Amicus Curiae Brief — Google LLC, Petitioner v. Oracle America, Inc.

Supreme Court briefFeb 19, 2020

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No. 18-956

In the

Supreme Court of the United States

Google LLC,

Petitioner,

Oracle America, Inc.,

Respondent.

On Writ of Certiorari to the United States

Court of A ppeals for the Federal Circuit

BRIEF OF AMICUS CURIAE THE ASSOCIATION

OF AMERICAN PUBLISHERS, INC. IN

SUPPORT OF RESPONDENT

Robert W. Clarida

Reitler K ailas

& Rosenblatt LLC

885 Third Avenue, 20th Floor

New York NY 10022

(212) 209-3050

Maria A. Pallante

Counsel of Record

A llan A dler

A ssociation of A merican

Publishers

455 Massachusetts Avenue, NW,

Suite 700

Washington, DC 20001

(202) 347-3375

mpallante@publishers.org

Counsel for Amici Curiae

294221

(800) 274-3321 • (800) 359-6859

TABLE OF CONTENTS

Page

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . . i

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . iii

INTEREST OF THE AMICUS CURIAE . . . . . . . . . . . 1

SUMMARY OF ARGUMENT . . . . . . . . . . . . . . . . . . . . 1

ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

UNDER FUNDAMENTAL COPYRIGHT

PRINCIPLES, GOOGLE DIRECTLY

INFRINGES ORACLE’S EXCLUSIVE

RIGHTS IN THE JAVA CODE . . . . . . . . . . . . . . 3

II. T H E C OU RT S HOU L D RE J EC T

GOOGLE’S MERGER ARGUMENT . . . . . . . . 6

III. T H E C OU RT S HOU L D RE J EC T

GOOGLE’S FAIR USE ARGUMENT . . . . . . . 11

A. Google’s Use Is Not Transformative . . . . . 11

B. The Federal Circuit Reached The

Cor r e c t Conclu sion Under T he

Statutory Factors . . . . . . . . . . . . . . . . . . . . . 16

The Federal Circuit Correctly

Weighed the First Factor . . . . . . . . . . . 17

Table of Contents

Page

2. A micus Takes No View With

Respect to the Federal Circuit’s

Weighing of the Second Factor . . . . . . 18

The Federal Circuit Correctly

Det er m i ned T hat the T h i rd

Factor Does Not Favor Google . . . . . . 19

4. The Federal Circuit Correctly

Weighed the Fourth Factor . . . . . . . . . 20

The Federal Circuit Correctly

Balanced the Statutory Factors . . . . . 24

IV. THE FEDERAL CIRCUIT CORRECTLY

REVERSED THE JURY AS TO FAIR

USE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28

iii

TABLE OF CITED AUTHORITIES

Page

Cases

A&M Records, Inc. v. Napster, Inc.,

239 F.3d 1004 (9th Cir. 2001) . . . . . . . . . . . . . . . . . 17-18

American Geophysical Union v. Texaco Inc.,

37 F.3d 881 (2d Cir. Oct. 28, 1994), as amended,

60 F.3d 913 (2d Cir. Oct. 28, 1994), reh’g denied,

1994 U.S. App. LEXIS 36735

(2d Cir. Dec. 23, 1994) . . . . . . . . . . . . . . . . . . . . . . 17, 21

Atari, Inc. v. North Am. Philips Consumer

Elecs. Corp.,

672 F.2d 607 (7th Cir. 1982) . . . . . . . . . . . . . . . . . . . . . 4

Authors Guild, Inc. v. HathiTrust,

755 F.3d 87 (2d Cir. 2014) . . . . . . . . . . . . . . . . . 4, 14, 25

Authors Guild v. Google, Inc.,

804 F.3d 202 (2d Cir. 2015) . . . . . . . . . . . . . . . . . . . . . 15

Baltimore & Carolina Line v. Redman,

55 S. Ct. 890 (1935) . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

Cambridge Univ. Press v. Albert,

906 F.3d 1290 (11th Cir. 2018) . . . . . . . . . . . . . . . 22-23

Campbell v. Acuff-Rose Music Corp.,

510 U.S. 569 (1994) . . . . . . . . . . . . . . . . . . . . . . . passim

Capitol Records LLC v. ReDigi Inc.,

910 F.3d 649 (2d Cir. 2018) . . . . . . . . . . . . . . . . . . 15, 23

Cited Authorities

Page

Castle Rock Entm’nt, Inc. v.

Carol Publ’g Group, Inc.,

150 F.3d 132 (2d Cir. 1998) . . . . . . . . . . . . . . . 10, 14, 23

Clean Flicks of Colo. v. Soderbergh,

433 F. Supp. 2d 1236 (D. Colo. 2006) . . . . . . . . . . . . . 23

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

499 U.S. 340 (1991) . . . . . . . . . . . . . . . . . . . . . . 6, 10, 19

Folsom v. Marsh,

9 F. Cas. 342 (D. Mass. Oct. 1841) . . . . . . . . . . . . . . . 16

Harper & Row v. Nation Enters.,

471 U.S. 539 (1985) . . . . . . . . . . . . . . . . . . 17, 18, 21, 26

Higgins v. Detroit Educ. Television Found.,

4 F. Supp. 2d 701 (E.D. Mich. 1998) . . . . . . . . . . . . . 23

Infinity Broadcast Corp. v. Kirkwood,

150 F.3d 104 (2d Cir. 1998) . . . . . . . . . . . . . . . . . . . . . 14

Jacobson v. Deseret Book Co.,

287 F.3d 936 (10th Cir. 2002) . . . . . . . . . . . . . . . . . . . . 4

Ledbetter v. Goodyear Tire & Rubber Co., Inc.,

127 S. Ct. 2162 (2007) . . . . . . . . . . . . . . . . . . . . . . 26, 27

Mac’s Shell Service, Inc v.

