Category: Intellectual Property

Google v. Oracle XI: Going In Circles at Oral Arguments

On October 7, the Supreme Court finally heard oral arguments in the decade-long copyright software slugfest Google v. Oracle. Thomas Goldstein represented Google, Joshua Rosenkranz represented Oracle, and Deputy Solicitor General Malcom Stewart represented the United States as amicus curiae in support of Oracle. The major arguments discussed were the following: 

  1. whether the Java declaring code Google copied into the Android OS is unprotectable under the limitation in copyright called the merger doctrine;
  2. whether the Federal Circuit applied the correct standard when it reviewed the case de novo and overturned a fair use finding by a jury; and
  3. whether Google’s use was a fair use, particularly whether it was transformative; and
  4. whether the Court’s decision for either party would risk upending the American software industry.

While it is folly—let me underscore, folly—to make predictions based on the questions justices ask during oral arguments, I will presume to make a few comments and some soft predictions. First, I believe the Court will have a hard time accepting Google’s merger argument and may even find unanimously for Oracle on that question.

Second, the Court may remand to the Court of Appeals on the standard of review question, but if so, it will have to address the question raised about what effect a decision could have on the practice to resolve fair use issues on summary judgment. Alternatively, the Court may hold that the Federal Circuit did not err with regard to civil procedure and will then comment solely on the appeals court’s holding that, as a matter of law, Google’s use was not a fair use.

Third, with regard to the fair use defense itself, the Court did not devote much attention to the question of transformativeness, upon which Google’s claim rests. So, good luck reading those tea leaves. And, fourth, by contrast, the justices did direct more questions toward Google’s claim that a finding for Oracle would cause “the sky to fall” upon the software industry. And while that claim may—may—concern the Court, readers should not confuse this argument with the fourth fair use factor, which asks whether market harm is done, or will be done, to a plaintiff in a case, not whether a finding against fair use conflicts with widespread to market practices overall.

Part of what makes this case historic is that Google, the darling of the contemporary tech world, has effectively asked the Court to upend copyright law in order to (allegedly) avoid upending the software industry. If that is a fair summary, then the Court’s path should be clear. If the legal arguments presented by Google are untenable and might, therefore, weaken copyright for every author under in its protection, the Court cannot accept Google’s claims on the merits. Further, Google’s broad appeal to avoid industry disruption (unless of course Google is doing the disrupting) is at odds with its own claim that the works it copied are not copyrightable.  

Copyrightability & the Merger Argument

On the matter of copyrightability of the Java declaring code, Google conceded to Justice Gorsuch that it would focus its argument on the merger doctrine, pulling back from its earlier arguments that the declaring code constitutes an unprotectable “method of operation” under the statute. The merger doctrine denies copyright protection to works when there is only one way, or very few ways, to express an idea. In such instances, the expression and the idea (or in computer code, the function) are said to be merged.

As addressed in this post, one disconcerting aspect of Google’s appeal to merger is that it is based on its claim that it “had to” copy the Java code at issue. That need, however, appears to be a business decision to attract Java programmers to develop apps for Android, rather than a genuine limit of coding options available at the time the copying occurred. 

As such there is no distinction between Google’s merger argument and the claim that someone “had to” copy any other protected work. A different creator might argue that he “has to” copy a lot of Star Wars material in order to make a new work that appeals to Star Wars fans, but this business goal (need) does not void the protection of the works he wants to use. This is as basic as copyright gets.

The justices homed in on this aspect of Google’s appeal to merger, using the word circular more than once to probe Mr. Goldstein on the question; and several justices voiced their concern that if merger is misapplied upon the condition of a use, rather than as a limitation at the moment of authorship, the result is tantamount to penalizing a work for its own success. This is another potentially hazardous aspect of Google’s merger argument for all creators:  it implies that once a work is highly popular, it is practically, if not entirely, in the public domain. Though many copyright critics would love to go there, the Court knows this is not the law.

Having said that, several of the justices, most notably Justice Breyer, did challenge Mr. Rosenkranz with what Terrica Carrington at Copyright Alliance calls some “less-than-stellar” analogies. Justice Breyer referred a few times to the QWERTY keyboard as a comparison to the Java declaring code, Justice Roberts referred to the standard arrangement of a restaurant menu, and Justice Kagan described a hypothetically ingenious way to arrange products in a grocery store.  

