Lawyer 2 Lawyer

Fair Use in Authors Guild v. Google, Inc.

Ten years ago, the Authors Guild filed a lawsuit against Google, Inc. in an alleged copyright infringement case involving Google’s book scanning project. This project involved creating a searchable database that allows a user to search the content of all books that have been scanned into that database.

After many years in the courts, a federal appeals court recently ruled that the project is fully protected by fair use and does not infringe on the copyrights of authors.

In this episode of Lawyer 2 Lawyer, host Bob Ambrogi joins Attorney William H. Frankel from Brinks Gilson & Lione, Attorney Kenneth D. Crews from Gipson Hoffman & Pancion and Attorney Jeremy S. Goldman from Frankfurt Kurnit Klein + Selz, PC. Together, they discuss the ruling in Authors Guild v. Google, Inc., explore fair use, review the case, evaluate the Authors Guild’s potential appeal and analyze how this landmark ruling will impact the book industry and the general public of readers.

William H. Frankel serves as the chair of the Brinks Gilson & Lione’s Copyright Group. His practice includes patent, trademark, copyright, trade secrets and unfair competition litigation in jury and non-jury cases; international intellectual property, litigation and counseling; and licensing. He has counseled clients in the evaluation, protection, procurement, and transfer of IP rights, including providing legal expertise in worldwide patent protection and the coordination of legal strategies in global IP disputes.

Kenneth D. Crews specializes in copyright law serving the commercial and entertainment sectors, as well as nonprofit entities, individual authors and other creative talent. For more than twenty-five years, his research, policymaking, and teaching has centered on copyright issues of importance to education and research. Professor Crews established and directed the nation’s first university-based copyright office at Indiana University, where he also held a tenured law professorship. He was later recruited to establish a similar office at Columbia University in New York City, and he currently serves on the faculty of Columbia Law School.

Jeremy S. Goldman represents many companies and individuals in the media, entertainment, advertising, and technology spaces in complex litigations involving copyright in the digital age, film and television contracts, trademarks and rights of publicity. He has litigated some of the most closely watched copyright and entertainment cases, including representing The Authors Guild in the Google Books and HathiTrust cases and Hasbro in a 2014 trial in Los Angeles over the motion picture rights to Dungeons & Dragons.

Special thanks to our sponsor, Clio.

View transcript

Advertiser: Where is the line going to be draw in the future?

 

It’s really been about the public. It’s been giving rights to individuals, but ultimately it’s a giving of those rights for the main purpose of allowing people to be encouraged to create, to share, so that the public can benefit from it.

 

Authors, however, deserve a right to be at the table when their works are going to be mass digitized and commercialized by a company like Google.

 

Welcome to the award-winning podcast Lawyer to Layer, with J. Craig Williams and Robert Ambrogi, bringing you the latest legal news and observations with the leading experts in the legal profession. You’re listening to Legal Talk Network.

 

Bob Ambrogi: Hello and welcome to Lawyer 2 Lawyer on the Legal Talk Network. This is Bob Ambrogi coming to you from just outside of Boston, Massachusetts where I write a blog called Lawsites and I also practice law. My co host, J. Craig Williams is away on business today and not able to be with us. Before we introduce today’s topic, let me take a moment to thank our sponsor, Clio. Clio is the online practice management platform for lawyers. It’s available at www.GoClio.com. Thanks to Clio for sponsoring the show. Ten years ago, the Authors Guild and other plaintiffs filed a lawsuit against Google in alleged copyright infringement in a case involving Google’s book scanning project, a searchable database that allows the user to search the content of all books that have been scanned into the database. Ten years later, a federal appeals court – the Second Circuit court of appeals – just recently ruled that the project does not violate copyright laws and is considered fair use under copyright law and does not infringe on the rights of its authors. Today on Lawyer 2 Lawyer, we’re going to look at this recent ruling in the Authors Guild v. Google case. We’ll talk about its implications for copyright law and for authors and publishers and the general public of readers as well. To help us explore this issue today we have three guests who know this topic well. Let me introduce each of them. Beginning with our first guest today is Attorney William H. Frankel. Bill is a shareholder with the law firm Brinks Gilson & Lione’s out of Chicago. Bill serves as the chair of the Copyright Group. His practice includes patent, trademark, copyright, trade secrets and unfair competition litigation in jury and nonjury cases, international intellectual property, litigation and counseling, and licensing. He has counseled clients in the evaluation, protection, procurement, and transfer of IP rights, including providing legal expertise in worldwide patent protection and the coordination of legal strategies in global IP disputes. Welcome to Lawyer 2 Lawyer, Bill.

