• Selected 2005 Cyberspace Intellectual Property Cases
• Google's Print Library Project: The Future Of Copyright In The Digital Era

Mr. Goldman is an assistant professor at Marquette Law School in Milwaukee, WI.
Mr. Ottaviani is a partner at Edwards Angell Palmer & Dodge, LLP in both Providence, RI and Boston, MA.

Cyberspace continues to present fascinating and novel intellectual property issues. What follows is our attempt at identifying some of the more significant Cyberspace Intellectual Property decisions of 2005. Once again, it was quite a year, with the U.S. Supreme Courts decision in the Grokster case heading the list. (The Grokster case is the only one to make our top 10 list in each of 2003, 2004 and 2005!) Cyberspace intellectual property law is maturing, as evidenced by the fact that among our top ten cases are one Supreme Court and five U.S. Circuit Court of Appeals cases. And we are also seeing the courts struggling with the boundaries of trademark law, as they recognize that not every use of someone elses trademark in Cyberspace provides a basis for an infringement claim.

Here are our top ten cases (thirteen, actually), followed by other cases which we feel are significant enough to mention. This list is not meant to be exhaustive, nor are the cases presented in any particular order of importance.

1. Supreme Court Finds Grokster Liable For Inducing Copyright Infringement On A Gigantic Scale

Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., __ U.S. ___, 125 S. Ct. 2764, 162 L. Ed. 2d 781 (2005). Leave it to the Supreme Court to figure out a way to find Grokster liable for inducing copyright infringement on a gigantic scale without overturning or affirming the 1984 Sony decision. The Supreme Courts unanimous holding is pretty succinct: We hold that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties. The Court also limited the Sony decision to situations where a claim of liability is based solely on distributing a product with alternative infringing and non-infringing uses, with knowledge that some users would follow the unlawful course. The concurring opinions analyze the case in terms of Sony, with Justice Ruth Ginsberg concluding that 10 percent non-infringing use probably would not be enough to avoid liability, while Justice Stephen Breyer concludes that 10 percent probably would qualify as substantial non-infringing use.

2. Not Seeing Eye-to-Eye Use of Trademark in Directory That Triggers Pop-Up Ads Is Not Trademark Infringement

1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir.), cert. denied, 126 S.Ct. 749 (2005). The owner of a website and the mark 1-800 Contacts sued a competitor and WhenU.com, to enjoin them from delivering to computer users competitive pop-up Internet advertisements, in violation of federal and state copyright, trademark, and unfair competition laws. As reported in our list of Selected 2003 Cyberspace Intellectual Property Cases, the U.S. District Court held that: (1) 1-800 Contacts failed to establish a likelihood of success on its copyright claims, but (2) 1-800 Contacts established a likelihood of success on its trademark infringement claims.

On appeal, the U.S. Court of Appeals for the Second Circuit threw out the trademark claims: We hold that as a matter of law, WhenU does not use 1-800s trademarks within the meaning of the Lanham Act, 15 U.S.C. S1127, when it: (1) includes 1-800s website address, which is almost identical to 1-800s trademark, in an unpublished directory of terms that trigger delivery of WhenUs contextually relevant advertising to [computer users]; or (2) causes separate, branded pop-up ads to appear on a [computer users] computer screen either above, below or along the bottom edge of the 1-800 website window. This brings the Second Circuit law in line with that of other federal courts that have found that WhenUs use of the trademarks in a database that is not seen by the computer user is not a trademark use. See U-Haul Intl, Inc. v. WhenU.com, Inc., 279 F. Supp. 2d 723 (E.D. Va. 2003); Wells Fargo & Co., Inc. v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003) (both of which appeared in our list of Selected 2003 Cyberspace Intellectual Property Cases).

Disclosure: In the Second Circuit appeal, Eric Goldman filed an amicus curiae brief on behalf of the Electronic Frontier Foundation urging reversal of the district court decision.

3. When Will It All End? Maintaining An Index of Infringing Works, Without More, Is Not Distribution of Infringing Work

In re Napster, Inc. Copyright Litig., 377 F. Supp. 2d 796 (N.D. Cal. 2005). After the old Napster was shut down for infringing the record companies copyrights, the record companies have continued to pursue the entities that invested in Napster before it ceased operations. The record companies have alleged that, by investing in Napster and assuming control of the operation of the Napster file-sharing network, the investors contributorily and vicariously infringed the record companies copyrights.

