Google Library Project

8/14/2019 Google Library Project

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http://www.plagiary.org Perspectives Volume 1 - Number 2 - Page 1

AbstractGooglesannouncement that itwill include in its

search database the full text of books from five ofthe worlds leading research libraries has provokednewspaper editorials, public debates, and two law-suits. Some of this attention can be attributed topublic fascination with any move taken by Google,

one of the most successful companies in the digitaleconomy. The sheer scale of the project and itspossible benefits for research have also captured thepublic imagination. Finally, the controversy overcopyright issues has been fueled by Googles will-ingness to pursue this ambitious effort notwithstand-ing the opposition of the publishing industry andorganizations representing authors. Much of thepress coverage, however, confuses the facts, and theopposing sides often talk past each other withoutengaging directly.2 This article will attempt to setforth the facts and review the arguments in a system-atic manner.3 Although both sides have strong le-

gal arguments, the article concludes that the appli-cable legal precedents support Googles fair useposition.

The Google Book Search ProjectTheGoogleBookSearchproject (formerly the

GooglePrintproject)has two facets: thePartner

Program (formerly the Publisher Program) and

theLibrary

Project.

Under

the

Partner

Program,

a publisher controlling the rights in abook can

authorizeGoogletoscanthefulltextofthebook

intoGoogles searchdatabase. In response toa

userquery,theuserreceivesbibliographicinfor

mation concerning thebookaswellasa link to

relevanttext.Byclickingonthelink,theusercan

see the full page containing the search term, as

well as a few pagesbefore and after that page.

Links would enable the user to purchase the

book frombooksellersor thepublisherdirectly,

orvisitthepublisherswebsite. Additionally,the

publisherwould share incontextualadvertising

revenueifthepublisherhasagreedforadstobe

shown on theirbook pages. Publishers can re

move theirbooks from the Partner Program at

any time. ThePartnerProgram raisesno copy

right issuesbecause it is conductedpursuant to

anagreementbetweenGoogleandthecopyright

holder.

UndertheLibraryProject,Googleplanstoscan

intoitssearchdatabasematerialsfromthelibrar

ies of Harvard, Stanford, and Oxford Universi

ties, the University of Michigan, and the New

YorkPublicLibrary. Inresponse tosearchque

ries,users

will

be

able

to

browse

the

full

text

of

public domain materials, but only a few sen

tences of text around the search term inbooks

stillcoveredbycopyright. This isacriticalfact

thatbears repeating: forbooks stillundercopy

right, users willbe able to see only a few sen

tences on either side of the search term what

Google calls a snippetof text. Userswill not

seea fewpages, asunder thePartnerProgram,

northefulltext,asforpublicdomainworks. In

deed,userswillneverseeevenasinglepageof

anin

copyright

book

scanned

as

part

of

the

Li

braryProject.4

Moreover,ifasearchtermappearsmanytimes

inaparticularbook,Googlewilldisplaynomore

than three snippets, thus preventing the user

fromviewingtoomuchofthebookforfree. Fi

nally, Google will not display any snippets for

TheGoogleLibraryProject: BothSidesoftheStory1JonathanBand

Email:[email protected]

Band,J. (2006). TheGoogleLibraryProject: BothSidesoftheStory. Plagiary: CrossDisciplinaryStudiesinPlagiarism,

Fabrication,andFalsification,1(2): 117[temporarypaginationforadvanceonlinecopiesofarticles].

ISSN 1559-3096


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The Google Library ProjectBand


withrespecttoanywork:itcanparticipateinthe

PartnerProgram, inwhichcase itwouldshare in

revenue derived from the display of pages from

the work in response to user queries; it can let

Google scan thebook under the Library Project

and

display

snippets

in

response

to

user

queries;

or it canoptoutof theLibraryProject, inwhich

caseGooglewillnotscanitsbook.7

The Library CopiesAspartofGooglesagreementwiththepartici

pating libraries,Googlewillprovideeach library

with a digital copy of thebooks in its collection

scanned by Google. Under the agreement be

tween Google and the University of Michigan

theonly

contract

disclosed

to

the

public

so

far8

the University agrees to use its copies only for

purposespermittedunder theCopyrightAct. If

anyoftheselawfulusesinvolvesthepostingofall

orpartofa librarycopyontheUniversitysweb

siteforexample,postingthefulltextofapublic

domainwork theUniversityagrees to limitac

cess to the work and to use technological meas

ures toprevent theautomateddownloadingand

redistributionofthework.9 Anotherpossibleuse

describedbytheUniversity iskeepingthecopies

inarestricted

(or

dark)

archive

until

the

copy

rightexpiresor the copy isneeded forpreserva

tionpurposes.10

Actions by Other Search EnginesBoth Yahoo and Microsoft have recently an

nounced digitization projects. Microsoft an

nounced that it wouldbe digitizing 100,000 vol

umes from theBritishLibrary. Yahoo agreed to

hosttheOpenContentAlliance,underwhichenti

tiessuch

as

the

University

of

California

and

the

Internet Archive will post digitized works. The

salient difference between these projects and

GooglesLibraryProjectisthattheseprojectswill

involveonlyworksinthepublicdomainorworks

where theownerhasoptedin to thedigitization,

certain reference books, such as dictionaries,

where the display of even snippets could harm

themarketforthework. Thetextofthereference

books will stillbe scanned into the search data

base,butinresponsetoaquerytheuserwillonly

receive

bibliographic

information.

The

page

dis

playing the snippets will indicate the closest li

brary containing thebook, as well as where the

book can be purchased, if that information is

available.

Because ofnondisclosure agreementsbetween

Googleandthelibraries,manydetailsconcerning

the project are not available.5 It appears that

Google will scan only public domain materials

from Oxford and the New York Public Library,

andsmallcollectionsatHarvard. Itwillscanboth

public domain and incopyrightbooks at Michigan and Stanford. Google may make some at

temptstoavoidscanningthesamebookindiffer

ent libraries (particularlyMichiganandStanford,

wheretheoverlapmaybegreatest);but the inac

curacy ofbibliographic information in reference

tools such as card catalogs makes it difficult to

determine easily whether twobooks are, in fact,

identical. For example, a card catalogue entry

maynotindicatewhetherdifferentvolumesareof

the same edition. Given these inaccuracies,

Googlewill

probably

err

on

the

side

of

inclusion.

Googles Opt-Out PolicyInresponsetocriticismfromgroupssuchasthe

American Association of Publishers and the Au

thorsGuild,Googleannouncedanoptoutpolicy

inAugust2005. Ifacopyrightownerprovidedit

witha listofits titlesthat itdidnotwantGoogle

toscanat libraries,Googlewouldrespectthatre

quest,

even

if

the

books

were

in

the

collection

of

oneof theparticipating libraries.6 Googlestated

thatitwouldnotscanany incopyrightbooksbe

tweenAugustandNovember1,2005, toprovide

theownerswith theopportunity todecidewhich

books toexclude from theProject. Thus,Google

provides a copyright owner with three choices


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ofcopyright lawon itsear.13 Theownersas

sert thatundercopyright law, theusercancopy

onlyiftheowneraffirmativelygrantspermission

to theuser thatcopyright isanoptin system,

ratherthananoptoutsystem. Thus,asapracti

cal

matter,

the

entire

dispute

between

the

owners

andGoogleboilsdowntowhoshouldmakethe

firstmove:shouldGooglehavetoaskpermission

beforeitscans?Orshouldtheownerhavetotell

Googlethatitdoesnotwanttheworkscanned?

