Oracle America, Inc. v. Google Inc.

United States Court of Appeals

for the Federal Circuit

______________________

ORACLE AMERICA, INC.,

Plaintiff-Appellant

v.

GOOGLE LLC,

Defendant-Cross-Appellant

______________________

2017-1118, 2017-1202

______________________

Appeals from the United States District Court for the

Northern District of California in No. 3:10-cv-03561-

WHA, Judge William H. Alsup.

______________________

Decided: March 27, 2018

______________________

E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sut-

cliffe LLP, New York, NY, argued for plaintiff-appellant.

Also represented by PETER A. BICKS, MATTHEW LEE BUSH,

ANDREW D. SILVERMAN, LISA SIMPSON; MELANIE L.

BOSTWICK, KELSI BROWN CORKRAN, MARK S. DAVIES,

JEREMY PETERMAN, Washington, DC; ANNETTE LOUISE

HURST, San Francisco, CA; DALE M. CENDALI, JOSHUA L.

SIMMONS, Kirkland & Ellis LLP, New York, NY; RUCHIKA

AGRAWAL, DORIAN ESTELLE DALEY, DEBORAH KAY MILLER,

MATTHEW SARBORARIA, Oracle America, Inc., Redwood

Shores, CA.

2 ORACLE AMERICA, INC. v. GOOGLE LLC

DARYL JOSEFFER, King & Spalding LLP, Washington,

DC, argued for defendant-cross-appellant. Also repre-

sented by BRUCE WILLIAM BABER, Atlanta, GA; CHRISTA

M. ANDERSON, STEVEN A. HIRSCH, MICHAEL SOONUK

KWUN, REID P. MULLEN, ROBERT A. VAN NEST, Keker, Van

Nest & Peters LLP, San Francisco, CA; RENNY F. HWANG,

Google LLC, Mountain View, CA.

KENNETH L. DOROSHOW, Jenner & Block LLP, Wash-

ington, DC, for amicus curiae The Copyright Alliance.

Also represented by ERICA LAUREN ROSS.

DANIEL J. BROOKS, Scarola Malone & Zubatov LLP,

New York, NY, for amicus curiae New York Intellectual

Property Law Association. Also represented by CHARLES

R. MACEDO, Amster Rothstein & Ebenstein LLP, New

York, NY; ANNEMARIE HASSETT, NYU School of Law, New

York, NY.

JARED BOBROW, Weil, Gotshal & Manges LLP, Red-

wood Shores, CA, for amici curiae Eugene H. Spafford,

Zhi Ding, Adam Porter, Ken Castleman. Also represented

by AMANDA BRANCH, AARON Y. HUANG.

STEVEN THOMAS COTTREAU, Clifford Chance Rogers &

Wells LLP, Washington, DC, for amici curiae Scott

McNealy, Brian Sutphin.

MARC ROBERT LEWIS, Lewis & Llewellyn LLP, San

Francisco, CA, for amicus curiae Ralph Oman. Also

represented by EVANGELINE ZIMMERMAN BURBIDGE.

ROBERT H. ROTSTEIN, Mitchell, Silberberg & Knupp,

LLP, Los Angeles, CA, for amici curiae Motion Picture

Association of America, Inc., Independent Film & Televi-

sion Alliance. Also represented by J. MATTHEW WILLIAMS,

Washington, DC.

ORACLE AMERICA, INC. v. GOOGLE LLC 3

DUNCAN W. CRABTREE-IRELAND, SAG-AFTRA, Los

Angeles, CA, for amicus curiae Screen Actors Guild –

American Federation of Television and Radio Artists.

WILLIAM M. JAY, Goodwin Procter LLP, Washington,

DC, for amici curiae Recording Industry Association of

America, Association of American Publishers. Also repre-

sented by ANDREW KIM. Recording Industry Association

of America also represented by GEORGE M. BORKOWSKI,

Mitchell, Silberberg & Knupp, LLP, Los Angeles, CA.

REBECCA MURPHY THOMPSON, Competitive Carriers

Association, Washington, DC, for amicus curiae Competi-

tive Carriers Association.

ANTIGONE GABRIELLA PEYTON, Protorae Law PLLC,

Tysons, VA, for amici curiae Sandra Aistars, Matthew

Barblan, Jon A. Baumgarten, Stephen Carlisle, Jon M.

Garon, Hugh Hansen, Devlin Hartline, Jiarui Liu, Adam

Mossoff, Raymond T. Nimmer, Eric Priest, Sean M.

O’Connor, Mark F. Schultz.

LINDSAY WARREN BOWEN, Cowan, DeBaets, Abrahams

& Sheppard LLP, New York, NY, for amici curiae PACA,

Digital Media Licensing Association, Inc., Graphic Artists

Guild, National Press Photographers Association, North

American Nature Photography Association, American

Society of Media Photographers, Inc., American Photo-

graphic Artists, Professional Photographers of America.

Also represented by SCOTT J. SHOLDER.

RICHARD L. RAINEY, Covington & Burling LLP, Wash-

ington, DC, for amicus curiae BSA | The Software Alli-

ance. Also represented by PETER ANDREW SWANSON.

JONATHAN BAND, Jonathan Band PLLC, Washington,

DC, for amicus curiae Computer & Communications

Industry Association. Also represented by MATTHEW

4 ORACLE AMERICA, INC. v. GOOGLE LLC

SCHRUERS, Computer & Communications Industry Asso-

ciation, Washington, DC.

MICHAEL BARCLAY, Electronic Frontier Foundation,

San Francisco, CA, for amici curiae Electronic Frontier

Foundation, Public Knowledge. Also represented by

MITCHELL L. STOLTZ.

MARCIA HOFMANN, Zeitgeist Law PC, San Francisco,

CA, for amicus curiae Mozilla Corporation.

RICHARD M. BRUNELL, American Antitrust Institute,

Washington, DC, for amicus curiae American Antitrust

Institute. Also represented by SHUBHA GHOSH, Syracuse

University College of Law, Syracuse, NY.

JEFFREY A. LAMKEN, MoloLamken LLP, Washington,

DC, for amici curiae Microsoft Corp., Red Hat, Inc.,

Hewlett Packard Enterprise Company. Also represented

by RAYINER HASHEM, MICHAEL GREGORY PATTILLO, JR.;

LISA WANG BOHL, Chicago, IL.

JASON MICHAEL SCHULTZ, NYU School of Law, New

York, NY, for amici curiae Timothy K. Armstrong, Cark

D. Asay, Shyamkrishna Balganesh, Ann Bartow, Oren

Bracha, Annemarie Bridy, Dan L. Burk, Michael A.

Carrier, Michael W. Carroll, Andrew Chin, Julie E. Co-

hen, Kevin Collins, Rebecca Curtin, Ben Depoorter, Roger

Allan Ford, Brian L. Frye, Jim Gibson, Eric Goldman,

James Grimmelmann, Peter Jaszi, Yvette Joy Liebesman,

Jessica Litman, Brian J. Love, Michael J. Madison, Mark.

P. McKenna, Joseph Scott Miller, Deirdre K. Mulligan,

Tyler T. Ochoa, Aaron Perzanowski, Victoria F. Phillips,

Arti K. Rai, Jerome H. Reichman, Michael Rustad, Mat-

thew Sag, Pamela Samuelson, Jessica Sibley, Joshua

David Sarnoff, Lea Shaver, Christopher Jon Sprigman,

Katherine J. Strandburg, Rebecca Tushnet, Jennifer M.

Urban.

ORACLE AMERICA, INC. v. GOOGLE LLC 5

PHILLIP R. MALONE, Stanford Law School, Stanford,

CA, for amici curiae Harold Abelson, Tom Ball, Brian

Behlendorf, Gordon Bell, Jon Bentley, Matthew Bishop,

Joshua Bloch, Dan Boneh, Gilad Bracha, Eric Brewer,

Frederick Brooks, Rick Cattell, Vinton G. Cerf, William

Cook, Mark Davis, Miguel de Icaza, Jeffrey Dean, L. Peter

Deutsch, Whitfield Diffie, David L. Dill, Lester Earnest,

Brendan Eich, Dawson Engler, Martin Fowler, Neal

Gafter, Robert Harper, John Hennessy, Tom Jennings,

Alan Kay, Brian Kernighan, David Klausner, Ray Kur-

zweil, Kin Lane, Ed Lazowska, Doug Lea, Bob Lee, Sheng

Liang, Barbara Liskov, Paul Menchini, Andrew W. Moore,

James H. Morris, Peter Norvig, Martin Odersky, Tim

Paterson, David Patterson, Alex Payne, Tim Peierls,

Simon Phipps, Bill Pugh, Ronald L. Rivest, Curtis

Schroeder, Robert Sedgewick, Mary Shaw, Barbara

Simons, Dave Snigier, Alfred Z. Spector, Bjarne Strou-

strup, Gerald Jay Sussman, Ivan E. Sutherland, Andrew

Tanenbaum, Brad Templeton, Ken Thompson, Michael

Tiemann, Linus Torvalds, Andrew Tridgell, Jeffrey

Ullman, Andries Van Dam, Guido Van Rossum, John

Villasenor, Jan Vitek, Philip Wadler, James H. Waldo,

Daniel S. Wallach, Peter J. Weinberger, Steve Wozniak,

Frank Yellin. Also represented by JEFFREY THEODORE

PEARLMAN.

MARK A. LEMLEY, Durie Tangri LLP, San Francisco,

CA, for amici curiae Engine Advocacy, The App Develop-

ers Alliance, GitHub, Inc. Also represented by JOSEPH

GRATZ, CLEMENT ROBERTS.

______________________

Before O’MALLEY, PLAGER, and TARANTO, Circuit Judges.

O’MALLEY, Circuit Judge.

6 ORACLE AMERICA, INC. v. GOOGLE LLC

This copyright case returns to us after a second jury

trial, this one focusing on the defense of fair use. Oracle

America, Inc. (“Oracle”) filed suit against Google Inc.

(“Google”) 1 in the United States District Court for the

Northern District of California, alleging that Google’s

unauthorized use of 37 packages of Oracle’s Java applica-

tion programming interface (“API packages”) in its An-

droid operating system infringed Oracle’s patents and

copyrights.

At the first trial, the jury found that Google infringed

Oracle’s copyrights in the Java Standard Edition plat-

form, but deadlocked on the question of whether Google’s

copying was a fair use. 2 After the verdict, however, the

district court found that the API packages were not

copyrightable as a matter of law and entered judgment for

Google. Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d

974 (N.D. Cal. 2012). Oracle appealed that determination

to this court, and we reversed, finding that declaring code

and the structure, sequence, and organization (“SSO”) of

the Java API packages are entitled to copyright protec-

tion. Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1348

(Fed. Cir. 2014). We remanded with instructions to

reinstate the jury’s infringement verdict and for further

proceedings on Google’s fair use defense and, if appropri-

ate, on damages. Id. at 1381.

Google subsequently filed a petition for certiorari on

the copyrightability determination. The Supreme Court

called for the views of the Solicitor General, who ex-

pressed agreement with our determination and recom-

mended denying review. The Supreme Court denied

1 In September 2017, Google converted from a cor-

poration to a limited liability company and changed its

name to Google LLC, as reflected in the amended caption.

2 The jury found no patent infringement, and the

patent claims are not at issue on appeal.

ORACLE AMERICA, INC. v. GOOGLE LLC 7

certiorari in 2015. Google Inc. v. Oracle Am., Inc., 135 S.

Ct. 2887 (2015) (Mem.).

At the second jury trial, Google prevailed on its fair

use defense. After the jury verdict, the district court

denied Oracle’s motion for judgment as a matter of law

(“JMOL”) and entered final judgment in favor of Google.

Oracle Am., Inc. v. Google Inc., No. C 10-03561, 2016 WL

3181206 (N.D. Cal. June 8, 2016) (“Order Denying

JMOL”); Final Judgment, Oracle Am., Inc. v. Google Inc.,

No. 3:10-cv-3561 (N.D. Cal. June 8, 2016), ECF No. 1989.

