Scrivener's Error: Warped Weft

Google Bookscan

Suing Google

originally posted September–October 2005

The Procedure Geek Takes a Look

I am more than moderately displeased with the Author's Guild's lawsuit against Google from a procedural perspective.1 Professor Solum has a useful introduction to one aspect of the procedural morass raised by this case… and points the way to the ultimate solution (which is probably about three posts down the road from here). So, for the next few posts, I'm going to rip into the procedural problems with the case as it was filed.2

Class Certification

Like Professor Solum, we should start with the class definition, which is:

The Class is initially defined as all persons or entities that hold the copyright to a literary work that is contained in the library of the University of Michigan.

This class definition was obviously crafted by someone who had never seen a commercial publishing contract, probably never seen an academic or professional publishing contract, had never heard of Rosetta Books—in short, knew nothing of publishing law and practice. The Class can't be that big for a very simple reason: the right to do what Google appears to be doing may have been licensed to a third party, which in turn may not object to Google's conduct. And that "may" is a nontrivial qualification, because it means that the three named plaintiffs are almost by definition not typical of the plaintiff class.3 Further, this isn't a simple matter of "does the contract explicitly transfer the rights?", either; that's what Rosetta Books concerned, and the only substantive opinion is a nonbinding district court opinion concerning one publisher's contracts from a specific time period.

At a more practical level, this class definition is unmanageable for another reason—the problem of orphan works, which is another demonstration of a factor that will probably predominate in many claims. This alone will make any court that will ultimately be responsible for administering a remedy in any judgment against Google wary of too-broad a remedy—and certainly a remedy involving unknowing parties.

The ultimate irony here is the usual mechanism of class remedies: Usually—as in the horribly structured "database settlement" also "brokered" of late by the Author's Guild—everyone who falls into the class definition is bound by the settlement unless they opt out. Given that opt-in/opt-out is precisely what is at issue in Google's program, flowing in the opposite direction, this seems rather silly. It wouldn't have been that hard to both acknowledge reality and make the class definition logically consistent with the cause of action:

Class A is initially defined as all persons or entities that:

1. Hold the copyright to a literary work that is contained in the library of the University of Michigan; and

2. Have not transferred a license to a third party that would authorize the conduct alleged; and

3. Have not otherwise approved of the conduct alleged consistent with the signed writing requirement of 17 U.S.C. § 204.

Class B is initially defined as all persons or entities that:

1. By contract or operation of law hold a license that would authorize the conduct alleged to a literary work that is contained in the library of the University of Michigan; and

2. Have not otherwise approved of the conduct alleged consistent with the signed writing requirement of 17 U.S.C. § 204.

This should make one major procedural defect in the case as filed readily apparent: There is no adequate representative named for class B.4

Those who have been following my arguments with Amazon for the last couple of years will have spotted the unconsidered case that remains. Can you spot the unconsidered class that has inherent conflicts with both class definitions? Yes, Ms Sanchez? I said that "Not all books are single, complete manuscripts," and that I must be referring to collections and anthologies? Well, Ms Sanchez, you do get a brownie point for doing some research in my blawg, but I'll get back to you later in the session for what that really means. In any event, the key point is that the editor of such a volume—particularly if there is more than one contributor, as in anthologies—has an inherent conflict of interest with the individual(s) who contributed works to it. We could try to define a Class C, perhaps like this:

Class C is initially defined as all persons or entities that:

1. Hold the copyright to a literary work (the "Component Work") that forms part or all of another literary work (the "Composite Work") that is in turn contained in the library of the University of Michigan; and

2. Have not transferred a license to a third party, including without limitation the publisher and/or editor of the Composite Work, that would authorize the conduct alleged; and

3. Have not otherwise approved of the conduct alleged consistent with the signed writing requirement of 17 U.S.C. § 204.

This is starting to look awfully ugly, isn't it? It is marginally manageable with all three classes defined… if, and only if, nobody looks under the surface at the substantive strengths of the claims. All three classes do have claims; however, the strengths are radically different—Class A is a strong copyright claim, Class B is a moderately strong copyright claim combined with a strong interference-with-contract claim, and Class C is a slam dunk under either theory—that each require different kinds of evidence to validate both liability and remedy.