Of course, none of these examples is properly a subject of copyright because none entails a modicum of creative expression fixed in a tangible medium. Even if we imagine viewing each of these arrangements of non-protectable elements—the alphabet, restaurant dishes, or grocery items—for the very first time, it would be very hard to identify creative expression that transcends mere utility. By contrast, Google has already conceded that the code at issue is expressive, and this is supported by expert amici, who tell us that there can be tremendous creativity in the kind of code Google copied. Perhaps the justices here reflect what I mentioned in an earlier post—that analogies can be very hard to draw to computer code because code is illegible to most humans and inherently functional, neither of which is true of other works protected by copyright.

But just because the Court raised imperfect analogies attempting to divine the nature of code, this does not mean that Google’s merger claim gained much purchase on the bench. Once we separate all the rough analogies, the Court is still left with one question:  whether Google could have chosen to author its own declaring code and sequence, structure, and organization to achieve its purpose of developing a popular mobile OS. And the answer to that is yes.

Indeed, the availability of alternative expression is the focus of the merger inquiry in the 1979 report to Congress written by the National Commission on New Technological Uses of Copyrighted Works (CONTU), which established the conceptual foundations for copyright protection over computer code. As a result, if Google could have written its own expression to achieve the same result, the Copyright Act provides that the Java declaring code is not merged. In the brief submitted by Professor Arthur Miller, former member of CONTU, he writes:

“CONTU described how it envisioned the ‘idea-expression identity’ exception’ would operate in the software context:  when specific instructions, even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not amount to an infringement.’ But ‘[w]hen other language is available, programmers are free to read copyrighted programs and use the ideas embodied in them in preparing their own works.’ In so saying, CONTU found that ‘[t]he availability of alternative noninfringing language is the rule rather than the exception.”

Google appeals to a different authority: the purportedly established practice of the tech industry to freely copy APIs.  Google’s broad claim that “everyone in the software industry knows APIs are not protected” attempts to serve both as evidence to support its merger argument and as an implied warning to the Court that a finding in favor of Oracle will overturn decades of tech industry practice and, therefore, stifle innovation. But the “everyone knows” argument contains a few significant flaws.

First, as Mr. Rosenkranz stated, many other commercial users have paid to license Java, including licensing only the declaring code. This practice belies the allegation that “everyone knows” these works are not protectable. In fact, prior to the time Google copied the Java declaring code, it had been negotiating a license with Oracle and only chose to reject that agreement because of Java’s interoperability requirements—not because the works at issue were so obviously not subject to protection.

Next, and perhaps most importantly, Google’s “everybody knows” argument is circular reasoning with respect to the merger argument. Justice Thomas correctly asked whether merger applies at the moment of authorship or at the moment of an alleged infringement, and Mr. Goldstein answered that it is the latter. But aside from the fact that this is not the correct standard under §102(b), Google is deceptively asking the Court to hold that merger applies in both instances. Or perhaps more pointedly, Google wants merger to apply at the time that is most convenient to the alleged infringer.

Because if indeed “everybody knows” that API packages have never been copyrightable, then Google is asserting that merger applied the day Sun authored the code in 1995. Either Google is saying that the universal practice of “reimplementation” does not date back to the 1990s, or it is playing shell game with the merger doctrine. Hence, the reason the merger claim sounds circular is because it is. It is an argument of convenience, not law.

It Will Probably Come Down to Fair Use, But…

The justices did not focus a lot of attention on Google’s fair use defense itself, instead emphasizing whether the Federal Circuit applied the correct standard of review to the 2016 jury verdict. As discussed at length in this post, the simple explanation is that the Federal Circuit applied the correct standard of review if it assumed the facts weighed in favor of Google but that the jury below made errors of law in the fair use analysis.

Whether the Court will remand for another review is difficult to predict, especially given that it involves esoteric questions of civil procedure. However, the discussion about the standard of review did raise an interesting topic as to the potential effect on summary judgment practice. And because summary judgment is where most fair use defenses live or die, this seems like a topic worthy of its own post.

