Second Circuit Illuminates Google Books Fair Use Issues

Ever since Acuff-Rose, whether the new work or its purpose use is transformative has been a touchstone of fair use analysis. But just what that means has not always been easy to determine. The Google Books case gave Judge Leval an opportunity to return to the issue and elucidate transformativeness in a technology context.

Factual Background

Beginning in 2004, Google began its “Library Project,” scanning and digitizing books in the collections of the New York Public Library, the Library of Congress and various university libraries. The vast majority of the books scanned were non-fiction, and most were out of print. The works included books still under copyright as well as books in the public domain.

Google used optical character recognition technology to generate machine-readable text for each scanned book. Google's indexing allows users to search the full text of the more than 20 million books in the Google Books corpus. A list of books responsive to a search is made available, and the user can go to a page that provides information “About the Book,” including links to websites offering the book for sale if still in print.

“About the Book” also provides a list of the words and terms that appear with most frequency in the book. The search tool lets researchers identify those books, out of millions, that use and do not use particular terms, information (Google says) that would otherwise not be obtainable in lifetimes of searching.

The user can also look at an excerpt in “snippet view,” which displays a verbatim selection of an eighth of a page around the search term. (Snippet view is not available for books typically used in short “chunks,” such as dictionaries or cookbooks.) Users cannot view or download the full texts of any book, and Google has taken precautions that make it impossible, as a practical matter, for users to read all or even a substantial part of a book. The Google Books service is free, and there is no advertising on Google Books pages. (You can give Google Books a spin yourself by going to books.google.com.)

Google gave the participating libraries a set of digitized copies of the books scanned from their collections, but not from the other libraries. The copies were provided subject to an agreement requiring the libraries to abide by copyright law in using those copies and take precautions to prevent dissemination of their digital copies to the public at large.

Procedural Context and Plaintiffs' Contentions

The Authors Guild and three author-plaintiffs filed suit in 2005. The relatively narrow fair use issue ' whether it was legitimate for Google to copy the works and provide the search and snippet view functions ' was long overshadowed by controversies over an attempted settlement.

After the district court rejected the Google Books Settlement in 2011 and other settlement efforts failed, the case moved forward on the merits. In 2012, the Second Circuit stayed proceedings for an interlocutory appeal of the class certification, and then, in July 2013, provisionally vacated the certification and remanded for consideration of the fair use issues. In November 2013, the district court granted Google's motion for summary judgment based on fair use.

In this appeal the Second Circuit held, as it previously had in Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir. 2014), that the Authors Guild lacked standing, but that the author-plaintiffs could sue.

Transformativeness and The Law of Fair Use

“Fair use” is a judicially developed limitation on the scope of copyright, now codified in 17 U.S.C. '107. The section provides courts shall consider four factors:

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.

Each factor represents a continuum, tilting more or less strongly for or against a finding of fair use. Factor Four ' concerning the economic impact of the use, and particularly whether it represents a substitute for the original work ' is often said to be the most important consideration.

Ever since Acuff-Rose, whether the new work or the purpose of the use is transformative has been part of the Factor One analysis, and a touchstone of fair use. This inquiry asks:

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 ; ' in other words, whether and to what extent the new work is “transformative.”

Acuff-Rose, emphasis added.

Leval's Analysis of Transformativeness Applied To Google Books

Judge Leval began by cautioning:

The word “transformative” cannot be taken too literally as a sufficient key to understanding the elements of fair use. It is rather a suggestive symbol for a complex thought '.

The court observed that “the word 'transform' also plays a role in defining 'derivative works' '.” On the one hand, then, a determination that a new work is “transformative” powerfully supports a finding that it is a fair use, and that others can engage in the use. On the other hand, only the original copyright holder has the right to prepare derivative works, which include “any ' form in which a work may be ' transformed.”

How are we to distinguish the transformations that others are fairly entitled to use from those that remain within the exclusive rights of the original authors? Leval argues that “derivative works generally involve transformations in the nature of changes of form .” He contrasts this with copying for the purpose of criticism or commentary on the original or providing information about the work, which “tend[] most clearly to satisfy Campbell 's notion of the 'transformative' purpose involved in the analysis of Factor One.” (Footnotes and citation omitted.)