Oracle filed a renewed motion for JMOL and separately

moved for a new trial. The district court denied both

motions in a single order. Oracle Am., Inc. v. Google Inc.,

No. C 10-03561, 2016 WL 5393938 (N.D. Cal. Sept. 27,

2016) (“Order Denying Renewed JMOL/New Trial”).

Consistent with these determinations, no damages verdict

was rendered.

Oracle now appeals from the district court’s final

judgment and its decisions denying Oracle’s motions for

JMOL and motion for a new trial. Google cross-appeals

from the final judgment purportedly to “preserv[e] its

claim that the declarations/SSO are not protected by

copyright law,” but advances no argument for why this

court can or should revisit our prior decision on copy-

rightability. Cross-Appellant Br. 83.

Because we conclude that Google’s use of the Java

API packages was not fair as a matter of law, we reverse

the district court’s decisions denying Oracle’s motions for

JMOL and remand for a trial on damages. We also dis-

miss Google’s cross-appeal.

I. BACKGROUND

A. The Technology

Oracle’s predecessor, Sun Microsystems, Inc. (“Sun”),

developed the Java platform for computer programming

in the 1990s, and Oracle purchased Sun in 2010. The

8 ORACLE AMERICA, INC. v. GOOGLE LLC

Java platform is software used to write and run programs

in the Java programming language. It allows program-

mers to write programs that “run on different types of

computer hardware without having to rewrite them for

each different type.” Oracle, 750 F.3d at 1348. With

Java, programmers can “write once, run anywhere.” Id.

The Java 2 Standard Edition (“Java SE”) of the plat-

form includes, among other things, the Java Virtual

Machine and the Java Application Programming Interface

(“API”). The Java API is a collection of “pre-written Java

source code programs for common and more advanced

computer functions.” Order Denying JMOL, 2016 WL

3181206, at *3. These APIs “allow programmers to use

the prewritten code to build certain functions into their

own programs rather than write their own code to per-

form those functions from scratch. They are shortcuts.”

Oracle, 750 F.3d at 1349. The prewritten programs are

organized into packages, classes, and methods. Specifical-

ly, an API package is a collection of classes and each class

contains methods and other elements. “Each method

performs a specific function, sparing a programmer the

need to write Java code from scratch to perform that

function.” Order Denying JMOL, 2016 WL 3181206, at

*3.

To include a particular function in a program, the

programmer invokes the Java “declaring code.” As the

district court explained, the declaring code is the line or

lines of source code that “declares or defines (i) the meth-

od name and (ii) the input(s) and their type as expected by

the method and the type of any outputs.” Id. at *4. After

the declaring code, each method includes “implementing

code,” which takes the input(s) and gives the computer

step-by-step instructions to carry out the declared func-

tion.

By 2008, Java SE included 166 API packages divided

into 3,000 classes containing more than 30,000 methods.

ORACLE AMERICA, INC. v. GOOGLE LLC 9

At issue in this appeal are 37 API packages from Java SE

Version 1.4 and Version 5.0. We have already concluded

that the declaring code and the SSO of the 37 Java API

packages at issue are entitled to copyright protection.

Oracle, 750 F.3d at 1348.

The Java programming language itself is free and

available for use without permission. At this stage, it is

undisputed that, to write in the Java programming lan-

guage, “62 classes (and some of their methods), spread

across three packages within the Java API library, must

be used. Otherwise the language itself will fail.” Order

Denying JMOL, 2016 WL 3181206, at *5. It is also un-

disputed that anyone using the Java programming lan-

guage can write their own library of prewritten programs

to carry out various functions.

Although Oracle makes the Java platform freely

available to programmers building applications (“apps”),

it devised a licensing scheme to attract programmers

while simultaneously commercializing the platform. In

relevant part, Oracle charges a licensing fee to those who

want to use the APIs in a competing platform or embed

them in an electronic device. To preserve the “write once,

run anywhere” philosophy, Oracle imposes strict compati-

bility requirements on licensees. Oracle, 750 F.3d at

1350. Oracle also made available without charge under

an open source license a version of Java called “Open-

JDK.” Order Denying JMOL, 2016 WL 3181206, at *10.

Oracle maintains, however, that OpenJDK came with an

important catch: any company that improved on the

packages in OpenJDK had to “‘give away those changes

for free’ to the Java community.” Appellant Br. 53.

The evidence showed that Oracle licensed Java in 700

million PCs by 2005. Although Oracle never successfully

developed its own smartphone platform using Java, it

licensed Java SE for mobile devices. According to Oracle,

the “mobile device market was particularly lucrative,” and

10 ORACLE AMERICA, INC. v. GOOGLE LLC

“Java quickly became the leading platform for developing

and running apps on mobile phones.” Appellant Br. 9.

B. Google’s Android Platform

In 2005, Google acquired Android, Inc. as part of a

plan to develop a software platform for mobile devices.

That same year, Google and Sun began discussing the

possibility of Google taking a license to use and adapt the

Java platform for mobile devices. Oracle, 750 F.3d at

1350. The parties were unable to reach an agreement, in

part because Google wanted device manufacturers to be

able to use Oracle’s APIs in Android for free with no

limits on modifying the code, which would jeopardize the

“write once, run anywhere” philosophy.

The jury heard evidence that Google wanted to move

quickly to develop a platform that would attract Java

developers to build apps for Android. The Android team

had been working on creating its own APIs, but was

unable to do so successfully. After negotiations between

the parties reached an impasse, Google elected to “[d]o

Java anyway and defend [its] decision, perhaps making

enemies along the way.” Order Denying JMOL, 2016 WL

3181206, at *6. It is undisputed that Google copied verba-

tim the declaring code of the 37 Java API packages—

11,500 lines of Oracle’s copyrighted code. It also copied

the SSO of the Java API packages. Google then wrote its

own implementing code.

Google announced its Android software platform for

mobile devices in 2007, and the first Android phones

went on sale the following year. Google provides the

Android platform free of charge to smartphone manufac-

turers and publishes the source code for use without

charge under an open source license. Although Google

does not directly charge its users, Android has generated

over $42 billion in revenue from advertising. Oracle

explains that Android was “devastating” to its licensing

strategy and that many of its customers switched to

ORACLE AMERICA, INC. v. GOOGLE LLC 11

Android. Appellant Br. 15. Even customers who stayed

with Oracle cited Android as a reason to demand dis-

counts. The jury heard evidence that Amazon, which had

entered into a license to use Java for its Kindle tablet

device, switched to Android for the subsequently released

Kindle Fire and then used the existence of Android to

leverage a steep discount from Oracle on the next genera-

tion Kindle.

C. Remand Proceedings

In the first appeal, we held that the declaring code

and the SSO of the 37 API packages are entitled to copy-

right protection and ordered the district court to reinstate

the jury’s infringement finding. Oracle, 750 F.3d at 1381.

We also considered Oracle’s argument that it was entitled

to judgment as a matter of law on Google’s fair use de-

fense. Although we found that Oracle’s position was “not

without force,” and that Google was overstating what

could be fair use under the law, we found that the record

evidence regarding the relevant fair use factors was

insufficiently developed for us to resolve the issue on

appeal. Oracle, 750 F.3d at 1376. In doing so, we pointed

to sharp disputes between the parties, both legal and

factual, including whether Google’s use was transforma-

tive, whether “functional aspects of the package” and

Google’s “desire to achieve commercial ‘interoperability’”

weighed in favor of the second and third factors, and

whether Android caused market harm to Oracle. Id. at

1376-77. We concluded that “due respect for the limit of

our appellate function” required remand. Id. at 1376.

During the pendency of the first appeal, Google’s An-

droid business expanded significantly. Android gained

new users and developers, and Google “released modified

implementations and derivatives of Android for use in

numerous device categories, including wearable devices

with small screens (Android Wear), dashboard interfaces

in cars (Android Auto), television sets (Android TV), and

12 ORACLE AMERICA, INC. v. GOOGLE LLC

everyday devices with Internet connectivity.” Oracle Am.,

Inc. v. Google Inc., No. C10-03561, 2016 WL 1743111, at

*1 (N.D. Cal. May 2, 2016) (“Order on Motion in Limine”).

When the case returned to the district court, Oracle

filed a supplemental complaint adding allegations of

market harm and damages resulting from new versions of

Android released since the original complaint. Specifical-

ly, Oracle alleged that Google had launched new versions

of Android for phones and tablets and had expanded

Android into new device categories. Id. Google did not

oppose the supplemental complaint, and the district court

granted Oracle’s motion to file it. But when Oracle served

expert reports that addressed versions of Java SE that

were not at issue in the first trial, Google moved to strike

those reports. Id.

When the parties were unable to agree on the scope of

the retrial, the district court limited it to: (1) the two

versions of Java SE that Oracle asserted in the first trial;

and (2) released versions of Android used in smartphones

and tablets “which Google . . . agreed would be subject to

the prior jury’s adverse finding of infringement and which

Oracle identified in its supplemental complaint.” Id. The

court explained that Oracle retained the right to sue

Google for infringement with respect to the other versions

and implementations of Android in a separate trial or

proceeding. Order re: Google’s Motion to Strike at 2,

Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D.

Cal. Feb. 5, 2016), ECF No. 1479. The court also granted

Google’s motion in limine to exclude all evidence of the

new Android products.

The district court bifurcated the issue of fair use from

willfulness and monetary remedies, and the trial on fair

use began on May 10, 2016. After roughly one week of

evidence and several days of deliberations, the jury found

that Google’s use of the declaring lines of code and the

SSO of the 37 API packages constituted fair use.

ORACLE AMERICA, INC. v. GOOGLE LLC 13

Oracle moved for JMOL, which the district court de-

nied. At the outset, the court noted that Oracle stipulated

before the jury “that it was fair to use the 62 ‘necessary’

classes given that the Java programming language itself

was free and open to use without a license.” Order Deny-

ing JMOL, 2016 WL 3181206, at *5. “That the 62 ‘neces-

sary’ classes reside without any identification as such

within the Java API library (rather than reside within the

programming language),” the court explained, “supports

Google’s contention that the Java API library is simply an

extension of the programming language itself and helps

explain why some view the Java API declarations as free

and open for use as the programming language itself.” Id.

Because Android and Java both “presupposed the Java

programming language in the first place,” the court noted

that a jury reasonably could have found that it “was

better for both to share the same SSO insofar as they

offered the same functionalities, thus maintaining usage

consistency across systems and avoiding cross-system

confusion.” Id. at *6.

The district court then considered each of the four

statutory fair use factors. As to factor one—the purpose

and character of the use—the court concluded that a

reasonable jury could have found that, although Google’s

use was commercial, it was transformative because

Google integrated only selected elements for mobile

smartphones and added its own implementing code. Id.

at *7-9. With respect to factor two—the nature of the

copyrighted work—the district court found that a reason-

able jury could have concluded that, “while the declaring

code and SSO were creative enough to qualify for copy-

right protection,” they were not “highly creative,” and that

“functional considerations predominated in their design.”

Id. at *10.

As to factor three—the amount and substantiality of

the portion used—the court concluded that a reasonable

jury could have found that “Google copied only so much as

14 ORACLE AMERICA, INC. v. GOOGLE LLC

was reasonably necessary for a transformative use,” and

that the number of lines duplicated was minimal. Id.

Finally, as to factor four—market harm—the court con-

cluded that the jury “could reasonably have found that

use of the declaring lines of code (including their SSO) in

Android caused no harm to the market for the copyrighted

works, which were for desktop and laptop computers.” Id.

The court determined that, on the record presented, the

jury could have found for either side and that the jury was

“reasonably within the record in finding fair use.” Id. at

*11.

Oracle subsequently renewed its motion for JMOL

and separately moved for a new trial challenging several

of the court’s discretionary decisions at trial. The district

court denied both motions in a single order. With respect

to JMOL, the court simply stated that it denied Oracle’s

renewed motion for the same reasons it denied the origi-

nal motion. With respect to the motion for a new trial,

the court rejected Oracle’s argument that the court

abused its discretion by limiting the evidence at trial to

Google’s use of Android in smartphones and tablets.