If the Court does remand, this will likely imply a finding that Oracle’s code is copyrightable and not merged. Otherwise, a fair use analysis is an absurdity because one cannot make a fair use of a work unprotected by copyright. But if I had to guess, I think this monster of a case probably will come down to the fair use question because the Court appeared to be unable to find a hook under statute or caselaw that the code at issue is subject to merger. If that’s the way it breaks, many will say “the Court just doesn’t understand the coding world.” Or, as Mr. Goldstein put it…

“Why would Congress want a rule that says: ‘okay, these developers are extremely familiar with these commands. They’re used to write creative computer programs. Let’s just make it as inefficient as possible for them? The only upshot of Oracle’s rule that it wants you to adopt is to make computer programming incredibly inefficient so that we have fewer creative computer programs.”

But stepping away from the nuanced legal questions for a moment, a reasonable prediction on the industry effect of this case militates against Google’s allegations and its all-too familiar attempt to stand in the shoes of small and independent producers. Google is the 900lb gorilla in just about any dispute, and there is at least as much risk (if not more) that a finding on its behalf will lead to the simplest result that when the biggest kid in the sandbox wants to take something, he will. Imagine the software developer who does not have Oracle’s resources trying to survive just to the appellate phase of this epic battle. More likely, they would tap out early and settle, but how would this outcome serve innovation better than the opposite scenario in which even the biggest gorillas are required to license protected works?

As such, the broadest market-based considerations return us to the same bugaboo:  the fact that hundreds of other commercial users licensed Java code and, presumably, added their contributions to the world of computing. So, if Google ultimately gets a pass just because it is big enough to infringe as-needed and litigate indefinitely, that hardly seems like justice or the best possible outcome for future creators.

Lemley Proposes Copyright Term Limit Disguised as Fair Use

Welcome to Professor Lemley’s Home for Wayward Works. Formerly known as the Asylum for Orphan Works, but we really prefer not to use the O-word as this connotes a state of abandonment and a feeling of being unwanted. Although we are certainly happy that the term Bastard Works was retired after 1912.

At PLHWW, we believe that every work deserves someone’s love, even if its parents no longer care to acknowledge it. Take a look around, and you will see a cheerful confederacy of the once forgotten and forlorn and, perhaps, you will recognize their true potential. It may be Season 1, Episode 12 of Mork & Mindy, “Mork’s First Christmas.” Or perhaps you will embrace Season 2, Episode 17 of What’s Happening!!, when The Doobie Brothers teach Rerun an important lesson about bootlegging music. Because our motto at Professor Lemley’s is Leave No Work Behind.

What was all that about?

Well, it seems Professor Mark A. Lemley (notable copyright skeptic) has advanced a new theory under which copyright law—specifically, the fair use doctrine—should be reimagined in order to rescue creative works that will otherwise go missing. “An unanticipated consequence of the move to streaming,” Lemley writes, “is that more and more content will effectively disappear from the public eye, at least legally.”

Despite being an avowed empiricist with regard to the nature of intellectual property, Lemley offers no solid evidence that works are “disappearing,” as he puts it, or quite demonstrates how we are “moving backward for the first time in 40 years.” Yet, undeterred by the lack of data to show us the vanishing works phenomenon, Lemley offers a solution to a problem that even he seems not quite sure truly exists. Despite some sweeping generalizations in his paper, Lemley appends several of his potentially more compelling examples with acknowledgements that they are likely rare circumstances. So, this reader struggles to understand whether he hopes to remedy a major trend or is responding to intermittent anomalies in the market.

For instance, one might assume that absent hard data, the anecdotal evidence would be compelling and on point. But Lemley’s lead-off example is the presently unavailable Spanish TV series El Ministerio del Tiempo. Previously licensed by Netflix, Lemley complains that “It’s not on television anymore, even in Spain. And it’s no longer available on Netflix, one of the many shows that is pulled off Netflix every month to make room for content with higher demand. Nor can you find it on Amazon, or Hulu, or any of the growing number of TV streaming sites.”