 

Attorney William H. Frankel: Thank you. Thank you, Bob.

 

Bob Ambrogi: Our next guest today is Attorney Kenneth D. Crews from the firm Gipson Hoffman & Pancione out of Los Angeles, California, where he specializes in copyright law serving the commercial and entertainment sectors, as well as nonprofit entities, individual authors and other creative talent. For more than twenty-five years, his research, policymaking, and teaching have centered on copyright issues of importance to education and research. Kenneth Crews established and directed the nation’s first university-based copyright office at Indiana University, where he also had a tenured law professorship. He was later recruited to establish a similar office at Columbia University in New York, and he currently serves on the faculty of Columbia Law School. Welcome to Lawyer 2 Lawyer, Kenneth Crews.

 

Attorney Kenneth D. Crews: Pleasure to be here.

 

Bob Ambrogi: And last but not least, joining us today is Attorney Jeremy S. Goldman from the firm Frankfurt Kurnit Klein & Selz in New York. Jeremy represents a number of companies and individuals in the media, entertainment, advertising, and technology spaces in complex litigations involving copyright in the digital age, film and television contracts, trademarks and rights of publicity. He has litigated some of the most closely watched copyright and entertainment cases, including having representing The Authors Guild in the case that we’re talking about today, the Google Books case and also a related case, the HathiTrust cases and also Hasbro in a 2014 trial in Los Angeles over the motion picture rights to Dungeons & Dragons. Welcome to Lawyer 2 Lawyer Jeremy Goldman.

 

Attorney Jeremy S. Goldman: Thanks, Bob, happy to be here.

 

Bob Ambrogi: Very happy to have all of you today. Let me just ask a preliminary question. Jeremy, I know that you were involved in this case as a lawyer on behalf of the plaintiffs. Bill and Kenneth, I just wanted to confirm, neither of you were directly involved in this case. Is that correct?

 

Attorney William H. Frankel: That’s correct.

 

Attorney Jeremy S. Goldman: Yes, that’s correct, and it might look to some as if I were because Columbia and Indiana had some involvement in this case. But as luck would have it, the timing was such that I didn’t have any decision making activity in this matter from the university perspective.

 

Bob Ambrogi: So Jeremy, then, I want to start with you going back to 2005. What was it that Google was doing that the Authors Guild and the other plaintiffs in this case objected to?

 

Attorney Jeremy S. Goldman: Let me just start off by saying my involvement in the case of course is only that of being the attorney for the Authors Guild and I of course will try to represent the Authors Guild position here but I am not here as an attorney for the Authors Guild, I’m here on my own behalf. My involvement with the case began later in time after 2005 when the Authors Guild brought the hockey trust lawsuit against the universities that had provided the books to Google. And that was in I believe 2013 when that lawsuit was filed. But to answer your question, I think it is good to start there in 2005. If you go in a time machine back to 2005, I think there was a lot of shock around the authorship community, the rightsholder community, the publishing community, at what Google was undertaking with some of the largest university libraries around the country and ultimately the world. And what that involved, and people I think might lose sight of this. It involved Google having trucks back up onto the lots of libraries and having bookshelves emptied and put onto carts and put into trucks and then brought to facilities where books, millions of them, were scanned end to end and digitized for Google to use and then for the libraries to use. Back then, and still today to certainly the Authors Guild and the authors that support the Authors Guild, this is a violation of the most basic fundamental aspect of copyright, which is the author’s exclusive right to control the reproduction of a copyrighted work. It was the millions of copies of books and scanning machines that made the Authors Guild concerned back then. And furthermore, it was also the fact the Google was not just engaging in those copies and saving their own copies and providing copies to libraries, but they also were displaying verbatim text from those books to the public, which the Authors Guild considered to be a separate violation of copyright. And the concern was always that the authors were losing their right to control the distribution of their works and that Google, this for profit organization, was going to profit and be able to build out their search engine and to be in a huge competitive advantage over other businesses using the works of authors. So that, I think at least in a nutshell, is what motivated the Authors Guild to bring a lawsuit and has motivated the Authors Guild to continue litigating that issue.