It gets better. Class C should also be divided just like the original class definition was divided into Class A and Class B, for the same reasons. Where things really get interesting is in determining who might be an adequate representative. The Author's Guild cannot be an adequate representative for Class C (or Class D), because its membership consists almost entirely of those who publish at book length only. Further, there's a hidden landmine in the Tasini question for Class C (and Class D): that many, if not most, Composite Works include one or more Component Works that were previously published elsewhere.

If you're not convinced that the only thing certifiable about Author's Guild v Google is the individual who decided that this could be a unitary class action, there is more yet to come—and we haven't even gotten to the substance!

Other Procedural Flaws

My remaining procedural grumble in this matter comes from some particularly inelegant drafting in the complaint.

7. This copyright infringement action arises under 17 U.S.C. § 101 et seq. This Court has jurisdiction over this action under 28 U.S.C. § 1331 federal question, and 28 U.S.C. § 1338 (acts of Congress related to copyright).

8. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b) and 1400(a) because one of the named plaintiffs resides in this district and because defendant conducts business in this district.

To begin with, I suppose two out of three isn't bad; unfortunately, "isn't bad" isn't good enough. Note that there is no specific allegation of personal jurisdiction over the defendant! That's an easily fixable problem, but it shouldn't need to be fixed at all—especially as the theory of venue expressed in the complaint is that same as the theory that would give personal jurisdiction.5

The more-subtle problem, though, is the question of exactly what business is being conducted in the Southern District of New York that might give rise to jurisdiction. The complaint and class definition limit themselves to scanning taking place at the University of Michigan—which is not, by any reasonable definition, in Manhattan. So, then, the only "business" that might be taking place in the Southern District of New York must be the dissemination of the final materials—an event that has not yet taken place. This is where we get into the interplay between the procedural posture of the matter and the substance, for two reasons.

First, a large portion of the case depends upon treating this as a declaratory judgment matter, requesting an injunction preventing the scanning from beginning. Leaving aside the logical problems with this issue, what we've really got is a court being asked to order a party not ordinarily found in the district (the reliance on "does business in") to not "do business" in another district. This is not the most obvious way to bring parties before the court, let alone make an enforceable remedy possible!

Second, this needlessly conflates the copyright problems. Google's program actually involves three distinct potential copyright violations (and I emphasize potential):

  1. The scanning, copying, and storage of the works at the University of Michigan library;
  2. The creation and dissemination of indices and/or search mechanisms from point 1; and
  3. The retrieval of undefined portions of the underlying works after a "hit" from point 2 by a person or persons who have neither purchased nor otherwise obtained a license to do so

There is some case law on both sides of each of these issues, and the statute really isn't all that clear. To say the least, I think it was an incredibly silly decision to conflate the three violations into a single cause of action, because that encourages misapplication of analyses and privileges from one of the three into the others. For example, the argument that "Arriba Soft says this is fair use" can logically apply only to violation 2. The facts in Arriba Soft explicitly deny application to violation 3, and really don't apply to violation 1 at all.6

So, in the end, the Author's Guild's complaint forfeits some of its most powerful arguments for the sake of maintaining class uniformity (that, as I've already noted, is fatally flawed in any event). The public statements have focussed almost entirely on violation 2; that's where I'll start analyzing the substance, but I can guarantee that's not where I'll end up.

Turning to the Merits

One of the justifications that many apologists for Google's actions have raised is "Arriba Soft says it's fair use." This is a woeful misunderstanding of Arriba Soft, unless one willfully misreads the opinion and wrenches it completely from context. The first two paragraphs of the most-recent Ninth Circuit opinion make this clear:

This case involves the application of copyright law to the vast world of the internet and internet search engines. The plaintiff, Leslie Kelly, is a professional photographer who has copyrighted many of his images of the American West. Some of these images are located on Kelly's web site or other web sites with which Kelly has a license agreement. The defendant, Arriba Soft Corp., operates an internet search engine that displays its results in the form of small pictures rather than the more usual form of text. Arriba obtained its database of pictures by copying images from other web sites. By clicking on one of these small pictures, called "thumbnails," the user can then view a large version of that same picture within the context of the Arriba web page.