To find the investors liable for contributory or vicarious infringement, the record companies first have to prove that there was an act of direct copyright infringement. The record companies have offered three theories of direct infringement as a basis for their secondary claims against the investors: (1) the Napster users who uploaded and made MP3 files available on the Napster network engaged in the unauthorized distribution of the record companies copyrighted works in violation of Section 106(3) of the Copyright Act; (2) the downloading of MP3 files by Napster users infringed the record companies exclusive rights to reproduce their copyrighted works under Section 106(1) of the Copyright Act; and (3) that Napster itself violated the record companies exclusive distribution rights under Section 106(3) by indexing MP3 files that its users posted on the Napster network.

In this decision, Judge Marilyn Patel shot down the third theory. The record companies relied primarily on the U.S. Court of Appeal for the Fourth Circuits decision in Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199 (4th Cir. 1997), pointing to language that a copyrighted work is distributed within the meaning of Section 106(3) whenever it is made available to the public without authorization of the copyright owner. Judge Patel found Hotaling distinguishable, because the infringing works in the Napster case never resided on the Napster system, while the library in the Hotaling case had possession of the infringing copies in addition to listing them in its index. Interestingly, she went on to find that, to the extent that the Hotaling decision suggests that a mere offer to distribute a copyrighted work gives rise to liability under Section 106(3), that view is inconsistent with the text and legislative history of the Copyright Act. As a result, maintaining an index of infringing works, without doing more, is not distributing the infringing works. The case proceeds with further discovery on the uploading and downloading theories, however, so stay tuned next year for updates.

Editorial Note: John Ottaviani has never liked the Hotaling decision, so he hopes Judge Patels decision stands.

In re Napster Copyright Litigation, No. M:00-CY-61369-MHP, slip op. (N.D. Cal. May 11, 2005). Prior to deciding the summary judgment motion, Judge Patel denied the record companies leave to file a supplemental memorandum in opposition to Napsters summary judgment motion, arguing that the recently passed Artists Rights and Theft Prevention Act of 2005 (Art Act) supported the record companies argument that maintaining the index of downloadable files does infringe the distribution right under Section 106(3) of the Copyright Act. Judge Patel ruled that the record companies could not file the supplemental brief, because she found that the Art Act did not change anything as to how Section 106(3) should be interpreted.

4. Incredible Hulk Rescues Paragon City! Use Of Comic Book Character Names By Players For Video Game Characters Is Not Trademark Infringement.

Marvel Enters. Inc. v. NCSoft Corp., 74 U.S.P.Q. 2d 1303 (C.D. Cal. 2005). NCSoft creates, markets, distributes and hosts City of Heroes, a computer video game that allows players to play online and create characters that are virtually identical in name, appearance and characteristics to the comic book characters owned by Marvel. There are a number of procedural motions dealt with in this opinion, but the interesting discussion is the courts dismissal of the contributory trademark infringement and vicarious trademark infringement claims. Although game users create character names that are the same as Marvels registered trademarks, the court concludes that the game users are not using these names in commerce in connection with any sale or advertising of goods and services. Thus, there is no use in commerce of the marks, so there is no direct trademark infringement on the part of the game users for which NCSoft could be contributorily or vicariously liable, and these claims were dismissed. Marvel was allowed to proceed on its contributory and vicarious copyright infringement claims theories.

Marvel Enters. Inc. v. NCSoft Corp., No. CV 04-9253-RGK (C.D. Cal. Aug. 22, 2005). In a later ruling, NCSofts claims that Marvel sent bogus takedown notices under the false DMCA notification provisions of 17 U.S.C. section 512(f) survived a motion to dismiss. The court also rejected Marvels argument that a service provider under Section 512(f) has to be passive and innocent. Among other things, NCSoft alleged that Marvel employees created the infringing knock-off characters that Marvel then demanded be removed from NCSofts network.

The case settled in December 2005. The terms of the settlement have not been publicly reported.

