Pattishall IP Blog

October 16, 2015

Second Circuit Authors Guild v. Google, Inc. – Google Books Does Not Infringe Authors’ Copyright

Filed under: Copyright — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:22 pm

Widmaier_Uli_1 F LRKAB - Low ResBy: Uli Widmaier and Kristine A. Bergman

In the latest development in the 10-year legal battle between the Authors Guild and Google, the Second Circuit affirmed the district court’s grant of summary judgment in Google’s favor and held that Google Book’s search and snippet functions were “transformative” under the test of Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) and thus constituted fair use of the published books under copyright that the plaintiffs had authored.

The court, in a unanimous decision written by Judge Pierre Leval, provides a lucid summary of the relevant facts:

Through its Library Project and its Google Books project, acting without permission of rights holders, Google has made digital copies of tens of millions of books, including Plaintiffs’, that were submitted to it for that purpose by major libraries. Google has scanned the digital copies and established a publicly available search function. An Internet user can use this function to search without charge to determine whether the book contains a specified word or term and also see “snippets” of text containing the searched-for terms. In addition, Google has allowed the participating libraries to download and retain digital copies of the books they submit, under agreements which commit the libraries not to use their digital copies in violation of the copyright laws. These activities of Google are alleged to constitute infringement of Plaintiffs’ copyrights.

Slip op., pp. 2–3.

The plaintiffs made five distinct arguments, each of which the Court rejected:

(1) Plaintiffs argued that Google’s copying of entire books, together with letting readers search them and view “snippets” of them, is not “transformative” under Campbell. Slip op., p. 3.

The court found that making searchable copies and providing snippets to the public was “a highly transformative purpose” because it “augmented public knowledge” and revealed only as much as was essential to “permit searchers to identify and locate the books in which words or phrases of interest to them appeared.” Id., pp. 4, 21. While the snippet view allows users to read portions of the copyrighted book, it “communicates little of the sense of the original” and provides only “enough context surrounding the searched term to help [the searcher] evaluate whether the book falls within her scope of interest” the use was still “highly transformative [for the] purpose of identifying books of interest to the searcher.” Id., p. 23, 33.

(2) Plaintiffs argued that Google’s overall profit motive and its goal of “use its dominance of book search to fortify its overall dominance of the Internet search market” preclude a finding of fair use, even though Google does not charge for access to the books and provides the functionality in question without advertising. Id., pp. 3, 24.

The court saw “no reason in this case why Google’s overall profit motivation should prevail as a reason for denying fair use over its highly convincing transformative purpose, together with the absence of significant substitutive competition, as reasons for granting fair use.” Id., p. 26. The court also noted that “[m]any of the most universally accepted forms of fair use, such as news reporting and commentary, quotation in historical or analytic books, reviews of books, and performances, as well as parody, are all normally done commercially for profit.” Id.

(3) Plaintiffs argued that Google infringes their derivative rights by cutting into potential licensing revenues. Id., pp. 3–4.

The court found that “the copyright resulting from the Plaintiffs’ authorship of their works does not include an exclusive right to furnish the kind of information about the works that Google’s programs provide to the public. For substantially the same reasons, the copyright that protects Plaintiffs’ works does not include an exclusive derivative right to supply such information through query of a digitized copy.” Id., p. 37.

(4) Plaintiffs argued that Google’s digital copies of plaintiffs’ books are vulnerable to hackers who might distribute the books for free on the Internet. Id., p. 4

The court conceded that “this claim has a reasonable theoretical basis, [since] unreasonably expos[ing] the rights holder to destruction of the value of the copyright resulting from the public’s opportunity to employ the secondary use as a substitute for purchase of the original” may rebut a fair use claim. Id., p. 41. However, the court found that plaintiffs’ claim is “not supported by the evidence” because Google Books’ digital scans are protected by “impressive security measures” that were praised by “plaintiffs’ own security expert.” Id., p. 42.

(5) Finally, Plaintiffs argued that “Google’s distribution of digital copies to participant libraries is not a transformative use.” Id., p. 4.

The court found that “the possibility that libraries may misuse their digital copies is sheer speculation. Nor is there any basis on the present record to hold Google liable as a contributory infringer based on the mere speculative possibility that libraries, in addition to, or instead of, using their digital copies of Plaintiffs” books in a non-infringing, manner, may use them in an infringing manner.” Id., p. 45.

