Wouldn’t it be fantastic to have all of the world’s literature scanned and available for search in text online? Well, something along those lines is already here.

Google’s Book Project (or “Google Books,” as it has come to be called) is one of the enterprising tech giant’s ambitious ventures. Google Books itself consists of two smaller components. First, the Partner Program, in which Google hosts books on its website licensed from publishers with whom it has entered into agreements. Second, the Library Project, via which Google hosts scanned books from various libraries and collections without obtaining permission of the respective authors or publishers. Since beginning in 2004, Google has scanned over twenty million books as part of the Library Project. The goal is to make the text fully searchable through Google’s search engine.

You may be asking yourself what is the problem with such a highly useful service? The issue is one of copyright law. Google did not obtain permission from authors or publishers before scanning their works. Among Google’s justifications is that obtaining permission would be impractical, as some of the books are “orphaned” works whose rights holder could not be identified. But, many books are well cared for by their parents. As a result, the Library Project earned the ire of the Authors Guild, which filed a class action lawsuit against Google on behalf of authors of books Google had scanned and made searchable without their permission.

Does the social benefit of having much of the world’s literature scanned and copied by Google for use in online searching outweigh the rights of copyright owners to say “yes” or “no” to that endeavor? Judge Denny Chin of the Second Circuit Court of Appeals recently said: Yes, in effect, social benefit trumps strict copyright control by authors and publishers.

The case has been on an eight year journey with Judge Chin, travelling with him from his original seat in the Southern District of New York to his current position on the Second Circuit Court of Appeals. On an appeal of his district court decision on class certification, the Second Circuit remanded the case to determine whether the Project constituted fair use of copyrighted materials. Between the filing and decision of this appeal, Judge Chin had been elevated to the Second Circuit Court of Appeals.

In a sense, the long period of consideration gave Google an opportunity to embed Google Books into our lives. An adverse decision to Google would have been unpopular.

Fair use is an affirmative defense that an infringing party can raise in which it argues that although it copied a work, its use of the copied material fulfills the Constitutional purpose of copyright in that it contributes to the advancement of science or the arts. The concept behind fair use is that creativity often requires the use of others’ works for the expression of ideas.

Certain types of copying have often been held to be fair use, such as criticism, commentary, news reporting, or parody. These uses sometimes can be said to be transformative, because they use the underlying work for a different purpose. In April 2013, in the case of Prince v. Cariou, the Second Circuit held that the determination of a use’s transformative value is to be made by examining whether a “reasonable observer” would think the use is transformative. This new standard effectively lowers the bar for transformative use by omitting a need for the new use to comment on the work being copied.

When a court analyzes copying to determine if it qualifies as fair use, the court conducts an analysis of four factors: (1) the purpose of the use, including whether it is done for commercial gain and/or is transformative; (2) the nature of the work being copied; (3) the amount of the work copied; and (4) the potential harm to the original rights holder’s market for the copied work.

In his January 2014 opinion, Judge Chin addressed each of the four factors before finding that the Library Project constituted fair use. I don’t believe it’s an exaggeration to say that Judge Chin was enchanted by the power and utility of Google Books in making these findings.

The first factor looks at the purpose of the use of the original books. Although he conceded that the Library Project was commercial in nature – Google is a for-profit powerhouse -- he found that this fact was not determinative, noting that Google had ceased displaying ads on Library Project pages. Judge Chin found that the second factor weighed slightly in Google’s favor because most of the works being copied were non-fiction, which generally does not receive as much protection as fiction. Although he found that the third factor weighed slightly against Google, Judge Chin seemingly minimized it by stating that in order for Google to carry out the purpose of the Library Project, it would necessarily need to copy entire books.

The fourth factor inquiry includes analyzing if the secondary work supersedes the copied work, or if it has a significant negative impact on the potential market for the copied work, fair use can be less likely to be found. In this inquiry, there’s a need to talk about facts. Here, Judge Chin held that the fourth factor weighed in favor of Google. He stated that if anything, the rights holders of the copied works would gain improved markets through the Library Project, as it would increase awareness of long forgotten works, and would make the works easier for consumers to find. But, to copyright owners, isn’t this reasoning a little like the scout helping an elderly person across the road who hits the scout with a cane? If the copyright holders wanted the help, they could have asked Google to do so. Although Google scanned complete books, Judge Chin found that measures Google had taken to limit the amount of each book that could be read in search results made it very difficult to piece together the entire book to read, and thus, to cause market harm.

Judge Chin found that the Library Project was transformative, but not for the reasons one might first guess. Instead of focusing on the preservation aspect of Google Books, he focused his analysis to its use as a research tool, stating that it was invaluable for scholarly research. Over the Library Project’s nearly ten-year existence, researchers had come to rely on the Library Project’s fully searchable text to improve their location of works, even if just for citation.

Judge Chin also discussed at great length the opportunity that Google Books offers for linguistic and historical researchers. Having millions of books in fully searchable form, it is argued, would allow researchers to study how language and grammar have changed over time, and for historians to better know when certain terms or ideas first came to prominence. As Judge Chin noted, even his own law clerks relied on using Google Books in their research for him. But users like you and me -- and the judge’s law clerks -- access only search results, not full text. So the duration of the case played into Google’s favor. If shut down as infringing, the Library Project now represented a loss of an entitlement. Researchers had come to rely on the Library Project. After nearly a decade of existence, evidence of scholarly reliance on the Project could be found pretty much all around.

In comparison to the Google decision is Judge Chin’s pro-copyright protection opinion in WNET v. Aereo, Inc., another infringement case concerning the copying of works through new technology. There, he issued a strong dissent to the Second Circuit panel’s finding that Aereo’s television relay and recording service infringed broadcasters’ rights.

What factors could affect the legality of the Library Project under copyright in the future? What if Google changes the structure of the Project by adding advertisements? Google is essentially a class of one, a unique case. Is Google Books a public utility or another copyright user?

A challenge of the case is that it may set up a kind of broad de facto license for use of copyrighted content without authorization. In general, other fair use cases have focused on specific uses, such as use of a film clip in a TV show, the use of photographs in a collage, a quotation in a book, or the use of a song in a motion picture. Google Books, on the other hand, is a vast ongoing endeavor that will change and evolve. The fact specific nature of a typical fair use inquiry might have been given a back seat.

We’ll hear much more about this case in the courts and perhaps even in the next revision of the Copyright Act. It’s a very big decision. The story may not be over, as the Authors Guild has already announced its intent to appeal. In the meantime, like many of us, I’m going to search Google to check out a question or two.

Mark A. Fischer is a partner at Duane Morris LLP based in Boston and New York City.. His lawmark Fischer practice is focused on solving problems and making deals for innovative companies, institutions and individuals. Mr. Fischer’s clients are typically in the creative industries such as new media, social networking, music, interactive entertainment, information technology, software, television, publishing and toys. He may be contacted at: mafischer@duanemorris.com.

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