The Google Book Search Project: Is Online Indexing a Fair Use Under Copyright Law?

The Google Book Search Project: Is Online Indexing a Fair Use Under Copyright Law?

Order Code RS22356
Updated January 22, 2007
The Google Book Search Project: Is Online
Indexing a Fair Use Under Copyright Law?
Robin Jeweler
Legislative Attorney
American Law Division
Summary
Google, Inc. is digitally scanning the collections of several prominent libraries in
order to create a vast searchable database of literary works. Copyright holders who have
not authorized and object to the digitization have filed suit against the company. This
report provides background on the pending litigation. It will be updated as judicial
developments warrant.
Complaints for copyright infringement were filed against Google, Inc. by a variety
of authors and representatives of the book publishing industry.1 The complaints
specifically challenge Google’s “Print Library” project, renamed “Google Book Search,”
an effort by Google in conjunction with several library partners to scan books into a
digital format so that they may be searched textually. Although the case is in its early
stages, the issues presented have captured national attention. Once again, new technology
and traditional principles of copyright law appear to be in conflict. Because of the unique
facts and issues presented, there is scant legal precedent to legitimize Google’s claim that
its project is protected by copyright law’s fair use exception to liability for infringement.2
Thus, questions presented may be ones of first impression for the courts.
Google’s Book Search Project. In December of 2004, Google announced a
partnership with several major libraries to make digital copies of their collections and
permit the text of the literature to be searched online by the Google search engine.3
Google is providing its partnering libraries with a digital copy of the donor institution’s
collection.
1 McGraw-Hill Companies, Inc. v. Google, No. 05 CV 8881 (S.D.N.Y., filed Oct. 19, 2005); The
Author’s Guild v. Google, No. 05 CV 8136 (S.D.N.Y., filed Sept. 20, 2005).
2 17 U.S.C. § 107.
3 Participating libraries include those at the University of Michigan, Harvard University, Stanford
University, Oxford, and the New York Public Library. For details, see [http://books.google.com/
googlebooks/partners.html].

CRS-2
The Print Library Project is only one of several initiatives by the company to enhance
the breadth of its online search capabilities. It was originally a component of “Google
Book Search,” which included the Library Project and its “Partner Program,” an online
book marketing program designed to help publishers and authors promote their books by
displaying a limited number of sample pages in connection with a user’s word search.
The Library Project is described on its website:
When you click on a search result for a book from the Library Project, you’ll see basic
bibliographic information about the book and, in many cases, a few snippets — a few
sentences showing your search term in context. If the book is out of copyright, you’ll
be able to view and download the entire book. In all cases, you’ll see links directing
you to online bookstores where you can buy the book and libraries where you can
borrow it.4
In addition, “Google Video” offers a search vehicle for material from archived television
programs, educational videos, personal productions, and other video media. Users can
search the closed captioning and text descriptions of its video archive for relevant results.
However, in the case of both the Book Partner Program and the video program, content
owners actively submit their material for inclusion in the searchable database. Only the
Library Project does not seek authorization to copy from content owners. Hence, it is the
only program that has been challenged in court.
After some academic and commercial publishers objected to the Library Project,
Google took a brief hiatus from scanning to allow publishers time to identify works that
they, i.e., the copyright holders, do not want to be included in the digital database. This
has been referred to an “opt out” plan. The general rule of copyright law requires a
prospective user to seek permission for use; Google has reversed the process by
announcing its intention to digitize entire collections of the contributing libraries unless
a content owner opts out by acting to withhold permission. This contributes to the content
holders’ claim that Google is engaged in massive copyright infringement.
The Parties’ Positions. The complaint filed by plaintiff publishing companies
(the Publishers) accuses defendant Google of massive copyright infringement. By
digitizing copyrighted works without permission, Google is alleged to violate the
copyright holders’ exclusive rights to copy and/or display protected work.5 Plaintiffs
contend that Google’s project is strictly commercial because it “pays” for the libraries’
collections by delivering digital copies back to them; and, Google will realize significant
advertising revenues as a consequence of its enhanced search capabilities.
Defendant Google essentially contends that its opt out program negates any
infringement liability. But, if infringement were found, Google argues that its activity is
protected by copyright’s fair use doctrine. Google cites the U.S. Court of Appeals for the
4 [http://books.google.com/googlebooks/library.html]. For more background on the program, see
Google’s website at [http://books.google.com/googlebooks/about.html].
5 17 U.S.C. § 106.

