Reassignment of Judge for Google Book Settlement?

On April 22, 2010, the U.S. Senate unanimously confirmed The Honorable Denny Chin (currently sitting in the U.S. District Court for the Southern District of New York) to fill a vacancy on the U.S. Court of Appeals for the Second Circuit. Below is the summary of the legislative action related to his nomination and confirmation:

Nomination: PN1O6O-111

Date Received: October 06, 2009 (111th Congress)
Nominee: Denny Chin,
of New York, to be United States Circuit Judge for the Second Circuit, vice Robert D. Sack, retired.
Referred to: Senate Judiciary
Reported by: Senate Judiciary


Legislative Actions
Floor Action: October 06, 2009 – Received in the Senate and referred to the Committee on the Judiciary.
Committee Action: November 18, 2009 – Committee on the Judiciary. Hearings held.
Committee Action: December 10, 2009 – Committee on the Judiciary. Ordered to be reported favorably.
Floor Action: December 10, 2009 – Reported by Senator Leahy, Committee on the Judiciary, without printed report.
Floor Action: December 10, 2009 – Placed on Senate Executive Calendar. Calendar No. 607.
Floor Action: April 15, 2010 – By unanimous consent agreement, the Senate proceed to executive session to consider nomination.
Floor Action: April 15, 2010 – Cloture motion presented In Senate.
Floor Action: April 20, 2010 Cloture motion withdrawn by unanimous consent In Senate.
Floor Action: April 20, 2010 – By unanimous consent agreement, debate and vote 4-20-10.
Floor Action: April 22, 2010 – Considered by Senate pursuant to an order of April 20, 1010.
Floor Action: April 22, 2010 – By unanimous consent agreement, vote at 12 noon.
Floor Action: April 22, 2010 – Confirmed by the Senate by Yea-Nay Vote. 98 0. Record vote Number: 123.

Organization: The Judiciary
Control Number: 111PN0106000

Source: THOMAS (Library of Congress) (Screen clipping taken: 5/7/2010, 3:44 PM)

(Many times, links to the URL for the search results in the Library of Congress’s Thomas site end up not working, so I copied the text and provide it above.) The Congressional Record shows a report of the confirmation here (bottom right of the page).

The Wall Street Journal published a brief bio of Judge Chin when he was nominated in the Fall of 2009, noting that he is best known for “sentencing convicted Ponzi-scheme operator Bernard Madoff to 150 years in prison” earlier in 2009. See also, Benjamin Weiser, “Senate Confirms Federal District Judge for Appeals Court,” The New York Times, City Room (Apr. 22, 2010).

This confirmation is particularly interesting because Judge Chin currently presides over the Google Book Settlement case (Author’s Guild v. Google), which I’ve blogged about in the past. (Prior blog posts can be found archived together.) I have not found any information about when Judge Chin’s term begins on the Second Circuit, but note that he is currently listed as an active judge on the Second Circuit, effective 4/23/2010.

It remains to be seen who will be assigned to the Google Book Settlement once Judge Chin formally takes up his position as a judge of the Second Circuit, but the change will undoubtedly prove to be very interesting and may have a noticeable impact on the proceedings.

Google Book Project – Notice of Revised Settlement Agreement

On December 14, 2009, the Settlement Administrator for the Google Book Project distributed a Supplemental Notice of the revised settlement. (More information about developments in the Authors’ Guild v Google lawsuit can be found in prior posts.) The Notice identifies the following changes to the various deadlines to proceed:

On or before January 28, 2010:

* Deadline to Opt Out of the settlement agreement, by completing and submitting the Opt Out Form (if a claimant already opted out of the prior version of the settlement agreement, it is not necessary to file another Opt Out Form).

* Deadline to Opt Back In to the settlement agreement, if an Opt Out Form was previously submitted.

* File an Objection to the Amended Settlement. If a claimant previously filed an objection to the prior settlement agreement, it will be maintained – without having to file it again. This deadline is for new objections only. (Parties can withdraw prior objections up until the date of the Fairness Hearing, if necessary.)

On or before February 4, 2010:

* File a notice of intent to appear at the Final Fairness Hearing.

February 18, 2010:

* The scheduled date for the Final Settlement/Fairness Hearing.

(The dates above were also set forth in the Court’s November 19, 2009 Order granting preliminary approval to the amended settlement agreement.)

On or before March 31, 2011:

* Deadline for any claimant who wishes to receive cash payments for “Books and Inserts” (as those terms are defined by the settlement agreement) to submit their claim forms. If a claimant is unable to submit a claim online, paper forms are available.

More details about the administration of the settlement agreement can be found on the Administrator’s Site, and potential claimants should review all of the details provided directly by the Administrator, in case specific forms or requirements change over the course of the administration period.

