) providing a “searchable index” of words that has become an

indispensable part of education and research, (2) promoting “data mining” research that will

71 Id. 72 Id. at 99-100. 73 Id. at 100. 74 Id. at 100-101. 75 Id. at 101. 76 See Authors Guild v. Google, Inc., 954 F. Supp. 2d, 282, 294 (S.D.N.Y. 2013). 77 See Id. 78 Id. at 287.

Kremer 12

allow researchers to study society’s use of certain words and phrases over time and, (3) the

heightened “knowledge of and access to far more books.”79

Analyzing the first fair use factor, the district court concluded Google’s use of the

digitized copyrighted texts in its search database is “highly transformative” because it allows

researchers to approach the expression of the text in different ways.80 In addition, the court

observed that because the Google snippets could not be manipulated by users to create entire

copies of the digital work, it could not supplant the original work.81 The court found Google’s

commercial motivations, providing innovative services so that users will be drawn to Google, to

be negligible given the database’s beneficial and educational uses.82

The court also found in favor of Google on the second factor, observing that most of the

books at issue were non-fiction (meriting less protection) and were published, which made them

available to the public.83 The court concluded the third factor also weighed in Google’s favor.84

Similar to HathiTrust, the Google decision observed that some fair uses can result in complete

copying of original works and in Google’s case was necessary to make its “snippet” results

effective.85 Moreover, users could not access more than the snippets.86 As a result, the court

believed Google did not use the copyrighted work in excess of what was appropriate.87

79 Id. 80 Id. at 291. 81 Id. 82 Id. at 292. 83 Id.at 293. In fact, 93% of the works at issue were non-fiction works. Id. at 285. 84 Id. at 292. 85 Id. (citing Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 at 449-50 (1984); Bil l Graham Archives v. Dorling Kindersley, 488 F.3d 605, 607, at 613 (2nd Cir. 2006)). 86 Id. 87 Id.

Kremer 13

Finally, in analyzing the fourth factor, the court refused to find that Google’s service hurt

copyright owners economically.88 The court reasoned that because Google’s digital copies

cannot be accessed fully, they could not act as a market replacement for the original works.89 In

addition, the court believed the program would result in increased sales for the works used in the

search database.90 The court made no reference to the argument that copyright holders lost

licensing revenue from Google’s unauthorized use.91 Ultimately, the district court found in favor

of fair use.92 The case is currently on appeal with the Second Circuit.93

III. Discussion

There are major areas of concern in the HathiTrust and Google decisions’ analysis of fair

use as applied to full-text search databases. The first is that each court misinterpreted and

misapplied the Supreme Court’s standard as to what kinds of use should be considered

transformative. This largely results in an incorrect finding that the first factor favors both the

HathiTrust and Google, especially in light of the commercial impact of Google’s actions. The

second area of concern is that this incorrect finding of transformative use skews much of both

courts’ logic throughout the rest of their analysis, particularly when considering the second and

third factors. Finally, the findings that HathiTrust and Google’s use do not result in economic

harm recognized by and actionable under the Copyright Act is simply not correct. In spite of

these shortcomings, however, the Second Circuit is likely to re-assert such logic in the soon to be

decided Google appeal, likely cementing the ill-founded legality of Google and HathiTrust’s use

of unlicensed copies of copyrighted works. This will lessen the protection of an author’s right to

88 Id. at 292-93. 89 Id. 90 Id. 91 See Id. 92 Id. at 293-94. 93 Notice of Appeal. 1-2, Dec. 23, 2013, ECF No. 1092.

Kremer 14

benefit from their works, decreasing some of the incentive for them to create more works that

can be consumed for public benefit.

A. The First Fair Use Factor

In both the HathiTrust and Google cases, each courts’ decision largely hinged on their

analysis of the first factor, “[t]he purpose and character of the use, including whether such use is

of a commercial nature or is for non-profit educational purposes[,]”94 and their incorrect

assertion that a transformative use had occurred in each case. There are major flaws in its

analysis, leading to the conclusion that the databases at issue in each case are simply not

transformative and that the first factor favors the Authors Guild. Transformative works must

either result in the creation of a “new work” that would not supplant the original, or add

“something new. . . with new expression.”95 Simply copying an original work by digitizing it,

as Google and the HathiTrust have done, fail to create a new work or new expression, and the

use of those copies within full-text search databases fails to alter that conclusion.

