Decisions in brief

• Author: John C. Gatz
• Pages: 57-62

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

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American Bar Association.

57

Copyrights

Supreme Court Declined to Decide When Software

Is Copyrightable, but Found Google’s Use to Be Fair

Use

33 Google LLC v. Oracle America, Inc., 141 S.Ct. 1183, 2021

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

Faith

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 Ofce. 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 specically 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.

Patents

Assignor Estoppel

33

Minerva Surgical, Inc. v. Hologic, Inc., 141 S.Ct. 2298, 2021

U.S.P.Q.2d 701 (2021). The Supreme Court vacated and remanded

the decision of the Federal Circuit, which had afrmed 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.

Claim Construction

Bio-Rad Laboratories, Inc. v. International Trade Commis-

sion, 998 F.3d 1320, 2021 U.S.P.Q.2d 585 (Fed. Cir. 2021). The

Federal Circuit afrmed 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.

SpeedTrack, Inc. v. Amazon.com, Inc., 998 F.3d 1373, 2021

U.S.P.Q.2d 602 (Fed. Cir. 2021). The Federal Circuit afrmed 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