Patent Law

Update on Google Book Settlement: Second Copyright Infringement Class Action Against Google, Inc., This Time by Visual Artists

By Mary Zachar

Update on Google Book Settlement: Second Copyright Infringement Class Action Against Google, Inc., This Time by Visual Artists

The newest dispute in the Author's Guild Google Book Settlement suit (previous post from 3/12/2010) arrived on April 7 when a coalition of photographers and illustrators led by the American Society of Media Photographers (ASMP), Graphic Artists Guild, the North American Nature Photography Association, the Professional Photographers of America, and represented by Mishcon de Reya New York LLP filed suit against Google, Inc., in the Southern District of NY, claiming that visual artists suffer distinct and separate infringements of their copyrights in their visual works (defined as 'original visual works such as photographs, illustrations, graphic art, and other visual art') embedded in books subject to Google's Book Search by (1) scanning and creation of a digital copy (2) storing, and (3) distributing and publicly displaying the visual works. This new suit, also in Judge Chin's courtroom, acting as a de facto intervention in the original settlement, demonstrates again that class actions are becoming the new lever for forcing licenses in IP.

Is there also leverage and efficacy in pre-suit mediation of copyright disputes – would a pre-suit demand for mediation have had any currency when Google's fair use defense serves as a specter if not a shield from parties' demands?

And does the earlier Perfect 10 case in which Google dealt with images play any role in this new dispute?

Are tomes of knowledge including visual images different from snippets of pornographic images (this question, already raised by Stephen Dang, Samuelson Law, Technology, and Public Policy Clinic in February, 2006)?

The Complaint by the Visual Artists

The Complaint (full text), which includes as lead plaintiffs, in addition to the Guilds, individual photographers Leif Skoogfors, Al Satterwhite, Morton Beebe, Ed Kashi and illustrators John Schmelzer and Simms Taback, is based on the 'massive copyright infringement' of the visual works of the class. As counsel for the coalition stated in its April 7 press release:

The new class action goes beyond Google's Library Project, and includes Google's other systematic and pervasive infringements of the rights of photographers, illustrators and other visual artists. This action by ASMP and its sister organizations was taken in order to protect the interests of owners of copyrights in visual works from the massive and organized copying and public display of their images without regard to their contributions and rights to fair compensation.

The Mediator Perspective

What strikes my mediator chord is whether the visual artists had to file suit to get to the negotiating table – was it evil Google which called their bluff, or was it the litigator's reaction when its claims were defensively challenged?  Could a pre-litigation mediation agreement with these stakeholders allowed collaboration on the Book Search architecture as related to visual artists? Is Google so certain that its fair use defense will withstand this nuanced challenge that it can risk losing its market position?

In his interview with Publishers Weekly on April 7, 2010, NYU Prof. James Grimmelmann observed:

'Maybe they are going to litigate this though to judgment, but my guess is that both sides are more than happy to work out a deal,' concluding that ' What we are seeing is the commencement of the age of filing copyright class actions as a way of creating universal licenses. … But as somebody concerned with the rule of law and the judicial system, this is an awful way to create copyright policy.'

And Eugene Mopsik, President of the ASMP in the same article, admitted to Publishers Weekly:

What we're interested in, in the long run is a place at the table, and an opportunity to be involved in the creation of a system that will ultimately lead to compensation by Google or those others who use our members' images online. By no means are we interested in prohibiting those uses. We're not trying to bury our heads in the sand and say these uses shouldn't be made. What we want is a hand in crafting a system.

From a mediator's perspective - what is the difference between this type of lever at the class action stage where attorneys fees can, as with the Author's Guild Amended Book Settlement, run into the mega-multi-millions of dollars, $30,000,000 as of February, 2010, (as described in the papers filed in support of the fee motion memorandum of law ) versus a confidential prelitigation mediated response to the same concerns which fueled the class action? And from an even broader and deeper perspective, should copyright policy be formed by private parties' vested interest in compensation for their intellectual property, or should we leave that to a forum where all stakeholders have a seat at the table?

Looking back to the beginning of the Google Book project, in 2006 Stephen Dang, writing for the Samuelson Law, Technology and Public Policy Clinic , raised the issue:

Similarly, the book snippets Google plans to make available in their Book Search Program would provide a new and valuable service by allowing searchers to quickly scan across many literary works to help us understand our cultural history. Copyright law is intended to 'promote the useful sciences and arts,' and therefore fair use defenses exist for copying that furthers these goals. Google wants to make the past available to everyone, and in doing so, help promote creativity. Independent authors lack the ability to provide such a service. So instead, the AAP seeks to focus the issue solely on monetary profit. The choice that best promotes creativity should be clear.

Eric van Ginkel raised a similar concern in his most recent blog about the antitrust issues in a mediated settlement. Can we in our limited roles as mediators protect the public interest? Isn't 'policy' in fact formed in a private agreement when access to content is locked up? How can others be free in a digital age to create without unlimited access to data and information – and can the marketplace with its consumer demands and regulatory watchdogs correct imbalances created by private party licensing agreements?

Substantive Merits of the Second Google Class Action

As far as the merits of the new action, Grimmelmann in his April 6 Laboratorium blog, published before the new Complaint was public but in anticipation of its claims, explained the problem Google may face with its Fair Use defense:

The central fact distinguishing this lawsuit from the Authors Guild suit is likely to be the fact that Google isn't indexing or displaying pictures. On the one hand, this is an argument in Google's favor: it's not doing anything that cuts into any kind of market for the images. This is true copying in the abstract. On the other hand, doesn't that tend to undermine the fair use claim? Google can't claim the benefit of a transformative purpose in the images, since it's not offering a search service tied to them. On balance, I'd be inclined to call the digitization of the pictures a fair use, on the theory that it's a necessary incident to the fair-use digitization of text for the transformative purpose of indexing. You can't scan the text without also scanning the pictures. But that's tentative and potentially contestable—and we'll see, soon enough, what the visual artists are actually alleging.

My quick review of the Complaint reveals that this new infringement action targets beyond copying and display, focusing equally on Google's stated intention to both scan and store the works in order to derive future benefits from its vast searchable electronic database by selling subscriptions and access to both institutions and consumers. What this new action does not change however is the exclusion of the public's interest and unseen future interests as parties invited to the table. For additional legal battles in the foreign markets, Peter Brantley at the Open Book Alliance updates and advises we should stay tuned.

- MZ

Full post as published by IP ADR Blog on April 19, 2010 (boomark / email).