The court also rejected Oracle’s allegation that Google

engaged in discovery misconduct by withholding evidence

during discovery relating to Google’s App Runtime for

Chrome (“ARC”), which enabled laptops and desktops

running Google’s computer operating system to run

certain Android applications. Order Denying Renewed

JMOL/New Trial, 2016 WL 5393938, at *5. The court

found that Google had produced relevant documents

during discovery and that, in any event, those documents

pertained to issues beyond the scope of the retrial. Id. at

*7-8.

Finally, the district court rejected Oracle’s argument

that certain of the court’s evidentiary rulings were abuses

of discretion. The court explained that it: (1) redacted one

line from an email because it was “too inflammatory and

ORACLE AMERICA, INC. v. GOOGLE LLC 15

without foundation;” and (2) excluded other documents

because Oracle had withheld them as privileged until

trial. Id. at *9-12.

On June 8, 2016, the district court entered final

judgment in favor of Google and against Oracle. Oracle

timely appealed from the district court’s judgment against

it, including the court’s underlying decisions denying its

motions for JMOL and for a new trial. Google timely

cross-appealed from all adverse orders and rulings under-

lying that final judgment.

This court has exclusive jurisdiction over all appeals

in actions involving patent claims, including where, as

here, an appeal raises only non-patent issues. 28 U.S.C.

§ 1295(a)(1). Because copyright law is not within this

court’s exclusive jurisdiction, we apply the law of the

regional circuit in which the district court sits; here, the

Ninth Circuit. Atari Games Corp. v. Nintendo of Am.,

Inc., 975 F.2d 832, 837 (Fed. Cir. 1992).

II. ORACLE’S APPEAL

A. Legal Framework

It is undisputed that Google copied Oracle’s declaring

code and SSO for the 37 API packages verbatim. The

question is whether that copying was fair. “From the

infancy of copyright protection, some opportunity for fair

use of copyrighted materials has been thought necessary

to fulfill copyright’s very purpose, ‘to promote the Pro-

gress of Science and useful Arts.’” Campbell v. Acuff-Rose

Music, Inc., 510 U.S. 569, 575 (1994) (quoting U.S. Const.,

art. I, § 8, cl. 8). As the Supreme Court noted in Camp-

bell, “[i]n truth, in literature, in science and in art, there

are, and can be, few, if any, things, which in an abstract

sense, are strictly new and original throughout. Every

book in literature, science and art, borrows, and must

necessarily borrow, and use much which was well known

16 ORACLE AMERICA, INC. v. GOOGLE LLC

and used before.” Id. (quoting Emerson v. Davies, 8 F.

Cas. 615, 619 (C.C.D. Mass. 1845)).

The fair use defense began as a judge-made doctrine

and was codified in Section 107 of the 1976 Copyright Act.

Id. at 576. It operates as a limited exception to the copy-

right holder’s exclusive rights and permits use of copy-

righted work if it is “for purposes such as criticism,

comment, news reporting, teaching . . ., scholarship, or

research.” 17 U.S.C. § 107. The “such as” language

confirms that the listing “was not intended to be exhaus-

tive,” but nevertheless “give[s] some idea of the sort of

activities the courts might regard as fair use under the

circumstances.” Harper & Row Publishers, Inc. v. Nation

Enters., 471 U.S. 539, 561 (1985) (citation omitted).

“Section 107 requires a case-by-case determination

whether a particular use is fair, and the statute notes four

nonexclusive factors to be considered.” Id. at 549. Those

factors include: (1) “the purpose and character of the use,

including whether such use is of a commercial nature or is

for nonprofit educational purposes;” (2) “the nature of the

copyrighted work;” (3) “the amount and substantiality of

the portion used in relation to the copyrighted work as a

whole;” and (4) “the effect of the use upon the potential

market for or value of the copyrighted work.” 17 U.S.C.

§ 107. The Supreme Court has cautioned against adopt-

ing bright-line rules and has emphasized that all of the

statutory factors “are to be explored, and the results

weighed together, in light of the purposes of copyright.”

Campbell, 510 U.S. at 578.

The legislative history reveals that Congress intended

§ 107 “‘to restate the present judicial doctrine of fair use,

not to change, narrow, or enlarge it in any way’ and

intended that courts continue the common-law tradition

of fair use adjudication.” Id. at 577 (quoting H.R. Rep.

No. 94-1476, at 66 (1976), S. Rep. No. 94-473 at 62 (1975),

U.S. Code Cong. & Admin. News 5659, 5679 (1976)).

ORACLE AMERICA, INC. v. GOOGLE LLC 17

Accordingly, in balancing the four statutory factors,

courts consider “whether the copyright law’s goal of

‘promot[ing] the Progress of Science and useful Arts,’ U.S.

Const., art. 1, § 8, cl. 8, ‘would be better served by allow-

ing the use than by preventing it.’” Castle Rock Entm’t,

Inc. v. Carol Publ’g Grp., Inc., 150 F.3d 132, 141 (2d Cir.

1998) (quoting Arica Inst., Inc. v. Palmer, 970 F.2d 1067,

1077 (2d Cir. 1992)).

Despite this guidance, the doctrine of fair use has long

been considered “the most troublesome in the whole law

of copyright.” Monge v. Maya Magazines, Inc., 688 F.3d

1164, 1170 (9th Cir. 2012) (quoting Dellar v. Samuel

Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939) (per

curiam)). It both permits and requires “courts to avoid

rigid application of the copyright statute when, on occa-

sion, it would stifle the very creativity which that law is

designed to foster.” Campbell, 510 U.S. at 577 (quoting

Stewart v. Abend, 495 U.S. 207, 236 (1990)).

Because fair use is an affirmative defense to a claim of

infringement, Google bears the burden to prove that the

statutory factors weigh in its favor. Id. at 590. Not all of

the four factors must favor Google, however. See Wall

Data Inc. v. L.A. Cty. Sheriff’s Dep’t, 447 F.3d 769, 778

(9th Cir. 2006). Instead, “fair use is appropriate where a

‘reasonable copyright owner’ would have consented to the

use, i.e., where the ‘custom or public policy’ at the time

would have defined the use as reasonable.” Id. (citation

omitted).

On appeal, Oracle argues that each of the four statu-

tory factors weighs against a finding of fair use. Specifi-

cally, it submits that: (1) the purpose and character of

Google’s use was purely for commercial purposes; (2) the

nature of Oracle’s work is highly creative; (3) Google

copied 11,330 more lines of code than necessary to write

in a Java language-based program; and (4) Oracle’s

customers stopped licensing Java SE and switched to

18 ORACLE AMERICA, INC. v. GOOGLE LLC

Android because Google provided free access to it. In the

alternative, Oracle argues that it is entitled to a new trial

because the district court made several errors that de-

prived it of a fair opportunity to present its case. Be-

cause, as explained below, we agree with Oracle that

Google’s copying was not fair use as a matter of law, we

need not address Oracle’s alternative arguments for a

new trial.

B. Standards of Review

Before turning to a consideration of the four statutory

factors and any relevant underlying factual determina-

tions, we first address the standard of review we are to

employ in that consideration. While this section of most

appellate opinions presents easily resolvable questions,

like much else in the fair use context, that is not com-

pletely the case here.

There are several components to this inquiry. First,

which aspects of the fair use determination are legal in

nature and which are factual? Particularly, is the ulti-

mate question of fair use a legal inquiry which is to be

reviewed de novo? Second, what factual questions are

involved in the fair use determination and under what

standard are those determinations to be reviewed? Final-

ly, though neither party addresses the question in detail,

we consider what, if any, aspects of the fair use determi-

nation are for the jury to decide.

The Supreme Court has said that fair use is a mixed

question of law and fact. Harper & Row, 471 U.S. at 560

(citing Pac. & S. Co. v. Duncan, 744 F.2d 1490, 1495 n.8

(11th Cir. 1984)). Merely characterizing an issue as a

mixed question of law and fact does not dictate the appli-

cable standard of review, however. See U.S. Bank Nat’l

Ass’n ex rel. CWCapital Asset Mgmt. LLC, No. 15-1509,

2018 WL 1143822, at *5 (U.S. Mar. 5, 2018).

ORACLE AMERICA, INC. v. GOOGLE LLC 19

The Supreme Court has recently explained how we

are to determine what the standard of review should be in

connection with any mixed question of law and fact. Id.

Specifically, the Court made clear that an appellate court

is to break mixed questions into their component parts

and to review each under the appropriate standard of

review. Id. at *5-7. In U.S. Bank, the Supreme Court

considered the level of review to be applied to a Bank-

ruptcy Court’s determination of whether a creditor in a

bankruptcy action qualified as a “non-statutory insider”

for purposes of 11 U.S.C. § 1129(a). Id. at *3-4. The

Court found that there were three components to that

inquiry: (1) determining the legal standard governing the

question posed and what types of historical facts are

relevant to that standard; (2) finding what the historical

facts in the case at hand are; and (3) assessing whether

the historical facts found satisfy the legal test governing

the question to be answered. Id. at *4-5. As the Court

explained, the first of these three is a purely legal ques-

tion to be reviewed de novo on appeal and the second

involves factual questions which “are reviewable only for

clear error.” Id. at *4 (citing Fed. R. Civ. P. 52(a)(6) (clear

error standard)). The third is what the Court character-

ized as the “mixed question.” Id. at *5.

Importantly, the Court noted that “[m]ixed questions

are not all alike.” Id. The Court then held that “the

standard of review for a mixed question all depends—on

whether answering it entails primarily legal or factual

work.” Id. 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.” Id. (citing Salve Regina College v.

Russell, 499 U.S. 225, 231-33 (1991)). But where the

mixed question requires immersion in case-specific factual

issues that are so narrow as to “utterly resist generaliza-

tion,” the mixed question review is to be deferential. Id.

(quoting Pierce v. Underwood, 487 U.S. 552, 561-62

20 ORACLE AMERICA, INC. v. GOOGLE LLC

(1988)). Ultimately, the Court found that review of the

mixed question at issue in that bankruptcy context should

be deferential because de novo review of the question

would do little to “clarify legal principles or provide guid-

ance to other courts resolving other disputes.” Id. at *7.

While this may be the first time the Supreme Court

has so clearly explained how appellate courts are to

analyze mixed questions of law and fact, it is not the first

time the Supreme Court has told us how to analyze the

particular mixed question of law and fact at issue here.

In other words, while the Supreme Court has not previ-

ously broken the fair use inquiry into its three analytical

components as expressly as it did the question in U.S.

Bank, it has made clear that both the first and third of

those components are subject to de novo review.

In Harper & Row, the Court explained that, “[w]here

the district court has found facts sufficient to evaluate

each of the statutory factors, an appellate court ‘need not

remand for further factfinding but may conclude as a

matter of law that the challenged use does not qualify as

a fair use of the copyrighted work.’” 471 U.S. at 560

(quoting Pac. & S. Co., 744 F.2d at 1495) (internal altera-

tions omitted)). The Ninth Circuit has resolved the ques-

tion in the same way. Where fair use is resolved on

summary judgment, the Ninth Circuit reviews the district

court’s ultimate determination de novo. SOFA Entm’t,

Inc. v. Dodger Prods., Inc., 709 F.3d 1273, 1277 (9th Cir.

2013) (“Whether Dodger’s use of the clip constitutes fair

use is a mixed question of law and fact that we review de

novo.”). That court has explained that, “as fair use is a

mixed question of fact and law, so long as the record is

‘sufficient to evaluate each of the statutory factors,’ we

may reweigh on appeal the inferences to be drawn from

that record.’” Mattel Inc. v. Walking Mountain Prods.,

353 F.3d 792, 800 (9th Cir. 2003) (quoting L.A. News Serv.

v. CBS Broad., Inc., 305 F.3d 924, 942 (9th Cir. 2002)).