Throughout the decision, the court acknowledged that at risk is an important tool for public knowledge. As the court noted, “giving authors absolute control over all copying from their works would tend in some circumstances to limit, rather than expand, public knowledge. Google Books, however, “augments public knowledge by making available information about Plaintiff’s books.” Id., p. 13. Many of these books, as the court observed, are out of print, so Google Books “provide[s] otherwise unavailable information” about these works. Id., p. 18.

This decision may prove a landmark case for copyright litigants and scholars alike, as it presents useful guidance on how courts should define what is “transformative use.” The battle may not be over yet, however: the next step may be a petition for certiorari.

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Uli Widmaier is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals. The firm advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Uli’s practice focuses on domestic and international trademark, copyright, trade dress and Internet law and litigation.

Kristine A. Bergman is a new associate (pending admission) with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, rejoining the firm after working as a summer associate in 2014. Kristine received her J.D., cum laude, from Loyola University Chicago School of Law in 2015.

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June 26, 2014

Aereo’s Internet-Based Television Streaming Services May Be Wizardry, But the Supreme Court is in No Mood for Magic

Filed under: Copyright, Internet, Litigation — Tags: , , , , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:17 pm

Ekhoff_Jessica_2 F LRby Jessica Ekhoff, Associate

Describing its Internet-based television streaming services, tech start-up Aereo proclaims, “It’s not magic. It’s wizardry.”[1] In yesterday’s 6-3 decision the Supreme Court disagreed, or at the very least, adopted a staunchly anti-wizardry stance.[2]

Justice Breyer, writing for the majority in American Broadcasting Cos. v. Aereo, Inc., characterized the issue before the Court as whether “Aereo, Inc., infringes this exclusive right [of public performance under §106(4) of the Copyright Act] by selling its subscribers a technologically complex service that allows them to watch television programs over the Internet at about the same time as the programs are broadcast over air.”[3] Despite Aereo’s self-description as a mere equipment supplier doing no “performing” of its own, the Court held in the affirmative.

The Court analyzed the issue in two parts: whether Aereo “performed” under the Copyright Act, and if so, whether the performance was “public.”

In concluding that Aereo did, in fact, perform under the Copyright Act, the majority of the Court turned to the 1976 amendments to the Act, which were adopted, in large part, to bring community antenna television, or CATV—the precursor to cable television—within the scope of the Act. CATV functioned by placing antennas on hills above cities, then using coaxial cables to carry the television signals received by the antennas into subscribers’ homes. CATV did not select which programs to carry, but rather served as a conduit for the transmission and amplification of television signals. Before the 1976 amendments, Supreme Court precedent considered CATV to be a passive equipment supplier that did not “perform” under the Act.[4] After the amendments, to “perform” an audiovisual work such as a television program meant “to show its images in any sequence or to make the sounds accompanying it audible.”[5] CATV thus “performed” the shows it transmitted because it both showed the television programs’ images to its subscribers, and made the accompanying sounds audible. Over a strong dissent authored by Justice Scalia[6], the majority found that, because its services were so similar to those once offered by CATV, Aereo also “performed” under the post-1976 definition of the term.[7]

Having determined that Aereo’s services constitute a performance under the Copyright Act, the Court next turned to the issue of whether those performances are public. Aereo argued its services do not constitute public performance because whenever a subscriber selects a program to watch, Aereo places a unique copy of the show in that subscriber’s folder on Aereo’s hard drive, which no one other than that subscriber can view. If another subscriber wants to watch the same show, she will receive her own copy of the program in her own folder from Aereo. The Court dismissed this argument, finding the “technological difference” inconsequential in light of Congress’s clear intent to bring anything analogous to CATV within the scope of the Copyright Act’s requirements. Under the post-1976 Act, an entity performs a copyrighted work publicly any time it “transmits” a performance. A performance is “transmitted” when it is communicated by any device or process beyond the place from which it is sent, whether the recipients receive the transmission at the same time and place, or at different times and places.[8] Aereo therefore publicly performs a copyrighted television program each time its system sends a copy of that program to a subscriber’s personal Aereo folder.

The majority characterized its holding as a “limited” one, and was careful to emphasize that its decision does not apply to other new technologies, such as cloud-based storage and remote storage DVRs. But with a slew of amici curiae predicting the decision could have a catastrophic impact on the tech industry, there are surely some who will take no comfort from the Court’s assurances. Aereo, unfortunately, may not have a spell to resurrect itself.