Googles Fair Use ArgumentTheownersarecorrectthatcopyrighttypically

isanoptin system,and thatGoogle is copying

vast amounts of copyrighted material without

authorization.Google

responds

that

this

copying

ispermittedunderthefairusedoctrine,17U.S.C.

107. The critical question in the litigation is

whether the fair use doctrine excuses Googles

copying.14

The U.S. Court of Appeals for the Ninth Cir

cuit, which comprises the states on the West

Coast, recently issuedadecision that isdirectly

onpoint. InKellyv.ArribaSoft,336F.3d811(9th

Cir. 2003),ArribaSoftoperated a search engine

forInternet

images.

Arriba

compiled

its

database

of imagesby sending out software spiders that

copied thousands of pictures from websites,

withouttheexpressauthorizationofthewebsite

operators. Arriba reduced the full size images

into thumbnails,which it stored in itsdatabase.

In response to a user query, the Arriba search

engine displayed responsive thumbnails. If a

user clicked on one of the thumbnails, she was

linkedtothefullsizeimageontheoriginalweb

site from which the image had been copied.

Kelly,

a

photographer,

discovered

that

some

of

the photographs from his website were in the

Arriba search database, and he sued for copy

right infringement. The lower court found that

Arribas reproductionof thephotographswasa

fairuse,andtheNinthCircuitaffirmed.

With respect tothepurposeandcharacterof

while Google intends to scan incopyrightbooks

without the owners authorization, as well as

worksinthepublicdomain.11

The LitigationOn September 20, 2005, the Authors Guild and

several individual authors sued Google for copy

right infringement. The lawsuit was styled as a

classactiononbehalfofallauthors similarlysitu

ated. Amonthlater,onOctober19,2005,fivepub

lishersMcGrawHill,Pearson,Penguin,Simon&

Schuster, andJohn Wiley & Sons sued Google.

Theauthorsrequestdamagesand injunctiverelief.

Thepublishers, incontrast,onlyrequested injunc

tiverelief. Neithergroupofplaintiffsmovedfora

temporaryrestraining

order

before

the

November

1dateonwhichGoogleannounced that itwould

resume scanning incopyright books. Neither

group sued the libraries for making the books

available to Google, nor for the copies Google is

makingforthem.

The Library Project involves two actions that

raisecopyrightquestions. First,Googlecopiesthe

fulltextofbooksintoitssearchdatabase. Second,

inresponse touserqueries,Googlepresentsusers

withafew

sentences

from

the

stored

text.

Because

the amountofexpressionpresented to theuser is

deminimus, thissecondactionprobablywouldnot

lead to liability. Perhaps for this reason, the law

suits focus on the first issue, Googles copyingof

thefulltextofbooksintoitssearchdatabase.12

Opt-In v. Opt-OutAsnotedabove,Googleannouncedthatitwould

honorarequestfromacopyrightownernottoscan

itsbook.

The

owners,

however,

insist

that

the

bur

denshouldnotbeonthemtorequestGooglenotto

scan aparticularwork; rather, theburden should

be on Google to request permission to scan the

work. AccordingtoPatSchroeder,AAPPresident,

Googlesoptoutprocedureshiftstheresponsibil

ity for preventing infringement to the copyright

ownerratherthantheuser,turningeveryprinciple


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slightlyinfavorofKelly.19

Thecourtalsoreviewedtheamountandsub

stantiality of the portion used in relation to the

copyrightedworkasawhole. 17U.S.C. 107

(3).

The

Ninth

Circuit

ruled

that

althoughArribadidcopyeachofKellysim

agesasawhole,itwasreasonabletodosoin

light of Arribas use of the images. It was

necessaryforArribatocopytheentireimage

to allow users to recognize the image and

decidewhether topursuemore information

about the imageor theoriginatingwebsite.

If Arriba copied only part of the image, it

would be more difficult to identify it,

thereby reducing the usefulness and effec

tivenessofthevisualsearchengine.20

Finally, the Ninth Circuit decided that the

effectoftheuseuponthepotentialmarketforor

value of the copyrighted work, 17 U.S.C. 107

(4),weighedinfavorofArriba. Thecourtfound

thattheArribasearchenginewouldguideusers

to Kellys web site rather than away from it.21

Additionally, the thumbnail images would not

harmKellysabilitytosellorlicensefullsizeim

agesbecause the low resolution of the thumb

nailseffectively

prevented

their

enlargement.22

Everything the Ninth Circuit stated with re

specttoArribacanbeappliedwithequalforceto

the Library Project. Although Google operates

the program for commercial purposes, it is not

attempting to profit from the sale of a copy of

anyof thebooks scanned into itsdatabase, and

thusitsuse isnothighlyexploitative.23 Likethe

Arribasearchengine,Googlesuseistransforma

tive in thatGoogle iscreatinga tool thatmakes

thefull

text

of

all

the

worlds

books

searchable

by everyone.24 The tool will not supplant the

originalbooksbecause itwilldisplayonlyafew

sentencesinresponsetouserqueries.

Like Arriba, the Library Project involves only

published works. And while some of these

workswillbecreative, thevastmajoritywillbe

nonfiction.

theuse,includingwhethersuchuseisofacom

mercialnature,17U.S.C.107(1),theNinthCir

cuit acknowledged that Arriba operated its site

forcommercialpurposes.However,Arribasuse

ofKellysimages

wasmore incidentaland lessexploitative in

nature than more traditional types of com

mercial use. Arriba was neither using

Kellys images to directly promote its web

sitenortryingtoprofitbysellingKellysim

ages. Instead, Kellys images were among

thousands of images in Arribas search en

ginedatabase.15

Moreover, the court concluded that Arribas

usewas transformative that itsusedidnot

merelysupersede theobjectof theoriginals,butinstead added a further purpose or different

character. While Kellys images are artistic

worksintendedtoinformandengagetheviewer

in an aesthetic experience, Arribas search en

gine functions as a tool to help index and im

prove access to images on the internet. The

Ninth Circuit stressed that Arribas use of the

images serves a different function than Kellys

use improving access to information on the

internet versus artistic expression. The court

closedits

discussion

of

the

first

fair

use

factor

by

concluding that Arribas use of Kellys images

promotesthegoalsoftheCopyrightActandthe

fair use exception. This isbecause the thumb

nailsdonotsupplanttheneedfortheoriginals

andtheybenefitthepublicbyenhancing infor

mationgatheringtechniquesontheinternet.16

With respect to the second fairuse factor, the

nature of the copyrighted work, the Ninth Cir

cuit observed that [w]orks that are creative in

natureare

closer

to

the

core

of

intended

copy

right protection than are more factbased

works.17 Moreover, [p]ublished works are

morelikelytoqualifyasfairusebecausethefirst

appearanceoftheartistsexpressionhasalready

occurred.18 Kellys works were creative, but

published. Accordingly, the Ninth Circuit con

cluded that the second factor weighed only


5/17



more of the work than the snippets Google will

display to its users. In any event, neither the

scannedcopynor thesnippetssupplant themar

ketfortheoriginalwork.26

Second,

they

suggest

that

Kelly

is

distinguish

ablebecauseitinvolvedthecopyingofdigitalim

agesontheInternet,whileGooglewillbedigitiz

inganalogworks. Ifanownerdecidestoplacea

workonawebsite, itknowsthatthewebsitewill

becrawledbyasoftwarespidersentoutbya

search engine, and it knows that the spider will

copy the work into its search index. Thus,by

placing the work on the website, the owner has

givena searchenginean implied license tocopy

theworkintoitssearchdatabase. Bycontrast,the

author or publisher of abook has not given an

impliedlicenseforthebooktobescanned.

