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UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUITNOTICE OF ENTRY OF
JUDGMENT ACCOMPANIED BY OPINION
OPINION FILED AND JUDGMENT ENTERED: 03/27/2018
The attached opinion announcing the judgment of the court in your case was filed and judgment was entered on
the date indicated above. The mandate will be issued in due course.
Information is also provided about petitions for rehearing and suggestions for rehearing en banc. The questions
and answers are those frequently asked and answered by the Clerk's Office.
No costs were taxed in this appeal.
Regarding exhibits and visual aids: Your attention is directed Fed. R. App. P. 34(g) which states that the clerk
may destroy or dispose of the exhibits if counsel does not reclaim them within a reasonable time after the clerk gives
notice to remove them. (The clerk deems a reasonable time to be 15 days from the date the final mandate is issued.)

FOR THE COURT/s/ Peter R. MarksteinerPeter R. Marksteiner
Clerk of Court

17-1118, -1202: Oracle America, Inc. v. Google LLC
United States District Court for the Northern District of California, Case No. 3:10-cv-03561-WHA

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United States Court of Appeals
for the Federal Circuit______________________ORACLE AMERICA, INC.,
Plaintiff-Appellantv.
GOOGLE LLC,
Defendant-Cross-Appellant______________________
2017-1118, 2017-1202______________________
Appeals from the United States District Court for the
Northern District of California in No. 3:10-cv-03561WHA, Judge William H. Alsup.
______________________
Decided: March 27, 2018______________________
E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sutcliffe LLP, New York, NY, argued for plaintiff-appellant.
Also represented by PETER A. BICKS, MATTHEW LEE BUSH,
ANDREW D. SILVERMAN, LISA SIMPSON; MELANIE L.
BOSTWICK, KELSI BROWN CORKRAN, MARK S. DAVIES,JEREMY PETERMAN, Washington, DC; ANNETTE LOUISE
HURST, San Francisco, CA; DALE M. CENDALI, JOSHUA L.
SIMMONS, Kirkland & Ellis LLP, New York, NY; RUCHIKA
AGRAWAL, DORIAN ESTELLE DALEY, DEBORAH KAY MILLER,
MATTHEW SARBORARIA, Oracle America, Inc., Redwood
Shores, CA.

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ORACLE AMERICA, INC. v. GOOGLE LLCDARYL JOSEFFER, King & Spalding LLP, Washington,
DC, argued for defendant-cross-appellant. Also represented by BRUCE WILLIAM BABER, Atlanta, GA; CHRISTA
M. ANDERSON, STEVEN A. HIRSCH, MICHAEL SOONUKKWUN, REID P. MULLEN, ROBERT A. VAN NEST, Keker, Van
Nest & Peters LLP, San Francisco, CA; RENNY F. HWANG,
Google LLC, Mountain View, CA.
KENNETH L. DOROSHOW, Jenner & Block LLP, Washington, DC, for amicus curiae The Copyright Alliance.
Also represented by ERICA LAUREN ROSS.
DANIEL J. BROOKS, Scarola Malone & Zubatov LLP,New York, NY, for amicus curiae New York Intellectual
Property Law Association. Also represented by CHARLES
R. MACEDO, Amster Rothstein & Ebenstein LLP, New
York, NY; ANNEMARIE HASSETT, NYU School of Law, New
York, NY.
JARED BOBROW, Weil, Gotshal & Manges LLP, Redwood Shores, CA, for amici curiae Eugene H. Spafford,
Zhi Ding, Adam Porter, Ken Castleman. Also represented
by AMANDA BRANCH, AARON Y. HUANG.
STEVEN THOMAS COTTREAU, Clifford Chance Rogers &Wells LLP, Washington, DC, for amici curiae Scott
McNealy, Brian Sutphin.
MARC ROBERT LEWIS, Lewis & Llewellyn LLP, San
Francisco, CA, for amicus curiae Ralph Oman. Also
represented by EVANGELINE ZIMMERMAN BURBIDGE.
ROBERT H. ROTSTEIN, Mitchell, Silberberg & Knupp,
LLP, Los Angeles, CA, for amici curiae Motion Picture
Association of America, Inc., Independent Film & Television Alliance. Also represented by J. MATTHEW WILLIAMS,
Washington, DC.