CRS-3
Ninth Circuit’s decision in Kelly v. Arriba Soft Corp. as support for the proposition that
Internet search engines’ indexing activities constitute a fair use.6
The Law. As stated above, copyright law confers on the rights holder the exclusive
right to control reproduction, display, and distribution of a protected work. Accordingly,
in order to use a copyrighted work, one seeks permission from the owner and negotiates
the terms, conditions, and payments for use. Google claims that for it to actively seek
permission from every rights’ holder in the multi-library collections would be impractical
and prohibitive. The Publishers claim that Google’s “opt out” program “stands copyright
law on its head.”7 One cannot, they argue, generally announce one’s intention to infringe
multiple copyrighted works and collectively offer rights holders the opportunity not to
have their work infringed. Yet, the requirement that a copyright owner act affirmatively
to stop non-willful infringement is not without precedent. The DMCA’s “notice and
takedown” procedures — requiring the content owner to notify an Internet service
provider (ISP) of the existence of infringing content — may immunize an ISP from
infringement liability when it serves as a “passive conduit.”8 And at least one court has
found that a content owner was responsible for taking affirmative measures, i.e, using
meta-tags, to prevent Internet search engines from automatically searching and displaying
the owner’s Internet content.9
Fair Use. Assuming a court were to find that Google’s digitization of copyrighted
works is infringing, the question becomes whether its activities are a fair use. The fair use
exemption derives from common law and the First Amendment.10 As codified in the
Copyright Act, it establishes criteria for a court to consider in determining whether an
infringing use is “fair.” Specifically, 17 U.S.C. § 107 provides that, notwithstanding other
provisions of the law, use of a copyrighted work
... for purposes such as criticism, comment, news reporting, teaching (including
multiple copies for classroom use), scholarship, or research, is not an infringement of
copyright. In determining whether the use made of a work in any particular case is a
fair use the factors to be considered shall include —
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted
work.
6 336 F.3d 811 (9th Cir. 2003). For more background on Kelly v. Arriba Soft Corp., see CRS
Report RL33810, Internet Search Engines: Copyright’s “Fair Use” in Reproduction and Public
Display Rights by Robin Jeweler.
7 Publishers: Value of Book Search Project Shows That Scanning Is Not Fair Use, 71 BNA
PATENT, TRADEMARK & COPYRIGHT J. 94 (Nov. 25. 2005).
8 11 U.S.C. § 512(b)-(c).
9 See Field v. Google, 412 F. Supp.2d 1106 (D.Nev. 2006).
10 Eldred v. Ashcroft, 537 U.S. 186, 219 (2003).

CRS-4
Because fair use is an “equitable rule of reason” to be applied in light of the overall
purposes of the Copyright Act, other relevant factors may also be considered.11
The court hearing the case will make findings of fact and assign relative value and
weight to the fair use factors in its analysis. This report will not attempt to predict an
outcome in the pending litigation but does make some observations with respect to fair
use analysis and the issues at hand.
The Library Project has the potential to be a great boon to scholarship, research, and
the public in general. It is, nevertheless, commercial in nature because Google anticipates
that it will enhance its service’s utilization by the public and concomitantly increase
advertising fees. With respect to the first factor, the purpose and character of use, the
searching and indexing goal appears to be a highly transformative use of the copied text.
There is little question that indexing basic information about any book alone, absent
copying, would not constitute copyright infringement. While displaying “snippets” of text
is closer to infringing activity, the prospective display, as described by Google, does not
appear to usurp or negate the value of the underlying work.
The second factor is the nature of the copyrighted work. Digitizing the collections
of the named libraries will encompass both factual and creative works, the latter being
entitled to the highest level of copyright protection. How the court views the third factor
— amount of the portion used — will be significant. In order to create its mega-
database, Google will scan the entire copyrighted work, a major consideration weighing
against fair use. But it intends to display, i.e., use, at any given time, only brief excerpts
of the searchable text. Hence, is the digital reproduction incidental to an otherwise fair
use or is it impermissibly infringing?
Finally, what will be the Library Project’s effect on the potential market for or value
of the copyrighted works? Here, Google makes a strong argument that its indexing and
text searching capability has the potential to greatly enhance the market for sales for
books that might otherwise be relegated to obscurity. Its “sampling” of text permits
members of the public to determine whether they wish to acquire the book.
The Publishers counter that copyright owners routinely receive license fees for
authorized sampling. Google’s project may deprive them of the opportunity to participate
in the creation of similar databases over which they have control and input. The
Publishers have also expressed concern that the digital edition of the work Google returns
to the participating library may facilitate piracy and/or additional unauthorized uses.12
Case Law. Although a court’s finding that there is a fair use exception to copyright
infringement is context-specific, it naturally looks to precedent for guidance. Google
asserts that Kelly v. Arriba Soft Corp. supports its claim of fair use, and in many respects
it does. In Kelly, the court found that Arriba Soft’s search engine, which, in response to
a user’s inquiry, compiled a database of images by copying pictures from websites ( and
11 Sony Corp. of America v. Universal City Studios, 464 U.S. 417, 448, 454 (1984).
12 In addition to fair use, the Copyright Act contains additional limitations on exclusive rights
of copyright holders. 17 U.S.C. § 108, for example, gives certain reproduction rights to libraries
and archives, but these provisions are not relevant to the issue discussed.

