Visual Artists and Google: Standing on the Shoulders of Ten Years of Digital Music Litigation

July 2010Art & Advocacy, Volume 6

Photographers and graphic artists recently filed a class action in New York federal district court against Google1 for massive copy-right infringement regarding its digital Book Project plan “to make the full text of all the world’s books searchable by anyone.”2 This new action by photographers and graphic artists follows on the heels of the highly publicized class action that the Authors Guild and Association of American Publishers brought against Google in 2005 in connection with the same project.3

The reference to “text” in the above quote is not without meaning. Google affirmatively decided to exclude illustrations, photographs, and other visual works that were not expressly licensed or in the public domain from the books it was scanning and making “searchable by anyone.” This has obvious ramifications for visual artists and the owners of visual works, and their concerns have given rise to the current litigation. The plaintiffs argue that photographers and illustrators should be compensated even when their works are blacked out after being digitally scanned (as is the case in the Google Book Project) because the images are still being reproduced without permission.

The Google Book Project

When Google announced its Google Book Project (originally called Google Print) in 2004, it promptly caused controversy among book publishers and authors. Google’s ambitious plan could be fulfilled only through the widespread copying of as many books as possible. Copyright holders, however, maintained that their consent was required before Google could engage in that copying or any subsequent display over the Internet. Google had reached agreements with major libraries to scan their books (including out-of-print and so-called “orphan works” whose copyright owners cannot be located). The digitized books were then made publicly searchable, and in the case of public domain works, fully accessible online. So far, some nine million books have been scanned and made available online.

Google reached a tentative settlement with the plaintiffs in the Author’s Guild case, but, as of this writing, it is still awaiting approval by the presiding judge.4 The proposed settlement raises numerous issues, such as the boundaries of copyright fair use, which are beyond the scope of this article. Significantly, however, while visual artists were included in the original suit, they were excluded just prior to the settlement.

Although visual artists sought to intervene in the Author’s Guild class-action settlement, in 2009 the judge denied their application, ruling that it was untimely, that visual artists were not authors, and that the settlement covers only “word-based material,” with the exception of illustrations in children’s books. At the same time, the judge noted that the “word-based” settlement would not affect copyright owners of “pictorial materials and binds them in no way,” so the new action by visual artists was anticipated.

The Visual Artists’ Concerns

The visual artists have two principal objections to Google’s approach. While the new class action is premised on alleged “massive copyright infringement,” the first major objection is primarily commercial. By excluding their visual works from the Author’s Guild settlement, which, if adopted, will provide for revenue sharing with authors and publishers of textual materials, Google relegates the visual elements to the sidelines, eliminating a substantial opportunity to monetize them in the digital realm.

While concerned about the uncompensated use of their works, the owners of visual works appear to be more concerned about their exclusion from the Author’s Guild settlement and the opportunity to monetize their works online as part of the commercial sales of textual works through digital downloads. Excluding visual works from the Google Books Project may have simplified Google’s legal issues, but it also denied the owners of visual works the opportunity to thrive in the evolving digital marketplace. The visual rights owners are looking for a seat at the negotiating table so that their works can be exploited, not ignored.

Second, the owners of the visual works have some of the same legal claims for copyright infringement as the authors of textual works in the Author’s Guild class action. As noted in the visual artists’ complaint, Google’s process involved first scanning the entirety of each book, including the visual elements. In most cases, however, Google subsequently displayed only the text portions of the books. The visual artists allege that Google’s scanning and digital copying of the photographs and visual art components of the books were done without the consent of the applicable copyright owners and therefore infringes, even though the visual works were not displayed to consumers. Emerging law seems to support the argument that incidental copying is an independent copyright event, regardless of whether the material is ultimately seen by consumers.

Lessons from the Digital Music Industry

One might expect that a failure to use or display a work does not result in an infringement. But, as various disputes in the digital music industry show, this is not necessarily so. During the development of digital media, much of the deal-making and litigation has related to the music industry. Over the past decade, many significant litigation battles have been over who controls the use of copyrighted music, and how the copyright owners can monetize their music online.

The debate continues, for example, about whether interactive streams of music (in which a consumer hears music but does not retain a copy of it) constitute solely public performances (as via radio broadcast), or whether they also implicate the reproduction right, which would require obtaining additional licenses and paying additional royalties. Another example is the ongoing battle over whether downloaded content protected by copyright invokes not only the reproduction right, but also the performance right, which also would require licenses from additional parties and the payment of additional royalties.

