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Google Settlement Article

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  • 1. Google Settlement – Observations Cynthia M. Gayton, Esq., Adjunct Professor of Engineering Law at The George Washington University1 Background Over the coming months, parties to what has been called the “Google Book Search Copyright Class Action Settlement” will have the opportunity to reconsider and perhaps modify the terms to this landmark class action settlement which is now before the Southern District of New York. The Settlement terms have been preliminarily approved by the court, but interested persons can still file objections or a notice of intent to appear at fairness hearings until September 4, 2009. This article addresses lingering issues which have not been resolved by the settlement, but are nonetheless critical considerations for those contemplating the far-reaching ramifications of this case. Publishers, authors and their representatives, as well as Google, have an interest in protecting and exploiting the constitutional rights set forth in Article 1, Section 8 “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Fundamentally, Google’s settlement with the Authors Guild, Inc. and the Association of American Publishers, along with the proposed settlement class, is an attempt to fill gaps in the copyright law.2 Several legal gaps in copyright law can be identified in this Settlement Agreement (“SA”) which was agreed to on October 28, 2008. One is whether it is a fair use to scan books which will be made available for both research and for profit purposes. Another gap is whether a library, which can assert an exemption to the Copyright Act under Section 108, can assign that privilege to others. Finally, there is a gap regarding whether there is an affirmative duty to find an “orphan work” copyright owner, and if not found, whether a privately formed entity can assert itself as that unidentified owner’s representative. From that perspective, the SA has ramifications far beyond the negotiated terms between and amongst the named parties insofar as that it attempts to negotiate the legal gaps and fix them in a contract for all works identified in the agreement. In addition, there are concerns about what this article has termed “legacy issues,” regarding the resulting ownership of assets generated under the settlement, e.g., 1) the Book Registry database and any other derivative works, which may conflict with Rightsholders’ (as defined in the settlement) interests to the extent that Google or the rights management entity, the Book Registry, assigns its interest to another and 2) whether Google has a duty to maintain or update the technology or services related to accessing the digitized works. Businesses like Google should take advantage of whatever means are available to them to succeed in the market place. However, it should not be on someone else’s back—including not only authors and publishers, but taxpayers—who may be railroaded into something in the name of expediency instead of long-term thinking about cultural legacies and access to knowledge. Google has made a substantial financial settlement to the tune of $125 million to resolve this dispute. A bystander can only wonder what ultimate purpose Google has in mind as it invests such sums to not only preserve copyright protected works in digital form, but exploit the rights granted in the agreement. © 2009 Bloomberg Finance L.P. All rights reserved. Originally published by Bloomberg Finance L.P in the Vol. 3, No. 26 edition of the Bloomberg Law Reports—Intellectual Property. Reprinted with permission. The views expressed herein are those of the authors and do not represent those of Bloomberg Finance L.P. Bloomberg Law Reports® is a registered trademark and service mark of Bloomberg Finance L.P.
  • 2. Outstanding policy issues on which some of the SA’s terms depend, have yet to be resolved. There is a bill before Congress regarding orphan works,3 which has not been entered into law. In addition, user privacy protection, heretofore diligently protected by public and private libraries, is not addressed in the settlement. Some time remains to consider and act upon these issues. The U.S. Department of Justice has initiated an investigation into the SA. In response, the U.S. District Court of the Southern District of New York has postponed the opt-out May 5, 2009 deadline to September 4, 2009, and the final fairness hearing has been rescheduled from June 11, 2009 to October 7, 2009. What follows below is an opinion. Although all of the nuances of the agreement are not addressed, time is short and the issues are complicated, and a dialog needs to start now to encourage settlement participants to prepare an agreement benefiting not only the known SA beneficiaries, but those who will inherit issues left unresolved. Scope of Settlement In 2005, author and publisher representatives, including the Author’s Guild and Association of American Publishers, upon investigation of Google’s book search features and its library project whereby Google entered into contracts with several libraries regarding the proposed digital scanning into electronic form (“digitizing”) and subsequent display and reproduction of those libraries’ collections, brought a class action lawsuit, alleging, among other things, copyright infringement. Copyright infringement may occur when someone other than the rights holder copies, makes derivative works, displays, performs publicly, or otherwise infringes a copyright owner’s rights, as enumerated in the Copyright