United States: Oracle v. Google: Are Juries Equipped To Decide Fair Use?

If you're in the high-tech industry and are sued for copyright infringement, there are two words you need to remember (in addition to the phone number of your attorney, of course). Those two words are "fair use."

This week, we were once again reminded of the increasing willingness of courts – and now juries – to "excuse" otherwise infringing conduct because the defendant's use of the plaintiff's copyrighted work resulted in the creation of new works or advances not contemplated by the plaintiff/copyright owner. In Oracle v. Google, a San Francisco jury found that Google's unauthorized use of some 11,000 lines of Oracle's copyrighted Java open-source code in Google's Android mobile phone operating system was fair use.

Anyone familiar with copyright law knows that the fair use determination is fraught with ambiguity and uncertainty. The fair use determination is different from a finding of no infringement. Indeed, courts typically will not consider the issue of fair use unless the defendant's conduct would otherwise be considered infringing. Unfortunately, neither Congress nor the courts have provided any clear guidelines or standards for deciding when the defendant's use will qualify as fair use. Copyright scholars have long expressed frustration at trying to pin down the meaning of fair use – although perhaps none so eloquently as Professor Paul Goldstein of Stanford Law School:

Fair use is the great white whale of American copyright law. Enthralling, enigmatic, protean, it endlessly fascinates us even as it defeats our every attempt to subdue it.

The truth of Professor Goldstein's observation is plainly evident in the Oracle court's "Melville-esque" instructions to the jury about fair use. Indeed, of the court's 22-page set of jury instructions, nine pages are devoted to explaining how the jury was to decide the fair use issue.

The district court's jury instructions identified three sets of considerations that were to guide the jury's deliberations. First, the jury was instructed that it must follow the guidance provided by Congress in Section 109 of the Copyright Act, which sets forth four factors to be considered in determining whether the defendant's conduct constituted "the fair use of a copyrighted work." What the district court failed to mention, however, is that there has been little or no judicial consensus as to what these factors actually mean and how they should be applied in particular circumstances. Indeed, David Nimmer concluded that based on his review of federal court fair use decisions, "had Congress legislated a dartboard rather than the particular four fair use factors embodied in the Copyright Act, it appears that the upshot would have been the same."

Next, the jury was instructed that it needed to determine whether Google's use was "transformative." According to the district court, "a use is transformative if it adds something new, with a further purpose or different character, altering the first use with new expression, meaning or message rather than merely superseding the objects of the original creation." Conversely, the jury was told that "a work is not transformative where the user makes little or no alteration to the expressive content or message of the original work and uses it in the same or similar context." Finally, the jury was instructed that a defendant's work may be considered transformative even where no modifications were made to the portions of the plaintiff's work that were copied.

The district court explained that the jury's determination of whether Google's use was "transformative" was important because it would have a material impact on the way the jury considered the four factors identified by Congress in Section 109 of the Copyright Act. For example, the jury was told that with regard to the first factor – the purpose and character of the defendant's use – the clearly commercial nature of Google's use "weighs against fair use." At the same time, the jury was instructed that "even a commercial use may be found . . . to be sufficiently transformative" under the first factor and "the more transformative an accused work, the more other factors, such as commercialism, will recede in importance." Similarly, the district court instructed the jury that its evaluation of the fourth factor – the effect of the defendant's use on the potential market for the copyrighted work – was also affected by whether Google's use was considered "transformative." On the one hand, the jury was told that Oracle need not "show with certainty that future harm will result so long as some meaningful likelihood of future harm exists to the market value of the copyrighted work or the licensing value of the copyrighted work and its derivative works in traditional, reasonable, or likely to be developed markets." On the other hand, "where the second use is transformative . . ., market substitution is at least less certain and market harm may not be so readily inferred." In short, "the greater the transformation, the more likely an accused use will qualify as a fair use."

Finally, the jurors were told that even after considering each of the four factors through the lens of whether or not Google's use was transformative, they were nonetheless free to consider whatever other factors they collectively thought were pertinent. The district court explained that while the Copyright Act states that the fair use determination "includes" consideration of the four factors, it does not preclude the consideration of other factors. Hence, the jury was told that "you may consider any additional circumstances and evidence, pro or con, that, in your judgment, bear upon the ultimate purpose of the Copyright Act, including protection of authors and the right of fair use, namely, to promote the progress of science and useful arts."

Has copyright law come to this – where the outcome of copyright lawsuits worth hundreds of millions or perhaps billions of dollars are to be determined based on a lay jury's ability to comprehend and apply legal terms and restrictions that both courts and copyright scholars have criticized as unworkable? Are lay juries really in the best position to determine whether the defendant's use will or will not "promote the progress of science and useful arts"?

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions