A recent issue has arisen in the copyright field involving the digitization of printed works. The Library of Congress, Google Inc., Yahoo!, and Amazon.com are at the forefront of the movement, as all have begun digitizing works that are typically found in libraries. The Library of Congress intends to launch the World Digital Library, which will consist of an online collection of rare books, manuscripts, maps, posters, stamps, and other materials.

At the same time, Google Inc. is in the process of digitizing millions of books from university and public libraries, while Yahoo! has announced a similar plan in conjunction with Microsoft called the Open Content Alliance. Finally, Amazon.com intends to launch the Amazon Pages program, which will allow readers to buy both books and chapters of books online.

All of these initiatives give rise to an interesting question – does the digitization of these works constitute copyright infringement? The answer to this question depends on several factors, including whether permission to digitize was obtained from the copyright owner, whether the copier’s act falls under any exemption in the Copyright Act, whether it would be considered as a “fair use” as defined by the Copyright Act, or whether the work is in the public domain.

The cleanest way to avoid copyright liability is to obtain permission from the owner of the copyright. This can occur by sending the publisher a letter, or via agreement. This appears to be what Amazon.com has done in conjunction with its Amazon Pages program, as it is allowing the publishers and/or authors to set the fee for the cost to view the book or chapter.

Another way to avoid the issue is to only digitize works that are in the public domain. Items that are in the public domain are no longer subject to copyright protection. For example, many of the works that the Library of Congress intends to digitize are hundreds of years old and are no longer copyrightable.

Similarly, the Open Content Alliance launched by Yahoo! and Microsoft will contain books that are already in the public domain that they have received from libraries and archives.

A third way to avoid liability for copyright infringement is to fall within one of the exemptions provided by the Copyright Act. Essentially, these exemptions allow a party to use another party’s copyrighted material if the use satisfies certain conditions.

In this instance, the most pertinent exemption covers reproduction made by libraries for archival purposes. However, the exemption only allows the library to make a limited number of copies of the work for preservation or replacement purposes.

Thus, it does not appear that the digitization of the works for online display or distribution will satisfy the requirements of this exemption. The other exemptions provided by the Copyright Act do not appear to be relevant to the digitization of library works, as they generally cover the performance or display of a copyrighted work, not the reproduction or distribution.

The riskier, yet perhaps most rewarding manner in which to avoid liability is to argue that the digitization of the work constitutes a “fair use.” This is the path followed by Google Inc. in its digitization of works held by university and public libraries. Google has claimed that its duplication and reproduction of these items constitutes a “fair use,” because it is for the purposes of research and scholarship, which are in the public’s best interest.

“Fair use” is a defense to an allegation of infringement under the U.S. Copyright Act that permits the limited use of a copyrighted work without the copyright owner’s permission for purposes such as criticism, comment, news reporting, teaching, scholarship, or research.

There are four factors that the court considers when determining whether the use is a “fair use”: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

The risk involved with making the “fair use” argument is that each of these factors is analyzed on a case-by-case basis and the courts have not consistently applied a set of standards to the analysis of each factor. Thus, it is virtually impossible to have a bright line test governing when the copying, distribution, or display of a particular work would qualify as a “fair use,” and much is left to the interpretation of the specific court reviewing the matter.

In spite of this, many parties still rely upon the “fair use” argument when defending their reproduction, distribution, and display of another party’s copyrighted work.

In the matter involving Google, the controversy is one that may not be settled quickly, as it appears to speak to the essence of the “fair use” argument – the purpose of the use. Google argues that its intent is to allow the free exchange of ideas for research and scholarship, while the copyright owners argue that Google is a corporate entity that will profit off the digitization of their works.

Thus, the question is whether a corporate entity, such as Google, can legitimately digitize a work for research and scholarship purposes even if it may profit off the digitization of the work.

Furthermore, Google is also arguing that it is merely acting as a digital card catalog. As a result of its actions, several parties have filed suit against Google claiming that its actions constitute copyright infringement. See, The McGraw-Hill Cos., Inc. v. Google Inc., No. 05 CV 8881 (S.D.N.Y. filed Oct. 19, 2005); see also, The Authors Guild v. Google Inc., No. 05 CV 8163 (S.D.N.Y. filed Sept. 20, 2005).

The issue is not one that is likely to be solved any time in the near future. Just as with the dispute involving the digitization of music and films, this is likely a controversy that will see many “solutions” prior to finding a concrete resolution between both parties.

For more information, please contact:

Anthony Lupo
202.857.6353
lupo.anthony@arentfox.com

Sarah Bruno
202.775.5760
bruno.sarah@arentfox.com