Act. Google asserted that the scanning and the subsequent availability of the works to the public was fair use, and, therefore, was exempt from any requirement to either license or remunerate authors or publishers for making the works available, via Google’s search engine, to the participating libraries as well as the public. The fair use doctrine limits the copyright owner’s ability to assert its rights against an entity for specific purposes, such as for educational or library use, which would otherwise constitute copyright infringement. The SA asserts only to resolve claims related to those entities and individuals which are parties in the litigation. It does not have any effect with regard to any other outstanding claims or parties. The agreement, less exhibits, is 135 pages long. The definitions section itself takes up 18.5 pages. The parties to the agreement continue to disagree regarding whether or not Google participated or continues to participate in copyright infringement, but the parties, in order to serve what they consider to be the best interest of the litigants, proposed the settlement. The work covered by the agreement is work that is embodied in a “Book,” which is defined by the SA as a “written or printed work that (a) if a ‘United States work,’ as defined in 17 U.S.C. § 101, has been registered with the United States Copyright Office . . ., (b) . . . was published or distributed to the public or made available for public access as a set of written or printed sheets of paper bound together in hard copy form under the authorization of the work’s U.S. copyright owner, and (c) . . . is subject to a Copyright Interest.”4 It does not include periodicals, personal papers, musical compositions (where more than 35% of the copyright protected work contains music notation and lyrics), public domain works, or Government works. A “Copyright Interest” means “(a) ownership . . . of a United States copyright interest or (b) an exclusive license of a United States copyright interest . . . .”5 Notable features of the settlement include: • Entities that do not want to be part of the settlement have to “opt-out” by September 9, 2009. © 2009 Bloomberg Finance L.P. All rights reserved. Originally published by Bloomberg Finance L.P in the Vol. 3, No. 26 edition of the Bloomberg Law Reports—Intellectual Property. Reprinted with permission. The views expressed herein are those of the authors and do not represent those of Bloomberg Finance L.P. Bloomberg Law Reports® is a registered trademark and service mark of Bloomberg Finance L.P.
  • 3. • A Book Registry will be created to act on behalf of rights holders and will own and maintain a rights information database and will collect payments from Google on the rights holders’ behalf. • Google has the right to assign its rights and delegate its duties to a division or Affiliate of Google, provided that the entity agrees to be bound by the agreement. In addition, Google can assign the agreement without consent to a successor in interest in connection with a merger or sale of all or substantially all its assets. • Terms of the settlement agreement are binding upon heirs, successors, and permitted assigns of the parties and represented entities.   • Google is authorized in the United States to: o Sell individual Books (see definition above);6 o Place advertisements on Online Book pages; o Make other commercial uses of Books; o Create digital copies of all books obtained by Google from any source (not exclusively participating libraries). • In return Google will: o Pay a minimum of $45m into the settlement fund to pay the settlement class; o Pay $34.5 million to launch the operation of a book registry; o Pay attorney fees and costs. This list is not exhaustive, but is indicative of the SA’s scope. As compensation for Google’s consideration, it will have the right to make “Display Uses” and “Non-Display Uses” of the digitized Books.7 The participating libraries will have the right to use its digital copy.8 The SA does not authorize Google, any participating library or any host site to use the books in any way not authorized under the agreement. Status On April 21, 2009, a conference9 took place sponsored by the Information Technology and Innovation Foundation (“ITIF”) at the Library of Congress, Thomas Jefferson building. There, interested parties discussed the proposed settlement, as it relates to the Settlement Class only, between The Author’s Guild, Inc., the Association of American Publishers, Inc. (and others), and Google. Within days of this conference (April 29, 2009), the United States Department of Justice started an investigation into the settlement. The District Court has put the settlement on hold pending the Justice Department’s investigation.10 While the SA is under investigation, it may be worthwhile to address concerns that remain despite the SA. Some concerns go back to an initial inquiry this author made into the Google Books project which resulted in an article entitled “Alexandria burned—securing knowledge access in the age of Google,” VINE, Vol. 36, Issue 4, 2006. Specifically: 1. Who gets the rights related to this settlement agreement in the event of failure or sale? © 2009 Bloomberg Finance L.P. All rights reserved. Originally published by Bloomberg Finance L.P in the Vol. 3, No. 26 edition of the Bloomberg Law Reports—Intellectual Property. Reprinted with permission. The views expressed herein are those of the authors and do not represent those of Bloomberg Finance L.P. Bloomberg Law Reports® is a registered trademark and service mark of Bloomberg Finance L.P.
