Tag: Google v. Oracle

Artist Roundtable Presented by the Mason Sports & Entertainment Law Association and the Arts & Entertainment Advocacy Clinic

Post author By Joshua Grove
Post date May 5, 2021

The following post comes from Austin Shaffer, a 2L at Scalia Law and a Research Assistant at CPIP.

By Austin Shaffer

On April 6th, the Mason Sports & Entertainment Law Association, in conjunction with the Arts & Entertainment Advocacy Clinic, hosted its Artist Roundtable event. Moderated by Professor Sandra Aistars of Scalia Law, the panel featured musician and producer David Lowery, filmmaker and photographer Stacey Marbrey, and author and director David Newhoff. To kick off the event, Prof. Aistars invited each of the panelists to introduce themselves and highlight any ongoing projects.

About the Panelists

Stacey Marbrey is an award-winning film director, producer, and internationally recognized editorial photographer and has programmed numerous film festivals. Previously, she acted as Program Director for an international film exchange under the auspices of the U.S. Department of State in concert with both the President’s Committee on the Arts and Humanities and the American Film Institute.

David Lowery is an American guitarist, vocalist, songwriter, mathematician, and activist. He is the founder of alternative rock band Camper Van Beethoven and co-founder of the traditional rock band Cracker. Throughout his career in the music industry, Mr. Lowery has worked in nearly every role imaginable, from both the business and music perspectives. Recently, he worked on a small project with limited online CD sales to experiment with a new revenue stream and business model. Mr. Lowery frequently posts at the popular blog “The Trichordist.”

David Newhoff is a writer and copyright advocate. He recently finished his first book, Who Invented Oscar Wilde? The Photograph at the Center of Modern American Copyright. He lives in New York’s Hudson River Valley, where he is currently working on his next book. Mr. Newhoff also writes the popular copyright blog “The Illusion of More.”

How do creative roles intersect with legal issues? What can lawyers do a better job of understanding when engaging with creators?

Mr. Lowery highlighted the importance of the intersection between the arts and legal roles. Unfortunately, he noted, there is a stigma in the artistic community regarding the use of legal action. He commented that, while you should generally attempt to resolve disputes internally, you cannot be afraid to use the legal system to enforce your rights. Even the legally savvy artists can misjudge the scope of the rights to which they are entitled. Mr. Lowery emphasized the need to provide artists with an “intervention”: register your works with the Copyright Office, guarantee your revenue streams with the Mechanical Licensing Collective, and enforce your rights.

On a similar note, Mr. Newhoff echoed the notion that some artists do not fully appreciate the scope of their rights and––perhaps more importantly—their obligations. It is not uncommon, he explained, for creators to assume that their publisher will handle all the legal responsibilities that go into creating a work (i.e., clearing photographs, obtaining permission to publish interviews, etc.). That assumption, however, leaves the author subject to potential liability for copyright infringement. Rather than taking that risk, Mr. Newhoff argued, creators should be proactive in fulfilling their legal obligations.

Commenting on Mr. Newhoff’s observations, Ms. Marbrey remarked that, in many cases, creators wear many different hats and serve in various roles throughout the course of creating a work. Particularly in the film industry, it can be difficult for creators to keep their various duties and obligations separated and organized. Ms. Marbrey argued that this is one problem that lawyers can help to solve. By taking the time to understand the numerous roles in which a single creator may serve, lawyers can help to ensure that creators are getting maximum value out of their efforts.

The Stigma Against Contracts

The panelists each made unique observations on the use of contracts and how their respective industries tend to perceive them. Prof. Aistars pointed out a concerning trend: creators tend to have a negative view towards contracts and consequently refrain from using them. She commented that, in general, no one wants to be the person to involve lawyers in otherwise “friendly deals.”

The panelists shared stories from their careers that demonstrated this stigma. Ms. Marbrey, for example, worked on a collaborative project involving multiple SAG actors. The parties declined to set up a contractual framework to properly address various SAG-AFTRA requirements for actors. Consequently, the production was later paused to renegotiate deals with the actors after the film was already completed. Due to this misstep, the release of the project was delayed.

The panelists concluded that, while it may force some uncomfortable conversations at the onset of a project, creators should become more liberal with their use of contracts. Doing so allows for a mutual understanding between all parties before any time is invested into the creative process.

Current Trends to Watch in Copyright Law

This portion of the discussion offered a unique insight into the development of copyright law from creators’ perspectives. While the conversation was wide-ranging, there were several common topics that the panelists found especially significant.

The panelists came to a consensus that the general agenda of weakening copyright law could cause devastating effects to the creative community. Mr. Newhoff pointed specifically to the ongoing work being done by the American Law Institute (ALI) on a potential Restatement of Copyright. He argued that broadly speaking, the academic world tends to take an anti-copyright law stance. The panelists agreed that this should generate concern from the creative community and that individual creators should strive to have their voices heard as this project continues.

In general, creators tend to have difficulties understanding the scope of fair use. Especially given the recent Supreme Court decision in Google v. Oracle, there is an element of amorphousness to the fair use doctrine. The panelists concurred that, without legal assistance, creators will likely continue to struggle in determining what constitutes fair use and what requires a license to use.

The event concluded with a discussion on how creators can adapt to and update with the digital age. As a threshold matter, Mr. Newhoff argued that it is hard to fit 20th-century copyright doctrine into the 21st-century landscape. Moving forward, some of the copyright laws may need to be updated (or at least monitored) to better facilitate the production of creative works. Optimistically, Ms. Marbrey noted that the “streaming takeover” is exciting for filmmakers. Although streaming can pose tricky and previously unconsidered issues surrounding copyright law, it offers a new way for creators to showcase their works and opens the door to innovative revenue streams.

Tags artists, Arts & Entertainment Advocacy Clinic, Austin Shaffer, contracts, copyright, David Lowery, David Newhoff, event, fair use, film, Google v. Oracle, Mason Sports & Entertainment Law Association, music, panel, Sandra Aistars, Stacey Marbrey, streaming, Supreme Court

Recap of the Supreme Court’s Google v. Oracle Opinion

Post author By Joshua Grove
Post date April 23, 2021

The following post comes from Liz Velander, a recent graduate of Scalia Law and a Research Assistant at CPIP.

By Liz Velander

The Supreme Court finally reached a determination in the decade-long dispute between two of the biggest technology companies in the world, Google and Oracle. Many have long-awaited the Court’s decision in this case, as it had the potential to provide market certainty in the software industry through its copyrightability analysis. The Court ultimately declines to give that certainty by bypassing the copyrightability issue and choosing to base its holding on a fact-intensive fair use analysis. The Court does this so as to “not answer more than is necessary to resolve the parties’ dispute,” “given the rapidly changing technological, economic, and business-related circumstances.” It emphasizes that its holding is narrow, only applies to declaring code, and does not modify its prior cases on fair use. However, by framing its opinion this way, the Court provides new arguments for infringers to use in a fair use defense in the software sphere and beyond. For this reason, the Court’s decision is not as narrow as it sets out to be. It may lead to lower court decisions that broaden the fair use doctrine and limit the copyright protection given to software.

The Court’s decision broadens fair use by using the doctrine to loosen copyright protection for certain types of code, allowing for a more expansive reading of a “transformative use,” and giving great weight to the public benefit of the use. Before it engages in its fair use analysis, the Court states that “fair use can play an important role in determining the lawful scope of a computer program copyright, such as the copyright at issue here.” Fair use “can distinguish between expressive and functional features of computer code where those features are mixed.” It can also “focus on the legitimate need to provide incentives to produce copyrighted material while examining the extent to which yet further protection creates unrelated or illegitimate harms in other markets or to the development of other products.” The Court describes fair use as a “context-based check that can help to keep a copyright monopoly within its lawful bounds.”

To highlight the ability of fair use to accomplish these goals, the Court begins its analysis with the second statutory factor, “the nature of the copyrighted work.” The Court uses this factor to discuss issues that would have come up if it analyzed the copyrightability of Oracle’s material, such as the applicability of the merger doctrine. It then moves to “the purpose and character of the use,” where it adopts an expansive reading of what constitutes a “transformative use.” The biggest impact of the Court’s fair use analysis, however, will likely come from the great weight it gives to the public benefit of the use under the market effect factor. By using fair use to determine “the lawful scope of a computer program copyright,” the Court’s holding may inadvertently broaden the fair use doctrine.

