Google Books infringes copyright, but not trademark rights

France
In Editions du Seuil SAS v Google Inc (December 18 2009), the High Court of Paris hasfound Google Inc liable for copyright infringement - just as the search engine is about to launch its new service, Google Editions, allowing consumers to purchase books that have been previewed on Google Books. The court held that Google Inc had infringed on numerous protected works by digitizing and displaying them on Google Books, an online service enabling access to digitized books, without the authorization of the copyright owners. The court ordered that Google Inc:
  • pay damages in the amount of €300,000 for copyright infringement;
  • remove the infringing digital books from its search engine; and
  • publish the judgment.
The plaintiffs were French, Swiss and US publishing companies Editions du Seuil SAS, Delachaux & Niestlé SA and Harry N Abrams Inc, joined by professional associations, the French National Publishers' Association and the French Authors' Guild. They argued that Google Inc and Google France (collectively Google) had digitized books in which they had exclusive rights, and that Google Books users could access the covers and entire excerpts of the books without their authorization. Editions du Seuil also contested the use of its trademarks EDITIONS DU SEUIL and SEUIL in the digitized copies.
 
The main issues raised in this case related to the choice of law rules in international copyright conflicts, as well as the different rights involved in such a colossal project relating to the digitization of literary works.
 
Google argued that US law should be applied, referring to Article 5(2) of the Berne Convention, which states that the applicable law in matters of complex litigious acts carried out on the Internet is that of the state where the acts occurred. In this case, Google claimed that the process of digitization took place in the United States, and thus concluded that the Copyright Act 1976 and the defence of 'fair use' should prevail.
 
However, the court decided that French law should apply, since numerous elements linked the case to France. It was not contested that:
  • the digitized books could be accessed by French users from the French territory;
  • several plaintiffs were French;
  • Google France, the second defendant, was established in France; and
  • the domain name 'books.google.fr' had an 'fr.' extension and was written in French.
Since the illegal acts of digitizing the works and displaying them online were demonstrated, Google could argue only that its behaviour fell under exceptions to the monopoly granted to copyright owners, enabling it to pursue its activity without authorization.
 
On the copyright issue, Google invoked the 'short quotation exception' set forth in Article L122-5(3) of the French Intellectual Property Code, which provides that copyright owners cannot prohibit “short quotations legitimized by the critical, polemic, educational, scientific or informative nature of the work in which they are incorporated”.
 
The court followed established case law and rejected Google’s argument, deciding that:
  • book covers were shown to the public in their entirety; and
  • even though there were displayed at a reduced size, the random aspect of the excerpts chosen implied that there was no informative purpose, as required under Article L122-5(3).
Thus, the main reason why the court rejected the short quotation exception was that the infringed content was not pre-determined but randomly displayed, prohibiting any informative value or use for comment.
 
If the court had found US law to be applicable, the 'fair use' defence argued by Google Inc could have constituted an efficient defence to copyright infringement.
 
On the trademark issue, Editions du Seuil SAS argued that Google Inc had infringed its French and Community trademarks, which were registered for goods and services in Classes 9, 16, 28, 38, 41 and 42 of the Nice Classification. The court rejected the trademark infringement claim by confirming Google's affirmative defence, noting the lack of commercial use of the service marks by Google. The court decided that Google had reproduced the trademarks only to inform users of the identity of the publishers of the books shown in the search results, which was mandatory for citation purposes.
 
Moreover, the court partially revoked the trademark registrations for certain services (“access to a database related to literary, artistic or documentary works”) on the grounds of non-use.
 
This ruling could increase the number of trials in France against Google for similar facts, and may have a great impact on the potential partnership that the French government plans to establish with Google Inc. The government intends to rely on Google Inc to digitize millions of books for a universal digital library. The Report on the Digitization of the Written Heritage, issued on January 12 2010, still includes a project to form a partnership with Google, despite the desire to maintain a certain control over French cultural heritage.
 
Jean-François Bretonnière, Baker & McKenzie, Paris

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