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.
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.
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
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.
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
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
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.
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,
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.
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
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
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
“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
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
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
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
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.
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
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.
Opinion at http://pub.bna.com/ptcj/058136May31.pdf