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DUNCAN W. CRABTREE-IRELAND, SAG-AFTRA, Los
Angeles, CA, for amicus curiae Screen Actors Guild –American Federation of Television and Radio Artists.
WILLIAM M. JAY, Goodwin Procter LLP, Washington,
DC, for amici curiae Recording Industry Association ofAmerica, Association of American Publishers. Also represented by ANDREW KIM. Recording Industry Associationof America also represented by GEORGE M. BORKOWSKI,
Mitchell, Silberberg & Knupp, LLP, Los Angeles, CA.
REBECCA MURPHY THOMPSON, Competitive Carriers
Association, Washington, DC, for amicus curiae Competitive Carriers Association.
ANTIGONE GABRIELLA PEYTON, Protorae Law PLLC,
Tysons, VA, for amici curiae Sandra Aistars, Matthew
Barblan, Jon A. Baumgarten, Stephen Carlisle, Jon M.
Garon, Hugh Hansen, Devlin Hartline, Jiarui Liu, Adam
Mossoff, Raymond T. Nimmer, Eric Priest, Sean M.
O’Connor, Mark F. Schultz.
LINDSAY WARREN BOWEN, Cowan, DeBaets, Abrahams& Sheppard LLP, New York, NY, for amici curiae PACA,
Digital Media Licensing Association, Inc., Graphic Artists
Guild, National Press Photographers Association, North
American Nature Photography Association, American
Society of Media Photographers, Inc., American Photographic Artists, Professional Photographers of America.
Also represented by SCOTT J. SHOLDER.
RICHARD L. RAINEY, Covington & Burling LLP, Washington, DC, for amicus curiae BSA | The Software Alliance. Also represented by PETER ANDREW SWANSON.
JONATHAN BAND, Jonathan Band PLLC, Washington,
DC, for amicus curiae Computer & Communications
Industry Association. Also represented by MATTHEW(4 of 59)

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SCHRUERS, Computer & Communications Industry Association, Washington, DC.
MICHAEL BARCLAY, Electronic Frontier Foundation,
San Francisco, CA, for amici curiae Electronic Frontier
Foundation, Public Knowledge.
Also represented by
MITCHELL L. STOLTZ.
MARCIA HOFMANN, Zeitgeist Law PC, San Francisco,CA, for amicus curiae Mozilla Corporation.
RICHARD M. BRUNELL, American Antitrust Institute,
Washington, DC, for amicus curiae American Antitrust
Institute. Also represented by SHUBHA GHOSH, Syracuse
University College of Law, Syracuse, NY.
JEFFREY A. LAMKEN, MoloLamken LLP, Washington,
DC, for amici curiae Microsoft Corp., Red Hat, Inc.,
Hewlett Packard Enterprise Company. Also represented
by RAYINER HASHEM, MICHAEL GREGORY PATTILLO, JR.;LISA WANG BOHL, Chicago, IL.
JASON MICHAEL SCHULTZ, NYU School of Law, New
York, NY, for amici curiae Timothy K. Armstrong, Cark
D. Asay, Shyamkrishna Balganesh, Ann Bartow, Oren
Bracha, Annemarie Bridy, Dan L. Burk, Michael A.
Carrier, Michael W. Carroll, Andrew Chin, Julie E. Cohen, Kevin Collins, Rebecca Curtin, Ben Depoorter, Roger
Allan Ford, Brian L. Frye, Jim Gibson, Eric Goldman,
James Grimmelmann, Peter Jaszi, Yvette Joy Liebesman,Jessica Litman, Brian J. Love, Michael J. Madison, Mark.
P. McKenna, Joseph Scott Miller, Deirdre K. Mulligan,
Tyler T. Ochoa, Aaron Perzanowski, Victoria F. Phillips,
Arti K. Rai, Jerome H. Reichman, Michael Rustad, Matthew Sag, Pamela Samuelson, Jessica Sibley, Joshua
David Sarnoff, Lea Shaver, Christopher Jon Sprigman,
Katherine J. Strandburg, Rebecca Tushnet, Jennifer M.
Urban.