When Kelly discovered that his photographs were part of Arriba's search engine database, he brought a claim against Arriba for copyright infringement. The district court found that Kelly had established a prima facie case of copyright infringement based on Arriba's unauthorized reproduction and display of Kelly's works, but that this reproduction and display constituted a non-infringing "fair use" under Section 107 of the Copyright Act. Kelly appeals that decision, and we affirm in part and reverse in part. The creation and use of the thumbnails in the search engine is a fair use. However, the district court should not have decided whether the display of the larger image is a violation of Kelly's exclusive right to publicly display his works. Thus, we remand for further proceedings consistent with this opinion.

Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003) (emphasis added). This is the first hint that the matter concerns more than indexing. In the context of reproduction of visual images already in electronic form—a distinction that is quite significant, as we'll see later in looking at the merits of Author's Guild v. Google itself7—the Court held that the District Court's judgment of fair use was inappropriate.

As mentioned above, the district court granted summary judgment to Arriba as to the full-size images as well. How-ever, because the court broadened the scope of both the parties' motions for partial summary judgment and Arriba's concession on the prima facie case, we must reverse this portion of the court's opinion.

With limited exceptions that do not apply here, a district court may not grant summary judgment on a claim when the party has not requested it. The parties did not move for summary judgment as to copyright infringement of the full-size images. Further, Arriba had no opportunity to contest the prima facie case for infringement as to the full-size images. Accordingly, we reverse this portion of the district court's opinion and remand for further proceedings.

(footnotes omitted) Sure, this is a procedural reason only; however, the third fair-use factor analysis indicates that a more-completely developed record would weigh against finding fair use as to the complete works.

This factor neither weighs for nor against either party because, although Arriba did copy each of Kelly's images as a whole, it was reasonable to do so in light of Arriba's use of the images. It was necessary for Arriba to copy the entire image to allow users to recognize the image and decide whether to pursue more information about the image or the originating web site. If Arriba only copied part of the image, it would be more difficult to identify it, thereby reducing the usefulness of the visual search engine.

Ah. Here we are. What this really reduces to is this question, which is both far more complex than the question raised in Arriba Soft and deceptively simple:

Is it necessary to copy the entirety of a textual work to "allow users to recognize the [work] and decide whether to pursue more information about the [work]"?

This is deceptively simple because it divides the inquiry into two aspects: "recognition" and "pursuit of more information". I think the conjunctive linking of these two concepts is probably an artifact of legal writing more than it is a logical necessity, which will bear analysis later. The problem, though, is that this specific statement has been shorthanded into the concept of an "index"—a shorthand that professional index-preparers would deny, and a conclusion inconsistent with Second Circuit law.8

The culture clash of imposing "Internet values" on print publications results from some seriously flawed reasoning in the Copyright Act itself—flaws inherited from the 1870 revision and 1909 Act—that could have been avoided just by reference to the piano-roll case9 and its implications. The question this raises is also deceptively simple:

Must changes in technological capabilities and/or penetration always result in changes in both copyright owners' rights and copyright users'/exploiters' responsibilities?

Contrary to most analyses of Arriba Soft, which try to make the Internet somehow a "privileged" medium, the answer to this question is "no." Those changes under some circumstances may result in some changes; but reaching the result desired by Google requires that this question be a black-and-white imperative, not analysis sensitive to the context of not just the desired reuse, but the actual origin. That, in turn, distinguishes the "index" that Arriba Soft created from that Google would create; but this posting has already beaten that horse into a pulp.10

Evaluating the Fair Use Defense

Keep in mind that fair use is not a privilege. It is instead an affirmative defense to an accusation of infringement. (Unfortunately, neither the statute nor the courts are very consistent in treating it as such.) The burden of proving an affirmative defense is on the party asserting the defense; this is one of the many "the tie goes to the runner" principles common in American jurisprudence.

In any event, let's take a fresh look at the way the fair use defense applies to each of the three potential violations that the Author's Guild should have alleged.

