Google Books & The Semantic Maze of Fair Use

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This week the Supreme Court declined to consider the Authors Guild v Google case, which lets stand the Second Circuit Court ruling that Google’s use of scanned published works for its search tool Google Books constitutes a fair use.  Various pundits and advocates have hailed this as a victory for the fair use principle.  In fact, I saw a headline the other day on Facebook that began with the words “Fair Use Wins …”, and although the decision is unquestionably a win for Google, the fair use principle actually remains mired in a semantic confusion about which the high court might have at least provided some clarity.  It’s all about the word transformativeness.

The fair use doctrine was added to the Copyright Law as part of the 1976 Act, and its original intent was to protect various types of expressions—commentary, parody, education, artistic remixes, reportage, etc.—that by necessity made limited and conditional uses of copyrighted works.  I’ve written longer posts about fair use doctrine in general, and won’t repeat all that here, but readers will remember that there are four interrelated factors to be considered* in assessing whether a use constitutes a fair use.  But in 1994, in a landmark case that was heard by the Supreme Court called Campbell v Acuff-Rose Music, the fair use doctrine grew a new appendage called “transformativeness” that has, in the age of the internet, not only become something of a fifth factor that seems to override consideration of the other four, but also has not been clearly defined as a term of art in legal practice.

As I continue to learn from my attorney friends, some of the words we use in everyday language become terms of art in the legal world, which generally means that court rulings have shaped, narrowed, or expanded the dictionary definition of key terms.  For instance, based on the current ruling by a federal court, the word articles can only mean “physical objects” with regard to the International Trade Commission’s authority to prohibit the importation of illegal goods.  So, if Congress wants to grant that body the authority to restrict the importation of digital data for illegal purposes, they’re probably going to have to rewrite the law.  (More about that another time, perhaps.)

The concept of “transformativeness” in fair use parlance was introduced by Judge Pierre Leval in his paper “Toward a Fair Use Standard” published in the Harvard Law Review in 1990, and coincidentally it was Leval who wrote the decision in the Second Circuit’s ruling in Authors Guild v Google.  But even though the “father of transformativeness” himself has ruled in this case, there is still much confusion about the term and what it means when considering fair use. As Thomas Sydnor of the Center for Internet, Communications and Technology Policy at the American Enterprise Institute writes about the situation:

“As cases applying this judge-made “transformativeness”-based approach to fair use accumulate, that term becomes increasingly incoherent, inconsistent, and counterintuitive. Collectively, its incoherence(s) now threaten to turn what was once a productively flexible multi-factor balancing test into little more than a perfunctory recitation of factors ending in judicial ipsa dixit – “because I said so.” Under such circumstances, rule of law cannot persist.”

Sydnor further points out that the word transform already exists in the 1976 Copyright Act in reference to the preparation of “derivative works,” which is another term of art to describe works such as spin-offs or adaptations into other media. These rights belong exclusively to the copyright owner of the original work and should not be confused with the more casual way we might use the word derivative to describe, or even criticize, a work that is mimicking some other work.  For instance, the above-mentioned Campbell case involves a work of parody that we might describe in common language as derivative, but not so in the context of copyright law.

Campbell v Acuff-Rose Music involved a new, expressive work, specifically 2 Live Crew’s raunchy parody of the song “Oh, Pretty Woman” co-written and originally performed by Roy Orbison.  The court held in Campbell that “the more transformative the new work, the less will be the significance of other factors.”  In this case, the court is referring to the extent to which 2 Live Crew “transformed” the original song to make a new song.  By contrast, though, Google does not “transform” any of the original works to create new expressions but instead uses the contents of the works to create a new search service called Google Books.

So, with these two rulings, we are looking at two significantly distinct definitions of the word transformativeness.  The first refers to modification of an expressive work in order to make a new expressive work.  The second implicitly refers to transformation of the external world (society) by the introduction of some new capacity (i.e. function) it did not have before.  This is particularly relevant because the language used by SCOTUS, asserting that “transformativeness” should “lessen the significance of the other factors,” can only rationally be applied—if the spirit of fair use doctrine is to be kept intact—to the first definition in which an original work is “transformed” to create a new, expressive work.  In the second usage of the word, in which the external world is assumed to be transformed by some new functional use, then “transformativeness” becomes too heavily weighted against the other factors, thus giving (for instance) a giant, wealthy service provider extraordinary latitude to define just about anything it does as socially “transformative.”

If the courts are going to apply this second definition of “transformativeness,” then it seems the consideration ought not to carry any more weight than the other factors because the second definition provides a basis for large-scale, corporate-funded uses of millions of works in a way that the first definition does not.  In other words Google Books may be deemed a fair use in the end, but it is not sensible that the application of “transformativeness” in Campbell be applied.  As it stands, the courts appear to be giving the same weight to “transformativeness” while using two very different definitions of the word.

