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By Anandashankar Mazumdar
Jan. 4 — The loser in the Google Books search case has asked the U.S. Supreme Court to overturn a federal appeals court's rulings on transformative use, according to a petition for review filed Dec. 31.
The Authors Guild has been fighting Google Inc. in court since 2005 over its mass digitization of library collections in order to create a database for full-text searching.
The authors claim that Google's copying infringes their rights under U.S. copyright law, but an October ruling by the U.S. Court of Appeals for the Second Circuit said that Google's copying was protected as a fair use, because its use was transformative (Authors Guild v. Google, Inc., 804 F.3d 202, 116 U.S.P.Q.2d 1423 (2d Cir. 2015) (84 U.S.L.W. 514, 10/20/15).
In its petition for writ of certiorari, the Authors Guild argues that there is a circuit split regarding how the transformative use doctrine, as set forth under Campbell, should be applied.
On one hand, there are federal appeals courts that say that, in order to be transformative, a defendant's use must create “new expression, meaning, or message.” On the other hand, circuit court rulings say that a non-expressive use—such as full-text searching in this case—can qualify as transformative.
Furthermore, the Authors Guild suggests that the question of whether a use is transformative has swallowed up the fair use doctrine altogether.
The question of transformation is one consideration in the four factors of the fair use test as set forth by Section 107 of the Copyright Act of 1976, 17 U.S.C. §107.
However, some copyright scholars have noted that, in many cases, the fair use analysis seems to rest almost exclusively on that one consideration.
The transformative use doctrine is based on a 1994 Supreme Court ruling in a dispute between the owners of the Roy Orbison hit “Oh, Pretty Woman” and the rap group 2 Live Crew, which recorded a raunchy version of the song.
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), ruled that the 2 Live Crew version was a parody and, thus, a type of transformative use—one that was not within the exclusive rights of the copyright holder.
The Authors Guild has also brought a question of standing to the Supreme Court, and its petition asks for clarification regarding whether a membership organization like the Authors Guild, which does not hold any relevant copyright itself, has the standing to bring copyright infringement claims on behalf of its members, who might not individually have the means to pursue lawsuits that would be costly and unlikely to produce results that would cover such costs.
The questions presented in the petition are:
1. Whether, in order to be “transformative” under the fair use exception to copyright, the use of the copyrighted work must produce “new expression, meaning, or message,” as this Court stated in Campbell and as the Third, Sixth, and Eleventh circuits have held, or whether the verbatim copying of works for a different, non-expressive purpose can be a transformative fair use, as the Second, Fourth, and Ninth circuits have held.
2. Whether the Second Circuit's approach to fair use improperly makes “transformative purpose” the decisive factor, replacing the statutory four-factor test, as the Seventh Circuit has charged.
3. Whether the Second Circuit erred in concluding that a commercial business may evade liability for verbatim copying by arguing that the recipients of those copies will use them for lawful and beneficial purposes, a rationale that has been flatly rejected by the Sixth Circuit.
4. Whether a membership association of authors may assert copyright infringement claims on behalf of its members.
Paul M. Smith of Jenner & Block LLP, Washington, filed the petition. A response is due Feb. 1.
Google was represented by Seth P. Waxman of Wilmer Cutler Pickering Hale & Dorr LLP, Washington, before the Second Circuit.
To contact the reporter on this story: Anandashankar Mazumdar in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Mike Wilczek in Washington at email@example.com
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