As Matt Schruers indicated in a DisCo post earlier this week, copyright holder representatives have filed amicus briefs in support of Oracle’s appeal of the fair use determination in the ongoing copyright infringement litigation between Oracle and Google. These briefs argued that the district court and the jury erred by applying fair use principles over-broadly. Nonetheless, several of the briefs correctly acknowledged the importance of the fair use right to free expression, creativity, and the proper operation of the copyright system.
The high profile IP dispute over Google’s reimplementation of the Oracle-owned Java API in Android software is headed back to a federal appeals court after a jury handed a unanimous loss to Oracle last summer. So what’s the issue this time?
Our Story Until Now
A quick refresher: the case began following Oracle’s 2010 acquisition of Sun, which held the copyrights to Java. Oracle sued Google on various IP claims later that year. The basis for the suit was that in developing Android, Google had created its own version of the programming language called Java, a toolset that programmers use to write code. In order to enable other developers to program on Android, Google employed the same names, organization, and functionality in Android as is used in the Java API (“application programming interface”) — the protocols by which software programs communicate.
In June 2012, following a jury trial, Judge William Alsup in the Northern District of California ruled that the Java API “packages” copied by Google were not copyrightable. According to Alsup’s holding, Android may have “replicated the overall name organization and functionality of 37 [out of 166] packages in the Java API.” However, these protocols — themselves only 3% of the 37 packages — did not qualify as copyrightable since to extend that protection would provide control over “all possible implementations of the taxonomy-like command structure” used by programmers to write code. (Fun fact: Judge Alsup taught himself Java for purposes of hearing the case.). MORE »
Many observers, including me, predicted that the 2014 decision of the U.S. Court of Appeals for the Federal Circuit (“CAFC”) in Oracle America v. Google would provoke a new wave of litigation concerning copyright and interoperability. In particular, we worried that the decision would encourage dominant vendors to bring copyright claims against competitors that replicated interface specifications for the purpose of interoperating with the dominant vendors’ products. We were right.
Sure enough, Oracle America has factored into at least four cases so far. One of these cases settled, one is on appeal, and the other two likely will be appealed in the near future. The latter two cases also involve patent claims, so appeals will be heard by the CAFC. (The CAFC has nearly exclusive appellate jurisdiction over cases with patent claims.) One can assume that the plaintiffs added the patent claims to ensure CAFC jurisdiction.
GDC v. Dolby Laboratories
This is the case that settled. Dolby Laboratories provides advanced motion picture theatre sound systems. GDC Technology develops software and hardware that interoperates with the Dolby systems. Dolby facilitated this interoperability by making its interface specifications available to GDC. It appears that Dolby stopped providing this information after it acquired Doremi, a media server manufacturer. Evidently, this acquisition made GDC a more direct competitor. Emboldened by the CAFC’s Oracle America decision, Dolby demanded that GDC stop using Dolby interface specifications to interoperate with Dolby products. Furthermore, Dolby insisted that GDC cease telling customers that GDC had the right to use this interfaces information to interoperate with Dolby products.MORE »
At a conference last week sponsored by Columbia Law School’s Kernochan Center for Law, Media, and the Arts, a panel I participated in considered an unexpected prospect: the copyright fair use doctrine as a mechanism for creating more certainty in international copyright law.
Balanced copyright proponents have long supported the “export” of fair use through trade agreements. If the United States was encouraging trading partners to adopt U.S. IP standards, those standards should include not only the higher protections provided by U.S. law (e.g., copyright term of life plus 70 and prohibitions on circumvention), but also our robust exceptions and limitations, such as fair use.
This advocacy contributed to the inclusion of Article 18.66 in the IP chapter of the Trans-Pacific Partnership Agreement. Article 18.66 provides that “each party shall endeavor to achieve an appropriate balance in its copyright and related rights system, among other things by means of limitations or exceptions…, including those for the digital environment, giving due consideration to legitimate purposes such as, but not limited to: criticism; comment; news reporting; teaching, scholarship, research and other similar purposes; and facilitating access to published works for persons who are blind, visually impaired, or otherwise print disabled.” (See here for a detailed discussion of the development of this Article.)
Fair use, has its critics, however, including major content owners — notwithstanding their reliance on it as a defense when sued for copyright infringement in the United States. A common argument against fair use is that its flexibility produces too much uncertainty and encourages judges to run amok.
Yet a panel I participated in on “Fair Use and Other Exceptions” at the Kernochan Center’s conference last week, “Trading in IP: Copyright Treaties and International Trade Agreements,” stood the uncertainty argument on its head.