5. Making A Mark Patent Marking Statute Applies To Websites

A pair of patent cases illustrates how the traditional patent concept of marking should be applied in cyberspace. Under 35 U.S.C. section 287(a), one who owns a patent is entitled to recover damages from the time when it actually notifies the infringer of its infringement, or when the owner begins marking its products with a patent notice containing the number of the patent and otherwise complying with Section 287(a), whichever is earlier. This marking statute does not apply to patent claims that are addressed to a method of doing something (as opposed to a tangible article or apparatus), because ordinarily there is nothing to mark. When a patent contains both method and apparatus claims, the patent owner is required to mark to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given. American Med. Sys., Inc. v. Medical Engg Corp., 6 F.3d 1523, 1537 (Fed. Cir. 1993).

Soverain Software LLC v. Amazon.com, Inc., 383 F. Supp. 2d 904 (E.D. Tex. 2005). In this case, Soverain alleged that Amazon.com infringed three patents owned by Soverain covering a network-based sales system that included a buyer computer, a selling computer, a payment computer and a virtual shopping cart. All of the patents contained both method and apparatus claims. Amazon moved for partial summary judgment to limit its damages, claiming that Amazon did not have notice of the alleged infringement until the suit was filed because Soverain did not comply with the marking statute. The court rejected Soverains argument that a website is an intangible object for which marking is not required. The court took notice of numerous websites that contain patent notices, and found in favor of Amazon on this issue.

IMX, Inc. v. Lending Tree, LLC, No. Civ. 03-1067-SLR, 2005 WL 3465555 (D. Del. Dec. 15, 2005). IMX alleged patent infringement against Lending Tree for infringement of a patent owned by IMX for a method and system for trading loans in real time and placing loan applications up for bid by a plurality of potential lenders. The patent was implemented through software that was accessed through an Internet website, but the website itself was not part of the patent claims. Information on the website talked about patented technology, but one reached the patent number and a copy of the patent only after a number of obscure links. Lending Tree moved for partial summary judgment limiting damages, due to IMXs failure to comply with the patent marking statute. IMX tried to distinguish Soverain by arguing that the website itself was not the patented invention, and did not practice the patent, but was just a means through which the public and the brokers accessed the patented technology. The court, however, found that the website is intrinsic to the patented system and constitutes a tangible item to mark by which notice of the asserted method can be given, and granted Lending Trees motion.

6. GripeSites I Use Of Expressive Domain Names That Are Unlikely to Cause Confusion Is Not Trademark Infringement

Faegre & Benson, LLP v. Purdy, 367 F. Supp. 2d 1238 (D. Minn. 2005). Yet another chapter in the long-running saga between the Minnesota law firm and an anti-abortion activist, who is of the opinion that Faegre & Benson is supporting abortion and is attempting to silence his speech criticizing the alleged support of abortion. Purdy typically posted his opinions on a webpage that mimics Faegres webpage, generally with a disclaimer such as Official Faegre Website Parody or similar language. The source code of his counterfeit pages also contained metatags, including the trademarked term Faegre & Benson and some meta-descriptions taken from Faegres webpage. Faegre & Benson obtained a preliminary injunction in January 2004. After Purdy continued his behavior, Faegre & Benson filed a motion for contempt. After reviewing the situation, the court found: (1) that there is no trade dress infringement because of the overall dissimilarity of the webpages and the clear disclaimer; (2) that Purdy has the right to use expressive domain names that are unlikely to cause confusion (such as faegre-law-love-democraticjudgemichaeldavis-judgeanmontgomery.com), even if they include the term Faegre or Faegre & Benson, because this constitutes a statement of Purdys opinion rather than a bad faith intent to profit from Faegres protected mark; and (3) that Purdy could legitimately use Faegres trademarks in the metatags for his webpages in order to refer to Faegre and to describe the content of his website (but not in order to divert Internet users from Faegres website).

7. Yes, Virginia, Unauthorized Downloading Of Copyrighted Music Does Constitute Copyright Infringement

BMG Music v. Gonzalez, 430 F.3d 888 (7th Cir. 2005). Gonzalez downloaded more than 1,370 copyrighted songs during a few weeks and kept them on her computer until she was caught. She tried to argue that, despite the assumption in Grokster and Aimster that people who download music are primary infringers, her activities were protected by the fair use defense under the terms of 17 U.S.C. section 107. With respect to 30 songs in question in this lawsuit that she downloaded, played and retained on her hard drive (and which she did not previously own), the court rejected her fair use argument. In doing so, the court noted that there are various alternative ways for Gonzalez to have sampled songs for purchase on an authorized basis, including radio, streaming Internet radio, iTunes, and other Internet licensing intermediaries such as Yahoo!, Real Rhapsody and SNOCAP.

