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Google Copyright Win Fuels Debate Over When Copying Is Changing

April 8, 2021, 9:51 AM

The U.S. Supreme Court decision in a long-running battle between Alphabet Inc.’s Google and Oracle Corp. sheds new light on the question of how much a creative work has to be altered to avoid running afoul of copyright law.

A 6-2 high court majority took a broad view on “transformativeness” when it validated the software giant’s use of Java coding to create its Android platform. The term refers to the question of whether a work incorporating a protected work altered the original work’s message or purpose.

Courts for decades have struggled with that fluid, subjective area of the law. In the April 5 decision, Justice Stephen Breyer said the court looked at the purpose of the product, rather than the copied part.

“What the majority is saying is you’ve got to look at the ultimate end game here,” copyright attorney J. Michael Keyes of Dorsey & Whitney LLP said. “This is probably the most clear articulation of the concept from the Supreme Court.”

Attorneys say they expect the decision could reverberate in other cases involving new uses of such things as books, music, and art. It also could provide another tool for attorneys defending use of art in a new context.

Others Could Benefit

Much of the software industry, which generally favors a collaborative approach, backed Google’s use of the shortcut reference coding.

But non-tech groups that want more freedom to build on existing works and some scholars also backed Google. Creators in other fields could benefit from the opinion, including artists who integrate photos into their work or writers of fan fiction, copyright professor James Grimmelmann of Cornell University said.

“The decision solidifies a long-standing trend in transformativeness that really focuses on what it’s supposed to: the downstream creativity opened up by the reuse of copyrighted materials,” Grimmelmann said.

That focus and the analysis around different aspects of fair use could be relevant to other cases, even though the court said it wasn’t modifying its fair use precedents for other media.

Drawing Lines

The Supreme Court’s 1994 decision in Campbell v. Acuff-Rose Music Inc. enshrined the term “transformative” as a core consideration for the first of four fair use factors: the nature of the allegedly infringing work. It deemed 2 Live Crew’s rap version of Roy Orbison’s “Pretty Woman” a non-infringing parody that transformed the original.

Courts should consider whether the new work is “altering the original with new expression, meaning or message,” not just whether it’s commercial, the court said. Disputes over that standard have been a copyright staple ever since.

In the longstanding Google-Oracle case, the U.S. Court of Appeals for the Federal Circuit said Google’s copying of 11,500 lines of interoperability code was non-transformative.

But the Supreme Court zoomed out.

The functionality of software, Breyer wrote, means that “virtually any unauthorized use” would serve the same purpose. Rather than “severely limit the scope of fair use,” the court looked at whether Android as a whole, rather than the copied part of Java, was transformative.

Breyer wrote that Google’s use of 0.4% of Java’s code helped create a new platform that could be readily used by programmers, which was “consistent with the creative ‘progress’ that is the basic constitutional objective of copyright itself.”

In a dissent, Justice Clarence Thomas blasted the idea that transformative use of software means helping create new products. That “eviscerates copyright” and “conflates transformative use with derivative use,” he said.

The proper unit of a work to evaluate presents another potentially broad question raised by the decision. Thomas said the majority should have evaluated whether the “declaring code” was transformed, not all of Java. That code was “what attracted programmers” and “made Android a market substitute for potentially licensed derivatives” of Java, he said.

‘Tail Wagging the Dog’

Some attorneys say the overreading on transformativeness has expanded fair use beyond what Congress intended. It is “starting to become controlling” in cases despite being “very ill-defined from a legal perspective,” copyright attorney Marsha G. Gentner of Dykema Gossett PLLC said.

“You can tell this transformativeness argument is the tail wagging the dog. You’re looking at every other factor through that lens instead of looking at each separately,” Gentner said. “It’s the exception that seems to be swallowing the rule in terms of derivative works.”

On March 26, the U.S. Court of Appeals for the Second Circuit ruled Andy Warhol’s use of a photo of Prince wasn’t fair use, a ruling Grimmelmann said was already on shaky ground before the high court ruling in the Google-Oracle case.

But Gentner characterized the Warhol decision as a needed pushback against a trend, including the Second Circuit’s own 2013 Cariou v. Prince decision. The Cariou panel ruled an artist altering appropriated photos by adding splashes of color or slightly distorting to be fair use.

“That Second Circuit panel said we’ve got to put the breaks on this transformative use or we are going to completely eviscerate protection for derivatives,” Gentner said of the Warhol ruling. “I think we’re losing our way on transformativeness. It’s disappointing to see the Supreme Court expanding this transformative use factor further.”

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Renee Schoof at rschoof@bloombergindustry.com; Keith Perine at kperine@bloomberglaw.com

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