Intellectual Property

SCOTUS Copyright Forecast: Sunny And Fair

This SCOTUS decision does little to reassure those who believe that Google leads a charmed life as the efficient infringer extraordinaire.

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Pardon the punny title, but there is simply no way that an IP columnist can write a column this week about anything other than the already-controversial Google v. Oracle SCOTUS decision. (For a great recap of the majority opinion authored by Justice Breyer, I commend the SCOTUSBlog opinion analysis authored by Ronald Mann, available here.) As everyone is aware, the dispute between Google and Oracle stemmed from Google’s copying — now koshered by SCOTUS as fair use — of over 10,000 lines of code from Sun Microsystem’s (acquired by Oracle) Java programming language. Google used Java as a basis for Android, the multibillion dollar per year generating mobile operating system that powers the majority of non-Apple smartphones. As my nonsoftware programming mind understands it, Google had the option of basing Android on a completely new programming language, but chose to use at least some Java underpinnings to save third-party Android developers from having to start from scratch coding-wise when they wrote programs for Android.

Again, I am not a software person, but I do recognize the passions that the ongoing saga between Oracle and Google has inflamed. On the one hand, there are those who saw Oracle’s attempt to get Android royalties from Google as a blatant money-grab, made more egregious by the fact that Java was freely available to begin with. On the other, there is apparently a growing discontent with Google’s penchant for escaping infringement liability, no matter how egregiously the company behaves with non-Google creators of intellectual property. All told, it is no surprise that even post-SCOTUS decision, the consensus has quickly formed that this is a case that will be discussed for some time going forward.

In thinking about what this SCOTUS decision teaches us, I found myself going back to a 2018 post I wrote for our Markman Advisors blog, just after the Federal Circuit threw out Google’s fair use triumph before a California jury. In the immediate aftermath of that now-SCOTUS reversed Federal Circuit decision, I chose to ask three questions. First, I asked if “Jury Verdicts Mean Nothing?” with respect to mixed fact-law questions like fair use in copyright cases or obviousness in patent disputes. Second, I asked if Oracle could be accused of “Forum Shopping?” in its decision to try and steer the case from the 9th to the Federal Circuit by including a patent cause of action. Third, I asked if Google was “Free to Infringe?” even as the Federal Circuit rejected Google’s argument that because Android was free, its use of Java code was not commercial in nature. Let’s see how the answers to those questions look now that SCOTUS has spoken.

On the question of whether jury verdicts with respect to mixed fact-law questions are inherently susceptible to overturning on appeal before the Federal Circuit, I think the answer remains a resounding yes. Moreover, I agree with the conclusion of many, including Mann, that the jury verdict on fair use in this case was basically “irrelevant.” Sure, the Federal Circuit and SCOTUS disagreed on the ultimate fair use finding. But the lack of deference to the jury spoke volumes in both fora, confirming that when it comes to thorny IP legal doctrines both SCOTUS and the Federal Circuit are content to have judges, rather than juries, do the heavy lifting in terms of deciding which position has merit. In my view, fair use now joins patent eligibility as a question that district court judges will be tempted to reach as a matter of law early in cases. Whether copyright holders face the same grim fate as most software patent holders filing infringement cases is an open question. But I fully anticipate that defendants will continue to do their utmost to get such issues ruled on early — and by the judge, rather than a jury.

What about the forum shopping question? Whether or not you endorse Oracle’s decision to steer the case to the Federal Circuit, second-guessers post-SCOTUS decision will surely point to the history of SCOTUS overturning Federal Circuit decisions as a reason for why Oracle’s strategy was a questionable one. At the same time, it is not hard to imagine that Oracle’s best shot on a no fair use finding lay with the Federal Circuit, making things a wash and confirming that the whole forum shopping discussion is a sideshow at best. So we won’t talk about it anymore.

Finally, this SCOTUS decision does little to reassure those who believe that Google leads a charmed life as the efficient infringer extraordinaire, the IP equivalent of Marvel’s Sorcerer Supreme. Back in 2018, however, I did note that Google actually pays significant royalty sums to Microsoft for a patent license concerning Android, which in my view reinforces two things, at minimum. First, that even Google will pay when confronted by an IP owner of comparable resources, especially if those resources include a mammoth patent portfolio. Second, the old adage about layering your IP because you never know which piece of IP will prove valuable in the future will definitely be a relevant one for software companies going forward. Oracle learned that lesson the hard way in this case, despite its best efforts to combine patent and copyright claims in a two-pronged initial assault. But Google is a formidable IP adversary, as it has proven time and again. Including on that sunny and fair spring morning in D.C. when SCOTUS announced Google’s latest IP victory.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

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Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

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