Now, if you’re tempted to say, So what? TV shows come and go all the time, you’re right. And Lemley does acknowledge that this is just business, that when an insufficient number of viewers watches a program, Netflix, or whoever, will probably not renew its license for that show. But with this example, Lemley hopes to tee up the problem, namely, the unavailability of El Ministerio based on an assumption that the rightsholder lacks either the opportunity or the desire to make it available under a legal licensing regime.

This circumstance, leaving interested viewers empty handed, Lemley proposes to remedy by having the owner forfeit its right of control under the fair use doctrine. He posits a reading of “transformativeness” under factor one to encompass just about any use that “benefits society” (as if that doctrine were not oozy enough in the courts). And under the fourth factor, Lemley asserts that if the copyright owner is no longer in the market, then of course market harm cannot occur. Okay, but what he is really proposing is that works simply fall out of copyright due to apparent disuse, which moots the fair use conversation altogether. Moreover, a number of problems leap to mind given Lemley’s focus on streaming, which largely means TV shows, movies, and music.

The thorniest issue is that filmed entertainment makes a poor example for Lemley’s hypothesis because most films and TV shows entail multiple subcontracts and licenses for limited uses of various creative works for a given project. The most obvious would be music synched with a film. Absent a new licensing agreement with a proper distributor, the owner of the film or TV series is not at liberty to simply make the material available, even if he wants to. The producer would be liable for distributing all the other contracted elements without consideration for its contractors. Lemley seems to overlook these subcontractors’ interests in pursuit of his “right” as a viewer to access the program.

Moreover, just because a work like a TV series is unavailable for a period, this does not mean the rightsholder will not make it available again in some form, if they believe it has an audience. For all Lemley knows, Onza Productions is preparing to make U.S. DVDs or seeking some other distribution channel. Or, perhaps, the market that is closed to this series in 2020 will change in two years, and there will be a new opportunity. Nevertheless, Lemley seems to argue that there should be a new standard by which we deprive the owners of their copyrights during this interlude of unavailability. But as Stephen Carlisle reminds readers in his response to this same paper, copyright is not a use-it-or-lose-it right.

A Public Domain Argument In Fair Use Clothing

Lemley rests considerable weight on broadening the factor four analysis, arguing that if the rightsholder, either by choice or circumstance, abandons the market, then the rightsholder cannot claim market harm when the work is used by someone else. But this is a fourth factor argument in name only.

Fair use is a one-use-at-a-time exception to copyright protection, whereas what Lemley is really proposing is that works should untimely fall into the public domain. He asserts that once the copyright owner halts, or even temporarily suspends, market exploitation of a work (for almost any reason) this should allow even a commercial enterprise to use the work. That is the public domain, where fair use has no meaning.

Under Lemley’s theory, it would be very difficult to determine which works have fallen out of licensed use that, according to some novel standard, deserve to be appropriated more quickly into the public domain. And this is made pellucidly clear when he proposes that even planned, temporary unavailability (e.g. a film studio windowing releases of its catalog) should be proscribed under his new doctrine. Although Lemley alludes to niche circumstances (e.g. an owner removing works to cleanse an author’s public record), he spends considerably more time citing Big Media examples that are both fatal to his legal theory and culturally un-compelling.

I know copyright critics can’t go too long without invoking the Evil Mouse, but it is anathema to Lemley’s theory when he cites Disney as an iconic copyright owner with a long tradition of offering limited releases of its classics. This “windowing” model is not unique to Disney, and it blows up Lemley’s proposal to expand the fourth fair use factor to his stated purpose. Why?

Because Disney’s business model proves rather dramatically that works retain market value for years, or even decades. Thus, the rightsholder would absolutely suffer market harm if, by virtue of intentionally and temporarily shelving a work, the right to use that work were to devolve to any other party. Again, this is just an argument for early termination of copyright protection. And if the making available rights were thus restricted, such that works would so rapidly fall out of copyright, this would have a negative effect on the production of new works—especially the motion pictures and TV shows that hope to capitalize on a long tail distribution strategy. As David Lowery states in this Twitter thread, “Why can’t I let a work of mine go out of print for a while to build demand, so that when I release it I can better recoup my fixed costs? What’s wrong with choice and freedom?”

