Digitisation after Google Books – is fair use fair dealing?

Recent advances in technology have had a huge impact on the creative industries, posing difficult challenges for copyright law. In November 2013 a New York court dismissed a class action by authors in the Google Books case over Google’s mass digitisation of books for its online library without the authors’ permission.¹ The US circuit judge ruled that scanning the books and making searchable text extracts available online amounted to fair use under US copyright law.

Under English law, there is no doctrine of “fair use” as such, but this begs the important question of whether such use could constitute “fair dealing”.

Google’s online library

Google Books is a gargantuan online resource. Users can search for books, search for particular content or references, browse books online (and in some cases download a PDF of a book), buy books, and find local libraries that have the books available for loan. A new search facility also allows individuals to search for magazine content. The service consists of two elements:

1. Partner Program – Publishers and authors submit their books to Google. Google scans and uploads the complete book so that its entire content is searchable. Users viewing search results can see the book’s title, the author and a limited number of pages.³
2. Library Program – Entire library collections are searchable. Users can view information about the book, read snippets, and follow links to sellers of the book or libraries that have the book available to loan. Books that are out of copyright are available for view and download.⁴

The US copyright litigation

The service has been at the centre of a lengthy lawsuit in the US brought by the Authors Guild and authors that it represents. The Authors Guild claimed that Google had infringed copyright by not obtaining the copyright owners’ permission for Google’s use of the books.

In the most recent judgment at the tail end of 2013, New York circuit judge Denny Chin found that the claimants had established a “prima facie case of copyright infringement”. Google’s copying consisted of its reproducing “millions of copyrighted books”, maintaining “copies for itself on its servers and backup tapes”, making “digital copies available for its Library Project partners to download” and displaying “snippets from the books to the public” and all “with respect to in-copyright books in the Library Project, without license or permission from the copyright owners”. The only issue that the judge had to consider was whether Google had a defence of fair use under s. 107 of the US Copyright Act – and he found that it did.

Fair use and public benefit

The judge had to assess each of the four key principles of the US Copyright Act’s fair use doctrine (under ss 107(1) to (4)):

1. Purpose and character of the use, including whether of a commercial nature or for non-profit educational purposes – The judge found that Google’s use of the copyright works is “highly transformative” and “words in books are being used in way they have not been used before”. It had arguably become an important research tool in his view. The judge acknowledged that Google is a “for-profit entity” and “largely a commercial enterprise”. This did not, however, waive Google’s defence, as “fair use has been found even where a defendant benefitted commercially”. Essentially, the judge found that, because Google was not selling scans or snippets (and was not advertising on the “About the Book” pages), Google was not engaging in “direct commercialization” of the copyright works.
2. Nature of the copyright work – It was noted that the books available consisted of a mixture of fiction, non-fiction, in-print and out of-print works. The print status and category of the book had an impact on the level of copyright protection attributed to it. Referring to US case law, the judge commented that “works of fiction are entitled to greater copyright protection [and] here the vast majority of the books in Google Books are non-fiction”. Presumably, therefore, the copyright threshold was, on the whole, lower. Furthermore, the books at issue in the case were published and available to the public. This meant that the fair use defence was available, as according to established US case law, the scope of fair use is narrower in relation to unpublished works.
3. Amount and substantiality of the portion used in relation to the copyright work as a whole – This was the main sticking point. Google limits the amount of text displayed for each result, but the judge found that, because Google was scanning entire books, this was a factor against a finding of fair use.
4. Effect of the use on the potential market for or value of the copyright work – The judge did not agree with the Authors Guild’s argument that “Google Books will negatively impact the market for books”, nor that its “scans will serve as a “market replacement for books” because: (a) the scans were not for sale; and (b) it is was highly unlikely that a user would collate (through multiple searches) “enough snippets to comprise an entire book” and be able to assemble that book in order. In fact, the judge felt strongly that Google Books actually “enhances the sales of books to the benefit of copyright holders”. In the judge’s view, Google Books displays and promotes books “much like traditional in-store book displays”.

The judge also cited five key benefits of Google Books:

1. Research – The service provides “a new and efficient way for readers and researchers to find books”, makes millions of books searchable, and has become an “essential research tool” for researchers and librarians.
2. Data mining – It enables individuals to examine “word frequencies, syntactic patterns, and thematic makers to consider how literary style has changed over time”.
3. Access – In particular “underserved populations will benefit as they gain knowledge of and access to far more books”, and those who may struggle to read books in physical formats can use text enlargement software and text-to-speech software.
4. Preservation and reincarnation – Books are preserved online, and out-of-print books are resurrected.
5. Income generation for others – When viewing a search result, users are provided with a list of sellers of the particular book or libraries that have it in their collections.

Weighing the provisions of the fair-use doctrine together, and considering the additional relevant benefits above, the judge concluded that Google’s use of the books constituted fair use. The judge was ultimately convinced that Google Books provided “significant public benefits”. In his opinion, it “advances the progress of the arts and sciences, while maintaining respectful consideration for the rights of authors and other creative individuals without adversely impacting the rights of copyright holders”.