The greatest issue in these cases is the copying of works in a non-transformative manner

before they’re even used for full-text search databases.96 Putting copyrighted works in a digital

form so that they can be searched is simply putting the same work in a different form, and this

does not create a new work that is capable of satisfying Campbell’s transformative standard.97

This argument finds support in an earlier Second Circuit decision, American Geophysical Union

v. Texaco Inc. In that case, Texaco photocopied articles without permission in order to promote

94 17 USCS § 107(1) (LexisNexis 2014). 95 See Campbell v. Acuff-Rose Music, 510 U.S. 569, 579 (1994). “The central purpose of this [transformative

inquiry] is to see. . . whether the new work merely ‘supercede[s] the objects’ of the original creation. . . [transformative works] provide social benefit, by shedding light on an earlier work, and, in the process, creat[e] a new one.” 96 See Raymond Nimmer, LAW OF COMPUTER TECHNOLOGY § 1:102 (2014). 97 Id.

Kremer 15

its research efforts.98 The court declared that putting copyrighted works into digital forms such

as a portable document format (PDF) is not transformative and provides little value that is not

already inherent in the original work.99 Furthermore, the court stated that even though original

works might be more useful for purposes such as research after being digitized, this does not

automatically sway the first fair use factor in favor of a copier.100 Assertions such as these were

made before the HathiTrust court,101 but were ignored entirely in favor of focusing on the use of

those digital scans for full-text search databases.

However, even coupling the digital copying with its purpose of creating a full-text search

database fails to make the databases transformative works that result in new expression. The fair

use doctrine is meant to protect uses including “criticism, comment, news reporting, teaching. . .

scholarship, or research. . .”102 While the uses provided in § 107 are not comprehensive, they are

illustrative of activities that constitute fair use.103 Such uses are going to result in the creation of

entirely new works including essays, news articles, and research papers. Each of these works, in

turn, must demonstrate their own original expression that the HDL and Google databases do not.

The facts of Campbell are illustrative of these objectives. 2 Live Crew’s song, as a parody of

Acuff Rose’s song, is an entirely new and copyrightable work with its own original expression.

The cases cited by the Second Circuit in HathiTrust to support its conclusion that the

HDL database is transformative, including Cariou v. Prince, Bill Graham Archives v. Dorling

98 Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 915 (2d Cir. 1994). 99 Id. at 923-24; See also Cambridge Univ. Press v. Patton, 2014 U.S. App. LEXIS 19978, at *78 (11th Cir. Oct. 17, 2014). 100 Id. at 924. 101 Redacted Final Form Reply Brief for Plaintiff-Appellants at 13, Authors Guild v. HathiTrust, 755 F.3d 87, 97 (2nd Cir. 2014) (No. 12-4547-CV). 102 17 USCS § 107 (LexisNexis 2014). 103 See H.R. Rep. No. 94-1476, at 65 (1976).

Kremer 16

Kidersley Ltd., and Leibovitz v. Paramount Pictures Corp.,104 actually further demonstrate how

the databases at are not transformative. In Cariou, the Second Circuit found that an artist’s use

of a photographer’s photograph to create new collages was fair use.105 In Bill Graham Archives,

a book publisher’s use of copyrighted photos within a band biography constituted fair use.106 In

Leibovitz, fair use was found where Paramount Pictures created an advertisement that used a

copyrighted photo, but with its own parodic expression.107 All of these cases involved the

creation of new works entirely with new expression: a new piece of artwork, a biographical

work, and an advertisement. Each of these works, in turn, had their own original expression and

purpose that are different from the original works they borrowed from. All the snippet and word

count search results of the Google and HathiTrust’s databases do is exactly what the Second

Circuit stated the HDL does not do: “merely repackage[ ]. . . the original[s] . . . or merely recast

an original work into a new mode of presentation.”108

The social benefits of these databases, such as “data mining” to track the development of

words, promoting knowledge of books, and using them for research, fails to alter this conclusion.