The Nature of the Copyrighted Work

The Court begins its analysis with describing “the nature of the copyrighted work.” The copyright at issue protects a portion of Oracle’s Java SE platform, called declaring code. Java SE has three essential parts: (1) implementing code, (2) method calls, and (3) declaring code. Implementing code tells the computer how to execute the particular task the programmer asks it to perform. Method calls are commands that help the computer carry out the task by choosing the correct programs written in implementing code. The declaring code is how the method call actually locates and invokes the particular implementing code that it needs to instruct the computer how to carry out a particular task.

For each task, the specific method call entered by the programmer matches up with a specific declaring code inside Java SE. That declaring code provides both the name for each task and organizes them within Java SE’s library. In this sense, the declaring code and the method call form a link, allowing the programmer to draw upon the thousands of prewritten tasks, written in implementing code. Without that declaring code, the method calls entered by the programmer would not call up the implementing code.

In this case, Google did not copy the implementing code from Oracle’s Java SE platform; it copied the declaring code. The Court draws a “critical line” between the uncopied implementing code and the copied declaring code under this factor. On one hand is the innovative implementing code and on the other, user-centered declaring code. The Court explains that the writing of implementing code requires balancing considerations as to how quickly a computer can execute a task or the likely size of a computer memory. The Court says that this balancing is “the very creativity that was needed to develop the Android software for use not in laptops or desktops but in the very different context of smartphones.”

Declaring code, the Court says, embodies a different kind of “creativity” because it is user facing. It must be designed and organized in a way that is intuitive and understandable to developers so they can invoke it. As part of a user interface, declaring code differs from most computer code because “its use is inherently bound together with uncopyrightable ideas (general task division and organization) and new creative expression (Android’s implementing code).” For these reasons, the Court concludes that “the declaring code is, if copyrightable at all, further than are most computer programs (such as the implementing code) from the core of copyright.” Therefore, the Court finds that the second factor, “nature of the copyrighted work,” points in the direction of fair use.

The Purpose and Character of the Use

The Court explains that the inquiry into “the purpose and character” of the use turns in a large measure on whether the copying at issue was “transformative,” that is, whether it “adds something new, with a further purpose or different character.” The Court finds that, even though Google copied Oracle’s declaring code verbatim, its use was “transformative” because it furthered the development of software programs.

The Court explains that what Google did is known as “‘reimplementation,’ defined as the ‘building of a system . . . that repurposes the same words and syntaxes’ of an existing system.” Google “reimplemented” Oracle’s declaring code to allow programmers expert in the Java programming language to use the “task calling” system that they had already learned. By using the same declaring code, programmers using the Android platform can rely on the method calls that they are already familiar with to call up particular tasks. Then Google’s own implementing code carries out those tasks.

The Court concludes that Google’s copying was a transformative use. “Google’s purpose was to create a different task-related system for a different computing environment (smartphones) and to create a platform—the Android platform—that would help achieve and popularize that objective.” Such use is “consistent with the creative ‘progress’ that is the basic constitutional objective of copyright itself.” Therefore, the purpose and character of Google’s copying was transformative to the point at which this factor also weighs in favor of fair use.

The Amount and Substantiality of the Portion Used

The Court says that the question here is whether the over 11,000 lines of code Google copied should be viewed in isolation or as one part of a considerably greater whole. On one hand, those lines of code amount to virtually all the declaring code needed to call up hundreds of different tasks. On the other hand, if one considers the entire set of software material in the Java SE platform, the quantitative amount copied was small (only 0.4 percent).

The Court decides to view Google’s copying as one part of a greater whole because the amount of copying was “tethered to a valid, and transformative, purpose.” It explains that Google did not copy the lines because of their creativity but because programmers had already learned to work with the Java SE platform, and it would have been difficult to attract programmers to build its Android smartphone system without them. It describes the portion of the declaring code used at “the key that [Google] needed to unlock the programmers’ creative energies. And it needed those energies to create and improve its own innovative Android systems.” For these reasons, the Court holds that this factor weighs in favor of fair use.

Market Effects

The fourth statutory factor focuses upon the “effect” of the copying in the “market for or value of the copyrighted work.” The Court explains that this requires a court to consider the copyright owner’s potential loss of revenue, the source of the loss, and the public benefits the copying will likely produce. As to the likely amount of loss, the Court states that Oracle was ill-positioned to enter the smartphone market, so the jury could have found that Android did not harm the actual or potential markets for Java SE. As to the source of the loss, the Court finds Android’s profitability has much to do with third parties’ (programmers’) investment in the Java programs and less to do with Oracle’s investment in creating the Java SE platform. It says that the Copyright Act does not protect third parties’ investment in learning how to operate a created work.

Finally, given programmers’ investments in learning the Java SE platform, to allow enforcement of Oracle’s copyright here would risk harm to the public by operating as a lock on innovation. “The result could well prove highly profitable to Oracle (or other firms holding a copyright in computer interfaces). But those profits could well flow from creative improvements, new applications, and new uses developed by users who have learned to work with that interface. To that extent, the lock would interfere with, not further, copyright’s basic creativity objectives.” The Court concludes that the uncertain nature of Oracle’s “ability to compete in Android’s market place, the sources of its lost revenue, and the risk of creativity-related harms to the public, when taken together, convince that this fourth factor—market effects—also weighs in favor of fair use.”

The Court ends its opinion by noting that “the fact that computer programs are primarily functional makes it difficult to apply traditional copyright concepts in that technical world.” While that is certainly true, the Court made its work more difficult by basing its opinion in fair use instead of analyzing the copyrightability of Oracle’s code in the first place.

Tags code, copyright, copyrightability, fair use, Google v. Oracle, Java SE, Liz Velander, software, software development, Supreme Court, transformative use

Google v. Oracle at the Supreme Court: Copyrightability, Fair Use, and Standard of Review

Post author By Joshua Grove
Post date October 15, 2020

The following post comes from Chris Wolfsen, a recent graduate of Scalia Law and a Research Assistant at CPIP.

U.S. Supreme Court building By Chris Wolfsen

Grocery store shelves, QWERTY keyboards, and restaurant menus. These are just three of the analogies that Supreme Court justices used to grapple with the complex issues in the long-awaited Google v. Oracle oral argument that was heard last Wednesday, October 7. The case between the two tech companies that has been brewing for over a decade comes down to 11,000 lines of Oracle’s Java code that Google copied, without permission, for use in its well-known Android smartphone platform—a competing product.

Oracle originally filed suit in 2010 against Google in the U.S. District Court for the Northern District of California for both patent and copyright infringement. In 2014, the Federal Circuit ruled that Oracle’s code was copyrightable, and Google appealed to the Supreme Court, only to be denied review. On remand, again in the district court, Google claimed that its use of the Oracle code was fair use—meaning that even if it were an infringing use it should still be allowed by law. In 2016, a jury sided with Google, and Oracle filed a motion to challenge the jury verdict, which was denied. So instead, Oracle appealed the case back up to the Federal Circuit where the court reversed the lower court’s judgment and held that Google’s copying of the code was not fair use and that the copyrightability issue that was resolved in its 2014 decision still applied. In 2019, Google filed its petition for Supreme Court review once again, and finally the time for oral argument arrived.

The main issues for the Court to decide are a review of the Federal Circuit decisions—whether Oracle’s code was copyrightable to begin with and whether Google made fair use of the code. But also, and perhaps most importantly, the Court must decide what standard of review should be used to make a fair use determination. This last question will have a lasting impact far beyond this particular dispute.

Copyrightability

Under the Section 102 of the Copyright Act, software is considered a “literary work” and is afforded legal protection. Oracle would therefore have the right to prevent others from using its code or, as was the case, license the use of its software for others to use. But Google makes an argument under the merger doctrine that the code was never subject to copyright protection. The merger doctrine states that when an idea and its expression are inextricably merged there cannot be any copyright protection for the idea. This doctrine gets right to the heart of copyright law: original expression is protectable; an idea—a method, a system, a way to explain something—is not. Google’s argument is that there is only one way to express Oracle’s code, and therefore the code itself cannot be copyrightable at all. Google repeatedly suggests that to rule otherwise would be imparting protection over a method, which is something reserved for patent law.

The Court, and perhaps the rest of us not well-versed in computer science, struggled with this concept in the context of a very technical set of facts. Google’s counsel, Thomas Goldstein, drew comparisons to the Baker v. Selden Supreme Court case where Selden created a new method of bookkeeping and attempted to assert copyright protection over his ledger forms. Goldstein likened Oracle’s code to those ledgers—innovative and hugely successful, but merely a methodology that does not warrant copyright protection. The justices took turns proposing different hypotheticals to challenge this argument. First was Chief Justice Roberts, “cracking the safe may be the only way to get the money that you want, but that doesn’t mean you can do it,” followed by Justice Thomas’s analogy to a football team’s playbook that Google swiped for its own win. Mr. Goldstein argued back that copyrighting the knowledge itself of how to crack a safe would not be allowed and that Google is not “trying to take someone’s fan base or their football players or anything else.” The justices did not seem convinced by Google’s assertion that Oracle’s method of writing code was the only way to create the function Google wanted for its Android platform.