  • 4. 2. Will Google remain diligent in its infrastructure support when current technology becomes obsolete when it has already secured the right to use the works? In response to the first question, the settlement agreement’s assignment provision is vague, short, and, at the end. The SA addresses assignment in only one section: 17.30 Assignment. Google Inc. may assign its rights and delegate its duties . . . to a division or an Affiliate of Google Inc., provided that such division or Affiliate agrees to be bound by all of the terms . . . and . . . Google Inc. may assign this Settlement Agreement without consent to a successor-in-interest in connection with a merger or the sale of all or substantially all of its assets to which this Settlement Agreement relates. Any attempted assignment, delegation or transfer in derogation hereof shall be null and void. This Settlement Agreement shall be binding upon the heirs, successors, and permitted assigns of each of Plaintiffs, of Rightsholders and of Google.11 Why is this a problem? The parties agreeing to this settlement have no control over to whom Google assigns its rights. In an arms-length negotiation, this is not uncommon. However, this is not just any set of assets. These are assets that are comprised of library collections and any other resource to which Google gains access. One might think that there may be a more stringent requirement that any such assignment would require notice and approval. Moreover, an assignment can be made without consent to anyone who buys/acquires Google. Again, one might think that the rights holders would want, at minimum, the right to approve the sale of these significant assets, if not an option to buy any derivative or other assets created pursuant to the SA. In addition, it is worth noting that the Book Registry will own the database.12 While there are several clauses dedicated to payment management and allocation, there is no provision about what happens to the database in the event that the Book Registry discontinues its operations. Indeed, the agreement reflects upon this point with regard to Google’s rights to data access: “(c) Survival. Google’s rights to have access to data . . . will survive the expiration of the term of the U.S. copyright . . . and, to the extent that Google requires access to data after the expiration of the terms . . . the Registry, if still operational at such time, shall provide such access.”13 The Registry will be a not-for-profit entity formed under the SA, and is not limited to represent only those who participated formally in the Settlement. Instead, it includes the Settlement Class, made up of all Rightsholders, as defined by the Agreement, which have not opted out of the settlement. The problem with this permitted activity is two-fold: 1) what about the orphan works and 2) who gets to own or manage the database if the organization fails or otherwise is no longer in business? In response to the second question, the SA does not seem to include language relating to continued infrastructure and software support if currently dominant preservation technology becomes obsolete. Orphan Works Interestingly, what constitutes an “orphan work” is not defined in the SA, although Google intends to take advantage of legislation that would enable it to exploit such works.14 The Copyright Office doesn’t clarify what constitutes an “orphan work”; however, it does endorse the recent reintroduction of the Orphan Works Act. © 2009 Bloomberg Finance L.P. All rights reserved. Originally published by Bloomberg Finance L.P in the Vol. 3, No. 26 edition of the Bloomberg Law Reports—Intellectual Property. Reprinted with permission. The views expressed herein are those of the authors and do not represent those of Bloomberg Finance L.P. Bloomberg Law Reports® is a registered trademark and service mark of Bloomberg Finance L.P.
  • 5. If an author or publisher is either unknown, inaccessible, or otherwise no longer in existence, rights to such orphan works should be granted carefully. To the extent that rights holders knowingly enter into an agreement which may appear contrary to their interests, such a contract should be upheld. To the extent that a party is either unknown or incapable of assigning or granting rights to others, either a “guardian” or other trustee should be assigned to protect the interest of the rights holder and be subject to jurisdictional laws of the last known domicile to ensure proper personal property distribution either under the probate laws or business entity distribution laws. Because the government has an interest in the proper distribution of personal assets, it should also be the administrator. It appears that the Orphan Works legislation contemplates similar provisions. However, the legislation is light in both a definition of the term and in enumerating the requirements to meet a “diligent effort” to find the rights owner. Conclusion The SA faces many hurdles, not the least of which is the Justice Department’s new interest. Unfortunately, the SA does not close the policy and legal gaps identified above—and it has been made clear that it is not intended to do so. It is a settlement between private litigants. However, it will have an effect on copyright holders and the public and may serve as precedent for those who find themselves similarly situated. The debate about copyright protected works, universal access, and digitization deserves to be argued loudly and forcefully. Not only to ensure that rights are upheld and preserved by contract, but to ensure that constitutional rights are upheld and preserved for those who created the works—as intended. 