Prof. James Gibson, University of Richmond School of Law
January 26, 2015

In my last IP Viewpoints entry, I discussed the origin of “transformation” as a major factor in copyright’s fair use doctrine.  In particular, I focused on “expressive” transformation, in which the user changes the actual content of the copyrighted work.  Taking old works and turning them into something new is the way that culture usually evolves, so it is no surprise that copyright law would sometimes allow users to engage in such conduct without needing to pay for the privilege.

Yet there is also a second kind of transformation, one that does not involve the alteration of the underlying material.  Indeed, this kind of transformation often involves wholesale, verbatim reproduction of all the expression in a copyrighted work.  How could such uses be considered transformative, let alone fair?

The answer lies in the repurposing of the works.  For example, consider the case of Bill Graham Archives v. Dorling Kindersley Publishing.  Dorling Kindersley used several images of vintage Grateful Dead concert posters in its coffee table book, without securing a license.  There was expressive transformation here, because the images in the book were a fraction of the size of the originals.  But the court also pointed out that the use “is transformatively different from the original expressive purpose.”  The original use of the images was “artistic expression and promotion,” whereas the new use repurposed them as historical artifacts.

This “purpose” transformation is itself valuable, in that it creates something new.  It adds value.  It makes the pie bigger.  The same is true of expressive transformation, of course, but in a different way.  (This may be why the fair use statute asks about not only the “character” of the use, but also its “purpose.”)

Indeed, in some instances this added value depends on the repurposing of multiple works, in their entirety.  Take Google’s Internet search engine.  In order to enable such searching, Google makes copies of Internet content (much of which is copyrighted), indexes it, and then makes it available in its search results as snippets – or, in the case of images, thumbnails.  This process involves little or no transformation of the underlying expression.  But the ability to search the Internet is obviously of great value to society, and would simply not be possible in a world in which licensing was required.

Thus cases like Perfect 10 v. and Field v. Google have found these sorts of uses to be fair.  No one is going to use the thumbnails available through Google Search as a substitute for the full-size images.  In this way, therefore, they transform the purpose of the work, creating a new thing rather than merely “superseding the objects of the original” (to borrow a phrase from Supreme Court Justice Joseph Story’s opinion in one of the foundational fair use cases).  And the fact that Google does this to thousands of copyrighted works actually bolsters the case for fair use, because the added value derives directly from the scale of the enterprise – the aggregation of Internet content.

The same is true of other search engines, like the anti-plagiarism program at issue in A.V. v. iParadigms.  For the program to work, schools had to upload students’ papers en masse to a central database.  Some students objected, citing their copyrights in the papers.  When iParadigms claimed fair use, the students responded that “iParadigms’ use of their works cannot be transformative because the archiving process does not add anything to the work.”  The court found that argument to be “clearly misguided,” noting that “[t]he use of a copyrighted work need not alter or augment the work to be transformative in nature.  Rather, it can be transformative in function or purpose without altering or actually adding to the original work.”

The latest battle over purpose transformation – and the battle that may decide the legitimacy of purpose transformation once and for all – involves the Authors Guild suit over Google Books, which presents a very direct example of how making copyrighted works searchable involves wholesale copying of their content.  (I have explained the case before, so I will not do so again here.)  That case is now before a panel of the Second Circuit, which heard oral argument last month.

Will purpose transformation carry the day for Google Books?  No one knows for sure.  But the presiding judge at the Second Circuit hearing was none other than Pierre Leval, whom you will recall is the one who first articulated transformation as a fair use centerpiece.  The smart money is on Google.

Comments From Our Readers

John E. Miller:

Comments: From the above: “The snippet itself may not be transformative.”

According to Judge Chin 14NOV13 Pg 19: “The use of book text to facilitate search through the display of snippets is transformative.”

Jim Gibson:

Comments: The snippet itself may not be transformative. Assuming that it’s not, its legality would depend instead on whether it’s too minimal to be infringing, or on some non-transformative fair use argument.

John E. Miller:

Comments: OK then I’ll add:

According to Judge Chin’s 14NOV13 ruling, a snippet is transformative because it “act(s) as a pointer directing users to a broad selection of books”. Page 20 However, the user maybe just as well might read the snippet and say ‘Gee great! That is just what I was looking for’ and then look no further.

John E. Miller:

Comments: As may be indicated by the Agreement reached between the Authors Guild and HathiTrust in my original comment, indexing and searching may be considered transformative purpose. What is transformative about a snippet?

Jim Gibson:

Comments: The Sconnie Nation case is interesting and has been discussed by at least three different entries in this series. But that case questioned expressive transformation, not purpose transformation.

John E. Miller:

Comments: I am not an attorney and only offer conjecture. But it seems Counselor Werbin might not agree with your assessment of the ‘purpose transformation’:

“The U.S. Court of Appeals for the Seventh Circuit recently put the brakes on more than two decades of widespread judicial application of the “transformative use” test in assessing a fair use defense to infringement under §107 of the Copyright Act. … In Kienitz v. Sconnie Nation, the court expressly rejected the concept of transformative use and, in particular, the Second Circuit Court of Appeal’s heavy reliance on that doctrine in Cariou v. Prince.”

Jim Gibson:

Comments: Hi John. Thanks for the comment. I think the question of snippets and fair use is very context-dependent (although I am not sure that the UVa agreement is all that relevant to the issue.) But the big fair use question that Google Books presents is not about reproduction of small snippets, but reproduction of the *entire text* of a work — which is what Google does when it scans each book for indexing. It’s that use, which seems at first like clear-cut infringement, that makes the “purpose transformation” issue so important.

John E. Miller:

Comments: From the Google Cooperative Agreement with the University of Virginia, 16 OCT 2006:

“4.3 (excerpt) … For all other (copyrighted) portions of the Google Digital Copy, Google may index the full text or content but may not serve or display the full-sized digital image or make available for printing, streaming and/or download the full content unless Google has appropriate legal authority to do so; Google instead may serve and display (1) an excerpt that Google reasonably determines would constitute fair use under copyright law and (2) bibliographic (e.g., title, author, date, etc) and other non-copyrighted information.”

The Authors Guild’s recent agreement allows the HathiTrust to search the scanned books as provided by Google but not display excerpted sections of text. Google has decided that displaying ‘snippets’ from these scanned books reasonably constitutes fair use under current copyright law. The Authors Guild’s attorneys have argued that a snippet of research material or ‘heart’ of a book may be all that a user/researcher needs to complete her mission and may require no further access to the non-snippet material. They add:

“(Finally) reproduction and display of excerpts, even short ones, have long been held to be copyright infringements.” (AG v Google, 2nd, Doc 181 pg.18)

So while Google and their attorneys have reasonably determined to their satisfaction that snippets are OK, there also may be precedent and reasons why such usage is NOT reasonably OK.