8. Avalanche! Software Developers Contracted Away Their Right To Reverse-Engineer Blizzards Games

Davidson & Assocs. d/b/a Blizzard Entertainment, Inc. v. Jung, 422 F.3d 630 (8th Cir. 2005). Blizzard creates and sells software games for personal computers, and operates battle.net, a 24-hour online gaming service available exclusively to purchasers of Blizzards computer games via the Internet or local area networks. To play a game contained on a CD-ROM, a user must first install the game onto a computer and agree to the terms of an end-user license agreement and terms of use, both of which prohibit reverse engineering, by clicking on an I agree button during the installation process. First time users of battle.net are also shown terms of use which, among other things, prohibit reverse engineering. The outside of the package for the game contains a statement that use of the game is subject to the end-user license agreement and that use of battle.net is subject to the terms of use. The defendants are lead developers for a volunteer project that developed a service that emulates the battle.net service and permits users to play online without using battle.net. The developers attempted to mirror all of the user-visible features of battle.net. To make its service compatible with battle.net and Blizzards game software, the defendants used reverse engineering to learn Blizzards protocol language and to make sure the new service worked with Blizzards games.

After the parties settled a number of claims, the U.S. District Court granted summary judgment for Blizzard and determined that: (1) Blizzards software terms of use and end-user license agreement were enforceable contracts; (2) the defendants waived any fair use defense; (3) the agreements did not constitute misuse of copyright; and (4) the defendants violated the anti-circumvention and anti-trafficking provisions of the Digital Millennium Copyright Act.

On appeal, the U.S. Court of Appeals for the Seventh Circuit rejected the defendants argument, relying upon Vault v. Quade Software Ltd., 847 F.2d 255 (5th Cir. 1988), that the state breach-of-contract claims were preempted by federal copyright law. The Seventh Circuit distinguished the Vault decision because the state contract law in Blizzard neither conflicts with the interoperability exception of the Digital Millennium Copyright Act (the DMCA) nor restricts rights given under federal law. Citing Bowers v. Bay State Tech., Inc., 320 F. 3d 1317 (Fed. Cir. 2003), the Seventh Circuit stated that private parties are free to contractually forego the limited ability to reverse-engineer a software product under the exemptions of the Copyright Act. By agreeing to the terms of use under the end-user license agreements, the defendants expressly relinquished their rights to reverse-engineer.

The Seventh Circuit also affirmed that the defendants reverse engineering violated the anti-circumvention and anti-trafficking prohibitions of the DMCA, and were not protected by the interoperability exception because the circumvention in this case constitutes infringement.

9. GripeSites II Another Gripe Sites Prayers Are Answered

Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005). Lamparello registered the domain name fallwell.com after hearing Rev. Jerry Falwell give an interview in which he expressed opinions about gay people and homosexuality that Lamparello considered offensive. The ensuing site Lamparello created contained in-depth criticism of Falwells views. The home page prominently stated this website is not affiliated with Jerry Falwell or his ministry and provided a hyperlink to Falwells website. Lamparello never sold goods or services on his website. After receiving cease-and-desist letters from Falwell, Lamparello filed a civil action seeking a declaratory judgment of non-infringement in order to avoid losing the domain name. The U.S. District Court granted summary judgment to Falwell on his claims of trademark infringement, false designation of origin, federal and state unfair competition and violations of the federal anti-cybersquatting law.

On appeal, the U.S. Court of Appeals for the Fourth Circuit reversed, finding that Lamparellos use of Farwells name was not likely to cause confusion as to the source of the website and further found that fallwell.com did not infringe. Important factors in the courts decision were: (1) that the websites looked nothing alike; (2) that Lamparello clearly created his website intending only to provide a forum to criticize Falwells ideas, not to steal customers; (3) that Falwell and Lamparello offer opposing ideas and commentary, not similar goods and services; and (4) that anecdotal evidence indicated that those searching for Falwells site and arriving at Lamparellos site quickly realized that Falwell was not the source of its content.

