Author:Nimmer, David

TABLE OF CONTENTS I. GOOGLEPLEX LITIGATION 563 II. FAIR USE AND JURIES 565 A. The Seventh Amendment in Theory 565 B. Posture of Past Fair Use Decisions 566 C. Need to Resolve Contested Issues 568 D. The Seventh Amendment in Practice 571 1. Oracle v. Google 571 2. Additional Cases 574 i. Ergonome v. Compaq 575 ii. Donna Corbello 576 iii. Richard Prince 578 iv. Other Cases 583 III. EXPANDING OUR FIELD OF VISION 587 A. Elitist Disdain for Jury Determinations of Fair Use 587 B. Learning to Love the Seventh Amendment 589 1. The Proper Role for Juries 589 2. The Proper Role for Courts 593 IV. RETROSPECTIVE AND THE WIDE ARC 594 A. The Past 594 B. The Present 596 C. The Future 598 I. GOOGLEPLEX LITIGATION

Recent years have witnessed two blockbuster cases in the federal courts of appeals addressing copyrightable subject matter, both brought against the same defendant. In Garcia v. Google Inc., (1) the Ninth Circuit wrestled with whether a performance qualifies as a protectable work of authorship. In Oracle America, Inc. v. Google Inc., (2) the Federal Circuit confronted the scope of copyright protection for Application Program Interface packages (APIs), another knotty issue. Thus has the "Googleplex litigation" upheaved copyright doctrine. (3)

Having previously written at length about the former case, (4) I would like to turn my attention to the latter. In that endeavor, Peter Menell's magisterial article is invaluable. (5) With consummate skill, it charts the litigation through its numerous stages, including the first trial and Google's initial victory in the district court, to the subsequent appeal to the Federal Circuit and its reversal, and finally through retrial and renewed appeal. More importantly, it traces the implicated legal issues back to their roots in the study produced in 1978 by the Commission on New Technological Uses (CONTU). As he pointedly observes, the CONTU framework that Congress adopted provides that "when specific computer instructions, 'even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not amount to an infringement.'" (6)

Prof. Menell's exhaustive analysis, demonstrating that APIs should not attract copyright, concomitantly exposes the flaws in the Federal Circuit's ruling to the contrary in Oracle v. Google. (7) Most powerfully, he mines the Ninth Circuit's rulings in Sega Enters. Ltd. v. Accolade, Inc. (s) and Sony Computer Entm't, Inc. v. Connectix Corp (9) to reveal that, far from being limited to their pronouncements about the scope of defenses, those cases hold that certain subject matter stands outside of copyright protection (10)--a conclusion that the Federal Circuit crucially overlooked, notwithstanding its nominal fidelity to Ninth Circuit law, when according protection to APIs. (11)

As a result of the Federal Circuit's erroneous reversal in favor of Oracle regarding subject matter, the case returned to the court below. At the district court level, a subsequent trial unfolded, which Google again won, this time on the basis of fair use. (12) That jury verdict forms the basis for a second appeal to the Federal Circuit, which is still pending. (13) These issues raise to the surface matters regarding jury determinations of fair use, and how they fit into the greater web of the law--a matter about which Prof. Menell and I have engaged in dialogue for over a decade. (14) The matter is thus ripe for exploration herein.

It may seem anomalous, at first blush, for a jury to be the body that adjudicates this key copyright defense. After all, every one of the "great fair use cases" in the field has emerged from judges, who are trained in the law--not from an ad hoc body of laypeople wholly lacking background in the ins and outs of copyright. On investigation, however, fair use trials have been far from rare--and not all of them have been bench trials.

Part II below sets the stage and then investigates past decisions by juries of contested fair use trials. Part III evaluates the interplay between judge and jury, along with the role of appellate judges considering jury verdicts, in the context of sound development of copyright precedent. Part IV concludes with observations for when to turn to juries and when to cabin their pronouncements.


    1. The Seventh Amendment in Theory

      As out of step as it may seem with modern sensibilities seeking out expertise in every field, the Founding Fathers exalted decision by laypeople: "In Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved, and no fact tried by a jury, shall be otherwise re-examined in any Court of the United States, than according to the rules of the common law." (15) Litigation claiming copyright infringement falls within that paradigm. (16) The result is that, when a plaintiff sues a defendant for copyright infringement and the latter defends the conduct as fair use, (17) either party may demand that the case proceed to trial before a jury.