 

Bob Ambrogi: Let’s turn to our other guests, I understand that neither of you were involved in this case, but in the dogma years of the internet, that ten years ago was a long time ago and Google was nowhere near as prominent of a company as it is now. This is all kind of new terrain for a lot of people. Kenneth Crews, with the benefit perhaps we’re going to hindsight to some extent knowing what’s happened with this case, when you first became aware of this case whenever it was, if it was more than a decade ago, what were your thoughts on the issues of this case?

 

Attorney Kenneth D. Crews: Yeah, thank you very much. My thoughts really played in to the way copyright works overall. Copyright does grant rights to initially authors and then those rights are often transferred to other parties. So very often the parties who are the holders of the legal right are not the authors, they’re often the publishers or heirs or somebody else. But somebody holds the copyright and has rights to take legal action with respect to, as we just heard as Jeremy laid out, address issues of reproduction, distribution, public display, et cetera. But copyright also includes exceptions and limitations, and the keypoint that was critical in this case was whether this activity by Google would fit within the parameters of fair use. Fair use being one of the many statutory exceptions to the rights of copyright owners. There are copyright exceptions for the benefit of the music industry, in benefit of a horde of cultural affairs and education. And then there’s the very general concept of fair use. This was breaking new ground so there was plenty of room to debate when we first heard – when anybody first heard – about this case do debate whether or not this activity, with all of its specifics, was in fact within fair use. What we also had to think about was just the logistics of making a business decision. There are two gigantic business decisions here. One is the decision of Google to decide – I assume in private meetings with lawyers, with key officials – is this fair use to our satisfaction such that we could move forward with this project, because it took ten years to get a court ruling on that question. And then there’s the question by the plaintiffs about expenditures and strategy. Do we bring this litigation knowing that we’re litigating against a major party that has the pockets and litigation that once you start that litigation, you don’t know where it’s going to take you. When we first heard about this case, it was a big open debate about fair use and it was a big open debate about the business decisions on both parts about how to proceed.

 

Bob Ambrogi: Thanks. And Bill Frankel, how about you? What were your thoughts when you first heard about this case? Did it strike you as a slam dunk for one side or the other or how did you see it playing out? Did you think it would take ten years?  

 

Attorney William H. Frankel: Like Jeremy said, it was a pretty significant event in copyright law to see, as he described, the trucks pulling up to the library and physically copying such a large number of works in their entirety. But this precedent of fair use was well known. The Supreme Court had spoken to the issue ten years prior in the Campbell v. Acuff-Rose Music case where this whole transformative notion was evolving that we see played out in the current decision. So we have an inkling of where the battlelines are going to be drawn, but it was very unclear at that time, to me, which way it would go because there were different kinds of copying. There were digitization of the books of the outset, just blatant copying, and subsequently Google processed that information and offered different viewing options depending on the copyright status of the work and other factors. So there were many pieces of the puzzle we were looking at and wondering where this would all go. Now we have the benefit of considerable evolution for better or for worse of the fair use analysis we see play out in the art world with appropriation in our cases, we’ve seen it elsewhere. And I think the law has been evolving, and we can get into those details, but I don’t think the case decision is as much as a surprise and a shock as it might have been if it had come down ten years ago. That’s kind of how I view the evolution of the case. I think it was a bit of a coin toss to me at the outset, but I think by now we pretty much saw this coming.

 

Bob Ambrogi: And I guess that over the course of that ten years a lot happened, obviously, in this case as well with regard to Google and the internet and other issues. There had been in, I think in 2008, if I’m correct, the parties had negotiated a settlement agreement that would have had Google paying some money to authors. But the judge, Denny Chin, who was the trial judge in this case, now a Second Circuit judge, rejected that settlement as I understand it. The case then went forward and Judge Chin ultimately issued his decision of finding that there were no copyright violations and that brought the case to the Second Circuit. Jeremy, do I have that history right up to that point?

