Tag: Google v. Oracle

Google v. Oracle X: The Tao of Google

While reading a few other articles about this case, articles written by actual legal experts, I was reminded that Google v. Oracle, despite its epic scale and likely significance as a precedential ruling, is, in fact, not terribly complicated. At least it shouldn’t be. What has made the case complicated of course is Google’s obfuscation in an attempt to win. But the problem for creators, both within and beyond the software industry, is that Google’s key claims in its defense run afoul of some core copyright principles.

Keep in mind that the only reason Google declined to license the code at issue, as many other commercial developers have done, was its refusal to allow interoperability with the rest of Java. It was this aspect of the license agreement that presented a hurdle to Google’s desire to monopolize as much of the mobile market as possible, a goal the company has since achieved. Thus, Google’s defenses may be viewed skeptically, as legal constructs erected after a strategic decision to infringe and are, therefore, rather circular and distracting in their reasoning. But such is the Tao of Google.

The Simple Story:  Verbatim Copying & Copyrightability

Google copied over 11,000 lines of Java code. This fact is undisputed. Also undisputed is the fact that computer code is expressly protected by copyright as of at least 1980, and that unlicensed copying of computer code, therefore, is an infringement of copyright. But says Google, the kind of code they copied (what the industry calls “declaring code”) should not be protected by copyright. However, another undisputed fact is that while adding computer code to the copyright law, Congress was confronted with the very question Google raises and determined that code is code with respect to its protection as a “writing.” Nevertheless, Google persists …

According to those who know, Java is very good code. Consequently, a lot of programmers are fluent in the use of Java. And that is the reason Google copied what it did—with the aim of attracting developers to create apps for the Android platform as quickly as possible. While that is an understandable market interest, it does not alleviate the obligation to license the work at issue.

Yet, Google seeks to conflate its exigent “need” to copy with the exception under copyright law known as the “merger doctrine.” Merger applies when there is only one way, or very few ways, to express a particular idea—or, as is the case with software, to perform a given set of functions. Google hopes that the Court will overlook the undisputed fact that there is more than one way to write code to achieve the same functions for which it appropriated Oracle’s work—that in fact other developers have done so. Google’s argument asks the Court to apply the merger exception after a work attains popularity, where it would not apply at the instant of authorship …

The Simple Story:  Transformative Fair Use Actually Requires a Transformative Purpose

Should Google fail to convince the Court that 1) the code at issue is not code under copyright law; or 2) that the code at issue falls under the merger doctrine by virtue of its popularity, Google naturally asserts a fair use defense. This is one reason Google v. Oracle is a very big deal. As former Register of Copyrights Maria Pallante notes in an interview with Copyright Alliance CEO Keith Kupferschmid, the Supreme Court does not take copyright cases very often and that this will be the first time in 26 years that the justices will consider a fair use defense. Rightsholders everywhere should hope that the Court holds that fair use in the 21st century, despite all the shiny new objects, is not any different than it was in the 20th century.

Especially with regard to “transformativeness,” lately asserted in just about every alleged infringer’s defense, the Supreme Court’s opinion about Google’s appeal to transformativeness in this case may have profound effect on copyright enforcement for decades to come. Although Google used the code at issue for the same purpose for which it was written, it seeks to obfuscate this inherently non-transformative use behind a cloud that the mobile market itself has been, in a sense, transformed. Notwithstanding the fact that Apple, not Google, revolutionized the landscape of mobile …

This may be the most hazardous argument in Google’s quiver for copyright owners in every category. It alludes to the fourth factor in the fair use analysis, which weighs the potential market harm to the original work. This consideration is meant to look beyond the immediate harm that may be caused by the contested use itself. It asks what would happen to the market for the original if the same conduct were widespread and engaged in by multiple parties, and it asks whether the alleged infringement has appropriated the original author’s right to prepare derivative works. In Google v. Oracle, the answers to all of these questions should strongly disfavor a finding of fair use under factor four.

If the Court were to agree that the code at issue is not copyrightable, that would have major implications for the software industry and, in the view of many, be a misread of the 1976 Copyright Act and Congress’s 1980 amendment to it. Alternatively, if the Court finds that the copied code is correctly protected by copyright, but that under the fourth factor in particular, Google’s use was a fair use, the ruling could be disastrous for creators in every medium. It would say to every creator that whoever has the resources to attain market share the fastest is justified in appropriating any work to serve that purpose. That is anathema to copyright’s purpose.

It is no accident that this consideration is so prominent in a case involving Google. Almost nobody can compete with that company when it looks to dominate a segment of the digital marketplace. And copyright law remains one of the few bulwarks independent creators (and society in general for that matter) still have against Google’s near-monopoly power. Why else have they spent so much time, money, and energy trying to weaken copyright, along with anti-trust and privacy protections? Because the Tao of Google is no joke.

