Google Book Search's Fair Use Defense Must Be Considered Prior to Class Status

Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...

By Anandashankar Mazumdar  


A federal district court erred in certifying a class of authors objecting to the mass scanning of books for the Google Book Search project without first addressing Google's claim of fair use, the U.S. Court of Appeals for the Second Circuit ruled July 1 (Authors Guild Inc. v. Google Inc., 2d Cir., No. 12-3200-cv, 7/1/13).

Vacating the certification of the class without prejudice, the court remanded the matter for proceedings on the fair use question. This decision comes nearly a year after the Second Circuit granted Google leave to seek interlocutory appeal of the certification (157 PTD, 8/15/12).

Years-Long Dispute

This is the latest development in a now seven-year-old dispute between copyright holders and Google Inc., triggered when Google announced its agreement with some of the world's most prominent libraries to digitize their entire holdings and to use the resulting database to aid full-text online searches of the books.

The Authors Guild and Google reached an agreement to settle the claims in 2008. However, after objections from third parties, the settlement was amended. In 2011, after comments from numerous sources, including the Antitrust Division of the U.S. Department of Justice, the U.S. District Court for the Southern District of New York rejected the proposed settlement as not being “fair, adequate, and reasonable” with respect to the rights of the members of the relevant class (57 PTD, 3/24/11).

In late 2012, the district court granted the Authors Guild leave to file a new amended complaint and move for class certification (183 PTD, 9/21/11). Judge Denny Chin determined that the plaintiffs had demonstrated common questions of law and fact sufficient to satisfy the standards set in Wal-Mart Stores Inc. v. Dukes, 131 S. Ct. 2541 (2011).

The court certified the following class:  

All persons residing in the United States who hold a United States copyright interest in one or more Books reproduced by Google as part of its Library Project, who are either (a) natural persons who are authors of such Books or (b) natural persons, family trusts or sole proprietorships who are heirs, successors in interest or assigns of such authors.  



The district court rejected Google's argument that addressing its fair use defense would require individual members' participation to analyze separately for each implicated work the fair use factors involving the nature of the works and the effects of Google's use on the marketability of the works. Google argued that its digitization project would benefit many members of the putative class and thus their interests would not be represented by the plaintiffs.

Fair Use Might Moot Class Questions

In a per curiam decision, the court set aside consideration of the argument that the plaintiffs might not be representative, but it stated that this assertion might indeed “carry some force.”

However, turning to the issue of the fair use defense, the court expressed its belief, pursuant to Fed. R. Civ. P. 23(a), that:  

the resolution of Google's fair use defense in the first instance will necessarily inform and perhaps moot our analysis of many class certification issues, including those regarding the commonality of plaintiffs' injuries, the typicality of their claims, and the predominance of common questions of law or fact.  



Furthermore, the court said, addressing the fair use question first would not prejudice the interests of the parties. Thus, the court vacated the class certification and remanded the matter for further proceedings.

The appellate panel comprised Judge Pierre N. Leval, Judge José A. Cabranes, and Judge Barrington D. Parker Jr. The court asserted that any further appeals on this matter would be heard by this same tribunal.

Google was represented by Seth P. Waxman of Wilmer Cutler Pickering Hale & Dorr, Washington, D.C. The Authors Guild was represented by Robert J. LaRocca of Kohn, Swift & Graf, Philadelphia.


Text is available at