ORACLE AMERICA, INC. v. GOOGLE LLC 21

This treatment of the ultimate question posed when a

fair use defense is raised makes sense. The fair use

question entails, in the words of U.S. Bank, a primarily

legal exercise. It requires a court to assess the inferences

to be drawn from the historical facts found in light of the

legal standards outlined in the statute and relevant case

law and to determine what conclusion those inferences

dictate. Because, as noted below, the historical facts in a

fair use inquiry are generally few, generally similar from

case to case, and rarely debated, resolution of what any

set of facts means to the fair use determination definitely

does not “resist generalization.” See U.S. Bank, 2018 WL

1143822, at *5. Instead, the exercise of assessing whether

a use is fair in one case will help guide resolution of that

question in all future cases.

For these reasons, we conclude that whether the court

applied the correct legal standard to the fair use inquiry

is a question we review de novo, whether the findings

relating to any relevant historical facts were correct are

questions which we review with deference, and whether

the use at issue is ultimately a fair one is something we

also review de novo.

We have outlined the legal standard governing fair

use above. We consider below whether the court properly

applied those standards in the course of its fair use analy-

sis and whether it reached the correct legal conclusion

with respect to fair use. Before doing so, we briefly dis-

cuss the historical facts relevant to the fair use inquiry

and consider the jury’s role in determining those facts.

The Supreme Court has described “historical facts” as

“a recital of external events.” Thompson v. Keohane, 516

U.S. 99, 110 (1995); see also U.S. Bank, 2018 WL

1143822, at *4 (describing the historical facts at issue

there as facts relating to “the attributes of a particular

relationship or the circumstances and terms of a prior

transaction”). In the fair use context, historical facts

22 ORACLE AMERICA, INC. v. GOOGLE LLC

include the “origin, history, content, and defendant’s use”

of the copyrighted work. Fitzgerald v. CBS Broad., Inc.,

491 F. Supp. 2d 177, 184 (D. Mass. 2007); see also Lotus

Dev. Corp. v. Borland Int’l, Inc., 788 F. Supp. 78, 95 (D.

Mass 1992) (defining historical facts to include “who did

what, where, and when”). When asked at oral argument

to identify historical facts relevant to the fair use inquiry,

counsel for Oracle agreed that they are the “who, what,

where, when, how, [and] how much.” Oral Arg. at 3:28-

54, available at

http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20

17-1118.mp3. Google did not dispute this characteriza-

tion. This is, in part, because, in most fair use cases,

defendants concede that they have used the copyrighted

work, and “there is rarely dispute over the history, con-

tent, or origin of the copyrighted work.” See Ned Snow,

Judges Playing Jury: Constitutional Conflicts in Deciding

Fair Use on Summary Judgment, 44 U.C. Davis L. Rev.

483, 493 (2010).

While some courts once treated the entire question of

fair use as factual, and, thus, a question to be sent to the

jury, that is not the modern view. 3 Since Harper & Row,

the Ninth Circuit has described fair use as an “equitable

defense.” Fisher v. Dees, 794 F.2d 432, 435 (9th Cir. 1986)

(“The fair-use doctrine was initially developed by courts

as an equitable defense to copyright infringement.”).

Indeed, the Supreme Court referred to fair use as “an

3 In DC Comics, Inc. v. Reel Fantasy, Inc., 696 F.2d

24, 28 (2d Cir. 1982), the Second Circuit found that “[t]he

four factors listed in Section 107 raise essentially factual

issues and, as the district court correctly noted, are nor-

mally questions for the jury.” So too, Justice Joseph Story

described fair use as a “question of fact to come to a jury”

in 1845. Emerson v. Davies, 8 F. Cas. 615, 623-24 (C.C.D.

Mass. 1845).

ORACLE AMERICA, INC. v. GOOGLE LLC 23

equitable rule of reason” in Harper & Row. 471 U.S. at

560. Congress did the same when it codified the doctrine

of fair use in 1976. See H.R. Rep. No. 94-1476, 94th

Cong., 2d Sess. 65-66 (1976), U.S. Code Cong. & Admin.

News 1976, 5659, 5679-80 (“[S]ince the doctrine [of fair

use] is an equitable rule of reason, no generally applicable

definition is possible, and each case raising the question

must be decided on its own facts . . . .”). If fair use is

equitable in nature, it would seem to be a question for the

judge, not the jury, to decide, even when there are factual

disputes regarding its application. See Granite State Ins.

Co. v. Smart Modular Techs., Inc., 76 F.3d 1023, 1027

(9th Cir. 1996) (“A litigant is not entitled to have a jury

resolve a disputed affirmative defense if the defense is

equitable in nature.”). In that instance, it would be the

judge’s factual determinations that would receive a defer-

ential review—being assessed for clear error on the record

before the court.

That said, the Supreme Court has never clarified

whether and to what extent the jury is to play a role in

the fair use analysis. Harper & Row involved an appeal

from a bench trial where the district court concluded that

the use of the copyrighted material was not a fair use.

Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d

195, 199 (2d Cir. 1983). The Court, thus, had no reason

to discuss a jury determination of fair use and has not

since taken an opportunity to do so.

Perhaps because of this silence, even after Harper &

Row, several courts—including the Ninth Circuit—have

continued to accept the fact that the question of fair use

may go to a jury, albeit without analysis of why it may.

Compaq Comput. Corp. v. Ergonome Inc., 387 F.3d 403,

411 (5th Cir. 2004) (“The evidence presented at trial and

the reasonable inferences therefrom, when viewed

through the lens of the statutory fair use factors, support

the jury’s fair use finding.”); Jartech, Inc. v. Clancy, 666

F.2d 403, 407-08 (9th Cir. 1982) (concluding that substan-

24 ORACLE AMERICA, INC. v. GOOGLE LLC

tial evidence supported the jury’s verdict on fair use);

Fiset v. Sayles, No. 90-16548, 1992 WL 110263, at *4 (9th

Cir. May 22, 1992) (finding that a reasonable jury could

have concluded that “the evidence supporting fair use was

not substantial”); see also BUC Int’l Corp. v. Int’l Yacht

Council, 489 F.3d 1129, 1137 (11th Cir. 2007) (noting that

the fair use defense went to the jury); N.Y. Univ. v. Planet

Earth Found., 163 F. App’x 13, 14 (2d Cir. 2005) (“As to

the copyright infringement claim, the evidence also sup-

ports the jury’s finding of fair use, under the four-factored

analysis prescribed by statute.”).

The Ninth Circuit has clarified, however, that the jury

role in this context is limited to determining disputed

“historical facts,” not the inferences or conclusions to be

drawn from those facts. See Fisher, 794 F.2d at 436. In

Fisher, for example, the court explained that “[n]o materi-

al historical facts are at issue in this case. The parties

dispute only the ultimate conclusions to be drawn from

the admitted facts. Because, under Harper & Row, these

judgments are legal in nature, we can make them without

usurping the function of the jury.” Id.; see also Seltzer v.

Green Day, Inc., 725 F.3d 1170, 1175 (9th Cir. 2013) (“As

in Fisher, ‘[n]o material historical facts are at issue in this

case. The parties dispute only the ultimate conclusion to

be drawn from the admitted facts.’” (citing Fisher, 794

F.2d at 436)); Hustler Magazine, Inc. v. Moral Majority,

Inc., 606 F. Supp. 1526, 1532 (C.D. Cal. 1985) (noting that

“fair use normally is a question of fact for the jury,” but

concluding that “the issue of fair use, at least in the

context of this case, presents primarily a question of

law”). Accordingly, while inferences from the four-factor

analysis and the ultimate question of fair use are “legal in

nature,” in the Ninth Circuit, disputed historical facts

represent questions for the jury. Fisher, 794 F.2d at 436.

Where there are no disputed material historical facts, fair

use can be decided by the court alone. Id.

ORACLE AMERICA, INC. v. GOOGLE LLC 25

Despite this case law, all aspects of Google’s fair use

defense went to the jury with neither party arguing that

it should not. Thus, the jury was asked not just what the

historical facts were, but what the implications of those

facts were for the fair use defense. During the first ap-

peal, Google argued to this court that there were disputed

issues of material historical fact relevant to its fair use

defense. As discussed below, the parties stipulated—or at

least ceased to dispute—some of those facts, and present-

ed the remaining disputed historical facts to the jury on

remand. The jury returned a verdict in favor of Google on

its fair use defense. Because the verdict form—though

captioned as a “special verdict”—did not ask the jury to

articulate its fact findings in any detail, we must assume

that the jury resolved all factual issues relating to the

historical facts in favor of the verdict. 4 Despite the pos-

ture of the fair use finding, we must break that finding

into its constituent parts. We must then review the

subsidiary and controverted findings of historical fact for

4 As counsel for Oracle noted at oral argument, this

is similar to the standard we apply in obviousness cases.

Oral Argument at 9:34-10:24. Because obviousness is a

mixed question of law and fact, we “first presume that the

jury resolved the underlying factual disputes in favor of

the verdict [ ] and leave those presumed findings undis-

turbed if they are supported by substantial evidence.

Then we examine the [ultimate] legal conclusion [of

obviousness] de novo to see whether it is correct in light of

the presumed jury fact findings.” Kinetic Concepts, Inc. v.

Smith & Nephew, Inc., 688 F.3d 1342, 1356-57 (Fed. Cir.

2012) (quoting Jurgens v. McKasy, 927 F.2d 1552, 1557

(Fed. Cir. 1991)). Likewise, Google cited our decision in

Kinetic Concepts for the proposition that we must “pre-

sume that the jury made all findings in support of the

verdict that are supported by substantial evidence.”

Cross-Appellant Br. 35.

26 ORACLE AMERICA, INC. v. GOOGLE LLC

substantial evidence. See Seltzer, 725 F.3d at 1175; see

also Brewer v. Hustler Magazine, Inc., 749 F.2d 527, 528

(9th Cir. 1984) (“We may disturb a jury verdict only if the

evidence was insufficient as a matter of law.”).

All jury findings relating to fair use other than its im-

plied findings of historical fact must, under governing

Supreme Court and Ninth Circuit case law, be viewed as

advisory only. Accordingly, while we might assess the

jury’s role in the assessment of fair use differently if not

bound by Ninth Circuit law, we proceed on the assump-

tion both that: (1) it was not error to send the question to

the jury, because the Ninth Circuit has at least implicitly

endorsed doing so; and (2) we must assess all inferences

to be drawn from the historical facts found by the jury

and the ultimate question of fair use de novo, because the

Ninth Circuit has explicitly said we must do so.

The parties have identified the following historical

facts relating to Google’s use of the copyrighted work:

• the history and origin of the copyrighted work,

including what declaring code is;

• how much of the copyrighted work was copied;

• whether there were other ways to write the API

packages;

• whether the copied material was used for the

same purpose as in the original work;

• whether the use was commercial in nature;

• whether Google acted in bad faith in copying the

work;

ORACLE AMERICA, INC. v. GOOGLE LLC 27

• whether there are functional aspects to the cop-

yrighted work that make it less deserving of

protection; and

• whether there was harm to the actual or poten-

tial markets for the copyrighted work.

The parties now agree on the resolution of the first

four factual questions: (1) what the declaring code is and

what it does in Java SE and Android, and that the code at

issue was a work created by Oracle; (2) how many lines of

code were copied; (3) that there were other ways for

Google to write API packages; and (4) that Google used

the API packages in Android for the same purpose they

were created for in Java. The parties dispute, however,

the remaining historical facts they identified. We address

those disputes in the context of our assessment of the

statutory factors to which the respective historical fact is

relevant.

C. Applying the Fair Use Factors

Factor 1: The Purpose and Character of the Use

The first factor in the fair use inquiry involves “the

purpose and character of the use, including whether such

use is of a commercial nature or is for nonprofit educa-

tional purposes.” 17 U.S.C. § 107(1). This factor has two

primary components: (1) whether the use is commercial in

nature, rather than for educational or public interest

purposes; and (2) “whether the new work is transforma-

tive or simply supplants the original.” Wall Data, 447

F.3d at 778 (citing Campbell, 510 U.S. at 579). As ex-

plained below, the first is a question of fact and the sec-

ond is a question of law. As Oracle points out, moreover,

courts sometimes also consider whether the historical

facts support the conclusion that the infringer acted in

bad faith. See Harper & Row, 471 U.S. at 562. We ad-

dress each component in turn.