Shell Oil Products Co. LLC,

130 S. Ct. 1251 (2010) . . . . . . . . . . . . . . . . . . . . . . . . . 27

Cited Authorities

Page

Monge v. Maya Magazines, Inc.,

688 F.3d 1164 (9th Cir. 2012) . . . . . . . . . . . . . . . . . . . 20

Princeton Univ. Press v.

Michigan Document Serv.,

99 F.3d 1381 (6th Cir. 1996), rev’g,

74 F.3d 1512, (6th Cir. 1996) . . . . . . . . . . . . . . . . . . . . 23

Sega Enters. Ltd. v. Accolade, Inc.,

977 F.2d 1510 (9th Cir. 1992) . . . . . . . . . . . . . . . . . . . . 5

Sheldon v. Metro-Goldwyn Pictures Corp.,

81 F.2d 49 (2d Cir. 1936) . . . . . . . . . . . . . . . . . . . . . . . . 5

Snyder v. Phelps,

131 S. Ct. 1207 (2011) . . . . . . . . . . . . . . . . . . . . . . . . . 27

Sony Computer Entm’t, Inc. v. Connectix Corp.,

203 F.3d 596 (9th Cir. 2000) . . . . . . . . . . . . . . . . . . . . . 5

Sony Corp. of Am. v.

Universal City Studios, Inc.,

464 U.S. 417 (1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

Sturdza v. United Arab Emirates,

281 F.3d 1287 (D.C. Cir. 2002) . . . . . . . . . . . . . . . . . . . 4

Television Digest Inc. v. United States Tel. Ass’n,

841 F. Supp. 5 (D.D.C. 1993) . . . . . . . . . . . . . . . . . . . . 17

Cited Authorities

Page

Statutes and Other Authorities

17 U.S.C. § 106 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

17 U.S.C. § 107 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim

Computer Software Copyright Act of 1980,

Pub. L. No. 96-517, 94 Stat. 3015 (1980) . . . . . . . . . . . 3

H.R. Rep. 94-1476 (1976) . . . . . . . . . . . . . . . . . . . . . . 25, 27

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

103 Harv. L. Rev. 1104 (March 1990) . . . . . . . . . . . . 12

NAT’L COMM’N ON NEW TECH. USES OF

COPYRIGHTED WORKS, FINAL REPORT

(1979) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

Oman, Ralph, COMPUTER SOFTWARE AS

COPYRIGHTABLE SUBJECT MATTER:

ORACLE V. GOOGLE, LEGISLATI V E

INTENT, AND THE SCOPE OF RIGHTS IN

DIGITAL WORKS, 31 Harvard Journal of Law

& Technology, Special Issue (Spring 2018) . . . . . . . . 3

Sup. Ct. R. 37.6 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

INTEREST OF THE AMICUS CURIAE1

The Association of American Publishers, Inc. (“AAP”)

represents book, journal, and education publishers in

the United States on matters of law and policy, including

major commercial houses, small and independent houses,

and university presses and other noncommercial scholarly

publishers. 2 AAP has a particular mandate and expertise

in copyright law, seeking to promote an effective and

enforceable framework that enables publishers and their

technology partners to create and disseminate original

works of authorship through ever-evolving business

models to the benefit of their customers and the worldwide

public. AAP believes it is vital to maintain the traditional

balance that Congress and this Court have established

between authors and users of creative works, including by

maintaining effective norms of licensing for downstream

use.

SUMMARY OF ARGUMENT

The judgment of the Federal Circuit should be

affirmed. The Court below held that the activities

1. Pursuant to Rule 37.6, counsel for amicus curiae states

that no counsel for a party authored this brief in whole or in part.

No counsel or party made a monetary contribution intended to

fund the preparation of this brief, and no person other than amicus

or its counsel made such a contribution. The parties have consented

to the filing of this brief.

2. Maria A. Pallante is President and Chief Executive

Officer of the Association of American Publishers and served as

U.S. Register of Copyrights from 2011 to 2016. Allan Adler is

Executive Vice President and General Counsel of the Association

of American Publishers. Robert Clarida is a partner at Reitler

Kailas & Rosenblatt LLC.

of Petitioner Google violated the exclusive rights of

Respondent Oracle by copying significant amounts of

code from Oracle’s Java SE software (“Java Code”) into

Google’s Android software without authorization. The

Court correctly rejected the two principal affirmative

defenses proffered by Google, i.e., the merger doctrine

and the fair use defense under § 107 of the Copyright Act.

As the Federal Circuit explained, the merger doctrine

does not apply to Google’s conduct because it is undisputed

that the expression in the Java Code could have been

written in many different ways without impairing its

functionality. The Federal Circuit also correctly held

that Google’s activities did not constitute a fair use under

§ 107 of the Act. The use of the Java Code by Google

was purely commercial, abundant and did not transform

the Code at all, either as to its content or its purpose.

Google’s reproduction and distribution of the Java Code

as incorporated into Android directly superseded the

legitimate market for the Java Code.

ARGUMENT

The Federal Circuit correctly applied fundamental

Java Code was an infringement of Oracle’s exclusive

rights in that Code. This Court should affirm the Federal

Circuit’s decision.

When creating the statute that became the Copyright

Act of 1976 (the “Act”), Cong ress engaged in an

extensive legislative process under the so-called CONTU

Commission3 and concluded that no sui generis protection

was necessary or appropriate for computer programs.4 As

recommended by CONTU, such works are protected under

the Act as literary works. A straightforward application

of the Act here, consistent with the rulings of this Court

and the lower courts in countless copyright disputes under

the Act, requires affirmance.

U N D E R F U N DA M E N T A L C O P Y R I G H T

PRINCIPLES, GOOGLE DIRECTLY INFRINGES

ORACLE’S EXCLUSIVE RIGHTS IN THE JAVA

CODE

Section 106 of the Act enumerates six exclusive rights

enjoyed by the owner of a copyrighted work, including at

§106(2) the right “to prepare derivative works based on the

copyrighted work.” A “derivative work” is defined in §101

as “a work based upon one or more preexisting works, such

as a translation, musical arrangement, dramatization,

fictionalization, motion picture version, sound recording,

art reproduction, abridgment, condensation, or any

other form in which a work may be recast, transformed,

or adapted. A work consisting of editorial revisions,

annotations, elaborations, or other modifications which,

3 . NAT ’ L COMM ’ N ON N EW T ECH. USE S OF

COPYRIGHTED WORKS, FINAL REPORT (1979)(“CONTU

Report”).