Regarding Google's snippet searches, the court had “no difficulty concluding” that “'the creation of a full-text searchable database is a quintessentially transformative use '.'” This was so because “'the result of a word search is different in purpose, character, expression, meaning, and message from the page (and the book) from which it is drawn.'” (Quoting Authors Guild v. HathiTrust, supra .)

The creation of verbatim, complete copies was transformative because they served a different function from the originals: making it possible to provide information about the books. Importantly, the search engine:

makes possible new forms of research, known as “text mining” and “data mining.” [Google's research tool] furnish[es] statistical information ' about the frequency of word and phrase usage over centuries. This tool permits users to discern fluctuations of interest in a particular subject over time and space by showing increases and decreases in the frequency of reference and usage in different periods and different linguistic regions.

(Footnote omitted.)

The Google functionality:

allows researchers to comb over the tens of millions of books Google has scanned in order ' to derive information on how nomenclature, linguistic usage, and literary style have changed over time.

The basic search function also allows users requiring less sophisticated analysis to locate books on particular subjects by searching for relevant terms. Snippet view facilitates this function and makes it more informative, by providing the context in which a term appears and clarifying whether a book falls into the group sought by the user.

Plaintiffs' Derivative Rights Theory

Section 106(2) of the Copyright Act gives the copyright holder the exclusive right “to prepare derivative works based upon the copyrighted work.” In an imaginative attempt to expand this right, the authors asserted that “they have a derivative right in the application of search and snippet view functions to their works, and that Google has usurped their exclusive market for such derivatives.” The court swiftly disposed of this claim: Google's search and snippet functions are means of providing certain kinds of information to users, such as whether, and how often specified words or terms are used. The exclusive rights of copyright holders do “not include an exclusive right to furnish [this] kind of information about the works '.”

The statutory definition of derivative, “while imprecise, strongly implies that derivative works over which the author of the original enjoys exclusive rights ordinarily are those that represent the protected aspects of the original work, i.e., its expressive content, converted into an altered form '.” Google's search and snippet functions “do[] not allow access in any substantial way to a book's expressive content,” therefore they do not impinge on the derivative right.

Turning to the other consideration under Factor One, whether the “use is of a commercial nature,” the court notes that this consideration is seldom given nor is it entitled to much weight, particularly when there is a strong showing that the use is transformative.

“Plaintiffs stress that Google is profit-motivated and seeks to use its dominance of book search to fortify its overall dominance of the Internet search market, and that thereby Google indirectly reaps profits from the Google Books functions.”

“So what?” the court in effect responds. “[W]e see no reason in this case why Google's overall profit motivation should prevail as a reason for denying fair use over its highly convincing transformative purpose, together with the absence of significant substitutive competition '.”

The Remaining Fair Use Factors

Factor Two points to “the nature of the copyrighted work” ' usually meaning whether the original is a factual work as opposed to fiction or other creative works. The books in the Google corpus are largely non-fiction, a consideration commonly said to tilt toward a fair use finding. But this was also of little moment to the court. “The second factor has rarely played a significant role in the determination of a fair use dispute,” the court observed, almost dismissing Factor Two completely.

Factor Three addresses how much of the copyrighted work has been used. As commonly viewed, the more that is taken (other things being equal), the weaker the case for fair use.

But in Judge Leval's understanding, this factor has little independent significance in a fair use analysis. The third factor serves as the handmaiden for the fourth factor, concerning the economic impact of the claimed fair use, because the more that is taken, “the greater the likelihood that the secondary work might effectively compete with and become a substitute for the original, and might therefore diminish the original rights holder's sales and profits.”

In this dispute, the third factor does not tilt against fair use because copying the totality of the works is necessary for the transformative purpose and because there is no market substitution since the complete copies are unavailable to the public.

Plaintiffs bravely sought to argue that Google's copying could provide a substitute for their works. The contention has always seemed far-fetched because it is inherently implausible that anyone would go to the trouble of engaging in hundreds or thousands of searches to read a single book. As the court discusses at length, Google has limited the search and snippet features in various ways that make it impossible for users to read even a substantial part of an entire work in Google book search.

