The Court of Appeals for the Federal Circuit’s second decision in the long-running Oracle v. Google copyright case is astonishing, since it is the first time a federal appeals court has reversed a jury verdict on copyright fair use. But, it’s not surprising – the CAFC telegraphed its views on Google’s fair use defense in its first decision, which held that Oracle’s Java declaring code was copyright-protected (“Google overstates what activities can be deemed transformative under a correct application of the law”).
Like its 2014 decision, the 2018 decision (decided by the same 3-judge panel) rejecting Google’s fair use defense has triggered a flood of articles analyzing, supporting or criticizing the decision.
Rather than rehash what other commentators have said about this case, here are what I see as the practical take-aways.
First, and most importantly: it ain’t over until it’s over. Google is almost certain to seek Supreme Court review (it did, unsuccessfully, after the 2014 decision – all the more reason to try again, now that it’s facing a trial on damages).
While the Supreme Court takes only a small percentage of cases, there’s a reasonable chance it will take this one. A significant factor will be whether the Solicitor General’s office argues in favor of appeal. It didn’t in 2014, arguing that the CAFC’s decision on copyrightability was correct, that the Java “declaring code” fell within the definition of a computer program —“a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result” — and not the exclusion for a “method of operation” or “system.”
However, the Solicitor General was more receptive to Google’s fair use argument: “legitimate concerns with interoperability and lock-in effects are better addressed through the fair use doctrine ….”
What position it will take on fair use on an appeal from the current decision remains to be seen. However, if I were Google I’d rather be seeking the Solicitor General’s support from an Obama Department of Justice than a Trump DOJ.
That said, the Supreme Court hasn’t decided a copyright fair use case in almost 25 years. It has never decided a software copyright case (although it tried in Lotus v. Borland, where it tied 4-4). This case is a good candidate for Supreme Court review, with or without the Solicitor General’s support, either on the copyrightability issue (the 2014 decision), fair use (the 2018 decision) or both. If nothing else, the Supreme Court could reverse the CAFC on the narrow ground that there were facts on which the jury could have found fair use, and therefore the CAFC went too far in usurping the role of the jury.
Second, this case was decided by the Court of Appeals for the Federal Circuit, supposedly applying Ninth Circuit copyright law. The case is not binding on any other circuit, not even the Ninth Circuit, from which it arose. It’s no secret that the CAFC is not viewed as an influential court on matters of copyright law. In fact, it gets very few copyright appeals (it’s primary role is that of an appeals court for patent cases, and even its performance in that context is controversial). Therefore, the case may have less practical impact than would have been the case if it were decided by the Ninth Circuit or the Second Circuit, the two most influential federal appeal courts on copyright matters.
This is not to say it is unimportant – at least for now, it will have persuasive force for courts adjudging the copyrightability of APIs and fair use in the context of API reproduction.
Third, every fair use case stands on its own set of facts, and therefore it’s difficult to apply precedent in this area of copyright law. This is particularly true with respect to software copyright law. This is both a negative and a positive for companies in a position similar to Google – negative in that uncertainty makes it difficult to chart a liability-free course through the shoals of fair use; positive in that future litigants can distinguish this case, which is based on facts that are highly specific. However, few companies can afford the enormous costs that Google has incurred in the defense of this case, so on balance the decision is a negative for companies seeking to copy an API without the copyright holder’s permission.
The bottom line: if a client asked me whether it could use an API such as Java without permission, I would tell them they could not, since they face a double legal hurdle: first, whatever federal court they find themselves in may follow the CAFC’s 2014 decision, and hold that they’ve violated the copyright owner’s exclusive rights of reproduction and distribution, at the very least. Even the First Circuit, which decided Lotus v. Borland in favor of Lotus on the grounds that the user commands in Lotus 1-2-3 were a “method of operation” is not necessarily safe for defendants. It’s been too long (over 25 years) and an API like Java is too different from the command structure in Lotus for a defendant like Google to feel secure in the First Circuit.
Second, the outcome of a fair use defense is always uncertain – that is baked into the very nature of copyright fair use. If the client is copying the API to achieve interoperability or to move an API to a new hardware platform, it may have a better argument than Google had with Java and Android (Google’s defense failed on both of these issues), but fair use is so unpredictable that in most cases it would be borderline negligence for an attorney to tell a client to rely on it as a defense.
