Is a “Mirror Copy” a Transformative Fair Use? This Court Says Yes…These Courts Say No…and the Supreme Court Says Nothing

Stephen Carlisle April 28, 2016

Monday, April 18, 2016 saw the Supreme Court of the United States deny the Author’s Guild petition for writ of certiorari in the long running lawsuit against Google and their mass digitization of library books. ¹

News articles immediately ran out to trumpet the move as “Supreme Court Rejects Google Books Appeal,” ² which isn’t really true. All the Supreme Court said was that they weren’t going to hear the case, and nothing more. While the refusal of the Supreme Court does leave the last decision in place, the Supreme Court usually does not give a reason for their action, and did not do so here.

Reasons can include:

• We think the decision below is correct.
• We think the decision below is incorrect, but we have more important issues to decide.
• We think the issue is important, but this case does not lend itself to a complete consideration or resolution of the issue.

And it is the last reason why I am not totally unhappy with the Supreme Court’s action. Since the refusal of certiorari is not a decision on the merits of the case, not much has changed, and what we might have gotten could have been worse.

Coincidentally, a few weeks before saw the latest ruling in the long running Georgia State e-books case, which once again found the majority of the digital scanning done was fair use. ³ The difference was that the District Court, following the ruling of the Eleventh Circuit Court of Appeal, proceeded along the lines that “the excerpts are non-transformative because they are mirror image copies of the book.” ⁴ This is the exact opposite of what the Second Circuit ruled in the Author’s Guild Case, where Google made exact copies of entire books, not just portions of the books, yet declared the use “transformative.” ⁵

In Google books, Google scanned complete copies of books provided to them by participating libraries and made them searchable, and when asked, will display verbatim portions of the text. ⁶ The Second Circuit seemed overwhelmed by what they saw as the positive aspects of Google’s book scanning project, that they gave no, or very curt, consideration to contrary points of view.

“Google’s making of a digital copy to provide a search function is a transformative use, which augments public knowledge by making available information about Plaintiffs’ books without providing the public with a substantial substitute for matter protected by the Plaintiffs’ copyright interests in the original works or derivatives of them.” ⁷

Yet, as the Eleventh Circuit tartly observed:

“[A]ll unpaid copying could be said to promote the spread of knowledge…” ⁸

Similarly, the Sixth Circuit ruled:

“If you make verbatim copies of 95 pages of a 316 page book, you have not transformed the 95 pages very much-even if you juxtapose excerpts from other works.” ⁹

And this admonition from the Supreme Court of the United States:

“We also agree with the Court of Appeals that whether ‘a substantial portion of the infringing work was copied verbatim’ from the copyrighted work is a relevant question, (Citation omitted) for it may reveal a dearth of transformative character or purpose under the first factor, or a greater likelihood of market harm under the fourth; a work composed primarily of an original, particularly its heart, with little added or changed, is more likely to be a merely superseding use, fulfilling demand for the original.” ¹⁰

The fact that the information is presented in what the Second continually characterizes as “snippets” carried great weight with that Court.

The District Court in the Georgia State remand characterized excerpts of 12.45% of a single book as “extremely large.” ¹¹ Yet, because the information in the Google books is contained in “snippets,” the fact that one could access as much as 16% of an entire book was deemed inconsequential.

“The fragmentary and scattered nature of the snippets revealed, even after a determined, assiduous, time-consuming search, results in a revelation that is not “substantial,” even if it includes an aggregate 16% of the text of the book. If snippet view could be used to reveal a coherent block amounting to 16% of a book, that would raise a very different question beyond the scope of our inquiry.” ¹²

Again, in the Georgia State retrial, the Court found that “the excerpted portions of the work are dominated by author, opinion, analysis, evaluation and subjective description. Thus factor two disfavors fair use.” ¹³

The Second Circuit dismisses this out of hand, again, because of “snippets.”

“Even if the snippet reveals some authorial expression, because of the brevity of a single snippet and the cumbersome, disjointed, and incomplete nature of the aggregation of snippets made available through snippet view, we think it would be a rare case in which the searcher’s interest in the protected aspect of the author’s work would be satisfied by what is available from snippet view, and rarer still—because of the cumbersome, disjointed, and incomplete nature of the aggregation of snippets made available through snippet view—that snippet view could provide a significant substitute for the purchase of the author’s book.”

Surely the Second Circuit has heard of the case of Harper and Row Publishers v Nation Enterprises. ¹⁴ Of course they have, it’s cited to in the opinion. What was overlooked by the Second Circuit was the truly minimal amount of copying done by the Defendant there: 300 to 400 words of verbatim quotes of a book ¹⁵ that is 454 pages long. ¹⁶ This amount was only 13% of the entire infringing article of some 2,250 words. One can only imagine the microscopic percentage when weighed against the entire book. Yet, this verbatim copying was held to be infringing and not fair use by the Supreme Court of the United States.

So, to state that such a case of infringement might be “rare” doesn’t mean it could not happen, and the author could be damaged, as in Harper and Row.

But here’s the kicker, and why it may be a good thing that the Supreme Court passed over the case. Google will remove a book from the “snippet view” at the request of the author, by the submission of an online form. ¹⁷ The question then becomes, where is the damage to the author if the snippet is not viewable?

(As an aside, gee, Google, it would be nice if you did this with YouTube, but for some reason you don’t.)

The Supreme Court in the three fair use cases it has undertaken, has consistently treated the fourth factor of fair use, the possibility for negative market effect, as the most important. ¹⁸

So, the Supreme Court might look at the author’s ability to withdraw the book, along with the rather attenuated damage of the closing the market to a competing database, and reasonably find there is no significant market harm to the authors and affirm the finding of fair use. This would be far worse than the decision we have now, which is not binding Supreme Court precedent and is counter-balanced by contrary rulings from the Sixth and Eleventh Circuits.

So, my reaction today is the same as when I first heard about the refusal of the certiorari petition. I was partly sorry that the case would not be heard, because Lord knows the problems with “transformative use” are legion and need to be resolved, but I’m not sure that this was the best case to address the issue. Far better to take up the latest atrocity from Richard Prince, (e.g. “Richard Prince plays tic-tac-toe in the corner of a bunch of photographs, Court declares this action “transformative”) than what we might have gotten with a decision in the Author’s Guild case, namely an affirmance of a decision of questionable reasoning on other grounds.