4. CONTU Report at 12; Computer Software Copyright

Act of 1980, Pub. L. No. 96-517, §10, 94 Stat. 3015, 3018 (1980).

See generally, Oman, Ralph, COMPUTER SOFT WARE

AS COPYRIGHTABLE SUBJECT MATTER: ORACLE V.

GOOGLE, LEGISLATIVE INTENT, AND THE SCOPE OF

RIGHTS IN DIGITAL WORKS, 31 Harvard Journal of Law &

Technology, Special Issue (Spring 2018).

as a whole, represent an original work of authorship, is a

‘derivative work.’”5

Android is a derivative work of the Java Code,

because it incorporates significant portions of the Java

Code verbatim. The standard for determining whether

a derivative work infringes copyright in the underlying

work is substantial similarity, i.e. whether the second

work copies “material of substance and value“ from the

original.6 Here, Google copied more than 11,000 lines of

code that Google itself characterizes as vital to the success

of Android. Petitioner’s Brief (“Pet. Br.”) at 26. Google

also distributed that copied code as incorporated into

Android. Thus Google infringes Oracle’s exclusive rights

in the Java Code.

5. Even though the statute uses the term “transformed”

in the definition of “derivative work,” it is not the case that

every derivative work is “transformative” in the sense used by

this Court in Campbell v. Acuff-Rose Music Corp., 510 U.S. 569

(1994), which was in turn based on a 1990 law review article by

Judge Pierre N. Leval, see infra, not on the text of the statute.

As Judge Leval recognized in Authors Guild v. Google, Inc., 804

F.3d 202, 216 (2d Cir. 2015), “oversimplified reliance” on the term

transformative ignores the fact that “paradigmatic examples of

derivative works include the translation of a novel into another

language, the adaptation of a novel into a movie or play, or the

recasting of a novel as an e-book [citations omitted]. While such

changes can be described as transformations, they do not involve

the kind of transformative purpose that favors a fair use finding.”

6. Jacobson v. Deseret Book Co., 287 F.3d 936, 943 (10th Cir.

2002); Sturdza v. United Arab Emirates, 281 F.3d 1287, 1296 (D.C.

Cir. 2002); Atari, Inc. v. North Am. Philips Consumer Elecs.

Corp., 672 F.2d 607, 614 (7th Cir. 1982).

Android also contains significant amounts of original

expression created by Google, but that additional

expression does not provide a defense to the infringement.

A film derived from a book likewise contains significant

new expression, such as cinematography, music and set

design, but these do not enter into the infringement

analysis if an author asserts a claim against the film. As

Learned Hand long ago recognized, “no plagiarist can

excuse the wrong by showing how much of his work he

did not pirate.” 7 Nor does the downstream creativity of

third-party developers play any role in analyzing Google’s

infringement. The code written by these developers may

or may not be infringing, but that issue is not before the

Court. This case is accordingly unlike Sony Corp. of Am.

v. Universal City Studios, Inc.8 (“Sony”), frequently cited

by Google and its amici. In Sony, this Court assessed

the potential liability of Sony as an indirect, contributory

infringer. Sony did not copy or otherwise use the

copyrighted works of Respondent Universal, but merely

sold equipment that allowed users to do so. The case

turned on whether the users of the Sony equipment were

making infringing uses. Here, the conduct of the thirdparty Android developers is irrelevant to establishing

Google’s infringement liability.

This case also bears no relation to the so-called

“reverse engineering” cases like Sega Enters. Ltd. v.

Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992) and Sony

Computer Entm’t, Inc. v. Connectix Corp., 203 F.3d 596

(9th Cir. 2000), because in those cases the copied code

7. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49,

56 (2d Cir. 1936).

8. 464 U.S. 417 (1984).

was not incorporated into the defendant’s own product.

It was used only to gain access to unprotectable ideas

and processes in the plaintiffs’ works for purposes of

achieving interoperability. The alleged infringement was

the defendant’s “intermediate” copying of plaintiff’s code

as a step in creating a non-infringing, interoperable end

product. Here, it is undisputed that Google’s Android

incorporates the Java Code into the end product, and that

the end product is not interoperable with Java.

II. THE COURT SHOULD REJECT GOOGLE’S

MERGER ARGUMENT

In the initial appeal of this action to the Federal

Circuit, 9 that Court correctly held that the Java Code

was copyrightable under the standard of copyrightability

established by this Court in Feist Publ’ns, Inc. v. Rural

Tel. Serv. Co.10 Google here raises the merger doctrine

as a defense, Pet. Br. at 19-34, arguing that the copied

declarations in the Java Code “can only be written one

way to perform their function of responding to the

calls already known to Java developers.” Id. at 19. That

argument is premised on a definition of “function” that

has no support in the Act or the decisions of this or any

other Court. When CONTU and Congress referred to

“function” in connection with computer programs, they

spoke in terms of the “electromechanical functioning

of a machine,” CONTU Report at 20, or the “certain

result” that is brought about when the program is used

in a computer, as set forth in the definition of “computer

program” in § 101 of the Act: “A ‘computer program’ is

9. 750 F.3d 1339, 1381 (Fed. Cir. 2014).

10. 499 U.S. 340 (1991).

a set of statements or instructions to be used directly or

indirectly in a computer in order to bring about a certain

result.”

The function on which Google rests its merger

argument is not the “electromechanical functioning of a

machine” but simply the “function” of replicating elements

of Java. The CONTU Report recognizes (at 20) that

merger might apply if specific instructions in computer

code were “the only and essential means of accomplishing

a given task,” but provides no support whatsoever for the

idea that the “given task” can itself be defined in such a

way that there is only one way to accomplish it. Google’s

definition is a tautology: The “task” as Google defines it is

to perform a function (any function) using the Java Code,

therefore the Java Code is the only and essential means

of accomplishing that task. Google argues that there is

only one way to write code that “correctly” or “properly”

responds to the developers calls, Pet. Br. at 21, but the

only thing that makes the copied code in Android “correct”

or “proper” is that it duplicates Java. In short, Google is

conflating the task with the means of expression used to

carry it out.