Under Lemley’s proposal, Disney’s decision to hold back The Little Mermaid for a year or two would mean that Google or Amazon would be free to stream the film without license. Good luck! But the irony is that Google and Amazon probably wouldn’t bother because, according to Lemley, anybody would be free to distribute the film. Did he really mean to run smack into this wall by taking his theory quite this far? Perhaps.

It seems that Professor Lemley begins from a commonly-held, though false, premise—that there is an unlimited right to access works once they have been published. And in order to support this position, he intermittently conflates information with creative works. “Information,” he asserts, is “getting harder to access.” And whether there is any evidence for this claim, he dodges the question by vacillating between the public’s right to obtain information and its desire to access entertainment works via the “celestial jukebox.”

Even where there may arguably be some interesting crossover between those principles (e.g. if there were nothing but sanitized versions of Tarantino movies being made available), he declines to explore these nuanced possibilities in favor of citing mega-franchises like Star Wars. The updated version of A New Hope (no matter how much it bugs the purists) is simply not comparable to his reference to the 1930s American publication of Mein Kampf with the anti-Semitism watered down. These examples do not belong in the same conversation, unless George Lucas was a putative dictator and the original A New Hope contains his ulterior plan for committing genocide.

Even if every fan hates the updated version of the first Star Wars film, copyright owners retain the right to amend their works under §106(2) of the copyright act. That the original A New Hope should be accessible in some form, as a matter of preservationist principles, is a valid consideration, which is one reason copyright law has carveouts for libraries and archives. But for Lemley to make so broad an assertion, let alone under fair use, that would allow even commercial exploitation of the original version of a work is a theory that will find little purchase.

As mentioned, Lemley alludes generally to the hypothetical use of copyright to bury the record, and I would agree with him in principle, but for the scarcity of evidence supporting this complaint. For instance, he describes a circumstance in which a rightsholder may want to remove a work from the market because the work may now be considered offensive, but this begs two questions: 1) how often does this happen such that the original truly disappears?; and 2) is it often enough to recommend a rethinking of copyright doctrine? I suspect the answers are rarely and no. And Lemley even seems to acknowledge the rarely part, so why all the fuss? More likely, a work that is no longer in vogue, but which may have some cultural relevance as an artifact, will be legally available to the researcher, who may be the only person with any interest in finding it.  

Mesmerized by the Celestial Jukebox

Finally, all of this comes under the heading that Professor Lemley subscribes to the school of thought that, copyright makes works disappear in an era when technology enables everything ever created to be accessible by anyone from anywhere at any moment and forever. This ambition is a fantasy, both as a matter of practice and purpose. For instance, one need only glance at the tattered state of American political discourse to see that “information” is a woefully subjective concept and that more access to more of it does not seem to help one little bit.

As for entertainment works, neither Lemley nor anyone else can account for the multitude of reasons why various works ebb and flow through public consciousness at any particular time. I mentioned in an older post about the public domain that none of my kid’s friends seemed to know Charlie Chaplin, whose Little Tramp was the most recognizable figure in the world for most of the 20th century. But it is not a lack of access to the films (let alone copyright) that explains the disappearance of Chaplin from the Zoomer zeitgeist. It’s other things.

Even great cultural works will fail to capture contemporary interest for myriad reasons, including the simple observation that today’s market offers an overwhelming volume of new and old works competing for our attention. And this abundance is something the copyright critics usually applaud. I am sorry that Professor Lemley does not get to watch El Ministerio del Tiempo right now, but for the reasons stated (and quite a few unstated), that is an unremarkable starting place for a proposal to so dramatically amend copyright law.

NYTimes Reports: Propaganda Mills Have Replaced Local News

“You provide the prose poems. I’ll provide the war.” – Charles Foster Kane, Citizen Kane

You are probably familiar with “advertorials,” the relatively benign mash-ups of information and advertising offered by many print and online publications. For instance, a regional electric service company that sells generators might publish a page that reads a lot like an article suggesting some good reasons to consider a backup generator for the coming Winter. This blurring of editorial and marketing is usually transparent to the reader and, in most cases, the publisher explicitly states somewhere on the page that it is a paid ad.

