ADVERTISEMENTS

Unless you?ve been living under a rock for the past five years, you?ve heard about Google Book Search, an online database that Google is filling by scanning books from the collections of multiple academic libraries. Google partnered up with the libraries for access to their collections, concluding that it didn?t need to ask permission from copyright owners to copy the books or make them available online (with restrictions at Google?s discretion). Author and publisher groups brought a class action law suit, and Google sat down with the plaintiffs to hammer out a settlement agreement. The agreement, as presented to Judge Chin, then of the Southern District of New York, not only proposed to settle claims of prior copyright infringement, but also set up future business relationship between Google and copyright owners, using an opt-out mechanism instead of securing a license.

Judge Chin, sitting by designation as a newly appointed Second Circuit judge, issued an opinion Tuesday denying the motion to approve the settlement agreement. While the opinion does not rule on the merits of Google?s fair use defense, some of the court?s language suggests it would cast a skeptical eye on Google?s behavior in a case on the merits. Judge Chin used words like ?blatant? to describe Google?s copying activity, and quoted hostile language from objectors to the settlement, who called the opt-out strategy ?a shortcut? and ?a calculated disregard of authors? rights.?

I disagree that there was calculated disregard of authors? rights. The way many scholars have viewed the case, it was a close call whether Google could copy whole books and place them in an online database for search (and eventual commercialization). Google took a calculated risk, under a standard view of fair use analysis, and one that could still pay dividends if the case gets litigated. I don?t think Google's fair use argument is a close call at all, but not for the standard reasons.

In a paper now available for consideration by your local law review editorial board, I argue that built into the Copyright Act are the seeds of a limited right of first online publication. Historically, the right of first publication protected the ability of the copyright owner to decide when to bring a work to market, and the right was strong enough to trump an otherwise reasonable fair use defense. A right of first online publication would thus dispose of (or at least weigh heavily against) a fair use defense raised to excuse the unauthorized dissemination of a work online?even those works previously disseminated in a more restricted format.

Courts and scholars tend to treat publication as a ?one-bite? right, exhausted once the work was released in any format. A reexamination of its history indicates instead that the right of first publication often protected successive market entries. Where courts perceived a significant difference in scope and exposure to risk between a limited initial publication and more expansive subsequent publication, the right of first publication protected that subsequent entry.

In addition to the historical analysis, networks theory sheds light on the difference in scope between print and online publication. The dissemination of print books occurs in a conserved spread: while the physical embodiment of the content moves from point to point, the total number of copies in the network remains stable allowing the owner to correctly assess the risks inherent with market entry. Online dissemination occurs as nonconserved spread: any holder of a digital copy can instantly disseminate it to any point online while retaining the original. The differences are significant enough that print dissemination should not be held to exhaust or abandon the right of first online dissemination.

Copyright law will likely need to adapt to multiple format changes over the effective life of a copyrighted work. Recognizing the right of first publication as a rule governing transitions into new formats will provide courts, copyright owners, and technology innovators with firm rules allowing the copyright owner to decide if and when to adopt a new technology. Intra-format fair use is an important part of the bargain between copyright owners and society. We should be solicitous of intra-format fair use, but much less solicitous on inter-format fair use, particularly in those cases where unauthorized use imports the work into a previously unexploited format, and the new format is significantly broader in scope.

There are close fair use calls in disputes over unauthorized use of copyrighted works. Google?s opt-out copyright strategy, for books never before made available online, was no close call at all.

Bloggers, promote your law blog by nominating your blog for inclusion in USLaw.com's Law Blog Directory and RSS Reader. Benefits described.