  (1) Scanning, Copying, and Storing (2) Searchable Index (3) Retrieval Upon Hit
i. Purpose & character of use Weighs against fair use, especially under Tasini Indeterminate; an index is a derivative work (and therefore weighs against fair use), but certain indexing methods would mitigate this determination; whether a textual index of a textual work is "transformative" is highly doubtful under Second Circuit law Indeterminate
ii. Nature of source work Variable; for works of fiction, weighs against fair use, but a narrower question for nonfiction Indeterminate; an index for a work of fiction makes little sense for general usage, but an index to a work of nonfiction does make sense Indeterminate, but probably weighs slightly in favor of fair use for limited extracts (but heavily against fair use for many large values of "limited")
iii. Amount and substantiality Copying the whole work weighs strongly against fair use; as a whole-work copy, this factor should get the greatest weight Indeterminate; unlike Arriba Soft, the index of textual terms is more likely to provide the user information information needed to evaluate the work, but less likely to be useful without substantial copying under Nation Enters. Indeterminate; slightly against fair use for collective works and anthologies, but slightly favors fair use for single-work books
iv. Effect on market Speculative at best, although anticipated changes in market conditions make this factor weigh narrowly against fair use Unlikely to have any effect, although indexing seldom has any measurable effect on the market in print publishing Slightly favors fair use for nonfiction, indeterminate for fiction and drama
On Balance Solidly against fair use Indeterminate—and therefore fails as an affirmative defense For most subject works, slightly against fair use; at best, indeterminate to slightly favoring fair use for other classes of works11

Admittedly, this doesn't look a whole lot like the analysis in Arriba Soft. That is primarily because, as I've tried to make clear, this case isn't Arriba Soft. It is not being heard in the Ninth Circuit, which (along with the Eleventh Circuit) has the least-stringent view of fair use; it is not based on materials merely gathered, but for which substantial and conscious copying must occur for any of the three "uses"; it is not based upon reuse of materials in exactly the same form, medium, and purpose/function as provided by the copyright holder; and does not concern a well-delineated final use and presentation.

Perhaps most importantly, though, that this case is being heard in the Second Circuit matters for a procedural reason: Second Circuit law on affirmative defenses in general is somewhat less favorable to defendants engaged in knowing and purposeful acts. That is, the nature of fair use as an affirmative defense matters more in the Second Circuit than it does in the Ninth Circuit (or would in the Sixth, Eighth, or Eleventh Circuits). Put another way, the umpires in the Second Circuit seem less appreciative of the well-turned, but close, double play than do those in the Ninth Circuit.

Evaluating the Underlying Violations

Ordinarily, this would be the first question one asks. If there would be no violation even without referring to the fair use defense, why bother with the four-factor weighing? Rhetorically, I think it was necessary to at least indicate that fair use is at best arguable—if only because so many ill-informed commentators12 have immediately jumped to that defense because it's easier to sell the public on that rhetoric.

In any event, let's take a closer look at the three violations I outlined previously.

  1. The scanning, copying, and storage of the works at the University of Michigan library
    This is probably the easiest theory to evaluate. Too many commentators are conflating this theory with the third one. That ignores the underlying premise of the Copyright Act: That a violation is complete upon copying absent a specific defense. The number of copies created, the profit from those copies, etc. all go to the appropriateness of the remedy and whether the violation should be treated as willful—but, excepting only fair use, they do not excuse the copying itself.
  2. The creation and dissemination of indices and/or search mechanisms from violation 1
    This is a somewhat more difficult violation to evaluate. On the one hand, making an index from a work is a derivative work that requires a license.13 On the other hand, the purported product—which is difficult to evaluate without having actually seen it—is not an index of just one work; it should, as described in public releases, function as a finding tool across a mass of works. Thus, there's an argument—not a good one in the abstract, but rhetorically attractive—that this is not an index to a particular work. The problem with that argument is that what Google proposes to do is, at its core, an index of indices. The top-level index (the composition—in the mathematical sense—of all those indices) is a violation only in the sense that it includes other violations; those lower-level, single-work indices, though, are direct violations.14 That does not, however, vitiate the original violation.

  3. The retrieval of undefined portions of the underlying works after a "hit" from violation 2 by a person or persons who have neither purchased nor otherwise obtained a license to do so
    This is by far the hardest violation to evaluate, because Google has promised to include only "limited portions" in response to each hit. The problem with this assertion, though, is that it is trivially easy to create a self-recursive program to spot a single work and recursively proceed through the manuscript at the granularity of the individual selections to recreate the entire text.15 Only by purposely sending false data back—which is antithetical to an accurate and useful indexing system—can one avoid this problem. On the other hand, that is at most an enablement similar to that in Sony.

