Prof. Jane C. Ginsburg, Columbia University School of Law
June 2, 2010
Several of the IP Issues columns have addressed the Google Book Search controversy, principally from the perspective of the still-pending settlement agreement, which would regulate the online availability of digitized books (or portions of them) to U.S. Internet users. While the proposed settlement covers books published in the UK, Canada, and Australia, as well as books registered with the U.S. Copyright Office, wherever published,1 it does not purport to address the making available of scanned books to users outside the United States.
Thus, Google continues, without authorization from authors or publishers, to deliver “snippets” of scanned books in response to search requests made by users located outside the United States. This practice provoked a French lawsuit brought by a trade association, the National Syndicate of Publishers (SNE), and individual publishers, notably Les Éditions du Seuil. Following the publishers’ Dec. 18, 2009, victory in the Paris first-level court2 – the decision is being appealed – France’s leading publisher, Gallimard, filed its own copyright infringement suit.
The principal legal issue in the French case, an issue likely to prove determinative in other EU countries as well, was the designation of the law to apply to the claim. Choice of law proved paramount because Google’s provision of “snippets” to French Internet users, if governed by French law, was unlikely to qualify for a copyright exception, given the limited nature of exceptions allowed by the 2001 EU “Information Society” Directive.3 By contrast, the more flexible U.S. fair-use exception, had it applied, could have made Google’s defense at the very least plausible, if not securely successful.
In this column, I will address the French courts’ analyses in the SNE case and in other controversies involving Google’s making works available to French Internet users. If SNE’s approach to conflict of laws prevails, not only Google, but other Internet entrepreneurs who, from afar and without authorization, make works available in national markets within the EU, may face significant risks of liability for copyright infringement.
In SNE, French publishers complained that Google was making excerpts of French books available to French readers without the authors’ or publishers’ authorization, in violation of French copyright law. Google responded that Article 5(2) of the Berne Convention directed courts to apply the law of the country “where protection is sought”; because the book scanning had taken place in the United States, and the communication of the snippets originated from the United States, the French plaintiffs were seeking protection from acts occurring in the United States. Accordingly, Google urged, U.S., not French, copyright law should apply (and the U.S. fair-use doctrine would excuse Google’s copying of the books and public display of the snippets).
The court instead held French law competent to determine the dispute. Although the court did not purport to apply the Berne Convention, had it analyzed the issue, it would have found that the treaty in fact supported its ruling: While Google invoked Article 5(2), the relevant provision in this case was Article 5(3), under which “protection in the country of origin is governed by domestic law.” Because the works at issue were all French works, French law applied. But “domestic law” can include the country of origin’s choice-of-law rules, hence the controversy still required the court’s conflict-of-laws analysis. In that analysis, the court determined that the country whose laws bore the “most significant relationship” to the claim was France, because Google was delivering excerpts of French works to French Internet users. (The court’s treatment of the facts indicates the court perceived that Google, and Google.fr, were even targeting French Internet users.)
“The “most significant relationship” approach is well-known to U.S. conflicts jurisprudence, but French courts and scholars had long considered it too vague, traditionally preferring to apply rules such as “lex loci delicti,” the law of the place of the wrongful act. The problem, as the court recognized, is identifying the locus when the act is “complex,” initiating in one country and culminating in another. Google contended that the wrongful act is located where it was allegedly committed, not where the harm impacted. But even if the place of commission of the act supplied the governing law, the court also determined that place still was France because “that place is understood to be either the place of the initiation of the harm or the place of the realization of the harm.”
Thus, whether under a traditional “point of attachment” approach, or the more open-ended “closest links to the controversy” analysis, French copyright law would govern. As anticipated, Google’s exploitation fit none of France’s limited copyright exceptions. The court held Google liable for copyright infringement, awarding 335,000 Euros damages to the combined parties, and imposed an astreinte ordering Google to cease reproducing and making available the plaintiffs’ content under penalty of 10,000 Euros per day for each day (after the astreinte’s effective date) that Google fails to comply with the order.
