After years of protracted litigation, including two jury trials and two appeals, Google and Oracle are now destined for yet another trial arising from Google's alleged unauthorized use of 37 of Oracle's Java application programming interfaces, or APIs, in the Android smartphone operating system. Finding that Google's use of Java APIs did not constitute fair use as a matter of law, on March 27, the U.S. Court of Appeals for the Federal Circuit reversed the trial court's judgment in favor of Google and remanded for a trial on damages.

While the decision ensures that the ongoing saga between Google and Oracle will no doubt continue to fascinate software developers who have been following the case with great interest, one of the most fascinating aspects of the case from an intellectual property law standpoint is that the case may come to represent a shift in the way that courts approach copyright fair use cases.

The proliferation of content on the internet has brought with it a number of common misconceptions regarding fair use. Setting aside those misconceptions, fair use is fundamentally a statutorily recognized defense to be asserted in response to a claim of infringement. As codified, fair use involves consideration of four factors to assess whether a particular use is a fair use: “the purpose or character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or the value of the copyrighted work.”

For better or worse, fair use as codified often raises more questions than it answers.  Indeed, the U.S. Supreme Court has cautioned that fair use calls for a case-by-case analysis and “is not to be simplified with bright-line rules.”

Over the last 25 years or so, courts have produced a variety of decisions that expanded the application of fair use.

In the '90s, a copyright infringement suit involving the rap music group 2 Live Crew and the owner of the rights to Roy Orbison's popular song, “Oh, Pretty Woman,” resulted in a Supreme Court decision that parody — which the rap version of the song was considered — can support a finding of fair use. In reaching its decision, the Supreme Court considered the origins of fair use and observed that “in literature, in science and in art, there are, and can be, few, if any, things which in an abstract sense, are strictly new and original throughout.”

Fast forward to the last ten years, during which time courts continued to expand the scope of fair use recognized by the Supreme Court in the “Oh, Pretty Woman” case.

When photographer Patrick Cariou sued appropriation artist Richard Prince for copyright infringement, the U.S. Court of Appeals for the Second Circuit held that Prince's artwork did not need to comment on Cariou's original works or the author of those works to constitute fair use.

Similarly, when artist Dereck Selzter sued the band Green Day for using a modified version of one of Seltzer's drawings, the U.S. Court of Appeals for the Ninth Circuit found that the band's use of the artwork in a music video was transformative in nature and hence fair use. In reaching its decision, the Ninth Circuit found that “with the spray-painted cross applied to the face of Seltzer's artwork, in the context of a song about the hypocrisy of religion, surrounded by religious iconography, [Green Day's] video backdrop using Seltzer's artwork conveys 'new information, new aesthetics, new insights and understandings' that are plainly distinct from those of the original artwork.”

While each of these decisions, in one way or another, broadened the scope of what constitutes fair use, the Federal Circuit's opinion in the Google/Oracle case represents what may ultimately prove to be the limit of fair use. Quoting some of the same language from the “Oh, Pretty Woman” decision, the Federal Circuit, concluded that Google's use of the 37 APIs was “not fair as a matter of law.” However, the Federal Circuit was also careful to limit the possible impact of its decision, even stating expressly that it was not foreclosing the possibility that a fair use defense could potentially apply “in an action involving the copying of computer code.”

It is too early to tell whether the Federal Circuit's decision will set the stage for the Supreme Court to revisit the fair use doctrine. Since the decision is, in certain respects, at odds with the decisions from the Second and Ninth Circuit courts mentioned above, such a split would typically justify the Supreme Court's review. Time will tell whether the Federal Circuit's decision represents a true limitation on fair use.

This much, however, is certain: as courts have recognized, fair use is likely to continue to be “the most troublesome [doctrine] in the whole law of copyright,” and a distinct challenge for those practitioners who pursue or defend claims of copyright infringement.

Samuel Lewis is a member of Cozen O'Connor in Miami. He focuses his practice on intellectual property litigation and transactional matters. Contact him at [email protected].