The fair use doctrine has fundamentally transformed in recent years. Over twenty years ago, Judge Pierre Leval (then a federal judge in the Southern District Court of New York), wrote that “courts had failed to fashion a set of governing principles or values” for the doctrine of fair use. Though the Copyright Act provides a set of four factors that courts should consider when determining whether a particular use of an existing copyrighted work is fair (17 USC § 107), Leval arguedthat the statute doesn’t tell courts how to apply the factors.
Leval attempted to rectify this in his article Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990), by focusing on the first fair use factor—“the purpose and character of the [secondary] use”—which he referred to as the “soul” of fair use. Leval saw this factor as raising the question of justification, the answer to which “turns primarily on whether, and to what extent, the challenged use is transformative”—that is, whether the original work is transformed to create “new information, new aesthetics, new insights and understandings.”
Not long after, the Supreme Court adopted Leval's transformative use test in Campbell v. Acuff-Rose, 510 US 569 (1994). Campbell involved a classic application of the fair use doctrine—using an existing work to create a new expressive work.
Then, last October, Judge Leval authored the Second Circuit’s opinion in Authors Guild v. Google (the“Google Books”decision), finding Google’s copying of over twenty million books, in order to create a searchable index, to be fair use based predominantly on his application of the transformative use test.
The transformative use test found in the Google Books decision is dramatically different than its use in Campbell. The test has been wrenched from its original context in which the transformative use test permits the use of an existing work to create a new work into a whole new “functional use” context which permits systematic, large-scale copying that doesn’t add new expression or create new works. Google Books may be the most striking example of this shift, but it is not the first. Attempts by courts to apply the transformative use test in this new context have caused fair use to become unmoored from the principles laid out by the Supreme Court in Campbell and the underlying goals of copyright law itself.
A test designed for a case-by-case review of new expressive works is a poor fit for the types of new functional uses involved in Google Books. For one thing, the issues involved can be incredibly complex. Mass digitization, the type of use at issue here, has recently been the subject of two separate Copyright Office studies (Legal Issues in Mass Digitization: A Preliminary Analysis and Discussion (2011) and Orphan Works and Mass Digitization (2015)) and a House Judiciary Committee hearing.
And courts should be aware that decisions involving functional uses can be far-reaching and potentially adverse to entire industries or markets. For example, the Ninth Circuit decisions in Kelly v ArribaSoft Corp, 336 F.3d 811 (9th Cir. 2002) and Perfect 10 v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), which held that, under the fair use defense, image search engines could copy photos and other works of visual art without the copyright owner’s permission, fundamentally altered the online image space and deprived visual artists of valuable emerging markets.
For these reasons, we have filed an amicus brief in support of the Authors Guild asking the Supreme Court to review the Second Circuit’s decision in Google Books. Courts would be well-served by the Supreme Court providing guidance in the application of the fair use defense to cases involving new functional uses that were not contemplated by Campbell. These types of cases cry out for a fundamentally different and more nuanced approach.