Turning to Factor Four, the court's analysis seems already to have answered the question: no harm to the potential market for or value of the copyrighted work because no substitution. But Judge Leval wants to say another word or two on the subject. The court acknowledges that snippet view could cause some loss of sales, perhaps because (absent Google Books) researchers might demand their libraries obtain copies of some works even if they only want to take a peek at them. Nonetheless, just “some loss of sales” does not suffice; “[t]here must be a meaningful or significant effect 'upon the potential market for or value of the copyrighted work.'”

More importantly, in an unusual twist, Judge Leval focuses on the nature of any adverse economic impact: “the type of loss of sale [that is possible here] will generally occur in relation to interests that are not protected by the copyright.” At times, for example, a snippet search may sate a user's need for a copyrighted book “because the snippet [contains] a historical fact” that the user seeks to ascertain. But copyright protects expression, not facts, so the theoretical harm to the copyright holder's economic interest does not flow from what the copyright holder is entitled to protect: expression, not facts. “[It] would be a rare case in which the searcher's interest in the protected aspect of the author's work would be satisfied by what is available from snippet view.”

Summing up the (supposed) four-factor analysis: The first factor tilts strongly in favor of fair use because the use is highly transformative, and the commercial aspect does not matter. The second factor, the nature of the copyrighted work, is and should be a cipher in the analysis. Factor Three, the amount taken, only really matters insofar as it impacts Factor Four. And that factor favors fair use because there is no significant and no cognizable economic harm to the authors: the search and snippet functions are not substitutes for the books themselves and snippets are not likely to provide substantial access to protected aspects of the copyrighted works.

“Google's making of a complete digital copy of Plaintiffs' works for the purpose of providing the public with its search and snippet view functions” is consequently fair use.

In the brave world of transformativeness analysis, which this decision models, there are really only two factors ' transformativeness and economic impact ' or perhaps one, since they in turn are two sides of the same coin. Because a transformative use is one that has a “different character” or provides “new expression, meaning, or message,” it is not likely to represent merely a substitute for the original work; hence transformative works, by definition, are not likely to result in the kinds of harms that copyright is intended to avert. If a colorable contention of transformativeness is offered, that's what the case will be all about.

Hacking Concerns: Insufficient Evidence of the Risk

In a kind of after-thought, the court turns to plaintiffs' argument that Google's wholesale copying should not be deemed a fair use because the digitization and storage of plaintiffs' works exposes them to the risk that hackers may access and make the books widely available.

Presumably this consideration goes to Factor Four, but it is obviously at least somewhat conjectural in character. The court held the concern to be theoretically sound ' but not supported by the evidence in this case. The court dealt with the issue by allocating the burden of proof of coming forward.

Google offered evidence that the Google Books corpus was “protected by the same impressive security measures used by Google to guard its own confidential information,” and plaintiffs apparently failed to show more that a speculative risk of hacking.

“Google has made a sufficient showing of protection of its digitized copies of Plaintiffs' works to carry its burden on this aspect of its claim of fair use,” the court concluded, “and thus to shift to Plaintiffs the burden of rebutting Google's showing. Plaintiffs' effort to do so falls far short.”

Although an otherwise valid claim of fair use should not be negated based on imaginary concerns, in an era in which hackers have in fact penetrated the security systems of major corporations and financial institutions, it is difficult to know how these concerns should be treated, or what kind of evidence would in principle be sufficient to validate the concerns or what weight they should be entitled to.

No Liability Based on Providing Libraries With Digitized Copies

Finally, plaintiffs contended that providing digitized copies to the libraries that provided the books for the project was not a fair use, and that plaintiffs were exposed to the risk that the libraries would use their copies in an infringing way or fail to secure them.

Since the libraries' intended or potential uses of the copies represented fair use, they had a right to create or have created for them the digitized copies at issue, the court held. The risk they might misuse their copies was speculative, and Google was not liable for that danger when the copies were given subject to an agreement that the libraries would use their copies in a manner consistent with copyright law.