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PHILLIP R. MALONE, Stanford Law School, Stanford,
CA, for amici curiae Harold Abelson, Tom Ball, Brian
Behlendorf, Gordon Bell, Jon Bentley, Matthew Bishop,
Joshua Bloch, Dan Boneh, Gilad Bracha, Eric Brewer,
Frederick Brooks, Rick Cattell, Vinton G. Cerf, William
Cook, Mark Davis, Miguel de Icaza, Jeffrey Dean, L. Peter
Deutsch, Whitfield Diffie, David L. Dill, Lester Earnest,
Brendan Eich, Dawson Engler, Martin Fowler, Neal
Gafter, Robert Harper, John Hennessy, Tom Jennings,
Alan Kay, Brian Kernighan, David Klausner, Ray Kurzweil, Kin Lane, Ed Lazowska, Doug Lea, Bob Lee, Sheng
Liang, Barbara Liskov, Paul Menchini, Andrew W. Moore,
James H. Morris, Peter Norvig, Martin Odersky, Tim
Paterson, David Patterson, Alex Payne, Tim Peierls,
Simon Phipps, Bill Pugh, Ronald L. Rivest, Curtis
Schroeder, Robert Sedgewick, Mary Shaw, Barbara
Simons, Dave Snigier, Alfred Z. Spector, Bjarne Stroustrup, Gerald Jay Sussman, Ivan E. Sutherland, Andrew
Tanenbaum, Brad Templeton, Ken Thompson, Michael
Tiemann, Linus Torvalds, Andrew Tridgell, Jeffrey
Ullman, Andries Van Dam, Guido Van Rossum, John
Villasenor, Jan Vitek, Philip Wadler, James H. Waldo,
Daniel S. Wallach, Peter J. Weinberger, Steve Wozniak,
Frank Yellin. Also represented by JEFFREY THEODOREPEARLMAN.
MARK A. LEMLEY, Durie Tangri LLP, San Francisco,CA, for amici curiae Engine Advocacy, The App Developers Alliance, GitHub, Inc. Also represented by JOSEPHGRATZ, CLEMENT ROBERTS.
______________________
Before O’MALLEY, PLAGER, and TARANTO, Circuit Judges.
O’MALLEY, Circuit Judge.

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This copyright case returns to us after a second jury
trial, this one focusing on the defense of fair use. Oracle
America, Inc. (“Oracle”) filed suit against Google Inc.
(“Google”) 1 in the United States District Court for the
Northern District of California, alleging that Google’s
unauthorized use of 37 packages of Oracle’s Java application programming interface (“API packages”) in its Android operating system infringed Oracle’s patents andcopyrights.
At the first trial, the jury found that Google infringed
Oracle’s copyrights in the Java Standard Edition platform, but deadlocked on the question of whether Google’s
copying was a fair use. 2 After the verdict, however, thedistrict court found that the API packages were notcopyrightable as a matter of law and entered judgment for
Google. Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d974 (N.D. Cal. 2012). Oracle appealed that determination
to this court, and we reversed, finding that declaring codeand the structure, sequence, and organization (“SSO”) of
the Java API packages are entitled to copyright protection. Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1348
(Fed. Cir. 2014). We remanded with instructions toreinstate the jury’s infringement verdict and for further
proceedings on Google’s fair use defense and, if appropriate, on damages. Id. at 1381.
Google subsequently filed a petition for certiorari on
the copyrightability determination. The Supreme Court
called for the views of the Solicitor General, who expressed agreement with our determination and recommended denying review. The Supreme Court denied
In September 2017, Google converted from a corporation to a limited liability company and changed its
name to Google LLC, as reflected in the amended caption.
2
The jury found no patent infringement, and thepatent claims are not at issue on appeal.
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Filed: 03/27/20187certiorari in 2015. Google Inc. v. Oracle Am., Inc., 135 S.
Ct. 2887 (2015) (Mem.).
At the second jury trial, Google prevailed on its fairuse defense. After the jury verdict, the district court
denied Oracle’s motion for judgment as a matter of law(“JMOL”) and entered final judgment in favor of Google.
Oracle Am., Inc. v. Google Inc., No. C 10-03561, 2016 WL
3181206 (N.D. Cal. June 8, 2016) (“Order Denying
JMOL”); Final Judgment, Oracle Am., Inc. v. Google Inc.,
No. 3:10-cv-3561 (N.D. Cal. June 8, 2016), ECF No. 1989.
Oracle filed a renewed motion for JMOL and separately
moved for a new trial. The district court denied bothmotions in a single order. Oracle Am., Inc. v. Google Inc.,
No. C 10-03561, 2016 WL 5393938 (N.D. Cal. Sept. 27,
2016) (“Order Denying Renewed JMOL/New Trial”).
Consistent with these determinations, no damages verdict
was rendered.
Oracle now appeals from the district court’s final
judgment and its decisions denying Oracle’s motions for
JMOL and motion for a new trial. Google cross-appeals
from the final judgment purportedly to “preserv[e] its
claim that the declarations/SSO are not protected bycopyright law,” but advances no argument for why thiscourt can or should revisit our prior decision on copyrightability. Cross-Appellant Br. 83.
Because we conclude that Google’s use of the Java
API packages was not fair as a matter of law, we reverse
the district court’s decisions denying Oracle’s motions for
JMOL and remand for a trial on damages. We also dismiss Google’s cross-appeal.
I. BACKGROUND
A. The Technology
Oracle’s predecessor, Sun Microsystems, Inc. (“Sun”),
developed the Java platform for computer programmingin the 1990s, and Oracle purchased Sun in 2010. The(8 of 59)

