Google Wins Copyright Dismissal in Textbook Piracy Case

Last year, in June 2024, a group of textbook publishers filed a lawsuit against Google, claiming that the search giant was profiting off of ads for sites that sold pirated textbooks.

According to the lawsuit, the sites sold illegal digital copies of their books. They claimed that they have repeatedly raised the issue with Google since at least 2021 with little to no success. They argued that Google had become a “thieves’ den” for pirated works.

However, this past week, the judge in the case dismissed the copyright portion of the claim (PDF). According to the judge, Google lacked the “right and ability to supervise the infringing conduct.” Therefore, Google could not be held liable for vicarious copyright infringement.

The judge, noting that the publishers had previously had an opportunity to amend the complaint, dismissed the copyright claims with prejudice. This means that they cannot be refiled, though they can be appealed.

But it was not a complete victory for Google. The judge allowed various trademark claims to proceed, noting that many of the ads utilized trademark names and logos. The judge acknowledged that there is little case law on this issue but said that it would be inappropriate to dismiss these claims at this time.

Still, this is a significant win for Google and a setback for the publishers. It may also play a key role in determining when sites, like Google, are liable for running ads for infringing services.

Vicarious Liability and Advertising

For a third party to be held liable for vicarious copyright infringement, a plaintiff has to prove that the defendant has:

1. The right and ability to supervise the infringing conduct and
2. a direct financial interest in the infringing activity

In this case, the second element is pretty obvious. The claim deals with Google’s “Google Shopping” platform. Here, users advertise various products and services, including textbooks. Google receives direct revenue from these ads, fulfilling the second requirement.

However, it was the first that was the biggest problem for the publishers. Google argued that the actual infringement, the sale of pirated textbooks, took place on the pirate sites themselves. Google does not have the “right and ability” to control that infringement.

Though Google and the judge acknowledge that the ads send traffic to those sites, the judge found that wasn’t enough to qualify for that threshold.

In other cases, such as Napster, it was found that infringement was taking place directly on the platform. As such, Napster had a much higher degree of control, making it liable for vicarious infringement.

However, Google is not out of the woods yet. It still has to contend with the trademark claims. Those, it appears, will be much thornier.

The Trademark Dispute

In addition to the copyright claims, the publishers argued that the ads infringed on their trademarks. They noted that the ads contained names and logos protected by trademark.

Google, however, argued that it is merely a marketplace and that the sellers, not it, are responsible for the trademark infringements. According to Google, the sellers were the ones who “applied” the trademark to the work, not it.

To counter this, the plaintiffs and the judge both leaned on two cases involving phone books. In those cases, phone book publishers included trademark-infringing material in advertisements. They were responsible because they had notice of the infringing material and failed to take action to remove it.

Google states that their process is automated, but fails to cite a case where this prevented a marketplace from being held liable. Furthermore, the standard under which they are being sued doesn’t require Google to be the one who “uses” the mark to be liable.

However, since Google is an “indirect actor,” it may be limited to injunctive relief.

Still, this component moves forward toward a possible trial.

A Strange Situation

When dealing with pirated textbooks, one would usually assume that copyright would be the primary legal tool.

If the publishers were suing the sellers, that would likely be the case. They would most likely file a copyright infringement lawsuit, with any trademark claims being secondary.

However, the publishers are suing Google. The claim isn’t that Google is directly pirating ebooks, but instead that it is hosting ads for those who are engaging in piracy. From a legal standpoint, this one step of removal is extremely important.

It was always going to be a tough argument that Google was liable from a copyright standpoint. Section 512 of the Digital Millennium Copyright Act provides online service providers with significant protection from infringement committed by their users.

To clarify, neither side invoked the DMCA in this case. Furthermore, Google would likely have lost any such protection if they ignored notices from the publishers. However, it demonstrates that copyright makes it very difficult to hold intermediaries liable.

Even without DMCA protection, Google was able to avoid copyright liability simply by showing it lacked the necessary control to prevent the infringement. Trademark law, at least for now, places more responsibility on advertising intermediaries.

However, as the court noted, there is very little case law in this area. This case could play a significant role in determining the level of responsibility moving forward. Even if the court limits publishers to injunctive relief, it could set the stage for what ad sites like Google can run in the future.

Bottom Line

The potential impacts of this case extend far beyond the issue of pirated textbooks. Marketplaces, such as Google, have worked diligently to distance themselves from liability on their platforms. The law, for the most part, has worked in their favor.

On the surface, this case is just another example of the law protecting middlemen from infringement claims. However, the trademark argument, as limited as it is, might expose a weakness in the armor.

Even if the court only grants injunctive relief, it could impose a new requirement on marketplaces, particularly those with an advertising focus.

Though it does feel odd that this case would hinge more on trademark issues than copyright ones, it makes more sense when we realize the focus isn’t on the actual piracy, but the ads for the pirate sites.

This will be a case to watch, especially for those who either run ads or feature ads on their site.