"Transformative fair use" compared to "transformative purpose infringement", some cases get this totally wrong including in Google Books

In Acuff v. Rose, 510 U.S. 569, 114 S. Ct. 1164 (1994), the Supreme Court set out the rule that transformative use (copying) of a small part of a work could be fair use even if done for commercial purposes (the case involved a parody). Since then, the idea of transformative fair use has been the most important issue in contested fair use cases. It is clear that the Court was referring to copying of part of a work and using it to create a new work of expression. This is different in concept and kind from the decisions that morph the concept into one that protects comprehensive copying so long as the copies are used for a different purpose than the author's original purpose for the work. Properly understood, this comprehensive copying is simply "infringement".

Acuff v. Rose created an inherent conflict with the author's exclusive right to make derivative works from its original work since a transformative work is most often a derivative work. But, properly limited, the concept is important to keep flexibility for the creation of new works based in part on existing works. The search for proper limits or boundaries on this limited fair use idea is where courts should focus attention. The Supreme Court's opinion, itself, mentions some factors, including that in Acuff It was unlikely that the original artist would use or license part of the work to parody it.

          But this type of analysis is entirely different from what some courts have morphed the concept into which protects some comprehensive copying of a work so long as the copying is for a different purpose than the original author's intended original purpose for the work. Properly understood, this comprehensive copying is simply transformative purpose infringement.

          The court's analysis in Cariou v. Prince, 714 F.3d 694 (2nd Cir. 2013) reflects the Supreme Court's approach to transformative fair use copying that creates new expressive works. In Cariou, Prince created artworks based on black and white photos previously created by Cariou. Most of Prince's works used colors and images that engaged a different feel for the serene subject matter that Cariou had photographed. The court commented:

Here, our observation of Prince's artworks themselves convinces us of the transformative nature of all but five, which we discuss separately below. These twenty-five of Prince's artworks manifest an entirely different aesthetic from Cariou's photographs. Where Cariou's serene and deliberately composed portraits and landscape photographs depict the natural beauty of Rastafarians and their surrounding environs, Prince's crude and jarring works, on the other hand, are hectic and provocative. Cariou's black-and-white photographs were printed in a 9 1/2" x 12" book. Prince has created collages on canvas that incorporate color, feature distorted human and other forms and settings, and measure between ten and nearly a hundred times the size of the photographs. Prince's composition, presentation, scale, color palette, and media are fundamentally different and new compared to the photographs, as is the expressive nature of Prince's work.

This is not to say that verbatim copying cannot be fair use, but that a "new" work that merely takes a verbatim copy of another work and adds nothing is not fair use. But on the other hand, a verbatim copy that is folded within a broader expressive work may well meet appropriate standards of transformative fair use. See Selzer v. Green Day, Inc., 725 F.3d 1170 (9th Cir. 2013) (holding that verbatim copying of poster as part of broader four minute video was transformative).

         Cases where courts protect copying verbatim of all of copyrighted works as fair use because the copies are then used for different purposes than the copyright owner has previously used its work, can be described as "new purpose" cases. They stretch the boundaries of fair use and "transformative" "use" beyond any reasonable breaking point. They certainly have no role where the commercial use supersedes use of the original work in a market that either has been or might likely be explored by the copyright owner or by a group of copyright owners. If the market entered by the copyist has commercial value for full copies of the author's work, it is one that presumptively should be for the benefit of the copyright owner, at least through licensing, rather than one that the copyist can usurp through a finding of fair use.

           The response to this view lies, if at all, in one of two premises. The first is that the copyright owner is not likely to seek out the new purpose market and therefore others should be allowed to do so. But the point should not be that the owner will itself create the market. If a market arises, created by others (the copyist), the copyright owner should be able to assert rights through licensing in the new use as it emerges. The fact the book publishers do not produce and distribute motion pictures does not mean that copyright owners in books are blocked by fair use from asserting rights against unauthorized motion pictures. The second argument is that the new use or purpose may not be able to emerge without a fair use umbrella because the cost of negotiating licenses for works under copyright would be prohibitive. This argument assumes that the new use benefits copyright goals and that this benefit is of sufficient importance to override the harm to copyright owners of overriding their claims via the fair use claim. It also places a limit on the scope of this type of fair use analysis. If either one of these premises fails, the transformative purpose claim also fails.

             The most significant "transformative purpose" cases have involved a commercial project by Google, Inc., to digitize all books printed and if they are still under copyright to make them available either in full text form (for limited purposes) or for full text search, with or without permission of the copyright owner. Two District Court opinions have concluded that aspects of this commercial program constitute fair us. One case is under appeal. The first decision emphasized the broad social benefit of the program. Authors Guild, Inc. v. Hathitrust, 902 F.Supp. 2d 445 (S.D. N.Y. 2012) dealt with an aspect of the Google project in which various university libraries, organized through the University of Michigan, contracted with Google to make digital, searchable copies of books in each library. The process went as follows:

The HathiTrust partnership is in the process of creating "a shared digital repository that already contains almost 10 million digital volumes, approximately 73% of which are protected by copyright." After digitization, Google retains a copy of the digital book that is available through Google Books, an online system through which Google users can search the content and view "snippets" of the books. Google also provides a digital copy of each scanned work to the Universities, which includes scanned image files of the pages and a text file from the printed work. According to Plaintiffs, this process effectively creates two reproductions of the original. After Google provides the Universities with digital copies of their works, the Universities then "contribute" these digital copies to the HathiTrust Digital Library ("HDL"). The Complaint alleges that in total, twelve unauthorized digital copies are created during this digitization process. For works with known authors (copyright holders), Defendants use the works within the HDL in three ways: (1) full-text searches; (2) preservation; and (3) access for people with certified print disabilities.