But according to a story published Sunday by the New York Times, millions of Americans are now reading articles they perceive as local news, but which are in fact the equivalent of advertorials, paid for and directed by political operatives and major business interests. And the articles are in no way identified as distinguishable from real news. Focusing primarily on a network owned by former TV reporter Brian Timpone, the Times states:

Maine Business Daily [MBD] is part of a fast-growing network of nearly 1,300 websites that aim to fill a void left by vanishing local newspapers across the country. Yet the network, now in all 50 states, is built not on traditional journalism but on propaganda ordered up by dozens of conservative think tanks, political operatives, corporate executives and public-relations professionals, a Times investigation found.

The Times feature describes a content mill in which freelance writers—many who might otherwise be real journalists if the industry had not been gutted by the “free content” cluster bomb dropped by Google & Co.—are paid pennies on the dollar to write articles with very clear instructions as to what they should say about political figures or matters of public policy. Not only are the articles not local news in any sense, but a story aimed at, say, residents of Hanover, New Hampshire may be written by somebody sitting in her apartment in Atlanta, who has been paid between $3 and $22 for coloring in a few lines provided by “the clients.” How this is demonstrably different from Russian troll farms is a mystery to me, except that I imagine Russian trolls are paid better. The Times article states:

The network is one of a proliferation of partisan local-news sites funded by political groups associated with both parties. Liberal donors have poured millions of dollars into operations like Courier, a network of eight sites that began covering local news in swing states last year. Conservative activists are running similar sites, like the Star News group in Tennessee, Virginia and Minnesota.

The most compelling (okay, infuriating) example cited by the Times describes how hotel magnate Monty Bennett, a major donor to President Trump, used the MBD network to lobby for a coronavirus stimulus bill in a manner that ultimately garnered his publicly-traded company a $70 billion government bailout. The Times also reports that Mr. Bennett also paid for articles designed to influence at least some of the rhetoric vis-à-vis U.S. China policy in response to the pandemic.

So, if you find yourself wondering how millions of Americans can believe any of the crap the president says, or why they are not outraged when millions of tax dollars allocated for “small-business” support winds up in the accounts of major corporations, at least some of this mass cognitive dissonance can be explained by the amount of professional propaganda online that is so easily disguised as journalism.

Thanks entirely to the democratizing power of the internet, the political propaganda game is bigger business than ever. The hippie/libertarian mantra that “information wants to be free” (which was not even the whole quote) became the business model for Web 2.0. Thus, the alleged monopoly on “information controlled by mainstream news organizations” was the cocktail shaker where the anti-copyright narrative collided with our political divisions, added a heaping dollop of conspiracy theory, and poured forth a river of yellow journalism that might even disgust some dormant scruple in Mr. Hearst himself.

Whatever was imperfect about mainstream journalism, it was professional and, in general, there were standards. As I said in an older post, there was a lot to be said for TV news before the expansion of cable. It was mandated by law and a money-loser for the networks. Consequently, there was no reason not to separate the news division from entertainment and let the journalists do their jobs. Millennials and Zoomers have no knowledge of this era, and I daresay a few Boomers have forgotten it. The fact is that less was way better than more. As I said in that same post, we used to argue about what to do next or how to do it but not about what has already happened. The truth was not nearly so subjective for the vast majority of citizens.

What cable TV initially did to news, the internet did to everything, and at logarithmic scale and velocity. Yet, even as we watch disinformation trample sanity in the streets, the tech-utopians in the blogosphere and many of the executives in Silicon Valley still cling to the narrative that more speech is the antidote to bad speech. This premise was naïve when Justice Scalia articulated it in context to the Citizens United opinion, and it was no wiser when the major internet companies asserted it (with the help of the EFF, Techdirt, PublicKnowledge, et al) in defense of their revenue streams.

Now, as we watch Twitter and Facebook try to stuff the arms and legs of their genies back in their bottles, this Times story reveals why those efforts are almost laughably futile. Local newspapers have been wiped out by the “natural price of zero,” and in their place, propaganda networks serve heaping portions of cheaply-made garbage to a public that not only can’t tell the difference, but increasingly doesn’t even want to know. Confirmation bias may have achieved its apotheosis this week when the President of the United States, in the middle of a pandemic, called one of the world’s top infectious disease experts an “idiot.” And yet, the tech-utopians and speech absolutists keep saying more—more speech is the antidote to bad speech. Really?