Related News

The Congressional Research Service released a report on November 27, 2009, analyzing Google’s argument that it did not infringe the copyrights at issue because its use (in digitizing, indexing and re-publishing to some extent the underlying works) qualified for the “fair use” defense to act as a complete bar to liability. The report, “The Google Library Project: Is Digitization for Purposes of Online Indexing Fair Use Under Copyright Law,” was prepared by Kate M. Manuel, Esquire, a legislative attorney with CRS, and is available through various subscription-only sites. If you have a subscription to BNA’s Patent, Trademark & Copyright Journal, you can find a copy of the Report as a reference at the end of the article entitled “Google Books Settlement Could Be Back Before Court, Foreign Litigation a Possibility,” 79 PTCJ 154 (Dec. 11, 2009).

Update on Google Book Settlement

On November 13, 2009, the parties to the Author’s Guild, Inc. v. Google, Inc. lawsuit submitted a revised settlement agreement, for which it sought court approval. Prior posts about the lawsuit and its implications can be found here.

The revised settlement agreement is 171 pages (the original agreement was a mere 134 pages) – so it will take some time before all of the pivotal terms and conditions are understood and vetted by the media, government agencies and the public. I have only briefly scanned the revised agreement, and may decide at a later date to enhance my own written analysis of its implications as I become more familiar with its terms.

In the meantime, here are some provisions of interest of the revised Agreement for your preliminary consideration:

* Google will pay “a minimum of $45 million into the Settlement Fund to pay Settlement Class members whose Books and Inserts have been Digitized prior to the May 5, 2009.” Agreement ¶ 2.1(b).

* Anyone who wishes to receive a cash payment under the revised settlement agreement must file their claim form by March 31, 2011.

* Plaintiffs’ attorneys can receive up to $30 million in fees after the effective date of the Agreement (assuming that it obtains final approval by the Court). Agreement ¶ 5.5.

* The Agreement proposes to distribute “at least $60 per Principal Work,” and less for entire copies of “inserts” ($15) or partial copies of “inserts” ($5). Agreement ¶ 5.1(a).

* Certain foreign works have been removed from coverage by the Agreement (although works published in Britain, Canada or Australia are still covered). Agreement ¶ 1.19.

* Other online book distributors may participate in the distribution of out-of-print and unclaimed works (a right that previously had been reserved for Google exclusively). Agreement ¶ 2.4.

* Rights holders can direct Google to exclude their works (with some limitations) provided that the request is received no later than March 9, 2012. Agreement ¶ 3.5(a)(iii).

* Google may still elect to exclude works from the database for any “editorial or non-editorial” reasons, although it must provide a digital copy of the excluded work (along with an explanation of why it was excluded) to the Book Rights Registry. Agreement ¶¶ 3.7(e) & (e)(i).

* Google apparently will be allowed to continue scanning works that are not subject to payment under the Agreement. Agreement ¶ 3.1(a). Thus, even this revision appears to severely limit the online distribution rights of authors and publishers.

* Books and inserts can be designated as either “Display” or “No Display” – in other words, the author/publisher can request that the book not be displayed in search results. Agreement ¶¶ 3.3, 3.4. It appears, however, that the scanned copy of a book designed “No Display” will continue to exist in the database, even if Google is not permitted to display it in the search results.

Other Analyses of the Revised Settlement Agreement

Others have opined about the impact of this revision, including the following:

* Jonathan Band’s A Guide for the Perplexed, Part III, analyzing the November 13 amendments to the settlement agreement in great detail;

* Copyright Clearance Center seminars and webinars about the impact of the settlement;

* Electronic Frontier Foundation’s Deep Links Blog covered the revised settlement agreement from the perspective of the pros and cons, access, competition, and privacy;

* Dr. James Grimmelman’s Blog, The Laboratorium;

* The Official Settlement Web Site;

* The Public Index and its annotated copy of the revised settlement agreement;

(*Note that I have not fully analyzed or reviewed each of these external links – and therefore do not endorse their opinions or recommendations. I am providing links to these sources, however, in the interest of fostering a diverse and robust discussion of the impact of this agreement on copyright law and electronic book publishing into the future.)

Court Grants Preliminary Approval and Sets Deadlines

On November 19, 2009, the Court granted preliminary approval of the Amended Settlement Agreement, and set February 18, 2010 as the new hearing date for the Final Fairness Hearing. Any opposition to the revised settlement agreement must be filed by January 28, 2010. Any class member who wishes to appear at the hearing must file a Notice of Intent to Appear no later than February 4, 2010.

Final Fairness Hearing on Google Books Settlement Re-Scheduled for November 9

On October 7, 2009, as scheduled, Judge Denny Chin held a status conference among the parties to the Authors’ Guild et al. v. Google, Inc. lawsuit to consider the settlement agreement reached between the parties. Jessica E. Vascellaro, “Google Gets Until Nov. 9 to Revise Book Pact,” The Wall Street Journal, Oct. 8, 2009. During this status conference, the Court set November 9, 2009 as the new date for the Final Fairness Hearing. Id.