If Google’s novel definition of “function” were

accepted, it would eviscerate copyright protection for

software. To illustrate by example, Microsoft PowerPoint

is a very popular program, and many students learn to

use it in school. If a student decides that she would like to

be able to do PowerPoint projects at home, on her laptop,

any third party developer could, under Google’s merger

theory, sell that student an exact, unauthorized copy

of PowerPoint because its “function,” according to the

developer, is to respond to the commands already known

to PowerPoint users. The ability of a piece of software to

appeal to users who already know certain other software

is a feature, not a function.

Even Google seems to recognize the absurdity of

such a definition of “function,” because it defines the term

differently elsewhere in Petitioner’s Brief. Google asserts

(at 44) that the function of the Java Code, or indeed of any

declaring code, is “to point a computer to the creative

implementing code.” It then asserts at 46 that declarations

“serve two relevant functions: connecting the developer’s

applications to the methods’ implementing code and

defining the organizational structure in which the methods

are stored.” These are electromechanical functions, this is

what CONTU and Congress spoke to, and what the merger

doctrine addresses. These electromechanical functions

can be accomplished many different ways, however, and

Google admits that Sun could have written Java differently

to accomplish these functions. Pet Br. at 31. Ex ante, there

was no reason, no functional constraint, that required the

Java Code to be expressed in exactly the way Sun wrote it.

Merger is therefore inapplicable. Google’s contention that

the Java Code “can only be written one way to perform

[its] function of responding to the calls already known

to Java developers,” Pet. Br. at 19 (emphasis added), is

beside the point. What Java developers may or may not

know is irrelevant to the “electromechanical functioning

of a machine.” The machine doesn’t care. Neither does the

The true “function” that is served by Google’s use

of the Java Code is not performed by a computer at all;

it is the purely marketplace-driven, profit-maximizing

function of attracting third-party developers to write

Android apps. Google argues (at 31) that “once Sun

released Java SE, Google had to use the declarations from

the Java SE libraries to respond properly to the existing

calls that developers then knew” (emphasis added), but

the only consequence of doing otherwise would have

been slower adoption of Android by developers, as Google

admits: “any successful new product must be as compatible

as possible with the relevant existing skills and experience

of the users it seeks to support.” Id. at 26 (emphasis

added). Later in its brief (at 39) Google describes the use

of the Java Code as an “accelerant” for Android in the

marketplace. Not an electromechanical necessity, but a

feature that would help attract developers, because they

could “avoid the drudgery” of learning new code.11 Google

further argues (at 48) that Java was “not suitable” to the

smartphone market, so it appears that Google wanted this

marketplace advantage badly enough to incorporate suboptimal code into Android, rather than writing new code

better suited to the electromechanical realties of modern

smartphones, which Google admits (at 14) it could “easily”

have done. That looks less like innovation, and more like

the pursuit of a larger market by riding the coattails of an

earlier innovator, one who was ready, willing and able to

enter into a license agreement with Google for precisely

this use.

Even among the developer community, Google admits

that there were “countless new developers” of Android

products who did not even know Java before Android

11. Campbell v. Acuff-Rose Music Corp., 510 U.S. 569, 579

(1994) (“Campbell”). As Campbell makes clear, “avoid[ing] the

drudgery of working up something fresh” is exactly what the

doing.

launched. Pet. Br. at 9. This, in itself, refutes Google’s

proposed definition of the “function” served by the Java

Code, unless Google contends that the Code somehow

performs a different function depending on whether

the developer using it previously knew Java. Again,

the machine doesn’t care. The existence of “countless”

Android developers without Java experience belies the

argument that the Java Code’s expression is the only way

for Android to operate, because Java provided no benefit

to them at all. Those developers could just as well have

written their Android apps without using the Java Code.

The Code cannot be subject to merger for some developers,

but not for others.

Google relies on Feist v. Rural Tel. Serv. Co.12 , in

which this Court held that facts are unprotectable by

not a fact discovered in the world. It is instead more akin

to the alleged “facts” of the Seinfeld television series

that the Second Circuit found protectable in Castle Rock

Entm’t, Inc. v. Carol Publ’g Group, Inc.13 In Castle Rock,

defendant published a book of trivia questions about the

series, called The Seinfeld Aptitude Test, which contained

643 questions about the characters, dialogue, and plot

details of 84 of the show’s 86 episodes. The defendant

argued, inter alia, that the questions dealt only with

facts –what did character X do in episode Y? The district

court granted summary judgment for Castle Rock, and

the Second Circuit affirmed, reasoning that the facts

depicted in a Seinfeld episode are utterly unlike the facts

depicted in a biography, historical text, or compilation.

Seinfeld is fiction; both the “facts” in the various episodes,

12. 499 U.S. 340 (1991).

13. 150 F.3d 132 (2d Cir. 1998).

and the expression of those facts, were created by the

show’s producers. So too here. It may be a “fact” that

Java requires a programmer to use declaration X to call

process Y, just as it’s a fact that Kramer buys a cigar

store Indian in episode XYZ of Seinfeld. And while there

may well be scenarios where the use of such “facts” that

“owe their origin to an act of authorship” would constitute

fair use, it is inconceivable that fair use would apply to

the incorporation of such author-created “facts” in a

subsequent work where, as with the Seinfeld trivia book,

the later work is commercial, lacks any transformative

purpose, and takes such “facts” for use in an amount that

is significant in both quantitative and qualitative terms.