Google v. Oracle IX: A Poor Fair Use Defense is an Opportunity for Guidance

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.

Google v. Oracle VIII: On Juries Deciding Fair Use

Soon after the pandemic forced the Supreme Court to delay proceedings in Google v. Oracle, it directed the parties to “file supplemental letter briefs addressing the appropriate standard of review” with respect to the Federal Circuit’s decision in 2018, concluding that no reasonable jury could find that Google’s copying to create Android was fair use. On August 7, both parties filed their letters in response to the Court’s inquiry.

This is a nuanced matter, and I will leave the civil procedure questions to the practicing attorneys and those who have a detailed record on the day-to-day proceedings in this decade-long case. But I was intrigued by the broader copyright law consideration underlying the Court’s review standard question because it is one I have often thought about myself:  is fair use best weighed by a jury, by a court, or by some appropriate combination of the two? 

As a general rule, we look to juries to consider disputed issues of fact and courts to weigh or apply principles of law, and any copyright expert will tell you that a fair use analysis is a mix of fact and law. But as we see in Google v. Oracle, there can be ample disagreement about the line between fact and law that exists in a given fair use consideration.

As a simple example, consider factor three of the four-prong test—the amount and substantiality of the portion of the work used. A jury can reasonably arrive at a factual finding as to how much of a copyrighted work has been used. But the same jury may struggle somewhat with how much weight to give these facts with respect to the overall, four-factor, fair use analysis. Particularly because fair use is judge-made law, case law can be the most instructive guide, yet one which juries are not expected to know.

With that in mind, it is worth thinking about an argument presented by several legal scholars to the Supreme Court in defense of Google on this issue. They argued that the Federal Circuit’s failure to defer to the jury verdict on its ultimate conclusion of fair use was in error for three reasons. First, they argued it was unprecedented for a fair use finding by a jury to be overturned; second, they asserted that the court of appeals’ de novo standard for reviewing the matter was inconsistent with the Supreme Court’s standard; and third, they argued that the decision was an unconstitutional abridgement of the Seventh Amendment right to jury trial in civil litigation.

Is the “Exceptional Overruling” Truly Exceptional?

The first argument—that this was an unprecedented overturning of a fair use finding by a jury—may not carry much weight with the Court for the simple fact that jury decisions on fair use are not very common in the first place. Copyright cases involving fair use are typically decided on summary judgment, and fair use case law decisions encompasses a large anthology of discussion among judges that guides most fair use considerations before those questions get anywhere near a jury. [1] So, the supposed anomaly in Google v. Oracle, while it may be good for blog headlines, may not be as compelling a legal argument as it appears.

The Standard of Review: Are the Facts Really That “Complicated”?

The amici’s second argument—that the Federal Circuit erred when it engaged in de novo review—turns on that mix of law and fact bugaboo inherent to fair use analyses. When dealing with mixed questions of fact and law, the Supreme Court has stated that a court must decide whether the question tilts more toward fact or more toward law.  One reason for this is that when juries commit errors of factfinding, justice may not be served to the parties involved, but the law itself is not usually altered. Conversely, when errors of law are left intact without review, the law itself may be changed substantially, causing problems far beyond the specific case. Or as the Federal Circuit stated, in seeking to harmonize its standard with the Supreme Court’s opinion in U.S. Bank Nat’l Ass’n v. Vill. at Lakeridge, LLC (2018): 

Where applying the law to the historical facts “involves developing auxiliary legal principles of use in other cases—appellate courts should typically review a decision de novo. But where the mixed question requires immersion in case-specific factual issues that are so narrow as to “utterly resist generalization,” the mixed question review is to be deferential. [Citations omitted]

The Federal Circuit opinion devotes considerable time in its opinion explaining its approach before finding that de novo review was justified.  Nevertheless, amici for Google assert that the fair use analysis in this case is more factual than it is legal, tilting toward deference to the jury. Their basis for this is that, “the facts [in this case] are undeniably complicated.”

But are the facts in Google v. Oracle terribly complicated?  For instance, the Federal Circuit only highlighted eight facts it found to be relevant to the fair use analysis, including the finding on which the parties agreed that Google “copied material for the same purpose as in the original work” by using Java’s declaring code in Android. Even though that undisputed fact resolves the vast majority of the first prong of the fair use test, Google’s primary appeal to fair use is that its use of the Java packages to build Android —was “transformative” on the grounds that the work was used “in a new context.”

