Guest Post: Factors Contributing to Orphan Works vis-a-vis a viable Option

We are extremely pleased to bring to our readers a short piece by Nirajan Man Singh on orphan works and the viable alternatives for protection works from being orphaned, with a specific analysis of the Google Books settlement. Nirajan was a student of NALSAR University and then pursued his masters at UC Berkeley School of Law. This particular paper was written during his time at Berkley Law, under Professor Pamela Samuelson.

You can read the entire paper on Nirajan's SSRN page here. For our earlier posts on the Google Books Settlement, you can go here, and for our analysis of the settlement you can go here.

Google Books Settlement: My Analysis

As you know, Google has scanned millions of books from the collections of major research libraries for its Google Book Search (GBS) initiative.  For books that were published prior to 1923 or that are U.S. government works, Google considers the books to be in the public domain; it makes these book available for free downloads or display uses in response to search queries.  For in-copyright books, Google currently makes a small number of snippets of book contents available in response to search queries (unless rights holders have come forward to authorize more extensive uses or to ask that snippets not be made available for display).  Google also makes what it calls “non-display” uses of book contents, such as testing out search algorithms on the corpus of GBS books, refining its automated translation tools, and developing services for GBS. 

The Authors Guild and five major publishers sued Google for copyright infringement, claiming that scanning in-copyright books, indexing their contents, and making snippets available in response to user search queries infringes copyrights.  (Neither plaintiff has challenged non-display uses of the books as infringement). Needless to mention, there are insurmountable issues to be pondered upon, but few issues that I would like to analyze for this post are as follows:

Was Google’s scanning in-copyright book to index them and serve up snippets a fair use of them?

It is a fair use because:

a.       Purpose of Use: Google showing snippets by scanning in-copyrighted works is highly transformative and is in lieu with Kelly v. Arriba and Perfect 10 v. Amazon, where a thumbnail image in a search engine was found to be a fair use as it was transformative and had public benefit ingrained in its character.

b.    Nature of Work:  Though snippets are the exact copy of the original works, as held in Campbell v. Acuff Rose, a ‘creative work’ is strongly protected, but is not dispositive.

c.     Amount Used: Here Google has to strike a balance between the amount that was taken and the purpose. In Nuñez v. Caribbean, copying of the entire picture was justified, though the purpose was commercial, it was transformative and the defendant showed good faith by giving proper attribution and lawfully obtaining the photos.

d.     Market Effect: The display of snippets by Google might promote the books and increase their sales. There is no displacement, but a likelihood of market expansion. As held in Bill Graham Archives v. Dorling, since the use was within a transformative market, and plaintiff did not suffer market harm, a copyright owner may not anticipate exploitation of transformative markets.

Are Google’s non-display uses of in-copyright books fair use?

Google is likely to make non-display uses of books not in the settlement or those books which opts out from the settlement or orphan works which are already in public domain. Who is to know? Such non-display uses will improve Google’s search technologies because they will have access to more data than other search engines. It will allow Google to develop new services such as machine translation tools. On the basis of the new services rendered to the customers, Google can levy higher fee, resulting in price gouging. Since, Google is likely to maintain a monopoly as it has no competitors, how can such purpose, nature or market effect of non-display uses amount to fair use?

Would the answer be different insofar as the books are “orphans”? How much of the contents of orphan books should be available for display uses under the fair use doctrine, in the absence of orphan works legislation?

Google need not make non-display uses of orphan books, as no right-holder would come forward asking not to make available the snippets for display. Incase, Google chooses to make non-display of orphan works, it is even worse, as no one will be aware of orphan works that have reached public domain. Google making non-display uses of orphan works also implies that they are not performing reasonable diligent search for the owners of the works, as the books are secretly hidden in their corpus which they can exploit as much as they want. As a result, my answer remains the same as in 1(c). In the absence of Orphan Works Legislation, an orphan work is treated as any other copyright work henceforth as held in Campbell v. Acuff-Rose Music, a parody must be able to “conjure up” the original; for a parody, taking the original’s heart is acceptable in order to conjure up. Likewise, Google should display the contents as required to serve the purpose of the display.

As between authors and publishers, whom do you think should be held to be the owner of rights to authorize Google (or anyone else) to digitize in-copyright books?

I think the authors should have the rights to authorize Google or anyone else to digitize in-copyright books. There would be numerous authors who must have given publishing houses exclusive rights to “print, publish and sell the work in book form” but such exclusive rights is different from letting someone “publish their works in digital format over the internet (ebooks)”, a distinction that was highlighted in Random House v. Rosetta Book. In this case the agreement distinguished pure content (the work) from the format of display (in book form), as such contract was a limited grant. The case also compared itself with Boosey & Hawkes v. Walt Disney and highlighted how they have broader language in their agreement as it covered the same medium(film and video) rather than totally different media(book and ebook).

Assuming that Google loses its fair use defense and a court decides that unauthorized scanning of the contents of whole books is per se an unfair use.  What (if any) kind of injunctive relief should the court order?  Should the GBS corpus be impounded and destroyed?

After eBay v. MercExchange plaintiffs are not “entitled” to an injunction, it is the court’s discretion, based on the four factors: 1) irreparable injury suffered by the plaintiff, 2) inadequacy of remedies available at law, 3) balance of hardship, and 4) showing that public interest would not be disserved by a permanent injunction. The Google corpus is a valuable resource and should not be destroyed, it can be impounded by the government provided they create a governing body to regulate it, or else it is a waste of a tremendous resource capable of copyright reform.

We would like to thank Nirajan for sending in this piece and hope to receive more such papers in the future.