At the time of the opinion, the treatment of so-called "orphan works", works under copyright but whose owner could not be found, was undetermined. The court concluded that this was a highly transformative, fair use of the works. Even though there were multiple, verbatim copies made of each copyrighted work, the court focused on the purpose to which the copies were used by the libraries - to enable full text digital searching and to create digital files for use by persons with print disabilities. Focusing on the search aspects, it commented:

A transformative use may be one that actually changes the original work. However, a transformative use can also be one that serves an entirely different purpose. The use to which the works in the HDL are put is transformative because the copies serve an entirely different purpose than the original works: the purpose is superior search capabilities rather than actual access to copyrighted material. The search capabilities of the HDL have already given rise to new methods of academic inquiry such as text mining

But, of course, this analysis does not address the copying, only the use of the copies. Adopting the defendants' and Google's position, the court reached the core of its reasoning:

Defendants offer substantial evidence that it would be prohibitively expensive to develop a market to license the use of works for search purposes, access for print-disabled individuals, or preservation purposes. This also assumes that the holder of each copyright could be identified, a tenuous assumption to say the least. Plaintiffs characterize this as an argument that "it is permissible to steal the goods if it is too expensive to buy them." However, Defendants argue that the high costs will prohibit the formation of a viable market in the first place, and as a consequence there will be no one to buy the goods from. Although Plaintiffs assert that the Copyright Clearance Center ("CCC") could eventually develop a license for the uses to which Defendants put the works, the CCC has no plans to provide for or develop such a license. Even if Congress will eventually find a way to regulate this area of the law, "it is not the [court's] job to apply laws that have not yet been written."

The core theory was that unless this violation of owners' copyrights were permitted, this large database of searchable information would never be created because even a multi-billion dollar company such as Google would not undertake the project and, even if other means might evolve, Google and the libraries started first. "The totality of the fair use factors suggest that copyright law's "goal of promoting the Progress of Science ... would be better served by allowing the use than by preventing it."

            The second, more far-reaching decision came in Authors Guild, Inc. v. Google, Inc., 2013 WL 6017130 (S.D. NY Nov. 14, 2013), a case that also dealt with the Google Book Project and on Google's use of the digital copies as part of a full text search engine online. The searches by users would produce lists of books containing the searched for term or phrase and, when a book is selected "snippets" (approximately one-eighth of a page) surrounding the searched for term or phrase. Security measures are used to prevent use of searches to yield full text of copyrighted works. Of course, to properly operate, the database itself contains full text copies. The District Court  held that the copying of the books and the operation of the search service were a transformative fair use. The opinion emphasizes the "many" social benefits of the search service, including a new way to find books, a new way to conduct research, giving access to disadvantaged persons and locations, and preserving old books. The court then concluded: Google's use of the copyrighted works is highly transformative. Google Books digitizes books and transforms expressive text into a comprehensive word index that helps readers, scholars, researchers, and others find books. Google Books has become an important tool for libraries and librarians and cite-checkers as it helps to identify and find books.

           "The use of book text to facilitate search through the display of snippets is transformative." One wonders about this comment. Merely digitizing a written work does not transform the work. I, for example, have numerous books and articles on commercial, online services (e.g., Westlaw). They are still copyrighted works. The difference is that they are read and can be searched differently. Consider the following comment by the court:

Similarly, Google Books is also transformative in the sense that it has transformed book text into data for purposes of substantive research, including data mining and text mining in new areas, thereby opening up new fields of research. Words in books are being used in a way they have not been used before. Google Books has created something new in the use of book text--the frequency of words and trends in their usage provide substantive information.

Do Westlaw and Lexis make a similar transformation? Certainly, one can use either service to test how often courts decide cases or articles refer to Restatement (Second) of Contracts Section 211 or negligent misrepresentation. Have these been transformed from their written manifestation? No. The court concluded that Google copied no more of the works than was necessary for its use - full text searching requires full text copying.

               Finally, the District Court suggested that, rather than harm the market for the books, the search activity helped that market - focusing of course, not on the potential licensing market, but on the market for selling hard copy books. It said: Google Books provides a way for authors' works to become noticed, much like traditional in-store book displays. Indeed, both librarians and their patrons use Google Books to identify books to purchase. Many authors have noted that online browsing in general and Google Books in particular helps readers find their work, thus increasing their audiences. Further, Google provides convenient links to booksellers to make it easy for a reader to order a book. In this day and age of on-line shopping, there can be no doubt but that Google Books improves books sales. This assertion is difficult to support and in any event does not address market impact in reference to licensing copies for use in the database itself, a topic that the Google opinion does not address. Certainly, common practice on most commercial databases online is to obtain copyright permission and all of these contain text search functions. In any event, it was the copying, not the searching that was an issue and, as to that, the only basis for a fair use claim is the argument is that requiring licenses would be prohibitively expensive and would prevent the development of a resource whose value outweighs the harm to copyright owners.

             The decision is simply wrong and should be reversed on appeal.