Yesterday, the district court in the Oracle America v. Google copyright litigation over the Android application program interfaces (APIs) denied Oracle’s motion for a new trial and renewed motion for judgment as a matter of law. The jury’s decision that fair use permitted Google’s copying of elements of the Java API in the Android API thus is ripe for review in the U.S. Court of Appeals for the Federal Circuit (CAFC).
The district court denied Oracle’s renewed motion for judgment as a matter of law in one sentence, “for the same reasons as its old one.” The court’s denial of Oracle’s earlier motion for judgment a matter of law is discussed here.
With respect to the motion for a new trial, the district court first responded to Oracle’s contention that it had abused its discretion by limiting the fair use trial to “Android as used in smartphones and tablets, postponing all other uses to later trials.” The court observed that the original trial in 2010 covered Android versions used in smartphones and tablets, and that these versions were within the scope of the appeal and the remand. Once it was back before the district court, Oracle had sought to broaden the case to include later versions of Android used on other devices, including laptops and desktops. Google, however, disputed whether the earlier finding of infringement applied to these later versions of Android. Thus, including them in the second trial would require Oracle proving that these versions, too, infringed its copyright in Java.
Further, the court found that the fair use analysis with respect to the laptop and desktop versions was distinct from that concerning the smartphone and tablet versions. Oracle argued that because the fourth fair use factor considered whether widespread conduct of the sort engaged in by the defendant would have an adverse impact on the market for the original, the potential harm to the laptop and desktop markets was relevant to the fair use determination. The court responded that
the concern with widespread use, however, is not whether uses distinct from the accused uses—each of which must be subject to distinct transformativeness analyses—might harm the market for the copyrighted works. Rather, the concern is whether a use of the same sort, if multiplied via use by others, would cause market harm, even though the actual use by the infringer caused only minimal harm.
In its recent decision in the long-running Kirtsaeng v. Wiley copyright litigation, the Supreme Court provided much needed clarification of the appropriate standards for lower courts to apply in determining when to award attorneys’ fees to the prevailing party. But perhaps the most important passage of the Court’s unanimous opinion, written by Justice Kagan, concerns the purpose of the Copyright Act.
The Supreme Court noted that a fee-shifting statute should be interpreted in a manner that advanced the objectives of the relevant Act. Thus, the question in this case was which party’s approach better “advances the Copyright Act’s goals.” The Court stated that “those objectives are well settled.” The Court quoted its 1994 decision in Fogerty v. Fantasy that “copyright law ultimately serves the purpose of enriching the general public through access to creative works.” The Court then stated, “the statute achieves that end by striking a balance between two subsidiary aims: encouraging and rewarding authors’ creations while enabling others to build on that work.”
As predicted here two weeks ago when the jury found that Google’s use of Java declaring code in the Android operating system was a fair use, the presiding judge has rejected Oracle’s motion for a judgment as a matter of law. Oracle argued that no reasonable jury could find against it, but the judge ruled that based on the law of fair use and the trial record, a jury reasonably could have found for either side on the fair use issue. Because the district court’s 20 page order applying fair use jurisprudence to the facts of this case likely will be the focus of Oracle’s inevitable appeal, it is worth examining in some detail.
Before diving into a discussion of the four statutory fair use factors, the district court explained that the jury reasonably could have found that Google’s copying of the declaring code of 37 of the 166 packages of the Java Application Program Interface (API) was justified by the objective of “inter-system consistency.” The Java API contains a library of thousands of pre-written Java source code programs for common functions. Each program is called a method. Each method contains a line of declaring code that specifies the method’s name and defines acceptable inputs and output. The method then contains implementing code that carries out the function. The methods are organized into a hierarchy of classes and packages, referred to as the API’s structure sequence and organization (SSO). Oracle conceded that copyright did not protect the Java language. However, Oracle claimed, and the Federal Circuit found, that copyright protected the declaring code and the SSO. The question before the jury was whether fair use allowed Google to copy the declaring code and the SSO.
Yesterday Google announced a new program to provide legal support for certain creators on its YouTube platform whose non-infringing videos have been targeted for DMCA takedown notices. EFF reports that under the Fair Use Protection program, YouTube will cover legal costs up to $1 million in relation to videos that YouTube has determined are clearly lawful fair use — starting with these four videos. DisCo has previously covered the troubling phenomenon of DMCA abuse   , where copyright takedowns are used to silence criticism and dissent. In an amicus brief filed by Automattic, Google, Twitter, and Tumblr, in the Ninth Circuit Lenz case last month, the Internet platforms expressed concerns with DMCA abuse, identifying a laundry list of examples:
a manufacturer of electronic voting machines sending takedown notices, just prior to an election, to suppress criticism of the machines’ integrity and security; a religious organization’s attempt to silence its critics by sending out takedown notices; a well-known fashion company’s attempt to silence a blogger for criticizing the company for digitally altering an image in its advertisement to portray a model as unnaturally skinny; and several examples posted on EFF’s “Takedown Hall of Shame.”