In an interesting discussion, the Fourth Circuit expressly refused to adopt the initial interest confusion doctrine and interpreted the use of that doctrine by the U.S. Court of Appeals for the Ninth Circuit as applying only in cases involving one businesss use of anothers mark for the formers own financial gain, not in cases involving gripe sites. The Fourth Circuit also rejected the anti-cybersquatting claim because Falwell could not demonstrate that Lamparello had a bad faith intent to profit from using the www.fallwell.com domain name, citing TMI, Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004) and Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004) (both of which appeared in our list of Selected 2004 Cyberspace Intellectual Property Cases).

10. GripeSites III Bosley Medical Scalped By Ninth Circuit

Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005). Kremer was dissatisfied with the hair restoration services provided to him by Bosley Medical Institute. To get even, Kremer started a website at bosleymedical.com which was uncomplimentary of Bosley. Shortly after registering the domain name, and before posting its content, Kremer went to Bosleys office and offered Bosley an opportunity to discuss the issue but did not mention domain names or make any references to the Internet.

The Ninth Circuit held that Kremers use of Bosley Medical in the domain name was non-commercial and unlikely to cause confusion, and affirmed the dismissal of Bosleys trademark infringement and dilution claims. We hold today that the noncommercial use of a trademark as the domain name of a website the subject of which is consumer commentary about the products and services represented by the mark does not constitute infringement under the Lanham Act. The court found that the U.S. Congress intended that the Lanham Act and the Federal Trademark Dilution Act apply only to marks used in connection with the sale, offering for sale, distribution, or advertising of any goods or services. The court found that Kremers website contained no commercial links and at no time offered for sale any products or services, or contained paid advertisements from any other commercial entity. The Ninth Circuit also rejected as too attenuated an argument that Kremers site was commercial because from links there users could reach a discussion group site, which in turn contained advertising. The Ninth Circuit also rejected Bosleys claims that Kremer used the mark in connection with Bosleys goods and services, because Kremers use of Bosleys mark was in connection with the expression of his opinion about Bosleys goods and services, not in connection with the sale or advertising of goods and services. The court also reversed the dismissal of the anti-cybersquatting claim, which did not contain a commercial use requirement. The lower court will get to handle this claim further.

Here are several other cases that did not make the top 10 but are also of interest:

American Girl, LLC. v. Nameview, Inc., 301 F. Supp. 2d 876 (E.D. Wis. 2005) (domain name registrar which simply accepts registration of domain name generally is not liable for trademark infringement or dilution, unfair competition or anti-cybersquatting violations) (citing several other cases with consistent holdings).

Egilman v. Keller & Heckman, LLP, 401 F. Supp. 2d 105 (D.D.C. 2005) (accessing computer system through unauthorized use of validly created user name and password does not circumvent a technological measure in violation of anti-circumvention provisions of DMCA).

Century 21 Real Estate Corp. v. Lending Tree, Inc., 425 F.3d 211 (3d Cir. 2005). The U.S. Court of Appeals for the Third Circuit joins the Ninth Circuit in expressly adopting the nominative fair use defense to trademark infringement claims. See New Kids on the Block v. News Amer. Pub. Inc., 971 F.2d 302 (9th Cir. 1992). The Third Circuit adopted a two-part test: (1) first, a plaintiff must prove that confusion is likely due to the defendants use of plaintiffs mark; (2) then the burden shifts to the defendant to show that its use of the plaintiffs mark is nonetheless fair. Relevant factors for the second step are: (a) whether use of the plaintiffs mark is necessary to describe the plaintiffs and the defendants products and services; (b) whether only so much of the plaintiffs mark was used as is necessary to describe the defendants products and services; and (c) whether the defendants conduct or language reflect the true and accurate relationship between the plaintiffs and the defendants products and services.

SMC Promotions, Inc. v. SMC Promotions, 355 F. Supp. 2d 1127 (C.D. Cal. 2005). License agreement that allows a wholesalers retail customers to download wholesalers copyrighted product images and descriptions onto the retailers websites was not broad enough to cover the retailers practice of engaging a third-party vendor to download images on the retailers behalf as part of the process of creating websites for the retailers.