On many occasions I have said that I would love to hear what Google’s copyright counsel advised Google when Google said it wanted to copy parts of the Java API and include it in Google’s Android smart phone operating system. It would be an understatement to say that this would have been very risky advice. Perhaps Google was advised that this course of action involved a big legal risk, and it concluded that the risk was justified. Regardless, unless Google can persuade the Supreme Court to reverse the CAFC, it faces a jury trial that could exceed $20 billion in damages.
You can find plenty of commentary on whether the Ninth Circuit Court of Appeals ruled correctly when it upheld a jury verdict that “Blurred Lines” infringed the copyright in “Got To Give It Up.” But another aspect of this decision has received little attention, and that is a mistake made by trial counsel for the Williams/Thicke defendants in this case.
One of the things that keeps lawyers awake at night (or should) is the risk that they will unknowingly waive a client’s legal rights. I wrote about this in 2008 (Traps for the Unwary – Waiver), and again in 2010 (Mister Softee Bitten By Waiver Under FRCP 50 ). In the 2010 post I observed that Microsoft’s failure to move for judgment as a matter of law (“JMOL” in legal jargon) under Rule 50 may have cost it several hundred million dollars.
The bottom line is that lawyers always need to be alert to the risk of a waiver.
When it comes to waivers during trial, one of the biggest mistakes a lawyer can make is to fail to move for JMOL before jury deliberations, and to then timely renew that motion after trial if the jury verdict makes it necessary. Failure to make these motions puts a losing party at a significant disadvantage on appeal: the party will be precluded from challenging the sufficiency of the evidence supporting the verdict.
This was the error in the Microsoft case, and it occurred once again in Gaye v. Williams. This was a high profile case, and it would be reasonable to expect the lawyers for Williams and Gaye (and their publisher) to avoid this mistake. The Ninth Circuit addressed their failure to file Rule 50 motions as follows:
The Thicke Parties . . . failed to make a Rule 50(a) motion for judgment as a matter of law at trial. Their failure to do so “precludes consideration of a Rule 50(b) motion for judgment as a matter of law.”
This procedural limitation is well worth underscoring. We held, in a case in which a party made an oral Rule 50(a) motion, but failed to renew its motion, that the party “waived its challenge to the sufficiency of the evidence because it did not renew its pre-verdict Rule 50(a) motion by filing a post-verdict Rule 50(b) motion.” . . . We further held that. . . a party’s failure to renew a Rule 50(a) motion “precluded [us] from exercising our discretion to engage in plain error review.” . . . Thus, when we stitch together Rule 50’s requirements with our case law, we are left with this result: Because “a post-verdict motion under Rule 50(b) is an absolute prerequisite to any appeal based on insufficiency of the evidence,” . . . and because a Rule 50(a) motion is, in turn, a prerequisite for a Rule 50(b) motion, . . . an advocate’s failure to comply with Rule 50’s requirements gives us serious pause, and compels us to heighten the level of deference we apply on appeal.
This was an important case, with a lot at stake. After their unsuccessful appeal Thicke and Williams are faced with a $5 million-plus judgment, an ongoing royalty obligation of 50%, and very little chance that they can persuade the Supreme Court to take this case and change the result. Whether the outcome would have been different had their lawyers filed Rule 50 motions is impossible to say. However, in litigation you need every advantage you can get, and waiving your ability to challenge the sufficiency of the evidence on appeal is not a trivial mistake.
To be clear, Federal Rule of Civil Procedure 50 requires that a party move for judgment, with specificity, on every issue before the case goes to the jury (Rule 50(a)), and then again following the verdict if the jury finds against the party (Rule 50(b)). Failing to file either motion will compromise the party’s ability to raise the issue on appeal – in other words, it will result in a waiver.
Why Pharrell Williams and Robin Thicke’s lawyers failed to make these motions will likely never be known. Nor can we know whether, had they done so, the outcome on appeal would have been different. But we, and their clients, can be left to wonder.
