I share the sorrow of millions at the passing of Justice Ruth Bader Ginsburg. The world has lost a genius of the law, who, in addition to her immeasurable contributions to American justice, was a great lover of the arts and a true champion of the rights of creators. My deepest condolences to her family, colleagues, and friends.
In my last post addressing the standard of review question presented in Google v. Oracle, I reiterated the fact that a fair use analysis is a holistic balancing of the four factor test and also suggested that while juries may fairly consider the facts that inform the test, the courts may be best suited to balance the interdependence of the statutory factors themselves. Nevertheless, we have recently seen a number of cases in which defendants have tried to advocate fundamental errors of law in fair use analyses—especially when it comes to the interaction between the first and fourth factors.
In its fair use defense, Google places considerable emphasis on the alleged novelty (in the market) when it used Oracle’s code in mobile devices. This “new context” assertion is the soul of its appeal to transformativeness under factor one which, it argues, bolsters its claim that its use of the copied code did not pose a threat to Oracle’s “potential market” under factor four. That is, if Google’s transformativeness claim were correct. It is not—neither as a question of fact nor of law.
The evidence that Oracle was already licensing Java for mobile in 2005 should be immediately fatal to Google’s argument that its use was transformative. But even without those facts—even in the wildly hypothetical scenario in which neither Oracle’s managers nor any of its prospective licensees could have imagined how Oracle’s code could be used in mobile devices—it is still an error of law to find transformativeness in cases in which the user merely copies a work to use it for the same purpose in a manner the author has not yet exploited, or might even decide not to exploit.
New Ventures Seek to Confuse Fair Use Analyses
In Disney et al. v. VidAngel (2017), the defendant asserted that it was transformative to provide “filtered” copies of mainstream motion pictures, having decided to litigate this infringing venture after the motion picture studios turned down VidAngel’s offers to license “filtered” versions. In granting plaintiffs’ motion for preliminary injunction, the California district court rejected all of VidAngel’s defenses, including its first and fourth factor assertions. Most pointedly, the court underscored the fallacy in VidAngel’s appeal to meeting a market “need,” stating, “The fact that 49% of VidAngel’s customers would view movies without filters shows that VidAngel’s service does serve as an effective substitute for Plaintiff’s unfiltered works, for approximately half of VidAngels [sic] users.”
Similarly, in Fox News v. TVEyes (2018), the defendant appealed to transformativeness, largely on the grounds that its news monitoring service, indexing and storing hundreds of news feeds, was both novel and highly useful. Thus, they hoped the courts might overlook the ways in which its service provided a market substitute for the plaintiff’s protected works. The Second Circuit reversed the lower court’s finding of fair use, holding that although the defendant’s Watch function was “slightly transformative,” this consideration was overwhelmed by its commercial nature and the fact that, under the fourth prong, “TVEyes makes available virtually the entirety of the Fox programming that TVEyes users want to see and hear.”
Nevertheless, it does seem that uses in new technological ventures, in conjunction with the inconsistent doctrine of transformativeness, fosters confusion about fair use jurisprudence where the Supreme Court may provide some guidance with its ruling in Google v. Oracle. I mentioned Brammer v. Violent Hues in the last post, in which it seemed the district court was perhaps a bit too distracted by the relative “newness” of internet commerce and, so, committed fundamental errors in its finding of fair use.
Brammer v. Violent Hues: A Simple Case Needlessly Complicated
The Fourth Circuit offered a roadmap in its recent correction of the fair use error in Brammer. There, the district court held that the defendant’s use of a photograph was transformative because he used an “expressive” work for an “informational” purpose. Reversing on appeal, and perhaps stating the obvious, the Fourth Circuit held that all the defendant did “was publish a tourism guide for a commercial event and include the Photo to make the end product more visually interesting.” Such a use, the court stated, “would not constitute fair use when done in print, and it does not constitute fair use on the Internet.”
But the district court’s unfathomable, metaphysical bisection of a single image indicates how easily an unclear transformativeness doctrine can muddle an otherwise classic case of infringement. A fair bit of confusion seems to arise with regard to alleged transformativeness in uses that merely alter the context of a work, rather than its content. And for those, the Fourth Circuit observed that there are two viable paths for finding transformativeness: documentary uses, and—as is relevant in Google v. Oracle—technological uses. In Brammer, the Fourth Circuit described “technological use” thus:
In [this] category, copyrighted works provide raw material for new technological functions. These functions are indifferent to the expressive aspects of the copied works. For example, we have held transformative the total reproduction of student essays for a plagiarism detection service because the database served an “entirely different function” that was unrelated to the expressive content of those essays.
In this observation, the Fourth Circuit concurred with the Second Circuit’s landmark decision in Authors Guild v. Google Inc., which similarly held a technological use to be transformative where it was indifferent to the copied works’ expressive aspects. The Fourth Circuit reversal in Brammer is in harmony with an important limit to the Authors Guild opinion, which the Second Circuit acknowledged “test[d] the boundaries of fair use.” That critical limitation is the use of a work for a purpose unrelated to its expression; and in Brammer, the district court erred rather dramatically by inventing a “non-creative” (i.e. purely informational) purpose for the infringed work that, if upheld, would either void copyright in nearly all photographs or sow legal havoc.
Critically, Google’s use was entirely related to Oracle’s expressive content, and effectively resulted in the creation of an unauthorized derivative work. As the brief for Oracle states, “For software, the quintessential derivative is a ‘version’ adapted for the next generation of devices or different operating systems.” Simply put, Google’s use of Oracle’s code in Android does not serve an “entirely different function,” but rather, performs the same set of functions for which the original expressions were written. Indeed, the declaring code Google copied would have been of little service in its time-to-market ambition if it had used the code for a truly novel purpose: this would have fouled Google’s intent to quickly attract Java-literate developers to write apps for its new platform.