While the information provided by these databases might be harder or even impossible to

compile without them, all of the information contained within the search results of the HDL and

Google databases is already present within the books themselves. The fact that a secondary use

of original works can be of social benefit does not, by itself, make those secondary uses fair

104 Authors Guild v. HathiTrust, 755 F.3d 87, 97 (2nd Cir. 2014). 105 Cariou v. Prince, 714 F.3d 694, 712 (2nd Cir. 2013). 106 Bil l Graham Archives v. Dorling Kindersley, 488 F.3d 605, 607, 614 (2nd Cir. 2006). 107 Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 110-111 (2nd Cir. 1998). 108 See Authors Guild v. HathiTrust, 755 F.3d 87, 97 (2nd Cir. 2014) (internal quotations omitted). There have been instances, such as in Sony, where the court found such non-transformative uses to be fair use. See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 455. However, Sony is clearly distinguishable from the copying at

issue in HathiTrust and Google.

Kremer 17

use.109 Again, the search results merely repackage that information and present it in a way that is

much easier for users to digest. While the HathiTrust and Google databases are arguably more

broadly beneficial to the public than the works in Campbell, Cariou, Bill Graham Archives, and

Leibovitz, that hardly makes them more transformative.

Another fault in the HathiTrust and Google decisions’ analysis of the first factor is that in

considering whether the full-text search databases supplant original copyrighted works, each

court viewed how the public use original works too narrowly. Not all unauthorized copying and

use of copyrighted works can be labeled transformative, and thus excused as fair use, simply

because an author did not “write with the purpose of enabling” such use. An author might not

write or create with the purpose of enabling derivative works that bear little resemblance to the

original works, but this does not prevent an author from retaining the right to create derivative

works or license that right to others.110 Indeed, copyright holders can entirely prevent others

from making derivative works, regardless of whether or not the author wrote with the belief that

such works could be made.111

It is similarly narrow to rule that the Google Books “snippets” do not supplant the

original works because a user can only assemble less than ninety percent of a complete work.

The Google court failed to realize that books and other works of authorship are not always “read

cover to cover” but sometimes to merely obtain “a specific piece of information.”112 Another

Southern District of New York case, AP v. Meltwater, seizes upon this reality. In that case, the

109 See Am. Geophysical Union v. Texaco, Inc ., 802 F. Supp. 1, 11 (S.D.N.Y. 1992), aff’d, 37 F.3d 881 (2d Cir. N.Y., 1994), aff’d, 60 F.3d 913 (2d Cir. N.Y., 1994). This opinion was written by Pierre Leval, who, as mentioned above,

greatly influenced the Campbell court’s standard for transformative uses. 110 See 17 USCS § 106 (2). The ability to create derivative works also challenges the HathiTrust and Google courts’ analysis of the fourth factor. 111 See Id. 112 Redacted Final Form Reply Brief for Plaintiff-Appellants, supra note 101, at 17.

Kremer 18

news aggregator Meltwater used a search engine to compile excerpts of news articles to its paid

subscribers.113 In doing so, Meltwater’s service copied 4.5% to 61% of the articles at issue in

that suit.114 Those portions of the articles, however, were catered to the subscriber’s keyword

search inquiry.115 As a result, users of Meltwater’s service only accessed the original articles

0.08% of the time.116 The Meltwater court used this information as part of its determination that

the service was not transformative.117 The Google Books service, much like the Meltwater

service, provides snippets catered to the users search inquiry. Those snippets are potentially

capable of providing all of the information that users need without having to manipulate the

system to assemble the entire original book.

The commercial aspects of Google’s copying, use, and distribution of copyrighted works

creates further concerns in an analysis of the first fair use factor. The Google decision admits

that Google benefits commercially from its unauthorized copying of works because users are

drawn to the website and its search engines, but casts this aside in light of the benefits of the

Google Books program.118 The court fails to realize that Google’s commercial benefit goes

beyond users coming to its websites. Google’s unlicensed use has driven competitors out of the

market, many of which had been abiding by copyright law and copying only works in the public

domain.119 Google also benefits because it essentially sells its unauthorized copies to libraries

for the right to access a plethora of copyrighted works on participating libraries’ shelves.120 In

113 AP v. Meltwater, 931 F. Supp. 2d 537, 540 (S.D.N.Y. 2013). 114 Id. at 558. 115 Id. at 555. 116 Id. 117 Id. 118 Authors Guild v. Google, Inc., 954 F. Supp. 2d, 282, 291-292 (S.D.N.Y. 2013). 119 Darnton, supra note 1, at 17; See also Reply Brief for Plaintiffs-Appellants (Un-Sealed Redacted Version) at 7, Authors Guild v. Google, (No. 13-4829-CV) (2nd Cir. scheduled for argument Dec. 3, 2014). 120 Reply Brief for Plaintiffs -Appellants, supra note 119, at 21-22.