Here, the Federal Circuit correctly found this defense to be based on errors in both fact and law. Though I am admittedly jumping past the standard of review question, the record does not support Google’s claim of fair use. It deployed Oracle’s code for the same purpose in a small computer (a mobile device) instead of a large computer (a PC), which answers a question of fact; and even if this had been a new use, courts have largely held that “use in a new context” does not necessarily support a finding of “transformativeness,” which answers a question of law.

More generally, it is worth noting that “transformativeness” is one of the most vexing doctrines in the fair user’s handbook; it has confounded judges in district courts, sparked heated debate among legal scholars, and split circuits across the country. Very recently, in Brammer v. Violent Hues (2019), the Fourth Circuit held that a “…difference in purpose is not quite the same thing as transformation.” So, assessing “transformativeness” sounds an awful lot like a question of law amenable to review. As the Federal Circuit states in its opinion on this question:

… Google’s use of the API packages is not transformative as a matter of law because: (1) it does not fit within the uses listed in the preamble to § 107 ; (2) the purpose of the API packages in Android is the same as the purpose of the packages in the Java platform; (3) Google made no alteration to the expressive content or message of the copyrighted material; and (4) smartphones were not a new context.

Google characterizes the Federal Circuit’s holding as merely a challenge to “the sufficiency of the evidence,” based on its conclusion that “no reasonable jury could find that Google’s verbatim and entirely commercial use of the declaring code and SSO to compete against the Java platform was a fair use.’” (Citation omitted). Again, I will let the civil procedure question go, but note that to this layman, who probably knows fair use better than the average juror, that all reads as a mix of at least equal parts fact and law. “Verbatim,” “commercial,” and “potential” threat to the market are all bright yellow flags tilting against a finding of fair use as a matter of law. 

In fact, this is a pretty good example of what I referred to above as the distinction between juries and courts in fair use cases. Neither “verbatim” copying nor “commercial” use are disputed facts in this case. Yet a jury, even understanding these facts with little difficulty, can still err in apportioning weight to these factors in the overall fair use analysis. Hence review seems more than justified.

It is also notable that at least two of those subjects—“potential market” and “commercial use”– are frequently confused by the general public, and occasionally misapplied by district courts, as it was in Brammer. So, can a jury get these legal considerations wrong? I believe they can. Or as the letter for Oracle succinctly states, “A ‘primarily legal’ mixed question that is reviewed on appeal de novo does not somehow become a ‘factual’ one reviewed deferentially just because the factfinder was a jury rather than a judge.

What Does History and the Seventh Amendment Say?

Keep in mind that the procedural question at issue here is not whether the Federal Circuit erred in its holding that Google’s use of Oracle’s code was not a fair use (SCOTUS should rule on that question in the end), but only whether the appellate court applied the correct standard of review to the jury’s fair use finding , “including but not limited to any implications of the Seventh Amendment.”

To this, amici for Google present a final historical argument in order to draw two intertwined conclusions: 1) fair use in general is highly amenable to consideration by juries; and 2) evidence of fair use jury verdicts in eighteenth century English case law, establishes a jury right in the common law at the time of ratification of the Seventh Amendment.  

Citing two cases, Sayer v. Moore (1785) and Cary v. Kearsley (1802) amici for Google assert, “They represent common-law courts expressly recognizing that the jury should decide whether copyrighted material was used fairly by a defendant….History thus satisfies the constitutional test for whether to apply the Seventh Amendment to the issue of fair use.” These two cases are instructive, say the amici, because they entailed fair use questions presented to a jury. But according to a recent paper by Justin Hughes of Loyola Law School on this topic, those cases were not fair use cases—at least not cases consistent with the modern, American fair use doctrine. Hughes explains:[2]

As much as there are antecedents in these cases to our own thinking about copyright, there was also much going on that reflects concerns incongruent with today’s range of copyrighted works and ideas incompatible with our current themes.

In Sayer, for instance, Hughes observes that the jury charge contained prototypical elements of the idea/expression dichotomy more than facts relevant to a contemporary fair use consideration. And in Cary, Hughes agrees with New Zealand legal scholar Alexandra Sims who writes, “[Cary] represents the beginning of a judicial recognition of fairness in relation to the use of factual materials in the creation of new works, but not fairness in the sense of using material for the purpose of review and criticism or even quotation.” 

On that note, I will presume to interject here that it is a shaky proposal at best to imply that our modern concept of fair use was a living principle at the founding period, let alone one that was so well ingrained in England’s common law that one might hope to demonstrate that it was always viewed as a question of fact to go before a jury. I have not personally traced the fair use pedigree, but I have traced other copyright principles back a few centuries, and I would propose that the ways in which the Americans split with England are often more instructive to jurisprudence than the ways in which some historians identify precedent in the raw ingredients of a bygone world.

