Oracle America, Inc. v. Google Inc.

Filing 1005

Brief Oracle's Objections to Proposed New Jury Instruction on Fair Use filed byOracle America, Inc.. (Jacobs, Michael) (Filed on 4/29/2012)

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MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[e-mail]
MARC DAVID PETERS (Bar No. 211725)
[e-mail]
DANIEL P. MUINO (Bar No. 209624)
[e-mail]
755 Page Mill Road, Palo Alto, CA 94304-1018
Telephone: [phone] / Facsimile: [phone]
BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[e-mail]
333 Main Street, Armonk, NY 10504
Telephone: [phone] / Facsimile: [phone]
STEVEN C. HOLTZMAN (Bar No. 144177)
[e-mail]
1999 Harrison St., Suite 900, Oakland, CA 94612
Telephone: [phone] / Facsimile: [phone]
ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[e-mail]
DEBORAH K. MILLER (Bar No. 95527)
[e-mail]
MATTHEW M. SARBORARIA (Bar No. 211600)
[e-mail]
500 Oracle Parkway, Redwood City, CA 94065
Telephone: [phone] / Facsimile: [phone]
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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ORACLE AMERICA, INC.

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Plaintiff,

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v.

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GOOGLE INC.

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Defendant.

Case No. CV 10-03561 WHA
ORACLE’S OBJECTIONS TO
PROPOSED NEW JURY
INSTRUCTION ON FAIR USE
Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

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Oracle submits this brief to address the new proposed instruction on fair use that was

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proposed by the Court for the first time at the charging conference on Friday, April 27. The

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instruction should not be delivered in the current form because it has incorporated additions from

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Google that have the potential to greatly mislead the jury.

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I.

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THE COURT’S PROPOSED NEW INSTRUCTION ON FAIR USE HAS
ADOPTED SUGGESTIONS FROM GOOGLE THAT HAVE GREAT
POTENTIAL TO MISLEAD THE JURY.

The Court submitted a revised proposed fair use instruction at the charging conference on

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April 27. That instruction incorporated suggested additions from both parties. It incorporated three

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requested additions from Google that should not be adopted: (1) a statement that “You may

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consider any additional factors you believe are appropriate to assist in your determination of

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whether Google’s use was fair use” (Proposed Jury Instruction No. 28); (2) a proposed insert to the

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instruction regarding transformative use; and (3) a proposed insert to the instruction regarding the

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“functional” nature of a work. For the reasons stated below these three additions should not be

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adopted.

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A.

The Jury Should Not Be Told That It May Consider Any Additional
Factors It Believes Are Appropriate.

At Google’s prompting, the Court has incorporated language into proposed Instruction

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No. 28 which provides that “You may consider any additional factors you believe are appropriate to

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assist in your determination of whether Google’s use was fair use.” Proposed Instruction No. 28.

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Including this language in the instruction would be legal error and would be extremely prejudicial

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to Oracle. As worded, it would invite the jury to consider any factor it wishes in reaching its verdict

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on fair use. Fair use law is not so unbounded, however.

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The Copyright Act enumerates four statutory factors that may be considered in conducting a

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fair use analysis. 17 U.S.C. § 104. Oracle agrees that these four statutory factors are not

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necessarily an exhaustive list. As Google notes, the Supreme Court has stated that the “factors

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enumerated in the statute in the section are not meant to be exclusive” and that each case must be

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decided on its own facts. (ECF No. 996 at 1 (quoting Harper & Row Publishers, Inc. v. Nation

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Enters., 471 U.S. 539, 560 (1985) (citation omitted).) It does not follow, however, that the jury has
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unbridled discretion to consider whatever factor it wishes as part of fair use. The jury may only

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consider factors that legitimately relate to the doctrine of fair use and the purpose behind it.

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In Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), the Supreme Court explained

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that the rationale behind the fair use doctrine is to further the underlying purpose of the Copyright

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Act itself: “From the infancy of copyright protection, some opportunity for fair use of copyrighted

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materials has been thought necessary to fulfill copyright’s very purpose, ‘to promote the Progress

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of Science and useful Arts . . . .’ U.S. Const., Art. I, § 8, cl. 8.” 510 U.S. at 575. Accordingly, the

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Court emphasized that the fair use doctrine authorizes consideration of additional factors that go to

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the issue of stifling creativity: “The fair use doctrine thus ‘permits [and requires] courts to avoid

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rigid application of the copyright statute when, on occasion, it would stifle the very creativity which

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that law is designed to foster.’” Id. at 577 (quoting Stewart v. Abend, 495 U.S. 207, 236 (1990)

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(internal quotation marks and citation omitted in original).

