More on Google Print

by on September 25, 2005 · 6 comments

I’m certainly not going to claim that Google is going to win in court, since fair use determinations are notoriously hard to predict. But I think that on the merits, their case is a lot stronger than Jerry gives them credit for.

It’s not clear to me why Jerry doesn’t consider a parody a derivative work. By definition, a parody takes a work, retains some elements of it, drops some others, and transforms it into a new work. We could imagine an alternative universe in which publishers sold “parody rights” the same way they now sell film rights or sequel rights.

UMG v. mp3.com was a badly reasoned, short-sighted decision, and I think there’s a very good chance that it would have been overturned on appeal. If the decision is right that “Any allegedly positive impact of defendant’s activities on plaintiffs’ prior market in no way frees defendant to usurp a further market that directly derives from reproduction of the plaintiffs’ copyrighted works,” then it’s hard to see how any fair use defense could succeed. After all, one could imagine a world in which Hollywood won the Sony Betamax case and licensed Hollywood-approved VCRs that charged the consumer a fee every time a TV show was recorded. Or, if the music industry had won the Diamond case, they could have licensed MP3 players that send the appropriate publisher a penny every time a song was played. Likewise, if Kelly v. Arriba Soft had come out in favor of Mr. Kelly, perhaps owners of photographs could have licensed “search engine rights” to their photographs.

All fair uses involve reproducing copyrighted content in order to create derivative works. By definition, that undermines the ability of the copyright holder to sell derivative works of the same kind. If that were the standard, no use would withstand fair use scrutiny. That’s why courts have generally focused on the market for the original product, not the market for hypothetical derivative works.

Personally, I think the factor that will weigh most heavily in Google’s favor is factor 1, the purpose and character of the use. As the Supreme Court put it, that factor asks whether a use “merely supersedes the objects of the original creation, or whether and to what extent it is transformative.” MP3.com was arguably superseding the market for ordinary CDs. Google Print is clearly not superseding the market for books. And it’s every bit as transformative as Arriba Soft’s software was.

  • http://www.jerrybrito.com Jerry Brito

    Tim, Rather than write another dueling post on the blog, I’ll address this here in the comments section.

    First, you’re right; a parody is technically a derivative work. But the larger point I was making is that a parody will never substitute for an original or a conventional derivative, such as a translation or a film adaptation. Thus it will never have an effect on the market for the original or conventional derivatives. Parodies, therefore, will never have a tough time with the fourth factor. It is clear that fair use was developed for things like parody that cannot substitute for, or compete with, the original and at the same time create lots of new social value. In such cases, we don’t see any societal gain in allowing the copyright holder to prevent such a use.

    Second, I’m afraid that a positive market impact for the original is in fact irrelevant. UMG v. MP3 was cited approvingly on this point in the Napster case. Also, the Supremes said in Harper & Row and again in Cambel v. Acuff-Rose that the enquiry “must take account not only of harm to the original, but also of harm to the market for derivative works.”

    Copyright law grants creators certain exclusive rights. If you write a book and several studios want to make a movie out of it, you have the right (during the copyright term) to not allow anyone to make the movie. Whether to make the movie or not is your exclusive right. Now, if I go ahead and make the movie anyway and it is a huge hit and as a result you sell three times as many books as you had before the movie, is it a fair use? No. I still violated your exclusive right. Even if Google Print has a wonderful effect on the market for books, this doesn’t get them fair use. There is still a negative effect on the market for licensing books to be used in searchable databases.

    The question then is–and you put your finger on it–whether there is a market for the derivative work or whether that market is merely hypothetical. In my example above, a market for movies is well known. A court would not focus merely on the original product as you contend–they would look at the market for the derivative work. So, is a market for licensing books for inclusion in searchable databases hypothetical? I would argue that it is not. Amazon.com and Google Print Publisher are two examples of such a market. Lexis and Westlaw are other examples.

    All this said, my point, again, is this: In my mind the fourth factor will be the most important. I don’t think it’s clearly in Google’s favor. Like you, I think the courts should follow the lead of Kelly v. Arriba Soft and find that the market for search engine licensing is negligible and outweighed by the great new social value that is being created by Google Print. But to me it’s a 50-50 shot at best whether a court will be that enlightened and not simply find that there is a market for licensing that Google is harming.

  • http://jerrybrito.com Jerry Brito

    Tim, Rather than write another dueling post on the blog, I’ll address this here in the comments section.