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Jessica Ekhoff is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois. Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, trade secret and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues. Jessica’s practice focuses on trademark, trade dress, copyright and false advertising litigation, as well as film clearance, media and entertainment, and brand management.



[3] American Broadcasting Cos. v. Aereo, Inc., No. 13-461, slip op. at 1, 573 U.S. __ (2014).

[4] Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968); Teleprompter Corp. v. Columbia Broadcasting System, Inc., 415 U.S. 394 (1974).

[5] 17 U.S.C. § 101.

[6] Justice Scalia argues that Aereo does not “perform” because it is the subscriber, rather than Aereo, who selects the program she wishes to watch, which in turn activates the individual antennae Aereo has assigned to her for the purpose of viewing that program. This means it is the subscriber who is doing the performing, since she is the one rousing Aereo’s antennae from dormancy and calling up a specific program to watch. Justice Scalia went on to note that although he disagrees with the majority’s interpretation of “perform,” he agrees that Aereo’s activities ought not to be allowed, either because Aereo is secondarily liable for its subscribers’ infringement of the Networks’ performance rights, or because it is directly liable for violating the Networks’ reproduction rights. If future courts fail to find Aereo liable under either of those theories, Justice Scalia advocates relying on Congress to close the loophole. Slip Op. at 12.

[7] Slip Op. at 8.

[8] 17 U.S.C. § 101.

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September 14, 2010

Is that COHIBA from Cuba? Not if it’s Sold in the U.S.: Second Circuit Reverses Ruling that U.S. Company Misappropriated the Cuban COHIBA Brand

Filed under: International, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:11 pm

by Phillip Barengolts

The Second Circuit may have finally ended the nearly 15 year legal battle between Empresa Cubana d/b/a Cubatabaco, the cigar making branch of the Cuban government, and U.S. cigar marketer General Cigar.  Now there will be two different marketers of “COHIBA” cigars in the world.  To see the practical impact of this decision, search for “cohiba cigars” in any search engine.

The Court of Appeals for the Second Circuit reversed the district court’s rulings that granted Cubatabaco relief from judgment against it under Fed. R. Civ. P. 60(b). Empresa Cubana del Tabaco v. General Cigar Co., Case No. 08-5878 (2d Cir. July 14, 2010) reversing 587 F. Supp. 2d 622 (S.D. N.Y. 2009) (appellate decision available at  Had the Second Circuit affirmed the district court’s rulings, General Cigar would have been enjoined from selling cigars under the COHIBA trademark in the U.S. (more…)

May 6, 2010

Second Circuit Rules against J.D. Salinger, Invalidates Presumption of Irreparable Harm when Considering Preliminary Injunctions in Copyright Cases

Filed under: Copyright — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 7:30 pm

by Phillip Barengolts, Esq.

J.D. Salinger wrote The Catcher in the Rye, became a sensation, and then disappeared—except for the occasional copyright suit.  In Salinger v. Colting, No. 09-2878-cv, slip op. (2d Cir. Apr. 30, 2010), the Second Circuit vacated and remanded for further consideration the district court’s decision to grant Salinger a preliminary injunction against the publication in the United States of Frederick Colting’s 60 Years Later: Coming Through the Rye.[1]

The Second Circuit’s decision did not turn on any error in the lower court’s logic—Judge Calabresi, writing for a unanimous panel, upheld the lower court’s findings that Salinger likely would prevail on the merits of his copyright claim because (1) the works at issue were substantially similar and (2) Colting was not likely to prevail on a fair use defense—but instead on a change to the Second Circuit’s standard for granting injunctions, both preliminary and permanent, in response to the Supreme Court’s decision in eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006).