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While courts endorse the notion that additional factors may be considered in evaluating a

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fair use defense, in practice, courts have been willing to consider very few additional factors. The

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jury should not be permitted to consider any additional factors in reaching its verdict that are

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unrelated to the purpose of the fair use doctrine, that is to avoid “stifling the very creativity which

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the law is designed to foster.” Campbell, 510 U.S. at 577. Citing Campbell, the Ninth Circuit has

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emphasized that the fair use analysis needs to be grounded in the purpose of copyright law:

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We are mindful that fair use is a tool for adapting copyright law to brisk
technological advances and for tempering the over-technical application of
copyright law. Nonetheless, in re-weighing the four fair use factors on appeal, “in
light of the purposes of copyright,” Campbell v. Acuff-Rose Music, Inc., 510 U.S.
569, 578, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994), we conclude that the Sheriff's
Department is not entitled to the fair use defense.

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Wall Data, Inc. v. L.A. County Sherriff’s Dep’t, 447 F.3d 769, 778 (9th Cir. 2005). See also id. at

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777 (“The fair use defense buttresses the basic goal of copyright law: to put copyrighted works to

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their most beneficial use so that “the public good fully coincides . . . with the claims of individuals.”)

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(citation omitted) (omission in original).

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Accordingly, the jury should not be permitted to base its verdict on additional factors that
have nothing to do with fair use law, or its purpose of avoiding stifling creativity, such as whether
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Google believed it had a license, or whether Sun waited too long to sue. Evidence on these, and

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other similar issues, has played a prominent role in Google’s defense. This evidence relates to

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Google’s equitable defenses of laches, waiver, estoppel and implied license, not fair use.

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The parties have all agreed that these equitable defenses are an issue for the Court to decide,

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and Oracle objected to the jury hearing this evidence in the first place. But as drafted, this

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instruction could lead the jury to conclude that it is entitled to take any of the evidence it has heard

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relating to the equitable defenses into account in determining fair use. The jury may effectively

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render a verdict on fair use based on issues that are the province of the Court alone. Moreover the

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jury would render its verdict without any knowledge of the actual elements of those equitable

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defenses to apply, since Google has proposed that the jury be provided with an over-simplified

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instruction on the equitable defense issues that leaves out many of the elements that it must prove.

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(See ECF No. 1004.)

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These are only examples. If the jury is literally told it can take anything into account, it may

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assume it is free to decide what is “fair” generally, as opposed to what is “fair use.” It is likely that

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the jury will assume it can base its verdict on other Google arguments that have nothing to do with

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fair use, such as Google’s legally incorrect argument concerning the Apache Harmony license.

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There will be no way for the parties to determine whether this legal error occurred and as a result,

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any finding in favor of Google on fair use would be tainted by error. The proposed instruction will

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give Google’s counsel free reign to argue that any or all of these issues should be considered as part

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of fair use.

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For all the above reasons, Google’s proposed addition to the instruction regarding

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consideration of additional factors should be removed. If the Court believes that the jury should

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consider factors beyond the four statutory ones, the Court should specifically identify them and

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include them as part of the instruction so that the jury is not misled into believing that it has an

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unfettered discretion to consider whatever factors it wishes, including those that are legally

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irrelevant in determining fair use. This would be in line with the Ninth Circuit’s Model Jury

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Instructions, which suggest that the Court “insert any other factor that bears on the issue of fair

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use,” rather than deliver an open-ended instruction of the type Google has proposed. See Ninth

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Circuit Civil Model Jury Instructions (Copyright) § 17.18 (emphasis in original).

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B.

The Fair Use Instruction Should Not Include Language Regarding
Transformative Use.