 

Attorney Jeremy S. Goldman: You do have that history right and the history of this is fascinating for a lot of reasons. I mentioned earlier that the Authors Guild subsequently brought a case against HathiTrust, which was the name of the collaboration between university libraries that had digitized their books in conjunction with Google and with other entities. We brought that case, as I mentioned, in 2012. But that case was decided in the Second Circuit before the case against Google was decided in the Second Circuit. So when the Authors Guild went before the Second Circuit, there had already been a decision from the same court holding that the HathiTrust program was fair use. In terms of the timing of it, and I think going to what your first question was, it wasn’t just that technology had changed and just that the fair use had evolved in really significant ways with some interim decisions by courts of appeals between 2005 and when this decision came out. It was also the judges themselves and the clerks of the judges had gotten used to Google Books and they liked it, it was really neat. In fact, I remember during oral argument on the HathiTrust case in the Second Circuit – I think it was Judge Parker, thought I can’t remember for sure – he said, “Well, my clerks really use Google Books for sight checking. Isn’t it a really helpful tool counsel?” And that really struck me because it certainly speaks to the fact that over the course of these ten years from when the authors first battled this case, people, including the judges themselves, had gotten used to having all the content of books in the world available at their fingertips. And I’m not suggesting that the display of all the books were available, but certainly the tool itself, being able to find what you want and be able to cite to it was really interesting to judges. And by that point in time ,everyone had gotten used to it.

 

Bob Ambrogi: We need to take a short break. A lot more to talk about here, but stay with us. We’ll be right back after a few short words from our sponsor.

 

Advertiser:

Kate Kenny: Hi. My name is Kate Kenny from Legal Talk Network, and I’m joined by Jack Newton, President of Clio. Jack takes a look at the process of moving to the Cloud. Now how long does it take to move to the Cloud, and is it a difficult process?

Jack Newton: No. With most Cloud computing providers, moving your data into the Cloud is something that takes just minutes, not hours or days to do. You can get signed up and running with most services in just a few minutes. Even if you have an existing legacy set of data that you want to migrate to a web-based practice management system like Clio, there’s migration tools and migration services that we’re able to offer to each that process. Most firms can be up and running in the cloud in less than five minutes, and can have their data imported in a matter of hours or days.

Kate Kenny: We’ve been talking to Jack Newton, President of Clio. Thank you so much, Jack.

Jack Newton: Thank you, and if you’d like to get more information on Clio, feel free to visit www.goclio.com. That’s G-O-C-L-I-O.com.

Bob Ambrogi: Welcome back to Lawyer 2 Lawyer. This is Bob Ambrogi, and with me today is Bill Frankel, attorney with the law firm Brinks Gilson & Lione in Chicago, attorney Kenneth Crews with the firm Gipson Hoffman & Pancione in Los Angeles, and attorney Jeremy S. Goldman from the firm Frankfurt Kurnit Klein & Selz in New York City and one of the attorneys involved in the Google Books case. In October, just a few weeks ago, the Second Circuit came down with its decision in its case. Jeremy, you were just commenting on the fact that it appeared that one thing that’s happened is that people and judges in particular maybe came to like Google Books. One of the points that the Second Circuit judge who wrote the opinion, Judge Pierre Leval, said that while authors are undoubtedly important, intended beneficiaries of copyright, the ultimate primary intended beneficiary is the public, whose access to knowledge copyright seeks to advance by providing rewards for authorship. Kenneth Crews, I have to wonder; is that sort of a big part of the decision here that the Second Circuit is seeing the public benefit in this?

 