It is easy to get lost in the technical language of the case, between declaring code and implementing code and shortcut programs. Oracle’s counsel, Joshua Rosenkranz, cut through all those distinctions saying, “code is code,” and he pointed out that no circuit court drew a distinction between the types of code. Congress could have carved out different types of code in its consideration of the Copyright Act, but it expressly chose otherwise. Mr. Rosenkranz also circled back to distinguish Oracle’s code from the accounting ledgers in the Baker v. Selden case, highlighting that Oracle is not trying to prevent others from creating their own programs. “Others are free to write and organize their own prewritten programs however they see fit, as long as they don’t copy ours.” Mr. Rosenkranz underscored, and multiple justices acknowledged, that other competitors like Apple and Microsoft did not resort to pure copying to create their products, and that companies like IBM and SAP paid Oracle to properly license the code. Just because Oracle’s method was the most elegant, and therefore popular, way of expressing the code does not make it the only method of doing so. Mr. Rosenkranz summarized this issue well, saying, “the Copyright Act does not give Google a pass just because it would be expensive to recreate our expression.”

Fair Use

Even if the code were copyrightable in the first place, Google argues, fair use still justifies its copying of the code. Fair use is an affirmative defense to an accusation of copyright infringement. A person or entity who has plainly copied another’s protected work can argue fair use to justify their taking and subsequent use of the copyrighted material. Congress has enumerated a four-factor test within the Copyright Act for courts to follow when evaluating a fair use claim—a test that the Supreme Court last used 26 years ago in Campbell v. Acuff-Rose Music—weighing the purpose and character of the use, the nature of the original work, the amount and substantiality of the portion used, and the effect of the use on the market value of the original work.

Modern courts, when evaluating the first factor of purpose and character of the infringing use, often focus on whether the use was transformative. Google has used this argument successfully in the past, in Authors Guild v. Google, defending its copying of millions of books for use in its Google Books search engine. The court in that case found that digitizing books for use in an online search database was highly transformative. In this case, Mr. Goldstein tried to make a similar argument that Google wrote an improved version of Oracle’s Java code to be more suitable for use in a smartphone. Mr. Goldstein said that this is “what Congress would want, that is to be able to take the functionality of a computer program, [and] someone else comes along and does it better.” He then stated that computer code only performs one function and therefore can still be considered transformative even if it does nothing different than the original work, only to later argue that the word “transformative” is not used in the Copyright Act and might not even be the correct standard of evaluation in this case.

Google also maintained a policy argument that “reusing software interfaces is critical to modern interoperable computer software,” and that to rule in Oracle’s favor would “upend that world” and make computer programming so inefficient as to have fewer creative computer programs. Justice Kavanaugh pointed out that despite Google and its amici claiming a dire result if the Court should rule for Oracle, in the years since the Supreme Court first denied certiorari, “I’m not aware that the sky has fallen.”

Oracle made a more direct argument based on legal precedent, noting that the Supreme Court had already held in Harper & Row and in Stewart v. Abend that no court had found or upheld a fair use verdict where an infringer copied so much of an original work for use in a competing commercial product, all while retaining the same meaning and purpose as the original work. Mr. Rosenkranz pointed out that Google conceded that every line of code copied serves the same purpose in Google’s Android platform as it did in the original software—there was no alteration or transformation of the original code—and Malcolm Stewart, arguing on behalf of the United States in support of Oracle, echoed that point. Mr. Rosenkranz then cited the Court’s own decision in Campbell, saying that what Google did is the “epitome of commercial superseding use: using a work ‘to get attention or to avoid the drudgery in working up something fresh.’”

Standard of Review

The discussion quickly turned to the standard of review that the Court should use to evaluate fair use—whether the determination must be left up to a jury, like the jury that ruled in Google’s favor previously, or whether it can be made by a court, such as the Federal Circuit that overturned the jury verdict to side with Oracle. Google argued that fair use is determined by “whether the jury could reasonably find fair use,” and that “no previous court ever held that only a court may decide fair use.” Mr. Goldstein argued that giving the decision to a jury is the better choice due to the numerous factors involved in a fair use verdict and that jury instructions exist to give appropriate legal certainty and guidance to the jurors.

Oracle disagreed and argued that de novo, meaning “anew,” is the correct standard to resolve this question. This would allow for a court to make a fair use determination without being bound by the decision of a previous court or verdict. Mr. Rosenkranz again cited Harper & Row: “an appellate court may conclude, as a matter of law, that the challenged use does not qualify as fair use once it has the factual record and resolves all subsidiary factual questions in favor of the fact-finder.” Judicial review provides certainty to a fair use determination that would be lost if left to a lay jury. Mr. Rosenkranz also noted that making fair use a fact-finding mission that only a jury may evaluate would all but preclude summary judgment determinations, which are exclusively judge-made decisions and currently comprise the vast majority of fair use cases.

Conclusion

The stakes in this case are extremely high—if it was not made clear by the number of times the justices and attorneys referenced the sky falling—not only for Oracle and Google and the computer science world at large, but also for any copyright creator or user who will eventually face a fair use determination. Joshua Simmons, co-counsel for Oracle and partner at Kirkland & Ellis, looks forward to the Court’s decision, writing:

Given that Google’s copyrightability argument would make it difficult for any code to be protectable, I am hopeful that the Court will follow the text of the Copyright Act and the intent of Congress that code, like Oracle’s, is protectable. Likewise, I hope that the Court will follow a century of precedent allowing courts to decide as a matter of law that, when the defendant creates a substitute that competes with the original, it simply is not fair use.

People of all industries, from professionals to hobbyists, should take note of last week’s oral argument and what will be an historic decision from the Court.

Tags Chris Wolfsen, copyrightability, fair use, Google v. Oracle, Joshua Simmons, Kirkland & Ellis, standard of review, Supreme Court

High Court Oracle-Google Copyright War May Benefit Artists

Post author By Joshua Grove
Post date October 9, 2020

This post first appeared on Law360.

U.S. Supreme Court building You might think that a copyright battle waged between tech behemoths Google LLC and Oracle America Inc. about computer code has little to do with the concerns of songwriters, authors, photographers, graphic artists, photo journalists and filmmakers. You would be wrong. These groups all filed amicus briefs with the U.S. Supreme Court in Google v. Oracle, argued on Wednesday Oct. 7.

Google v. Oracle is a long-running copyright dispute in which Google admits that, pressed for time, and wanting to compete with Oracle, it copied more than 11,000 lines of Oracle’s Java software code, as well as the organizational structure of the software program.

In doing so, Google avoided the research and development costs of authorship and even the licensing obligations to make its products interoperate with other Java products those using the code legally took on. Google then began competing with Oracle — earning billions of dollars in revenue using the code and structure it had copied.[1]

Google claims that either the portions of the code it took were not copyrightable or that Google’s use is a fair use.[2] It and its amici — many of whom would prefer reduced intellectual property protections for software to fuel their business models — deploy terms like “permissionless innovation” and “efficient infringement” as a public relations strategy.

However, the Copyright Act is clear that software is copyrightable as a literary work — with no carveouts for particular types of code — and that fair use is a defense to copyright infringement intended to excuse limited uses of works, especially for noncommercial purposes, where the use does not compete with the original work.[3]

That is why Google lost in the U.S. Court of Appeals for the Federal Circuit, where U.S. Circuit Judge Kathleen O’Malley opined “[t]here 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.”

The First Transformative Use Case at the Supreme Court in a Generation

The Supreme Court has not revisited the transformative use test articulated in Campbell v. Acuff-Rose Music Inc. in 26 years. That case added a new gloss on the first fair use factor — the purpose or nature of the use — courts consider when analyzing a fair use defense.

Artist advocates believe that some lower courts have improperly expanded transformative use over time so that it now includes uses that should be licensed, resulting in losses in income to creators.

Today it is not unusual for defendants to assert arguments that a given use is transformative even if it does not add new expression, meaning or purpose to a work, as Campbell required. It is common to hear policy arguments used to justify the need to copy the creative work of another for the sake of efficiency, or because it will reduce the cost of a product. Notable copyright scholars have even observed that transformative use is becoming a conclusory label that means all things to all people.[4]

Although cloaked in terminology related to software code, all of the familiar transformative use debates were present in Wednesday’s oral arguments in Google v. Oracle.