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Rule 50(a)(2):
A motion for judgment as a matter of law may be made at any time before the case is submitted to the jury. The motion must specify the judgment sought and the law and facts that entitle the movant to the judgment
Rule 50(b):
If the court does not grant a motion for judgment as a matter of law made under Rule 50(a), the court is considered to have submitted the action to the jury subject to the court’s later deciding the legal questions raised by the motion. No later than 28 days after the entry of judgment . . . the movant may file a renewed motion for judgment as a matter of law.
In only three years the “Jumpman” case has become an established teaching tool in CopyrightX. I’ve taught it in the first class for three years running, and I know many other teaching fellows have as well. It’s a great way to get people who are new to copyright law thinking about copyright issues, in this case whether a photograph by Nike infringes a photo of Michael Jordan taken by Jacobus Rentmeester in 1984. The two photos are show below: Rentmeester’s original on the left, Nike’s allegedly infringing photo on the right. Rentmeester also alleged that Nike’s Jumpman logo (above) infringed the copyright in his photo.
Now, the Ninth Circuit has upheld this ruling. Rentmeester v. Nike (9th Cir. February 27, 2018).
In a lengthy and detailed opinion the court outlined the steps necessary to establish copyright infringement of a photograph, and held that neither Nike’s photo, nor the Jumpman logo (above), infringed Rentmeester’s 1984 photo of Michael Jordan. If anything, this case will now be even more fun to teach to people new to copyright law.
It’s long been widely assumed that in-line linking is not a basis for copyright infringement. Following a recent decision by a Southern District of New York federal judge, that is no longer true.
Justin Goldman took a photograph of Tom Brady. Under the copyright laws, one of his exclusive rights is the right of public display.
Goldman posted the photo to Snapchat. It went viral and was embedded in a tweet. A number of mainstream media publications posted the tweet by embedding the tweet into articles on their sites. Because the tweet was linked “in-line” (displaying content from one site within another via a link), none of the publications downloaded the image, copied it, or stored it on their own servers.
Is this copyright infringement? Specifically, did the embedded tweet violate Goldman’s right of public display?
SDNY judge Katherine Forrest held that it could, and granted summary judgment to Goldman on this issue, leaving for trial or later motions whether Goldman released his image into the public domain by posting it on Snapchat and whether the defendants have a fair use defense.
In her ruling the judge outright rejected the Ninth Circuit’s so-called “server test,” established in Perfect 10 v. Amazon in 2007. This case held, in the context of a search engine, that whether a website publisher is directly liable for infringement based on the public display right turns on whether an image is hosted on the publisher’s own server, or is embedded or linked from a third-party server. Judge Forrest stated:
The plain language of the Copyright Act, the legislative history undergirding its enactment, and subsequent Supreme Court jurisprudence provide no basis for a rule that allows the physical location or possession of an image to determine who may or may not have “displayed” a work within the meaning of the Copyright Act.
However, the judge took pains to distinguish the in-line linking at issue in this case from the images at issue in Perfect 10:
In Perfect 10, Google’s search engine provided a service whereby the user navigated from webpage to webpage, with Google’s assistance. This is manifestly not the same as opening up a favorite blog or website to find a full color image awaiting the user, whether he or she asked for it, looked for it, clicked on it, or not. Both the nature of Google Search Engine, as compared to the defendant websites, and the volitional act taken by users of the services, provide a sharp contrast to the facts at hand.
This dicta may be of some reassurance to Google and other search engines, but it leaves publications that want to engage in in-line linking with a great deal of uncertainty.
As noted, this case is not over – the defendants can proceed to trial (or seek summary judgment) on defenses such as fair use and waiver. In theory, the case could go to the Second Circuit, and the Second Circuit could either adopt or reject the server test. However, it seems unlikely this will happen. Given the potential damages and the costs of defense, the more likely outcome is that the case will settle, leaving this decision on the books. (See update below). If so, the extent to which it will be persuasive on other courts, or even with other judges within the Southern District, is an open question.
In the meantime, online publications face a tough decision: do they pull back on in-line linking based on this decision, or do they assume this case is an outlier, and the server test remains good law? No lawyer can provide an unequivocal answer to this question, other than to say that the legal risks of in-line linking are now greater than they were before this decision was issued.