    On balance, evaluating this potential violation must await Google's actual implementation. There are simply too many quirks to index-based retrieval for any evaluation at this stage to claim any accuracy.

That leaves us with one clear violation and two potential violations with varying degrees (and causes) of mud. Mud they may be; but they cover the ground. Thus, we do need to consider the fair use doctrine; but can (and should) only do so in the context of the actual violations.

The Stated Theory

Most of my discussion of the merits thus far has assumed that the complaint asserted what it should have—three distinct, clear theories of copyright infringement, each sufficiently fact-bound to avoid a motion to dismiss (and probably summary judgment). Of course, that's not what will emerge from this fiasco; instead, we'll ultimately get an opinion founded on the complaint.16 So, then, what does the complaint actually allege?

39. Google has made and reproduced for its own commercial use a copy of some of the literary works contained in the University of Michigan Library, which contains the Works that are the subject of this action, and intends to copy most of the literary works in the collection of that library.

40. Google's conduct is in violation of the copyrights held by the Named Plaintiffs and other members of the Class.

41. Google's infringement of the copyrights of the works was willful.

Author's Guild, Inc. v. Google, Inc., No. 05cv8136 (S.D.N.Y.), complaint (Dkt. 1, Sep. 20, 2005).17

Admittedly, this isn't as bad as it could be. The real problems are twofold. First, it implies that only the copying itself (what I have labelled violation 1) is potentially at issue, although that conclusion is inconsistent with the factual allegations preceding it, particularly paragraphs 29, 31, and 33, each of which asserts that Google intends to display the copied works (violation 3). That this is only an implication, though, is not binding on anyone; under controlling law, the complaint is to be read broadly to include all theories and causes of action for which the defendant is fairly upon notice. Since the complaint alleges facts that would (or at least might) allow relief for violation 3, violation 3 has been plead—but only by implication, and inelegantly at that.18

More damagingly, though, the complaint includes five unnecessary words that sharply limit the scope of any potential relief: "for its own commercial use". Remember, "commercial use" is just one possible conclusion concerning one of the four fair use factors. As a hypothetical, would it be a violation if the University of Michigan did exactly the same thing as Google is doing/is proposing to do? If so, what if the contract between Google and the University of Michigan et al. characterizes Google as a subcontractor, doing something that the universities therefore could do on their own? Would that transform Google's behavior into a commercial, as opposed to scholarly, use? Licenses, after all, can have transitive properties: Absent a specific prohibition, one can ordinarily sublicense an action one is authorized to do through a license from a third party. And, of course, this gets vastly more complex in light of the special privileges accorded libraries under 17 U.S.C. § 108.

So, through some poor drafting, the complaint leaves itself open to serious problems both in substance and in rhetoric. A case of this nature must be won in the court of law and in the court of public opinion; winning in only one of those courts isn't enough. The language of the complaint sabotages the legal prong and subtly undermines the public prong.

The Other Shoe Drops

McGraw-Hill, on behalf of a number of publishers, has filed its own parallel action against Google regarding GooglePrint. Although it isn't exactly the complaint I would have written, it is vastly better than is the AG complaint.

To begin with, McGraw-Hill's19 counsel at Debevoise & Plimpton wisely evaded the question of class certification by not filing as a class. Not only does this avoid my initial criticisms of the particular problems with the AG class definition—and, sadly, these are problems that would also necessarily occur in any class of publishers—but the AAP suit explicitly requests "declaratory and preliminary and permanent injunctive relief" (Cmplt. ¶ 1), but not damages. By doing so, AAP would fashion a remedy that could be relied upon by any potential class member through offensive collateral estoppel20 without the sideshow of class certification.

The substance of the complaint is also much better conceived. Early on, it acknowledges the possible library privilege under 17 U.S.C. § 108, and properly distinguishes that privilege from Google's program (Cmplt. ¶¶ 6–7). Most importantly, the AAP complaint properly characterizes the opt-in/opt-out controversy concerning whole-work (what I have called "primary") copying.