Google’s counsel, Thomas Goldstein, repeatedly resorted to the public policy arguments of efficiency and cost that rankle artists. At various points Goldstein was questioned by Chief Justice John Roberts and Justices Clarence Thomas, Elena Kagan, Neil Gorsuch and Brett Kavanaugh regarding why Oracle should be penalized for developing a “particularly elegant or efficient or successful or highly adopted solution in the marketplace.”

Goldstein ultimately replied that it would “upend the world” if later competitors were unable to copy popular computer code that programmers had become accustomed to using and “make the creation of innovative computer programs less efficient.”[5]

Google likewise argued that its use of Oracle’s code was transformative because it used the code on a mobile platform rather than a desktop. This argument was refuted by Deputy Solicitor General Malcolm Stewart, who noted that Google copied the portions of Oracle’s code that were used in the smart phone environment, so it did not transform anything.

Moreover, for app developers to have confidence that their programs would trigger the same functionality they had triggered in Java previously, the code had to perform exactly the same function it had always performed.

Hence, Google has not and could not do anything transformative in that sense either. To analogize to a motion picture that has only been released in theaters, he explained if one were to obtain a print of that film and instead stream it on a digital platform, no court would excuse that as a transformative fair use.[6]

Why the Standard of Review Matters

What might seem like an arcane civil procedure dispute over the proper standard of review for a fair use decision may well be the most important issue for artists in Google v. Oracle because it could determine whether cases in which fair use is asserted can be decided by a judge as a matter of law or instead require a trial and determination by a jury.

Google, which has routinely requested that fair use be decided by courts as a matter of law, has raised an argument through its amici that fair use is a question that must always go to the jury.

To put into perspective what this would mean for artists: Because copyright is a body of federal law that preempts state law, it must be tried in federal courts. Most individuals and small businesses cannot afford to bring or defend against even simple infringement actions in federal court. The American Intellectual Property Law Association has estimated that the mean cost of fully litigating a copyright infringement lawsuit is $397,000. Adding a jury trial requirement to these already astronomical costs would put justice ever further out of reach for the majority of the creative community.

Requiring a jury trial on fair use is outside the norm. As counsel for Oracle Joshua Rosenkranz noted, “Professor [Barton] Beebe has identified over 100 fair use cases decided by courts on summary judgment in a 30 year time span. Google could identify only five cases that went to a jury in a similar 30 year span.”[7]

Additionally, fair use is a defense on which both the public and creators depend and that requires stability and predictability so that individuals may make legal and commercial decisions with some certainty that they are not exposing themselves to undue risk. Google often makes these very arguments itself. To leave fair use determinations wholly to juries would undermine that stability and make innovation more dangerous and licensing more challenging.

What Artists Are Watching

Some amicus briefs filed by artist advocates invited the court to take this opportunity to clarify and rein in what they view are overly expansive fair use decisions since Campbell.[8]

Others express worry that

Google has used its unprecedented online footprint to dictate the terms of the market for creative works. By tying together a set of limited exceptions and exclusions within the U.S. Copyright Act and analogous laws in other countries, and then advocating for the radical expansion of those exceptions, Google has amplified its own market power to the great detriment of copyright owners.The more amorphous and unreasonably expansive the analysis and application of the fair use doctrine, the harder it becomes to establish the value of the copyrighted work during licensing negotiations that are the lifeblood of the creative ecosystem.[9]

Dale Cendali, co-counsel for Oracle, is optimistic after Wednesday’s argument and wrote to me in an email:

We are hoping that the Court will uphold the copyrightability of software and protect the incentive to create that the Constitution provides to all creators — big and small. We also are hoping the Court will agree it is fundamentally not fair use to use a work for the same purpose as the original for commercial gain. Moreover, fair use requires a complicated legal analysis that makes it suited to determination by a court as a matter of law — as has been the history of deciding fair use on summary judgment — as opposed to the often unpredictable and frequently unaffordable process of a jury trial.

Conclusion

Artists have much reason for optimism. The weight of the law and the diversity of amici arrayed against Google’s view of copyright is mighty. Beyond the wide variety of independent artists groups mentioned, amici aligned with Oracle also included:

The U.S. government, which has aligned with Oracle under the administrations of both former President Barack Obama and President Donald Trump;

Members of Congress who enacted the provisions of law in question, confirming that they intended to fully protect software without any carveouts or loopholes and that subsequent Congresses have only strengthened those protections;[10]

A member of Commission on New Technological Uses of Copyrighted Works, or CONTU, the special commission convened by Congress to advise it in the late 1970s on whether and how to protect software — confirming that software is protectable as a literary work and that CONTU considered and rejected the arguments Google raises in this litigation;[11]

The former Register of Copyrights Ralph Oman, who served during the time period that protections for software were enacted by Congress and whose role was to advise Congress on copyright matters as it drafted and implemented legislation — noting that Google’s arguments “fly in the face of long-standing principles of copyright law codified in the Copyright Act, which Congress extended to software in 1980 when it amended the Copyright Act explicitly to encompass computer programs”;[12] and

A variety of software and technology companies that depend on copyright protection to facilitate their participation in standards development as well as startup investment and innovation.

There is reason for optimism for all innovators and creators, as Rosenkranz summed up for the court:

The software industry rose to world dominance since the 1980s because of copyright protection, not unlicensed copying. And … the sky hasn’t fallen. [The] six years since the court of appeals’ first decision have brought new bursts of innovation and interoperability. In that time frame, we’ve seen the explosion of interoperability, cloud computing, 5G, machine learning, and autonomous vehicles.

Cases like Google v. Oracle illustrate how important copyright protections are to all authors in safeguarding the excruciating investment they make in taking their work from “the passable to the masterful.”[13]

[1] Brief of Respondent Oracle America Inc., Google v. Oracle, https://www.supremecourt.gov/DocketPDF/18/18-956/132891/20200212180251262_200208a%20Resp%20Brief%20for%20efiling.pdf.

[2] Brief of Petitioner Google LLC, https://www.supremecourt.gov/DocketPDF/18/18-956/127663/20200106172508533_18-956%20ts.pdf.

[3] 17 U.S.C. section 107.

[4] Brief of Amici Curiae Ten Creators’ Rights Organizations In Support of Respondent (Ten Creators Brief), https://www.supremecourt.gov/DocketPDF/18/18-956/133394/20200219112343394_18-956%20Amici%20Curiae.pdf.

[5] Transcript of Oral Argument, https://www.supremecourt.gov/oral_arguments/argument_transcripts/2020/18-956_kifl.pdf.

[6] Id.

[7] Id.

[8] Ten Creators Brief.

[9] Brief of Amici Curiae Helienne Lindvall, David Lowery, Blake Morgan and the Songwriters Guild of America in Support of Respondent, https://www.supremecourt.gov/DocketPDF/18/18-956/133298/20200218155210566_18-956%20bsac%20Helienne%20Lindvall%20et%20al–PDFA.pdf.

[10] Brief of Former Congressmen as Amici Curiae in Support of Respondent, https://www.supremecourt.gov/DocketPDF/18/18-956/133486/20200219145736673_18-956%20bsac%20Former%20Congressmen.pdf.

[11] Brief of Amicus Curiae Professor and Former CONTU Member Arthur R. Miller In Support of Respondent, https://www.supremecourt.gov/DocketPDF/18/18-956/133407/20200219120149951_18-956bsacProfessorAndFormerContuMemberArthurRMiller.pdf.

[12] Brief Amicus Curiae of Ralph Oman, https://www.supremecourt.gov/DocketPDF/18/18-956/133418/20200219122526620_2020-02-19%20No.%2018-956%20Oman%20amicus%20brief%20supporting%20respondent.pdf.

[13] Joshua Rosenkranz, counsel to Oracle in closing to the court “who will invest the excrutiating time it takes to refine code from the passable to the masterful if all of it can be stolen?”

Tags Barton Beebe, CONTU, copyright, Dale Cendali, Google v. Oracle, Joshua Rosenkranz, Judge O'Malley, Ralph Oman, Sandra Aistars, Thomas Goldstein

CPIP Roundup

CPIP Roundup – September 30, 2020

Post author By Joshua Grove
Post date September 30, 2020

Greetings from CPIP Executive Director Sean O’Connor

As we move through our busy fall season here at CPIP, we are grateful for the efforts of everyone in the George Mason University community keeping us safe and healthy. We are fortunate that in these highly uncertain times, we are still able to focus on what we do best: bringing you the research, impact policy pieces, and programming that you have come to expect.