Googlehasthreepossibleresponsestothisargu

ment. One,theKellydecisionmakesnoreference

toan implied license; itsfairuseanalysisdidnot

turn on an implied license. Two, this argument

suggests that works uploaded onto the Internet

areentitled to lessprotection thananalogworks.

Thisrunscontrarytotheentertainmentindustrys

repeated assertion that copyright law applies to

the Internet in precisely the same manner as it

appliesto

the

analog

environment.

Three,Googlecanarguethat itsoptout feature

constitutes a similar form of implied license. A

critical element of the implied license argument

with respect to material on the Internet is the

copyright owners ability to use an exclusion

header.Inessence,anexclusionheaderisasoft

wareDoNotEntersignthatawebsiteoperator

canplaceon itswebsite. Ifasearchenginesspi

der detects an exclusionheader, it will not copy

thewebsite

into

the

search

index.

Thus,

if

aweb

siteoperatorplaces contenton the Internetwith

out an exclusion header, the search engine can

assume that theoperatorhasgiven itan implied

license to copy the website. Similarly, now that

Google has announced its optout policy, it can

argue thatanyowner thathasnotoptedouthas

givenitanimpliedlicensetoscan.27

As in Kelly, Googles copying of entirebooks

into itsdatabase is reasonable for thepurposeof

the effective operation of the search engine;

searchesofpartial textnecessarilywould lead to

incomplete results. Moreover, unlike Arriba,

Google

will

not

provide

users

with

a

copy

of

the

entire work,but only with a few sentences sur

rounding the search term. And if a particular

termappearsmany times in thebook, thesearch

enginewillallow theuser toviewonly three in

stancestherebypreventingtheuserfromaccess

ingtoomuchofthebook.

Finally, as with the Arriba search engine, it is

hard to imagine how the Library Project could

actuallyharmthemarketforbooks,giventhelim

itedamountoftextauserwillbeabletoview. To

besure,ifausercouldview(andprintout)manypages of abook, it is conceivable that the user

would rely upon the search engine rather than

purchasethebook.Similarly,underthosecircum

stances, librariesmightdirectusers to the search

engine rather than purchase expensive reference

materials. But when the user can access only a

few sentencesbefore and after the search term,

anydisplacementof sales isunlikely. Moreover,

theLibraryProjectmayactuallybenefit themar

ket for the book by identifying it to users and

demonstratingits

relevance.

This

is

particularly

important for thevastmajorityofbooks thatare

not well publicizedby their publishers. Google

willencourageusers toobtainahardcopyofthe

bookbyprovidingalinktoinformationwherethe

bookcanbeborrowedorpurchased.25

The Owners Response to GooglesFair Use ArgumentTheownershavethreeresponsestoKelly. First,

they note that Arriba stored a compressed, low

resolution version of each image, while Google

willstorethefulltextofeachbook. Thisseemsto

beadistinctionwithoutadifference,becauseAr

riba had to make a high resolution copybefore

compressing it. Furthermore, the low resolution

image Arriba displayed to users represents far


6/17



Rose,Music,Inc.,510U.S.569(1994). Thus,Kelly

noted thatCampbell heldthat[t]hemore trans

formative thenewwork, the less important the

other factors, including commercialism, be

come.28 Likewise, Kelly cited Campbell for the

proposition

that

the

extent

of

permissible

copy

ingvarieswith thepurposeandcharacterof the

use.29AndKellyfollowedCampbellsconclusion

that [a] transformative work is less likely to

have an adverse impact on the market for the

original thanawork thatmerelysupersedes the

copyrightedwork.30

Perhaps most importantly, Kelly repeated the

Supreme Courts articulation in Campbell and

Stewartv.Abend, 495U.S.207, 236 (1990),of the

objectiveofthefairusedoctrine:Thisexception

permits courts toavoid rigidapplicationof thecopyright statute when, on occasion, it would

stifle the very creativity which that law is de

signedtofoster.31 Googlewillcontendthatthe

LibraryProjectiscompletelyconsistentwiththis

objective in that it will ensure that creative ac

complishments do not fade into obscurity. Be

causetheNinthCircuitsocloselyfollowedCamp

bell,andbecause theSecondCircuit isalsoobli

gated to follow Campbell, Google will urge the

Second Circuit to conduct a fair use analysis

similarto

the

Ninth

Circuits.

RegardlessofKellyandMP3.com,the issuethe

SecondCircuitwillprobablybemost interested

inexploring iswhetherGooglesuse is transfor

mative. On the one hand, Google is not

transforming the text of any individualbook

intoanewwork,e.g.,creatingaparody. Onthe

other hand, Google is creating something new

and valuable a search index consisting of the

full textofmillionsofbooksand thiscreation

differssignificantly

from

the

uses

offered

by

the

owners. Weighing these arguments, the Ninth

CircuitdecidedthatArribasusewastransforma

tive. The Second Circuit will conduct its own

analysisofthisissue.

ThecopyrightownersthirdresponsetoKellyis

that it iswronglydecided. Inotherwords, the

NinthCircuitmadeamistake. Theauthorsand

publishers suedGoogle in federal court inNew

York,partoftheSecondCircuit. While the trial

court

in

New

York

may

look

to

Kelly

for

guid

ance,Kelly isnotabindingprecedentintheSec

ondCircuit. Similarly,whenthecaseisappealed

to theSecondCircuit, theSecondCircuitwillbe

interested in how the Ninth Circuit handled a

similar case, but it is free to conduct its own

analysis.

TheownerssuggestthatthetrialcourtinNew

Yorkwillbeinfluencedbyadecisionbyafederal

trial judge in New York, UMG Recordings v.

MP3.com, 92 F. Supp. 2d 349 (S.D.N.Y. 2000).

MP3.com established a spaceshifting servicethatallowedpeoplewhopurchasedaCD toac

cess the music on the CD from different loca

tions. MP3.com copied several thousand CDs

into its server, and then provided access to an

entireCDtoasubscriberwhodemonstratedthat

he had possessed a copy of the CD. MP3.com

arguedthatthecopiesitmadeonitsservercon

stitutedfairuse. Thecourtrejectedtheargument

and assessed millions of dollars of statutory

damagesagainstMP3.com.

GooglewillcontendthatMP3.comiseasilydis

tinguishable. Itwillclaimthatitsuseisfarmore

transformative thanMP3.coms it iscreatinga

search index, while MP3.com simply retrans

mittedcopies inanothermedium. Additionally,

Googlewillclaim that itsusewillnotharmany

likelymarket for thebooks there isnomarket

forlicensingbooksforinclusionindigitalindices

of the sort envisioned by Google. In contrast,

MP3.comsdatabaseclearlycouldharmmarkets

foronline

music,

which

the

plaintiffs

had

already

takenstepstoenter. Theissueofdifferentlicens

ingmarketsisdiscussedbelowingreaterdetail.