Perhaps most significantly, it is a unique feature of American copyright that fair use was, in part, codified so that copyright’s limitations would conform to our speech and press rights. And this is one area in which English and American copyright diverge significantly, especially when we travel back through the nineteenth and eighteenth centuries. For instance, English copyright law did not wholly shed its ties to anachronistic licensing acts (i.e. state authority to publish) until the mid-twentieth century. So, it is quite a stretch to assert that when English judges in 1785 and 1802 gave their jury instructions in Sayer and Carey respectively, they were asking those juries to weigh anything that truly resembles American fair use doctrine in the twenty-first century.

“The only analog Google’s amici have cited is the ancient doctrine of ‘fair abridgment,’ states Oracle. “Fair abridgment categorically excused a historical practice of shortening a longer work enough to ‘be called a new [work].” And this is not even always true under our fair use doctrine. Fair use, as we know it, simply did not exist in 1791 at the ratification of the Bill of Rights. Still, the controlling part of the Seventh Amendment is the clause that says, “…and no fact tried by a jury, shall be otherwise reexamined in any court of the United States, than according to the rules of the common law.”

This prohibition on reexamination is precisely why Google and its amici hope to emphasize the factual nature of fair use considerations and endeavor to straighten the historical line between England’s Lord Mansfield in Sayer, and America’s Justice Story, who became the judicial father of fair use when he presided over the case Folsom v. Marsh (1841). Citing Story in a subsequent case, Emerson v. Davies, amici for Google emphasize that Justice Story “described fair use as a ‘question of fact to come to a jury’ in 1845.”

But Professor Hughes asserts, quite reasonably, that Justice Story said nothing of the kind—at least not as a bright line rule that implicates a standard of review. Instead, Hughes elucidates:

Story is just quoting Mansfield in Sayer—and what Mansfield said in Sayer wasn’t specifically about fair use to begin with. Nowhere in Emerson v. Davies does Story say he himself believes that the test he set out in Folsom was a ‘question of fact to come to a jury.’

In fact, with respect to the standard of review, even if there were not a meaningful ideological divergence between England and the U.S., Hughes declares unequivocally:

Legal historians have yet to find any ruling or statement that a copyright infringement defendant in a court of equity had the right to remove the case to a court of law or to have any elements of the infringement action decided by a jury sitting in one of those courts of law.

Are Copyright Critics Begging for Uncertainty in Fair Use?

Finally, it should not go unnoticed that many of the same advocates for deference to the jury in Google v. Oracle share ideological kinship with some of copyright’s most ardent critics, who often write in papers, blogs, and social media comments that copyright is unjust because of its uncertainties. More specifically, asking for legal certainty in the software market is an explicitly stated goal by several of the amici who have filed on behalf of Google in this case. But it is hard to see this deference to the jury argument as anything other than a departure from that view, or as anything other than an argument of convenience in the moment. After all, if fair use considerations, already a complicated matter, are best left to juries without judicial review, it can only add uncertainty with implications for copyright law that go well beyond the short-term exigencies of software companies.  Or as Hughes puts it:

… if one wants a fair use eco-system in which there are some areas of more objective ex ante rule-like norms exempting certain reasonably defined categories of behavior from copyright liability – if one believes (as Justice Kennedy clearly did) that much of the conduct exempted by § 107 fair use is “amenable to regulation by rule” — one is likely to prefer de novo review as a means to clarify what is and is fair use.

On a very broad level, Google’s letter argues that a jury “properly decides fair use because it is well suited, from both a practical and a policy perspective, to determine how a ‘reasonable’ party would assess the defendant’s conduct.” And right there is where I return to my personal musings on this question and find that this “reasonableness” standard (i.e. a jury’s gut feel) is inherently disconcerting. I have consistently seen users of works and owners of works reveal a general misunderstanding of fair use. So, I believe Oracle’s letter is more on the money when it states that “fair use does not ask what feels fair to an ordinary person.” Instead, it “applies judge-made factors codified in the Copyright Act and elucidated by additional legal rules developed in a vast body of fair use precedent.”

[1] An analysis of district court opinions between 1978-2005 found that “more than half of the opinions addressed a motion or cross-motion for summary judgment, and of these 121 opinions, 86% granted the motion or one of the cross-motions. This supports the conventional wisdom that courts regularly resolve fair use issues at the summary judgment stage.”  Barton Beebe, An Empirical Study of U.S. Copyright Fair Use Opinions, 1978-2005, University of Pennsylvania Law Review, Vol. 156, No. 3.

[2] Justin Hughes. “The Respective Role of Judges and Juries in Fair Use Determinations.” Loyola Law School. Legal Studies Paper No. 2020-09