In the copyright sphere, we were gratified by the success of our postponed—and ultimately virtual—conference, The Evolving Music Ecosystem. Highlighted by an informative and moving fireside chat between singer, songwriter, and author Rosanne Cash and CPIP’s Sandra Aistars, the conference also featured seven panels of academics, industry specialists, and artists who provided invaluable insight into copyright law and the music business, especially in light of 2020’s challenges to the industry. Thank you to all who participated and attended! Videos of the keynote address and panel presentations can be watched here.

CPIP also congratulates Shira Perlmutter on her appointment to Register of Copyrights and Director of the U.S. Copyright Office by Librarian of Congress Carla Hayden. We very much look forward to Ms. Perlmutter’s continued positive impact on the copyright community in her new role.

In the patent sphere, CPIP Senior Fellow for Innovation Policy Jonathan Barnett led our roundtable, Measuring the Value of Patent Licensing. Leading legal scholars, economists, and industry representatives focused on the data collection and methodological approaches to quantifying the full economic benefits of commercializing new innovation through patent licensing models.

Congratulations to CPIP Senior Scholar Erika Lietzan on becoming the William H. Pittman Professor of Law & Timothy J. Heinsz Professor of Law at University of Missouri School of Law and for being named a “Best Lawyer in America” for 2020! We are proud of the many accomplishments of our Scholars!

In the coming month, we are excited to host our Eighth Annual Fall Conference on October 7-8. We are partnering with the National Security Institute (NSI) at Scalia Law School to focus on 5G at the Nexus of IP, Antitrust, and Technology Leadership. We hope you’ll be able to join us! You can see the conference program, confirmed speakers, and register for the virtual event here.

Last, but certainly not least, we are proud of the academic and policy publications of our Scholars, Fellows, and other affiliates. Keep reading to learn about work by Sandra Aistars, Jonathan Barnett, Stuart N. Brotman, Ross E. Davies, H. Tomás Gómez-Arostegui, Devlin Hartline, Chris Holman, Erika Lietzan, and Kristen Osenga.

CPIP Eighth Annual Fall Conference with USPTO Director Andrei Iancu on October 7-8

2021 5G Conference image

CPIP’s Eighth Annual Fall Conference will be hosted virtually from George Mason University Antonin Scalia Law School in Arlington, Virginia, on October 7-8, 2020. The theme this year is 5G at the Nexus of IP, Antitrust, and Technology Leadership. The conference is being co-hosted by the National Security Institute (NSI), and it features a keynote address by USPTO Director Andrei Iancu.

This conference addresses fast-emerging intellectual property (IP), antitrust, and technology leadership issues in the 5G and “Internet of Things” innovation ecosystem. Coverage includes standard-essential patents (SEPs) along with established and emerging markets on a regional and global basis. Speakers are drawn from the academic, industry, and policymaking communities, with an emphasis on using objective fact-based analysis to explore points of convergence among legal, economic, and geopolitical perspectives on the IP and regulatory infrastructures that underlie these critical industries.

Registration closes on Monday, October 5, 2020, at Noon ET, so please register soon! We have 4 hours of Virginia CLE credit pending!

To visit our conference website and to register, please click here.

CPIP Hosts Academic Roundtable on Patent Licensing Valuation

hand under lightbulbs drawn on a blackboard

On September 17, 2020, CPIP hosted an academic roundtable entitled Measuring the Value of Patent Licensing online from George Mason University Antonin Scalia Law School in Arlington, Virginia. The roundtable, which was moderated by CPIP Senior Fellow for Innovation Policy Jonathan Barnett, included leading scholars, economists, and industry representatives.

The sessions focused on the existing methodologies developed to measure IP transactions, the insights achieved so far using those methodologies, and the possibilities for developing more precise methodologies to measure licensing and related transactional activities in the IP marketplace. They also examined the mechanics of IP licensing and transactional markets, how IP transactions generate social value, and the extent to which existing IP legal regimes may impede IP markets.

The Evolving Music Ecosystem Conference with Rosanne Cash

Rosanne Cash

On September 9-11, 2020, CPIP hosted The Evolving Music Ecosystem conference online from George Mason University Antonin Scalia Law School in Arlington, Virginia. The conference featured a keynote address by singer, songwriter, and author Rosanne Cash, and coverage included news articles at Billboard and Mason News. CPIP Senior Scholars Sandra Aistars, Sean O’Connor, and Mark Schultz also participated in the event. We’ve posted a synopsis of each day of the conference here, here, and here.

This unique conference continued a dialogue on the music ecosystem begun by CPIP Executive Director Sean O’Connor while at the University of Washington School of Law in Seattle. In its inaugural year in the D.C. area, the conference aimed to bring together musicians, music fans, lawyers, artist advocates, business leaders, government policymakers, and anyone interested in supporting thriving music ecosystems in the U.S. and beyond.

To visit our conference website and to watch the videos, please click here.

Spotlight on Scholarship

a pair of glasses, an apple, and a stack of books

Tomás Gómez-Arostegui & Sean Bottomley, The Traditional Burdens for Final Injunctions in Patent Cases C.1789 and Some Modern Implications, 71 Case W. Res. L. Rev. ___ (forthcoming 2020)

CPIP Edison Fellow Tomás Gómez-Arostegui of Lewis & Clark Law School and co-author Sean Bottomley have published a draft of their law review article that will be published in the Case Western Reserve Law Review. The article takes an historical look at the first two permanent injunction factors from eBay v. MercExchange, namely, irreparable injury and inadequate legal remedies. The article concludes that equitable principles dictate that the Federal Circuit should recognize that: “(1) an injury it seeks to redress with a final injunction is future infringement itself, not just follow-on harms caused by future infringement; (2) it can presume future infringement from past infringement; (3) it can presume that legal remedies are inadequate to remedy future infringement; and (4) it need not require a plaintiff to show that alternative equitable remedies, like ongoing royalties, would inadequately redress future infringement.”

To read the article, please click here.

Stuart N. Brotman, Intersecting Points in Parallel Lines: Toward Better Harmonization of Copyright Law and Communications Law Through Statutory and Institutional Balance, 26 Rich. J.L. & Tech., no. 3, 1 (2020)

The Richmond Journal of Law and Technology (JOLT) has just published a new article by Professor Stuart Brotman, the inaugural Howard Distinguished Endowed Professor of Media Management and Law and Beaman Professor of Journalism and Electronic Media at the University of Tennessee, Knoxville. The article was supported by a Leonardo da Vinci Fellowship Research Grant from CPIP and the research assistance of recent Scalia Law graduate Samantha Levin. The article traverses the history and development of copyright and communications law, which have historically followed separate paths, and offers potential ways that they can be harmonized to match the current realities of the media marketplace.

To read the article, please click here.

Activities, News, & Events

a lit lightbulb hanging next to unlit bulbs

CPIP Director of Copyright Research and Policy Sandra Aistars has written an article at Law360 (also available on the CPIP blog) about Justice Ginsburg’s copyright legacy, especially as it will affect the impending Google v. Oracle decision. Prof. Aistars has also published her latest Copyright Notebook series post, The Importance of Artists’ Agency, on the CPIP blog. Additionally, the Arts & Entertainment Law Clinic—directed by Prof. Aistars—has continued its academic partnership with the U.S. Copyright Office for the fifth year. This semester, they are supporting the Office’s public meetings to investigate standard technical measures (STMs) that could be adopted to aid and identify copyrighted works and to potentially reduce infringement on digital platforms as envisioned in Section 512(i) of the DMCA. Prof. Aistars and the Clinic students will also co-host an online copyright clinic with WALA and the Copyright Alliance that will feature a live performance by the Rock Creek Kings.

CPIP has published a new policy brief by Professor Ross E. Davies entitled Ebb and Flow in Safe Harbors: Some Exemplary Experiences Under One Old Statute and One New. Prof. Davies teaches administrative law, civil procedure, comparative criminal law, contracts, employment discrimination, legal history, legal profession, and torts at George Mason University Antonin Scalia Law School in Arlington, Virginia, and the policy brief is the product of our two Safe Harbors and Private Ordering in the Creative Industries research symposia that were held in 2019. In the policy brief, Prof. Davies compares and contrasts two seemingly unrelated statutory provisions that are often referred to as “safe harbors”—despite that term not appearing in either statute: the National Labor Relations Act (NLRA) as codified in Title 29, and the Online Copyright Infringement Liability Limitation Act (OCILLA)—otherwise known as Title II of the Digital Millennium Copyright Act (DMCA)—as codified in Title 17.