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Mr. Nguyen co-chairs Foleys Trademark & Copyright Litigation Team and the Entertainment & Media Industry Team in Los Angeles, CA. The opinions expressed in the following article are his own.

Once again, the folks at Google Inc. are teaching us that technology is ahead of the law. Google is the darling of the Internet world and Wall Street for its progressive (and aggressive) efforts to become the worlds online destination for information. Some of those visionary approaches have triggered legal controversy, such as the many lawsuits challenging Google's sale of trademark-protected Internet keywords and alleging trademark infringement. While still in the midst of that heated trademark battle, Google now finds itself in another legal debate. But this time, the battlefield is copyright law.

The target is Google's ambitious Print Library Project, which aims to digitize most of the worlds books for online searching. Publishers and authors are up in arms because Google did not first obtain permission from them to copy and use their texts. The issues and technology are so novel that it is difficult to predict who will prevail. What is certain, though, is that these Print Library Project cases will help define what constitutes fair use of copyrighted materials on the Internet, and will shape the future of intellectual property in the digital era.

Google's Print Library Project

This legal debate is born out of Google's Book Search service, originally called Google Print. Google's goal is to make all – or at least most – of the worlds book publications searchable via this online service. Google Book Search has two components. The first part is the Print Publisher Program, under which publishers can authorize Google to scan the full text of their books into Google's search database. The Print Publisher Program has not drawn controversy because it depends on publishers granting permission for reproduction and use of their texts. It is the second component – the Print Library Project – that has stirred controversy.

Google announced its Print Library Project in December 2004, revealing that it formed partnerships with several major libraries to make digital copies of their collections available for online searching. The participating libraries are The New York Public Library, and the libraries at Harvard University, the University of Michigan, Stanford University, and the University of Oxford. The Print Library Project works by scanning all of this library material into Google's search database that is, taking offline content and making it available online. The books scanned from the partner libraries include both public domain works and works still protected by copyright. How Google determines whether a book is in the public domain is unclear. Over the next ten years, Google plans to add more than 15 million library volumes to its electronic index.

Users can search the Print Library database with search terms to find books about a certain topic. What search results are displayed depends on the copyright status of the works. If the material is in the public domain, the search results will allow users to browse the full text; however, if the books are protected by copyright, the search results will give users only a small portion of text around the search terms to view. While this service is free to users, Google will of course earn revenue from it. In addition to selling Internet advertising for the service, Google will craftily provide links to online retailers (such as Amazon.com) from which users can purchase the books retrieved by the search.

Some congratulate the Print Library Project as a major technological step toward bringing the worlds books and information closer to users. Others, however, condemn the service as a vehicle for massive copyright infringement. In fall 2005, two lawsuits were filed in New York against Google, attacking the Print Library Project. The plaintiffs are no fly-by-night litigants; they are heavyweight copyright owners. One suit was brought by the Association of American Publishers on behalf of five major publishing houses – Simon & Schuster, Penguin USA, John Wiley & Sons, McGraw-Hill, and Pearson Education. The other suit is a class action brought by The Authors Guild on behalf of more than 8,000 individual authors. Both lawsuits make the same argument: Google is engaging in massive copyright infringement by reproducing, without permission, copyrighted books and making them available for public display (if only in part) via the Print Library Project.

The Fair Use Debate

The cases focus on one key issue: is Google's reproduction and use of copyrighted books for its Print Library Project a fair use under copyright law? This is not an easy question to answer, especially as courts valiantly try to keep copyright law apace with advances in technology. But this is also what makes the outcome of these Print Library Project cases so significant for shaping the future of the digital era.

The fair use doctrine is codified in the Copyright Act, but its application depends on a fact-intensive analysis of five nonexclusive factors. To decide these cases, the courts will need to confront a variety of questions, none of which have easy answers:

1. Is Google making a transformative use of the books? This goes to the first fair use factor of the purpose and character of the use. A use is transformative if it adds or changes the copyrighted work to give it new expression, meaning, or message. Because they build upon (rather than supplant) the copyrighted work, transformative uses further the purpose of copyright protection to promote science and the arts. The courts will need to decide whether digitizing entire books and making them searchable online sufficiently transforms the original works to make Google's project a fair use.


