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Expecting the Unexpected: The Equitable Estoppel Defense in Oracle v. Google

When DisCo last covered the Oracle v. Google copyright infringement case, it was in the aftermath of the Federal Circuit’s ill-considered conclusion that software methods received copyright protection. I specifically criticized the Solicitor General’s decision to wave the Supreme Court off the case, advice that the Court followed.  Now the case has been sent back to the district court, which is considering Google’s fair use defense.  That trial began last week, and will continue this week in a San Francisco courtroom.

Some of the articles covering the ongoing fair use trial in Oracle’s copyright infringement suit against Google wonder how a jury of ordinary citizens will be able to understand the complexities of the software technology at issue, the nuances of custom and practice in the software industry, and the subtleties of copyright’s fair use doctrine. It turns out that even if the jury completely botches the fair use issue (i.e., finds that Google’s use was not fair), the ultimate decision of liability still rests in the hands of the presiding judge, William Alsup.

In a recent webinar hosted by the Intellectual Property Owners Association, Jane Froyd of Jones Day explained a potential upcoming wrinkle in this case: Google’s equitable estoppel defense. Equitable estoppel is (as the name implies) an equitable defense whereby the defendant argues that is would be inequitable to hold it liable given all the facts and circumstances of the case, particularly the plaintiff’s conduct. Google had raised this defense along with fair use, and Judge Alsup ruled that he would consider equitable estoppel at a later phase of the case, if the jury rejected Google’s assertion of fair use and after the jury determined damages. Because matters of equity are determined by the judge, not the jury, Judge Alsup will be the final arbiter of the defense (until it is appealed to the Federal Circuit).

So what would the equitable estoppel argument look like? According to Froyd, Google could argue that it would be inequitable to hold it liable given the conduct of Sun Microsystem, that company that developed Java, while Google was developing Android. In particular, Google could argue that Sun knew that Google was incorporating elements of the Java API in Android, yet it never suggested that Google was infringing its copyrights, and indeed it publicly praised Android. Moreover, Sun repeatedly stated that the elements of the APIs necessary for interoperability were not protectable under copyright. The reasonableness of Google’s reliance on Sun’s statements is underscored by the fact that Judge Alsup himself previously ruled that the Java declaring code copied by Google was not protected by copyright—a ruling incorrectly overturned by the Federal Circuit, as discussed hereherehere, and here.

Oracle likely would respond that equitable estoppel should not apply because Sun initially was unaware of Google’s copying; that Sun’s conduct could not reasonably be perceived as assent; and that Google did not detrimentally rely on Sun’s statements and actions.

It sounds like it’s going to be a long summer in the Northern District of California….

Intellectual Property

The Internet enables the free exchange of ideas and content that, in turn, promote creativity, commerce, and innovation. However, a balanced approach to copyright, trademarks, and patents is critical to this creative and entrepreneurial spirit the Internet has fostered. Consequently, it is our belief that the intellectual property system should encourage innovation, while not impeding new business models and open-source developments.