CPIP Scholars have participated in several speaking engagements this past month. CPIP Senior Fellow of Innovation Policy Jonathan Barnett spoke at the Innovation Alliance’s Recognizing the Growing Economic Impact of Patent Licensing webinar. CPIP Senior Fellow for Life Sciences Chris Holman participated in the Regnier Institute for Entrepreneurship and Innovation Kansas City Region’s Bio-Medical and Healthcare Technology Entrepreneurship Certificate Program. CPIP Senior Scholar Erika Lietzan spoke at IPWatchdog’s The Race for a Coronavirus Vaccine: The Intersection of Science and IP Policy webinar. CPIP Senior Scholar Kristen Osenga presented a draft paper at the Gray Center’s Public Health: Regulation, Innovation, and Preparation research roundtable. And CPIP Director of Communications Devlin Hartline participated in the Music Biz Entertainment & Technology Law Conference.

CPIP Scholars have also written op-eds defending the importance of robust patent protection, particularly for biopharmaceutical inventions in light of the COVID-19 pandemic. At the Huntsville Item, CPIP Senior Fellow for Life Sciences Chris Holman argues that the seizure of patents will only hamper the development of a vaccine to combat the coronavirus: “Eliminating intellectual property protections would not only reduce incentives to develop coronavirus treatments as quickly as possible; they will also destroy the domestic industrial base that could be the key to stopping the next pandemic.” Likewise, CPIP Senior Scholar Kristen Osenga argues at the Nashua Telegraph that taxpayers are getting a great deal with biomedical research: “When new treatments are successful, drug companies make money because we, through insurance, buy those drugs to keep us, or make us, healthy. The government then taxes those profits and invests some of that tax money into new research. Far from ‘paying twice,’ we are getting a great bargain from government spending on basic research.”

Tags Andrei Iancu, Chris Holman, CPIP Roundup, Devlin Hartline, Erika Lietzan, Google v. Oracle, Jonathan Barnett, Kristen Osenga, Mark Schultz, Rosanne Cash, Ross Davies, Ruth Bader Ginsburg, Samantha Levin, Sandra Aistars, Sean Bottomley, Sean O'Connor, Stuart Brotman, Tomás Gómez-Arostegui

RBG’s Legacy Can Guide High Court In Oracle Copyright Case

Post author By Joshua Grove
Post date September 22, 2020

This post first appeared on Law360.

U.S. Supreme Court building As America mourns the passing of one of its great civil rights icons and judicial pathmakers — Justice Ruth Bader Ginsburg — stakeholders and other observers must not only contemplate what her absence means for the upcoming election but also next month’s start of oral arguments at the U.S. Supreme Court.

Among other cases on the docket, the Supreme Court will hear oral arguments in the watershed copyright case Google LLC v. Oracle America Inc. on Oct. 7.

Justice Ginsburg’s Legacy

Justice Ginsburg inspired documentaries and Oscar-nominated, full-length feature films and made cameo appearances in three operas: twice with Justice Antonin Scalia in Richard Strauss’ “Ariadne auf Naxos” and also in Johann Strauss’ “Die Fledermaus,” where she, Justice Anthony Kennedy and Justice Stephen Breyer entered Prince Orlofsky’s ball in the second act of Fledermaus billed as “the Supremes.”

The justice had a deep appreciation for the arts that went beyond her love of opera. Two Mark Rothkos, a Josef Albers and a Max Weber — some on loan from the National Gallery of Art — hung in her chambers, and she took a literature class at Cornell University under Vladimir Nabokov, which she sometimes referred to in interviews and lectures, noting that law should also be a literary profession.

Given her love for the arts, it’s not surprising, then, that Justice Ginsburg was a knowledgeable justice in copyright matters. The justice authored numerous important opinions affecting creators’ rights and was highly respected for her ability to offer clear, concise judgments that were understandable even to ordinary readers.

Some of her most notable opinions in copyright law include: New York Times Co. v. Tasini — upholding protections for freelance authors in the digital age; Eldred v. Ashcroft — upholding Congress’ extension of the duration of copyright for existing and future works as consistent with both the copyright clause and the First Amendment; and Petrella v. Metro-Goldwyn-Mayer Inc. — articulating that the equitable defense of laches cannot be used to bar a claim of copyright infringement brought within the three-year statute of limitations window.

By the end of her career, she had earned the respect of arts and technology lawyers alike. For instance, in 2015 Justice Ginsburg was inducted into the Chiefs in Intellectual Property Hall of Fame for her commitment to the advancement of women in IP and technology careers. ChIPs was started by seven female chief counsels of patents and intellectual property at Silicon Valley companies to promote women in the high-tech industry.

Google v. Oracle: The First IP Case to Be Heard Without Justice Ginsburg

Now, with a momentous, tech-centered copyright case again making its way to the court, there’s a sad irony that one of the most thoughtful justices, able to cut to the heart of a matter and make it readily understandable, is no longer with us. But while Justice Ginsburg’s thoughtful scholarship and legal acumen will no doubt be missed by her colleagues in every case they consider, they’ll have her legacy to guide them in Google v. Oracle.

Google v. Oracle is a relatively straightforward case. Google committed an obvious act of copyright infringement for business convenience. Oracle Corp. owned Java, a creative and intricately crafted work of software, widely popular among device manufacturers and application designers.

Google wanted to compete but didn’t want to invest the time and resources needed to develop its own platform, nor did it wish to take any of the multiple licenses offered by Oracle, which would have required Google to make its platform interoperable with Java. So, Google copied over 11,000 key portions of code, along with the organizational structure and began competing with Oracle — earning billions of dollars in revenue using the code and structure it had copied.[1]

While Google doesn’t dispute that it took the code, it argues that the portions of Java in question are not copyrightable, that fair use justifies its unlicensed usage, and that the Seventh Amendment right to a jury trial prevents an appellate court from overturning a jury’s decision on fair use.[2] All of Google’s arguments are wrong.

Software is copyrightable.

Congress has protected computer code as a literary work under the Copyright Act since 1980, and it has never sought to limit protections applicable to software, despite the many opportunities it has had to do so.

As copyright scholars noted in an amicus brief to the court:

Even [in 1980,] at that relatively early stage in the development of the computer software industry, Congress considered versions of many of the arguments and issues present in this litigation, including whether computer code should be protected as a literary work, the degree to which computer programs can be considered “functional” or necessary “machine-controlled elements” (as opposed to expressive works protectable under the Copyright Act), and the interests of protecting and incentivizing innovation. After careful analysis and debate … Congress legislated that computer programs are protected under the Copyright Act with no qualifications that would differentiate software from any other type of literary work under the statute.

Since 1980, software development has grown exponentially, and its application continues to expand into new industries. Congress has amended the Copyright Act to address issues raised by technological advances in particular industries — by enacting, for example, the Computer Software Rental Amendments Act in 1990, the Digital Millennium Copyright Act in 1998, and the Music Modernization Act in 2018. Congress has not, however, amended the Copyright Act to decrease the scope of protection for computer programs. Because the statutory protections for computer software remain the same as for all other creative works, adopting Google’s position would amount to a judicially created software-specific amendment. It would also result in singling-out the protections afforded to computer programs, which contradicts the plain text of the Copyright Act.[3]

Google’s copying of Java doesn’t qualify as fair use.

Google’s arguments that its theft of Oracle’s code should be excused as fair use — a defense to copyright infringement intended to excuse limited uses of works, especially for noncommercial purposes, where the use does not compete with the original work — also fall flat.

There is no business convenience exception under the fair use doctrine. As the copyright scholars’ amicus brief noted:

Google and its amici try to characterize [their infringement] as “efficient infringement,” or “permission-less innovation.” Yet its conduct is entirely contrary to the goals of copyright law as expressed in the Copyright Act or the Constitution.[4]

In her 2018 opinion for the U.S. Court of Appeals for the Federal Circuit, in favor of Oracle, U.S. Circuit Judge Kathleen O’Malley said as much, writing, “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.”[5]

While there is an essential role for fair use in copyright law, Congress and the courts have set reasonable parameters, which do not include business convenience or efficient infringement.

The Supreme Court can rule on fair use.

Having failed to convince past judges of the merits of its position, Google has now raised the argument that neither the appellate courts below, nor the high court’s justices can reverse the jury trial’s previous findings on fair use. Google made a last-ditch Seventh Amendment procedural argument challenging the standard of review applied by the courts, which the court will also consider.