Conclusion

Unless the Second Circuit ignored a substantial line of cases ascribing transformativeness to functional uses of expressive works, or was daunted by the scope of the copying, the conclusion that Google's uses were fair or did not prima facie infringe seemed inevitable: The purposes were different from those of the original works. The uses did not displace or satisfy the demand for the original works. And the authors' alleged derivative rights were not among the exclusive rights granted by copyright law.

The Second Circuit went beyond the predictable, however, on a number of points.

• The court distinguished between fair use transformations and derivative work transformations by focusing on whether the changes between the original and the new work are merely changes of form.
• It confirmed out loud the triviality of the second factor, the nature of the work, in deciding fair use cases.
• It explained the third factor (amount taken) as tied to the fourth (economic impact on the copyright holder), and entitled to little independent consideration.
• The court broke new ground regarding Factor Four, first, by clarifying that adverse economic impact must be of a significant scope and, second, by considering whether any adverse economic impact is based on the new work's or new use's exploitation of protected aspects of the work.
• Finally, it confirmed in this case of first impression that copying to facilitate text and data mining is transformative and data mining itself does not impinge on any rights of copyright holders.

Mitchell Zimmerman is Of Counsel at Fenwick & West LLP in the Mountain View, CA, office. His work focuses on counseling, risk management and conflict resolution involving copyrights and other IP in computer software, Internet-based works and traditional forms of authorship. He can be reached at [email protected].

Based on the defense of fair use, the Second Circuit affirmed summary judgment for Google in the decade-long copyright battle between an authors group and the Internet search giant. The lawsuit concerned Google's right to copy millions of books in order to allow snippet searches and text/data mining of the works. Making digital copies “to provide a search function is a transformative use,” the panel held, “which augments public knowledge by making available information about Plaintiffs' books without providing the public with a substantial substitute for matter protected by the Plaintiffs' copyright '.” Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015).

To many legal observers, the outcome seemed obvious in light of the limited uses to which Google sought to affix the imprimatur of fair use. But the opinion takes a number of original turns in reaching this conclusion. Judge Pierre N. Leval, the author, is the same Judge Leval who, 25 years earlier, wrote the seminal copyright article on which rested the Supreme Court's “transformative fair use” analysis in Campbell v. Acuff-Rose, 510 U.S. 569 (1994).

In Acuff-Rose, the High Court considered whether the rap music group 2 Live Crew had infringed the copyright in the song “Pretty Woman” by copying the melody and much of the lyrics for their parodic version of the Roy Orbison hit. Relying heavily on Judge Leval's 1990 law review piece, “Toward a Fair Use Standard,” the Supreme Court adopted Leval's concept of “transformativeness” and ruled that the defendants' use was fair. See, 103 Harv. L. Rev. 1105 (1990).

Ever since Acuff-Rose, whether the new work or its purpose use is transformative has been a touchstone of fair use analysis. But just what that means has not always been easy to determine. The Google Books case gave Judge Leval an opportunity to return to the issue and elucidate transformativeness in a technology context.

Factual Background

Beginning in 2004, Google began its “Library Project,” scanning and digitizing books in the collections of the New York Public Library, the Library of Congress and various university libraries. The vast majority of the books scanned were non-fiction, and most were out of print. The works included books still under copyright as well as books in the public domain.

Google used optical character recognition technology to generate machine-readable text for each scanned book. Google's indexing allows users to search the full text of the more than 20 million books in the Google Books corpus. A list of books responsive to a search is made available, and the user can go to a page that provides information “About the Book,” including links to websites offering the book for sale if still in print.

“About the Book” also provides a list of the words and terms that appear with most frequency in the book. The search tool lets researchers identify those books, out of millions, that use and do not use particular terms, information (Google says) that would otherwise not be obtainable in lifetimes of searching.

The user can also look at an excerpt in “snippet view,” which displays a verbatim selection of an eighth of a page around the search term. (Snippet view is not available for books typically used in short “chunks,” such as dictionaries or cookbooks.) Users cannot view or download the full texts of any book, and Google has taken precautions that make it impossible, as a practical matter, for users to read all or even a substantial part of a book. The Google Books service is free, and there is no advertising on Google Books pages. (You can give Google Books a spin yourself by going to books.google.com.)

