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The Google Book Settlement and Orphan Works

Written by Beth Hutchens
Hutchens Law Office, PLLC
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Posted: May 1, 2011 @ 10:52 pm
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‘Membah that scene in “The Time Machine” when George tries to read about the Eloi only to discover that the books have all turned to dust?   That would be bad, at least according to Google, so in the interest of über profits -ahem- literary preservation, it is endeavoring to create the world’s first digital library.  Thanks, Google!  As it turns out, there are some pesky copyright issues they probably should have sorted out first.   Among them is what to do with an orphan work.  In copyright law, the concept of orphan works is kind of obscure and doesn’t come up a lot, but I have a feeling it will be a bit more prevalent as we shift from print to digital media.  Long story short, an orphan work is a work that still has copyright protection, but for whatever reason, the owner can’t or won’t be found.  Congress had the opportunity to address this situation back in 2008, but they didn’t.   So now we have a bit of a pickle.

Let me back up.  Back in 2004, Google entered into agreements with some academic institutions to digitize their library books.  So Google started scanning.   Big time.  The purpose was 1) to preserve the content of older works in various states of disrepair, and 2) to make that content available electronically.  But many of those books were still protected by copyright and Google didn’t ask the copyright owners for permission to copy the books.  So in 2005, a group of authors and publishers brought a class action copyright infringement suit against Google.   This suit spawned a settlement agreement (“ASA”) between Google and the authors and publishers.  That proposed settlement received hundreds of objections from, well, pretty much everybody.  Last month, Judge Chin of the U.S. District Court, Southern District of New York, took issue with the agreement and rejected it finding that it was not “fair, adequate, and reasonable”.  And for good reason.   

I will begin by pointing out a very crucial concept.  Under the Copyright Clause of the U.S. Constitution (Article I, Section 8, clause 8), the authority to create the copyright laws is vested in the Legislative, not Judicial branch.  There is a colorable argument that the terms of the agreement would have required Judge Chin to allow a new set of copyright standards that Congress hasn’t enacted, thereby overstepping his bounds as a judicial officer.  He rightfully thought “the establishment of a mechanism for exploiting unclaimed books” should be addressed by Congress, not the courts.  So he really could have rejected the ASA for that reason alone.  But he didn’t and, thankfully, he took the time to go into some other details. You can read the opinion here:  The Authors Guild v. Google, 2011 WL 986049 (S.D.N.Y. 2011). 

The ASA would have allowed Google to digitize millions of copyrighted works in an effort to create a digital library.  The terms of the ASA would have allowed Google to (1) continue to digitize books and inserts, (2) sell subscriptions to an electronic books database, (3) sell online access to individual books, (4) sell advertising on pages from books, and (5) make certain other prescribed uses.   Google’s rights to the work would be non-exclusive, so the copyright holder would still be able to sell the work other companies.  And Google would have to pay 63% of the revenue from all uses of the works to the copyright holder.

Here’s the problem.  Not only does the ASA exonerate Google from liability for unauthorized past copying, it would also grant Google significant rights in the future to exploit entire books without first obtaining the permission of copyright owners. This includes orphan works.  Under the terms of the ASA, copyright owners not wanting to have their works digitized (and exploited) by Google would have to “opt out” of giving Google carte blanche to do so.    In his ruling rejecting the ASA, Judge Chin noted the vast majority of some 500 comments on the settlement objected to it and 6,800 class members opted out altogether.  I’m not sure what would be done with the works of non-class members, but I have a sneaking purple suspicion where that would end up if the ASA hadn’t been rejected.

According to Judge Chin, this opt-out provision granted Google “the ability to expropriate the rights of copyright owners who have not agreed to transfer those rights”.    Judge Chin points out that under that ASA, absent class members who do not opt out of the class are “deemed to have released their rights even as to future infringing conduct.”    So, for those of you keeping score at home, the agreement would give Google the go-ahead to copy work from anybody who didn’t tell it not to and lift from those people any remedies for any unauthorized copying.  That’s pretty counterintuitive to copyright law and a rather inappropriate attempt to shift the burden to the copyright owner.  Besides, and never forget this, a copyright owner has no obligation to exploit a work.  Copyright law gives owners the right to exclude others from using their works, and, whether you like it or not, this includes the right not to sell, license, or distribute.  But the ASA would have permitted Google to bypass that very important concept.

So what is Google, or anybody for that matter, to do if they want to digitize a literary work but can’t find the copyright owner to ask permission? Have no fear- the ASA specifically addresses this.  According to the ASA, Google was supposed to “strive” to locate the copyright holder, but if unsuccessful, it could digitize the book without the owner’s consent.  If this happened, the copyright owner would lose the right to object to future infringing conduct by Google.   Read that last part again and let it sink in for a moment before we move on.  Orphan works would have been included in a registry, and the copyright owner would be paid if they turned up after “reasonable (search) efforts.”  For authors that couldn’t be located, Google would collect and escrow funds for authors if they ever did come forward.  The ASA also would have let any class member copyright holder to compel Google to remove or never scan his or her works without having to go to court, but it looks like orphan works copyright holders later revealed would be out of luck.  I, for one, am rather uncomfortable with this very mushy standard, the definition of which appears to have been crafted by the very entity doing the searching.   Is Google attempting to claw back from the public domain or otherwise usurp copyrights that don’t have a home?  Say it ain’t so!