[Update]: On March 19, 2018, the federal district court judge certified her decision for immediate appeal to the Second Circuit. The order stated, in relevant part, as follows:
The Court credits the parties’ representations that its February 15, 2018 Opinion, . . . has created tremendous uncertainty for online publishers. In this case, the embedded image was hosted on Twitter; given the frequency with which embedded images are “retweeted,” the resolution of this legal question has an impact beyond this case. . . . Accordingly, in order to bring resolution to an important and controlling question of law and to more efficiently resolve this matter, the Court certifies its February 15, 2018 Opinion for interlocutory appeal. All other proceedings are stayed pending this appeal.
[Update 2 – May 2019]: The Second Circuit denied interlocutory review, and the case settled as to all defendants. Accordingly, this case will not be heard by the Second Circuit, and the District Court’s opinion will stand unreviewed.
Copyright law is confusing, but music copyrights take it up a notch. Often, judges and jurors with no background in a music genre are asked to determine whether two works are “substantially similar” after being subjected to esoteric analysis by musicologists who present arguments that even a trained musician might find hard to follow.
However, whether Pharrell Williams and Robin Thicke’s 2012 recording of “Blurred Lines” infringes Marvin Gaye’s 1976 composition of “Got To Give It Up” presents issues of copyright law that are challenging even by the arcane standards of music copyright law.
A quick recap: in 2015 a California jury found that Pharrell Williams and Robin Thicke’s (“Williams”) recording of Blurred Lines infringed the copyright in the composition of Got To Give It Up, and awarded Marvin’s Gaye’s heirs over $7 million in damages. The judge reduced this damages award to $5.3 million, but awarded a “running royalty” of 50% of future songwriter and publication royalties, which over time could be millions more.
After losing the jury trial Williams and Thicke appealed to the Ninth Circuit Court of Appeals, which heard oral argument in October 2017.
The copyright and music communities have been entranced by this case, and there are strong opinions on both sides. How will the Ninth Circuit rule? What arguments did the parties make that will determine the outcome of the appeal?
One way to answer these questions is to read the hundreds of pages of dense legal briefs Williams and Gaye filed with the Ninth Circuit. However, because the Ninth Circuit releases videos of oral arguments (on Youtube, no less) an easier alternative is to watch the video. The parties had only 30 minutes each to make their case, so they were forced to cut the chaff and argue the issues that are most important to their cases. All-in-all, watching the oral argument can be more edifying (and a lot less time consuming) than reading the briefs.
In this case oral argument is particularly interesting for two reasons: first, both sides were represented by preeminent appellate lawyers, two of the best in the country, so the arguments of the parties are well-articulated. Second, the oral argument makes it clear that the appeal may turn on one key issue: in a case claiming infringement of a musical composition created before sound recordings became protected by copyright, is the copyright limited to the sheet music? Or, may the copyright owner go beyond the sheet music deposited with the copyright office and play for the jury a contemporaneous sound recording of the composition?
First, some background on this issue.
It has long been a requirement that to register a copyright a copy of the work be deposited with the Copyright Office – the so-called “deposit copy.”
However, pre-1978 the Copyright Act did not protect sound recordings, only musical compositions. Gaye wrote Give It Up in 1976 and registered the sheet music for the composition, which was little more than a sketch of the melody, lyrics and chords (a “lead sheet”). But, he did not register his recording of the song. Indeed, since sound recordings were not protected the Copyright Office would not have accepted a deposit of the recording.
At the trial of this case, there was never any question that the jury would hear Blurred Lines, the allegedly infringing work. But as the case developed leading up to trial, a hotly contested issue was whether Gaye’s heirs should be limited to the lead sheet of Give It Up, or whether they could also play the recording for the jury.
The trial judge sided with Williams on this issue – he held that the scope of Gaye’s copyright was defined by the sheet music deposit filed with the Copyright Office 40 years earlier. This led to the surprising fact (widely commented on during the trial) that Gaye was never allowed to play Give It Up for the jury.
However, trial are messy, and despite this ruling, during trial (according to Williams), the judge allowed Gaye’s music experts to testify about the sound recording and play musical excerpts based on parts of the sound recording that were not present in the sheet music.
At oral argument before the Ninth Circuit it quickly became clear that whether this was permissible would be the focus of the hearing. Williams’ lawyer argued that the deposit copy (the sheet music submitted to the Copyright Office) strictly defines the scope of the copyright. In other words, Gaye’s copyright is defined, note for note, by the sheet music. Because the judge let Gaye go beyond the sheet music, she argued, the court should order a new trial.
