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Oracle America v. Google: The Action Shifts Back to the Federal Circuit

· September 28, 2016

Yesterday, the district court in the Oracle America v. Google copyright litigation over the Android application program interfaces (APIs) denied Oracle’s motion for a new trial and renewed motion for judgment as a matter of law. The jury’s decision that fair use permitted Google’s copying of elements of the Java API in the Android API thus is ripe for review in the U.S. Court of Appeals for the Federal Circuit (CAFC).

The district court denied Oracle’s renewed motion for judgment as a matter of law in one sentence, “for the same reasons as its old one.” The court’s denial of Oracle’s earlier motion for judgment a matter of law is discussed here.

With respect to the motion for a new trial, the district court first responded to Oracle’s contention that it had abused its discretion by limiting the fair use trial to “Android as used in smartphones and tablets, postponing all other uses to later trials.” The court observed that the original trial in 2010 covered Android versions used in smartphones and tablets, and that these versions were within the scope of the appeal and the remand. Once it was back before the district court, Oracle had sought to broaden the case to include later versions of Android used on other devices, including laptops and desktops. Google, however, disputed whether the earlier finding of infringement applied to these later versions of Android. Thus, including them in the second trial would require Oracle proving that these versions, too, infringed its copyright in Java.

Further, the court found that the fair use analysis with respect to the laptop and desktop versions was distinct from that concerning the smartphone and tablet versions. Oracle argued that because the fourth fair use factor considered whether widespread conduct of the sort engaged in by the defendant would have an adverse impact on the market for the original, the potential harm to the laptop and desktop markets was relevant to the fair use determination. The court responded that

the concern with widespread use, however, is not whether uses distinct from the accused uses—each of which must be subject to distinct transformativeness analyses—might harm the market for the copyrighted works. Rather, the concern is whether a use of the same sort, if multiplied via use by others, would cause market harm, even though the actual use by the infringer caused only minimal harm.

The court also noted that it had excluded post-2010 evidence that Google had sought to introduce. In 2015, Google used OpenJDK, Sun’s open source version of Java, to reimplement the Java APIs in the Nougat version of Android. Google wanted to introduce this in the context of the fourth factor to show that its infringement did no more market harm than Sun itself had already invited by its own release of OpenJDK. In effect, Sun had given away Java (including all of the lines of code in suit) in 2008 through its open-source OpenJDK. The court excluded this evidence concerning Nougat because Google had not presented it in time for effective rebuttal by Oracle.

The court concluded that by limiting the fair use trial to Android on smartphones and tablets,

Oracle was allowed to take unquestioned advantage of the infringement verdict in the first trial while also taking full advantage of the subsequent revenue derived from those very device implementations—smartphones and tablets. That limitation also protected our second jury from needing to absorb ever greater complexity in technology and the business models of new and different uses.

At the same time, the court repeatedly stressed that Oracle remains free to pursue laptop and desktop uses of Android in a future lawsuit.

The court then turned to Oracle’s claims that Google had committed a “fraud on the court” by eliciting testimony that Android had not caused any harm to the market for the copyrighted work because it was not used on laptops and desktops, when in fact Google was working on laptop and desktop versions of Android. The court found that Google’s position “remained a fair argument so long as the trial was focused, as it was, on the original uses—smartphones and tablets—and it remained a fair argument for the time period on trial….The testimony and argument in question fell within the defined scope of our trial.”

With respect to Oracle’s assertions that Google had committed discovery misconduct by failing to disclose documents concerning the implementation of Android on laptops and desktops, the court noted that Google had provided Oracle with many such documents, but Oracle had failed to detect that they were in its possession. Moreover, given the scope of the trial, these documents made no difference.

Now that the district court has resolved these motions, Oracle can appeal the fair use verdict to the CAFC. As discussed hereherehere, and here, there were serious flaws in the CAFC’s 2014 reversal of the district court’s earlier finding that the Java declaring code was not protectable under copyright. Hopefully the CAFC will be more judicious this round.

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