CRS-5
displayed them as thumbnail images, was a sufficiently transformative use of copyrighted
material to be a fair use. Although providing indexing information alone does not
implicate copyright infringement, displaying limited quotes from a literary work may be
consistent with fair use. Indeed, a quote from a literary work is a far more limited
reproduction and display than a thumbnail image of a full-sized one. However, a major
distinction between the Kelly case and Google’s Library Project is that in the former,
content owners voluntarily uploaded their images to the Internet.13 Here, the search
engine is copying material to create a new database to enable the search capability.
Whether a new database and “snippet” sampling will erode a viable new market for
authors and publishers remains to be seen.14
Hence, the arguably unique question presented is whether apparent prima facie
infringing activity that facilitates an arguably legitimate use is indeed a fair one. In this
broad respect, the Supreme Court’s decision in Sony Corporation of America v. Universal
City Studios15 is apposite. In Sony, the Court held that the sale of the video recording
machine to “time shift” broadcast television for personal home viewing was not
contributory copyright infringement. The Court articulated a new category of fair use,
namely, time shifting. Although the factual underpinnings and legal precedent of this
decision are not particularly relevant to nor controlling in the instant case, the Sony
decision itself stands as a landmark in copyright law demonstrating the willingness of the
Court to balance new technological capabilities against traditional principles of copyright
law.
Although Sony sanctioned “time shifting” of in-home television broadcasting, neither
the U.S. Supreme Court nor the lower courts have evidenced willingness to expand this
judicially created category of fair use. In UMG Recordings v. MP3.Com, Inc., a U.S.
district court rejected out-of-hand the defendant’s proffered fair use defense as a
justification for unauthorized copying of plaintiffs’ audio CDs.16 The defendant claimed
that its unauthorized copying enabled it to provide a service to proven owners of a CD,
namely “space shifting,” or enabling them to obtain access to the music on the CD
through its subscription service.
In the case of Google, many copyright experts see analogies to the technological
considerations inherent in Sony. The digital scanning — the alleged infringing activity
— is viewed as incidental to a valid and socially useful function, indexing.17 Courts
13 Some observers suggest that uploading to the Internet may be construed as a limited license for
foreseeable uses such as those by Internet search engines. Jonathan Band, The Google Print
Library Project: Fair or Foul?, 9 J. OF INTERNET LAW 1, 4 (Oct. 2005). See Field v. Google,
supra note 9.
14 See Perfect 10 v. Google, 416 F. Supp. 2d 828 (C.D.Ca. 2006), holding that a search engine’s
display of thumbnail images may be infringing with respect to a content owner’s developing
market for the sale of reduced-size images.
15 464 U.S. 417 (1984).
16 92 F.Supp.2d 349, 352 (S.D.N.Y. 2000)(“[D]efendant’s ‘fair use’ defense is indefensible and
must be denied as a matter of law.”).
17 See, e.g., Jonathan Band, supra; Christopher Heun, Courts Unlikely to Stop Google Book
(continued...)

CRS-6
appear increasingly willing to acknowledge the utility of online indexing as a component
of Internet functionality.18 Others view Google’s activity as prima facie copyright
infringement, with little or no extenuating circumstances.19
Conclusion. How the court (or courts) that consider this case define the issues
presented will ultimately determine whether the suit against Google sets an important
precedent in copyright law. Viewed expansively, the court may find that copying to
promote online searching and indexing of literary works is a fair use. To many observers,
such a holding could be the jurisprudential equivalent of Sony’s sanctioning of “time
shifting.” If the court adopts a more narrow view of fair use that precludes Google’s
digitization project, searchable literary databases are likely to evolve in a less
comprehensive manner but with the input and control of rights holders who view them
as desirable and participate accordingly.
crsphpgw
17 (...continued)
Copying, INTERNETWEEK (Sept. 2, 2005) at [http://internetweek.cmp.com/showArticle.jhtml?
articleID=170700329].
18 See Field and Perfect 10, supra.
19 See, e.g., Elisabeth Hanratty, Google Library: Beyond Fair Use?, 2005 DUKE L. & TECH. REV.
10 (2005); Raymond Nimmer, Google Lawsuit Begins; Fair Use (Oct. 3, 2005), online at
[http://www.ipinfoblog.com/archives/intellectual-property-33-google-lawsuit-begins-fair-use.
html].