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Google Book Search Case Gets New Start With Class Certification in Two Actions

Wednesday, June 13, 2012

By Anandashankar Mazumdar

Two groups of plaintiffs in actions objecting to the Google Book Search project were due certification as representatives of classes of copyright holders whose rights might have been infringed, the U.S. District Court for the Southern District of New York ruled May 31 (Authors Guild v. Google Inc., S.D.N.Y., No. 1:05-cv-08136-DC, 5/31/12).

Granting class certification under Fed. R. Civ. P. 23, the court also rejected Google's new argument that associations of copyright holders could not stand in for their individual members.

Google Book Search Dispute Revived.
In 2005, the Authors Guild, several authors, and publishers brought two class action lawsuits in the Southern District of New York challenging Google's arrangement with several large libraries to digitize the entire contents of their collections and to make the resulting database searchable over the internet (183 PTD, 9/22/05).

The complaint alleged that Google was infringing the plaintiffs' copyrights when it scanned copyrighted works without authorization and made plans to provide portions of those materials to the public through an online searchable database.

In 2008, the Authors Guild and Google reached as settlement allocating rights to the copyrighted materials at issue (209 PTD, 10/29/08). Under the terms of the deal, Google would pay $125 million to establish a centralized royalty collection organization and to compensate authors of scanned books. Each book would earn at least $60 in royalties.

Furthermore, the agreement proposed creating institutional subscriptions to Google's digitized library, which would earn ongoing royalties. A Books Rights Registry would be established under the control of authors and publishers to keep track of the use of registered works and for centralized collection of royalties. Authors would be given the opportunity to opt out of the deal either initially or after participating.

Under the deal, Google would be granted non-exclusive rights to keep scanning works, sell subscriptions to its digitized content, and earn revenue from advertising displayed with search results.

Second Deal Rejected.
Judge John E. Sprizzo gave preliminary approval to the deal. However, following a period of public controversy of the terms of the settlement, the parties proposed a revised settlement in 2009, removing any terms relating to the use of foreign works by Google, and sought final approval pursuant to Fed. R. Civ. P. 23 (219 PTD, 11/17/09).

The amended settlement also proposed to establish an independent fiduciary to police use of orphan works and extend the opt-out date to 2012. It also proposed that unclaimed money collected for use of orphan works would not be distributed to members of the settlement class, providing for use of some of that income for charitable contributions.

Also in November 2009, a group of pictorial copyright interest holders were refused the opportunity to intervene (79 PTCJ 39, 11/13/09). The court found that the intervention was untimely and would interfere with the settlement process.

In the meantime, Sprizzo died and the case was assigned to Judge Denny Chin, who gave the amended settlement preliminary approval (32 PTD, 2/19/10).

Hundreds of third parties, including copyright holders and public interest groups, as well as the Antitrust Division of the U.S. Department of Justice, commented on the proposed settlement.

Plaintiffs Gear Up to Continue Battle.
Nearly a year a half later, in March 2011, the court rejected a revised $125 million settlement of claims by the authors and publishers after finding that its terms were not “fair, adequate, and reasonable” with respect to the rights of members of the relevant class (57 PTD, 3/24/11).

During the period that the court was considering the amended settlement, the visual artists associations filed their own class action against Google (72 PTD, 4/16/10).

In September, the court granted the Authors Guild leave to file a new amended complaint and move for class certification (183 PTD, 9/21/11). The Authors Guild filed a fourth amended complaint in October and in November, the visual artists amended their own complaint.

Google moved to dismiss for lack of standing the associational plaintiffs from the two actions, including the Authors Guild, the American Society of Media Photographers, the Graphic Artists Guild, the Picture Archive Council of America, the North American Nature Photography Association, and the Professional Photographers of America.

The Authors Guild, Betty Miles, Joseph Goulden, and Jim Bouton moved for certification as class representatives for the purposes of a class action.

Associations Have Standing.
After oral argument on May 3, Chin, now sitting by designation from the U.S. Court of Appeals for the Second Circuit, first rejected Google's standing argument.

An association might have standing to initiate an action on behalf of its members under a test set forth in Hunt v. Washington State Apple Advertisement Commission, 432 U.S. 333 (1977), which states:

[A]n association has standing to bring suit on behalf of its members when: (a) its members would otherwise have standing to sue in their own right; (b) the interests it seeks to protect are germane to the organization's purpose; and (c) neither the claim asserted nor the relief requested requires the participation of individual members in the lawsuit.