Semantically speaking, I would argue that transformative is not exactly the right word to use when one specifically wants to describe some measure of modification to an existing thing like a creative expression.  The term is problematic because it begs exactly the confusion we now have in the courts—because transformative more properly describes the effects of an invention or expression to the external world (e.g. electricity was transformative in that it made modern society). While it would not be wrong in common parlance to describe, for instance, Jeff Buckley’s rendition of Leonard Cohen’s “Hallelujah” as “transformative,” even this usage would generally tend to convey that both song and listener are in some way transformed.  But in law, this is too vague.  This is why the attorneys refer to a term of art –a definition that is established within the language of the law that may or may not conform to everyday usage.  Sydnor points out that Leval himself provides little guidance in this regard when he quotes the judge thus:

“The word “transformative” cannot be taken too literally as a sufficient key to understanding the elements of fair use. It is rather a suggestive symbol for a complex thought….”

 “[T]he word “transformative,” if interpreted too broadly, can also seem to authorize copying that should fall within the scope of an author’s derivative rights. Attempts to find a circumspect shorthand for a complex concept are best understood as suggestive of a general direction, rather than as definitive descriptions.”

Right. I’m no legal scholar, but I think the concept “transformative” is a troublemaker.

Because the precedent SCOTUS ruling in Campbell is based on the use of “transformativeness” to describe the modification of an expressive work, it would make sense to settle upon this definition and to seek another term for considering functional uses akin to Google Books. As CEO of Copyright Alliance Keith Kupferschmid writes in a post on the organization’s website:

“The fair use doctrine is an equitable doctrine, but in functional use cases it hasnt worked that way because the transformative use test is ill equipped to effectively balance the competing interests at stake in these cases.  Fair use analysis should take into account not only the interests of owners and users but also the underlying policy objectives of the copyright law.  To account for these factors in a reasonable and balanced way, it is time for the courts to begin using a functional use test.”

Unfortunately for rights holders, the confusion about “transformativeness” that leaks into general consciousness results in a casual logic, which assumes that simply changing the context of a work, like placing a photograph on one’s Facebook page, is “transformative” enough to make a use fair.  Google Books is a misstep in that direction, and if this becomes the application of fair use, then that’s the ballgame.  There are no copyrights left. I can take your songs or images, put them on this blog, call it “transformative”, and get away with it.  That may be an attractive proposal to the internet industry, but it is far from the original intent of fair use doctrine in the copyright law, which was to protect expression, and it would have disastrous effects on the professional creative industry as we know it.


*Changed from original publication, which stated that the factors are considered by a three-judge panel.  As pointed out by Anonymous commenter, this is only true in an appellate court. A mistake I made in haste owing to the fact that many famous fair use cases are famous because they’ve gone to higher courts.

© 2016, David Newhoff. All rights reserved.

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5 comments

  • Have to disagree with the Leonard Cohen vs. Jeff Buckley opinion….
    what is transformative there?

    • Thanks for the comment, Dennis. I’m not really asserting that it is transformative. I’m suggesting that the word allows for enough poetic license in common parlance that one could choose to describe what Buckley does with the song as transformative and get away with it.

  • David–
    “the fair use principle actually remains mired in a semantic confusion about which the high court might have at least provided some clarity”

    That’s rich, given the likely deliberate confusion and misinformation you’re sowing in this article. For example:

    “The fair use doctrine was added to the Copyright Law as part of the 1976 Act”

    1. Nope. Fair use has existed in copyright law almost as long as there’s been copyright law. In the U.S., the first major fair use case was Folsom v. Marsh in 1841. The 1976 Act didn’t add it, which implies that it didn’t previously exist; it codified it, recognizing the great importance of the doctrine.

    “readers will remember that there are four interrelated factors to be considered by a three-judge panel in assessing whether a use constitutes a fair use”

    2. Only if you’re in an appellate court that happens to consist of such a panel. Any judge that can hear a copyright case can determine fair use. Individual trial court judges do it all the time.

    “the fair use doctrine grew a new appendage called “transformativeness” that has, in the age of the internet, not only become something of a fifth factor that seems to override consideration of the other four”

    3. Wrong. The first factor concerns the purpose and character of the use; whether a use is transformative will largely fall into this factor, though there may be some effect on the third and fourth factors. Also, the statue very clearly allows courts to consider any number of factors, so long as the enumerated four are included; there’s nothing limiting the analysis to just those four.

    Further, the multi-factor analysis shouldn’t be taken too seriously; the operative language in the statute really just exempts all fair uses. The analysis is merely meant to be a tool to help courts determine if a use is fair. It would be error to let the analysis swallow the actual rule, and caselaw is pretty clear that the test is not to be applied in a mechanistic fashion.

    “the preparation of “derivative works,” which is another term of art to describe works such as spin-offs or adaptations into other media. These rights belong exclusively to the copyright owner of the original work”

    4. More semantic confusion. Everyone has the right to prepare derivative works. The copyright holder isn’t the only person who holds that right, which appears to be the sense of ‘exclusive’ that you’re using. Rather he holds an exclusive right, which is another term of art meaning a right to exclude others. In fact it’s entirely possible to hold an exclusive right while also lacking the right to engage in the underlying conduct.