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Java platform is software used to write and run programsin the Java programming language. It allows programmers to write programs that “run on different types ofcomputer hardware without having to rewrite them foreach different type.” Oracle, 750 F.3d at 1348. With
Java, programmers can “write once, run anywhere.” Id.
The Java 2 Standard Edition (“Java SE”) of the platform includes, among other things, the Java Virtual
Machine and the Java Application Programming Interface(“API”). The Java API is a collection of “pre-written Javasource code programs for common and more advanced
computer functions.” Order Denying JMOL, 2016 WL
3181206, at *3. These APIs “allow programmers to use
the prewritten code to build certain functions into theirown programs rather than write their own code to perform those functions from scratch. They are shortcuts.”
Oracle, 750 F.3d at 1349. The prewritten programs areorganized into packages, classes, and methods. Specifically, an API package is a collection of classes and each classcontains methods and other elements. “Each method
performs a specific function, sparing a programmer theneed to write Java code from scratch to perform thatfunction.” Order Denying JMOL, 2016 WL 3181206, at*3.
To include a particular function in a program, theprogrammer invokes the Java “declaring code.” As the
district court explained, the declaring code is the line orlines of source code that “declares or defines (i) the method name and (ii) the input(s) and their type as expected by
the method and the type of any outputs.” Id. at *4. Afterthe declaring code, each method includes “implementing
code,” which takes the input(s) and gives the computer
step-by-step instructions to carry out the declared function.
By 2008, Java SE included 166 API packages divided
into 3,000 classes containing more than 30,000 methods.

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At issue in this appeal are 37 API packages from Java SE
Version 1.4 and Version 5.0. We have already concluded
that the declaring code and the SSO of the 37 Java API
packages at issue are entitled to copyright protection.
Oracle, 750 F.3d at 1348.
The Java programming language itself is free andavailable for use without permission. At this stage, it isundisputed that, to write in the Java programming language, “62 classes (and some of their methods), spread
across three packages within the Java API library, must
be used. Otherwise the language itself will fail.” Order
Denying JMOL, 2016 WL 3181206, at *5. It is also undisputed that anyone using the Java programming language can write their own library of prewritten programs
to carry out various functions.
Although Oracle makes the Java platform freely
available to programmers building applications (“apps”),
it devised a licensing scheme to attract programmers
while simultaneously commercializing the platform. In
relevant part, Oracle charges a licensing fee to those whowant to use the APIs in a competing platform or embedthem in an electronic device. To preserve the “write once,
run anywhere” philosophy, Oracle imposes strict compatibility requirements on licensees. Oracle, 750 F.3d at
1350. Oracle also made available without charge underan open source license a version of Java called “OpenJDK.” Order Denying JMOL, 2016 WL 3181206, at *10.
Oracle maintains, however, that OpenJDK came with animportant catch: any company that improved on the
packages in OpenJDK had to “‘give away those changes
for free’ to the Java community.” Appellant Br. 53.
The evidence showed that Oracle licensed Java in 700
million PCs by 2005. Although Oracle never successfully
developed its own smartphone platform using Java, it
licensed Java SE for mobile devices. According to Oracle,
the “mobile device market was particularly lucrative,” and(10 of 59)