33. Both the Google Library Project and Google's pronouncement that publishers must provide to Google detailed lists of books that they wish to be excluded are contrary to the black letter requirements of the Copyright Act. The exclusive rights enjoyed by copyright owners to reproduce, publicly distribute[,] and publicly display their works, and to authorize others to engage in such acts, 17 U.S.C. § 106, squarely put the burden on Google either to obtain the permission from the copyright owners to copy and make use of copyrighted books or exclude them from the Google Library Project. [remainder of paragraph redacted]

This is the real core of the controversy. The key point is that the Supreme Court has already spoken on this subject:

More to the point, even if the dissent is correct that some authors, in the long run, are helped, not hurt, by Database reproductions, the fact remains that the Authors who brought the case now before us have asserted their rights under § 201(c). We may not invoke our conception of their interests to diminish those rights.

New York Times Co. v. Tasini, 533 U.S. 483, 498 (2001).21

The AAP complaint is also quite a bit shorter than is the AG complaint. Overall, it is a much cleaner statement of what is really at issue. That this "cleaner" statement comes from parties whose exclusive right is often far from clear (or clean)22 seems rather ironic—but all too typical in the murky world of copyright and the Internet.

Of Chickens and Eggs

The entire dispute arises from a multidimensional culture clash among authors,23 publishers, libraries, ordinary readers, and information entrepreneurs.24 In no particular order, those dimensions include:

  • The historical difficulty and expense of printing books, which is entirely discounted by most information entrepreneurs. The key problem here is the assumption that conditions at toriginal publication are comparable to those at tcopyright renewal and to those at tnow.
  • The refusal to recognize that the means and ends of the Copyright Clause are interdependent. On the one hand, we have overreaching by people like Margaret Mitchell's heirs, on the ground that "exclusive right" is unlimited in scope and purpose; on the other hand, we have "information wants to be free"25 advocates who look only to "promoting Progress" and forget that the Constitution specifies the means to be used.
  • The frustration of ordinary readers in not being able to obtain the materials they want/need in a timely fashion because those materials are relatively rare physical items held somewhere other than their local libraries. That's not to say that libraries don't feel the same frustration; they've just learned to live with it better.
  • The conception that all information has approximately the same (minimal) value that seems to underly much of information entrepreneur culture.
  • The continuing struggle between authors and those who exploit their works over accurate accounting for their works.
  • The inability of publishers and ordinary readers to communicate—let alone agree—on what needs to be printed, how long to keep a work in print, and how to price or distribute that material.

The real problem here is inherent market failure at the boundaries of intellectual property, which itself has several dimensions. Most market theory is Coase-positive, in the sense that it assumes that most markets are—or, at least, ideally should be—compliant with the Coase theorem. Nowhere, however, is the endowment effect more apparent than in psychological, actual, and creative claims of authorship. Throw in grossly unbalanced initial power and economic resource allocations and information asymmetries that would be laughed off a law-school final exam as completely implausible, stir in the disjuncture between copyright (and, for that matter, patent and trademark) duration and both the perceived rate of Progress and lengthening lifespans,26 and we have the ingredients for a swirling brew of conflicts troubled by hotspots no amount of stirring seems able to disspell.

No, I don't have a universal solution. Neither, however, do I have a whole lot of respect for either side in Author's Guild v. Google (and only a little bit more for the AAP version). Both sides are so focussed on short-term enlightened self-interest that they've forgotten that overriding purpose: encouraging Progress.

