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.

In association with
Related Video
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.