Kremer 19

light of all of these considerations, it is clear that conclusion the first fair use factor favors

Google and the HathiTrust is incorrect.

B. The Second and Third Fair Use Factors

The HathiTrust and Google courts let their determinations that the databases are

transformative corrupt their analysis of the other fair use factors to the point that they do not give

the issues raised by them serious consideration. This is particularly evident in each courts’

analysis of the second and third fair use factors. Upon close examination, it is clear that the

“nature of the copyrighted work” (the second factor) and “the amount and substantiality of the

portion used in relation to the copyrighted work as a whole” (the third factor) create great

concerns that neither court addressed.

The second factor clearly favors the Authors Guild and copyright holders. Google’s

copying of entire works original expression and the use of them in search results infringe on the

rights of copyright holders, regardless of whether the snippets are from fiction or non-fiction

works. The Google court was correct in stating that non-fiction works merit less protection than

fictional works because the ideas conveyed in fictional works cannot be copyrighted. However,

the original expression of those ideas can be.121 As a result, Google’s copying of copyrighted

expression clearly demonstrates infringement. Furthermore, the court should not have dismissed

the fact that fictional works, which merit greater protection, are also copied without permission

by simply stating they make up only 7% of the works at issue. The fair use analysis should be

“determined on a case-by-case basis[ ] by applying the four factors to each work at issue.”122

This might have been impossible in the Google case, but even if the court had addressed the

121 See Baker v. Selden, 101 U.S. 99, 103-04 (1879). 122 See also Cambridge Univ. Press v. Patton, 2014 U.S. App. Lexis 19978, at *70 (11th Cir. Oct. 17, 2014).

Kremer 20

fictional works as a whole, it would have been equally difficult to find that the second factor

does not favor copyright holders. The HathiTrust court exerted less effort than the Google court

by entirely dismissing the second factor because of its conclusion that the databases are

transformative. While the second factor’s influence in the fair use analysis is supposed to be

limited, the HathiTrust decision made it essentially nonexistent.

Each court also failed to address concerns raised by the third factor which favor copyright

holders. The Google and HathiTrust courts correctly asserted that some instances of fair use

result in the copying of an entire work, but the cases they cite to, Sony and Bill Graham

Archives, are not analogous to the copying at issue here. While the copying in Sony was not

transformative and copied entire works, it was done for personal, in-home use. This largely

resulted in a finding of fair use. In turn, the copying in Bill Graham Archives was fair use

because it resulted in the creation of a new work where the original, although copied completely,

was only a small part. In contrast to these cases, however, the entire public has access to the

fruits of Google’s and HathiTrust’s copying which depend entirely on complete copies of

original works.

This issue of giving the other fair use factors less influence after a finding of

transformative use is not limited to the Second Circuit. Many courts are guilty of making the

transformative question a “conclusory label[ ]” in the fair use inquiry, where “not transformative

[is]. . . shorthand for not fair, and correlatively transformative for fair.”123 In a recent decision

regarding fair use, Kienitz v. Sconnie Nation LLC, Judge Easterbrook of the Seventh Circuit

criticized the Second Circuit’s decision in Cariou for effectively making the “transformative”

123 See 4 Melvil le B. Nimmer and David Nimmer, NIMMER ON COPYRIGHT § 13.05[1][b] (Matthew Bender, Rev. Ed.). (internal quotations omitted) (citing Seltzer v. Green Day, Inc., 725 F.3d 1170, 1176 (9th Cir. 2013) (treatise

quoted).

Kremer 21

inquiry the sole inquiry of its fair use analysis and ignoring the other factors of § 107.124

Criticisms such as Easterbrook’s are perhaps overstated but not entirely unfounded in light of the

paltry discussion by the HathiTrust and Google decisions on the second and third fair use factors.