That decision is also straightforward: The fair use issue was put before the court because of Oracle’s successful motion for judgment as a matter of law. A party is always entitled to a judgment as a matter of law if no reasonable jury could find for the nonmoving party.[6]

The Federal Circuit correctly found that only one finding is reasonable — that it is not fair use to infringe many thousands of lines of creative and intricately designed literary computer code for business convenience and to use it for the identical purpose in direct competition with Oracle.

Or, as Judge O’Malley put it: “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.” Hence, Oracle was entitled to a judgment as a matter of law regardless of the standard by which fair use is determined.

There are of course other, more nuanced, reasons to find for Oracle on this procedural issue as well. On a motion for judgment as a matter of law, the court determines matters of law de novo and assumes that all matters of fact have been found by the jury consistent with the verdict.

In applying the law to the facts, the court determines de novo any mixed questions of law and fact, especially where it is required to “expound on the law, particularly by amplifying or elaborating on a broad legal standard.”[7] Whether a use is a fair use is exactly the kind of determination that presents a mixed question of law and facts to be determined by a judge de novo.[8]

In making fair use rulings, judges routinely are called upon to balance the interests of property owners and the public, to ensure that the intent of the framers of the constitution are upheld by enforcing both the copyright clause and the First Amendment and to apply each of the four fair use factors in a manner that ensures the body of law develops in a stable fashion that the public can rely on. De novo standard of review for such an examination is thus entirely appropriate.

Conclusion

While debates over who will replace Justice Ginsburg are focused on the political makeup of the court, for this case, as well as for many other IP-related matters, decisions are rarely influenced by a justice’s political leanings. The court of course aspires to politically unbiased justice in all matters, but copyright law in particular has always been an area where decisions are rendered without a view to whether one’s politics are progressive or conservative.

Nevertheless, the stakes in Google v. Oracle are high, and a strong opinion from the court is needed to ensure a company cannot blithely assert business convenience when it wishes to appropriate the creative work of another.

Although unlikely, it would be alarming if the court should be split 4-4 in its decision, but were that the case, the Federal Circuit’s ruling in favor of Oracle would stand, and the Supreme Court would not issue an opinion. Such a result, while technically correct, would be anticlimactic for copyright scholars and a missed opportunity for the court to once and for all time do away with the outlandish notion of efficient infringement.

[1] Brief of Respondent Oracle America Inc., Google v. Oracle, https://www.supremecourt.gov/DocketPDF/18/18-956/93436/20190327160337558_190311%20for%20E-Filing.pdf.

[2] Brief of Petitioner Google LLC, https://www.supremecourt.gov/DocketPDF/18/18-956/127663/20200106172508533_18-956%20ts.pdf.

[3] Brief of Amici Curiae Nine Professors and Scholars of Intellectual Property Law In Support of Respondent, Google v. Oracle, https://www.supremecourt.gov/DocketPDF/18/18-956/133538/20200219155838307_18-956%20bsac%20Nine%20Professors%20and%20Scholars%20on%20Intellectual%20Property%20Law.pdf.

[4] Id.

[5] United Sates Court of Appeals, Google v. Oracle (2017), http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1118.Opinion.3-26-2018.1.PDF.

[6] Federal Rules of Civil Procedure Rule 50 https://www.federalrulesofcivilprocedure.org/frcp/title-vi-trials/rule-50-judgment-as-a-matter-of-law-in-a-jury-trial-related-motion-for-a-new-trial-conditional-ruling/.

[7] U.S. Bank National Ass’n v. Village of Lakeridge LLC , 138 S Ct 960, 967-68 (2018).

[8] See Harper & Row Publishers Inc v Nation Enters , 471 U.S. 539, 560 (1985) ([w]here the district court has found facts sufficient to evaluate each of the statutory factors, an appellate court ‘need not remand for further factfinding but may conclude as a matter of law that the challenged use does not qualify as a fair use of the copyrighted work.).

Tags copyright, Google v. Oracle, Ruth Bader Ginsburg, Sandra Aistars, Supreme Court

Copyright Notebook: Observations on Copyright in the Time of COVID-19

Post author By Joshua Grove
Post date April 27, 2020

the word "copyright" typed on a typewriter The Indomitable Spirit of Artists

Heroes are everywhere. We all give thanks for the selfless efforts of medical professionals, first responders, delivery drivers, gig economy workers, grocery and pharmacy staff, and the many other individuals who daily place themselves at the center of the coronavirus pandemic in order to make our quarantined lives safe and manageable. Now with working-from-home days blurring into nights and weeks rolling by in an undifferentiated haze, artists, scholars, and the industries that work with them are taking unprecedented steps to bring color, life, and knowledge to our circumscribed lives. Theatrical release movies are streaming to homes, operas and Broadway productions are available on the websites of shuttered arts venues to enjoy for free, bands are playing online gigs, authors have devised ways to make their works available for online enjoyment and distance learning in a myriad of settings, and scholarly publishers and newspapers are making relevant news reporting and research about the coronavirus free to users.

This should not be terribly surprising. Authors and artists of all varieties have always nurtured deep community roots. They are the very types of entrepreneurs and independent businesses who–alongside shop owners and local services–undergird our towns and cities and contribute to our well-being not only through their creativity, but also through their generosity when neighbors seek support. Writing in the New York Times, author David Sax said about the importance of small local businesses:

These are the entrepreneurs who matter now, more than ever. Not the ones on the covers of magazines, not the billionaires and recipients of venture capital checks, whose products we may use, but whose lives are distant and entirely removed from the day-to-day of our communities. If Casper, WeWork or some celebrity’s makeup company doesn’t survive this crisis, the impact on our lives will be negligible. Elon Musk will be fine. But if we lose our barber, the fruit store on the corner or the plumber who saved us in a flood, we will have lost a piece of ourselves.

This is the mindset with which I am approaching copyright in the time of COVID-19.

The National Emergency Library

Sadly, unprecedented moves by artists to share their work with the world on lockdown have not dissuaded opportunistic behavior online. Capitalizing on the shutdown, multi-millionaire Brewster Kahle of the Internet Archive, who has long argued for expanding rights to copy and make copyrighted works digitally available without the permission of authors, announced an “emergency” free library of copyrighted works, available to readers without a waiting list. While Kahle’s Internet Archive has been controversial since its inception, this new iteration apparently removes all limits on the number of users who can check out a work simultaneously – essentially turning it into an all-you-can-read free e-book service. This goes beyond even the limitations applicable to brick-and-mortar libraries that offer electronic lending.

Kahle’s opportunistic move did not pass unnoticed, however. Senator Thom Tillis, who as head of the Senate Subcommittee on Intellectual Property is deeply engaged in reviewing and updating U.S. intellectual property policy, promptly penned a letter to Kahle noting:

I am not aware of any measure under copyright law that permits a user of copyrighted works to unilaterally create an emergency copyright act.

Tillis is right – making the 1.4 million books Kahle has scanned into his database freely available to an unlimited number of users is inconsistent with current copyright law. Moreover, it is a step towards “losing a part of ourselves,” as Sax so aptly puts it. According to the Authors Guild, the mean income for a professional author is $20,300 annually. Authors are the epitome of the types of breadwinners various government programs should currently be trying to prop up, rather than barons of industry who should be taxed for the welfare of others.

While the Internet Archive has reportedly reached an agreement with the University of North Carolina Press and Duke University Press in the past weeks, this agreement is too little, too late, and it represents a pernicious trend among internet industry advocates to infringe first, seek agreement later. Terms like “efficient infringement” have emerged to describe such behavior.

Internet Archive’s behavior threatens to upend the promise of copyright protection as an invitation to a business negotiation between authors and larger, better resourced associates who wish to acquire rights in their works. Practitioners of so-called “efficient infringement” or “permissionless innovation” blatantly challenge individual authors to sue infringers if they dare, or otherwise to take whatever the infringer is willing to offer. The music industry has called this negotiating-with-a-gun-to-one’s-head approach the reason for the “value gap,” which is seen when comparing license terms among internet services that rely on protections like the Digital Millennium Copyright Act (DMCA) safe harbors to avoid liability for infringement and those services that negotiate for rights in the free marketplace. It is not surprising that lopsided business terms result in cases where infringers are empowered by circumstances or the law to adopt a “sue me” approach instead of negotiating in good faith.

Google v. Oracle

Another example of the “efficient infringement” approach to acquiring intellectual property is seen in Google v. Oracle. This long-litigated case will bring a Supreme Court holding on whether companies can slavishly copy the software code of others in order to save R&D and marketing costs. While this is a battle between industry behemoths, the outcome is important to anyone who relies on copyright protection because Google adopted the “sue me if you dare” approach and is effectively arguing that the bounds of fair use should incorporate instances of intellectual property appropriation to avoid business inconvenience.