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ORACLE AMERICA, INC. v. GOOGLE LLC“Java quickly became the leading platform for developing
and running apps on mobile phones.” Appellant Br. 9.
B. Google’s Android Platform
In 2005, Google acquired Android, Inc. as part of aplan to develop a software platform for mobile devices.
That same year, Google and Sun began discussing thepossibility of Google taking a license to use and adapt theJava platform for mobile devices. Oracle, 750 F.3d at
1350. The parties were unable to reach an agreement, inpart because Google wanted device manufacturers to beable to use Oracle’s APIs in Android for free with nolimits on modifying the code, which would jeopardize the“write once, run anywhere” philosophy.
The jury heard evidence that Google wanted to movequickly to develop a platform that would attract Javadevelopers to build apps for Android. The Android team
had been working on creating its own APIs, but was
unable to do so successfully. After negotiations between
the parties reached an impasse, Google elected to “[d]oJava anyway and defend [its] decision, perhaps making
enemies along the way.” Order Denying JMOL, 2016 WL
3181206, at *6. It is undisputed that Google copied verbatim the declaring code of the 37 Java API packages—
11,500 lines of Oracle’s copyrighted code. It also copied
the SSO of the Java API packages. Google then wrote its
own implementing code.
Google announced its Android software platform formobile devices in 2007, and the first Android phones
went on sale the following year. Google provides theAndroid platform free of charge to smartphone manufacturers and publishes the source code for use withoutcharge under an open source license. Although Google
does not directly charge its users, Android has generated
over $42 billion in revenue from advertising. Oracle
explains that Android was “devastating” to its licensing
strategy and that many of its customers switched to(11 of 59)

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Android. Appellant Br. 15. Even customers who stayedwith Oracle cited Android as a reason to demand discounts. The jury heard evidence that Amazon, which hadentered into a license to use Java for its Kindle tablet
device, switched to Android for the subsequently released
Kindle Fire and then used the existence of Android toleverage a steep discount from Oracle on the next generation Kindle.
C. Remand Proceedings
In the first appeal, we held that the declaring codeand the SSO of the 37 API packages are entitled to copyright protection and ordered the district court to reinstate
the jury’s infringement finding. Oracle, 750 F.3d at 1381.
We also considered Oracle’s argument that it was entitledto judgment as a matter of law on Google’s fair use defense. Although we found that Oracle’s position was “notwithout force,” and that Google was overstating what
could be fair use under the law, we found that the record
evidence regarding the relevant fair use factors wasinsufficiently developed for us to resolve the issue on
appeal. Oracle, 750 F.3d at 1376. In doing so, we pointed
to sharp disputes between the parties, both legal andfactual, including whether Google’s use was transformative, whether “functional aspects of the package” andGoogle’s “desire to achieve commercial ‘interoperability’”weighed in favor of the second and third factors, andwhether Android caused market harm to Oracle. Id. at1376-77. We concluded that “due respect for the limit of
our appellate function” required remand. Id. at 1376.
During the pendency of the first appeal, Google’s Android business expanded significantly. Android gained
new users and developers, and Google “released modified
implementations and derivatives of Android for use innumerous device categories, including wearable devices
with small screens (Android Wear), dashboard interfaces
in cars (Android Auto), television sets (Android TV), and(12 of 59)

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everyday devices with Internet connectivity.” Oracle Am.,
Inc. v. Google Inc., No. C10-03561, 2016 WL 1743111, at*1 (N.D. Cal. May 2, 2016) (“Order on Motion in Limine”).
When the case returned to the district court, Oracle
filed a supplemental complaint adding allegations ofmarket harm and damages resulting from new versions ofAndroid released since the original complaint. Specifically, Oracle alleged that Google had launched new versionsof Android for phones and tablets and had expanded
Android into new device categories. Id. Google did not
oppose the supplemental complaint, and the district court
granted Oracle’s motion to file it. But when Oracle served
expert reports that addressed versions of Java SE thatwere not at issue in the first trial, Google moved to strike
those reports. Id.
When the parties were unable to agree on the scope ofthe retrial, the district court limited it to: (1) the two
versions of Java SE that Oracle asserted in the first trial;and (2) released versions of Android used in smartphones
and tablets “which Google . . . agreed would be subject tothe prior jury’s adverse finding of infringement and which
Oracle identified in its supplemental complaint.” Id. The
court explained that Oracle retained the right to sue
Google for infringement with respect to the other versions
and implementations of Android in a separate trial orproceeding. Order re: Google’s Motion to Strike at 2,
Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D.
Cal. Feb. 5, 2016), ECF No. 1479. The court also granted
Google’s motion in limine to exclude all evidence of the
new Android products.
The district court bifurcated the issue of fair use fromwillfulness and monetary remedies, and the trial on fairuse began on May 10, 2016. After roughly one week ofevidence and several days of deliberations, the jury foundthat Google’s use of the declaring lines of code and theSSO of the 37 API packages constituted fair use.