Google gave the participating libraries a set of digitized copies of the books scanned from their collections, but not from the other libraries. The copies were provided subject to an agreement requiring the libraries to abide by copyright law in using those copies and take precautions to prevent dissemination of their digital copies to the public at large.

Procedural Context and Plaintiffs' Contentions

The Authors Guild and three author-plaintiffs filed suit in 2005. The relatively narrow fair use issue ' whether it was legitimate for Google to copy the works and provide the search and snippet view functions ' was long overshadowed by controversies over an attempted settlement.

After the district court rejected the Google Books Settlement in 2011 and other settlement efforts failed, the case moved forward on the merits. In 2012, the Second Circuit stayed proceedings for an interlocutory appeal of the class certification, and then, in July 2013, provisionally vacated the certification and remanded for consideration of the fair use issues. In November 2013, the district court granted Google's motion for summary judgment based on fair use.

In this appeal the Second Circuit held, as it previously had in Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir. 2014), that the Authors Guild lacked standing, but that the author-plaintiffs could sue.

Transformativeness and The Law of Fair Use

“Fair use” is a judicially developed limitation on the scope of copyright, now codified in 17 U.S.C. '107. The section provides courts shall consider four factors:

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.

Each factor represents a continuum, tilting more or less strongly for or against a finding of fair use. Factor Four ' concerning the economic impact of the use, and particularly whether it represents a substitute for the original work ' is often said to be the most important consideration.

Ever since Acuff-Rose, whether the new work or the purpose of the use is transformative has been part of the Factor One analysis, and a touchstone of fair use. This inquiry asks:

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 ; ' in other words, whether and to what extent the new work is “transformative.”

Acuff-Rose, emphasis added.

Leval's Analysis of Transformativeness Applied To Google Books

Judge Leval began by cautioning:

The word “transformative” cannot be taken too literally as a sufficient key to understanding the elements of fair use. It is rather a suggestive symbol for a complex thought '.

The court observed that “the word 'transform' also plays a role in defining 'derivative works' '.” On the one hand, then, a determination that a new work is “transformative” powerfully supports a finding that it is a fair use, and that others can engage in the use. On the other hand, only the original copyright holder has the right to prepare derivative works, which include “any ' form in which a work may be ' transformed.”

How are we to distinguish the transformations that others are fairly entitled to use from those that remain within the exclusive rights of the original authors? Leval argues that “derivative works generally involve transformations in the nature of changes of form .” He contrasts this with copying for the purpose of criticism or commentary on the original or providing information about the work, which “tend[] most clearly to satisfy Campbell 's notion of the 'transformative' purpose involved in the analysis of Factor One.” (Footnotes and citation omitted.)

Regarding Google's snippet searches, the court had “no difficulty concluding” that “'the creation of a full-text searchable database is a quintessentially transformative use '.'” This was so because “'the result of a word search is different in purpose, character, expression, meaning, and message from the page (and the book) from which it is drawn.'” (Quoting Authors Guild v. HathiTrust, supra .)

The creation of verbatim, complete copies was transformative because they served a different function from the originals: making it possible to provide information about the books. Importantly, the search engine:

makes possible new forms of research, known as “text mining” and “data mining.” [Google's research tool] furnish[es] statistical information ' about the frequency of word and phrase usage over centuries. This tool permits users to discern fluctuations of interest in a particular subject over time and space by showing increases and decreases in the frequency of reference and usage in different periods and different linguistic regions.

(Footnote omitted.)

The Google functionality:

allows researchers to comb over the tens of millions of books Google has scanned in order ' to derive information on how nomenclature, linguistic usage, and literary style have changed over time.

The basic search function also allows users requiring less sophisticated analysis to locate books on particular subjects by searching for relevant terms. Snippet view facilitates this function and makes it more informative, by providing the context in which a term appears and clarifying whether a book falls into the group sought by the user.

