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Oracle v. Google: Federal Circuit Rules No Fair Use Protection for Google’s Copying of Java API Packages

Copyright Reports

Oracle America, Inc., v. Google LLC, No. 17-1118, (Fed. Cir. Mar. 27, 2018), opinion hosted by

In a result that sends the case back to California for a third jury trial, the Federal Circuit ruled as a matter of law that Google’s use of 37 Java API packages did not qualify as a fair use. Google based their Android operating system on the Java programming language, ensuring there would be an ample supply of developers ready to populate their platform with new apps. Sun Microsystems (the founders of which filed an amicus brief in support of Oracle) developed the Java platform around the motto “Write Once, Run Anywhere,” a revolutionary idea that code written in one language could run on a multitude of platforms. Sun allowed developers free access to the Java language but sold licenses to device manufacturers for the software that translated Java code into usable instructions for each device’s operating system. When Google based its Android operating system on the Java platform, it turned this subscription model on its head by offering their software for free and instead relying on ad revenue. Oracle acquired Sun Microsystems in 2010 and sued in the Northern District of California on both patent and copyright infringement claims. Six years later, the case is headed back to N.D. Cal for a third (and perhaps final) jury trial, unless the Supreme Court accepts Google’s petition for certiorari.

In the original trial, the jury found that Google did not infringe on Oracle’s patent (as reported by JOLT Digest in 2012). They found that Google did violate Oracle’s copyright and deadlocked on the matter of fair use, but Judge William Alsup ruled that the Java API labels were not copyrightable material (also reported by JOLT Digest). The Federal Circuit maintained jurisdiction despite the failure of the patent claim and overturned Judge Alsup’s ruling. Finding the material was subject to copyright protections, the court remanded for further proceedings on the issue of fair use. The Supreme Court rejected Google’s cert petition and a second jury was empaneled. When that jury found that Google’s actions qualified as fair use (JOLT Digest continued to follow the case), Oracle again appealed to the Federal Circuit.

In its second crack at the case, the Federal Circuit rejected the jury’s findings, holding that Google’s actions did not satisfy the fair use standard. Federal copyright law sets out a four-factor test to determine fair use: “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107.  The Federal Circuit reviewed the fair use determination, a mixed question of law and fact, de novo, deferring only to the jury’s findings of historical fact and drawing all inferences from those facts themselves with no deference to the jury verdict. They found that only the second factor weighed in favor of Google—the nature of the Java API was more functional than creative. Significantly, the Federal Circuit reversed the lower court’s finding on the fourth factor concerning the effect on Oracle’s market for smartphone software.

Oracle is seeking close to 9 billion in damages, and the ruling could have repercussions throughout the software development world. As such, it has garnered significant media attention, including from Bloomberg Technology, and The Wall Street Journal. The decision has also resonated across the blogosphere, with Patently-O giving a nice run-down of the legal issues and The Verge just expressing general perplexment at the notion that this case could see yet another jury. Above the Law, the Electronic Frontier Foundation, and others are particularly concerned about the incentive this creates for copyright holders to attach frivolous patent claims to copyright suits in the hope of a more favorable appellate venue. Because the Federal Circuit does not have exclusive jurisdiction over copyright claims, the court applied 9th Circuit precedent in the case, and because the 9th Circuit is not bound to follow the decisions of the Federal Circuit, the situation going forward is muddy at best. Maybe the Supreme Court, to which Google has filed a petition for writ of certiorari, will clear things up.

Michael McCambridge is a 1L student at Harvard Law School.