  1. I'm also displeased with the grammar in the Author's Guild's name, since there is more than one author member and more than one kind of author. The irony of an arguable grammatical error in the name of an organization for commercially published writers need not detain us long, though.
  2. To make one thing perfectly clear at the outset: I think it is possible to file an appropriate lawsuit on this particular matter. I just don't think this one, as presently constituted, is it. Since all of the problems I'm going to point out are curable, and in any case will be the result of one or more motions or opinions unless it is quickly settled, I don't feel like I'm betraying my side… whatever that side may be, which shouldn't be much of a surprise but probably will be to those who think I'm anti-Internet after Ellison.
  3. Without going into too much of the mechanics, there are essentially four specific requirements and one overriding factor involved in certifying a class action. The four specific requirements are that the named class representatives (usually called "named plaintiffs") must (1) have claims typical of the class members they would represent, (2) represent a class of such typical claims that is sufficiently numerous to justify class certification (usually from 15 to 40 is enough), (3) be "adequate representatives" of the class (usually defined to mean "capable of making the decision after appropriate legal counsel and free of conflicts of interest," although many defense counsel use this factor as an excuse for character assassination and harassment), and (4) have operative facts in common with those of the represented class. The overriding factor is that a class action must be a superior means of adjudicating at least part of a case because (a) it can provide appropriate relief and (b) the class-related factors will predominate over any individual factors. See, e.g., Rivera v. Fair Chevrolet Geo Partnership, 165 F.R.D. 361, later decision, 168 F.R.D. 11 (D. Conn. 1996), for an exceptionally balanced and detailed consideration of both the general principles and defense tactics in class certification.
  4. Just to make one other thing perfectly clear: In the mid-1990s, I was a plaintiff's-side class-action-oriented attorney in Chicago; in fact, I was almost solely responsible for the Rivera matter cited in footnote 3. I am in favor of class actions, and I think that a lot of cases that should be managed on a class basis aren't either through failure to plead it as a class or (often unjustified) refusal to certify the class. Nonetheless, because this particular matter so heavily concerns noneconomic rights of which authors and their agents remain ignorant, we need to tread very carefully here.
  5. I make no judgment, at least as of yet, on the validity of this theory. In this particular case, I think it makes little difference; I think Google would have a great deal of difficulty claiming that its attempts at worldwide dominance of English-language searching somehow do not result in "doing business" in Manhattan. However, the exact scope of Internet-activity-based personal jurisdiction has yet to be studied carefully, either in federal court or in the literature, with much persuasive finality.
  6. Remember that Arriba Soft does not involve any "data acquisition" from the originals at all; instead, the search engine sought material already on the web, which (according to all of the opinions) had been either placed there by Kelly (the photographer) or was placed there with his permission or acquiescence. The Ninth Circuit, and more explicitly the District Court, made no attempt to consider unauthorized acquisition of the material.
  7. The short-form, unnuanced distinction is that Kelly himself had made the images available in some form on the Internet—that is, in the indexing and indexed medium—through his own efforts and/or the authorized (or at least acquiesced-in) actions of his licensees. That is not at all what Google's stated intent is, let alone what Google is actually doing… or could choose to do at a later date given the copying it is actually doing. Cf. Ellison v. Robertson, 189 F. Supp. 2d 1051, 1057–60 (C.D. Cal. 2002), aff'd in relevant part and rev'd in part, 357 F.3d 1072 (9th Cir. 2004).
  8. Cf. Castle Rock Entertainment, Inc. v. Carol Publ. Group, 150 F.3d 132 (2d Cir. 1998) (denying that wholesale copying of script excerpts and rearranging them for purpose of creating a "quiz" constituted fair use). Remember, Author's Guild v. Google will be heard in the Second Circuit and must rely upon Second Circuit law. This particular line of cases marks one of the sharpest divergences between Second Circuit and Ninth Circuit law. The Second Circuit narrowly has the better of this particular argument, although the turgid writing in three of the critical opinions makes understanding this needlessly difficult. As noted previously, this is one of the best arguments for sending copyright matters to the Federal Circuit: It may not always get the results correct, but at least it will be consistent!
  9. White-Smith Music Publ. Co. v. Apollo Co., 209 U.S. 1 (1908).
  10. Needless to say, I find most fair-use analyses—particularly that put forth by counsel for EFF—of some skewed (and usually self-serving) vision of what is going on in the GooglePrint program to be at best disingenuous; more details will follow later on.
  11. This particular cell demonstrates another reason that a class action may not be manageable: It will require a work-by-work inquiry. Although that is not by itself disqualifying, the rather indistinct nature of a fair number of literary works at the University of Michigan Library indicates that for at least a nontrivial number of works, this will require a fairly intensive factual inquiry.