C. The Fourth Fair Use Factor

In addition to the shortcomings of the HathiTrust and Google decisions’ analysis of the

first three fair use factors, each decision fell short in analyzing the fourth fair use factor, “the

effect of the use upon the potential market for or value of the copyrighted work.” By asserting

that the databases do not result in any market injury, the Second Circuit and Southern District of

New York have significantly narrowed the standard of inquiry presented in § 107, Campbell, and

the Second Circuit’s own precedent. As a result, they failed to address the potentially serious

market harm that is resulting from Google and HathiTrust’s use of unauthorized copies in

services like full-text search databases.

In HathiTrust, the Second Circuit failed to identify the appropriate scope of its inquiry

when it declared that the HDL database does not injure the “potential traditional market[s]” for

original copyrighted works because the database cannot be used by the public to read

copyrighted works, their traditional market and use.125 The fourth factor of § 107 makes no

reference to “traditional markets.”126 Campbell, in turn, declared that courts must look to the

impact of the infringing activity on the “‘potential market’ of the original[,]” as well as the

impact on the demand for derivative works.127 In Texaco, the Second Circuit asserted that

market harm, including the loss of licensing fees for copyrighted works, must be assessed by

124 Kienitz v. Sconnie Nation LLC, 766 F.3d 756, 760 (7th Cir. 2014). 125 Authors Guild v. HathiTrust, 755 F.3d 87, 100 (2nd Cir. 2014) (emphasis added). 126 17 U.S.C.S. § 107(4) (LexisNexis 2014). 127 Campbell v. Acuff-Rose Music, 510 U.S. 569, 580 (U.S. 1994) (emphasis added).

Kremer 22

“considering only traditional, reasonable, or likely to be developed markets[.]”128 Without such

a standard, the Texaco court asserted, every secondary use of a copyrighted work, transformative

or not, represents a potential financial loss for the copyright holder.129

Section 107, Campbell, and previous decisions of the Second Circuit, unlike the

HathiTrust court, recognize that a copyrighted work’s value does not lie solely in “traditional”

uses of them. Copyrighted works can demonstrate further potential value outside of these

traditional uses, such as cover-to-cover reading and study, that copyright owners should be able

to capitalize on. Furthermore, the Second Circuit ignored that the Copyright Act gives authors

the right to create and license derivative works that can look entirely different from the original

works they created and serve different market purposes.130 The Seventh Circuit has criticized the

Second Circuit for not considering facts such as these.131 Regardless of whether an author

envisioned perhaps untraditional derivative uses for an original work, an author still retains the

exclusive right to make or license them.

Beyond the ability of copyright owners to license and make derivative works, the Second

Circuit’s logic demonstrates an unwillingness to allow a copyright holder’s rights to advance as

society continues to develop at an exponential pace technologically. The amount of works that

are being “born” and sold digitally are now beginning to outnumber works being sold in paper

formats on websites like Amazon.132 As a result, the way people digest information is changing.

People can now analyze and manipulate information in ways that were inconceivable fifty or

128 Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 930 (2d Cir. 1994). The argument can also be made that this standard set by the Second Circuit in Texaco unjustifiably narrows the original standard set by § 107 and Campbell. 129 See Id.; See also Bill Graham Archives v. Dorling Kindersley Ltd., 448 F. 3d 605, 615. 130 See USCS 17 § 106 (2). 131 Kienitz v. Sconnie Nation LLC, 766 F.3d 756, 760 (7th Cir. 2014). 132 See United States Copyright Office, Legal Issues in Mass Digitization: A Preliminary Analysis and Discussion

Document, appendix C, pg. 1 (Oct. 2011).

Kremer 23

even fifteen years ago. This gives a copyright holder’s work much more potential than has

traditionally been recognized.133 Courts cannot pigeonhole the value of a copyright holder’s

work to the most traditional of markets while allowing the fair use defense to outpace it. Section

107 allows the court’s conception of fair use to grow as time goes on and new technologies are

developed,134 but this should not prevent copyright holders from capitalizing on new uses for his

or her works. Just as §107 and Campbell recognize, original works must also be able to

demonstrate further market potential in light of technological advances.

The Google decision is also suspect in its analysis of the fourth factor because it failed to

address the real market harm being done by Google’s non-transformative digital copies. These

copies, even before their use in its database, serve as a market replacement for use in full-text

search engines or other digital services. As a result, Google’s use of copyrighted works in its

services without a license causes great market harm to copyright holders. The Google decision

makes no reference to lost licensing fees,135 despite the fact that such lost fees are often the focus

of the fourth fair use factor.