To that extent, Java-experienced Android developers

are analogous to fans who write Seinfeld fan fiction of

this nature. Just as the latter know the backstory and

character attributes of Jerry, Kramer, George and

Elaine, and use that knowledge to create new expression

without “the drudgery of working up something fresh,”

the developers use their knowledge of Java, and the

Java expression provided to them by Google, to create

new code in Android. But in neither case is the preexisting expression necessary to the function of the new

expression. It may be convenient, an “accelerant,” but the

merger doctrine does not exist for the sake of increasing

the convenience of making derivative works.

III. THE COURT SHOULD REJECT GOOGLE’S FAIR

USE ARGUMENT

Google’s Use Is Not Transformative

Apart from and in addition to considering the

statutory factors in 17 U.S.C. 107, see infra, the Circuit

Courts have followed this Court’s holding in Campbell

v. Acuff-Rose Music Corp.14 that a court should consider

whether the defendant’s use of copyrighted expression is

“transformative,” that is, whether it “employ[s] the quoted

matter in a different manner or for a different purpose

from the original.” The language is drawn from a 1990

Harvard Law Review article by Judge Pierre N. Leval

(now of the Second Circuit), Toward a Fair Use Standard,

which proposed the term “transformative use” to describe

acceptable types of fair uses:

The use must be productive and must employ

the quoted matter in a different manner or for a

different purpose from the original. A quotation

of copyrighted material that merely repackages

or republishes the original is unlikely to pass

the test; in Justice Story’s words, it would

merely “supersede the objects” of the original.

If, on the other hand, the secondary use adds

value to the original—if the quoted matter

is used as raw material, transformed in the

creation of new information, new aesthetics,

new insights and understandings—this is the

very type of activity that the fair use doctrine

intends to protect for the enrichment of

society. Transformative uses may include

criticizing the quoted work, exposing the

character of the original author, proving a

fact, or summarizing an idea argued in the

original in order to defend or rebut it. They

also may include parody, symbolism, aesthetic

declarations, and innumerable other uses.15

14. 510 U.S. 569 (1994).

15. 103 Harv. L. Rev. 1104, 1111 (March 1990).

This Court adopted this approach in Campbell16 as

a non-statutory consideration that can affect analysis

of both the first and fourth statutory factors. If the

defendant’s use is transformative, this can reduce the

effect of factors, such as commerciality and market harm,

which would otherwise weigh against the defendant’s use

under the statute. The Federal Circuit correctly held (886

F.3d 1179, 1199) that Google’s use of the Java Code was

not transformative, 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.”

This Court’s only extant decision on a claim of

transformative use was in the specific context of parody

in Campbell, where the expressive content of plaintiff’s

work itself was altered for purposes of commenting on that

particular work. No such commentary is claimed by Google

here. Android made no comment on the Java Code, but

merely incorporated it into Android for the same purpose

that it serves in Java, i.e. to “call” operations by use of the

same expression that Java uses to call them. Google and

Amicus Microsoft Corp. assert that the Federal Circuit

erred by taking a “rigid view of the ‘purpose’ of Google’s

reuse” of the Java Code,17 but the Federal Circuit’s view

is no different than that of this Court in Campbell. The

purpose of the Java Code copied into Android is precisely

the same as the purpose it serves in Java.

16. 510 U.S. 569 (1994).

17. See Brief of Amicus Curiae Microsoft Corporation at 27.

Since Campbell, several Circuits have extended

the transformative use analysis to reach various forms

of electronic duplication of copyrighted works in their

entirety, with no change in their content, where the use

arguably serves a fundamentally different purpose. This

Court has not yet accepted a case where it could have ruled

on applying transformative use in this manner. Prior to

Campbell, a similar argument had been rejected by the

Second Circuit in Infinity Broadcast Corp. v. Kirkwood,18

for example, which held that the transmission of radio

programming to distant cities by telephone, for purposes

such as allowing sponsors to verify the airing of ads, was

not transformative. Infinity Broadcast emphasized the

fact that the defendant did not transform the plaintiff’s

works, but merely repackaged them, in their entirety, in

a different format.

E ve n w h e r e s u c h a n e x p a n s i ve n o t i o n o f

transformativeness has been applied in the Circuits,

however, merely making a work available on new platform

to increase its accessibility or utility is not enough. As the

Second Circuit held in Authors Guild, Inc. v. HathiTrust,19

“added value or utility is not the test: a transformative

work is one that serves a new and different function from

the original work.” See also id. at 97 (no transformative

use found where defendant merely recasts “an original

work into a new mode of presentation,” quoting Castle

Rock Entm’t, Inc. v. Carol Publ’g Grp., Inc., 150 F.3d 132,

143 (2d Cir. 1998)).

18. 150 F.3d 104 (2d Cir. 1998).

19. 755 F.3d 87, 96 (2d Cir. 2014).

The Second Circuit’s decision in Authors Guild v.

Google, Inc., 20 (Leval, J.)(“Google Books”) makes clear,

at 214, that even when a use “expands [the] utility” of

the original work, the second work must be “different in

purpose, character, expression, meaning and message”

from the copied material. In that case, Google had scanned

large numbers of copyright-protected books in order to

make a searchable database, which the Court found did not

allow users to access a significant amount of the content.

Under those specific conditions, the Second Circuit held

that the purpose of Google’s book copying was “to make

available significant information about those books”

(emphasis original), and not merely to reproduce the text

in electronic form. See id. at 217 and 221 (“while Google

makes an unauthorized copy of the entire book, it does not

reveal that digital copy to the public”) (emphasis original).

In fact, the Google Books court states in so many words

that “recasting of a novel as an e-book or an audiobook”

does not “involve the kind of transformative purpose that

favors a fair use finding.” Id. at 215.

The Second Circuit has since made clear in Capitol

Records LLC v. ReDigi Inc.21 that any use which serves as

an “effective substitute” for the original cannot properly

qualify as transformative. ReDigi at 27, 29 (unauthorized

creation of “effective substitute” for plaintiff’s work

impedes the purpose of copyright). The record in this

case indicates that Android was an effective substitute for

Java, to the extent that Oracle’s own market for issuing

paid licenses for Java was diminished once Google began

making Android available for free.

20. 804 F.3d 202 (2d Cir. 2015).

