It had been a win for both sides of the massive copyright infringement suit. The proposed class action settlement gave the plaintiffs—the Authors Guild and a group of large book publishers—$45 million upfront and a lucrative new source of revenue. It gave the defendant, Google, permission to create the world’s greatest library—an online database containing the vast majority of English-language books. This promised not only to be a terrific resource for the public, but also very profitable for Google. Moreover, the settlement offered an innovative solution to one of the knottiest problems in copyright law: what to do with a work when it is difficult or impossible to determine who currently owns the work’s copyright. These “orphan works” cannot be reprinted, adapted or otherwise fully used for society’s benefit because such use could constitute infringement. But preventing such use often provides no benefit to the copyright owners.

Congress tried twice in recent years to pass legislation resolving this problem. The orphan works bills would have created safe harbors, allowing anyone to use orphan works without committing copyright infringement. Both bills died in the House.

But it seemed, for a while, that where Congress failed, Google might succeed.

Then, on March 22, Judge Denny Chin rejected the proposed class action settlement in The Authors Guild v. Google Inc. Judge Chin held that, among other problems, the settlement’s treatment of orphan works violated copyright law.

“There’s no question the [Google] library project, if it achieves its ultimate objective, would be a tremendous boon to scholarship, democracy and enlightenment. But the way to achieve this, in the court’s opinion, isn’t by running roughshod over authors’ rights,” says Ralph Oman, professorial lecturer in IP law at George Washington University Law School.

Promising Provision

It all began so hopefully. Google announced in December 2004 that it would scan millions of books from libraries around the world, then allow users to conduct online searches of the books’ contents and read snippets from the books.

The legal problems began nine months later. The Authors Guild and a group of book publishers sued Google, alleging that digitally copying the books and displaying snippets from them was copyright infringement.

In 2009, the plaintiffs and Google agreed to a class action settlement that went well beyond the original litigation. The settlement gave Google the right to not only digitize the books and display excerpts from them, but also to display the books online in their entirety under certain conditions. If a book was still in print, Google could display the entire book online only if the copyright owner expressly consented. If the book was out of print, Google could display the work unless the copyright owner (the author or publisher) expressly opted to keep the book out of the settlement.

This opt-out provision was crucial to Google. It would enable the company to fully display millions of books without having to track down and get permission from every single copyright owner.

Locating the current copyright owner of a work is often time-consuming and costly. Authors move or die. Publishers merge or go out of business. Frequently, even after much effort, a work’s owner cannot be found.

Half of all books are orphan works, according to some experts. And by requiring the works’ owners to opt out as part of the class action settlement, Google found a way to use these orphan works—or so the company thought.

Judge’s Justification

Judge Chin thought otherwise. He ruled that the opt-out requirement, which was at the heart of the proposed settlement, violates copyright law.

Judge Chin’s ruling had been more than a year in the making. During that time, he had changed jobs. He had presided over the Authors Guild lawsuit when he had been a federal district court judge in Manhattan, but he kept responsibility for the case after he was elevated to his current position on the 2nd Circuit.

In his 46-page ruling, Judge Chin found that the proposed settlement would turn copyright law on its head. The law allows a copyright owner to “sit back, do nothing and enjoy his property rights untrammeled by others exploiting his works without permission,” Judge Chin wrote. The settlement, however, would require many copyright owners to take affirmative steps in order to prevent Google from using their works. “It is incongruous with the purpose of the copyright laws to place the onus on copyright owners to come forward to protect their rights,” Judge Chin stated.

The judge went on to suggest what the parties should do now. “He made clear he wants to see another settlement, but it should be an opt-in settlement,” says Professor Pamela Samuelson of Berkeley Law School.

Google is unlikely to agree to that, according to many experts. “If the settlement were changed to an opt-in system, that would make the project vastly more complicated and vastly more expensive for Google,” says Oman. Moreover, despite the added cost and effort, Google would be unable to put a large number of books online. “I suspect the response rate for permission requests would be insignificant, so the book database would be much smaller and less useful,” Oman says.    

Congress and Copyrights

At this point Google’s options appear limited. The company can appeal, but the 2nd Circuit is unlikely to overturn Judge Chin’s ruling, according to most experts. “This is a careful opinion that would be pretty hard to reverse,” says Jessica Litman, a professor at University of Michigan Law School.

Google can go back to its original plan: scanning books and displaying snippets online. “That is clearly fair use,” Litman says.

But if Google wants to achieve its dream of a vast online library, Congress will need to revise copyright law. It is unclear, however, if Congress will do so.

In the past, orphan works bills were staunchly opposed by professional photographers and others who feared losing control over their works. (Photographs, for instance, almost always appear without any copyright notice, so determining their copyright ownership is tough. These works are typically considered orphans from the moment they are published.) The groups who opposed past orphan works legislation would likely continue to oppose any new legislation.

An orphan works bill would have powerful supporters, however. “The combined lobbying power of high-tech interests (including Google, Amazon, Microsoft and the Internet Archive), book publishers and some of their allies might suffice to get an orphan works bill through,” Litman says. “But it would take an immense push in a Congress that seems much more interested in intensely political issues like taxes and budgets.”

It seems that, for the immediate future, Google’s dream of a magnificent online library will remain a dream.