28 ORACLE AMERICA, INC. v. GOOGLE LLC

a. Commercial Use

Analysis of the first factor requires inquiry into the

commercial nature of the use. Use of the copyrighted

work that is commercial “tends to weigh against a finding

of fair use.” Harper & Row, 471 U.S. at 562. Courts have

recognized, however, that, “[s]ince many, if not most,

secondary users seek at least some measure of commercial

gain from their use, unduly emphasizing the commercial

motivation of a copier will lead to an overly restrictive

view of fair use.” Am. Geophysical Union v. Texaco, Inc.,

60 F.3d 913, 921 (2d Cir. 1994); see also Infinity Broad.

Corp. v. Kirkwood, 150 F.3d 104, 109 (2d Cir. 1998)

(“[N]otwithstanding its mention in the text of the statute,

commerciality has only limited usefulness to a fair use

inquiry; most secondary uses of copyrighted material,

including nearly all of the uses listed in the statutory

preamble, are commercial.”). Accordingly, although the

statute requires us to consider the “commercial nature” of

the work, “the degree to which the new user exploits the

copyright for commercial gain—as opposed to incidental

use as part of a commercial enterprise—affects the weight

we afford commercial nature as a factor.” Elvis Presley

Enters., Inc. v. Passport Video, 349 F.3d 622, 627 (9th Cir.

2003).

“[I]t is undisputed that Google’s use of the declaring

code and SSO from 37 Java API packages served commer-

cial purposes.” Order Denying JMOL, 2016 WL 3181206,

at *7. Although the jury was instructed that commercial

use weighed against fair use, the district court explained

that the jury “could reasonably have found that Google’s

decision to make Android available open source and free

for all to use had non-commercial purposes as well (such

as the general interest in sharing software innovation).”

Id.

On appeal, Oracle argues that Android is “hugely

profitable” and that “Google reaps billions from exploiting

ORACLE AMERICA, INC. v. GOOGLE LLC 29

Java in Android.” Appellant Br. 29. As such, Oracle

maintains that no reasonable jury could have found

Android anything but “overwhelmingly commercial.” Id. 5

Google responds that: (1) because it gives Android

away for free under an open source license the jury could

have concluded that Android has non-commercial purpos-

es; and (2) the jury could have reasonably found that

Google’s revenue flows from the advertisements on its

search engine which preexisted Android. Neither argu-

ment has merit.

First, the fact that Android is free of charge does not

make Google’s use of the Java API packages non-

commercial. Giving customers “for free something they

would ordinarily have to buy” can constitute commercial

use. A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004,

1015 (9th Cir. 2001) (finding that “repeated and exploita-

tive copying of copyrighted works, even if the copies are

not offered for sale, may constitute a commercial use”).

That Google might also have non-commercial motives is

5 Oracle also argues that Google conceded that its

use was “entirely commercial” during oral argument to

this court in the first appeal. Order Denying JMOL, 2016

WL 3181206, at *7 (“Q: But for purpose and character,

though, you don’t dispute that it was entirely a commer-

cial purpose. A: No.”). The district court treated this

colloquy as a judicial admission that Google’s use was

“commercial.” Id. (noting that the word “entirely” was

“part of the give and take” of oral argument). The court

therefore instructed the jury that Google’s use was com-

mercial, but that it was up to the jury to determine the

extent of the commerciality. Id. at *8. Oracle does not

challenge the district court’s jury instructions on appeal.

In any event, as the district court noted, “even a wholly

commercial use may still constitute fair use.” Id. at *7

(citing Campbell, 510 U.S. at 585).

30 ORACLE AMERICA, INC. v. GOOGLE LLC

irrelevant as a matter of law. As the Supreme Court

made clear when The Nation magazine published excerpts

from Harper & Row’s book, partly for the purpose of

providing the public newsworthy information, the ques-

tion “is not whether the sole motive of the use is monetary

gain but whether the user stands to profit from exploita-

tion of the copyrighted material without paying the cus-

tomary price.” Harper & Row, 471 U.S. at 562. Second,

although Google maintains that its revenue flows from

advertisements, not from Android, commerciality does not

depend on how Google earns its money. Indeed, “[d]irect

economic benefit is not required to demonstrate a com-

mercial use.” A&M Records, 239 F.3d at 1015. We find,

therefore, that, to the extent we must assume the jury

found Google’s use of the API packages to be anything

other than overwhelmingly commercial, that conclusion

finds no substantial evidentiary support in the record.

Accordingly, Google’s commercial use of the API packages

weighs against a finding of fair use.

b. Transformative Use

Although the Copyright Act does not use the word

“transformative,” the Supreme Court has stated that the

“central purpose” of the first fair use factor is to deter-

mine “whether and to what extent the new work is trans-

formative.” Campbell, 510 U.S. at 579. Transformative

works “lie at the heart of the fair use doctrine’s guarantee

of breathing space within the confines of copyright, and

the 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.” Id. (internal

citation omitted).

A use is “transformative” if it “adds something new,

with a further purpose or different character, altering the

first with new expression, meaning or message.” Id. The

critical question is “whether the new work merely super-

sede[s] the objects of the original creation . . . or instead

ORACLE AMERICA, INC. v. GOOGLE LLC 31

adds something new.” Id. (citations and internal quota-

tion marks omitted). This inquiry “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.” Id. at 578-79. “The Supreme

Court has recognized that parodic works, like other works

that comment and criticize, are by their nature often

sufficiently transformative to fit clearly under the fair use

exception.” Mattel Inc. v. Walking Mountain Prods., 353

F.3d 792, 800 (9th Cir. 2003) (citing Campbell, 510 U.S. at

579).

“Although transformation is a key factor in fair use,

whether a work is transformative is a often highly conten-

tious topic.” Seltzer, 725 F.3d at 1176. Indeed, a “leading

treatise on this topic has lamented the frequent misuse of

the transformation test, complaining that it has become a

conclusory label which is ‘all things to all people.’” Id.

(quoting Melville B. Nimmer & David Nimmer, 4 Nimmer

on Copyright § 13.05[A][1][b], 13168-70 (2011)).

To be transformative, a secondary work must either

alter the original with new expression, meaning, or mes-

sage or serve a new purpose distinct from that of the

original work. Campbell, 510 U.S. at 579; Elvis Presley

Enters., 349 F.3d at 629. Where the use “is for the same

intrinsic purpose as [the copyright holder’s] . . . such use

seriously weakens a claimed fair use.” Worldwide Church

of God v. Phila. Church of God, Inc., 227 F.3d 1110, 1117

(9th Cir. 2000) (quoting Weissmann v. Freeman, 868 F.2d

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

Although “transformative use is not absolutely neces-

sary for a finding of fair use, the goal of copyright, to

promote science and the arts, is generally furthered by

the creation of transformative works.” Campbell, 510

U.S. at 579 (citation and footnote omitted). As such, “the

more transformative the new work, the less will be the

significance of other factors, like commercialism, that may

32 ORACLE AMERICA, INC. v. GOOGLE LLC

weigh against a finding of fair use.” Id. Importantly, in

the Ninth Circuit, whether a work is transformative is a

question of law. See Mattel, 353 F.3d at 801 (explaining

that parody—a well-established species of transformative

use—“is a question of law, not a matter of public majority

opinion”); see also Fox News Network, LLC v. TVEyes,

Inc., No. 15-3885, 2018 WL 1057178, at *3-4 (2d Cir. Feb.

27, 2018) (reassessing whether the use in question was

transformative and deciding it was as a matter of law).

In denying JMOL, the district court explained that “of

course, the copied declarations serve the same function in

both works, for by definition, declaring code in the Java

programming language serves the [same] specific defini-

tional purposes.” Order Denying JMOL, 2016 WL

3181206, at *8. The court concluded, however, that the

6

jury could reasonably have found that Google’s selection

of some, but not all, of the Java API packages—“with new

6 According to the district court, if this fact were

sufficient to defeat fair use, “it would be impossible ever

to duplicate declaring code as fair use and presumably the

Federal Circuit would have disallowed this factor on the

first appeal rather than remanding for a jury trial.” Id.

But in our prior decision, we remanded in part because

Google represented to this court that there were disputes

of fact regarding how Android was used and whether the

APIs Google copied served the same function in Android

and Java. Oracle, 750 F.3d at 1376. Without the benefit

of briefs exploring the record on these issues, and Google’s

later agreement with respect to these facts, we concluded

that we could not say that there were no material facts in

dispute. Id. As explained previously, however, those

facts are no longer in dispute. The only question that

remains regarding transformative use is whether, on the

now undisputed facts, Google’s use of the APIs was, in

fact, transformative.

ORACLE AMERICA, INC. v. GOOGLE LLC 33

implementing code adapted to the constrained operating

environment of mobile smartphone devices,” together with

new “methods, classes, and packages written by Google

for the mobile smartphone platform”—constituted “a fresh

context giving new expression, meaning, or message to

the duplicated code.” Id. at *9.

On appeal, Oracle argues that Google’s use was not

transformative because it did not alter the APIs with

“new expression, meaning, or message.” Appellant Br. 29

(quoting Campbell, 510 U.S. at 579). Because Google

concedes that it uses the API packages for the same

purpose, Oracle maintains that it was unreasonable for

either the jury or the court to find that Google sufficiently

transformed the APIs to overcome its highly commercial

use.

Google responds that a reasonable jury could have

concluded that Google used a small portion of the Java

API packages to create a new work in a new context—

“Android, a platform for smartphones, not desktops and

servers.” Cross-Appellant Br. 37. Google argues that,

although the declarations and SSO may perform the same

functions in Android and Java, the jury could reasonably

find that they have different purposes because the “point

of Android was to create a groundbreaking platform for

smartphones.” Id. at 39.

Google’s arguments are without merit. As explained

below, Google’s use of the API packages is not transform-

ative 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.

First, though not dispositive, we turn to the examples

given in the preamble to § 107, “looking to whether the

34 ORACLE AMERICA, INC. v. GOOGLE LLC

use is for criticism, or comment, or news reporting, and

the like.” Campbell, 510 U.S. at 578-79. Google’s use of

the Java API packages does not fit within the statutory

categories, and Google does not suggest otherwise. In-

stead, Google cites Sony Computer Entertainment, Inc. v.

Connectix Corp., 203 F.3d 596 (9th Cir. 2000), for the

proposition that the “Ninth Circuit has held other types of

uses—specifically including uses of computer code—to be

fair.” Cross-Appellant Br. 41. In Sony, the court found

that the defendant’s reverse engineering and intermedi-

ate copying of Sony’s copyrighted software system “was a

fair use for the purpose of gaining access to the unprotect-

ed elements of Sony’s software.” 203 F.3d at 602. The

court explained that Sony’s software program contained

unprotected functional elements and that the defendant

could only access those elements through reverse engi-

neering. Id. at 603. The defendant used that information

to create a software program that let consumers play

games designed for Sony’s PlayStation console on their

computers. The court found that the defendant’s use was

only “modestly transformative” where: (1) the defendant

created “a wholly new product” with “entirely new . . .

code,” and (2) the intermediate copying was performed to

“produce a product that would be compatible.” Id. at 606-

07. As Oracle points out, even the “modest” level of

transformation at issue in Sony is more transformative

than what Google did here: copy code verbatim to attract

programmers to Google’s “new and incompatible plat-

form.” Appellant Response Br. 21.

It is undisputed that the API packages “serve the

same function in both works.” Order Denying JMOL,

2016 WL 3181206, at *8. And, as Oracle explains, the

historical facts relevant to transformative use are also

undisputed: what declaring code is, what it does in Java

and in Android, how the audience of computer developers

perceives it, how much Google took and added, what the

added code does, and why Google used the declaring code

ORACLE AMERICA, INC. v. GOOGLE LLC 35

and SSO. Indeed, Google conceded that “including the

declarations (and their associated SSO) was for the bene-

fit of developers, who—familiar with the Java program-

ming language—had certain expectations regarding the

language’s APIs.” Google’s Opp. to Oracle’s Rule 50(a)

Motion for JMOL at 20, Oracle Am., Inc. v. Google Inc.,

No. 3:10-cv-3561 (N.D. Cal. May 21, 2016), ECF No. 1935.

