Dear Judge Chin,
I have just read your decision to grant Google summary judgment in this case and I must express my disappointment. You have evidently bought into the Ninth Circuit’s line of reasoning about “transformative” fair use, which I believe to be seriously mistaken.
No one questions the social utility of Google Books. Indeed, publishers recognized its utility early on. The university press I headed at Penn State at the time was the first university press to sign up for the Google Partner Program, and Google itself cited our participation as a model case in further promoting the program. But the Library Program is another matter.
You forget that Judge Newman recognized the social utility of photocopying in the Texaco case, yet nevertheless found copying in that case not to be fair use. As the judge argued:
“We would seriously question whether the fair use analysis that has developed with respect to works of authorship alleged to use portions of copyrighted material is precisely applicable to copies produced by mechanical means. The traditional fair use analysis, now codified in section 107, developed in an effort to adjust the competing interests of the authors – the author of the original copyrighted work and the author of the secondary work that ‘copies’ a portion of the original work in the course of producing what is claimed to be a new work. Mechanical ‘copying’ of an entire document, made readily feasible by the advent of xerography . . . , is obviously an activity entirely different from creating a work of authorship. Whatever social utility copying of this sort achieves, it is not concerned with creative authorship (italics added).”
In your analysis, you quote from Pierre Leval’s classic article suggesting that a new work is “transformative” if it “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” You go on to say:
Google Books does not supersede or supplant books because it is not a tool to be used to read books. Instead, it “adds value to the original” and allows for “the creation of new information, new aesthetics, new insights and understandings.”
The key mistake here is located in the words “allow for.” That is NOT what Leval said. He said that the act of fair use itself must consist in “altering the first with new expression, meaning, or message,” and Google’s computer-created indexing does not do that; there is no creativity in the functioning of Google’s computer algorithm. It is, as Judge Newman said, merely a “mechanical” procedure.
Why is this so important? It is important because there are those who will exploit the notion of re-purposing, which captures one part of Leval’s argument, to do real damage to the Constitutional purpose of copyright. Like the Ninth Circuit, they will ignore the idea that the new work must itself come from an act of human creativity that adds new meaning, etc.
I have written at length about this problem, pointing out that the ARL, in its Code of Best Practices on Fair Use (2012), uses the idea of re-purposing to argue that, because scholarly monographs and journal articles were originally written for the benefit of other scholars, not students, their use in the classroom for student instruction is fair use since the use is for a different purpose. That, effectively, means that entire articles and books can be justifiably digitized and used in the classroom without the publisher’s permission. One likely result is that the entire market for paperbacks published by university presses for classroom use will be wiped out.
Well, you might say, the fourth factor will come to the rescue there. But then why is the fourth factor not applicable to the Google case also? Google’s supplying the participating libraries with scans of the books in their collections displaced a potential market for the publishers supplying those scans. This is of some practical importance. Not long after the Google Library Project was announced, Penn State Press approached the University of Michigan Library with a proposal for the Library to have a greater range of rights to use the scanned version as licensed by the Press in exchange for the Library’s giving a copy of the Google scan to the Press so that the Press itself would not have to go to the expense of digitizing all of these books again. The Library was happy to agree to this proposal; Google was not and prevented the Library from doing so. Here, then, the “social utility” of this enterprise was directly undercut by Google itself. As a result, the Press and all other publishers whose books had been scanned by Google had to go to the expense of digitizing their own backlists. How does that kind of obstruction advance the progress of knowledge?
I have just scratched the surface here in offering this rebuttal. My arguments are laid out in much more detail in the attachments I provide. Two of these are also accessible at the web site where most of my writings about copyright are available at this link. The third is the gist of a talk I gave at a meeting of the Copyright Society of the USA last February in Austin, TX. It is there that I explore the deleterious implications of what I have called the “Ninth Circuit disease.”
As for the social utility of mass digitization, which most of us publishers are happy to recognize, it seems far better to have Congress legislate on that issue with a statute focused on it, rather than try to bring it under the ever expanding umbrella of fair use, where in my view it can only further contribute to the conceptual confusion that is already rampant.