Attorney Kenneth D. Crews: I think that’s exactly right. I think that what has happened was while there were many people who would have predicted back in 2005 that a court would call this fair use for various reasons, I think we just heard it exactly right that many more would have predicted it by the time the decision actually came down in October. Because the court cases had changed the way or refocused the way that we all looked at fair use. Now it’s true that if you go back 300 years in the history of what we know as western copyright law and the model of what we know today, it’s really been about the public. It’s been giving rights to individuals, but ultimately it’s a giving of those rights for the purpose of not letting them earn money, that’s an incident of it, but really for the purpose of allowing people to be encouraged to create, to share, to get that content out of their heads, out to the public so that the public can benefit from it. And the grand thing of rights is intended to do that, but so is the limiting of the rights. So fair use, for example, among other limitations, serves the same purpose. The purpose of fair use is to allow all of us to benefit from works by using those works, perhaps in ways that would be a violation of the law if it were not for fair use. So the fair use statute is not a defense, it says on its own face that the fair use of a work is not an infringement, and that’s straight out of the statute that it’s really a carveout for the public benefit to sponsor the next generation of creativity and for their learning. And I would just say quickly and let others jump in that it’s exactly right what we’ve been talking about that visions and attitudes and indeed some of the law about fair use has evolved in recent several years, but that’s standard procedure for fair use. It gets us to the point where what hasn’t changed over the years is ultimately fair uses based on those factors and the statutes and the exercise of fair use is based on careful planning. And that’s what the court pointed to in part on the Google Books project that they used certain protective devices and steps and strategies to protect the interests of rights holders, while at the same time engaging in fair use.

 

Bob Ambrogi: Bill Frankel, I’m just wondering what your thoughts are. Were you at all surprised by the Second Circuit decision in this case? I’m taking it from somebody who rarely comments that you saw this coming as well.

 

Attorney William H. Frankel: Yeah, I wasn’t surprised by this decision. I think what interested me about it is the way the court came back to these four factors that we traditionally analyze with respect to fair use and apply each of them in this case. And in doing so, one could argue that the court rendered some of the factors impotent, because all of a sudden, the court’s saying things like you can copy the entirety of a work, as long as there’s a transformative purpose. You can make money of the copy and it can be a commercial venture. That doesn’t necessarily mitigate against fair use. So some of these factors that normally would weigh in favor of one either fair use or infringement, the court was very careful to say no one of these factors is dispositive, and that of course has always been the law. But it’s just interesting to have these four factors and observe all of a sudden that no one of them may lead one way or another. The overwriting issue here, of course, in the court’s mind, was that this was a transformative use that was providing a benefit to the public, and that’s clearly what drove this decision. I can’t say that’s wrong on that basis, but it does raise some interesting implications going forward. What if Google decides to start running ads on its book search results? The court note in its decision that that was something that was not occurring, and presumably weighed into their thinking. But if that’s the case, the court already said commercial use in and of itself doesn’t rule out the possibility of fair use. So where are the lines going to be drawn in the future? And how is this going to apply not just in this case of books but with respect to art, for example? The problem with art is you wind up with judges deciding what is transformative or not. It’s not as simple as the issue that was before the Second Circuit, whether books are searchable or whether they’re being copied for publication purposes. So those are some interesting questions and another one that jumped out at me because we recently got a decision out of the Ninth Circuit out of the so called Dancing Baby case which stands for the proposition that you have to make a good faith stab at a fair use analysis before you send a takedown notice to a party. So how is a corporation or record company or another rightsholder going to factor in this fair use analysis now in the wake of the Google Books decision, the Authors Guild decision. How are they going to factor that in before they send out a notice of takedown letter? So I think the case has some interesting implications for copyright law and I think it certainly raises questions going forward as to how the fair use analysis is going to play out in all cases.

 

Bob Ambrogi: And just for the benefit of our listeners who may not be familiar with the case or with Google Books, just to be clear, Google did not put the full text of these books online, or at least make them available online. But it did, as I understand it from the Second Circuit’s opinion, there were three issues here. One was that Google pretty much wholesale digitized the number of books, copyrighted and books that were out of copyright. They just took the whole books and digitized them. And then it created a search functionality that allows users to search for terms within those books. And then there’s this display of snippets of text that match search results. The snippets are limited in what you can see and as I understood it from the decision, it’s also limited in how much of the book can be seen overall through these snippets. But Jeremy, looking at the Authors Guild website, it appears that you’r requesting review of this by the Supreme Court. So I take it you don’t necessarily agree that this was inevitable that the Second Circuit would come down this way.