This market harm is compounded by the fact that Google has essentially beaten out all

serious competition in this area. There are other organizations in the U.S., including the Library

of Congress, that have their own digitization projects.136 Many of these are distinguishable from

Google, however, in that their digitization efforts involve only public domain works.137 These

efforts, with the right partners, could have grown into a “National Digital Library,” while

133 Of course, this is not to say that society under-values copyrighted works. 134 H.R. Rep. No. 94-1476, at 66 (1976). 135 See Authors Guild v. Google, Inc., 954 F. Supp. 2d, 282, 292-293 (S.D.N.Y. 2013). 136 See United States Copyright Office, supra note 132, app. C. at 1. 137 See Id. Other digitization efforts’ attempt to stay away from copyrighted books could serve as indirect evidence that there is a market for copyrighted books to be used in those efforts and that organizations were not will ing to

pay the price for them.

Kremer 24

“provid[ing] authors and publishers. . . legitimate income.”138 Yet, while other organizations

toed the line, Google dived into the digitization effort, endeavoring to scan first and ask

questions later. The effect of this is that Google has effectively prevented a new market for the

original works from being realized.139 Other competitors, including Microsoft, have either

abandoned their digitization efforts in light of Google’s progress or operate far less efficiently.140

At this stage, no one can catch up. Google is adding insult to injury by trading digital copies to

participating organizations like the HathiTrust for access to more books.141

Furthermore, the Google court’s conclusion that the Google Books program helps

copyright owners sell their works, and that copyright owners thus have no reason to complain

about Google’s use, is unwarranted. It should be the right of copyright holders, not third parties

such as Google, to decide how their works should be marketed.142 In addition, the Google court

presents no hard evidence to support its conclusion that the database increases book sales.143

Instead of relying on assumptive conclusions, the district court should have forced Google to

demonstrate in its defense that its services resulted in users buying the original works. The

Southern District of New York demonstrated this tendency before in Meltwater, which made

extensive reference to data illustrating how often the news aggregator’s services led to users

138 Darnton, supra note 1, at 16-17. 139 Reply Brief for Plaintiffs -Appellants, supra note 119, at 7. 140 Darnton, supra note 1, at 17; See also Id. at 7. 141 Authors Guild v. Google, Inc., 954 F. Supp. 2d, 282, 287 (S.D.N.Y. 2013). 142 BMG Music v. Gonzalez, 430 F.3d 888, 891 (7th Cir. 2005). “Copyright law lets authors make their own decisions about how best to promote their works; copiers. . . cannot ask courts (and juries) to second -guess the market and call wholesale copying ‘fair use’ if they think that the authors err in understanding their own economic interests or that Congress erred in granting authors the right in the copyright statute”. 143 Google, 954 F. Supp. 2d at 292-293.

Kremer 25

accessing the original works.144 In light of these considerations, it is very difficult to find that

the fourth factor does not favor copyright holders.

D. The Second Circuit’s Upcoming Decision in Google and Its Potential Implications

The Second Circuit’s upcoming decision in Google presents different facts from that of

HathiTrust in terms of each organization’s text-search databases. Unlike the HDL database

results, the results of Google’s search engines display “snippets” of the copyrighted works.

Other differences that distinguish the Google case from the HathiTrust case are Google’s status

as a for-profit entity and the source of the scanned copies at issue in both cases. Yet, because of

the precedent set by HathiTrust, it appears likely that the court will decide in favor of Google.

Much of the logic used by the Second Circuit in HathiTrust can make a seamless

transition to the facts of the Google decision. For example, Google’s search engine, like the

HDL, operates as a full-text search, a function the Second Circuit found highly transformative

that does not supplant the original work. Assuming the Google text search function is found to

be transformative, the Second Circuit will likely use that conclusion to easily dispatch the second

and third factors, just as it did in HathiTrust. Finally, the court will not consider the lost

licensing fees that result from Google’s copying because full-text search databases, just like in

HathiTrust, will not be viewed as a “traditional” market for books.