SNE is the third French decision confronting choice of law in controversies involving the making available in France of works communicated from the United States by Google. In a May 2008 controversy involving photographs indexed by Google and accessible to French users of the Google search engine,4 a different panel of the Paris first-level court accepted Google’s contention that the “place of the wrongful act” was its point of origin in the United States; the court then ruled that Google’s acts were fair uses. That decision is now on appeal. In October 2009, yet another panel of the Paris first-level court,5 in another suit concerning indexed photographs, agreed that law of the place of the initiating act governed, but then ruled, notwithstanding the initial copying and communication from the United States, that the act that generated the harm occurred in France because the images were made available to French users via google.fr
Of these inconsistent decisions, SNE’s analysis is most likely to endure because it is the most consistent with the new EU choice-of-law rules imposed by the “Rome II” Regulation on the law applicable to torts.6 The entry into force of Rome II postdated the initiation of the three suits discussed above, but its rules will govern subsequent litigation, including the action brought by Gallimard. Rome II, Article 28(1), specifies that the Regulation does not supplant choice-of-law rules supplied by international treaties, but, as we have seen, the Berne Convention points to domestic law when the works at issue are local. Moreover, Rome II’s choice-of-law rule for intellectual property claims in fact evokes Berne 5(2): Rome II Article 8(1) provides for the application of the law of the country “for which” (rather than “where”) protection is sought.
But commentators suggest that Article 8(1) does not clearly supply an answer in the “complex tort” situation in which the infringing acts cross borders.7 In that event, the general choice-of-law rule set out at Article 4(1) fills the gap: “the law applicable to a non-contractual obligation arising out of a tort/delict shall be the law of the country in which the damage occurs irrespective of the country in which the event giving rise to the damage occurred….” This text clearly designates the country where the harm impacts, rather than the country in which the allegedly wrongful act originated. Under Rome II, Google’s contention that U.S. law should apply to the communication of snippets of works to French Internet users because the alleged infringements emanate from the United States appears unlikely to prevail.
Unlikely but not impossible, because Article 4(3) allows some flexibility, in the form of the “most significant relationship” test: “Where it is clear from all the circumstances of the case that the tort/delict is manifestly more closely connected with a country other than that indicated in paragraphs 1 or 2, the law of that other country shall apply.” Under what circumstances might the infringement be “manifestly more closely connected with a country other than” the one to which the infringing copies are communicated? Article 8(1)’s designation of the law of the country “for which protection is sought” (emphasis supplied) may provide a clue. If one focuses on the remedy, that is, on the implementation of the protection sought for a particular country, it may be possible to identify situations in which the litigation is more closely connected with a country other than that of the impact of the infringement.
When the infringement that causes harm in one country derives from preparatory acts committed in another country, the requested remedy should compensate and cause the cessation of the wrongful act in the country where the harm impacts. The country of impact’s law will apply even if the remedy requires taking steps in the country from which the wrong originated, for example by prohibiting Google from communicating to France the content of French books which Google scanned and stored in the United States. The Paris court’s order to that effect in the SNE case both is consistent with its designation of France as the country with the most significant relationship to the controversy and with the identification of France as the country for which protection was sought.
By contrast, the SNE court’s ruling that the reproduction and storage of the scanned books in the United States violated French law not only as to the communication of the snippets to France, but also as to the subsistence of the French works in Google’s U.S. database, and the court’s concomitant order under penalty of fine to purge the database of those works, may exceed the context of seeking relief for France. The court’s broader order in effect grants the French publishers protection not only for France but also for all other countries to which Google might communicate the excerpts, as well as for the United States, where the works are stored. Where the offshore actor’s extraterritorial location is pretextual – for example because the country where the transborder infringement impacts is the principal market for the works at issue – the country of impact remains the country most closely connected with the litigation ; the SNE court’s findings indicating that Google targeted French books and French readers thus can support the broader remedy. But, France is not the only country whose readers may seek access to French works in the original language. Even Americans may fit that bill.
Thus, to the extent that the French court’s remedy goes beyond the disabling of communications to France, to make the works inaccessible to readers in countries whose copyright laws might excuse Google’s copying, storage, and communication of excerpts, it seems both intuitively problematic and unnecessary under Rome II’s choice-of-law regime. A reading of Articles 4 and 8(1) that turns on the territorial impact of the remedy would split the “complex” tort in two. It would call for the application of the law of the country of the harm to acts of communication of the alleged infringement to that country, but would judge the acts preparatory to those communications by the law of the country in which those acts take place. If those preparatory acts are lawful in the country where they are committed, the communication of the infringement would still be remedied under the law of the country of receipt, but the remedy should be limited to its effects in that country.