The fact that Google created exact copies of the declaring

code and SSO and used those copies for the same purpose

as the original material “seriously weakens [the] claimed

fair use.” See Wall Data, 447 F.3d at 778 (finding that,

where the “Sheriff’s Department created exact copies of

RUMBA’s software . . . [and] put those copies to the

identical purpose as the original software,” the use was

not transformative); see also Campbell, 510 U.S. at 580

(noting that where the alleged infringer merely seeks “to

avoid the drudgery in working up something fresh,” any

“claim to fairness . . . diminishes accordingly”).

Google argues that Android is transformative because

Google selectively used the declarations and SSO of only

37 of the 166 Java SE API packages and wrote its own

implementing code. But taking only select passages of a

copyrighted work is, by itself, not transformative. See

L.A. News Serv. v. CBS Broad., Inc., 305 F.3d 924, 938-39

(9th Cir. 2002) (“Merely plucking the most visually arrest-

ing excerpt from LANS’s nine minutes of footage cannot

be said to have added anything new.”). While, as dis-

cussed below, the volume of work copied is relevant to the

fair use inquiry generally, thought must be given to the

quality and importance of the copied material, not just to

its relative quantity vis-à-vis the overall work. See

Campbell, 510 U.S. at 586-87. To hold otherwise would

mean that verbatim copying could qualify as fair use as

long as the plagiarist stops short of taking the entire

work. That approach is inconsistent with settled law and

is particularly troubling where, as here, the portion copied

is qualitatively significant. See Harper & Row, 471 U.S.

36 ORACLE AMERICA, INC. v. GOOGLE LLC

at 569 (finding that verbatim copying of 300 words from a

manuscript of more than 200,000 words was not a fair

use); see also Folsom v. Marsh, 9 F. Cas. 342, 345 (C.C.D.

Mass 1841) (Story, J.) (“There must be real, substantial

condensation of the materials, and intellectual labor and

judgment bestowed thereon; and not merely the facile use

of the scissors; or extracts of the essential parts, constitut-

ing the chief value of the original work.”).

That Google wrote its own implementing code is irrel-

evant to the question of whether use of the APIs was

transformative. As we noted in the prior appeal, “no

plagiarist can excuse the wrong by showing how much of

his work he did not pirate.” Oracle, 750 F.3d at 1375

(quoting Harper & Row, 471 U.S. at 565). The relevant

question is whether Google altered “the expressive content

or message of the original work” that it copied—not

whether it rewrote the portions it did not copy. See Selt-

zer, 725 F.3d at 1177 (explaining that a work is not trans-

formative where the user “makes no alteration to the

expressive content or message of the original work”). That

said, even where the allegedly infringing work “makes few

physical changes to the original or fails to comment on the

original,” it will “typically [be] viewed as transformative

as long as new expressive content or message is appar-

ent.” Id. Here, however, there is no suggestion that the

new implementing code somehow changed the expression

or message of the declaring code. While Google’s use

could have been transformative if it had copied the APIs

for some other purpose—such as teaching how to design

an API—merely copying the material and moving it from

one platform to another without alteration is not trans-

formative.

Google’s primary argument on appeal is that Android

is transformative because Google incorporated the decla-

rations and SSO of the 37 API packages into a new con-

text—smartphones. But the record showed that Java SE

APIs were in smartphones before Android entered the

ORACLE AMERICA, INC. v. GOOGLE LLC 37

market. Specifically, Oracle presented evidence that Java

SE was in SavaJe mobile phones and that Oracle licensed

Java SE to other smartphone manufacturers, including

Danger and Nokia. Because the Java SE was already

being used in smartphones, Google did not “transform”

the copyrighted material into a new context and no rea-

sonable jury could conclude otherwise. 7

In any event, moving material to a new context is not

transformative in and of itself—even if it is a “sharply

different context.” TCA Television Corp. v. McCollum,

839 F.3d 168, 181-83 (2d Cir. 2016) (finding that use “at

some length, almost verbatim,” of the copyrighted comedy

routine “Who’s on First?” in a dramatic play was not

transformative where the play neither “imbued the Rou-

tine with any new expression, meaning, or message,” nor

added “any new dramatic purpose”). As previously ex-

plained, a use becomes transformative only if it serves a

different purpose or alters the “expression, meaning, or

message” of the original work. Kelly, 336 F.3d at 818. As

such, “[c]ourts have been reluctant to find fair use when

an original work is merely retransmitted in a different

medium.” A&M Records, 239 F.3d at 1015. Accordingly,

although a change of format may be “useful,” it “is not

technically a transformation.” Infinity Broad., 150 F.3d

at 108 n.2 (finding that retransmitting copyrighted radio

transmissions over telephone lines was not transforma-

tive because there was no new expression, meaning, or

message).

7 Because we conclude that smartphones were not a

new context, we need not address the argument, made by

Oracle and certain amici, that the district court’s order

excluding evidence of Google’s use of Android in multiple

other circumstances—including laptops—tainted the

jury’s and the court’s ability to fairly assess the character

of the use.

38 ORACLE AMERICA, INC. v. GOOGLE LLC

The Ninth Circuit has stated that “[a] use is consid-

ered transformative only where a defendant changes a

plaintiff’s copyrighted work or uses the plaintiff’s copy-

righted work in a different context such that the plain-

tiff’s work is transformed into a new creation.” Perfect 10,

Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir.

2007) (quoting Wall Data, 447 F.3d at 778). In Perfect 10,

for example, the court found Google’s use of thumbnail

versions of copyrighted images “highly transformative”

because, “[a]lthough an image may have been created

originally to serve an entertainment, aesthetic, or in-

formative function, a search engine transforms the image

into a pointer directing a user to a source of information.”

Id. Although the court discussed the change in context

(moving the copyrighted images into the electronic refer-

ence tool), it emphasized that Google used the images “in

a new context to serve a different purpose.” Id. In reach-

ing this conclusion, the court reiterated that “even mak-

ing an exact copy of a work may be transformative so long

as the copy serves a different function than the original

work.” Id. (citing Kelly, 336 F.3d at 818-19). It is clear,

therefore, that the change in context alone was not dispos-

itive in Perfect 10; rather, the change in context facilitated

the change in purpose, which made the use transforma-

tive.

To some extent, any use of copyrighted work takes

place in a slightly different context than the original. And

of course, there is no bright line identifying when a use

becomes transformative. But where, as here, the copying

is verbatim, for an identical function and purpose, and

there are no changes to the expressive content or mes-

sage, a mere change in format (e.g., from desktop and

laptop computers to smartphones and tablets) is insuffi-

ORACLE AMERICA, INC. v. GOOGLE LLC 39

cient as a matter of law to qualify as a transformative

use. 8

c. Bad faith

In evaluating the “purpose and character” factor, the

Ninth Circuit applies “the general rule that a party

claiming fair use must act in a manner generally compat-

ible with principles of good faith and fair dealing.” Perfect

10, 508 F.3d at 1164 n.8 (citing Harper & Row, 471 U.S.

at 562-63). In part, this is based on the fact that, in

Harper & Row, the Supreme Court expressly stated that

“[f]air use presupposes ‘good faith’ and ‘fair dealing.’” 471

U.S. at 562 (citation omitted). It is also in part true

because, as the Ninth Circuit has said, one who acts in

bad faith should be barred from invoking the equitable

defense of fair use. Fisher, 794 F.2d at 436 (calling the

principle of considering the alleged infringer’s “bad con-

duct” as a “bar [to] his use of the equitable defense of fair

use” a sound one). 9

8 As some amici note, to hold otherwise could en-

croach upon the copyright holder’s right to “prepare

derivative works based upon the copyrighted work.” 17

U.S.C. § 106(2); see Br. of Amicus Curiae N.Y. Intell. Prop.

L. Ass’n at 17-20.

9 As the district court recognized, there is some de-

bate about whether good or bad faith should remain

relevant to the factor one inquiry. Order Denying JMOL,

2016 WL 3181206, at *2 (“[T]here is a respectable view

that good or bad faith should no longer be a consideration

after the Supreme Court’s decision in Campbell.”); see also

Hon. Pierre N. Leval, Toward a Fair Use Standard, 103

Harv. L. Rev. 1105, 1128 (1990) (“Whether the secondary

use is within the protection of the [fair use] doctrine

depends on factors pertinent to the objectives of the

40 ORACLE AMERICA, INC. v. GOOGLE LLC

Consistent with this authority, and at Oracle’s re-

quest, the district court instructed the jury that it could

consider whether Google acted in bad faith (or not) as part

of its assessment of the first fair use factor. Order Deny-

ing JMOL, 2016 WL 3181206, at *6. And, because Oracle

was permitted to introduce evidence that Google acted in

bad faith, the court permitted Google to try to prove its

good faith. Id.

At trial, Oracle introduced evidence suggesting that

“Google felt it needed to copy the Java API as an acceler-

ant to bring Android to the market quicker” and knew

that it needed a license to use Java. Id. For its part,

Google presented evidence that it believed that the declar-

ing code and SSO were “free to use and re-implement,

both as a matter of developer practice and because the

availability of independent implementations of the Java

API enhanced the popularity of the Java programming

language, which Sun promoted as free for all to use.” Id.

at *7. Given this conflicting evidence, the district court

copyright law and not on the morality or motives of either

the secondary user or the copyright-owning plaintiff.”). In

Campbell, the Supreme Court expressed skepticism about

“the weight one might place on the alleged infringer’s

state of mind.” Campbell, 510 U.S. at 585 n.18. But the

Ninth Circuit has not repudiated its view that “‘the pro-

priety of the defendant’s conduct’ is relevant to the char-

acter of the use at least to the extent that it may

knowingly have exploited a purloined work for free that

could have been obtained for a fee.” L.A. News Serv. v.

KCAL-TV Channel 9, 108 F.3d 1119, 1122 (9th Cir. 1997)

(quoting Harper & Row, 471 U.S. at 562). For that rea-

son, and because we conclude in any event that the jury

must have found that Google did not act in bad faith, we

address that question and the parties’ arguments relating

thereto.

ORACLE AMERICA, INC. v. GOOGLE LLC 41

found that the jury could reasonably have concluded that

“Google’s use of parts of the Java API as an accelerant

was undertaken based on a good faith belief that at least

the declaring code and SSO were free to use (which it did

use), while a license was necessary for the implementing

code (which it did not use).” Id.

On appeal, Oracle argues that there was ample evi-

dence that Google intentionally copied Oracle’s copyright-

ed work and knew that it needed a license to use Java.

Google responds that the jury heard sufficient evidence of

Google’s good faith based on industry custom and was

entitled to credit that evidence.

But, while bad faith may weigh against fair use, a

copyist’s good faith cannot weigh in favor of fair use.

Indeed, the Ninth Circuit has expressly recognized that

“the innocent intent of the defendant constitutes no

defense to liability.” Monge, 688 F.3d at 1170 (quoting 4

Melville B. Nimmer & David Nimmer, Nimmer on Copy-

right § 13.08[B][1] (Matthew Bender rev. ed. 2011)). If it

were clear, accordingly, that the jury found fair use solely

or even largely because it approved of Google’s motives

even if they were in bad faith, we would find such a

conclusion improper. Because evidence of Google’s good

faith was relevant to rebut evidence of its bad faith,

however, and there is no objection to the instructions to

the jury on this or any other point, we must assume that

the jury simply did not find the evidence of Google’s bad

faith persuasive. 10 We note, moreover, that merely “being

10 The jury was instructed that, “[i]n evaluating the

extent to which Google acted in good faith or not, you may

take into account, together with all other circumstances,

the extent to which Google relied upon or contravened any

recognized practices in the industry concerning re-

implementation of API libraries.” Order Denying JMOL,

42 ORACLE AMERICA, INC. v. GOOGLE LLC

denied permission to use a work does not weigh against a

finding of fair use.” Campbell, 510 U.S. at 585 n.18 (“If

the use is otherwise fair, then no permission need be

sought or granted.”).