Perhaps the most influential reason why the Second Circuit will rule in favor of Google is

that Google provides the digital copies that resulted in the fair use finding in HathiTrust; if the

court were to decide against Google in the Google appeal, that decision would undermine the

court’s fair use rationale in HathiTrust and the social benefits it lauded. The Second Circuit will

144 AP v. Meltwater, 931 F. Supp. 2d 537, 555 (S.D.N.Y. 2013).

Kremer 26

likely not let itself be considered a villain that takes away the tools it believes research and

educational institutions have become dependent on. As a result, the Second Circuit will continue

to let these infringing databases exist under the guise of fair use.

There will be consequences to the success of the Google Books project that neither of

these decisions bothered to recognize. In its report “Legal Issues in Mass Digitization,” the

Copyright Office mused over the question of whether the digitization of copyrighted works, and

the issues presented by it, merited the attention of Congress in the form of new legislation, or

“left to the marketplace and. . . copyright law as it currently exists[.]”145 As it played out in the

HathiTrust and Google decisions, the courts have let Google alone decide how copyright law

should apply to the digitization of copyrighted works. Google and its partners jumped right into

its digitization efforts, and now no one can stand up to Google.

As high as the stakes were in the HathiTrust decision, the Second Circuit’s upcoming

decision in Google could have even greater implications on the future of copyrights and access to

information. Should Google’s copying and use of digitized works pass the scrutiny of the

Second Circuit, the corporate behemoth could become the “sole gatekeeper” of the “fruits of

digitization.”146 There is great risk to this. Not only is Google in a position to create a

“monopoly” on information by putting what it wants in its database,147 there is nothing to prevent

Google from taking away that database and to stop supplying digital copies to other

organizations like the HathiTrust. As Darton observed, “Google defines its mission as the

communication of information – right now, today[,]” but that does not mean it will always do

145 See United States Copyright Office, supra note 132, app. C. at 15-16. 146 See Nimmer, supra note 58, at § 20.03[4]. 147 Darnton, supra note 1, at 17.

Kremer 27

so.148 In the end, there is nothing to ensure the continued existence of the public benefits the

courts see in the HDL and Google databases.

IV. Conclusion

While the some of the goals of Google and the HathiTrust might be admirable, the means

by which they are accomplishing those goals are inconsistent with the rights of copyright holders

and the fair use doctrine. Google’s copying of copyrighted works and their subsequent use in

both Google and the HathiTrust’s full-text search databases simply cannot be considered fair use.

Neither the copying of copyrighted works into digital formats, nor the search results of each

database result in the creation of transformative works that have their own original expression.

In the end, each database only repackages the text that is already in the original works, regardless

of whether such text or the information derived from it was difficult or impossible to obtain. As

a result, the copying and the databases that contain the copies cannot be considered

transformative because they supplant the original works. The social benefits of the databases fail

to alter this conclusion.

The HathiTrust and Google court’s fixation on the first factor and the transformative

inquiry came at the expense of not giving the other fair use factors, especially the second and

third, adequate consideration. The Google court failed to consider how the verbatim copying of

original expression, in both fictional and non-fiction works, should sway the second factor in

favor of copyright holders. The HathiTrust court, in turn, essentially dismissed the second factor

altogether in light of its finding of transformative use. In addition, neither decision effectively

harmonized the copying of entire works with the third factor. While cases do exist to support the

148 Id. at 23.

Kremer 28

conclusion that entire works can be copied and still result in a finding of fair use, those cases

bear little similarity to the copying at issue here.

Each court also failed to adopt the appropriate scope of inquiry when considering the

market harm caused by Google and the HathiTrust’s activities. Courts cannot limit the uses of

an original work to traditional cover-to-cover reading when technological advances and market

demands are creating new and innovative ways for copyright owners to capitalize on the creative

expression contained in their works. Google has effectively driven most of its competitors out of

the full-text search market before that market had a chance to develop. This leaves Google and

its partners as the sole beneficiaries of its unlicensed copying and use of copyrighted works.

In spite of all of these issues that are in conflict with U.S. Copyright law, it seems

unlikely that the Second Circuit will reverse course in its upcoming Google decision. It will

likely affirm the district court’s finding that the Google Books database is an example of fair use.

To hold otherwise would be to halt the development and continued use of a research tools that

the court views as becoming increasingly used and depended upon by society. In addition,

striking down Google’s use of the copies in its digital database would undermine its decision to

uphold the HathiTrust’s database. In the event the Second Circuit does ultimately affirm the

decision, Google and the HathiTrust will be able to continue to monopolize the digitization

market and violate the rights of copyright holders.