21. 910 F.3d 649 (2d Cir. 2018).

Accordingly, the Federal Circuit was correct to hold

that Google’s use of the Java Code was not transformative.

B. The Federal Circuit Reached The Correct

Conclusion Under The Statutory Factors

The 1976 Copyright Act codifies the defense of fair

use, which courts had recognized as a non-statutory

equitable defense since early in the 19th century. 22 The

text of Section 107 of the Act reads as follows:

Notwithstanding the provisions of section

106, the fair use of a copyrighted work,

including such use by reproduction in copies or

phonorecords or by any other means specified

by that section, for purposes such as criticism,

comment, news reporting, teaching (including

multiple copies for classroom use), scholarship,

or research, is not an infringement of copyright.

In determining whether the use made of a work

in any particular case is a fair use the factors

to be considered shall 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

22. See Folsom v. Marsh, 9 F. Cas. 342 (D. Mass. Oct. 1841).

(4) the effect of the use upon the potential

market for or value of the copyrighted work.

The fact that a work is unpublished shall not

itself bar a finding of fair use if such finding

is made upon consideration of all the above

factors. 23

Because the statute recognizes fair use as an

affirmative defense to a claim of infringement, the burden

of persuading the court that a use is fair ultimately rests

with the defendant. 24

The Federal Circuit Correctly Weighed the

First Factor

The Federal Circuit correctly weighed the first factor

against Google. Whether or not Google charges users and

developers directly for its Android software, the courts

have established that commercial gain by the defendant is

not limited to the direct receipt of revenue from the sale of

the infringing work. 25 In A&M Records, Inc. v. Napster,

23. 17 U.S.C. §107.

24. American Geophysical Union v. Texaco, Inc. 60 F.3d 913

(2d Cir. 1994), at 918 (“Fair use serves as an affirmative defense

to a claim of copyright infringement, and thus the party claiming

that its secondary use of the original copyrighted work constitutes

a fair use typically carries the burden of proof as to all issues in

the dispute.”). See also Campbell v. Acuff-Rose Music, Inc., 510

U.S. 569, 590 (1994).

25. See Harper & Row v. Nation Enters., 471 U.S. 539 (1985)

(“Harper & Row”). See also Television Digest Inc. v. United States

Tel. Ass’n, 841 F. Supp. 5, (D.D.C. 1993) (photocopying of plaintiff’s

Inc., 26 for example, the Ninth Circuit held that users of the

defendant Napster’s peer-to-peer file sharing service were

making commercial use of the plaintiff’s sound recordings

whether or not the users sold or otherwise exploited the

recordings for private gain—“repeated and exploitative

unauthorized copies of copyrighted works were made to

save the expense of purchasing authorized copies.” This

Court has held in Harper & Row 27 that “[t]he crux of the

profit/nonprofit distinction is not whether the sole motive

of the use is monetary gain but whether the user stands

to profit from exploitation of the copyrighted material

without paying the customary price.”

Because the copying of the Java Code was not

transformative, the first factor weighs heavily against fair

use, and the Federal Circuit correctly so held. 886 F.3d

at 1203 (“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”).

Amicus Takes No View With Respect

to the Federal Circuit’s Weighing of the

Second Factor

Under the second statutory fair use factor, the Federal

Circuit held that the Java Code copied by Google was

newsletter for use by multiple staff members held not fair use; even

if copying was done only for educational and research purposes,

defendant saved money by photocopying one subscription instead

of purchasing the number of subscriptions it actually required).

26. 239 F.3d 1004 (9th Cir. 2001).

27. 471 U.S. at 562.

sufficiently creative to qualify for copyright protection

under the Feist standard, but based on the evidence of

record determined that a reasonable juror “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.” 886 F.3d at 1205. Amicus takes no view with respect

to this conclusion.

The Federal Circuit Correctly Determined

That the Third Factor Does Not Favor

Google

Because the third factor considers both the quantitative

and qualitative significance of the copied portion, even a

very small taking can weigh against the defendant, as

the Federal Circuit recognized. 886 F.3d at 1207. This

principle was illustrated most notably in Harper & Row,

supra, where this Court held a 300- to 400-word passage28

from Gerald Ford’s book A Time to Heal was sufficient

to constitute infringement and could not be defended as

a fair use in light of its importance to the work. Harper

& Row established that “a taking may not be excused

merely because it is insubstantial with respect to the

infringing work,” which in that case was an entire issue

of The Nation magazine.

Here, the Federal Circuit recognized under the third

factor that “there is no inherent right to copy in order to

28. This Court did not indicate the precise word count of

the taking, because it included both verbatim copying and close

paraphrase, which the Court set forth in an appendix to the

decision.

capitalize on the popularity of the copyrighted work or to

meet the expectations of intended customers. Taking those

aspects of the copyrighted material that were familiar to

software developers to create a similar work designed to

be popular with those same developers is not fair use.”

886 F.3d at 1206-1207.

The Federal Circuit Correctly Weighed the

Fourth Factor

Under the fourth statutory factor, the Federal Circuit

correctly found that the unauthorized use of the Java Code

in Android caused both actual and potential market harm

to Oracle, therefore the fourth factor weighed “heavily”

in Oracle’s favor. 886 F.3d at 1210. Cognizable market

harm under the fourth factor includes not only actual or

potential harm to the market for the copyright owner’s

work itself, but also actual or potential harm to “potential

derivative uses” including “those that creators of original

works would in general develop or license others to

develop,” as this Court held in Campbell.29

It was also relevant to the Federal Circuit that a

“when, whether and in what form to release” the work

into new markets, whether directly or through licensing

agreements. 886 F.3d at 1208, quoting Monge v. Maya

Magazines, Inc.30

As this Court recognized in Campbell, it is well

established that market harm can arise from a defendant’s

29. Campbell, 510 U.S. at 592.

30. 688 F.3d 1164, 1182 (9th Cir. 2012).