Google also will insist that the Ninth Circuit

decidedKellycorrectly. ItwillpointtotheNinth

Circuitsheavy relianceon theSupremeCourts

most recent fair use decision, Campbellv.Acuff


7/17



which that law isdesigned to foster.32 In the

public debate concerning the Library Project,

supporters and opponents have made a wide

variety of equitable arguments that may ulti

mately factor into theSecondCircuits analysis.

Some

of

these

equitable

arguments

overlap

with

factorsdiscussedabovewithrespecttoKelly.

The Social Benefit of the Library ProjectGooglessupportersstressthatbyassemblinga

searchable index of the full text of millions of

books,Google is creatinga research toolofhis

toricsignificance. TheLibraryProjectwillmake

iteasier than everbefore forusers to locate the

wealth of informationburied inbooks. More

over,by

including

this

information

in

its

search

index, Google will be directing students to

sourcesofinformationfarmorereliablethanthe

websitestheysooftenfrequent,andreacquainta

newgenerationwithbooksand libraries. Addi

tionally,byhelpingusersidentifyrelevantbooks,

theLibraryProgramwilloften increasedemand

fortheseworks.

The Owners Desire for ControlTheownersbyandlargeagreethattheLibrary

Projecthassignificantsocialutility. Indeed,au

thorsparticipating in theAuthorsGuild lawsuit

acknowledge that the Library Project will pro

vide them with a helpful research tool. Their

objectionisnotthatGoogleiscreatingafulltext

search index; it is thatGoogle iscreating the in

dex without their permission. Tobe sure, the

SupremeCourthasstatedthat[c]reativeworkis

tobeencouragedandrewarded,butprivatemo

tivationmustultimately serve the causeofpro

motingthe

broad

public

availability

of

literature,

music,andtheotherArts.33 Nonetheless,some

courts have viewed copyright as a mechanism

forprovidinganauthorwithcontrolovertheuse

of his creative expression. Thus, some owners

believe that Googles optout option is insuffi

cientbecause they, and not Google, should de

cidewhethertheirworksaredigitized.

Intermediate CopyingGoogles supporters contend that the

intermediate copying cases also demonstrate

thefairusenatureoftheLibraryProject. Inthese

cases,

courts

found

that

fair

use

permitted

the

translationofmachinereadableobject code into

humanreadablesourcecodeasanessentialstep

in thedevelopmentofnoninfringing interoper

able computer programs. See,for example, the

following cases: SegaEnterprisesv.Accolade,Inc.,

977F.2d1510 (9thCir.1992);AtariGamesCorp.v.

Nintendo,975F.2d832(Fed.Cir.1992);SonyCom

puter Entertainment v. Connectix Corp., 203 F.3d

596 (9th Cir.), cert. denied, 531 U.S. 871 (2000).

Thus,Googles scanningofbooks shouldbeex

cusedbecauseitisanecessarystepinthedevel

opmentof

asearch

index

that

displays

non

infringingsnippetstousers.

The owners respond that the intermediate

copying cases are distinguishablebecause they

address a problem specific to software: transla

tionoftheprogramsistheonlymeansofaccess

ingideasunprotectedbycopyrightthatarecon

tained within the program. This problem, of

course,doesnotexistwithbooks. Furthermore,

in the intermediate copying cases, the software

developerdiscarded

the

translation

once

it

devel

oped itsnew,noninfringingprogram. Google,

conversely, will retain the scanned copy in its

searchindex. Whileacknowledgingthesefactual

differences,Googlessupportersstresstheunder

lyingprincipleoftheintermediatecopyingcases:

thatcopyingmaybeexcusedifitisnecessaryfor

asociallyusefulnoninfringingenduse.

The EquitiesAlthoughcourtstypicallyfocusonthefourfair

use factors and technical questions such as

whether a use is transformative, the Supreme

Courthas stressed that fairuse isanequitable

rule of reason which permits courts to avoid

rigid application of the copyright statute when,

on occasion, it would stifle the very creativity


8/17



contained in the Google search index. Thus,

Google will receive no advertising revenue di

rectlyattributabletotheinclusionofbooksinthe

searchindex,atleastintheshortterm. Instead,it

appears that Google hopes thatby including a

large

number

of

books

in

its

search

index,

it

will

differentiate itself from its competitors and at

tractmoreeyeballs,which in turnwill lead to

moreadvertisingrevenue.

Stockanalystshavequestioned thewisdomof

this$750millioninvestment. Whattheowners

seekwillrenderthisalreadyquestionableinvest

mentaneconomicimpossibility. Thetransaction

cost of determining who owns the copyright,

locating the copyrightowner,andnegotiatinga

licensewouldbeoverwhelming, even to an en

tity like Google. Mostbooks published in theUnitedStatesincludeacopyrightnotice,butthat

notice doesnot specify whether the author, the

publisher, or a third party has the right to au

thorizedigitization. Bookspublishedoutsidethe

United States often have no copyright notice.

Moreover, there is no registry of current copy

right ownership, with current contact informa

tion for the owner. Thus, Google could easily

spendmorethanathousanddollarspervolume

to identify, locate,andcontact theownereven

ifthe

owner

had

no

objection

to

Google

scanning

its work for free. The transaction costs alone

couldeasilyreachover$25billion($1000/bookx

25,000,000incopyrightbooks).

Googlemightbewillingtotakea$750million

gamble,butalmost certainlywillnotbewilling

totakea$25billiongamble,whichdoesnoteven

include the license fees some ownersmightde

mand.IfGooglewererequiredtoobtainpermis

sion to scan the incopyrightbooks, itprobably

would

scan

only

public

domain

works

andworkswhoseowners affirmatively requested to

beincluded. Onlyasmallpercentageofowners

are likely to take this step. As noted above, it

often is not clear whether the publisher or the

authorhastherighttoauthorizedigitizationofa

work. If theauthor isdeceased,hisheirsmight

notbeawarethattheyownthecopyright. And

The Owners Desire for CompensationAdditionally,manyownersdonotwanttobe

leftoutof the search index; theywant tobe in

cluded,justonbettertermsthanGoogleisoffer

ing.

Most

major

U.S.

publishers

have

joined

the

Partner Program, at least on a trialbasis with

respect to someof their titles. But the fact that

thecopyrightownershavesuedGooglenotwith

standingthethreechoicesGooglehasgiventhem

(thePartnerProgram,theLibraryProject,oropt

ingout)indicatesthatsomeownerswantabetter

deal thanGoogle isoffering.Oneobviouslybet

terdealthantherevenuesharingunderthePart

nerProgram is anupfrontpaymentbyGoogle

foreachtitleinthesearchindex.

Thisinsistence

on

remuneration

seems

to

have

two relatedbases. First, theowners repeatedly

point toGoogles financial success. Theyargue

that given a market capitalization and level of

profitability that may exceed that of the entire

publishingindustry,Googlecanaffordtopayfor

therighttoindextheirworks. Second,theown

ers claim thatGooglewillprofit from including

theirworks in its index,presumablyby thesell

ingofadvertising. Googleshouldnotbepermit

ted to profit from their labor without sharing

moreof

the

revenue

than

Google

is

offering

un

derthePartnerProgram.

The Economics of the Library ProjectGoogle has not disclosed how much it esti

matesitwillspendscanningbooksintoitssearch

index. Microsoft announced that it will spend

$2.5million toscan100,000volumes in theBrit

ishLibrary.