YouTube isn’t alone in implementing policies to protect users engaged in fair use of content. Automattic has also been working to give its users more certainty about relying on fair use. The aforementioned brief explained that Automattic has been defending users in court, and “recently brought two misrepresentation suits under the DMCA against parties who submitted abusive DMCA notices.” (Automattic Inc., et al. v. Steiner, 82 F. Supp. 3d 1011 (N.D. Cal. 2015); Automattic Inc., et al. v. Chatwal, No. 13-cv-5411 (N.D. Cal. filed Nov. 21, 2013).) The brief also shared some noteworthy statistics from Automattic’s latest transparency report, which reveals how much DMCA abuse Automattic has to regularly reject:
For example, many times each week, amicus Automattic receives a takedown notice that appears motivated not by an interest in protecting copyright but a desire to improperly silence critics. Indeed, approximately 10% of the takedown notices Automattic receives are rejected as abusive.
Initiatives like Automattic’s defense of its users against abusive DMCA takedown notices and Google’s plan to cover legal costs if necessary are important efforts to help ensure that Internet users can exercise their right to fair use. While companies like Google and Automattic may have the financial and legal resources to defend against a baseless copyright suit, the choice to file a counter-notice after receiving a DMCA takedown notice has to be made by the end user, who most often does not have the same resources and thus must make a different calculation of risk. YouTube’s new initiative helps ensure that legitimate speech isn’t suppressed because the user cannot afford counsel to vindicate their rights.
Project DisCo readers know that a number of our contributors have regularly posted on the subjects of copyright and fair use. Indeed, the topic is not only important, but one for which change is frequent and sometimes lurching. Nothing exemplifies that better than the shifting sands of copyright enforcement by major U.S. and international sports organizations, like the National Football League and Formula 1, in today’s age of social media.
I’ve been a passionate fan of both sports for decades, since the “British Invasion” of Indianapolis with rear-engined race cars of 1963-65 and the Green Bay Packers’ dominance of professional football throughout the 1960s. In those days, of course, there were no VCRs, DVRs or digital media available to consumers and fans. And as NFL aficionados recognize, each television broadcast on Sunday (and Thursday or Monday) is preceded by a conspicuous copyright notice cautioning that except for private viewing, “any other use of this telecast or any pictures, descriptions or accounts of the game without the NFL’s consent is prohibited.”
That “prohibition,” Ars Technica observed, is “wrongheaded.” Almost alone among Western nations, the United States has enshrined fair use by statute into the very fabric of copyright law. Fair use permits one to publish excerpts of a copyrighted work legally, by application of a multi-criteria test focusing on the “purpose and character” of the use, the nature of the copyrighted work, the ”amount and substantiality” of the portion used and “the effect of the use upon the potential market for or value of the copyrighted work.” Thus, fair use of a copyrighted work, “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship or research, is not an infringement of copyright.” The NFL can no more prohibit newspapers, or bloggers, from publishing an “account” of pro football games than the company owning rights to the Ed Sullivan Show could prevent use in a Broadway production of a 7-second clip from a 1966 episode depicting introduction of the Four Seasons musical act.
This morning the Supreme Court issued an order indicating that it was declining to hear an appeal of the copyright case between Oracle and Google. The appeal concerned the copyrightability of “application programming interfaces” (APIs). Oracle launched the suit against Google shortly after acquiring Sun, which held copyrights and patents on the Java computer language, in 2010. It claimed that Android infringed Java copyrights because Android replicated elements of the Java API in the Android API. (Oracle’s suit also advanced patent claims, which came up remarkably short.)
The trial court sided with Google, but the U.S. Court of Appeals for the Federal Circuit disagreed, in a May 2014 ruling discussed previously here, here, and here. Google appealed to the Supreme Court, arguing that the appellate court had incorrectly held that the system and methods of the Java API could be protected under U.S. copyright law. The U.S. Copyright Act withholds protection from any idea, procedure, process, system, or method of operation. Processes, systems, and methods are usually the domain of patent law, not copyright; courts have long noted the lack of copyright protection for interface specifications encourages interoperability across software environments.