Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a recent opinion from the Ninth Circuit, the Court reversed a finding of fair use in connection with a copyright infringement claim in a “mash-up” between a Dr. Seuss story and Star Trek. A “mash-up” is a work that combines elements from two or more preexisting sources such as a movie, video, story, or the like. In this case, Dr. Seuss sued the creators of a mash-up of Dr. Seuss and Star Trek for copyright infringement and trademark infringement. The Southern District of California found that the mash-up was a fair use, and granted summary judgment for the defendants. The district court additionally dismissed a trademark infringement claim because there was an artistic aspect to the mash-up and its source was not explicitly misleading. The Ninth Circuit affirmed the dismissal of the trademark claim, but reversed on the fair use determination in connection with the copyright claim. Applying the statutory fair use factors, the Court found that the mash-up had a largely commercial purpose, that the Dr. Seuss work was closer to the core of the creative works that copyright law is intended to protect, and that a substantial amount of the Dr. Seuss work was used, among other things. Thus, the copyright portion of the decision was reserved and remanded to the district court. The takeaway here is that the fair use doctrine has some breadth to it, but may not be as broad as some might hope. Thus, artists making mash-ups should be careful to avoid infringement or enhance their chances of a fair use finding.

2. In another copyright case in which a fair use determination was also reversed, the Second Circuit Court of Appeals issued an opinion finding that an Andy Warhol embellishment to a photograph of Prince was not a fair use. The Andy Warhol Foundation commenced a declaratory judgment action against the photographer that owned the copyright in the photograph of Prince. The district court found that Warhol’s work was a transformative fair use and that the copyright infringement claim would not lie. The Second Circuit, however, reversed finding that the Warhol work was not “fundamentally different and new. The Second Circuit expounded on what constitutes a transformative fair use, including something more than simply imposing another artist’s style on a preexisting work. The Second Circuit went further and indicated that the Warhol work was infringing the photographer’s copyright. The Warhol Foundation vowed further appeal. The takeaway here regarding fair use is potentially significant in that putting one’s artistic stamp on another’s copyrighted work may not be a fair use any longer.

3. Notably, however, as appellate courts such as the Second Circuit and Ninth Circuit, which are prominent in shaping copyright law, are issuing some opinions that seem to be limiting the application of the fair use doctrine in copyright cases, the U.S. Supreme Court has issued an opinion on copyright fair use in the long-running dispute between Google and Oracle that, at least in the software context, seems to broaden the application of the fair use doctrine in copyright cases. The gist of the dispute is that when Google acquired Android in 2005 and sought to build a new software platform for mobile devices, it copied 11,500 lines of code from the Java SE API, owned by Oracle. Oracle sued for copyright infringement, and Google responded by arguing that the Java code was not copyrightable and/or its copying was a fair use. The Federal Circuit Court of Appeals (which had the case because there were patent issues as well) determined that the code was copyrightable and Google’s copying thereof was not a fair use. Google petitioned the Supreme Court for certiorari and review was granted. In its opinion, the Supreme Court assumed that the code was copyrightable. It then proceeded to analyze the four fair use factors under 17 U.S.C. 107. The Court held that Google’s copying of the Java SE API code was a fair use because, among other things: (1) Google’s use was transformative in that it only copied what was needed to allow programmers to have a framework to put their collective talents to work in building a different platform for a different purpose (mobile phones) – it was not attempting to create a substitute for Java SE; (2) the code Google copied was not code that instructs a computer to perform a task, but rather, a different type of code that is needed to call up other tasks; (3) Google’s copying amounted to approximately 0.4% of the total API code at issue; and, (4) that Google’s copying will not affect the market for Java SE because Google’s mobile phone platform is not a substitute for Java SE. The Supreme Court looked at the goal of copyright law in terms of promoting the arts and underneath their opinion, it seems that the justices in the majority believed that the “declaring code” that Google copied would not contravene the objectives of copyright law because Google did not copy the “implementing code.” It seems the Court was attempting to navigate a line between 17 U.S.C. 102’s prohibition on copyrighting processes, systems, procedures, or the like, and fair use. By finding fair use in Google’s copying of some “declaring code,” and the Court’s distinguishing of “implementing code” that it claimed was closer to the core of what is copyrightable, a question is raised as to whether “implementing code” might run afoul of 17 U.S.C. 102’s prohibition of copyrighting processes, systems, or the like. The bottom line, however, is that the Supreme Court held that Google’s copying here was a fair use. This case represents effective lobbying of the third branch of government by Google. The takeaway here is that folks still must be careful with fair use and not assume it will protect them. Engaging competent counsel to perform the fair use analysis in advance would be wise. Nonetheless, this ruling may open up new fair use arguments, and render software less protectable than it already is based on the Supreme Court’s 2014 Alice decision.