 

Attorney Jeremy S. Goldman: We did not think it was inevitable that the Second Circuit would come out this way, although after the HathiTrust ruling, we had an uphill battle to convince the Second Circuit that they should decide this case differently than the HathiTrust case. And because that was precedent, we had to – among other things – focus on the fact that the Google Books program was commercial and that they were profit-driven, whereas the HathiTrust program was run by nonprofit libraries. The Authors Guild is appealing this ruling, and I think that further to both what Bill and Ken said, this is a significant decision. It represents an expansion and I think an unprecedented expansion of fair use. I don’t think that it’s completely out of step with where this has been heading over the last ten years or so. In fact, there was another case involving Google over its image search program. That was decided in 2007 by the Ninth Circuit that held that its image searching program was with fair use and under the fair use doctrine and applying the transformative use test. What’s interesting about the transformative use test, among other things, is that the test was really first articulated by Pierre Leval, the judge who wrote this Second Circuit decision. And when he wrote it and it was applied and adopted by the Supreme Court in the Campbell v. Acuff-Rose case, which was the case over the 2 Live Crew coming up with a parody, or what was held to be a parody, of Roy Orbison’s Pretty Woman. And that was the case that held that parody as fair use. When they articulated the transformative use test, the way that it was articulated and the way that courts had generally applied it was it’s fair use if you take somebody’s work to create new and different expression from the original, under the theory – at least we argue – that it encourages more copyrighted works and more expression to go into the world when you allow authors to draw upon other works in order to do commentary, in order to do parody. You need to be able to draw on the original. What we have here, in the Google Books case, and what you had in the image search case and what you have in some of the other cases is not a case where you’re taking existing copyrighted works in order to create new words of expression in order to put more authorship into the world. You’re taking those books in order to expand their utility, or that’s the word that Levan actually used in this opinion. He said it’s not just to create new a different expression, it’s also to create utility. What we’re seeing is a real expansion of the transformative use test and it’s written by the judge who actually, in some ways coined the transformative use test, and it was adopted by the Supreme Court. And the Authors Guild believe that the transformative use test has gone a little bit off the rails. And that has reflected not just in this opinion – which denies authors their rights of exclusivity over their works of authorship and therefore does not encourage new works of authorship – but also in cases like the Prince v Cariou case, which is another Second Circuit case that Bill was alluding to before I believe, where it’s about art appropriation and where the judges are sort of making the decisions on their own as to whether art is transformative or not. And that question, is it transformative or not, sort of decides the whole thing. Once a judge decides it’s transformative, it’s fair use. If they don’t decide it’s transformative, it’s not fair use. And we believe that that is not the Congress’s intent under the Copyright Act and we believe the Supreme Court should therefore reign in this test so that it is fair use used to create new works of authorship and encourage creativity in that way and not by allowing a commercial enterprise like Google to profit off the backs of authors.

 

Bob Ambrogi: Kenneth Crews, do you see transformative use off the rails with this decision?

 

Attorney Kenneth D. Crews: Not necessarily with this decision. I think we have seen over the last several years this evolution of transformative, the concept of transformative use going into two directions that Jeremy already articulated. One is creating a new work that’s based on the existing work, so you transform the artwork, you transform the song, and you create something new. And we all know that those of us working with copyrights is that runs the risk that what you may be creating is a derivative work. Well, the courts said in this case, this is really about the second prong of transformative use, that this is about creating a new utility from the existing work, and that’s the searchability and the delivery of just snippets. But think of it this way: transformative use is an analysis that the courts have adopted and have made a part of the first of four factors of fair use. Now, it’s absolutely true what the others here said that once you determine it’s transformative, that does have a kind of a ripple effect and it influences the direction some of the other factors are going to go. It doesn’t decide it, but it clearly, clearly influences where those other factors may go. So it’s a powerful determination in the context of fair use. But that last factor, the fourth of four factors – and this is not in order of priority, it’s just the order that they’re laid out in the statute-

 

Bob Ambrogi: Could you just lay out what the four factors are again for us besides transformative use?

