Appeals from the United States District Court for the
Northern District of California in No. 3:10-cv-03561-WHA,
Judge William H. Alsup.
Joshua Rosenkranz, Orrick, Herrington & Sutcliffe 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.
Joseffer, King & Spalding LLP, Washington, DC, argued for
defendant-cross-appellant. Also represented 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, Washington, DC,
for amicus curiae The Copyright Alliance. Also represented by
Erica Lauren Ross.
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.
Bobrow, Weil, Gotshal & Manges LLP, Redwood Shores, CA,
for amici curiae Eugene H. Spafford, Zhi Ding, Adam Porter,
Ken Castleman. Also represented by Amanda Branch, Aaron Y.
Thomas Cottreau, Clifford Chance Rogers & Wells LLP,
Washington, DC, for amici curiae Scott McNealy, Brian
Robert Lewis, Lewis & Llewellyn LLP, San Francisco, CA,
for amicus curiae Ralph Oman. Also represented by Evangeline
H. Rotstein, Mitchell, Silberberg & Knupp, LLP, Los
Angeles, CA, for amici curiae Motion Picture Association of
America, Inc., Independent Film & Television Alliance.
Also represented by J. Matthew Williams, Washington, DC.
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 represented 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 Competitive Carriers
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 Photographic Artists,
Professional Photographers of America. Also represented by
Scott J. Sholder.
Richard L. Rainey, Covington & Burling LLP, Washington,
DC, for amicus curiae BSA | The Software Alliance. Also
represented by Peter Andrew Swanson.
Jonathan Band, Jonathan Band PLLC, Washington, DC, for amicus
curiae Computer & Communications Industry Association.
Also represented by Matthew Schruers, Computer &
Communications Industry Association, Washington, DC.
Michael Barclay, Electronic Frontier Foundation, San
Francisco, CA, for amici curiae Electronic Frontier
Foundation, Public Knowledge. Also represented by Mitchell L.
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.
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. Cohen, 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, Matthew Sag, Pamela Samuelson,
Jessica Sibley, Joshua David Sarnoff, Lea Shaver, Christopher
Jon Sprigman, Katherine J. Strandburg, Rebecca Tushnet,
Jennifer M. Urban.
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
Kurzweil, 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
Stroustrup, 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.
A. Lemley, Durie Tangri LLP, San Francisco, CA, for amici
curiae Engine Advocacy, The App Developers Alliance, GitHub,
Inc. Also represented by Joseph Gratz, Clement Roberts.
O'Malley, Plager, and Taranto, Circuit Judges.
O'MALLEY, CIRCUIT JUDGE.
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") 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 application programming interface ("API
packages") in its Android operating system infringed
Oracle's patents and copyrights.
first trial, the jury found that Google infringed
Oracle's copyrights in the Java Standard Edition
platform, but deadlocked on the question of whether
Google's copying was a fair use. 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 protection. 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 appropriate, on damages. Id. at
subsequently filed a petition for certiorari on the
copyrightability determination. The Supreme Court called for
the views of the Solicitor General, who expressed agreement
with our determination and recommended denying review. The
Supreme Court denied certiorari in 2015. Google Inc. v.
Oracle Am., Inc., 135 S.Ct. 2887 (2015) (Mem.).
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.
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 copyrightability.
Cross-Appellant Br. 83.
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 dismiss
predecessor, Sun Microsystems, Inc. ("Sun"),
developed the Java platform for computer programming in the
1990s, and Oracle purchased Sun in 2010. The Java platform is
software used to write and run programs in the Java
programming language. It allows programmers 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.
Java 2 Standard Edition ("Java SE") of the platform
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
pre-written code to build certain functions into their own
programs rather than write their own code to perform those
functions from scratch. They are shortcuts."
Oracle, 750 F.3d at 1349. The pre-written programs
are organized into packages, classes, and methods.
Specifically, 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,
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 method
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
2008, Java SE included 166 API packages divided into 3, 000
classes containing more than 30, 000 methods. 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
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 language, "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
undisputed that anyone using the Java programming language
can write their own library of pre-written programs to carry
out various functions.
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
compatibility 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.
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 "Java
quickly became the leading platform for developing and
running apps on mobile phones." Appellant Br. 9.
Google's Android Platform
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.
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 verbatim 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.
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 manufacturers 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 Android. Appellant Br. 15. Even customers who
stayed with Oracle cited Android as a reason to demand
discounts. 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 generation
first appeal, we held that the declaring code and the SSO of
the 37 API packages are entitled to copyright 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 defense.
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
transformative, 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.
the pendency of the first appeal, Google's Android
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 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
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. Specifically, 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.
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.
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.
moved for JMOL, which the district court denied. 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
Denying JMOL, 2016 WL 3181206, at *5. "That the 62
'necessary' 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.
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 reasonable jury could have concluded that,
"while the declaring code and SSO were creative enough
to qualify for copyright protection, " they were not
"highly creative, " and that "functional
considerations predominated in their design."
Id. at *10.
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 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 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 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.
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 original 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.
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 ...