1 Cynthia M. Gayton, Esq. holds a Bachelor of Arts degree in International Affairs from The George Washington University and a Juris Doctor degree from George Mason University in Arlington. Cynthia is a member of both the State Bar of Virginia and the District of Columbia Bar. Ms. Gayton operates a sole practice that specializes in intellectual property and corporate law. In addition, Ms. Gayton is an adjunct professor of engineering law at The George Washington University School of Engineering and Applied Sciences. She worked as an associate at Morgan Lewis & Bockius, concentrating in complex antitrust litigation. At the American Institute of Architects, she was associate counsel. Ms. Gayton is the author of Legal Aspects of Engineering, 8th Edition released in 2008 by Kendall/Hunt publishers. Finally, she is the author of several articles published by VINE: The Journal of Information Knowledge Management Systems, including: “Beyond Terrorism: Data Collection and Responsibility for Privacy,” Vol. 36, no. 4, 2006; “Alexandria Burned—Securing Knowledge Access in the Age of Google,” Vol. 36, no. 2, 2006; and “Legal Issues for the Knowledge Economy in the 21st Century,” Vol. 36, no. 1, 2006. The views expressed in this article are those of the author only and are not intended to represent the views of any other organization with which the author is affiliated. 2 http://www.googlebooksettlement.com/. 3 The Orphan Works Act is pending action in Congress: Senate bill S. 2913 and House resolution H.R. 5889. 4 SA § 1.16. 5 SA § 1.38. 6 Following is a Google Book search conducted several years ago and recreated here for discussion purposes. The topic is electronic surveillance and the Senate document is “Electronic surveillance within the United States for foreign intelligence” published by the United States Senate. This was the search result: © 2009 Bloomberg Finance L.P. All rights reserved. Originally published by Bloomberg Finance L.P in the Vol. 3, No. 26 edition of the Bloomberg Law Reports—Intellectual Property. Reprinted with permission. The views expressed herein are those of the authors and do not represent those of Bloomberg Finance L.P. Bloomberg Law Reports® is a registered trademark and service mark of Bloomberg Finance L.P.
  • 6. Once the document was opened, the following appeared: Selecting the option “Where is the rest of this book?” resulted in the following message: Senate documents are not subject to copyright. (Under Section 105 of the Copyright Act, “United States Government works: Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.”) This brings into question the accuracy of the metadata tags attached to these and similar documents which, in this instance, should be tagged as “not subject to Copyright protection under the Copyright Act, Section 105.” When the search was first conducted in 2006, the user was directed to places to purchase the bill, and was provided a link to WorldCat.org, which listed nearby libraries where a reprint or original could be found. Upon further research outside of Google Books, however, another electronic resource was found. 7 “Display Uses” means: “Snippet Display, Front Matter Display, Access Uses and Preview Uses.” See SA § 1.48. “Non- Display Uses” means: “[U]ses that do not display Expression from Digital from Digital copies of Books or Inserts to the public.” See SA § 1.91. 8 SA § 2.2, ¶ 20. 9 http://www.itif.org/index.php?id=235. 10 The investigation’s nature and scope is unknown at this time, but to the extent that the Justice Department is looking into whether the SA violates the antitrust laws, the following may be instructive. According to the Antitrust Guidelines for the Licensing of Intellectual Property, published by the Justice Department the intellectual property laws and the antitrust laws share a common purpose of “promoting innovation and enhancing consumer welfare.” www.usdoj.gov/atr/public/guidelines/0558.htm (viewed 4 May 2009). A statutory monopoly, like a copyright, is subject to some additional scrutiny when the rights holder attempts to leverage that statutory monopoly into another market. Specifically, the antitrust prohibition “against leveraging means that a property right in information can be used to monopolize the products emanating from the direct use or duplication of that information but cannot be used to acquire a monopoly in some other product. . . . The principle underpinning this prohibition is that the rewards to the creator of knowledge should be limited to the direct-use value of that knowledge, even though granting broader rights might well induce much more innovative effort in the quest to monopolize the entire economy.” Committee on Intellectual Property Rights and the Emerging Information Infrastructure, 2000, The Digital Dilemma, National Academy Press, Washington, DC. 11 SA § 17.30. 12 SA, Art. VI. 13 SA § 6.5(c) (emphasis added). © 2009 Bloomberg Finance L.P. All rights reserved. Originally published by Bloomberg Finance L.P in the Vol. 3, No. 26 edition of the Bloomberg Law Reports—Intellectual Property. Reprinted with permission. The views expressed herein are those of the authors and do not represent those of Bloomberg Finance L.P. Bloomberg Law Reports® is a registered trademark and service mark of Bloomberg Finance L.P.
  • 7. 14 Google will be able to take advantage of any future legislative change(s), such as legislation allowing the use of orphan works (if enacted). SA § 3.8(c). © 2009 Bloomberg Finance L.P. All rights reserved. Originally published by Bloomberg Finance L.P in the Vol. 3, No. 26 edition of the Bloomberg Law Reports—Intellectual Property. Reprinted with permission. The views expressed herein are those of the authors and do not represent those of Bloomberg Finance L.P. Bloomberg Law Reports® is a registered trademark and service mark of Bloomberg Finance L.P.