unlicensed use of material for which a license is readily

available. Beyond the context of parody, which was at issue

in Campbell, American Geophysical Union v. Texaco

Inc. 31 offers the most thorough analysis of lost licensing

fees as a form of fourth-factor market harm. In Texaco,

the defendant’s scientists photocopied journal articles for

use in their research, well beyond the amount of copying

permitted by the license Texaco held from the Copyright

Clearance Center, a non-profit organization that offers

blanket photocopying licenses for many print publications,

including the science journals at issue. The defendant

asserted fair use, claiming, inter alia, that it would be

circular for a court to consider lost license revenues as

part of the fair use determination when no license would be

required if the use were fair. The Second Circuit rejected

that argument:

[N]ot every effect on potential licensing

revenues enters the analysis under the fourth

factor. Specifically, courts have recognized

limits on the concept of “potential licensing

revenues” by considering only traditional,

reasonable, or likely to be developed markets

when examining and assessing a secondary

use’s “effect upon the potential market for or

value of the copyrighted work.” See Campbell,

114 S. Ct. at 1178 (“The market for potential

derivative uses includes only those that creators

of original works would in general develop or

license others to develop.”); Harper & Row, 471

31. 37 F.3d 881 (2d Cir. Oct. 28, 1994), as amended, 60 F.3d

913 (2d Cir. Oct. 28, 1994), reh’g denied, 1994 U.S. App. LEXIS

36735 (2d Cir. Dec. 23, 1994).

U.S. at 568 (fourth factor concerned with “use

that supplants any part of the normal market

for a copyrighted work”) (quoting S. Rep. No.

473, 94th Cong., 1st Sess. 65 (1975)).

. . . Similarly, other courts have found that the

fourth factor will favor the secondary user when

the only possible adverse effect occasioned

by the secondary use would be to a potential

market or value that the copyright holder has

not typically sought to, or reasonably been able

to, obtain or capture. See Twin Peaks Prods.,

[Inc. v. Publications Int’l Ltd.], 996 F.2d 1366,

at 1377 (2d Cir. 1993)(noting that fourth factor

will favor secondary user when use “filled a

market niche that the [copyright owner] simply

had no interest in occupying”); Pacific and

Southern Co. v. Duncan, 744 F.2d 1490, 1496

(11th Cir. 1984), cert. denied, 471 U.S. 1004, 85

L. Ed. 2d 161, 105 S. Ct. 1867 (1985) (noting

that the fourth factor may not favor copyright

owner when the secondary user “profits from

an activity that the owner could not possibly

take advantage of”). 32

The Texaco court went on to conclude that the

mechanism for licensing the precise rights at issue.

Therefore the lost license revenue could be considered as

market harm under the fourth factor.33 See also Cambridge

32. Texaco, 60 F.3d at 929–30 (footnotes omitted) (emphasis

added).

33. “Though the publishers still have not established a

conventional market for the direct sale and distribution of individual

Univ. Press v. Albert, 906 F.3d 1290, 1300 (11th Cir. 2018)

(in case involving electronic library reserves, present

availability of electronic licenses for libraries “strongly

disfavor[s]” fair use). The profitability of the market at

issue is not directly relevant under this formulation. Also,

where a market is “traditional, reasonable or likely to be

developed,” it is generally found cognizable under the

fourth factor even where a particular plaintiff has decided

not to participate in it, such as with the television trivia

books in Castle Rock Entertainment discussed above. 34

Here, there was no need for the Court to weigh

potential market harm because the evidence of actual

harm was “overwhelming,” 886 F.3d at 1209. Prior

to Android, Java had for years been in use on mobile

devices, including smartphones, and the Federal Circuit

articles, they have created, primarily through the Copyright

Clearance Center, a workable market for institutional users to

obtain licenses for the right to produce their own copies of individual

articles via photocopying.” Id. at 936–37; see also Princeton Univ.

Press v. Michigan Document Serv., 99 F.3d 1381, (6th Cir. 1996) (en

banc) (rev’g 74 F.3d 1512, (6th Cir. 1996) and 855 F. Supp. 905, (E.D.

Mich. 1994), cert. denied, 520 U.S. 1156 (1997)(rejecting contention

that consideration of lost licensing revenues under fourth factor was

“circular,” at least where copyright owner had genuine interest in

exploiting same market and had succeeded in doing so).

34. See Castle Rock Entm’nt, Inc. v. Carol Publ’g Group, Inc.,

150 F.3d 132 (2d Cir. 1998); Clean Flicks of Colo. v. Soderbergh,

433 F. Supp. 2d 1236 (D. Colo. 2006); see also Higgins v. Detroit

Educ. Television Found., 4 F. Supp. 2d 701 (E.D. Mich. 1998)

(market harm shown, inter alia, by fact that plaintiff never

collected compulsory license fees offered by defendant under §118

for broadcast of educational public TV show containing excerpt

of plaintiff’s song).

accordingly held “[t]hat Android competed directly with

Java SE in the market for mobile devices is sufficient to

undercut Google’s market harm arguments.” Id.

The Federal Circuit Correctly Balanced

the Statutory Factors

In weighing the statutory factors, the Federal Circuit

(at 1191) correctly cited Campbell’s requirement that all of

them must be weighed together “in light of the purposes

of copyright” 35 (emphasis added). Google and its amici,

however, ask this Court to address numerous policy

objectives – competition, efficiency, device compatibility,

consumer choice – which have little or nothing to do

with the “purposes of copyright,” and which are in any

event properly addressed by Congress in an appropriate

legislative process, as it did with the CONTU Commission,

or when enacting the library provisions in §108, or the

compulsory licenses for the cable television, music and

satellite broadcasting industries, or the Digital Millennium

Amicus National Federation for the Blind provides

a perfect example of Congress’ willingness to consider

such issues, with its call to allow copying of protected

material in connection with “[t]echnology that adapts

devices for use by blind people.” Brief of Amici Curiae

Center for Democracy and Technology, Institute for

Intellectual Property and Social Justice, National

Consumers League, and National Federation for the

Blind Supporting Petitioner, at 7.

