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Oracle v. Google: Preserving Fair Use and Creators’ Rights

Oracle v. Google: Preserving Fair Use and Creators’ Rights by Rachel Kim

March 29, 2018

In a closely watched case, the Federal Circuit held on Tuesday that Google’s copying of the structure, sequence, and organization of Oracle’s Java application programming interface (API) library was not a fair use. The case began in 2010 when Oracle sued Google for copying portions of its Java API and incorporating them into Google’s Android platform. It eventually reached the Federal Circuit on the issue of copyrightability, where the court held that the copied portions of Oracle’s Java APIs were indeed protected by copyright law. But following this decision, a jury determined in 2016 that Google’s copying was nevertheless excused by fair use, and the case was again appealed to the Federal Circuit. The Copyright Alliance filed an amicus brief last year in support of Oracle, arguing that if the jury’s decision was upheld, this would have a grave impact on the fair use doctrine and would limit the rights of big and small creators alike.

On March 27, the Federal Circuit held that Google’s use was not a fair use and remanded the case for a new trial to address damages.  In holding for Oracle, the court’s strong stances on the first and fourth fair use factors illustrated exactly why Google’s copying was not fair use. The court noted that this case was simply about Google’s failure to properly license and to truly transform the APIs and about Google restricting Oracle’s abilities to market its works as a copyright owner.

Factor One: Copying a Copyrighted Work Into Another Format or Medium is Not Transformative

The court held the first factor in favor of Oracle, deeming Google’s use to be insufficiently noncommercial and transformative. On the commerciality prong, Google argued that its use was noncommercial because 1) it offered the Android platform for free under an open-source license and 2) because its revenues came “from advertising on its search engine which preexisted Android.” But the court was unpersuaded and pointed out that 1) the fact that Google might also have a noncommercial motive in Android is irrelevant to the question of whether it still stood to profit from the use and that 2) “commerciality does not depend on how Google earns its money.”

The court also found Google’s use insufficiently transformative. Google argued that it had transformed Oracle’s Java APIs by creating a “groundbreaking platform for smartphones.” But the court pointed out that Oracle was already licensing and marketing the Java APIs for smartphone use. Moreover, Google not only used the APIs in the Android to execute the same function and purpose as API packages in the Java platform, but it had also failed to make alterations to the expressive content and message of the copyrighted material, which, the court noted, is what a relevant “transformative” analysis should properly focus on. The court explained that if Google had actually given new meaning to the APIs by, for example, copying the Java APIs to teach others how to design an API, the use might have been transformative. Instead, Google merely took the APIs and “mov[ed] it from one platform to another without alteration.” To the court, this kind of verbatim copying was not “transformative” enough to sway the first factor in Google’s favor.

Factor Four: Copyright Owners Do Not Need To Have Immediate Plans to Enter a Market and Still Can Be Part of a Market Even If It Is Just a Licensor

The court took an even stronger tone on its ruling on the fourth factor regarding potential market harm to the copyright owner by holding it strongly in favor of Oracle. Google argued that Android did not directly compete with the Java APIs because Oracle was 1) not a device maker and because 2) Oracle had not built its own smartphone platform. The court rejected both arguments.

It first pointed out that whether Oracle was actually either a smartphone device or platform maker was irrelevant since the analysis in determining potential market harm focuses on whether the market is one in which “creators of original works would in general develop or license others to develop.” There was plenty evidence that Oracle licensed its Java programming at issue for use in the smartphone and mobile devices market, such as for Amazon’s Kindle.

The court further noted that a potential market includes a market “where the copyright owner has no immediate plans to enter it or is unsuccessful in doing so.” Oracle demonstrated its potential market in using and licensing its Java programming for mobile devices, as the court pointed to the evidence that Oracle and Google had engaged in lengthy licensing negotiations prior to the development and release of Android. The court stated, “Android’s release effectively replaced Java SE as the supplier of Oracle’s copyrighted works and prevented Oracle from participating in developing markets. This superseding use is inherently unfair.”

The Copyright Alliance applauds this decision since it preserves both the integrity of fair use and the integrity of creator’s rights. Fair use is not meant to reward someone who happens to first enter a market for the copyrighted work and punish a copyright owner who might not have immediate plans to enter that same market. This case is also not about stymying all future software and app developments or hindering innovation and creativity—just the opposite. Innovation and creativity is promoted by a copyright owner and creator’s right and ability to license and enter markets for their work. As the court said in its conclusion: “Although Google could have furthered copyright’s goals of promoting creative expression and innovation by developing its own APIs, or by licensing Oracle’s APIs for use in developing a new platform, it chose to copy Oracle’s creative efforts instead. There is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.”

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