Are Google’s acts permissible under English law?

Google’s various acts of reproduction are likely to constitute a prima facie infringement of copyright under English law – at least in relation to literary works that are protected by UK copyright. The lawfulness of Google’s acts therefore turn on whether Google has a cogent defence. If not, there is the wider policy question of whether Google should have a defence.

Current position under English law

The long-standing types of fair dealing under the Copyright, Designs and Patents Act 1988 (CDPA) are research and private study, criticism and review, and news reporting. None of those appears to assist Google itself, nor does the new exception for data analysis: they seem more likely to assist users of Google Books in relevant circumstances.

Other exceptions, including for libraries, exist under the CDPA. There is no definition of a library in the CDPA, but Google Books does operate like a library hybrid: it is a giant catalogue, it provides copies of books to users (some in their entirety, and snippets of others), and it acts as a gateway to bookstores and libraries. The Copyright (Librarians and Archivists) (Copying of Copyright Material) Regulations 1989 (Regulations) provide a useful general reference to a library as an establishment or organisation that is “conducted for the purpose of facilitating or encouraging the study of bibliography, education, fine arts, history, languages, law, literature, medicine, music, philosophy, religion, science (including natural and social science) or technology, or administered by any establishment or organisation which is conducted wholly or mainly for such a purpose”.⁵ Google Books could conceivably fit within these parameters, if the definition can in fact be construed as going beyond the confines of physical establishments.

Under the exceptions, a library may make a copy of an article in a periodical, and copy part of a published work, provided that certain conditions are met (as set out in the CDPA and in the Regulations).⁶ Those include that the copies are being supplied to persons who need them for research or private study, and that no person or library (in the case of libraries supplying copies to other libraries) will be issued with multiple copies of the same material.⁷

Proposed amendments to English law

As part of its “Modernising Copyright” policy, the UK Government has proposed some amendments to the current library exceptions.⁸ The IPO has recently stated that the changes will come into force on 1 June 2014 and will be implemented by statutory instrument (The Copyright and Rights in Performances (Research, Education, Libraries and Archives) Regulations 2014).⁹ Libraries will be able to make copies of articles, or a reasonable proportion of a published copyright work, as long as the copy will be used for non-commercial research or private study and the person making the request has supplied the library with a declaration to that effect. Other exceptions (e.g. the supply of copies to other libraries) state that no more than one copy can be provided. Libraries will be able, however, to make works available on computers, but this must (among other specified criteria) be on dedicated terminals on the institution’s premises and the works must be communicated “in compliance with any purchase or licensing terms to which the work is subject”.¹⁰ The draft statutory instrument relating to the amended exceptions also includes a wider definition of a library as “a library which is publicly accessible”.¹¹

To protect rights-holders, the library exceptions (current and proposed) are very limited. The Government has said that the “restrictions on the making and provision of copies will be retained”, despite the modernising amendments. The exceptions available seem fundamentally more applicable to physical libraries in the traditional sense, or those libraries where there is a direct user-library relationship. This makes good sense, as it enables the use of copyright material to be securely protected and monitored.

While there is no English case law directly on the point, Google Books may not meet the various prescribed conditions (current and proposed). For instance, it does not quiz users about their intended use of the material, and the book snippets can be freely viewed an infinite amount of times (even if the snippets are not printable). Furthermore, works are not available digitally to people in a restricted location where the original copy can also be seen: they are available online for the entire world to access.

Fair dealing

Unlike US law, English law does not have a general defence of fair use. Under the permitted acts of fair dealing, the concept of “fairness” is considered in a similar way to fair use in the US, although this has been established through case law, rather than statute.¹² The English courts’ approach to fairness consists of two main parts:

1. Objective test – Whether the dealing is fair or not is an objective test: would a fair-minded and honest person have dealt with the copyright work in the way that the defendant did for the relevant purposes?
2. Relevant considerations – Similar to the considerations set out in the US Copyright Act, the following factors are likely to be assessed:

1. Does the infringing use compete with exploitation of the copyright work by the owner?
2. Has the work been published?
3. How extensive is the use, and what is the importance of what has been taken?
4. Are there any other relevant factors (such as the motives of the infringer)?

As with the US courts’ approach, each of these points should be weighed together and considered on a case-by-case basis. So on the face of it, at least in terms of fairness, an English court might make similar findings on Google Books to a US court. But fairness is only one component of the statutory exceptions that relate to fair dealing, and the Google Books service does not appear to fall squarely within any of those exceptions in their current (or currently proposed) form.

Public interest

It is conceivable that Google Books could seek to rely on a wider public-interest defence under s. 171(3) of the CDPA, as developed through common law. But the threshold is high for that defence and requires a court to be reasonably certain that no right-thinking member of society would quarrel with the validity of the defence.¹³ Given the competing interests of the technology industry, rights-holders and users, it seems hard to imagine that an English judge would have the requisite degree of certainty.

Should Google’s acts be permissible under English law?

