Editor’s Note: Caroline Horton Rockafellow is a member of the Research Triangle Park law firm of Daniels Daniels & Verdonik, P.A.
____________________________________________________________________________________________The legal staff at Google appears to be quite busy these days.

Either intentionally or unintentionally, Google has found itself in the middle of some of the most interesting copyright litigation of recent history. High profile cases include Google’s defense of its library print project, its use and application of thumbnail images and caching of copyright materials. Because of the broad reach of Google, we are seeing cases tried in a multitude of jurisdictions.

What this means for Google, and more importantly for other holders of digital copyrights, is that similar fact patterns are resulting in diverse holdings. Ultimately, many of these cases will move up the jurisdictional ladder, and we will have a clearer understanding of the complex issues raised by Google litigants. In the meantime, we have some very interesting cases that will continue to keep copyright experts busy for years to come.

Is Caching Copying?

Last week a federal judge in the Eastern District of Pennsylvania dismissed a lawsuit against Google brought by Gordon Roy Parker, publisher of Snodgrass Publishing Group. Parker alleged in his lawsuit, among other things, that Google infringed the copyright in his materials by archiving, or “caching,” a part of a book he has posted on a Usenet bulletin board network. Parker argued that when a user submits a search query to Google and Google produces a resulting list of hyperlinks in response to the query, Google is effectively infringing the copyrighted work.

As background, a copyright infringement occurs when there is a violation of one of the exclusive rights held by the copyright owner. These rights include the right to reproduce, prepare derivative works, distribute, display and perform a work that has been reduced to a tangible medium. In the Parker case, the right analyzed by the court was the exclusive right to reproduce a work, or rather the right to restrict others from making unauthorized copies of a work.

In particular, this court found that in order to prove copyright infringement, the copyright holder must demonstrate both a valid ownership of copyright and an unauthorized copying. In addition, the court stated that the copyright holder must “also show volitional conduct on the part of the defendant in order to support a finding of direct copyright infringement.” In other words, Parker did not only need to demonstrate that Google copied his materials, but also needed to show that Google took some action that indicated an intention to make such copies.

Ultimately, this particular court determined that Google’s actions of caching copyright materials closely paralleled the actions of an internet service provider that transmits copyright material but is indifferent to the content of such material, much in the same way as a copy machine has the ability to copy copyrighted materials. It is generally accepted that the action of a copying machine and the transmission activities of an internet service provider, is not, by itself, deemed to be an infringing activity. In fact, although neither party introduced the argument, the court, on its own, referenced Title II of the Digital Millennium Copyright Act, which created a safe harbor provision for internet service providers. Based on this analysis, this court found that the automatic archiving of Usenet messages or websites, even when information is excerpted from a website, does not constitute direct or indirect copyright infringement.

The Parker case followed a similar case decided in January in the United Stated District Court for the District of Nevada. The January case of Field v. Google held that cached versions of web pages stored by Google do not constitute infringement of copyright. Field was a difficult case due to the fact that the court did not try to hide its disdain at the fact that Field appeared to have baited Google and undertook his activities with the full intention to initiate a lawsuit. Accordingly, the analysis in Field is ultimately not as interesting as other similar cases. Nonetheless, Field does hold, after a complex analysis, that the copying of websites and caching the materials does not constitute an infringement of copyright. As with the Parker case, the holding in Field primarily relied on the analysis of the exclusive right to copy as the means for determining infringement.

The Right to Copy vs. The Right to Display

What is most interesting about both the Parker case and the Field case is that the analysis of infringement relied primarily on whether there was an unauthorized copying of the materials. The exclusive right to copy is only one of the five exclusive rights held by copyright owners.

Another recent Google case, one in fact that was decided against Google, took another tact in its analysis. In the February 2006 case of Perfect 10 v. Google, Inc., the U.S. District Court for the Central District of California evaluated whether Google violated a copyright holder’s exclusive right to display content. The tests analyzed in this case included a detailed discussion of whether the copyrighted content was stored on Google’s server or stored on the copyright holder’s server. Although not an identical fact pattern, it is interesting to note that the right to display analysis could certainly have been applied to the Parker case, possibly with a different outcome. In other words, if a determination of infringement had been based on the exclusive right to display as opposed to the exclusive right to copy, the results might have been different.

Ultimately, the Perfect 10 case held that Google did infringe the rights of Perfect 10 whose pictures were posted on Google image as thumbnail images. While the analysis was complex and the ruling went against Google, the ultimate outcome has yet to be determined. Google and Perfect 10 are working through a proposed injunction related to these thumbnails. Meanwhile, it still appears that Google will appeal this ruling and the final determination will still be years in the making.

Google and its multitude of copyright actions are certainly blazing a new trail with respect to digital copyrights. The only thing absolutely clear is that nothing is clear when it comes to digital copyright issues. Although Google is not the only entity litigating digital copyright issues in our court system, due to its high profile Google probably receives more publicity that other defendants on these issues. Ultimately, the final ruling in the Parker case and the final ruling in Perfect 10 (both of which are likely to be appealed), will provide a useful and critical foundation as we continue to unravel the law surrounding digital copyrights. As of now, that law remains in flux, and it certainly appears that Google and its legal staff will play an important role in resolving many of these complex issues.
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Daniels Daniels & Verdonik, P.A. has been serving the legal needs of entrepreneurial and high technology clients for more than 20 years. Caroline Horton Rockafellow concentrates her practice in the representation of entrepreneurial and technology-based business, focusing on corporate, technology and licensing matters. Questions or Comments can be sent to crockafellow@d2vlaw.com