Plaintiffs' Derivative Rights Theory

Section 106(2) of the Copyright Act gives the copyright holder the exclusive right “to prepare derivative works based upon the copyrighted work.” In an imaginative attempt to expand this right, the authors asserted that “they have a derivative right in the application of search and snippet view functions to their works, and that Google has usurped their exclusive market for such derivatives.” The court swiftly disposed of this claim: Google's search and snippet functions are means of providing certain kinds of information to users, such as whether, and how often specified words or terms are used. The exclusive rights of copyright holders do “not include an exclusive right to furnish [this] kind of information about the works '.”

The statutory definition of derivative, “while imprecise, strongly implies that derivative works over which the author of the original enjoys exclusive rights ordinarily are those that represent the protected aspects of the original work, i.e., its expressive content, converted into an altered form '.” Google's search and snippet functions “do[] not allow access in any substantial way to a book's expressive content,” therefore they do not impinge on the derivative right.

Turning to the other consideration under Factor One, whether the “use is of a commercial nature,” the court notes that this consideration is seldom given nor is it entitled to much weight, particularly when there is a strong showing that the use is transformative.

“Plaintiffs stress that Google is profit-motivated and seeks to use its dominance of book search to fortify its overall dominance of the Internet search market, and that thereby Google indirectly reaps profits from the Google Books functions.”

“So what?” the court in effect responds. “[W]e see no reason in this case why Google's overall profit motivation should prevail as a reason for denying fair use over its highly convincing transformative purpose, together with the absence of significant substitutive competition '.”

The Remaining Fair Use Factors

Factor Two points to “the nature of the copyrighted work” ' usually meaning whether the original is a factual work as opposed to fiction or other creative works. The books in the Google corpus are largely non-fiction, a consideration commonly said to tilt toward a fair use finding. But this was also of little moment to the court. “The second factor has rarely played a significant role in the determination of a fair use dispute,” the court observed, almost dismissing Factor Two completely.

Factor Three addresses how much of the copyrighted work has been used. As commonly viewed, the more that is taken (other things being equal), the weaker the case for fair use.

But in Judge Leval's understanding, this factor has little independent significance in a fair use analysis. The third factor serves as the handmaiden for the fourth factor, concerning the economic impact of the claimed fair use, because the more that is taken, “the greater the likelihood that the secondary work might effectively compete with and become a substitute for the original, and might therefore diminish the original rights holder's sales and profits.”

In this dispute, the third factor does not tilt against fair use because copying the totality of the works is necessary for the transformative purpose and because there is no market substitution since the complete copies are unavailable to the public.

Plaintiffs bravely sought to argue that Google's copying could provide a substitute for their works. The contention has always seemed far-fetched because it is inherently implausible that anyone would go to the trouble of engaging in hundreds or thousands of searches to read a single book. As the court discusses at length, Google has limited the search and snippet features in various ways that make it impossible for users to read even a substantial part of an entire work in Google book search.

Turning to Factor Four, the court's analysis seems already to have answered the question: no harm to the potential market for or value of the copyrighted work because no substitution. But Judge Leval wants to say another word or two on the subject. The court acknowledges that snippet view could cause some loss of sales, perhaps because (absent Google Books) researchers might demand their libraries obtain copies of some works even if they only want to take a peek at them. Nonetheless, just “some loss of sales” does not suffice; “[t]here must be a meaningful or significant effect 'upon the potential market for or value of the copyrighted work.'”

More importantly, in an unusual twist, Judge Leval focuses on the nature of any adverse economic impact: “the type of loss of sale [that is possible here] will generally occur in relation to interests that are not protected by the copyright.” At times, for example, a snippet search may sate a user's need for a copyrighted book “because the snippet [contains] a historical fact” that the user seeks to ascertain. But copyright protects expression, not facts, so the theoretical harm to the copyright holder's economic interest does not flow from what the copyright holder is entitled to protect: expression, not facts. “[It] would be a rare case in which the searcher's interest in the protected aspect of the author's work would be satisfied by what is available from snippet view.”