This case has cost countless millions of dollars to litigate through two jury trials and two federal appeals and is now before the Supreme Court. If this is the path to enforcing one’s rights, it is clear that individuals and small businesses effectively own rights with no remedies should an infringer with deeper pockets emerge. The case likewise demonstrates how litigation can be inefficient and ill-suited to establishing business norms.

Despite the lengthy record, the case is quite straightforward. As Oracle so plainly put it in its brief:

Google has a problem. It committed an egregious act of plagiarism and now needs to rewrite copyright law to justify it. It cannot.

Java SE was one of the most creative and intricately designed works of software ever written. Its elegance attracted a wide audience of developers. Manufacturers of all sorts of devices and competing platform makers clamored to license the Java SE platform. Innovation flourished, just as the Framers imagined, and just as the rest of the American software industry thrived under those same constitutional incentives.

Google wanted its own platform. Given its vast resources, it could certainly have written one. But with a looming existential crisis, there was no time to innovate. Google could have taken any of the several Java SE licenses Oracle offered, but Google rejected Oracle’s compatibility imperative as inconsistent with its commercial objectives.

So Google opted to plagiarize and take the risk. Google copied 11,330 lines of computer code from Java SE, as well as the intricate organization and relationships among the lines of code. Google put the code in its competing product, Android, and successfully pitched it to Oracle’s customers, generating billions of dollars in revenue.

As I (together with other copyright scholars) argued in an amicus brief to the Court:

Congress has addressed the protection of computer software through the Copyright Act, including the code at issue in this appeal. In its 1980 amendments to the Copyright Act, Congress adopted the recommendations of the National Commission on New Technological Uses of Copyrighted Works (CONTU) and recognized computer programs as “literary works” enjoying the full extent of protection under the statute. Even at that relatively early stage in the development of the computer software industry, Congress considered versions of many of the arguments and issues present in this litigation, including whether computer code should be protected as a literary work, the degree to which computer programs can be considered “functional” or necessary “machine-controlled elements” (as opposed to expressive works protectable under the Copyright Act), and the interests of protecting and incentivizing innovation. After careful analysis and debate, CONTU recommended to Congress, and Congress legislated, that computer programs are protected under the Copyright Act with no qualifications that would differentiate software from any other type of literary work under the statute.

Since 1980, software development has grown exponentially, and its application continues to expand into new industries. Congress has amended the Copyright Act to address issues raised by technological advances in particular industries, by enacting, for example, the Computer Software Rental Amendments Act in 1990, the Digital Millennium Copyright Act in 1998, and the Music Modernization Act in 2018. Congress has not, however, amended the Copyright Act to decrease the scope of protection for computer programs or altered the statutory standard for fair use. Because the statutory protections for computer software remain the same as for all other creative works, adopting Google’s position would amount to a judicially created, software-specific amendment. It would also result in singling-out the protections afforded to computer programs, which contradicts the plain text of the Copyright Act.

Google and its amici try to characterize this as “efficient infringement,” or “permission-less innovation.” Yet its conduct is entirely contrary to the goals of copyright law as expressed in the Copyright Act or the Constitution. As a result, there is no reason to incorporate these considerations into fair use. It is clear that purposeful copying to avoid business inconvenience is not fair use, either in the statute as enacted or as interpreted by courts. Although Google casts its theory as “software-specific,” there is no reason why infringing parties could not regularly use it to justify copying any kind of protectable expression. Thus, to expand the fair use doctrine in the way Google advocates would set a dangerous precedent not limited to the software industry.

The Court has announced that it will begin hearing certain oral arguments by phone during the pandemic shutdown, but Google v. Oracle is not (yet) among those cases. As of April 13, 2020, the case was postponed to the October term.

One final (but somewhat different because it involves a state) recent example of an entity acting on the principle of “efficient infringement” occurs in the case of Allen v. Cooper. This case raises state sovereign immunity as a defense, but the underlying fact pattern is hauntingly similar.

Allen v. Cooper

The Supreme Court ruled in Allen v. Cooper that it violates state sovereign immunity to expose state entities to liability for alleged copyright infringement, absent the state’s consent.

As covered by Devlin Hartline here on the CPIP blog, the case involved “both actual and metaphorical pirates.” The actual pirate was Blackbeard, whose ship went down near the North Carolina coast in the 1700s. The metaphorical pirates are the government of the state of North Carolina, which allegedly infringed, then settled, then allegedly infringed again, the copyrighted photos and videos of the wreck shot by underwater photographer Rick Allen. Not content to repeatedly infringe Allen’s work, the state Legislature additionally passed a law deeming all photographs and videos made of North Carolina shipwrecks to be a matter of public record, and thus free for public use. Although Allen claimed that the state had committed willful infringement, the Supreme Court ultimately sided with North Carolina in ruling the Copyright Remedies Clarification Act of 1990 unconstitutional and holding that the Eleventh Amendment prohibits private actions against the state without the state’s consent.

As it stands, this case bodes ill for anyone who makes their living in the knowledge economy. If you create, research, code, write, document, interpret, or otherwise create intellectual work product that a state or state employee deems of value, the state apparently can take your work without permission. Although this is a more definitive statement of the lay of the land than was previously clear (since earlier case law had considered patent infringement, which differs in some relevant ways from copyrights), it is not altogether unexpected. Nevertheless, state infringements of copyright have been a growing problem. In the twenty years since the Fifth Circuit opined in Chavez v Arte Publico Press that there was no significant problem of copyright infringement by the states enabled by the Eleventh Amendment, more than 150 copyright infringement cases have been filed against states.

Unfortunately, the Court ruled that the CRCA was unconstitutional in its abrogation of state sovereign immunity because it did not properly link the CRCA to the prevention of unconstitutional injuries like the deprivation of property under Section 5 of the Fourteenth Amendment of the U.S. Constitution. Although Allen lost his appeal, the Supreme Court all but invited new legislation by Congress:

Congress likely did not appreciate the importance of linking the scope of its abrogation [of state sovereign immunity rights when it passed the CRCA] to the redress or prevention of unconstitutional injuries—and of creating a legislative record to back up that connection. But going forward, Congress will know those rules. And under them, if it detects violations of due process, then it may enact a proportionate response. That kind of tailored statute can effectively stop States from behaving as copyright pirates. Even while respecting constitutional limits, it can bring digital Blackbeards to justice.

Until Congress returns to normal business and can take this matter up, there are a few issues any potential drafters of new legislation should bear in mind.

First, as the Court explained, it will be important to link any new statute abrogating state sovereign immunity to the redress or prevention of unconstitutional deprivations under Section 5 of the Fourteenth Amendment. This means limiting any new legislation to violations of the Due Process Clauses of the Constitution. Next, it will be important to create a legislative record noting the scope of the problem justifying the proposal, given the Fifth Circuit’s comments in Chavez, which failed to recognize the volume of lawsuits being filed against states for copyright infringement.

It is also wise to articulate some of the numerous reasons why state remedies are inadequate to deal with the infringements of copyright by states or their instrumentalities. Because federal copyright law preempts state law, and copyright matters are tried only in federal courts, there are no plausible avenues for states to create novel, recognizable causes of action for infringement under their own laws. Moreover, in addition to the federal doctrine of state sovereign immunity, states are typically also immune from suit in their own jurisdictions; thus, there are not likely to be any state common law-created remedies. Because states are in the best position to articulate and demonstrate the adequacy of state remedies, if any, the burden of doing so should rest with the state.

Finally, it is worth considering that only federal law can provide the uniform protection against state infringements that authors require in order to publish their works. Thus, Congress should not delay acting to take up the Court’s invitation to bring state digital Blackbeards to justice.

Reflecting on the above cases and controversies as I cozy up to my laptop or sign into a virtual meeting, I am at once thankful for the technology that allows me to connect to others and to keep working, and fearful for my friends and clinic clients who are facing existential challenges to their livelihoods. These cases, similar to many before them, illustrate how intertwined we all are as users and creators of works. It is my hope that we all will use this quieter time to contemplate how interconnected we truly are, and that we will emerge from quarantine to embrace the spirit of the oft-heard virus slogan “we are all in this together.”

Tags Allen v. Cooper, Authors Guild, Brewster Kahle, copyright, efficient infringement, Google v. Oracle, Internet Archive, National Emergency Library, permissionless innovation, Sandra Aistars, Thom Tillis

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