Assuming

similar

scanning

costs,

Google will spend $750 million to scan the 30

million volumes contained in the collections of

the five participating libraries. Google will not

display advertisements on the page displaying

the snippets fromaparticularbook. Moreover,

atpresent,advertisementswillnotappearonthe

search results page listing the responsive items


9/17



Moreover,anownersfailuretooptoutproba

blywillnotharm themarket for thework. As

noted above,because Google will display only

snippets of the work, abooks inclusion in the

searchindexwillnotdisplacesales. Googlewill

display

no

more

than

three

snippets

per

work

withrespecttoaparticularsearchterm. Further,

Googlewillnotdisplayanysnippetsfromrefer

ence works such as dictionaries where the dis

playofsnippetsarguablycouldharmthemarket.

Theowners argue that theLibrary Project re

stricts owners ability to license their works to

search engine providers. The existence of the

PartnerProgram,whichinvolveslicensing,dem

onstrates that the Library Project does not pre

clude lucrative licensing arrangements. By par

ticipating in thePartnerProgram,publishersreceive revenuestreamsnotavailable to themun

dertheLibraryProject. Googlepresumablypre

fers for publishers to participate in the Partner

ProgrambecauseGooglesavesthecostofdigitiz

ingthecontentifpublishersprovideGooglewith

thebooks in digital format. And Google has

made clear that it is willing to upgrade abook

from theLibraryProject to thePartnerProgram

upontheownersrequest.

Furthermore,Yahoo

announced

the

formation

oftheOpenContentAlliance,whichwillinclude

works licensed by their owners, nearly a year

after Google announced the Library Project.

GooglesLibraryProjectobviouslydidnotdeter

Yahoofromadoptingadifferentbusinessmodel

basedonlicensing.

Significantly, theLibraryProjectwillnotcom

pete with abusiness model involving licensed

worksbecausesuchamodelwillprobablyshow

morethan

just

snippets.

While

the

Library

Pro

jectwillhelpusersidentifytheentireuniverseof

relevantbooks,amodelwithlicensedworkswill

provide users with deeper exposure to a much

smaller groupofbooks.35 Eachbusiness model

will satisfy different needs. Stated differently,

the Library Project targets the indexing market,

whileotheronlinedigitizationprojectsaimatthe

foroutofprintbookswhere thepublisher con

trolsthecopyright,thepublisher if it isstill in

business mightnothave any economic incen

tive to request Google to scan thebook (more

than 75% of the incopyrightbooks are outof

print).

In

sum,

most

books

probably

would

not

beincludedinthesearchindex.

Somehavesuggestedthatthetransactioncosts

couldbe reducedby a collective license, along

thelinesofthelicensesASCAPandBMIprovide

for the publicperformance of musical composi

tions. Whilesuchanarrangementcouldtheoreti

callyworkonagoing forwardbasisforbooks

publishedafter2005 itwouldnotworkforthe

25,000,000existing, incopyrightbooks. Getting

a significant share of the copyright owners of

these25,000,000workstoagreetoparticipateinacollective license system wouldbe as costly as

Googlegetting theirpermissiondirectly. More

over,evenonagoingforwardbasis,itisunlikely

that thehypotheticalnewlyestablishedauthors

collection society would reach an agreementon

license termswithGoogle. Thecollection soci

etyandGoogle likelywouldhaveverydifferent

perceptions on what wouldbe a reasonable li

cense fee for including abook in the search in

dex.

Harm to the OwnersItiseasytoseetheharmtothepublicflowing

fromanincompletesearchindexthepublicwill

not find as complete a universe of relevant

books. And an incomplete search index is the

inevitableresultfromplacingonGooglethebur

denofobtainingpermissionfromtheowners.

But it is much more difficult to identify the

harm

to

the

owners

deriving

from

allocating

to

them theburdenofoptingout. Thecostof the

owners opting out is much less than Googles

cost of seeking permission. An author and her

publisheraremuchbetterplacedthanGoogleto

determinewhohas theright toauthorizedigiti

zation. Andwhoevertheownerprovestobe, it

obviouslyknowswhereitislocated.34


10/17



the indexedbooks, which could displace sales.

Googleresponds that if itdoeschange itspolicy

inamannerthathurtssales,theownerscansue

at that time. Sincedisplaying someofabooks

textinresponsetoasearchqueryimplicatesboth

the

reproduction

right

and

the

display

right,

an

ownerwillbe able tobringan infringementac

tion against Google when it changes its policy,

even if that occurs long after the original scan

ningofthebook. Accordingly,thereisnoreason

to prevent Google from proceeding now, when

itspracticesdonotharmowners. It isunlikely

thatthesefeeswould increaseauthorsincentive

towrite.

SecurityTheownershaveexpressedconcernabout the

securityofthedigitizedcopiesinGooglessearch

index. Theyfearthatsomeonewouldbeableto

hack into the index and upload the digitized

books onto the Internet, where they wouldbe

publiclyavailable.37 Google,however,hasasig

nificant incentive to protect the security of its

index: itwouldnotwant to see its$750million

investmentevaporate. Moreover,giventheease

ofdigitizingany singlebookbought in abook

storeor

checked

out

of

alibrary,

it

is

far

from

clearwhyanyonewouldbother tohack into the

Google index to access digitized books. And

even if someone were to hack into the Google

search index, the information wouldbe format

ted inamanner that facilitateswordsearch,not

distributionoffulltext,i.e.,thesearchindexdoes

notconsistofpdffiles.

Finally,theSecondCircuithasmadeclearthat

if an entity lawfully extracted information from

another

companys

database,

the

entity

is

not

liable fora thirdpartysuseof that information

to infringe theother companys copyright in its

database. SeeMatthewBender&Co.v.Hyperlaw,

Inc.,158F.3d693(2ndCir.1998). Thus, theSec

ond Circuitwould not holdGoogle responsible

forhackersunlawfulusesof the contentsof its

search index, unless the owners can show that

sampling market. See BMGMusic v. Gonzalez,

430F.3d888(7thCir.2005). Byconcentratingon

the indexingmarket, theLibraryProjectwillnot

harmthesamplingmarket.

Finally,

as

discussed

above,

the

enormous

transaction costs involved in compiling a com

prehensive full text search index with the own

ers authorization preclude the creation of such

an index in thatmanner. Thus,Googles index

does not deprive owners of potential revenues

fromtraditional, reasonable,or likely tobede

veloped markets for the work. SeeAmerican

GeophysicalUnionv.TexacoInc., 60 F.3d 913 (2nd

Cir.),cert.denied,516U.S.1005(1995).36

The Value of an Indexing LicenseAssuming that the transaction costs were not

an insurmountablebarrier to the existence of a

licensingmarket for indexingrights for theuni

verseofpublishedbooks, thevalueof a license

with respect to any particular book would be

relatively small. For thevast majorityofusers,

an index to the vast majority ofbooks is more

than adequate. Thus, from the perspective of

Googleanditsusers,themarginalimportanceof

theinclusion

of

any

particular

book

is

small,

and

Google wouldbe willing to pay at most an ex

tremelymodestfeefortheindexingrightstoany

singlebook. Evenforapublisherthatownedthe

rightstoalargebacklistofbooks,thetotallicense

fees itwouldreceivewouldprobablybesignifi

cantly less than the legal fees the litigationover

theLibraryProjectwillgenerate. Although the

aggregatevalueofall the licenses in thishypo

thetical market would be enormous, copyright

ownership isdispersedamongsomanyauthors

and

publishers

that

any

one

owner

could

rea

sonablyexpectonlytriviallicensefees.