Summing up the (supposed) four-factor analysis: The first factor tilts strongly in favor of fair use because the use is highly transformative, and the commercial aspect does not matter. The second factor, the nature of the copyrighted work, is and should be a cipher in the analysis. Factor Three, the amount taken, only really matters insofar as it impacts Factor Four. And that factor favors fair use because there is no significant and no cognizable economic harm to the authors: the search and snippet functions are not substitutes for the books themselves and snippets are not likely to provide substantial access to protected aspects of the copyrighted works.

“Google's making of a complete digital copy of Plaintiffs' works for the purpose of providing the public with its search and snippet view functions” is consequently fair use.

In the brave world of transformativeness analysis, which this decision models, there are really only two factors ' transformativeness and economic impact ' or perhaps one, since they in turn are two sides of the same coin. Because a transformative use is one that has a “different character” or provides “new expression, meaning, or message,” it is not likely to represent merely a substitute for the original work; hence transformative works, by definition, are not likely to result in the kinds of harms that copyright is intended to avert. If a colorable contention of transformativeness is offered, that's what the case will be all about.

Hacking Concerns: Insufficient Evidence of the Risk

In a kind of after-thought, the court turns to plaintiffs' argument that Google's wholesale copying should not be deemed a fair use because the digitization and storage of plaintiffs' works exposes them to the risk that hackers may access and make the books widely available.

Presumably this consideration goes to Factor Four, but it is obviously at least somewhat conjectural in character. The court held the concern to be theoretically sound ' but not supported by the evidence in this case. The court dealt with the issue by allocating the burden of proof of coming forward.

Google offered evidence that the Google Books corpus was “protected by the same impressive security measures used by Google to guard its own confidential information,” and plaintiffs apparently failed to show more that a speculative risk of hacking.

“Google has made a sufficient showing of protection of its digitized copies of Plaintiffs' works to carry its burden on this aspect of its claim of fair use,” the court concluded, “and thus to shift to Plaintiffs the burden of rebutting Google's showing. Plaintiffs' effort to do so falls far short.”

Although an otherwise valid claim of fair use should not be negated based on imaginary concerns, in an era in which hackers have in fact penetrated the security systems of major corporations and financial institutions, it is difficult to know how these concerns should be treated, or what kind of evidence would in principle be sufficient to validate the concerns or what weight they should be entitled to.

No Liability Based on Providing Libraries With Digitized Copies

Finally, plaintiffs contended that providing digitized copies to the libraries that provided the books for the project was not a fair use, and that plaintiffs were exposed to the risk that the libraries would use their copies in an infringing way or fail to secure them.

Since the libraries' intended or potential uses of the copies represented fair use, they had a right to create or have created for them the digitized copies at issue, the court held. The risk they might misuse their copies was speculative, and Google was not liable for that danger when the copies were given subject to an agreement that the libraries would use their copies in a manner consistent with copyright law.

Conclusion

Unless the Second Circuit ignored a substantial line of cases ascribing transformativeness to functional uses of expressive works, or was daunted by the scope of the copying, the conclusion that Google's uses were fair or did not prima facie infringe seemed inevitable: The purposes were different from those of the original works. The uses did not displace or satisfy the demand for the original works. And the authors' alleged derivative rights were not among the exclusive rights granted by copyright law.

The Second Circuit went beyond the predictable, however, on a number of points.

• The court distinguished between fair use transformations and derivative work transformations by focusing on whether the changes between the original and the new work are merely changes of form.
• It confirmed out loud the triviality of the second factor, the nature of the work, in deciding fair use cases.
• It explained the third factor (amount taken) as tied to the fourth (economic impact on the copyright holder), and entitled to little independent consideration.
• The court broke new ground regarding Factor Four, first, by clarifying that adverse economic impact must be of a significant scope and, second, by considering whether any adverse economic impact is based on the new work's or new use's exploitation of protected aspects of the work.
• Finally, it confirmed in this case of first impression that copying to facilitate text and data mining is transformative and data mining itself does not impinge on any rights of copyright holders.

Mitchell Zimmerman is Of Counsel at Fenwick & West LLP in the Mountain View, CA, office. His work focuses on counseling, risk management and conflict resolution involving copyrights and other IP in computer software, Internet-based works and traditional forms of authorship. He can be reached at [email protected].