The Court’s proposed fair use instruction would also tell the jury, as part of its explanation

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of the first enumerated factor (“purpose and character of the use”), that the jury should consider

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“whether such work is transformative (meaning whether the [sic] Google’s use of the copyrighted

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material was for a purpose distinct from the purpose of Oracle’s original material).” Giving that

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part of the instruction would be error because (1) Google has presented no evidence to support a

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conclusion that its use of Java APIs is “transformative” within the meaning of controlling case law,

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and (2) while much preferable to Google’s proposed definition of “transformative,” the proposed

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definition—”for a purpose distinct from the purpose of Oracle’s original material”—is unsupported

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by case law and has potential to mislead the jury in a way unfairly prejudicial to Oracle.

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Google relies for this “transformative” addition to the “purpose and character” part of the

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fair use instruction on Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). Campbell, which

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involved a claim of fair use for a song parody, held that “parody, like other comment or criticism,

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may claim fair use under § 107.” 510 U.S. at 579. In so holding, the Court explained the “purpose

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and character” factor with reference to whether the new work is “transformative”:

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The enquiry here may be guided by the examples given in the preamble to § 107,
looking to whether the use is for criticism, or comment, or news reporting, and the
like, see § 107. The central purpose of this investigation is to see, in Justice Story’s
words, whether the new work merely “supersede[s] the objects” of the original
creation, (“supplanting” the original), or instead adds something new, with a further
purpose or different character, altering the first with new expression, meaning, or
message; it asks, in other words, whether and to what extent the new work is
“transformative.” . . . [T]he more transformative the new work, the less will be the
significance of other factors, like commercialism, that may weigh against a finding
of fair use.
510 U.S. at 578-79 (citations omitted).

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Google’s use of the copied materials in Android is nothing like “the examples given in the

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preamble to § 107,” and the Court should be cautious in adopting a definition of “transformative”

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that is not guided in any way by that context as Campbell suggests it should be. See 17 U.S.C.
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§ 107. In Leadsinger, Inc. v. BMG Music Publ’g, for example, the Ninth Circuit started its analysis

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by considering whether the allegedly transformative use of copying song lyrics for karaoke fell

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within the statutory examples. 512 F.3d 522, 530 (9th Cir. 2008). The Court concluded it did not,

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and emphasized that “Leadsinger’s basic purpose remains a commercial one ― to sell its karaoke

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device for a profit. And commercial use of copyrighted material is ‘presumptively an unfair

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exploitation of the monopoly privilege that belongs to the owner of the copyright.’” Id. at 530

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(citation omitted).

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Ninth Circuit cases following Campbell have emphasized that “transformative” is intended
to refer to a work—like a criticism or a parody—that has a purpose entirely different from the

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original and is not intended to apply to a competing work with a parallel object or purpose. For

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example, in Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003), in holding that a search engine

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operator’s use of “thumbnail” pictures of copyrighted images was “transformative” fair use, the

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court explained that,

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[T]he thumbnails were much smaller, lower-resolution images that served an
entirely different function than Kelly’s original images. Kelly’s images are artistic
works intended to inform and to engage the viewer in an aesthetic experience . . . .
Arriba’s use of Kelly’s images in the thumbnails is unrelated to any aesthetic
purpose.

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336 F.3d at 818 (emphasis added); id. at 819 (emphasis added) (“Arriba’s use of the images serves

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a different function than Kelly’s use—improving access to information on the internet versus

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artistic expression . . . . Because Arriba’s use is not superseding Kelly’s use but, rather has created

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a different purpose for the images, Arriba’s use is transformative.”).

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Similarly, in Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701 (9th Cir. 2007), which

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followed Kelly and held that Google’s search engine “thumbnail” photographs were

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“transformative” uses of the plaintiff’s photographs and hence fair use, the Ninth Circuit

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emphasized that the search engine used the photographs for an entirely different function:

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Although an image may have been created originally to serve an entertainment,
aesthetic, or informative function, a search engine transforms the image into a
pointer directing a user to a source of information . . . . [A] search engine provides
social benefit by incorporating an original work into a new work, namely, an
electronic reference tool . . . . In other words, a search engine puts images in a
different context so that they are transformed into a new creation.

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487 F.3d at 721 (emphasis added) (internal citations and quotations omitted); id. at 721 (“a search

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engine provides an entirely new use for the original work”); id. at 722 (“Here, Google uses Perfect

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10’s images in a new context to serve a different purpose.”)