  12. Or, worse, those with hidden (and not-so-hidden) agendas that create a results-oriented legal analysis. Despite the fact that I represent authors, I also represent several organizations and individuals who are primarily "re-users" of material. Perhaps that colors my analysis a bit; I think it does so far less than it does the EFF's, and certainly without the strident absolutism. For example, I concede that the Google program might well constitute fair use for some works under some circumstances; what I deny is that the program as a whole does so (or conceivably could do so, as we'll see down the road), whether considered as a class action or otherwise.
  13. Although this is far from the clearest line of reasoning under any circuit's law, it is clearest in the Second Circuit… and perhaps most obscure in the Ninth. Nonetheless, based on the reasoning in the most-recent major case out of the Second Circuit, the result of this prong of the violation is predicatable.
  14. For those of you who are law students and starting to study the Exclusionary Rule, this should sound a great deal like the "fruit of the poisonous tree" doctrine. The law is a web of common methods of reasoning; it's not seamless—if it was, there would be no conflict between the First Amendment and defamation—and this is an excellent example.
  15. I created and test-proved such a program on the original Amazon SITB offering—well, it did require an OCR side-trip, but that does not appear to be required for any system compatible with Google's current results system—in about two hours. It was quick; it was dirty; it had a purely command-line user interface; it worked. (Of course, I tested it on one of my own clients' works.)
  16. Or, more probably, an amended complaint filed down the road after the first round of motion practice. That, however, must remain theoretical. I seriously doubt that the lawyers involved are paying any attention to what I have to say, so I hold out no hope that the complaint will actually be better on the substance of copyright; it will merely conform better to whatever facts emerge during discovery.
  17. Although Milberg Weiss has developed a reputation for suing those who would copy its complaint, I claim fair use in this copy of a small extract of the complaint, which is fully attributed and is being used for purposes of commentary on a matter of public concern. That's right—sometimes I do support fair use.
  18. This is a corollary of my diatribe on lawyers and shopping lists. The communication rule is basically this: If you don't ask for something clearly, the court is unlikely to give it to you clearly.
  19. For parallelism, I'll refer to this as the "AAP" complaint. Even though the Association of American Publishers is not the lead plaintiff in this suit—that's McGraw-Hill—the complaint is tailored to serve organizational interests more than those of any of the three publishers named individually. The Author's Guild suit then becomes "AG", both by obvious abbreviation and because the Author's Guild is trying to act as a private attorney general.
  20. Offensive collateral estoppel (a variety of what used to be called res judicata) allows a nonparty to a lawsuit to use the results of that suit against the losing party in a later lawsuit of its own. For example, if A v B results in a finding of liability against B, C could use that finding to foreclose a defense by B in C v B on the same operative facts. See Parklane Hosiery v. Shore, 439 U.S. 322 (1979).
  21. Some might object that Tasini explicitly did not decide any questions based upon fair use. Although this is a correct statement as to the appellate opinions, the defendants below did raise fair use as an affirmative defense. Further, even giving Campbell the broadest possible scope, a verbatim reproduction of a complete book cannot qualify as fair use under the standards put forth in Nation Enterprises—particularly not in the face of objection to that reproduction.
  22. Cf. Rosetta Books, which I'll discuss in detail infra.
  23. In the generic sense. Arriba Soft points out that it's not just wordsmiths who have copyright interests that are the subject of this kind of dispute.
  24. This includes both the actual "information sellers" like Google and those who would acquire others' information for reuse for their own purposes. The latter group tends to attack both databases and copyrights. Ironically, it is often more dismissive of copyright claims than of "sweat of the brow" claims in databases—at least, I find it ironic in the face of Feist.
  25. Conversely, entertainers want to eat.
  26. And perhaps—or more than perhaps—the continuing expansion of leisure in absolute and relative terms (and, for that matter, in perceived value).

Law and reality in publishing (seldom the same thing!) from the author's side of the slush pile, with occasional forays into military affairs, censorship and the First Amendment, legal theory, and anything else that strikes me as interesting.

Ritual disclaimer: This blog contains legal commentary, but it is only general commentary. It does not constitute legal advice for your situation. It does not create an attorney-client relationship or any other expectation of confidentiality, nor is it an offer of representation.

All material © 2003–11 except where otherwise indicated. All rights reserved. N.B. This blawg does not use the Creative Commons License, although I'm usually pretty good-natured about permissions for attributed reuse.


Warped Weft

Essays in Warped Weft are consolidated from Scrivener's Error with only formatting corrections (and the occasional typographical correction).