The Definition of SnippetsTheownershavearguedthatsnippetisnota

legalterm. Therefore,atsomepointinthefuture

Google could startdisplaying largerportionsof


11/17



searchenginesdatabase. Asapracticalmatter,

eachofthemajorsearchenginecompaniescopies

a large (and increasing)percentageof theentire

World WideWeb every few weeks to keep the

database current and comprehensive. When a

user

issues

a

query,

the

search

engine

searches

the websites stored in its database for relevant

information. Theresponseprovidedtotheuser

typicallycontainslinksbothtotheoriginalsiteas

wellastothecachecopyofthewebsitestored

inthesearchenginesdatabase.

Significantly, the search engines conduct this

vastamountofcopyingwithouttheexpressper

mission of the website authors. Rather, the

search engine firmsbelieve that their activities

constitutefairuse. Inotherwords,thebillionsof

dollars of market capital represented by thesearchenginecompaniesarebasedprimarilyon

the fairusedoctrine. Ifa court concludes that

Googles scanning of millions ofbooks is not a

privilegedfairuse,thensearchenginesscanning

ofmillionsofwebsitesmightnot constitute fair

useeither,unlessthecourttakespains todistin

guishonesituationfromtheother. Asdiscussed

above, the owners contend that search engines

haveanimplied license to scanworksposted

ontheInternet. ButtheNinthCircuitinKellyv.

ArribaSoft

relied

on

fair

use,

not

implied

license.

The Impact on the Publishing IndustryTheownerscontendthatifGoogleispermitted

toassembleasearchindexofincopyrightbooks,

itwillhaveanunfairadvantageoverpublishers

thatwanttoprovideebooks. Thisisbecausethe

Library Project will lead consumers to perceive

Googleas the leadingsource fordigitalbooks.39

Thisargument

overlooks

the

fact

that

Google

willbe able to provide consumers with the full

textof abook in its search indexonlywith the

permissionof thecopyrightowner; fairusewill

not permit Google to make such a distribution

withouttheownersauthorization.

The owners similarly worry that the Library

Google somehow encouraged or induced the

hackers to infringe. Nothwithstanding the ab

senceofdirector secondary liabilityon itspart

for the infringing actions of hackers, Google

wouldstillhavesubstantialbusinessreasons for

maintaining

the

security

of

its

search

index,

as

discussedabove.

FloodgatesTheowners suggest that if Google is able to

get awaywith itsLibrary Project,other search

engines will also digitize their works without

authorization.38 But it isnotclearhowmoredig

itization will harm the owners, so long as the

othersearchenginesconfinetheirdisplayoftext

tosnippets.

And

if

the

other

search

engines

dis

playmorethansnippets, inamanner that inter

fereswith thesaleofworksor their licensing to

businessmodelssuchasthePartnerProgram,the

ownerscansuethosesearchenginesatthattime.

The owners alsouse the floodgates argument

toattacktheutilityofGooglesoptout. Ifother

search engines engage inmassdigitization pro

jectswithoptoutfeatures,ownerswouldhaveto

optoutrepeatedly aburdensomeprocess,es

peciallyfor

individual

authors.

As

apractical

matter,however,onlyasmallnumberofsearch

enginefirmshavetheresourcestoengageindig

itization programs on the scale of Googles Li

braryProject. Andevenifmanyspecializedindi

cesemerge,thenumberofindicesthatlikelywill

includeany specificbook is small. Also, if this

doesbecomeaproblematsomepoint in the fu

ture,groups like theAuthorsGuildcouldmain

tainageneraloptoutregisterthatsearchengines

couldhonor.

The Impact on Search EnginesThe courts analysis of the Library Project

couldaffect theoperationof Internet searchen

ginesgenerally. Asearchengine firmsendsout

softwarespiders thatcrawlpubliclyaccessible

websitesandcopyvastquantitiesofdataintothe


12/17



event,ifanownerdoesnotwantGoogletoscan

her inprint or outofprint book, Google will

honorherrequest.

The Privatization of KnowledgeSome scholars have acknowledged that the

LibraryProjectcangreatlyassistresearchactivi

ties,butnonethelessvoiceconcern thatacorpo

rate entity is assembling this vast search index

rather than a public library.41 They feel that

Googles ability to influence search results

throughitssearchalgorithmwillprovideitwith

toomuch controlover theaccess toknowledge.

Additionally, they worry that Google will have

aneconomic incentivenottorespecttheprivacy

ofits

users.

While in theory itmightbepreferable froma

societalpointofviewfortheLibraryProjecttobe

conductedby librariesrather thanaprivatecor

poration, libraries simply do not have the re

sourcestodoso. Thus,aspracticalmatter,onlya

largesearchenginesuchasGooglehasboth the

resourcesandtheincentivetoperformthisactiv

ity.

The Legality of the Library CopiesGooglewillprovideeach libraryparticipating

in theLibraryProjectwith adigital copyof the

books in its collection scannedbyGoogle. The

ownershavenotyetsuedthe libraries,norhave

they expressed any intention to do so. In the

event of litigation, the lawfulness of the library

copies will turn on how the libraries are using

them.42Asearchindexassembledbythelibraries

should receive even more favorable treatment

than Googles given the libraries non

commercialpurpose. Ontheotherhand,acourt

probably would find infringement if a library

madethefulltextofincopyrightworksavailable

onlinetothegeneralpublic.

The owners observe thatbecause the Univer

sityofMichiganisastateinstitution,thedoctrine

ProjectwillprovideGoogleabridgehead in the

publishing industry,which itwillbeable toex

ploit with its enormous resources. Of course,

more competition for publishers shouldbenefit

bothauthorsandconsumers. AndifGoogleen

gages

in

anti

competitive

conduct,

the

publishers

canturntotheantitrustlaws.

What do Authors Want?TheAuthorsGuild,whichsuedGoogle,repre

sentsonly8,000authors. Thus, itspositionsdo

notnecessarilyreflecttheviewsofthehundreds

of thousandsofauthorswhosebookswouldbe

scannedundertheLibraryProject. Mostauthors

wanttheir

books

to

be

found

and

read.40

More

over, authors are aware that an ever increasing

percentage of students andbusinesses conduct

research primarily, if not exclusively, online.

Hence,ifbookscannotbesearchedonline,many

userswillneverlocatethem. TheLibraryProject

is predicated upon the assumption the authors

generallywant theirbooks tobe included in the

searchdatabasesothatreaderscanfindthem.

The Library Project is particularly important

forauthors

of

out

of

print

books.

While

the

pub

lishers may participate in digitization projects

suchas thePartnerProgramwith respect to in

printbooks,theyhavenoincentivetodevoteany

effort to theoutofprintbooks,whichno longer

haveanyeconomicvalue. Butsincethepublish

ersoftheseoutofprintbooksmaystillholdthe

copyright, theauthorsof thebooksdonothave

the legal right toauthorizeGoogle to scan their

books. This large class of authors probably is

pleased that Google is providing users with a

mechanism to find their abandonedbooks. In

deed,manyofthemmightevenbewillingtopay

Googletoincludetheirbooksinitssearchindex,

and are happy that Google is doing so free of

charge. While the authors typically will receive

nodirecteconomicbenefit from the rediscovery

oftheiroutofprintworks,itcouldenhancetheir

reputationsanddisseminate their ideas. Inany


13/17



causeof thescaleof theLibraryProject,Google

cannotattempttolocatetheownersoftheallthe

booksitintendstoincludeinitssearchindex.