As described in prior posts on this topic, October 7 had been the anticipated Final Fairness Hearing to consider the settlement agreement, but due to the overwhelming number of filings (both in opposition and in support of the settlement agreement), and particularly the Statement of Interest filed by the Department of Justice in which the DOJ raised several preliminary concerns on antitrust grounds to the settlement. In that brief, the DOJ made “suggestions” about changes that needed to be made to the settlement agreement in order to account for potential antitrust concerns.

As further reported previously, Plaintiffs requested a continuance (uncontested by Google) of the October 7 Hearing to permit negotiations among the parties and the DOJ to make sure that these concerns had been addressed. See Motion and Memorandum of Law in Support. While the Court granted the request for a continuance, he required the parties to attend a status conference instead. See Court’s September 24, 2009 Order.

Google Book Settlement Agreement to be Modified

The parties to the Authors’ Guild et al. v. Google et al. Settlement Agreement currently pending before Judge Chin in the Southern District of New York asked the Court on September 22, 2009 to postpone the scheduled October 7th Final Fairness Hearing in order to permit further negotiations to reach a revised settlement agreement. Plaintiffs’ Memorandum In Support of Unopposed Motion to Adjourn October 7, 2009 Final Fairness Hearing And Schedule Status Conference, Civ. A. No. 1:05-cv-08136-DC, filed Sept. 22, 2009 (Docket Entry 729). Plaintiffs’ brief in support of their motion described the objections received to date as “hundreds of objections from individuals and corporate entities within and from outside of the United States, from the Federal Republic of Germany and the Republic of France, and from the Attorneys General of six states (Connecticut, Kansas, Missouri, Pennsylvania, Texas, and Washington).” Id. at 1. The new date requested was November 6.

In prior posts, I have discussed the implications of the settlement and objections and requests for approval that have been received by the Court. But, since my last posting, numerous additional objections had been filed – Judge Chin noted that over 400 filings have been made, including both objections and statements of support. Order, September 16, 2009 (Docket Entry 716).

Copyright Office’s Objection to Settlement Agreement

On September 10, Marybeth Peters, Register of Copyrights (at the U.S. Copyright Office) testified before the House of Representatives, Committee on the Judiciary raising the Office’s concerns the terms of the settlement, and the possibility that it creates a compulsory license to permit Google to digitize and distribute every work published in the U.S. through January 5, 2009. See Statement of Marybeth Peters, The Register of Copyrights Before the Committee on the Judiciary, September 10, 2009.

In particular, Ms. Peters summarized the Copyright Office’s concerns about the settlement agreement:

* Imposing a (Judicial) Compulsory License: Ms. Peters testified that the Settlement Agreement extended more broadly than merely forgiving Google for its past infringement and providing a remedy to those whom it harmed. Instead, the Agreement provided a mechanism to engage in further infringement without risk of liability, and affects a much broader base of copyright owners who were not represented during the original litigation. Id. ¶¶ 7, 12-18. Ms. Peters noted that compulsory licenses are typically “the domain of Congress” and argued that the Court should not be permitted to grant such a license in Google’s favor without giving Congress the opportunity to weigh in. Id. ¶ 15. Further, she testified that compulsory licenses “are generally adopted by Congress only reluctantly, in the face of a marketplace failure.” Id. Such marketplace failure is absent here.

* Treatment of Out-of-Print Works is Flawed: Under Copyright Law, the initial question of whether infringement has occurred focuses on whether the work in question is protected by copyright law. Whether the work continues to be available in the marketplace for purchase by interested buyers or whether it is no longer in-print is irrelevant to the analysis of copyrightability. Id. ¶ 19. Ms. Peters testified that the Settlement Agreement provided Google with certain default rules for dealing with out-of-print works, essentially allowing Google to copy, distribute and otherwise capitalize on them without liability until the rights holders ask Google to stop. Id. ¶ 20.

Ms. Peters also identified concerns over the treatment of orphan works, an issue that was the subject of draft legislation. She explained:

“Orphan works are works that are protected by copyright but for which a potential user cannot identify or locate the copyright owner for the purpose of securing permission. They do not include works that are in the public domain; works for which a copyright owner is findable but refuses permission; or works for which no permission is necessary, i.e. the use is within the parameters of an exception or limitation such as fair use. Many out-of-print works have rights holders who are both identifiable and locatable through a search.”

Id. ¶ 24. She further testified that approving the settlement as drafted would “make it exceedingly difficult for Congress to move forward” in finding a solution for orphan works, and would instead provide Google with an exemption from liability without finding a permanent solution for the problem of locating rights holders in order to obtain permission to use a work and make appropriate royalty payments for such use. Id. ¶ 23.