    2. Posture of Past Fair Use Decisions

      The first case under the Copyright Act of 1976 to reach the Supreme Court posed the question of fair use. Universal City Studios, Inc. v. Sony Corp. of Am. arose only after "three years of litigation, five weeks of trial, and careful consideration of extensive briefing by both sides." (18) Nonetheless, the fact-finder in that instance was Judge Ferguson, not a jury. The second fair use copyright case to reach the Court under the current Act, Harper & Row, Publishers, Inc. v. Nation Enters., arose in a similar pattern--a non-jury trial consuming six days. (19) The third one in that progression, Stewart v. Abend (20) resulted from cross-motions for summary judgment. (21) Acuff-Rose Music, Inc. v. Campbell (22) the final Supreme Court judgment adjudicating fair use, arose out of a successful defense motion for summary judgment. (23) The common denominator of all four cases from Sony to Campbell is that no jury was empaneled to consider the dispute in any of them.

      Other cases abound in which judges, not juries, reach fair use determinations. The Ninth Circuit, for instance, handed down fair use rulings in both Sega Enters. Ltd. v. Accolade and Sony v. Connectix on appeal from trial court rulings at preliminary injunction hearings. (24) There is no opportunity at all for a jury determination at an injunction hearing. Scores of other decisions have arisen out of injunctions, thereby eliminating any jury input.

      When a case does proceed in district court, it can be resolved at three stages--on a motion to dismiss, at summary judgment, or at trial. Besides Sony and Nation, the two bench trials that wended their way up to the Supreme Court, (25) we have also already seen Abend and Campbell, two summary judgment motions that similarly ended up on review there. (26) That procedural vehicle also, by definition, eliminates any jury input. Among the scores of fair use decisions that courts have handed down, summary judgment is the most common posture. (27)

      What about motions to dismiss? Given that fair use is a defense, (28) the traditional view was that it could not be adjudicated on a motion to dismiss, which evaluates solely the four corners of the plaintiff's complaint. (29) Nonetheless, that understanding itself proved wobbly earlier this decade, when a court decided that, on a motion to dismiss, it could view both the plaintiff's and the defendant's works, as appended to the complaint, thereby reaching its own determination based merely on the bare works themselves. (30) That decision dismissed the complaint filed by the copyright owner of "What What (In the Butt)", holding usage of that song and music video in an episode of South Park to constitute fair use as a matter of law. (31)

    3. Need to Resolve Contested Issues

      Given the plenitude of cases resolving fair use in the posture of summary judgment--and more recently based on simply viewing the rival works themselves in the context of a motion to dismiss--what need is there for a trial at all, let alone one in which a jury serves as fact-finder? The answer is that neither dismissal nor summary judgment may be entered when the parties dispute material issues of fact. (32)

      The Supreme Court has called fair use "a mixed question of law and fact." (33) At this point, the question becomes what material issues of fact could exist in the context of a fair use dispute. In theory, an endless panoply could arise:

      (1) Questions of historical fact. The third fair use factor looks to "the amount and substantiality of the portion used in relation to the copyrighted work as a whole." (34) When both works are in evidence (such as in the South Park case noted above), no ambiguity may exist on that score. But the copyright owner's rights may be violated through unauthorized public performance, (35) in which no copy exists of the evanescent activity in which defendant engaged. (36) To the extent that the plaintiff contends that the defendant appropriated X% of her work whereas the latter counters that he only used a fraction of X, a live dispute requires the fact-finder to determine the historical fact at issue. (37)

      (2) Questions of intent. In criminal law, it is commonplace for the jury's reconstruction of historical fact to encompass a determination of what was in the accused's head. (38) The same inquiry into intent may unfold in a fair use trial. The second fair use factor investigates "the nature of the copyrighted work," (39) for which the Supreme Court has ruled that a special solicitude attaches to "confidential writings not intended for dissemination." (40) It accordingly may become vital to determine the author's intent in that regard. (41) Moving from the plaintiff's to the defendant's side of the ledger, the intent of the secondary user may also come into play. (42)

      (3) Questions of what might have been. The fourth fair use factor examines "the...

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