    That’s probably enough semantic confusion pointed out for now.

    “By contrast, though, Google does not “transform” any of the original works to create new expressions but instead uses the contents of the works to create a new search service called Google Books.”

    5. They’ve created an index, which is a classic example of a new work that is well within the scope of traditional fair use. Your later claim that there are two types of transformative uses falls flat.

    “If the courts are going to apply this second definition of “transformativeness,” then it seems the consideration ought not to carry any more weight than the other factors”

    6. None of the factors ever are supposed to carry any more weight than the others.

    “because the second definition provides a basis for large-scale, corporate-funded uses of millions of works in a way that the first definition does not.”

    7. But that’s a stupid reason. There’s nothing inherently contrary to the goals of copyright law, or inherently bad, for that matter, about ‘large-scale corporate-funded uses of millions of works.’ You’re begging the question pretty badly here.

    “Right. I’m no legal scholar, but I think the concept “transformative” is a troublemaker.”

    8. It’s a pretty easy one, actually. If you want something difficult, try ‘separability’ from copyright’s utility doctrine. Physical separability is alright, but conceptual is a bitch.

    “‘Fair use analysis should take into account not only the interests of owners and users but also the underlying policy objectives of the copyright law.'”

    9. That’s an odd statement. Fair use should only take into account the interests of underlying policy. There’s not even anything interesting in the interests of copyright holders and users; they’ll all always act in a self-interested manner. In fact, that predictability is key to copyright policy.

    “Google Books is a misstep in that direction, and if this becomes the application of fair use, then that’s the ballgame. There are no copyrights left. I can take your songs or images, put them on this blog, call it “transformative”, and get away with it.”

    10. Well, Chicken Little, you’re wrong as usual — most notably in that Google Books has been up and running for over a decade now without any ill effects. But I suppose that if the maximalists were to view this as checkmate and give up trying to ruin copyright, that would be a truly excellent victory.

    • Anonymous —

      I’ve taken the liberty of numbering your responses for the sake of concision.

      1. I did not state that fair use as a concept appeared in 1976, only that it was added to the law in 1976. I believe this statement to be true.

      2. Fair enough. An error made in haste that I shall correct but not one that affects the thesis.

      3. You’re right about the first factor, but I am right that the initial intent of fair use doctrine applied to uses for the purpose of expression and that Google Books and Campbell represent two different definitions of the word “transformativeness.” In this case, you are not only arguing with me, but also with Kupferschmid, Sydnor, and quite a few other copyright experts I know. As such, if you have a different view, it would be interesting to hear your argument, but simply labeling this one as “wrong” is insufficient, especially when we can know these attorneys’ credentials and have no idea who you are. (This response applies to several of your comments.)

      4. You’re not being clear here, but it is a fact that copyright holders have the exclusive right to prepare and distribute “derivative works” as that term is defined within the context of the law, and my examples of spin-offs or adaptations are correct. Your comment sounds like an opinion more than a matter of law. The owners of Marvel have the exclusive right to make “Agents of Shield,” which is a derivative work based on “The Avengers” film franchise, which is a derivative work based on the individual characters owned by Marvel. You may disagree with the idea that this is how it should be, but I don’t see how you can disagree with the fact that this is how it is.

      5. Again, I stand by the premise that two different definitions of “transformativeness” are being applied; and again, you’re also arguing with Kupferschmid and Sydnor.

      6. Perhaps, but SCOTUS appears to have left us with that language in Campbell, which then seems to have been applied in Google Books and also in TV Eyes, if memory serves. Moreover, I believe my observation that “transformativeness” is being very broadly interpreted in the public is correct.

      7. That may be your opinion. But considering the “transformativeness” in the use of a single work for a single creative expression is a radically different discussion from one that considers the social “transformativeness” of a use of millions of works. To argue that they are not different is stupid. And I don’t even argue that GB is not a fair use, only that the confusion persists.

      8. Again, you’re just right and other experts are just wrong because you say so. Okay.

      9. Here you are directly rebutting a quote from Kupferschmid. And your statement that copyright holders will “always act in a self-interested manner” is contradicted by volumes of anecdotal evidence; rights holders act in a variety of ways with regard to their rights, including recognizing fair uses that they do not contest.

      10. Name calling is always sound reasoning, but you’ve taken this sentence out of context from the rest of the paragraph, which actually projects a possible future in which “transformative,” as applied in Google Books, becomes so broadly defined that the scenario I propose would be real. In fact, last September, Fox News was in an infringement conflict after posting an unlicensed 9/11 photo on its Facebook page. Before the case settled, Fox had initially begun to argue that simply putting the photo on its social media page was “transformative.” So, I’m not completely inventing hypotheticals out of thin air.

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