Ultimately, we find that, even assuming the jury was

unpersuaded that Google acted in bad faith, the highly

commercial and non-transformative nature of the use

strongly support the conclusion that the first factor

weighs against a finding of fair use.

Factor 2: Nature of the Copyrighted Work

The second factor—the nature of the copyrighted

work—“calls for recognition that some works are closer to

the core of intended copyright protection than others, with

the consequence that fair use is more difficult to establish

when the former works are copied.” Campbell, 510 U.S.

at 586. This factor “turns on whether the work is infor-

mational or creative.” Worldwide Church of God, 227

F.3d at 1118; see also Harper & Row, 471 U.S. at 563

(“The law generally recognizes a greater need to dissemi-

nate factual works than works of fiction or fantasy.”).

Creative expression “falls within the core of the copy-

right’s protective purposes.” Campbell, 510 U.S. at 586.

Although “software products are not purely creative

works,” it is well established that copyright law protects

computer software. Wall Data, 447 F.3d at 780 (citing

Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1519

(9th Cir. 1992) (“[T]he 1980 amendments to the Copyright

Act unambiguously extended copyright protection to

computer programs.”)).

Here, the district court found that the jury could have

concluded that the process of designing APIs was “highly

creative” and “thus at the core of copyright’s protection” or

2016 WL 3181206, at *3 n.2. Oracle has not challenged

this instruction on appeal.

ORACLE AMERICA, INC. v. GOOGLE LLC 43

it could “reasonably have gone the other way and conclud-

ed that the declaring code was not highly creative.” Order

Denying JMOL, 2016 WL 3181206, at *10. While the jury

heard testimony from Google’s own expert that API

design is “an art, not a science,” other witnesses empha-

sized the functional role of the declaring code and the SSO

and minimized the creative aspects. Id. Accordingly, the

district court concluded that the “jury could reasonably

have found that, while the declaring code and SSO were

creative enough to qualify for copyright protection, func-

tional considerations predominated in their design.” Id.

On appeal, Oracle emphasizes that designing the

APIs was a highly creative process and that the organiza-

tion of the packages was not mandated by function.

Indeed, this court has already held that the declaring code

and the SSO of the 37 API packages at issue were suffi-

ciently creative and original to qualify for copyright

protection. Oracle, 750 F.3d at 1356. According to Ora-

cle, the district court erred in assuming that, because the

APIs have a “functional role,” they cannot be creative.

As Google points out, however, all we found in the

first appeal was that the declarations and SSO were

sufficiently creative to provide the “minimal degree of

creativity,” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499

U.S. 340, 345 (1991), that is required for copyrightability.

We also recognized that a reasonable jury could find that

“the functional aspects of the packages” are “relevant to

Google’s fair use defense.” Oracle, 750 F.3d at 1369, 1376-

77. On remand, Oracle stipulated that some of the decla-

rations were necessary to use the Java language and

presented no evidence explaining how the jury could

distinguish the functionality and creativity of those

declarations from the others. Google maintains that it

presented evidence that the declarations and SSO were

functional and the jury was entitled to credit that evi-

dence.

44 ORACLE AMERICA, INC. v. GOOGLE LLC

Although it is clear that the 37 API packages at issue

involved some level of creativity—and no reasonable juror

could disagree with that conclusion—reasonable jurors

could have concluded that functional considerations were

both substantial and important. Based on that assumed

factual finding, we conclude that factor two favors a

finding of fair use.

The Ninth Circuit has recognized, however, that this

second factor “typically has not been terribly significant in

the overall fair use balancing.” Dr. Seuss Enters., L.P. v.

Penguin Books USA, Inc., 109 F.3d 1394, 1402 (9th Cir.

1997) (finding that the “creativity, imagination and

originality embodied in The Cat in the Hat and its central

character tilts the scale against fair use”); Mattel, 353

F.3d at 803 (similar). Other circuits agree. Fox News

Network, 2018 WL 1057178, at *5 (“This factor ‘has rarely

played a significant role in the determination of a fair use

dispute,’ and it plays no significant role here.” (quoting

Authors Guild v. Google, Inc., 804 F.3d 202, 220 (2d Cir.

2015))). We note, moreover, that allowing this one factor

to dictate a conclusion of fair use in all cases involving

copying of software could effectively negate Congress’s

express declaration—continuing unchanged for some forty

years—that software is copyrightable. Accordingly,

though the jury’s assumed view of the nature of the

copyrighted work weighs in favor of finding fair use, it has

less significance to the overall analysis.

Factor 3: Amount and Substantiality of the Portion Used

The third factor focuses on the “amount and substan-

tiality of the portion used in . . . the context of the copy-

righted work, not the infringing work.” Oracle, 750 F.3d

at 1375. Indeed, the statutory language makes clear that

“a taking may not be excused merely because it is insub-

stantial with respect to the infringing work.” Harper &

Row, 471 U.S. at 565. “[T]he fact that a substantial

portion of the infringing work was copied verbatim [from

ORACLE AMERICA, INC. v. GOOGLE LLC 45

the original work] is evidence of the qualitative value of

the copied material, both to the originator and to the

plagiarist who seeks to profit from marketing someone

else’s copyrighted expression.” Id. Thus, while “whole-

sale copying does not preclude fair use per se, copying an

entire work militates against a finding of fair use.”

Worldwide Church of God, 227 F.3d at 1118 (citation and

quotation marks omitted). But, there is no relevance to

the opposite—i.e., adding substantial content to the

copyrighted work is not evidence that what was copied

was insubstantial or unimportant.

The inquiry under this third factor “is a flexible one,

rather than a simple determination of the percentage of

the copyrighted work used.” Monge, 688 F.3d at 1179.

The Ninth Circuit has explained that this third factor

looks to the quantitative amount and qualitative value of

the original work used in relation to the justification for

its use. Seltzer, 725 F.3d at 1178. The percentage of work

copied is not dispositive where the portion copied was

qualitatively significant. Harper & Row, 471 U.S. at 566

(“In view of the expressive value of the excerpts and their

key role in the infringing work, we cannot agree with the

Second Circuit that the ‘magazine took a meager, indeed

an infinitesimal amount of Ford’s original language.’”

(citation omitted)). Google is correct that the Ninth

Circuit has said that, “this factor will not weigh against

an alleged infringer, even when he copies the whole work,

if he takes no more than is necessary for his intended

use.” Id. (citing Kelly v. Arriba Soft Corp., 336 F.3d 811,

820-21 (9th Cir. 2003)). But the Ninth Circuit has only

said that is true where the intended use was a transform-

ative one, because the “extent of permissible copying

varies with the purpose and character of the use.” Id.

(quoting Campbell, 510 U.S. at 586-87). Here, we have

found that Google’s use was not transformative and

Google has conceded both that it could have written its

own APIs and that the purpose of its copying was to make

46 ORACLE AMERICA, INC. v. GOOGLE LLC

Android attractive to programmers. “Necessary” in the

context of the cases upon which Google relies does not

simply mean easier.

In assessing factor three, the district court explained

that the “jury could reasonably have found that Google

duplicated the bare minimum of the 37 API packages, just

enough to preserve inter-system consistency in usage,

namely the declarations and their SSO only, and did not

copy any of the implementing code,” such that Google

“copied only so much as was reasonably necessary.”

Order Denying JMOL, 2016 WL 3181206, at *10. In

reaching this conclusion, the court noted that the jury

could have found that the number of lines of code Google

duplicated was a “tiny fraction of one percent of the

copyrighted works (and even less of Android, for that

matter).” Id. We disagree that such a conclusion would

have been reasonable or sufficient on this record.

On remand, the parties stipulated that only 170 lines

of code were necessary to write in the Java language. It is

undisputed, however, that Google copied 11,500 lines of

code—11,330 more lines than necessary to write in Java.

That Google copied more than necessary weighs against

fair use. See Monge, 688 F.3d at 1179 (finding that,

where the copyist “used far more than was necessary” of

the original work, “this factor weighs against fair use”).

And, although Google emphasizes that it used a small

percentage of Java (11,500 lines of declarations out of

roughly 2.86 million lines of code in the Java SE librar-

ies), it copied the SSO for the 37 API packages in its

entirety.

The district court emphasized Google’s desire to “pre-

serve inter-system consistency” to “avoid confusion among

Java programmers as between the Java system and the

Android system.” Order Denying JMOL, 2016 WL

3181206, at *10-11. As we noted in the prior appeal,

however, Google did not seek to foster any “inter-system

ORACLE AMERICA, INC. v. GOOGLE LLC 47

consistency” between its platform and Oracle’s Java

platform. Oracle, 750 F.3d at 1371. And Google does not

rely on any interoperability arguments in this appeal. 11

Google sought “to capitalize on the fact that software

developers were already trained and experienced in using

the Java API packages at issue.” Id. But there is no

inherent right to copy in order to capitalize on the popu-

larity of the copyrighted work or to meet the expectations

of intended customers. Taking those aspects of the copy-

righted material that were familiar to software developers

to create a similar work designed to be popular with those

same developers is not fair use. See Dr. Seuss Enters.,

109 F.3d at 1401 (copying the most famous and well

recognized aspects of a work “to get attention” or “to avoid

the drudgery in working up something fresh” is not a fair

use (quoting Campbell, 510 U.S. at 580)).

Even assuming the jury accepted Google’s argument

that it copied only a small portion of Java, no reasonable

jury could conclude that what was copied was qualitative-

ly insignificant, particularly when the material copied

was important to the creation of the Android platform.

Google conceded as much when it explained to the jury

the importance of the APIs to the developers it wished to

attract. See Tr. of Proceedings held on 5/16/16 at 106:8-

11 In the prior appeal, we noted that “Google’s com-

petitive desire to achieve commercial ‘interoperability’ . . .

may be relevant to a fair use analysis.” Oracle, 750 F.3d

at 1376-77. But, although several amici in this appeal

discuss interoperability concerns, Google has abandoned

the arguments it once made about interoperability. This

change in course is not surprising given the unrebutted

evidence that Google specifically designed Android to be

incompatible with the Java platform and not allow for

interoperability with Java programs. Id. at 1371.

48 ORACLE AMERICA, INC. v. GOOGLE LLC

14, Oracle Am., Inc. Google Inc., No. 3:10-cv-3561 (N.D.

Cal. May 20, 2016), ECF No. 1930; Id. at 134:6-11. In-

deed, Google’s own expert conceded that “it was a sound

business practice for Google to leverage the existing

community of developers, minimizing the amount of new

material and maximizing existing knowledge,” even

though Google also conceded that it could have written

the APIs differently to achieve the same functions. Id. at

144:5-10. For these reasons, we find that the third factor

is, at best, neutral in the fair use inquiry, and arguably

weighs against such a finding.

Factor 4: Effect Upon the Potential Market

The fourth and final factor focuses on “the effect of the

use upon the potential market for or value of the copy-

righted work.” 17 U.S.C. § 107(4). This factor reflects the

idea that fair use “is limited to copying by others which

does not materially impair the marketability of the work

which is copied.” Harper & Row, 471 U.S. at 566-67. It

requires that courts “consider not only the extent of

market harm caused by the particular actions of the

alleged infringer, but also whether unrestricted and

widespread conduct of the sort engaged in by the defend-

ant . . . would result in a substantially adverse impact on

the potential market for the original.” Campbell, 510 U.S.

at 590 (citation and quotation marks omitted).

The Supreme Court once said that factor four is “un-

doubtedly the single most important element of fair use.”

