Published in Landslide, Volume 14, Number 2, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
Supreme Court Declined to Decide When Software
Is Copyrightable, but Found Google’s Use to Be Fair
U.S.P.Q.2d 391 (2021). The U.S. Supreme Court held that Google’s
use of portions of code providing application programming inter-
faces (APIs) for the Java SE program is fair use and does not
infringe Oracle’s copyrights in the code. Oracle is the owner of
the copyrights in the Java SE program. Oracle sued Google for
copyright infringement based on the incorporation of APIs from
the Java SE program in its Android platform. The Court declined
to opine on the issue of when software is copyrightable. The Court
instead presented its opinion on the presumption that the code is
protectable and focused on whether Google’s use is fair use. The
Court concluded that fair use is a question of fact and law and
that, ultimately, the question involves legal analysis. The Court
then analyzed the four factors for determining fair use and found
that each balanced in favor of a nding of fair use.
The Court considered the purpose and character of Google’s use
and found that even though the use was commercial in nature,
this was not dispositive. The Court also noted that Google copied
no more than the necessary portions of API to create its plat-
form. The Court determined that the portion copied amounted to
only 0.4% of the total code. The Court also found that Google’s
use did not harm the actual or potential markets for the Java
SE program in light of the differences between the markets for
computers and mobile devices.
Filing a Suit without a Registration Constitutes Bad
Liebowitz v. Bandshell Artist Management, 2021 U.S.P.Q.2d
790 (2d Cir. 2021). The Second Circuit upheld sanctions applied
against a copyright attorney who violated multiple court orders
and acted in bad faith. The district court determined that Liebow-
itz brought and maintained a copyright infringement action in
bad faith; that he violated multiple court orders; and that, when
asked about his conduct, Liebowitz lied about it to the court. The
district court imposed sanctions that Liebowitz appealed. The
Second Circuit concluded that the district court acted within the
scope of its discretion and, given Leibowitz’s conduct, the sanc-
tions were reasonable.
Liebowitz led a complaint asserting copyright infringement
by Bandshell of a photograph that was not registered with the U.S.
Copyright Ofce. The district court found that Liebowitz’s actions
in bringing and maintaining the copyright claim were unsup-
ported because the photograph was not registered at the time of
ling the complaint, and the Copyright Act specically requires a
copyright registration or preregistration to bring a claim. Liebow-
itz conceded that he took no subsequent action to ensure that his
representation that the photograph was registered was accurate.
He also admitted that even after being put on notice, he failed
to timely do anything about it. The district court further found
that Liebowitz and his rm’s willful disregard of the registration
requirement was part of a strategy to use litigation to garner settle-
ments even in frivolous or unmeritorious suits.
John C. Gatz is a member of the firm Nixon Peabody in
Chicago, Illinois. Column contributors include the following
writers: Copyrights: Jenni Psihoules, Nixon Peabody LLP;
and Mark R. Anderson, Actuate Law LLC. Patents: Cynthia
K. Barnett, Johnson & Johnson; R. Trevor Carter and Andrew
M. McCoy, Faegre Drinker Biddle & Reath LLP; Robert W.
(Bill) Mason, Southwest Research Institute; and Angelo
Christopher and Ariel Roth, Nixon Peabody LLP. Trade
Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks:
Elizabeth W. Baio, Nixon Peabody LLP; and Amy L. Sierocki,
Blumenfield & Shere LLP.
U.S.P.Q.2d 701 (2021). The Supreme Court vacated and remanded
the decision of the Federal Circuit, which had afrmed the district
court’s decision that assignor estoppel barred Minerva’s invalid-
ity defense. The Supreme Court held that assignor estoppel is well
grounded in centuries-old fairness principles, but assignor estop-
pel applies only when the assignor’s claim of invalidity contradicts
explicit or implicit representations made in assigning the patent.
Because the inventor only assigned rights in the patent application,
the Supreme Court remanded to the Federal Circuit to consider
whether new claims in the continuation application were materi-
ally broader than those originally assigned.
Bio-Rad Laboratories, Inc. v. International Trade Commis-
Federal Circuit afrmed the International Trade Commission’s
(ITC’s) decision that certain accused products infringed and other
accused products did not infringe. The Federal Circuit upheld the
ITC’s claim construction. The Federal Circuit also found indi-
rect infringement as the administrative law judge found certain
evidence to be lacking in credibility.
U.S.P.Q.2d 602 (Fed. Cir. 2021). The Federal Circuit afrmed the
district court’s determination of noninfringement. After the parties
stipulated to noninfringement based on the district court’s claim
construction, the Federal Circuit determined that the district court
properly found prosecution disclaimer based on the applicant’s
By John C. Gatz
DECISIONS IN BRIEF