These disputes are based not on the commercial nature of the transaction, but on the technological means by which digital music is conveyed (e.g., the need to create temporary and ephemeral copies of music files on computers and servers), which are wholly incidental to the commercial purpose or value of the use of the music to the consumer. Before a digital service can stream or offer downloads of music, it first must make a digital copy of the work and place those files on its computer server. The act of copying the content onto the server is itself a reproduction of the copyrighted content, be it books, images, or music. Whether that copy, which is incidental to any commercial transaction with the consumer, requires a license in order to avoid infringement has been the subject of significant litigation.

In an early case involving streaming digital music, a court ruled in 2001 that Universal Music’s Farmclub online music streaming service required its server copies to be independently licensed.5 Eight years later, this was further addressed when the Copyright Royalty Board (“CRB”) (an administrative body charged with setting certain copyright royalty rates) ruled on the scope of the compulsory license for the reproduction of musical works under Section 115 of the Copyright Act.6 As the CRB was confronting a variety of issues with input from many interest groups, agreements were reached on some of the issues, including interactive streaming for which rates were negotiated. Agreement also was reached that server and other incidental copies required a license. In the process, the CRB established that such license was within the scope of the Copyright Act’s compulsory license, which does not require specific negotiation with the underlying copyright owners over royalties. But because Section 115’s compulsory license relates only to musical works and not visual works, it is inapplicable to the Google Books Project.

In another key case regarding digital music,7 MP3.com was creating online “lockers” in which it maintained copies of music previously purchased and obtained legally by consumers. Consumers could access the music in their online lockers to enjoy it on their various computers and other devices, without having to maintain copies of those same files on each device’s hard drive. Because it would be difficult, and inefficient, to require all consumers to upload many of the same musical files to their various lockers, MP3.com verified that consumers had particular digital files and then granted them access to those files in MP3.com’s own library. MP3.com created its library of digital music files by copying them from CDs. The court in the MP3.com case held that the act of copying those sound recordings onto MP3.com’s servers constituted an infringement of the copyright owner’s reproduction rights. Due to the number of tracks copied, and after finding that the defendant’s conduct was also willful, the court awarded the plaintiffs more than $50 million in damages, which lead to the demise of MP3.com.

Conclusion

Visual artists, like others, are fighting for their place in the future digital ecosystem, and they must affirm the validity of their digital rights in order to do so. As has repeatedly happened in the digital music field, the technological requirements of processing digital media have given the owners of those visual works a basis on which to assert a copyright claim—one that has nothing to do with the use of their content by the public. Whether the mere act of copying, without display or distribution, for the purpose of creating a searchable index and database of books containing such visual works, qualifies as incidental “fair use” remains to be tested, as does whether Google’s intent here distinguishes this case from those where willful intent to infringe was found.

While the owners of visual works included in the Google Book project are suing for copyright infringement mainly for unauthorized scanning, they are, in reality, more concerned about Google’s failure to use their content, their omission from the Author’s Guild settlement and, ultimately, the future business implications such omissions will have as the digital marketplace develops. In the end, however, the likely outcome will be some settlement that gives photographers and other visual artists a share of the digital commercialization pie and protects their economic interests.


1  The American Society of Media Photographers, Inc. v. Google, Inc., 2010 CV 2977 (S.D.N.Y.). Other plaintiffs include the Graphic Artists Guild; the Picture Archive Council of America; the North American Nature Photography Association; Professional Photographers of America; individual photographers Leif Skoogfors, Al Satterwhite, Morton Beebe, and Ed Kashi; and illustrators John Schmelzer and Simms Taback.

2  The Official Google Blog: http://googleblog.blogspot.com/2005/08/making-books-easier-to-fi nd.html

3  Author’s Guild v. Google, Inc., 05 CV 8136 (S.D.N.Y.).

4  Judge Denny Chin, who was presiding over Author’s Guild, has been appointed to serve on the Second Circuit Court of Appeals. As a result, the case may be reassigned and the new class action will be assigned to a different judge.

5  The Rodgers and Hammerstein Organization v. UMG Recordings, Inc., 2001 U.S. Dist. LEXIS 16111 (S.D.N.Y. 2001).

6  “Compulsory” here means that anyone who wants to use a copyright-protected musical work for certain purposes, which are specified under the Copyright Act, may do so upon payment of a statutorily specified royalty to the rights owner or the owner’s agent. While there are different types of compulsory licenses under the Act, under Section 115 digital music providers can obtain a compulsory license to digitally distribute copies of non-dramatic musical works that previously had been released to the public under authority of the copyright owner.

7  UMG Recordings, Inc. v. MP3.com, Inc., 92 F.Supp.2d 349 (S.D.N.Y. 2000).

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