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In Worldwide Church of God v. Phila. Church, 227 F.3d 1110 (9th Cir. 2000), the Ninth

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Circuit found no “transformative” use where a non-profit church used for its own religious

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observances a book copyrighted by another church. The court explained that, far from

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transformative, “where the ‘use is for the same intrinsic purpose as [the copyright holder’s] . . . such

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use seriously weakens a claimed fair use.’” 227 F.3d at 1117, quoting Weissmann v. Freeman,

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868 F.2d 1313, 1324 (2d Cir. 1989).

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Here, Google uses the Java APIs not for “an entirely different function” (Kelly, 336 F.3d at

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818) or “in a new context to serve a different purpose” (Perfect 10, 487 F.3d at 722) but for “the

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same intrinsic purpose” (Worldwide Church of God, 227 F.3d at 1117) in a competing product and

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to attract Java developers. There is nothing “transformative” about that use. That Google licenses

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Android under a particular “open source” license (the Apache license, which allows a licensee to

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get without giving back) while Oracle licenses Java both commercially and under a different open

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source license (the GPL, which allows a licensee to get in return for giving back) “transforms”

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nothing. Otherwise, taking someone’s copyrighted material and giving it away under a license of

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one’s choice would be rendered “transformative” merely by attaching the label “open source.”

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Nor can the fact that Android is a smart phone platform and the Java APIs are typically

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deployed in other computing and mobile phone contexts possibly render Google’s use

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“transformative.” Google has done nothing more than take technology that was already present in

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one billion mobile phones, copy it without modification, and place that same technology in several

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hundred million competing mobile phones. Further, there is nothing “transformative” in the fact

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that Android is a smartphone platform: there was uncontroverted evidence at trial that the Java

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APIs are used in the Blackberry smartphones manufactured by RIM, and were used in the

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Sidekick/Hiptop smartphones manufactured by Andy Rubin’s company Danger, and Nokia’s

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Series 60 phones. (Tr. 959:20-23 (Swetland); 1585:21-23 (Rubin); 300:18-19 (Ellison); 383:6-9

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(Kurian); 1102:3-9 (Cizek); 1922:22-25 (Gering).) If Google’s argument were accepted, the idea
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of “transformation” would swallow up copyright protection: anyone claiming to have a better

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business model for distributing the copyrighted work would be able to copy it, sell it, and claim

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“fair use.” Movie makers would be hard-pressed to enforce their copyrights against infringing

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distributors where there were no previous distributors; book publishers could not enforce against

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e-Book publishers if they were not already distributing e-Books; musicians could not enforce

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against FM or satellite radio stations if their songs were broadcast only on AM stations. This is not

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the law. As the Ninth Circuit noted in Perfect 10:

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In contrast, duplicating a church’s religious book for use by a different church was
not transformative. See Worldwide Church of God v. Phila. Church of God, Inc.,
227 F.3d 1110, 1117 (9th Cir. 2000). Nor was a broadcaster’s simple retransmission
of a radio broadcast over telephone lines transformative, where the original radio
shows were given no “new expression, meaning, or message.” Infinity Broad.
Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir.1998).

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487 F.3d at 722; see also Leadsinger, Inc. v. BMG Music Publ’g, 512 F.3d 522, 530 (9th Cir. 2008)

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(applying song lyrics to enable sing-along not transformative).1

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Here, Google took 37 Java API packages that are implemented by Oracle, or by others

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under license, in the Java documentation and computer software and copied them into the Android

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documentation and computer software. This is not “an entirely different function” (Kelly, 336 F.3d

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at 818); it is the same function and “the same intrinsic purpose” (Worldwide Church of God,

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227 F.3d at 1117). Google’s Android platform may have been highly disruptive to existing markets,

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as Google intended, but that does not make its use “transformative” within the meaning of fair use

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law.

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Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1527-28 (9th Cir. 1993) and Sony
Computer Entm’t, Inc v. Connectix Corp., 203 F.3d 596, 603-04 (9th Cir. 2000), which involved
reverse engineering in the video game context, are not contrary to these general principles. Those
cases involved so-called “intermediate copying” where the final products were not accused of
infringement. The issue was whether game console manufacturers could prevent video game
developers from reverse engineering a short code that locked the games to the manufacturer’s
console (Sony) or prevented the game cartridge maker from developing games that were
compatible with the console (Sega). The issue in both was the ability of the console makers to
restrict game makers, who made products that were complementary to and not substitutes for the
plaintiffs. In neither case was there a nexus between that which was infringing (the intermediate
copy) and any impairment of the market for the plaintiffs’ products. These cases present sui
generis fact patterns that are inapplicable here, where Google has developed an incompatible
substitute for the Java class libraries.
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Google’s parallel use of the Java APIs is thus not “transformative” as a matter of law. There

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is, therefore, no basis to instruct the jury on a “transformative” defense, and the reference to

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“transformative” in the first (“purpose and character of the use”) fair use factor in Instruction

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No. 28 should be stricken in its entirety.

