No Fair Use: Federal Circuit Orders Third Trial for Oracle, Google
Google's unlicensed use of Java APIs in smartphones was not transformative, judges rule.
March 27, 2018 at 12:57 PM
4 minute read
The original version of this story was published on The Recorder
Oracle's dispute with Google over Java APIs is coming back to San Francisco for a third trial.
The U.S. Court of Appeals for the Federal Circuit ruled Tuesday that no reasonable jury could have found Google's unlicensed copying of Java APIs into its Android operating system was a fair use. The court once again remanded the case to U.S. District Judge William Alsup of the Northern District of California, this time for a damages trial where Google could be on the hook for billions of dollars.
Android has generated more than $42 billion in advertising revenue, according to evidence presented at the 2016 trial.
The Federal Circuit was led once again by Judge Kathleen O'Malley, who upset the first trial with a 2014 ruling that found the Java APIs copyrightable. This time around, she said Alsup focused the fair use trial too narrowly, by limiting the harm caused by Android to the desktop and laptop markets where Oracle was already established.
“That Oracle never built a smartphone device is irrelevant because potential markets include licensing others to develop derivative works,” she wrote. “Because the law recognizes and protects a copyright owner's right to enter a 'potential market,' this fact alone is sufficient to establish market impact.”
It's another big win for Oracle's appellate lawyers, led by partner E. Joshua Rosenkranz. Rosenkranz persuaded the Federal Circuit three years ago that 11,000 lines of declaring code that make up the 37 Java APIs in question are copyrightable. Kirkland & Ellis is part of Oracle's team. It's also vindication for Orrick, Herrington & Sutcliffe trial partners Peter Bicks and Annette Hurst, who had tried to expand the scope of the trial but were blocked by Alsup.
“The Federal Circuit's opinion upholds fundamental principles of copyright law and makes clear that Google violated the law, Oracle general counsel Dorian Daley said in an emailed statement. “This decision protects creators and consumers from the unlawful abuse of their rights.”
Google was represented by King & Spalding. At oral arguments before the Federal Circuit last December, partner Daryl Joseffer argued that Google had used only a tiny amount of Java to transform the programming language for smartphones.
“The jury heard a lot of evidence that smartphones are an entirely different operating system context from personal computers,” he argued then.
But, O'Malley concluded on Tuesday, “Smartphones were not a new context.” Oracle predecessor Sun Microsystems was already working on a smartphone version of Java, and had licensed Java to Nokia and Amazon.com Inc. “Because the Java SE was already being used in smartphones, Google did not 'transform' the copyrighted material into a new context and no reasonable jury could conclude otherwise,” O'Malley wrote.
Plus, she added, “Merely copying the material and moving it from one platform to another without alteration is not transformative.”
Dorsey & Whitney IP partner J. Michael Kekes said via email the holding is especially significant. “What this means is that simply porting the work (even a small portion of it) to a new platform or medium doesn't mean you are transforming the underlying work,” he wrote. “The old adage that 'the medium is the message' doesn't necessarily fly in the context of fair use.”
Haynes and Boone partner Jason Bloom pointed out in an interview that this isn't necessarily the end of the line for Google. The company could ask for en banc review or petition to the U.S. Supreme Court. There's no circuit split on the issue, but “given the magnitude of this case and what it means for software developers, they might want to weigh in,” he said.
Judges S. Jay Plager and Richard Taranto concurred in O'Malley's opinion.
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View All'Don't Be Afraid to Dumb It Down': Top Fed Magistrate Judge Gives Tips on Explaining Complex Discovery Disputes
Newly Formed DEI Practices Expect Heightened Demand During Trump Administration
Major Plaintiff Victories: Women's Health Care Gets Expensive in Court
6 minute readAttorney Claims Phila. Roundup Trial Schedule Has Given 'Unfair' Preference to Certain Firms
4 minute readTrending Stories
- 1HSF and Kramer Levin Leaders Set Out Merger Timeline, Structure
- 2'Don't Be Afraid to Dumb It Down': Top Fed Magistrate Judge Gives Tips on Explaining Complex Discovery Disputes
- 3Doctrine of ‘Practical Location,’ Breach of a Commercial Lease: This Week in Scott Mollen’s Realty Law Digest
- 4Supreme Court Asked to Review Issues of Secondary Liability for Copyright Infringement
- 5Defense Verdict: Alston & Bird Beat Back $35M Claim Against Nokia
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250