April 1, 2010

Second Circuit Largely Affirms Tiffany v. eBay Judgment that eBay Did Not Infringe or Dilute the TIFFANY Trademark by Using it in Auctions

Filed under: Dilution, Internet, Litigation — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:22 pm

by Uli Widmaier, Trademark Attorney

Earlier this afternoon, the Court of Appeals for the Second Circuit issued its long-awaited decision in Tiffany v. eBay, No. 08-3947-cv, slip op. (2d Cir. Apr. 1, 2010).  The Court affirmed the District Court’s much-noted 2008 ruling in eBay’s favor on the trademark infringement and dilution claims, but remanded the case to the District Court for further consideration on the false advertising claim.  Tiffany alleged that the majority of “Tiffany” goods offered by vendors on eBay were in fact counterfeit.  Tiffany claimed that by using the TIFFANY mark in its advertising, by failing to take more drastic measures to stop the sales of counterfeit Tiffany items, and by advertising in such a way as to mislead consumers into believing that all Tiffany items sold on eBay were genuine, eBay had engaged in direct and contributory trademark infringement and false advertising.  The District Court entered judgment against Tiffany on all claims.  This appeal followed. (more…)

December 15, 2009

Second Circuit: “Substantial Similarity” Not Required to Prove Dilution by Blurring Under the TDRA

Filed under: Dilution — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:08 pm

by Ian J. Block, Trademark Attorney

In a dispute that has bounced between the district and appellate courts for nearly a decade, the Second Circuit recently clarified an important part of the standard for proving dilution by blurring under federal trademark law.  In Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2009 U.S. App. LEXIS 26300, 92 U.S.P.Q.2d 1769 (2d Cir. 2009), the Second Circuit distinguished the requirements for finding dilution under the prior Federal Trademark Dilution Act (“FTDA”), the current Trademark Dilution Revision Act (“TDRA”), and New York state dilution law, N.Y. Gen. Bus. Law § 360-l.  The court found that “substantial” similarity between a famous mark and an accused mark is not required for a successful claim of dilution by blurring under the current post-TDRA federal dilution provision, 15 U.S.C. § 1125(c).  The Second Circuit remanded on this point but affirmed the district court’s dismissal of Starbucks’s other claims. (more…)

July 7, 2009

Second Circuit enjoins sale of colognes without UPC codes in chain drugstores

Filed under: Counterfeiting, Gray Market — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:00 pm

By Daniel Hwang, Trademark Attorney

Davidoff markets COOL WATER, a prestige brand of cologne that Davidoff only permits luxury retailers to sell.  When Davidoff declined to permit CVS to sell the product, CVS obtained COOL WATER from unauthorized channels with the UPC codes removed that it then sold through its stores.  Davidoff brought suit for trademark infringement, arguing that CVS’s sales of COOL WATER products without UPCs (“decoded products”) hinders Davidoff from guarding against counterfeits and from protecting the reputation of its brand.  CVS denied that the products were counterfeit, instead arguing that removing the UPCs and selling gray market goods was not illegal.  The district court preliminarily enjoined CVS from selling any Davidoff trademarked products with the UPCs removed and the Second Circuit affirmed.

The Second Circuit affirmed based on the importance of UPCs to both Davidoff’s counterfeit protection program and its quality controls.  CVS raised as a defense that the decoded products are gray market goods and thus genuine goods.  The Second Circuit stated “[t]he fact that the goods in question may be gray-market goods does not furnish CVS with a valid defense.” Rather, the injunction was justified on the basis of interference with Davidoff’s trademark rights. (more…)

July 2, 2009

Remote DVR Service is legal: Supreme Court denies review of Second Circuit ruling

Filed under: Copyright — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:22 pm

by Jake Linford, Trademark Attorney

On June 29, 2009, the Supreme Court denied a request to review a Second Circuit ruling that Cablevision would not violate the Copyright Act by operating its proposed Remote Storage DVR System (“RS-DVR”).  In 2006, Cablevision developed plans for the RS-DVR, which would allow customers to record cable programming on remote hard drives housed by Cablevision, and later view the programming on demand.  The plaintiffs, producers of copyrighted movies and television programs, sought declaratory and injunctive relief on the grounds that by operating the RS-DVR, Cablevision would directly infringe the plaintiffs’ copyrights both by making unauthorized reproductions and by publicly performing the copyrighted works. (more…)

May 7, 2009

How the recent Second Circuit decision about Google’s AdWords Service affects your company’s keyword advertising program

Filed under: Advertising, Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:52 pm

Phillip Barengolts, Trademark attorney explains how the recent Second Circuit decision about Google’s AdWords service affects your company’s keyword advertising program.

In the Rescuecom Corp. v. Google, Inc. lawsuit, the Second Circuit decided that Google’s sale of a company’s trademark as a keyword through the AdWords advertising service is potentially actionable under federal trademark law – if it also is likely to cause confusion.

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