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Even if there were a basis to instruct the jury on whether a work is “transformative” (which

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there is not), the current definition of “transformative” in Instruction No. 28—”meaning whether

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the [sic] Google’s use of copyrighted material was for a purpose distinct from the purpose of

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Oracle’s original material”—is inaccurate. As demonstrated above, the principle of

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“transformative” does not apply whenever there is any distinction in use but only when the accused

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infringer’s use is for “an entirely different function” and is “unrelated” to the original use of the

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copyrighted work. Kelly, 336 F.3d at 818.

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The current definition of “transformative” in Instruction No. 28 is unsupported by case law

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and is likely to mislead the jury. For example, having been told that they must find only “a purpose

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distinct from the purpose of Oracle’s original material” in order to apply the “transformative”

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principle, jurors may believe that simply because Google has used the Java API packages to create

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a different product, “distinct” from prior products using the Java API packages, Google’s use is

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“transformative.” Such a conclusion would be erroneous under controlling case law.

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Therefore, if Instruction No. 28 is to refer to “transformative” at all—which it should

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not—it should define “transformative,” consistent with Ninth Circuit law, as “meaning whether

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Google’s use of copyrighted material was for a distinct purpose unrelated to the function and

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purpose of Oracle’s original material.”

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C.

The Fair Use Instruction Should Not Include Google’s Proposed
“Functional” Language

Finally, the Court has proposed to adopt Google’s language, under the second fair use factor,

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as to whether a work is “functional” or “factual”. The authority Google relies upon for this

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proposed addition to the instruction is Sega, 977 F.2d at 1524. (See ECF No. 996 at 2.) But

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Google’s excerpt omits much of the important context for the Court’s discussion. The opinion goes

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on to state that computer programs cannot be so easily slotted into the functional/creative

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dichotomy:

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Computer programs pose unique problems for the application of the
“idea/expression distinction” that determines the extent of copyright protection. To
the extent that there are many possible ways of accomplishing a given task or
fulfilling a particular market demand, the programmer’s choice of program structure
and design may be highly creative and idiosyncratic. However, computer programs
are, in essence, utilitarian articles - articles that accomplish tasks. As such, they
contain many logical, structural, and visual display elements that are dictated by the
function to be performed, by considerations of efficiency, or by external factors
such as compatibility requirements and industry demands.
Sega, 977 F.2d at 1524 (citation omitted). The court continues:
Because of the hybrid nature of computer programs, there is no settled standard for
identifying what is protected expression and what is unprotected idea in a case
involving the alleged infringement of a copyright in computer software. We are in
wholehearted agreement with the Second Circuit’s recent observation that ‘[t]hus
far, many of the decisions in this area reflect the courts’ attempt to fit the proverbial
square peg in a round hole.’

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Id. (citation omitted). Ultimately, the court concluded in Sega that the second factor weighed in

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favor of fair use because it was a reverse engineering case and “disassembly of the object code in

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Sega's video game cartridges was necessary in order to understand the functional requirements for

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Genesis compatibility.” Id. at 1526. The facts here are completely different.

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Google’s proposed insert to the instruction completely ignores these complexities, and

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invites the jury to slot a square peg into a round hole. Every computer program is functional, but as

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the Ninth Circuit has recognized, aspects of computer programs may be highly creative. Oracle

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accordingly requests that this portion of the proposed instruction be omitted as well.

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CONCLUSION
For all the above reasons, the three proposed additions to the Court’s fair use instruction
should not be adopted.

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Dated: April 29, 2012

MICHAEL A. JACOBS
MARC DAVID PETERS
DANIEL P. MUINO
MORRISON & FOERSTER LLP
By: /s/ Michael A. Jacobs_____
Michael A. Jacobs
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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