 

Attorney Kenneth D. Crews: Sure, I think of them as four words: purpose, nature, amount and effective. It’s what the purpose of your use and nonprofit purposes are generally favored over commercial uses. But as we’ve learned from cases, that’s not a rule. The second factor, the nature. What’s the nature of the works? Certain types of works, more creative works generally get more protection, hence less fair use. And again, that’s not a hard rule. The amount. What’s the amount of the work that you’re using? Well, in this case, it’s 100% because they had to scan 100%. But even the court said that’s not a rule because you can scan 100% if the overall context is going to favor fair use. And the fourth factor, what’s the effect of your use on the market for the original. And if I’m creating a true derivative that’s typical of what a copyright owner might make, an encyclopedia to go with the Harry Potter books, that’s a kind of knock off spinoff derivative that the court has said and other courts have said that’s something that’s typical of what copyright owners do with their successful novel, and therefore is certainly not within fair use. In this case, it may be that digitizing the whole thing. It may be that second type of transformative that creates a new utility. But when you get to that fourth factor, these are the kinds of uses that under the circumstances don’t interfere with the market or harm the value of the original work. The courts said maybe they do, but not very much, if they do. So it’s a balancing act that’s an overall kind of analysis of the four factors that overall do they lean this way or do they lean that way. So what the court really did here too, was oddly they’ve been dismissing all of these hard and fast rules, which is no question that the direction the Supreme Court sent fair use, starting with that Pretty Woman case in 1994. But then they reintroduced one of those rules that I think was largely dissed by the Supreme Court, a rule that said the fourth factor is the most important factor. So the court really gave a lot of attention, more attention I think than it needed to to that fourth factor, and even then didn’t see market harm and found transformative use on the balance this weighs in favor of fair use.

 

Bob Ambrogi: Thanks. We’re unfortunately getting way over our time here. I promised to have you all out of here in 30 minutes and we’ve gone over that. I do want to go around with each of you and get your final thoughts on this. But maybe in doing that, you can speak to what you see as the implications of this decision, what its effect will be on authors, on the public and on the law. So, Bill Frankel, maybe we can start with you.

 

Attorney William H. Frankel: Thanks, Bob. And Jeremy and Kenny, I think the observations and points were made very right on and informative about this case. It is a fascinating case. It’s been fascinating to watch for the last ten years to watch the case evolve, to watch transformative use evolve, and to watch the law evolve. Not only with respect to books but with respect to art and thumbnail images and all kinds of other copyrightable works. I find it interesting that even though the court was trying to apply the four factor test and not try to adopt any bright line rule, the case in that sense has created some room for debate, discussion, question, and I think it leaves open in the future questions. If Google can scan every book that was ever written, is there anything to stop it from scanning every painting that was ever made? And is that a bad thing or a good thing? Is there a public benefit there? I mentioned before, what if Google starts running ads with its book search results? Does that change the equation? I think there’s some interesting questions of this nature that the court’s been grappling with and we’ve already seen a challenge of transformativeness notion. Some have called it the blob that ate fair use. But the Seventh Circuit in a recent case here in Chicago urge that we shift away from the emphasis on transformativeness because of this vague reason that we look to the fourth fair use factor and the market effect and give that more emphasis and credence. I’m not sure that would have resulted in a different conclusion in this case, but there is a divergent view that we may see play out in the future as well. So bottom line, very interesting case, probably the right decision on the facts, but still a lot of questions for the application of fair use in the future.

 

Bob Ambrogi: Bill, if any of our listeners would like to follow up with you, what’s a good way for them to find you?

 

Attorney William H. Frankel: I’m always available on email, WFrankel@BrinksGilson.com.

 

Bob Ambrogi: Thanks a lot. And Kenneth Crews, how about you?

 

Attorney Kenneth D. Crews: Yeah, I see the case as an extension of where previous cases have been leading us and I also look at it in the marketplace and think there are very few players who can match what Google is doing and would be willing to even make the investment to match what Google is doing. So one part of me also looks at it and says this is just a Google specific situation. But then on third naught, it really isn’t. I think what this opened up is some ability for universities and libraries – on no question a much smaller scale because of the logistics and the cost – to engage in some other socially beneficial uses of materials in their collection. Especially digitization for preservation and protection of different works, especially scarce and brittle items. I think this opens up some new and constructive possibilities there as well. So my thanks to you for this opportunity.

 

Bob Ambrogi: Thank you, Kenneth. And if any of our listeners would like to follow up with you, how would they do that?

 

Attorney Kenneth D. Crews: Oh, I’m pretty easy to find! You can – pardon the pun – Google me and I’ll pop up all over the place. Although I really recently relocated to my hometown of Los Angeles and I’m at the firm that’s GHPLaw.com and you’ll find me.