35. Quoting Campbell, 510 U.S. at 578.

In fact, Congress considered this precise issue in

drafting the Act, noting in the legislative history of §107

that the goal of making works broadly available for the

blind presents “unique circumstances” that could properly

be addressed under fair use, if publishers failed to make

works available in modified formats for such readers.

The legislative history of § 107, as relied upon by

this Court in Sony, states that making copies accessible

“for the use of blind persons” posed a “special instance

illustrating the application of the fair use doctrine.” 36 The

Committee noted at the time that “special [blind-accessible

formats] . . . are not usually made by the publishers for

commercial distribution.” Id. In light of its understanding

of the market (or lack thereof) for books accessible to

the blind circa 1976, the Committee explained that “the

making of a single copy or phonorecord by an individual

as a free service for a blind persons [sic] would properly

be considered a fair use under section 107.” Id. (emphasis

added). The court in HathiTrust cited this passage to

conclude “[w]e believe this guidance supports a finding of

fair use in the unique circumstances presented by printdisabled readers.” 37

36. H.R. REP. NO. 94-1476, at 73 (1976), reprinted in 1976

U.S.C.C.A.N. 5659, 5686.

37. HathiTrust, 755 F.3d 87, 102. As the Second Circuit

further explains in HathiTrust, “[s]ince the passage of the

1976 Copyright Act, Congress has reaffirmed its commitment

to ameliorating the hardships faced by the blind and the print

disabled. In the Americans with Disabilities Act, Congress

declared that our ‘Nation’s proper goals regarding individuals

with disabilities are to assure equality of opportunity, full

participation, independent living, and economic self-sufficiency

for such individuals.’ 42 U.S.C. § 12101(7). Similarly, the Chafee

Therefore, the legislative history of § 107 itself shows

a specific Congressional understanding that providing

appropriately limited access to copyrighted works to the

print-disabled is a valuable public purpose that courts

should recognize when applying fair use under § 107. With

respect to Petitioner Google here, however, there is no

evidence of record that suggests any particular concern

for blind readers in its copying of the Java Code into

Android. The incorporation of the Java Code, as opposed

to any other functionally equivalent code, does not make

Android any more accessible to the blind. In any event,

the people’s elected representatives in Congress are the

proper decisionmakers for issues of such social import,

involving such numerous and disparate stakeholders.

Amicus AAP respectfully urges this Court not to distort

the Copyright Act Congress wrote in pursuit of the

non-copyright policy objectives raised by Google and its

supporting amici. 38

IV. T H E F EDER A L C I R C U I T C OR R E C T LY

REVERSED THE JURY AS TO FAIR USE

The Federal Circuit properly reversed the decision

of the jury with respect to fair use. Fair use is a mixed

question of fact and law, 39 so even if the jury’s fact-finding

Amendment illustrates Congress’s intent that copyright law make

appropriate accommodations for the blind and print disabled. See

17 U.S.C. § 121.” Id. It is thus the role of Congress to address these

issues, and it has done so on multiple occasions.

38. See Ledbetter v. Goodyear Tire & Rubber Co, Inc. 127

S. Ct. 2162, 2177 (2007) (“We are not in a position to evaluate

Ledbetter’s policy arguments, and it is not our prerogative to

change the way in which the [statute] balances the interests…”)

39. Harper & Row, 471 U.S. 539, 560.

were not to be disturbed, the Federal Circuit’s reversal on

issues of law is nonetheless proper.40 This Court, quoting

the legislative history, has also described fair use as an

“equitable rule of reason,”41 and the Federal Circuit below

was correct to conclude that “[i]f 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.”42

Outside the copyright context, this Court has

frequently affirmed Circuit Court decisions that set

aside jury verdicts on grounds of insufficient evidence or

errors of law below. See, e.g., Baltimore & Carolina Line

v. Redman43; Ledbetter v. Goodyear Tire & Rubber Co.,

Inc.44; Mac’s Shell Service, Inc v. Shell Oil Products Co.

LLC45; Snyder v. Phelps.46

40. Id. (even where facts are sufficient to evaluate all four

factors, court may conclude as a matter of law that the use is not

fair.)

41. Id. quoting H.R. Rep. 94-1476, at 65, U.S.Code Cong. &

Admin.News 1976, p. 5678.

42. 886 F.3d at 1194.

43. 55 S. Ct. 890 (1935) (denying certiorari where Second

Circuit reversed general jury verdict; “[w]hether the evidence was

sufficient or otherwise is a question of law for the court”).

44. 127 S.Ct. 2162 (2007) (affirming reversal of jury verdict;

abrogated by statute).

45. 130 S.Ct. 1251 (2010) (affirming in part reversal of jury

verdict).

46. 131 S.Ct. 1207 (2011) (affirming Fourth Circuit reversal

of jury verdict). In Snyder, a jury imposed liability because the

defendant’s alleged conduct was “outrageous,” but this Court

affirmed reversal of that result because “outrageousness is a

Google’s own view of the sanctity of jury results in

this case is hardly consistent with its own positions below.

Below, Google made exactly the argument it opposes here,

in an effort to overturn the initial jury verdict of prima

facie infringement.

CONCLUSION

Based on the above reasons and authorities, amicus

curiae Association of American Publishers respectfully

urges this Court to affirm the decision of the Federal

Circuit in this action.

DATED: February 19, 2020

New York, New York

Respectfully submitted,

Robert W. Clarida

Reitler K ailas

& Rosenblatt LLC

885 Third Avenue, 20th Floor

New York NY 10022

(212) 209-3050

Maria A. Pallante

Counsel of Record

A llan A dler

A ssociation of A merican

Publishers

455 Massachusetts Avenue, NW,

Suite 700

Washington, DC 20001

(202) 347-3375

mpallante@publishers.org

Counsel for Amici Curiae

highly malleable standard with an inherent subjectiveness about

it which would allow jurors to impose liability on the basis of

jurors’ tastes or views, or perhaps on the basis of their dislike

of a particular expression.” Amicus posits that “transformative

use,” the principal issue in dispute here, is no less malleable and

subjective.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.