International Dimensions

FairuseundertheU.S.CopyrightActisgener

allybroaderandmoreflexiblethanthecopyright

exceptionsinothercountries,includingfairdeal

ingintheU.K. Thus,thescanningofalibraryof

books might notbe permitted under the copy

right laws of most other countries. However,

copyright law is territorial; that is,one infringes

the copyright laws of a particular country only

withrespecttoactsofinfringementthatoccurred

inthat

country.

Since

Google

will

be

scanning

incopyrightbooksjust in theUnitedStates, the

onlyrelevantlawwithrespecttothescanningis

U.S.copyrightlaw. (Googlewillscanonlypublic

domainbooksatOxford.)

Nonetheless, the search results willbeview

ableinothercountries. ThismeansthatGoogles

distributionofa fewsentences fromabook toa

user inanothercountrymustbeanalyzedunder

thatcountryscopyrightlaws.44 Whilethecopy

rightlaws

of

most

countries

might

not

be

so

gen

erous as to allow the reproduction of an entire

book,almostallcopyright lawsdopermit short

quotations. These exceptions for quotations

shouldbesufficienttoprotectGooglestransmis

sionofLibraryProjectsearchresultstousers.

ConclusionSociety would benefit significantly from a

search indexthatincludesthefulltextofa large

percentageofallpublishedbooks. Suchacom

prehensiveindex

can

be

compiled

only

without

theobtainingthepermissionofallthecopyright

owners;thetransactioncostsofobtainingall the

permissions wouldbe so large as to render the

project an economic impossibility. At the same

time,compilingsuchanindexwithoutobtaining

theownerspermissionswillnothurttheowners

inanydiscernableway,providedthatthesearch

of sovereign immunity will prevent the owners

fromsuing theUniversity if theUniversitymis

uses itscopies (e.g.,distributes thempubliclyas

opposed to storing them in a restricted or dark

archive). Althoughsovereign immunitywould

shelter

the

University

from

damages

liability,

the

ownerscouldstillpursueinjunctivereliefagainst

the Universitys officers and librarians. This

wouldenable theowners tostopanymisuseby

theUniversityofMichiganLibrary.

The Orphan Works InitiativeTheCopyrightOfficehasmade recommenda

tions toCongressonhowtoaddresstheorphan

works problem how to enable uses of works

whoseowners

cannot

be

identified

or

located.43

There are some similarities between orphan

worksand theGoogleLibraryProject,but there

are significant differences as well. Certainly,

manyofthebooksGoogleseekstoincludeinits

search index probably are orphan works. But

Googlesuseofeachtheseworksislessextensive

than the uses others hope to make of orphan

works. Asdiscussedabove,Googlewillscanan

entirework into its search index,butwillmake

onlysnippetsavailabletothepublic. Incontrast,

manyof

those

who

hope

to

use

orphan

works

intend tomake the entirework available to the

public. Forexample,alibrary intendingtodigi

tizeanarchiveofsoundsrecordingsoffolksongs

probably plans to make the sound recordings

availableontheInternet. Thispublicdistribution

ofentireorphanworkswill limit theavailability

of a fair use defense in many cases; hence, the

userneedsanewformofreliefalongthelinesof

what the Copyright Office is proposing. Con

versely,Googlecanmakeastronger fairusear

gument

because

it

will

display

only

snippets,

and

notentireworks.

Additionally, therelief theCopyrightOffice is

proposingtoCongresswillnothelpGoogle. The

Copyright Offices proposal limits the remedies

available to a reappearing owner if the user

madeagoodfaithefforttolocatetheowner. Be


14/17



REFERENCES

American Geophysical Union v. Texaco Inc., 60 F.3d 913 (2nd Cir.), cert. denied, 516 U.S. 1005 (1995).

Atari Games Corp. v. Nintendo, 975 F.2d 832 (Fed. Cir. 1992).

Basic Books, Inc. v. Kinkos Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991).

BMG Music v. Gonzalez, 430 F.3d 888 (7th Cir. 2005).

Campbell v. Acuff-Rose, Music, Inc., 510 U.S. 569 (1994).

Field v. Google, No. CV-S-04-0413-RCJ-LRL (D-NV Jan. 12, 2006).

Kelly v. Arriba Soft, 336 F.3d 811 (9th Cir. 2003).

Matthew Bender & Co. v. Hyperlaw, Inc., 158 F.3d 693 (2nd Cir.1998).

Princeton University Press v. Michigan Document Services, Inc., 99 F.3d 1381 (6th Cir. 1996).

Sega Enterprises v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992).

Sony Computer Entertainment v. Connectix Corp., 203 F.3d 596 (9th Cir.), cert. denied, 531 U.S. 871 (2000).

Stewart v. Abend, 495 U.S. 207, 237 (1990).

Thatcher, S. G. (2005). Fair Use in Theory and Practice: Reflections On its History and the Google Case.NACUA conference on The Wired University: Legal Issues at the Copyright, Computer Law, and InternetIntersection. Arlington, VA.

Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975).

UMG Recordings v. MP3.com, 92 F. Supp. 2d 349 (S.D.N.Y. 2000).

resultsdisplayonly snippetsof text. Itwillnot

diminishthemarketforthebooks,norwillitpre

vent licensed digitization projects that provide

users with more text for a narrower range of

books. Googlefurtherreduces thepossibilityof

harmby

permitting

owners

to

opt

out

of

the

Li

braryProjectaltogether,oroptin to thePartner

Program. Acourtcorrectlyapplyingthefairuse

doctrine as an equitable rule of reason should

permitGooglesLibraryProjecttoproceed.


15/17



NOTES1. Earlier versions of this article appeared in E-Commerce Law & Policy and a briefing paper prepared for the Office of InformationTech-

nology Policy of the American Library Association.

2. Many articles incorrectly suggest that users can access the full text of in-copyright works. Googles supporters discuss the enormous

social value of a digital index of the worlds books, while Googles opponents stress Googles use of copyrighted material without per-mission.

3. Many of the arguments recounted here emerged in various public debates concerning the Library Project, including debates in whichthe author participated. See, e.g., Gutenberg meets Google: The Debate About Google Print, pff.org/issues-pubs/pops/pop13.1googletranscript.pdf.

4. Displays of the different treatments can be found at http://books.google.com/googlebooks/library.html.

5. As discussed later in the article, only the agreement with the University of Michigan has been made public.

6. Because the author, the publisher, or a third party can own the copyright in a work, this paper will refer to owners.

7. Google initially required owners to state under penalty of perjury that they owned the copyright in the books they wished to opt-out.Google relaxed this requirement after the owners complained that they felt uncomfortable making assertions of ownership under pen-alty of perjury because of the complexities of copyright law. See Sanford G. Thatcher, Fair Use in Theory and Practice: Reflections on

its History and the Google Case (pp. 11-12).