* Settlement Agreement Inappropriately Includes International Works that were Not Included in the Litigation: Ms. Peters outlined problems that foreign rights holders have, in that their works may be contained in a research library that has decided to partner with Google in this digitization project. Id. ¶ 27. “As a matter of policy, foreign rights holders should not be swept into a class action settlement unknowingly, and they should retain exclusive control of their U.S. markets.” Id. Ms. Peters noted that several foreign governments (particularly France and Germany) and foreign rights holders have alleged that the U.S.’s treaty obligations will be implicated by this Settlement Agreement, and perhaps even abrogated. Id. ¶¶ 29-31. While she did not concede that these obligations have been compromised in actuality, she testified that “it is a cause for concern when foreign governments and other foreign stakeholders make these types of assertions.” Id. ¶ 31.

Potential Benefits from a Digitization Project

Ms. Peters also lauded some of the more positive aspects to the Settlement Agreement that “should be encouraged under separate circumstances.” Id. ¶ 6. Specifically: 1) the creation of a book rights registry could improve the licensing structure and the ability to collect small royalty payments related to using works in digital form; 2) providing access to millions of titles to blind and print-disabled library patrons is “not only responsible and laudable, but should be the baseline practice for those who venture into digital publishing;” 3) enabling copyright owners and technology companies to share advertising revenues is a worthwhile business goal; and 4) increasing libraries’ abilities to offer digital access to works in their collection (and elsewhere) should be encouraged. Id. Despite these benefits, however, “none of these possibilities should require Google to have immediate, unfettered and risk-free access to the copyrighted works of other people.” Id.

U.S. Department of Justice’s Antitrust Concerns

In addition, on September 18, 2009, as scheduled, the US Department of Justice filed its brief outlining its concerns (including both antitrust and copyright concerns) with the terms of the settlement as currently drafted. Statement of Interest of the USA Regarding Proposed Class Settlement, Civ. A. No. 1:05-cv-08136-DC, filed September 18, 2009 (Docket Entry 720). The DOJ’s brief invited certain modifications and noted that the parties to the suit had already suggested that such a modified settlement agreement could be presented to the Court for approval. (Indeed, as noted above, the parties have now requested an extension of the Final Fairness Hearing in order to negotiate such a modified agreement.) Specifically, the DOJ’s brief made the following observations:

* A “global disposition of rights to millions of copyrighted works is typically the kind of policy change implemented through legislation, not through a private judicial settlement.” Id. at 2.

* The Settlement Agreement seeks to implement a “forward-looking business arrangement”, not merely a “settlement of past conduct.” Id. at 2-3 (note that this is the same concern raised by Ms. Peters, Register of Copyrights, as summarized
above).

* The Agreement would create a marketplace in which only one competitor (Google) would have rights in a “vast array of works” (especially orphan works). Id. at 3.

* The Agreement authorizes Google to obtain a license to “exploit copyrighted works of absent class members for unspecified future uses” – thus “essentially authorizing [with the agreement of the Book Rights Registry] the open-ended exploitation of the works of all those who do not opt out from such exploitation.” Id. at 7.

* The Agreement and the process of this case to date has provided inadequate notice to absent copyright holders that they must opt out of this Agreement or the terms will operate once approved to limit their exclusive rights in the future. See id. at 7-10.

Despite these concerns, the DOJ identified some benefits that could come out of this settlement negotiation, if the Agreement were to be modified in certain ways:

* The potential to create a “vibrant marketplace for the electronic distribution of copyrighted works, including in-print, out-of-print and so-called ‘orphan’ works.” Id. at 1.

* The potential to “breathe life into millions of works that are now effectively off limits to the public.” Id.

* The potential to “open the door to new research opportunities.” Id. And,

* The potential to increase accessibility to certain works by “users with print disabilities.” Id.

The DOJ’s brief also acknowledged that it provides only a preliminary analysis of its antitrust concerns, since the investigation continues. Id. at 3.

Current Status

On September 24, 2009, the Court accepted Plaintiffs’ unopposed motion for an adjournment (or continuance) of the October 7 hearing date, but did not set a new date for the Final Fairness Hearing. Order, September 24, 2009 (Docket Entry 735). The Court instead re-characterized the October 7 hearing date as a status conference, which the parties are required to attend, but at which the Court “will not hear argument from any objectors, supporters, or amici – including those who emailed requests to be heard – at this conference, though they are free to attend.” Id. at 2.

If you are interested in more information, you can review other items on the docket through Justia. (I haven’t compared this copy of the docket in depth against the official docket provided by Pacer (at a cost), but it appears to provide copies to most of the key docket entries I’ve reviewed over the last few weeks.)