The first two prongs were easily satisfied by the plaintiffs in this case, the court said. Thus, only the third prong of the Hunt test was at issue. However, the court emphasized that this third prong was a matter of prudence, convenience, and efficiency, not a question of constitutional standing.

The court noted that this third prong often bars standing of an association if damages are at issue, because proof of harm would be highly individualized.

“By contrast, associational standing may be appropriate in cases involving pure questions of law or claims for injunctive relief in which little or no individualized proof is required,” the court said. Indeed, some necessity for individualized proof would not necessarily obviate standing in such a case.

Individual Participation Not Needed.
Applying the test to the instant facts, the court concluded that the third prong was satisfied here. The court found no need for individual participation of the groups' members, and given the prudential nature of the third prong, gave the benefit of any doubt to the plaintiffs.

The court emphasized that the associations sought only declaratory and injunctive relief, as opposed to the individual named plaintiffs, who also sought damages. There would be some participation needed from association members, the court acknowledged, to establish the ownership of asserted copyrights.

The court rejected Google's argument that addressing its fair use defense would require individual members' participation to establish the fair use factors involving the nature of the works and the effects of Google's use on the market.

According to the court, association members could be grouped to account for any differences regarding classification of works and uses. The court said:

While different classes of works may require different treatment for the purposes of “fair use,” the fair-use analysis does not require individual participation of association members. The differences that Google highlights may be accommodated by grouping association members and their respective works into subgroups. For example, in the Authors Guild action, the Court could create subgroups for fiction, non-fiction, poetry, and cookbooks. In the [visual artists'] action, it could separate photographs from illustration. The Court could effectively assess the merits of the fair-use defense with respect to each of these categories without conducting an evaluation of each individual work. In light of the commonalities among large groups of works, individualized analysis would be unnecessarily burdensome and duplicative.

Furthermore, the court said, equitable considerations favored allowing the associations to represent their individual members in this action. Not only that, but the participation of associations in litigation, as the Authors Guild has been doing in this proceeding from the beginning, “confers certain advantages on individual members and the judicial system as a whole.”

The court noted that only after the settlement failed did Google choose to bring up the question of the Authors Guild's standing in this proceeding. To the extent that the participation of the Authors Guild was in the interest of the individual members and in the interest of efficient justice, the court said, these justifications also applied to the visual artists' action.

Finally, the court noted that throughout the life of the Google Book Search project and this litigation, Google itself has been treating the copyright holders as a group.

“Google cannot now turn the tables and ask the Court to require each copyright holder to come forward individually and assert rights in a separate action,” the court said. “Because Google treated the copyright holders as a group, the copyright holders should be able to litigate on a group basis.

Class Action Status Granted.
Turning then to the plaintiffs' motion for class certification, the court applied a three-part test set forth in In re Initial Public Offerings Securities Litigation, 471 F.3d 24 (2d Cir. 2006), which applies the standards of Fed. R. Civ. P. 23.

The court found that the requirements of Rule 23--numerosity, commonality, and typicality--were satisfied in this case.

Google argued that the adequacy requirement had not been established, however, asserting that there were fundamental conflicts between the interests of the named plaintiffs and the interests of the absent class members.

In support of this argument, Google referred to a survey of authors, 58 percent of which said they approved of Google Book Search, and 17 percent of which said that they felt that they would benefit financially.

This argument was meritless, the court said. The issue of whether the authors' copyrights were infringed was not different for the named plaintiffs and the absent class members, the court said.

Furthermore, “that some class members may prefer to leave the alleged violation of their rights unremedied is not a basis for finding the lead plaintiffs inadequate,” the court said.

The issue for the adequacy requirement is whether the named plaintiffs will sufficiently advocate the question of liability, the court said.

Finally, the survey results do not establish as a fact that class members would not have the same interest as the named plaintiffs or that they would not participate in the litigation.

“Indeed, it is possible that some authors who 'approve' of Google's actions might still choose to joint he class action,” the court said.

The plaintiffs had also met the predominance and superiority requirements of Rule 23(b)(3), the court concluded. These require a determination that the common issues among the class members predominate over any individual issues and that a class action is the best method for resolving the claims.

The court thus dismissed Google's motion to eliminate the association plaintiffs from the proceeding and certified the plaintiffs' motions for class certification.

The Authors Guild was represented by Michael J. Boni of Boni & Zack, Bala Cynwyd, Pa. Google was represented by Ronald Lee Raider of Kilpatrick Townsend & Stockton, Atlanta.

By Anandashankar Mazumdar


Opinion at /uploadedFiles/Content/News/Legal_and_Business/Bloomberg_Law/Legal_Reports/058136May31(1).pdf

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