2. Is it a fair use because Google displays only a small portion of copyrighted works in search results? This affects the third fair use factor: the amount and substantiality of the portion used from the copyrighted work. Google claims that, for copyrighted works, it will provide only a few sentences around the search terms, and that it will disable printing capabilities so users cannot print those pages from the copyrighted text. The publishers and authors counter that Google has digitized and reproduced entire books. Again, how the courts evaluate this factor should significantly affect future online services and what portions of copyrighted works they make available to users.


3. Will the Print Library Project harm or hurt book sales? Google claims that its Print Library Project service will actually help publishers and authors by bringing their long-forgotten books to the publics attention. It further believes that its links to online retailers that carry books found through search results will only increase sales for publishers and authors. On the surface, this seems like it would help the market for the copyright owners. However, copyright owners have a right to license their works to whomever they wish; the publishers and authors could license their books (for a fee) to other search engines (such as Yahoo! and MSN) for the access that Google wants to provide without any compensation to the copyright holders. Is Google's Print Library Project unfairly preempting the copyright owners right to license digital rights to their texts? This is another question that will dramatically affect the landscape for licensing digital rights to all forms of content, including video and audio works.


4. Is it a fair use to convert offline content to online content, without the copyright owners permission? A standard Internet search service helps users find Web sites and other content that has already been posted onto the Internet by the content owner. In contrast, the Print Library Project is seeking to create a new digital library that does not already exist and make it available to users online. This marked difference from past Internet search services is what triggers such heated debates. If Google's Print Library Project is deemed lawful, why stop at books? Why not allow service providers to digitize magazines and periodicals, music and audio files, digital images, video clips, television programs, and motion pictures – all from offline sources – to create online libraries of content? Indeed, Google is already trying to do that with video content. Another of its new services, Google Video, is intended to create a digital video library for users to both upload their own video files and search for video clips available online. There are, of course, great public advantages to making many forms of content available for searching online. The question which the courts – or the business community – must answer is to what extent should copyright owners have a say about when their content is used for such purposes?


5. What balance should be drawn between the rights of copyright owners and the public? Clearly, copyright owners have a right to protect their valuable investments. But the fair use doctrine is meant to balance that right against the right of the public to obtain and share information for the betterment of humanity. In the Internet and digital age, information sharing is easier and more widespread than ever. Whose rights should prevail? More importantly, should Google get to be the monetary beneficiary along the way?

The Future of I.P. Rights in the Digital Era

Ultimately, the courts will have to face a philosophical question: should the fair use doctrine be interpreted broadly or narrowly? The choice will greatly affect future battles between technology and content owners. A broad approach to fair use could be a boon for technology developers, and could open the doors to a very free information world. Imagine a world where Internet service providers, satellite and cable carriers, and wireless devices provide unlimited information and content galore, without any cost to the consumer. That would create an enormous benefit for consumers, but could cause copyright owners to lose control over their works and might even discourage content creation in the first place. But a narrow approach has its risks as well; it could stifle technological advancements, even those that might benefit publishers and authors, by providing more powerful channels to distribute their creative works.

Whatever fair use balance is struck in the Print Library Project cases will affect how content owners can protect their rights in the context of digital libraries and on rapidly-expanding media technology platforms. The outcome will potentially affect how freely information is shared on the Internet and how video and audio content is delivered to mobile devices, and might even shape the emerging market for wireless devices.

It is indeed a brave new world out there, and finding the right balance will be difficult but it is not impossible. Time and time again, the judiciary has shown us that it can strike a balance between technological innovation and content protection. In 1984, the U.S. Supreme Court did so in the famous Sony Betamax case, when it approved VCRs to have a fair use for time shifting when viewers could watch television programs. After that decision, the home video industry exploded and gave entertainment content owners a lucrative new market they never had before. More recently, in the past few years, the federal courts (including the U.S. Supreme Court) have attempted to strike this balance in the Napster, Aimster and Grokster cases concerning digital file-sharing.

So lets wait and see what the U.S. District Court, Southern District of New York, does with the two copyright cases attacking Google's Print Library Project. The courts do not always get it right the first time, but they usually get it righteventually. Meanwhile, Google will continue to be the darling of Wall Street and the bane of many intellectual property owners. And now, more than ever, Google has reminded us that technology, indeed, continues to be ahead of the law.

(Originally published in IPLaw 360. Reprinted with permission.)

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