8. The contract was disclosed as required under the Michigan Freedom of Information Act.

9. See Cooperative Agreement Between Google Inc. and the Regents of the University of Michigan, section 4.4.1.

10. UM Library/Google Digitization Partnership FAQ, August 2005.

11. HarperCollins recently announced that it intends to scan 20,000 books on it backlist and make the digital text available on its serverfor search engines to index. It will offer this service to search engines free of charge. The technological feasibility of this distributedindexing has not yet been proven.

12. The copyright issues relating to the copies Google makes for the participating libraries are discussed later in the article.

13. Association of American Publishers Press Release, Google Library Project Raises Serious Questions for Publishers and Authors, August 12, 2005.

14. In its answer to the Authors Guild lawsuit, Google raised numerous other defenses, including merger doctrine, scenes a faire, failureto comply with copyright registration formalities, lack of suitability for class action treatments, and the plaintiffs lack of standing. In thePublishers suit, Google raised many of these defenses, as well as license to scan and the publishers lack of ownership of electronicrights.

15. Kelly, 336 F.3d at 818.

16. Kelly, 336 F.3d at 818-20.

17. Kelly, 336 F.3d at 820.

18. Id.

19. Id.

20. Kelly, 336 F.3d at 821.

21. Id.

22. See also Field v. Google, No. CV-S-04-0413-RCJ-LRL (D-NV Jan. 12, 2006). Blake Field brought a copyright infringement lawsuitagainst Google after the search engine automatically copied and cached 51 stories he posted on his website. Google argued thatits Google Cache feature, which allows Google users to link to an archival copy of websites indexed by Google, does not violatecopyright law. The court granted summary judgment in favor of Google on five independent bases:

(a) Serving a webpage from the Google Cache does not constitute direct infringement, because it results from automated, non-volitional activity initiated by users;


16/17



(b) Field's conduct (posting an "allow all" robot.txt header and then intentionally failing to set a "no archive" metatag) indicated thathe impliedly licensed search engines to serve his archived web page;

(c) Fields is estopped from asserting a copyright claim because he induced Google to infringe by using software code that invitedGoogle to cache and serve his website;

(d) The Google Cache is a fair use; and

(e) The Google Cache qualifies for the Digital Millennium Copyright Act's section 512(b) caching "safe harbor" for online serviceproviders.

23. In Field v. Google, the court dismissed the argument that Google was a commercial entity by stressing that there was no evidence thatGoogle profited from its use of Field's stories. The court observed that his works were among the billions of works in Google's data-base. In the Library Project cases, Google will be able to make the same argument with respect to any one owner.

24. Google Blog post, Making Books Easier to Find, August 11, 2005. This tool includes not only digital copies of the books, but alsoan index of all the words in the books, and sophisticated software that enables the user to search the index and access search results.

25. In Field v. Google, the court considered an additional factor: whether an alleged infringer has acted in good faith. Googles allow-ing owners to opt-out, its refusal to display any snippets for certain reference works, and its willingness to upgrade any book into therevenue sharing Partner Program give Google strong evidence that it is acting in good faith.

26. Additionally, in Field v. Google, the court found Googles presentation of caches of the full text of Fields stories to be a fair use.

27. In Field v. Google, Google raised implied license as a defense. But Googles implied license argument in Field does not support theowners attempt to distinguish Kelly on the basis of the unique characteristics of spidering the Web. In Field, the court treated impliedlicense and fair use as distinct defenses. Thus, the absence of an implied license for the scanning in the Library Project does notweaken Googles fair use defense based on Kelly. Moreover, Field used a software header that specifically invited Googles spider tocrawl his website. There is no evidence that Kelly made a similar invitation to Arriba Soft.

28. Kelly, 336 F.3d at 818, citing Campbell, 510 U.S. at 579.

29. Kelly, 336 F.3d at 820, citing Campbell, 510 U.S. at 586-87.

30. Kelly, 336 F.3d at 821, citing Campbell, 510 U.S. at 591.

31. Kelly, 336 F.3d at 817.

32. Stewart v. Abend, 495 U.S. 207, 237 (1990).

33. Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975).

34. See Georgia Harper, Google This: The Bottom Line, utsystem.edu/ogc/intellectual property/googlethis.htm.

35. Testimony of Paul Aiken on Behalf of the Authors Guild, House Committee on Energy and Commerce, Subcommittee on Commerce,Trade, and Consumer Protection, Hearing on Fair Use: Its Effects on Commerce and Industry, November 16,2005, p. 11: And anegotiated license could pave the way for a real online library something far beyond the excerpts Google intends to offer through itsGoogle Library program (Aiken Testimony).

36. The court in Field v. Google found that there is no evidence before the Court of any market for licensing search engines the right toallow access to Web pages through Cached links, or evidence that one is likely to develop.

The owners could argue that the Library Project might deprive them of the promotional value of their works, e.g., steering traffic away

from their websites were they to offer search capability. See Video Pipeline, Inc., v. Buena Vista, Inc., 342 F.3d 191 (3

rd

Cir. 2003),cert. denied, 540 U.S. 1178 (2004). Interpreting the fourth fair use factor to incorporate promotional value of this sort significantlylimits the utility of the fair use privilege because every work theoretically has some promotional value. Additionally, if a particularowner believes that a search index of the works it owns does have promotional value, it can simply opt-out of the Library Project. Incontrast, Video Pipeline did not permit Disney to opt-out of its service displaying film trailers.

37. Aiken Testimony, p. 8.

38. Aiken Testimony, pp. 8-9.

39. Aiken Testimony, pp. 10-11.


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40. See Tim OReilly, Search and Rescue, TheNew York Times, September 28, 2005.

41. See Siva Vaidhynathan, A Risky Gamble With Google, The Chronicle of Higher Education, December 2, 2005.

42. Some argue that while fair use might permit a library to make a digital copy of a work for archival purposes, it would not permitGoogle, a commercial entity, to make the archival copy for the library. This argument derives from cases such as Princeton UniversityPress v. Michigan Document Services, Inc., 99 F.3d 1381 (6 th Cir. 1996)(en banc) and Basic Books, Inc. v. Kinkos Graphics Corp.,758 F. Supp. 1522 (S.D.N.Y. 1991), where the courts ruled that commercial copy centers could not claim that their photocopying ofcoursepacks constituted a non-commercial use. In these cases, however, the copy centers often made hundreds of copies of a singlework in a manner designed to supplant the copyright holders rights. Here, by contrast, Google will be making just one copy of anygiven work for a library. If a library is permitted under Section 108(b) to make three copies of an unpublished letter for preservationspurposes, surely it can retain a preservation specialist to make those copies for it.

In any event, as a practical matter, if the library copy became a focus of the litigation, it is unlikely that a court would find the librarycopy to be infringing, but Googles index copy to be a fair use. Ultimately, the library copy is ancillary to the index copy; Googlemakes the library copy as consideration for obtaining access to the book for the purpose of making the index copy.

43. United States Copyright Office, Report On Orphan Works, January 2006.

44. Google arguably is causing a copy of the sentences to be made in the random access memory of the users computer. Thus, thelawfulness of this copy must be examined under the copyright laws of the users country.

Jonathan Band represents Internet companies and library associations on intellectual property and Internet pol-icy matters in Washington, D.C. He does not represent the parties in the litigation discussed in the article. Hereceived his B.A. from Harvard College and his J.D. from Yale Law School, and is an adjunct professor at theGeorgetown University Law Center.

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