NYIPLA Encourages the CAFC to Separate the District Court's Blurred Lines Between Fair Use and Derivative Works for “Transformative Use” of Computer Programming 

by Robert J. Rando

On Friday, February 17, 2017, the New York Intellectual Property Law Association (“NYIPLA” or “Association”) filed an amicus brief with the United States Court of Appeals for the Federal Circuit in Oracle America, Inc. v. Google Inc., Nos. 2017-1118, -1202 (Fed. Cir.), where the court is being asked to set parameters for the scope of the fair use defense in copyright law, including what constitutes a “transformative use” of computer programming code.  Daniel J. Brooks was the principal attorney on the brief and Annemarie Hassett, NYIPLA President-Elect, and Charles R. Macedo, Board Member and Representative  of the Amicus Briefs Committee, also participated.

The case involves the use by Google, Inc. (“Google”) of packages of Java computer source code owned by Oracle America, Inc. (“Oracle”). The Association filed its brief in support of neither party and took no position as to: (i) whether there could conceivably be some rationale for finding that the use in question could reasonably be considered transformative; and, (ii) on the ultimate question of fair use. 

The Association strongly questioned the district court’s proffered rationale, that Google’s use could reasonably be viewed as transformative, as flawed and contrary to applicable law.  The Association expressed its sincere concern that the decision blurs the line between infringing derivative works and transformative fair uses in a way that could unduly restrict the scope of copyright protection afforded to authors by the Copyright Act. Specifically, the Association urged the Appeals Court to focus on two major points: (1) The district court’s holding that a reasonable jury could have found a simple change in context to be transformative, in the absence of any alteration of the original work or any purpose distinct from the purpose of the original, is flawed and inconsistent with applicable law; (2) Finding transformative use based solely upon a change of context where the original work has not been altered or used for a transformative purpose imperils the copyright holders’ exclusive right to create derivative works.

In 2010, Oracle sued Google in the United States District Court for the Northern District of California for patent and copyright infringement arising from Google’s unauthorized use in its Android technology of Oracle’s Java application programming interfaces (“API packages”).  A jury found no patent infringement, but found Google liable for copyright infringement, and deadlocked on Google’s fair use defense to the copyright claims.  After the verdict, the district court found that the replicated API packages were not copyrightable as a matter of law and dismissed the copyright claims pertaining to those packages. Oracle appealed the dismissal of its copyright claims to the Federal Circuit Court of Appeals, which held that the declaring code and the structure, sequence, and organization of the Java API packages were entitled to copyright protection and that the verdict of copyright infringement should be reinstated.  The case was remanded for another jury trial on Google’s fair use defense. 

 At the second jury trial, Google prevailed on fair use. The verdict did not make any specific findings as to any of the four fair use factors. In denying Oracle’s Rule 50 motions for judgment as a matter of law, the district court concluded that a reasonable jury could have found in favor of Google on each of the four fair use factors.  With respect to the transformativeness prong of the first fair use factor, the court held that the jury could reasonably have found that Google’s selection of some, but not all of Oracle’s Java API packages, “with new 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” because the “copyrighted works were designed and used for desktop and laptop computers.”  The court reached this conclusion despite recognizing that Oracle’s code had been copied by Google without alteration and for an identical purpose.  This appeal followed.

 In its brief, which is available at https://www.nyipla.org/nyipla/AmicusBriefsNews.asp, the Association provides background on the role of transformativeness in the fair use analysis and argues that, transformativeness involves more than a mere change in context, but requires an alteration to the expressive content, message, or purpose of a work. The Association characterizes the change in context as serving a limited role in the analysis; and, only as it relates to the change in purpose. The Association argues further that in denying Oracle’s Rule 50 motions, the district court departed from the Ninth Circuit applicable precedents on transformative use.

The following excerpt is taken from the brief:

 Fair use, as codified in Section 107 of the Copyright Act, does not employ the word “transformative.”  In contrast to the statutory fair use provision, the statutory definition of a derivative work expressly speaks of an original work being “transformed.”  Section 101 of the Copyright Act defines a “derivative work” 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.”

 As the lower federal courts began to apply Campbell’s transformative use standard, the potential tension between the first fair use factor’s emphasis on transformativeness and the copyright owner’s exclusive right to create or license others to create transformative derivative works came into focus.  Castle Rock Entm’t, Inc. v. Carol Publ’g Grp., Inc., 150 F.3d 132, 143 (2d Cir. 1998) (noting “potential source of confusion in our copyright jurisprudence over the use of the term ‘transformative’” but asserting that “[a]lthough derivative works that are subject to the author’s copyright transform an original work into a new mode of presentation, such works – unlike works of fair use – take expression for purposes that are not ‘transformative’”).   

 Judge Leval, who coined the use of the term “transformative” in fair use jurisprudence, addressed this interplay between first factor transformativeness and the right to create derivative works, which, by definition, transform a preexisting work, in Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015).  Writing for the Second Circuit, Judge Leval explained, “The statutory definition suggests that derivative works generally involve transformations in the nature of changes of form.”  804 F.3d at 215 (citing 17 U.S.C. § 101) (emphasis in original).  Derivative works “ordinarily are those that re-present the protected aspects of the original work, i.e., its expressive content, converted into an altered form, such as the conversion of a novel into a film, the translation of a writing into a different language . . . or other similar conversions.”  Id. at 225 (internal citation omitted).  “By contrast, copying from an original for the purpose of criticism or commentary on the original or provision of information about it, tends more clearly to satisfy Campbell’s notion of the ‘transformative’ purpose involved in the analysis of Factor One.”  Id. at 215-16.

 Applying this distinction, if Google engaged in exact copying of the Java declaring code and SSO of the API packages, without altering their expressive content or message, and in order to use them in the Android for the identical purpose they serve in Java, but used them in the different context of smartphones or tablets instead of desktops or laptops, this would appear to be a change in form, the hallmark of a derivative work, rather than a fair use, which alters the original for a transformative purpose.  Whether characterized as a change in form, medium, or context, Judge Leval’s statutory interpretation would appear to indicate that, if Google used Oracle’s computer code without alteration and for an identical purpose, that use was derivative rather than transformative. To hold otherwise would blur the line between permissible transformative fair uses and infringing derivative works and could result in the impairment of the derivative works right.