    First, you’re right; a parody is technically a derivative work. But the larger point I was making is that a parody will never substitute for an original or a conventional derivative, such as a translation or a film adaptation. Thus it will never have an effect on the market for the original or conventional derivatives. Parodies, therefore, will never have a tough time with the fourth factor. It is clear that fair use was developed for things like parody that cannot substitute for, or compete with, the original and at the same time create lots of new social value. In such cases, we don’t see any societal gain in allowing the copyright holder to prevent such a use.

    Second, I’m afraid that a positive market impact for the original is in fact irrelevant. UMG v. MP3 was cited approvingly on this point in the Napster case. Also, the Supremes said in Harper & Row and again in Cambel v. Acuff-Rose that the enquiry “must take account not only of harm to the original, but also of harm to the market for derivative works.”

    Copyright law grants creators certain exclusive rights. If you write a book and several studios want to make a movie out of it, you have the right (during the copyright term) to not allow anyone to make the movie. Whether to make the movie or not is your exclusive right. Now, if I go ahead and make the movie anyway and it is a huge hit and as a result you sell three times as many books as you had before the movie, is it a fair use? No. I still violated your exclusive right. Even if Google Print has a wonderful effect on the market for books, this doesn’t get them fair use. There is still a negative effect on the market for licensing books to be used in searchable databases.

    The question then is–and you put your finger on it–whether there is a market for the derivative work or whether that market is merely hypothetical. In my example above, a market for movies is well known. A court would not focus merely on the original product as you contend–they would look at the market for the derivative work. So, is a market for licensing books for inclusion in searchable databases hypothetical? I would argue that it is not. Amazon.com and Google Print Publisher are two examples of such a market. Lexis and Westlaw are other examples.

    All this said, my point, again, is this: In my mind the fourth factor will be the most important. I don’t think it’s clearly in Google’s favor. Like you, I think the courts should follow the lead of Kelly v. Arriba Soft and find that the market for search engine licensing is negligible and outweighed by the great new social value that is being created by Google Print. But to me it’s a 50-50 shot at best whether a court will be that enlightened and not simply find that there is a market for licensing that Google is harming.

  • http://www.binarybits.org/ Tim

    I’m still not sure I see how the courts distinguish between those derivative works for which there’s a market, (movie rights, sequel rights, etc) and others for which there isn’t. (parody rights) Couldn’t authors sell “parody rights” to their books if the courts ruled parody wasn’t a fair use? Is the difference simply that the “parody rights” market is too small to be worth bothering with, or is there some other principle at work?

  • http://www.binarybits.org/ Tim

    I’m still not sure I see how the courts distinguish between those derivative works for which there’s a market, (movie rights, sequel rights, etc) and others for which there isn’t. (parody rights) Couldn’t authors sell “parody rights” to their books if the courts ruled parody wasn’t a fair use? Is the difference simply that the “parody rights” market is too small to be worth bothering with, or is there some other principle at work?

  • http://www.jerrybrito.com Jerry Brito

    Yes, Tim. That other principle is called the First Amendment’s right to free speech. See, copyright is a constitutionally sanctioned restriction on free speech. If I can’t sing a song you wrote because you own the copyright, then my right to free speech is limited. This is a limitation that we’re willing to live with (for limited a limited time) in order to give creators an incentive to create. However, there are nevertheless forms of expression that we value so highly that we are willing to let them happen anyway even if they lead to a reduction in copyright’s incentives for creativity. These include criticism, comment, scholarship, research, news reporting and teaching. There are markets for all of these, but the courts–per statute–distinguish these as fair use.

    Like I’ve said before, I think the fact that Google is a commercial venture shouldn’t blind the courts so that they don’t see what a huge boon Google Print will be to (non-commercial) scholarship, teaching, news reporting, etc. I think the way it’s structured now, Google Print should definitely be considered fair use and allowed. But, I’m not sure this will be crystal clear to courts.

  • http://jerrybrito.com Jerry Brito

    Yes, Tim. That other principle is called the First Amendment’s right to free speech. See, copyright is a constitutionally sanctioned restriction on free speech. If I can’t sing a song you wrote because you own the copyright, then my right to free speech is limited. This is a limitation that we’re willing to live with (for limited a limited time) in order to give creators an incentive to create. However, there are nevertheless forms of expression that we value so highly that we are willing to let them happen anyway even if they lead to a reduction in copyright’s incentives for creativity. These include criticism, comment, scholarship, research, news reporting and teaching. There are markets for all of these, but the courts–per statute–distinguish these as fair use.

    Like I’ve said before, I think the fact that Google is a commercial venture shouldn’t blind the courts so that they don’t see what a huge boon Google Print will be to (non-commercial) scholarship, teaching, news reporting, etc. I think the way it’s structured now, Google Print should definitely be considered fair use and allowed. But, I’m not sure this will be crystal clear to courts.

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