The Supreme Court Could Help Shape Transformativeness
Appellate courts and legal experts, in response to outcomes like the lower court’s decision in Brammer, have highlighted another important limit to transformativeness. Brammer illustrates how a too-elastic read of “transformativeness” can swallow the author’s right to prepare derivative works under §106(2) of the Copyright Act. Stephen Carlisle of NOVA Southeastern University reminds us that the word “transformative” is part of the statutory definition of a protected derivative work:
A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.” [Emphasis added]
As a result, the transformativeness analysis must be careful to avoid eliminating the copyright owner’s right to create derivative works. Further, because many courts have found that the transformativeness doctrine under factor one exerts considerable influence over factor four considerations—though, as discussed below, such a view is out of step with the Supreme Court’s precedent—an erroneous finding that a use is transformative will often tee up an aggravating error that the use does not threaten the “potential market” for the original work.
A possible difficulty with software is that caselaw comprises more fair use decisions involving expressive uses than “technological uses” as described by the Fourth Circuit. This does not mean, however, that expressive use cases are not instructive—especially in cases like Oracle, where Google’s copying served an expressive purpose.
In Campbell v. Acuff-Rose, the Supreme Court held that 2 Live Crew’s parody of Roy Orbison’s “Oh, Pretty Woman” though clearly implicating Orbison’s derivative work right, was transformative under factor one on the grounds that its parody commented upon the original song. Correspondingly, under factor four, the opinion held that the 2 Live Crew song did not threaten the market for the original “Oh, Pretty Woman” in part because, as a scathing parody, it was a work the copyright owners never would have produced or licensed. Accordingly, Campbell stated that, “The market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop.”
Importantly, however, the Court did not state that any transformativeness finding swamps the factor four analysis—to the contrary, it remanded to assess the market harm caused by the parody. Thus, the transformativeness analysis has limits. We are nowhere near those limits in Google v. Oracle, but the Court can still provide guidance in this area.
Due to continued ambiguity about the meaning of “transformative,” a number of fair use claimants (e.g. VidAngel and TVEyes) have lately tried, and largely failed, to convince the courts that a rightsholder’s “potential market” under factor four is synonymous with the “existing” market. Were this true, the classic example in which the novelist retains the right to authorize, or not authorize, a film adaptation of her book would be abrogated by contemporary ventures in fair uses analyses encroaching on the territory of the derivative works right. As the Supreme Court held in Stewart v. Abend (1990), the derivative works right survives intact among the bundle of rights reserved by the author or his assigns, even with respect to an unlicensed release of a film during the second term of copyright that had been licensed under the first term.*
In response to the petitioner’s fair use defense under factor four, the Court held, “Fourth, and most important, the record supports the conclusion that rerelease of the film impinged on Abend’s ability to market new versions of the story.” This remains the correct interpretation of “potential” market under the fourth prong, and which proscribes trespassing into §106(2) territory.
Nevertheless, as recently as 2017, in Penguin Books et al. v. KinderGuides, the defendant in that case produced unlicensed children’s book versions of classic novels and asserted that, because the rightsholders had not exploited the children’s market in this manner, its products posed no threat to the “potential” market. In response, Judge Rakoff of the Southern District of New York rejected this quite plainly, stating, “the fact that any given author has decided not to exploit certain rights does not mean that others gain the right to exploit them.”
Defining the Boundaries of Fair Use in the Digital Age
As stated above, there can be no confusion about the facts in Google v. Oracle with regard to the first and fourth factors. Oracle has presented evidence that it had already entered the mobile market at the time Google copied the code at issue. But more broadly, Google’s fair use defense begs the Supreme Court to enshrine largely failed and dubious lower court misapplications of first and fourth factor analyses into copyright caselaw. Even if that is not Google’s exigent goal, the long-term results of accepting their fair use argument in this extraordinarily high-profile case would be detrimental to millions of copyright owners who will never make the headlines.
In this case, the Supreme Court has the opportunity to provide a clear declaration that Google’s use lies well beyond the reach of transformativeness and, although the facts show that it was not a new context, even if it were novel, incorporating the code for mobile remains protected under Oracle’s right to prepare derivative works. As in Brammer, it’s really just a simple case of copying, but Google has insisted upon complicating matters.
Google and other technology developers have tried, and largely failed, to convince courts that “transformativeness” is synonymous with “changing the world,” a claim that technologists in particular like to assert about themselves quite often. But the Second Circuit in Authors Guild v. HathiTrust drew a clear distinction between industry hubris and fair use when it stated, “a use does not become transformative by making an invaluable contribution to the progress of science and cultivation of the arts. Added value or utility is not the test: a transformative work is one that serves a new and different function from the original work and is not a substitute for it.”
That court’s echo of the Constitution’s IP clause is especially compelling. While companies like Google often appeal to the rhetorical argument that every use fulfills the constitutional purpose to “promote progress,” this generalization is clearly not the standard that needs to be met to achieve that goal through trampling the rights of prior authors’ in their contributions to progress. If that were the standard, fair use would cease to be an exception to copyright because copyright’s statutory protections would no longer exist.
* The case involved the adaptation of Cornell Woolrich’s It Had to Be Murder into the Hitchcock classic Rear Window.
** This of course does not stop Google from defending its own intellectual property.