Judge Chin (again) noted the balance of powers problem and stated:

“The questions of who should be entrusted with guardianship over orphan books, under what terms, and with what safeguards are matters more appropriately decided by Congress than through an agreement among private, self-interested parties. Indeed, the Supreme Court has held that it is generally for Congress, not the courts, to decide how best to pursue the Copyright Clause’s objectives.”

Make no mistake – Congress is well aware of the growing orphan works problem.  The last time the matter was really brought to light was in 2005 when the Copyright Office issued a report on the subject.  The issue even got as far as a committee in 2008, and then it just sort of…died.  But, as it was written, the proposed legislation would have allowed for use of an orphaned work without fear of infringement provided the person performed and documented a qualifying search, in good faith, for the owner of the infringed copyright; and (among other things) provided attribution to the owner.   Alas, as it stands, a user currently faced with an orphan works situation will not find a specific section or other provision of the Copyright Act to allow use of an orphan work.   So, without any guidance on the matter, and wanting to get a huge project off the ground, what should Google have done? Well, I suppose they could have adopted some flavor of the 2008 standards into the agreement.  But they didn’t.  And at least Google made some sort of attempt to deal with the issue.   Even if they are just in it for the money.  And enslavement of the human masses. 

I don’t think anyone will disagree that a digital library of this size would provide access to works that would otherwise never be seen, or worse, destroyed.  The idea of a digital library is, quite frankly, awesome and one that I thoroughly applaud.  More people would have access to works, the knowledge base of humans would increase exponentially, and there would be more availability of audio and Braille books for the hearing and vision impaired.  Out of print and otherwise forgotten and falling apart books would be rejuvenated, precious written words would be rescued from certain ruin, and a whole world heretofore unheard of would take center stage.   The heavens will part, champagne will fall from the sky, and unicorns will prance gleefully in the tulip fields.  Ok, maybe not that last part, but still… 

Understand this: the intellectual property laws do not allow a person or corporate entity to usurp a work for the good of the whole (nor do they exist to protect profit margins, but don’t get me started on that one).  So, despite the flaws in the ASA’s terms and other issues, a copyright owner is still free to say yea or nay to use of his work.  Even if Google really really wants it and even if it’s for a really really good purpose.   And I’m not going to say Google’s motivations were as dastardly as some suggest, but it was a rather ambitious endeavor- one that should have at least inspired a conversation by somebody somewhere about how best to move forward.   The point is that it must be up to Congress to act.  Hopefully, Judge Chin’s rejection of the settlement will inspire Congress to address the issue.  I’ve said it before and I’ll say it again:  We’re in the fifth act of a Shakespeare play and print media is wearing the crown. Still, Congress has time and time again refused to deal with the issue, so I’d be surprised if they decided to pick it back up any time soon.  Meanwhile, scan away, Google.  Scan away.  I shall remain dubious and say as great and necessary as a digital library is, it cannot be created without so much as a “by your leave” just because the folks on Capitol Hill aren’t doing anything with it.   Hey, elected officials! Are you listening? 

*crickets* Sigh.


About the Author

Beth is an Intellectual Property attorney licensed to practice before the United States Patent and Trademark Office and the State Bar of Arizona. She received her B.S. in Biological Sciences from CSU, Sacramento and her J.D. from Whittier College School of Law, where she earned a Certificate in Intellectual Property. She enjoys being a solo practitioner in Phoenix, Arizona.

3 comments
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  1. I think that Google, or anybody really, for that matter, scanning these books is a good thing. We should preserve them, and make them accessible. The currently rejected settlement, however, was not the way to make these efforts legal.
    Let’s hope the rightsholders, lobbyists and politicians worldwide don’t continue to prevent this opportunity for all of us by clinging to copyright maximalist agendas and preserving regulations from past times that clearly are no longer working today.

  2. […] The Google book lawsuit suit ultimately lead to a settlement agreement between Google and the authors and publishers.  Problematic from the Google perspective, however, was the fact that there were many objections from virtually all corners, including the United States Department of Justice.  That proposed settlement received hundreds of formal objections, including one huge vote of no-confidence from the Department of Justice.  See DOJ Says Google Book Settlement Not Appropriate.  Ultimately Judge Chin of the U.S. District Court, Southern District of New York rejected the settlement finding that it was not “fair, adequate, and reasonable”.  See The Google Book Settlement and Orphan Works. […]

  3. Indeed a very good article. The settlement does look sensible though it is against the principle of Copyright Laws. Would you please clarify that how long escrow will keep the fund waiting for the author to knock his door ? Is there any time period or as you mentioned in the article “ever” ?