 

Bob Ambrogi: And we won’t just get the snippet there, we’ll get all of you there. Jeremy Goldman, you get the final word today.

 

Attorney Jeremy S. Goldman: Thanks. I appreciated everyone’s input today. It was an interesting discussion. I’m sure the four of us could go on for many hours on this really interesting topic of copyright law. The Authors Guild is one of the oldest and largest organization of authors in the world. The authors are the people who put the books on the shelves of the libraries, and I don’t want that to get lost in all of this. Authors are the people who are the most interesting in the copyright. Authors are the people who are the most interested in the progress of science and the arts, which is the underlying purpose of copyright. They are not opposed to progress, they’re not opposed to having books that are searchable. In fact, authors are the people who benefit very much from having a database like Google Books. Authors, however, I think deserve a right to be at the table when their works are going to be mass digitized and commercialized by a company like Google. And I think ultimately this really would benefit society greatly if rights holders and authors were at the table. And in fact, that’s what really happened here after the Authors Guild filed a lawsuit against Google. The reason it took ten years is because three or four of those years was Google and representatives from the Authors Guild and representatives from libraries all over the country convening and coming up with really an ingenious settlement agreement that would have – I think for the better of society, far beyond what the Google Books platform is now – would have allowed people to access the books and to have access to what are called orphan works and to books that have been out of print and to actually read those books and to compensate authors for those contributions. That’s really where this lawsuit led until the judge rejected it because there were a lot of people who opposed it. The reason I’m saying that is because the concern I have and I think the client shares this as well is that with the Second Circuit ruling that this is fair use, it takes away some of the impotence of Congress and the various stakeholders to come together and to come up with something much better for the people who are interested in being able to access books. I think that the much better solution is one like they’re doing in Europe, which is where you have extended collective licensing agreements where vast numbers of rights holders automatically grant rights to a national library or something like Google and that allows people and audiences to be able to access the books and exploit them, but with authors having rights over how those works are secured and how they are compensated for their input into a system like this. I think that the way that this has been done with millions of books being copied in the quiet of night in the back of trucks is not fair. And ultimately, you just look at this, it doesn’t pass the smell test, and I think a lot of authors and rights holders and people that respect those think that this was a real act of hootspa by Google. That said, I understand it serves society, and I think the authors understand that this serves societal benefit. So the goal is not to shut it down, but the goal is to have a place at the table and to hopefully make this better for everyone. So that is my closing argument, thank you very much.

 

Bob Ambrogi: Well, Jeremy, thank you. And how can our listeners follow up with you?

 

Jeremy S. Goldman: Sure, I’m Jeremy Goldman, again, and I’m at JGoldman@FKKF.com. You can find me on Twitter, @IPPrivacyLawyer, and I am also out here in LA right now. So Ken, maybe we can grab a coffee one day.

 

Attorney William H. Frankel: That would be a pleasure.

 

Bob Ambrogi: Thanks to all of you for taking the time to be with us today. We really appreciate your thoughts, this was an interesting discussion and I really wish we had a lot more time to talk about it; including that settlement agreement, that would be more interesting to talk about. But we’re out of time. I’d like to again thank attorney Bill Frankel from Brinks Gilson & Lione in Chicago, Kenneth Crews from Gipson Hoffman & Pancione in Los Angeles, and Jeremy S. Goldman from Frankfurt Kurnit Klein & Selz in New York, currently in LA. Thanks to all of you for being with us today, we really appreciate it. And that wraps up another episode of Lawyer 2 Lawyer. Thanks to all of you for listening. Join us next time with another interesting topic. When you want legal, think Lawyer 2 Lawyer.

 

Advertiser: Thanks for listening to Lawyer to Lawyer, produced by the broadcast professionals at Legal Talk Network. Join J. Craig Williams and Robert Ambrogi for their next podcast covering the latest legal topic. Subscribe to the RSS feed on legaltalknetwork.com or in iTunes. The views expressed by the participants of this program are their own, and do not represent the views of, nor are they endorsed by, Legal Talk Network, its officers, directors, employees, agents, representatives, shareholders, and subsidiaries. None of the contents should be considered legal advice. As always, consult a lawyer.

 

[End of Transcript]