28 March 2018Copyright

Federal Circuit revives Oracle v Google copyright clash

The US Court of Appeals for the Federal Circuit has revived a billion-dollar copyright clash between Oracle and Google.

Yesterday, March 27, the Federal Circuit overturned a jury verdict which found that Google’s use of application programming interfaces (APIs) found in Oracle’s Java computer program was fair.

The jury trial, which took place in May 2016 at the US District Court for the Northern District of California, ended in Google’s favour.

At the time, IP research company Ocean Tomo (which was hired by Oracle) estimated that Oracle was seeking nearly $10 billion in damages and profits in a pre-trial report.

The estimate included $475 million in damages and $8.9 billion for recovered profits from Google’s sales of the allegedly infringing products.

Now, the Federal Circuit has remanded the case for a trial on the amount of damages that Google owes Oracle.

Oracle sued Google in 2010, claiming that the unauthorised use of Oracle’s Java APIs in Google’s Android operating system infringed Oracle’s patents and copyrights.

The jury found that Google had infringed Oracle’s copyright but was deadlocked on whether the copying was fair use. After the verdict, the district court found that the APIs were not copyrightable and entered judgment for Google.

On appeal, the Federal Circuit found that the APIs could be protected by copyright. It remanded for further proceedings on Google’s fair use defence.

Google then submitted a petition for a writ of certiorari, but the US Supreme Court refused to hear the dispute.

At the second jury trial, in May 2016, Google prevailed on the defence of fair use and the court entered judgment.

“Where there are no disputed material historical facts, fair use can be decided by the court alone,” said Circuit Judge Kathleen O’Malley, on behalf of the court.

Looking at the first fair use factor (the purpose and character of the use), the Federal Circuit found that Google’s commercial use of the API packages weighs against a finding of fair use and that because the “copying is verbatim, for an identical function and purpose” it did not qualify as a transformative use.

“Ultimately, we find that, even assuming the jury was unpersuaded that Google acted in bad faith, the highly commercial and non-transformative nature of the use strongly support the conclusion that the first factor weighs against a finding of fair use,” noted O’Malley.

The court then weighed up this factor against the other three factors of fair use (nature of the copyrighted work, amount and sustainability of the work used, and effect on the potential market).

“On this record, factors one and four weigh heavily against a finding of fair use, while factor two weighs in favour of such a finding and factor three is, at best, neutral.”

The court was quick to clarify that this doesn’t mean that a fair use defence could never be sustained in an action involving the copying of computer code.

A Google spokesperson told WIPR: “We are disappointed the court reversed the jury finding that Java is open and free for everyone. This type of ruling will make apps and online services more expensive for users. We are considering our options.”

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