The lawyer for Gaye’s heirs argued that the deposit copy does not define or limit the scope of the copyright in the composition. The best evidence of the composition, she argued, is the studio recording of Give It Up. Therefore, even if the jury did hear evidence present in the sound recording but not in the sheet music, the jury verdict should stand.
Gaye’s lawyer also argued that an expert can testify to what is “implied” in the sheet music – the sheet music deposit can be “interpreted” based on what would be understood by a knowledgeable musician. And, the sound recording may be relevant to that interpretation. Therefore, to the extent that Gaye’s music expert went beyond the sheet music “note for note,” this interpretation was permissible.
The problem, for the lawyers and the judges at the hearing, is that there appear to be no clear precedents to help determine which view of the law is correct. No court has squarely addressed this issue, and there is no legislative history to guide the Ninth Circuit judges.
It’s difficult to predict how the Ninth Circuit will resolve this issue, assuming they address it at all. Gaye’s lawyer had a “Plan B” argument that she stressed to the court, which is that even if the court accepts Williams argument regarding the limiting scope of the deposit copy, Gaye’s expert provided enough evidence for the jury to find in favor of Gaye based on the sheet music alone, without any evidence from the recording. Courts often will usually take the easier of two routes to a decision, so the Ninth Circuit may be able to avoid the issue that attracted most of the time and attention at the hearing by accepting this alternative argument.
However, if the Ninth Circuit does address the relevance of the sound recording to the pre-1978 composition, it will be an important copyright law precedent. There is a large catalog of pre-1978 music that is potentially subject to infringement claims, and the likely success of those claims will be viewed in light of the Ninth Circuit’s holding in this case.
If the Ninth Circuit does uphold the jury verdict in favor of Gaye, I wouldn’t discount the likelihood that Williams and Thicke will seek review by the Supreme Court. $5.3 million is a lot of money, and 50% of the future royalties for Blurred Lines is likely to increase that number substantially. The unusual issue of copyright law at the heart of this case could induce the Supreme Court to accept an appeal of this case.
Lastly, a discussion of the Blurred Lines case would be incomplete without a mention of Skidmore v. Led Zeppelin, in which the heirs of Randy Wolfe (aka Randy California), asserted copyright infringement of the 1967 Spirit song “Taurus” in the opening notes to “Stairway to Heaven.” That case was tried in federal court in California in 2016, and resulted in a jury verdict of non-infringement for Led Zeppelin, the opposite result to Blurred Lines. The judge in that case held that Wolfe’s case would be limited to the pre-1978 deposit copy, and refused to allow Wolfe to play the sound recording of Taurus for the jury. He appears to have been more strict than the judge in Blurred Lines in refusing to allow Wolfe’s expert to provide any interpretation of the sheet music.
The Led Zeppelin case is on appeal to the Ninth Circuit, although oral argument has not yet taken place and therefore any decision is likely to be issued after a decision in Blurred Lines. If the Blurred Lines panel of judges doesn’t decide the sound recording issue, the Ninth Circuit may have a second opportunity to rule on the issue in the Led Zeppelin case. If the Blurred Lines judges do decide that issue, it will be binding throughout the Ninth Circuit, including the court in the Led Zeppelin appeal.
Update: The Ninth Circuit issued its decision on March 21, 2018, upholding the jury verdict. The court did not decide the question of whether Gaye’s evidence should have been limited to the deposit copy, instead deciding the case under what I describe above as Gaye’s “Plan B.” The court stated:
The parties have staked out mutually exclusive positions. The Gayes assert that Marvin Gaye’s studio recording may establish the scope of a compositional copyright, despite the 1909 Act’s lack of protection for sound recordings. The Thicke Parties, on the other hand, elevate the deposit copy as the quintessential measure of the scope of copyright protection. Nevertheless, because we do not remand the case for a new trial, we need not, and decline to, resolve this issue in this opinion. . . . Both experts referenced the sound recording. Both experts agreed that sheet music requires interpretation. The question of whose interpretation of the deposit copy to credit was a question properly left for the jury to resolve.
Second Update: The case was reheard en banc, and the jury’s verdict in favor of Led Zeppelin was upheld. Link
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