Harper & Row, 471 U.S. at 566. In its subsequent opinion

in Campbell, however, the Court emphasized that none of

the four factors can be viewed in isolation and that “[a]ll

are to be explored, and the results weighed together, in

light of the purposes of copyright.” 510 U.S. at 578; see

also Infinity Broad., 150 F.3d at 110 (“Historically, the

fourth factor has been seen as central to fair use analysis,

although the Supreme Court appears to have backed

away from this position.” (internal citation omitted)). The

ORACLE AMERICA, INC. v. GOOGLE LLC 49

Court has also explained that “[m]arket harm is a matter

of degree, and the importance of this factor will vary, not

only with the amount of harm, but also with the relative

strength of the showing on the other factors.” Campbell,

510 U.S. at 590 n.21.

The Ninth Circuit recently indicated that likely mar-

ket harm can be presumed where a use is “commercial

and not transformative.” Disney Enters., Inc. v. VidAngel,

Inc., 869 F.3d 848, 861 (9th Cir. 2017) (citing Leadsinger,

512 F.3d at 531, for the proposition that, where a use

“was commercial and not transformative, it was not error

to presume likely market harm”). That presumption

allegedly traces back to Sony Corp. of America v. Univer-

sity City Studios, Inc., 464 U.S. 417, 451 (1984), where the

Supreme Court stated that, “[i]f the intended use is for

commercial gain, that likelihood [of future harm] may be

presumed. But if it is for a noncommercial purpose, the

likelihood must be demonstrated.” The Supreme Court

has since clarified that market impact, “no less than the

other three [factors], may be addressed only through a

‘sensitive balancing of interests’” and that earlier inter-

pretations of Sony to the contrary were incorrect. Camp-

bell, 510 U.S. at 590 n.21 (quoting Sony, 464 U.S. at 455

n.40); 12 see also Monge, 688 F.3d at 1181 (cautioning

against overemphasis on a presumption of market harm

after Campbell). On this point, we must apply clear

Supreme Court precedent rather than the more recent

Ninth Circuit’s statements to the contrary.

12 The Court noted, however, that “what Sony said

simply makes common sense: when a commercial use

amounts to mere duplication of the entirety of an original,

it clearly ‘supersede[s] the objects,’ of the original and

serves as a market replacement for it, making it likely

that cognizable market harm to the original will occur.”

Id. at 591.

50 ORACLE AMERICA, INC. v. GOOGLE LLC

In evaluating the fourth factor, courts consider not on-

ly harm to the actual or potential market for the copy-

righted work, but also harm to the “market for potential

derivative uses,” including “those that creators of original

works would in general develop or license others to devel-

op.” Campbell, 510 U.S. at 592; see also A&M Records,

239 F.3d at 1017 (“[L]ack of harm to an established mar-

ket cannot deprive the copyright holder of the right to

develop alternative markets for the works.”). A court can

therefore consider the challenged use’s “impact on poten-

tial licensing revenues for traditional, reasonable, or

likely to be developed markets.” Swatch Grp. Mgmt.

Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 91 (2d Cir.

2014) (citation omitted); see also Seltzer, 725 F.3d at 1179

(“This factor also considers any impact on ‘traditional,

reasonable, or likely to be developed markets.’” (citation

omitted)).

Also relevant to the inquiry is the fact that a copy-

right holder has the exclusive right to determine “when,

‘whether and in what form to release’” the copyrighted

work into new markets, whether on its own or via a

licensing agreement. Monge, 688 F.3d at 1182 (quoting

Harper & Row, 471 U.S. at 553). Indeed, the Ninth

Circuit has recognized that “[e]ven an author who had

disavowed any intention to publish his work during his

lifetime” was entitled to copyright protection because:

(1) “the relevant consideration was the ‘potential market’”

and (2) “he has the right to change his mind.” Worldwide

Church, 227 F.3d at 1119 (citing Salinger v. Random

House, Inc., 811 F.2d 90, 99 (2d Cir. 1987)); see also Micro

Star v. Formgen Inc., 154 F.3d 1107, 1113 (9th Cir. 1998)

(noting that only the copyright holder “has the right to

enter that market; whether it chooses to do so is entirely

its business”).

Here, the district court concluded that the jury “could

reasonably have found that use of the declaring lines of

code (including their SSO) in Android caused no harm to

ORACLE AMERICA, INC. v. GOOGLE LLC 51

the market for the copyrighted works, which were for

desktop and laptop computers.” Order Denying JMOL,

2016 WL 3181206, at *10. In reaching this conclusion,

the district court noted that, before Android was released,

Sun made all of the Java API packages available for free

and open source under the name OpenJDK, subject only

to the terms of a general public license. Id. According to

the district court, the jury could have concluded that

“Android’s impact on the market for the copyrighted

works paralleled what Sun already expected via its Open-

JDK.” Id.

On appeal, Oracle argues that the evidence of actual

and potential harm stemming from Google’s copying was

“overwhelming,” and that the district court erred as a

matter of law in concluding otherwise. Appellant Br. 52.

We agree.

First, with respect to actual market harm, the evi-

dence showed that Java SE had been used for years in

mobile devices, including early smartphones, prior to

Android’s release. Specifically, the jury heard testimony

that Java SE was already in smartphones, including

Blackberry, SavaJe, Danger, and Nokia. That Android

competed directly with Java SE in the market for mobile

devices is sufficient to undercut Google’s market harm

arguments. With respect to tablets, the evidence showed

that Oracle licensed Java SE for the Amazon Kindle.

After Android’s release, however, Amazon was faced with

two competing options—Java SE and Android—and

selected Android. 13 The jury also heard evidence that

13 Google submits that the jury could have discount-

ed this evidence because the Java SE APIs were available

for free through OpenJDK. But Amazon moved from Java

to Android—not to OpenJDK. And the evidence of record

makes clear that device manufacturers did not view

52 ORACLE AMERICA, INC. v. GOOGLE LLC

Amazon later used the fact that Android was free to

negotiate a steep discount to use Java SE in its newer e-

reader. In other words, the record contained substantial

evidence that Android was used as a substitute for Java

SE and had a direct market impact. Given this evidence

of actual market harm, no reasonable jury could have

concluded that there was no market harm to Oracle from

Google’s copying.

Even if there were a dispute about whether Oracle

was licensing Java SE in smartphones at the time An-

droid launched, moreover, “fair use focuses on potential,

not just actual, market harm.” Monge, 688 F.3d at 1181.

Accordingly, although the district court focused exclusive-

ly on the market it found that Oracle had already en-

tered—desktops and laptops—it should have considered

how Google’s copying affected potential markets Oracle

might enter or derivative works it might create or license

others to create. See Campbell, 510 U.S. at 590. Licens-

ing Java SE for smartphones with increased processing

capabilities was one such potential new market. And the

fact that Oracle and Google engaged in lengthy licensing

negotiations demonstrates that Oracle was attempting to

license its work for mobile devices, including

smartphones. 14 Smartphones were, therefore, a “tradi-

OpenJDK as a commercially viable alternative to using

Java SE because any improvement to the packages in

OpenJDK had to be given away for free to the Java com-

munity.

14 Of course, the fact that those negotiations were

not successful does not factor into the analysis. Campbell,

510 U.S. at 585 n.18 (“If the use is otherwise fair, then no

permission need be sought or granted. Thus, being denied

permission to use a work does not weigh against a finding

of fair use.”). Such evidence was only relevant to show

Oracle’s interest in the potential market for smartphones.

ORACLE AMERICA, INC. v. GOOGLE LLC 53

tional, reasonable, or likely to be developed market.” See

Swatch Grp., 756 F.3d at 91; see also Seltzer, 725 F.3d at

1179.

Google argues that a reasonable jury could have con-

cluded that Java SE and Android did not compete in the

same market because Oracle: (1) was not a device maker;

and (2) had not yet built its own smartphone platform.

Neither argument has merit. That Oracle never built a

smartphone device is irrelevant because potential mar-

kets include licensing others to develop derivative works.

See Campbell, 510 U.S. at 592. The fact that Oracle had

not yet developed a smartphone platform is likewise

irrelevant as a matter of law because, as Oracle submits,

a market is a potential market even where the copyright

owner has no immediate plans to enter it or is unsuccess-

ful in doing so. See Worldwide Church, 227 F.3d at 1119;

Micro Star, 154 F.3d at 1113. Even assuming a reasona-

ble jury could have found no current market harm, the

undisputed evidence showed, at a minimum, that Oracle

intended to license Java SE in smartphones; there was no

evidence in the record to support any contrary conclusion.

Because the law recognizes and protects a copyright

owner’s right to enter a “potential market,” this fact alone

is sufficient to establish market impact.

Given the record evidence of actual and potential

harm, we conclude that “unrestricted and widespread

conduct of the sort engaged in by” Google would result in

“a substantially adverse impact on the potential market

for the original” and its derivatives. See Campbell, 510

U.S. at 590 (citation and quotation marks omitted).

Accordingly, the fourth factor weighs heavily in favor of

Oracle.

Balancing the Four Factors

Having undertaken a case-specific analysis of all four

factors, we must weigh the factors together “in light of the

purposes of copyright.” Campbell, 510 U.S. at 578. We

54 ORACLE AMERICA, INC. v. GOOGLE LLC

conclude that allowing Google to commercially exploit

Oracle’s work will not advance the purposes of copyright

in this case. Although Google could have furthered copy-

right’s goals of promoting creative expression and innova-

tion by developing its own APIs, or by licensing Oracle’s

APIs for use in developing a new platform, it chose to copy

Oracle’s creative efforts instead. There is nothing fair

about taking a copyrighted work verbatim and using it for

the same purpose and function as the original in a com-

peting platform.

Even if we ignore the record evidence and assume

that Oracle was not already licensing Java SE in the

smartphone context, smartphones were undoubtedly a

potential market. Android’s release effectively replaced

Java SE as the supplier of Oracle’s copyrighted works and

prevented Oracle from participating in developing mar-

kets. This superseding use is inherently unfair.

On this record, factors one and four weigh heavily

against a finding of fair use, while factor two weighs in

favor of such a finding and factor three is, at best, neutral.

Weighing these factors together, we conclude that

Google’s use of the declaring code and SSO of the 37 API

packages was not fair as a matter of law.

We do not conclude that a fair use defense could never

be sustained in an action involving the copying of comput-

er code. Indeed, the Ninth Circuit has made it clear that

some such uses can be fair. See Sony, 203 F.3d at 608;

Sega, 977 F.2d at 1527-28. We hold that, given the facts

relating to the copying at issue here—which differ mate-

rially from those at issue in Sony and Sega—Google’s

copying and use of this particular code was not fair as a

matter of law.

III. GOOGLE’S CROSS-APPEAL

Google cross-appeals from the district court’s final

judgment solely to “preserv[e] its claim that the declara-

ORACLE AMERICA, INC. v. GOOGLE LLC 55

tions/SSO are not protected by copyright law.” Cross-

Appellant Br. 83. Specifically, Google maintains that the

declaring code and SSO are: (1) an unprotected “method of

operation” under 17 U.S.C. § 102(b), because they allow

programmers to operate the pre-written programs of the

Java language; and (2) subject to the merger doctrine. We

resolved these issues against Google in the first appeal,

finding that the declaring code and the SSO of the 37 API

packages at issue are entitled to copyright protection.

Oracle, 750 F.3d at 1354.

Google did not petition this court for rehearing and

instead filed a petition for a writ of certiorari asking the

Supreme Court to determine whether our copyrightability

determination was in error. Oracle responded to the

petition, and the Supreme Court invited the Solicitor

General to express the views of the United States. The

government agreed that Oracle’s computer code is copy-

rightable, and the Supreme Court denied Google’s petition

in June 2015. Google, Inc. v. Oracle Am., Inc., 135 S. Ct.

2887 (2015).

Google neither asks the panel for relief on the copy-

rightability issue nor offers any arguments on that issue.

We remain convinced that our earlier copyrightability

decision was consistent with Congress’s repeated direc-

tives on the subject. Accordingly, we provide no relief to

Google on its cross-appeal, finding a ruling on it unneces-

sary.

IV. CONCLUSION

For the foregoing reasons, we conclude that Google’s

use of the 37 Java API packages was not fair as a matter

of law. We therefore reverse the district court’s decisions

denying Oracle’s motions for JMOL and remand for a trial

on damages. The district court may determine the appro-

priate vehicle for consideration of infringement allega-

tions regarding additional uses of Android. We dismiss

Google’s cross-appeal.

56 ORACLE AMERICA, INC. v. GOOGLE LLC

REVERSED AND REMANDED;

CROSS-APPEAL DISMISSED

COSTS

No costs.