United States Federal District Court Judge Denny Chin recently issued a decision denying Google’s motion to dismiss lawsuits by the American Society of Media Photographers and the Authors Guild, and has also certified a class to proceed against Google for what can only really be characterized as massive and intentional copyright infringement.
The major facts in the case are not in dispute. In 2004, Google announced that it had entered into agreements with several major research libraries to digitally copy books and other writings in their collections. Since then, Google has scanned more than 12 million books. Google has delivered digital copies to the participating libraries, created an electronic database of books, and made text available for online searching.
Google users can search its “digital library” and view excerpts — “snippets” — from books containing search results. For example, when a user enters a search term on the Google Books website, Google displays a list of books containing that term. In many cases, when the user clicks on the link to a particular book, Google displays up to three “snippets” of text from that book — each about an eighth of a page — each of which contains the search term. Millions of the books scanned by Google were still under copyright, and Google did not obtain copyright permission to scan the books.
In 2005, the Authors Guild and the AG Representative Plaintiffs (together, the “Authors Guild Plaintiffs”) brought a class action, charging Google with copyright infringement. Specifically, the Authors Guild Plaintiffs allege that by reproducing in-copyright books, distributing them to libraries, and publicly displaying “snippets” of those works for search, Google “is engaging in massive copyright infringement.”
On October 28, 2008, after extended discussions, the parties filed a proposed settlement agreement. The proposed settlement was preliminarily approved by Judge John E. Sprizzo by order entered November 17, 2008. The Notice of the proposed settlement triggered hundreds of?objections. The numerous objections to the settlement caused the parties begin discussing possible modifications to the proposed settlement. On November 13, 2009, the parties executed an Amended Settlement Agreement (“ASA”), which was disseminated for comment. Again, hundreds of class members objected to the ASA. The Department of Justice (“DOJ”) filed a statement of interest raising certain concerns. On March 22, 2011, Judge Chin declined to grant final approval of the ASA because he determined that the ASA was “an attempt to use the class action mechanism to implement forward-looking business arrangements that go far beyond the dispute before the Court.”
Google filed the motion to dismiss that provoked this most recent ruling, arguing that the association plaintiff did not have standing to bring the case on behalf of its members. Citing Hunt v. Wash. State Apple Adver. Comm’n, 432 U.S. 333, 343 (1977), Judge Chin explained that an association has standing to bring suit on behalf of members when: (1) its members would otherwise have standing to sue in their own right; (2) the interests it seeks to protect are germane to the organization’s purpose; and (3) neither the claim asserted nor the relief requested requires the?participation of individual members in the lawsuit. The parties did not dispute the fact that the association plaintiff met the first two Hunt requirements. The dispute centered on the third factor, whether the relief requested requires participation of each individual member.
In order to establish copyright infringement, a plaintiff must show: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. Judge Chin concluded that no participation of the individual members would be necessary in order to establish the first prong for those who retain copyright ownership. More specifically, copyright registrations are prima facie evidence of copyright ownership and they are a matter of public record. While limited participation may be necessary for those who have assigned copyrights or licensed copyrights and continue to receive royalties, Judge Chin determined that “[r]equiring some individual members to present documentary evidence of their beneficial copyright interest would not make this case administratively inconvenient or unmanageable.”
With respect to the second prong no participation would be required because the “Google does not deny that it copied millions of books — original works — without the permission of the copyright holders.”
Judge Chin concluded that the third prong was satisfied and the associational plaintiffs had standing to bring the case on behalf of its members. Judge Chin admitted to resolving any doubt in favor of the association plaintiffs because the third Hunt factor is not a constitutional requirement, but rather prudential in nature and associated with matters of administrative convenience. Furthermore, Judge Chin stated that “the equities in this case weigh in favor of finding that the associations have standing.”
Google also argued that the fair use defense it intends to mount would require individual participation of each of the copyright owners. Google claimed that two fair-use factors, “the?nature of the copyrighted work” and “the effect of the use upon the potential market for or value of the copyrighted work,” would require an individualized inquiry. The Court quickly dismissed of this argument, which to me seems frivolous.
While the Court did not point it out, I know of no situation where fair use has ever been found when an entire copyrighted book has been verbatim copied from cover to cover. Furthermore, it is black-letter law that the effect of the use of the potential market for the value of the copyrighted work only looks to whether any sales were lost, or even whether any licensing royalties were lost, as a result of the copyright infringement. Clearly, these copyrighted works lost at leas licensing royalties. If there were absolutely no interest in the works then why did Google copy them in the first place? Google’s widespread, verbatim copying of millions of copyrighted works makes any use of a fair use defense frivolous.
According to ASMP Executive Director Eugene Mopsik, “We are delighted that Judge Chin has validated the ability of trade associations to represent their members, which is one of the primary benefits of joining ASMP and other associations.” ASMP General Counsel Victor Perlman said, “As a result of this decision, our suit to stop Google’s unauthorized scanning and display of massive amounts of copyrighted materials will be able to move forward in the courts.”
ASMP’s class action copyright infringement suit against Google, Inc. was filed in the U.S. District for the Southern District of New York in 2010. ASMP and the other trade associations, representing thousands of members, decided to file the class action after the Court denied their request to join the pending class action that had previously been filed primarily on behalf of text authors in connection with the Google Library Project.