Keypoints

In 2004, Google Inc (“Google”) initiated the Google Books website, providing access to online bibliographic information about books and journals and also to the scanned pages of certain materials. Some of the materials were scanned and uploaded as part of Google’s Libraries Project, under agreements with libraries which made their collections available for indexing and scanning. No permission was sought from the authors or publishers of the materials.

Organisations representing copyright owners took legal action against Google in the US, claiming the digitisation of the works and the subsequent communication of them online in the US infringed their copyrights. A settlement agreement was negotiated in 2008, and an amended version received preliminary court approval in November 2009 (“Amended Settlement”). The Amended Settlement will not be binding unless and until certified by the court. The court has yet to determine whether or not to certify the Amended Settlement. However, it is important that affected parties be aware of its terms, and consider whether to take action in relation to it, since the terms of the Amended Settlement:

• cover a wide range of material (including all material published in hard copy in NSW prior to 5 January 2009);
• authorise future as well as past actions; and
• set deadlines after which certain types of claims cannot be made.

In summary, the Amended Settlement:

• applies to all books and journals (and third party works included in such books and journals) published in hard copy in Australia or the US (or meeting certain other criteria) prior to 5 January 2009, whether or not they have been digitised by Google to date;
• only applies to infringements that took place in the US (including scanning books and uploading them to a website);
• authorises Google to copy and communicate all materials within its scope, including those that had not been digitised prior to the litigation; and
• authorises Google to make use of the materials in the US only.

The Amended Settlement does not:

• apply to electronically published materials (such as pages on websites) or unpublished materials;
• apply to any infringements by Google that may have taken place in Australia; or
• authorise any copying or communication of the materials by Google in Australia (for example, making the full contents of scanned materials available to Australian users of Google Books without permission).

In summary, the options open to copyright owners under the Amended Settlement are (noting that more than one option may be available to copyright owners depending on the circumstances):

• Require Google to “remove” the materials from the Google Books US website and subscriber databases (before 5 April 2011 for full removal, or before 5 April 2012 for partial removal);
• At any time, require Google to “exclude” the materials from one or more of the uses proposed in the Amended Settlement (such as providing access to full text online, sale of subscriptions to databases of scanned publications etc);
• If the material was digitised by Google prior to 5 May 2009, claim a compensation payment (before the one year anniversary of the date on which the Court grants final approval of the Amended Settlement);
• Permit use of the materials on the Google Books site and enter a revenue-sharing agreement with Google;
• Take no action, in which case Google may elect to digitise and supply the material to its subscribers, and upload the material to its US Google Books site, unless it determines that copyright in the US still subsists and the material is commercially available.

In order to take action under the Amended Settlement, copyright owners must identify each publication in respect of which they are making a claim. Broad claims such as “all material published by NSW Government” are not accepted. It is not possible for copyright owners to find out whether or not their publications have been digitised by Google until they have lodged claims in respect of those publications.

Following enquiries from some NSW government agencies, and after seeking legal advice, it has been decided that, on a whole of government basis:

1. NSW will not attempt to make a comprehensive claim in respect of all Crown copyright publications that come within the scope of the Amended Settlement.
2. NSW Government agencies that engage in commercial publishing, or for other reasons need to closely control their publications, should carefully consider whether some or all of their publications should be “removed” from the Google Books databases or “excluded” from one or more of the uses proposed in the Amended Settlement.
3. Where an agency decides a claim should be made for “removal” of one or more publications, it should:
   • if possible, prepare and submit a claim for “removal” prior to 5 April 2011, and otherwise do so before 5 April 2012;
   • if the deadline of 5 April 2012 has already passed, prepare and submit a claim to “exclude” the publication as broadly as possible under the terms of the Amended Settlement.
4. If making a claim for “removal” or “exclusion”, an agency should also make a claim for compensation in relation to any material included in the claim that was digitised by Google before 5 May 2009, if the claim is made prior to the one year anniversary of Court approval of the settlement.
5. A copy of each claim should be forwarded to the State Copyright Manager, who will maintain a central record.
6. NSW Government agencies should not enter a “revenue sharing” agreement with Google under the terms of the Amended Settlement.

Brendan O’Reilly
Director General