Some commentators argue that a US-style approach would allow courts to develop the law as new issues emerge on a case by case basis. That could be useful in an online context, as the parameters and capability of digital technology keep changing at a rapid pace. When considering UK copyright law, the Whitford Committee recommended that the UK should adopt a general defence similar to the US fair-use doctrine, but the UK Government rejected this.

There is still a conundrum for UK legislators, however. For some, the law should evolve at the speed that technology develops, given the impact that this will have on how copyright materials are accessed. For instance, as Guy Lidbetter has commented: “Change is accelerating at an ever faster pace. From the advent of the colour TV to video recorders was about 15 years. The DVD followed in about 10. Then came Blueray [sic] HD in five and 3D TV in just three. We cannot expect this to slow.”¹⁴ The UK Government is soon to implement its proposed amendments to the CDPA, but some of those amendments are arguably very late. The new format-shifting exception, for instance, will allow individuals to copy music from their personal computers to their portable devices, but this is something that members of the public have been doing for decades in one form or another.

On the other hand, technological developments present a quagmire of concerns for rights-holders. The music and film industries have suffered considerably from copyright infringements enabled by technological advances. UK Music has noted that seven million people in the UK have reported visiting sites that offer content illegally.¹⁵ Books also face similar problems: according to an article in The Bookseller, 76% of the 50 most popular textbooks were available for download on a pirate ebook site.¹⁶ From a rights-holder’s perspective, copyright should not be abused and creators should be fairly remunerated for their creations: without that, creativity would be stifled, along with the industry that surrounds it. Unsurprisingly, then, rights-holders are increasingly seeking site-blocking injunctions against internet service providers.

So the legislators have a difficult balancing act. While a general defence of fair dealing would provide flexibility, a defence drawn too widely could be liable to abuse, which would result in unwarranted damage to the interests of copyright owners. For example, English copyright defences should not be so flexible as to give unauthorised peer-to-peer file-sharing sites a potential get-out clause.

Conclusion

There is no current proposal to introduce a general defence of fair dealing under English law. That would need to be codified if it were to be introduced, but for the foreseeable future, English courts will need to operate within the scope of the statutory fair-dealing exceptions. On the face of it, that could suggest that services such as Google Books may not be lawful under English law.

Nonetheless, rights-holders seem largely to have turned a blind eye to the situation within the UK – or at least have not brought sustained challenges before the English courts to date. Perhaps for now a de facto balance has been struck: copyright owners have not waived any rights, but they can choose to tolerate digitisation practices where the resulting services are not commercialised (or where the indirect commercial benefits to the services are marginal or can be overlooked on pragmatic grounds). Copyright owners may even welcome the indirect marketing benefits provided by efficient search functionality. Equally, the court of public opinion is harsh, and that might act as some form of break for copyright owners on pursuing popular free sources of information that have a clear public utility. At the same time, services like Google have drawn practical distinctions between copyright works and public-domain works, suggesting that copyright is not seen as otiose.

In fact, perhaps this commercial and pragmatic balancing act can provide the very sort of future-proofed flexibility that the law might struggle to provide. Whether such a laissez-faire approach is viable in the longer term may depend on where the technology goes.

Jessie Woodhead, Associate, Michael Simkins LLP

Article written for Entertainment Law Review.

1. The Authors Guild, Inc. vs. Google, Inc.; case 1:05-cv-08136-DC.
2. http://books.google.com/.
3. http://books.google.com/intl/en/googlebooks/partners/tour.html.
4. http://books.google.com/intl/en/googlebooks/library/.
5. Copyright (Librarians and Archivists) (Copying of Copyright Material) Regulations 1989; Schedule 1, Part A, para. 6.
6. Copyright, Designs and Patents Act 1988, ss. 39 & 40.
7. CDPA, ss 39(2) and 40(2).
8. See “Amendments to Exceptions for Research, Libraries and Archives” available at http://www.ipo.gov.uk/types/hargreaves/hargreaves-copyright/hargreaves-copyright-techreview.htm.
9. See “Changes to copyright law and guidance” for draft statutory instrument and other comments at http://www.ipo.gov.uk/hargreaves-copyright-techreview.
10. Draft of The Copyright and Rights in Performances (Research, Education, Libraries and Archives) Regulations 2014 s. 40B.
11. Draft of The Copyright and Rights in Performances (Research, Education, Libraries and Archives) Regulations 2014 s. 43A.
12. For a detailed analysis, see Copinger and Skone James on Copyright, Sweet & Maxwell, 16th Edition, para. 9-58 ff.
13. Mars UK Ltd v. Teknowledge Ltd, The Times, 23 June 1999.
14. Guy Lidbetter; The Huffington Post; 12 July 2012; “The Speed and Future of Technology Change”; available at http://www.huffingtonpost.co.uk/guy-lidbetter/the-speed-and-future-of-t_1_b_1667215.html.
15. See http://www.ukmusic.org/policy/licensing-solutions/online-copyright-infringement.
16. See http://www.thebookseller.com/news/digital-textbooks-readily-pirated-claims-survey.html.