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Oracle moved for JMOL, which the district court denied. At the outset, the court noted that Oracle stipulated
before the jury “that it was fair to use the 62 ‘necessary’classes given that the Java programming language itself
was free and open to use without a license.” Order Denying JMOL, 2016 WL 3181206, at *5. “That the 62 ‘necessary’ classes reside without any identification as suchwithin the Java API library (rather than reside within the
programming language),” the court explained, “supports
Google’s contention that the Java API library is simply an
extension of the programming language itself and helps
explain why some view the Java API declarations as free
and open for use as the programming language itself.” Id.
Because Android and Java both “presupposed the Java
programming language in the first place,” the court notedthat a jury reasonably could have found that it “wasbetter for both to share the same SSO insofar as they
offered the same functionalities, thus maintaining usage
consistency across systems and avoiding cross-systemconfusion.” Id. at *6.
The district court then considered each of the four
statutory fair use factors. As to factor one—the purpose
and character of the use—the court concluded that areasonable jury could have found that, although Google’s
use was commercial, it was transformative because
Google integrated only selected elements for mobile
smartphones and added its own implementing code. Id.
at *7-9. With respect to factor two—the nature of the
copyrighted work—the district court found that a reasonable jury could have concluded that, “while the declaring
code and SSO were creative enough to qualify for copyright protection,” they were not “highly creative,” and that“functional considerations predominated in their design.”
Id. at *10.
As to factor three—the amount and substantiality ofthe portion used—the court concluded that a reasonable
jury could have found that “Google copied only so much as(14 of 59)

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was reasonably necessary for a transformative use,” andthat the number of lines duplicated was minimal. Id.
Finally, as to factor four—market harm—the court concluded that the jury “could reasonably have found thatuse of the declaring lines of code (including their SSO) in
Android caused no harm to the market for the copyrighted
works, which were for desktop and laptop computers.” Id.
The court determined that, on the record presented, thejury could have found for either side and that the jury was“reasonably within the record in finding fair use.” Id. at*11.
Oracle subsequently renewed its motion for JMOL
and separately moved for a new trial challenging severalof the court’s discretionary decisions at trial. The district
court denied both motions in a single order. With respect
to JMOL, the court simply stated that it denied Oracle’s
renewed motion for the same reasons it denied the original motion. With respect to the motion for a new trial,
the court rejected Oracle’s argument that the court
abused its discretion by limiting the evidence at trial to
Google’s use of Android in smartphones and tablets.
The court also rejected Oracle’s allegation that Google
engaged in discovery misconduct by withholding evidence
during discovery relating to Google’s App Runtime for
Chrome (“ARC”), which enabled laptops and desktops
running Google’s computer operating system to runcertain Android applications. Order Denying Renewed
JMOL/New Trial, 2016 WL 5393938, at *5. The court
found that Google had produced relevant documents
during discovery and that, in any event, those documents
pertained to issues beyond the scope of the retrial. Id. at*7-8.
Finally, the district court rejected Oracle’s argumentthat certain of the court’s evidentiary rulings were abusesof discretion. The court explained that it: (1) redacted oneline from an email because it was “too inflammatory and(15 of 59)

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without foundation;” and (2) excluded other documents
because Oracle had withheld them as privileged until
trial. Id. at *9-12.
On June 8, 2016, the district court entered final
judgment in favor of Google and against Oracle. Oracle
timely appealed from the district court’s judgment against
it, including the court’s underlying decisions denying its
motions for JMOL and for a new trial. Google timely
cross-appealed from all adverse orders and rulings underlying that final judgment.
This court has exclusive jurisdiction over all appealsin actions involving patent claims, including where, as
here, an appeal raises only non-patent issues. 28 U.S.C.
§ 1295(a)(1). Because copyright law is not within thiscourt’s exclusive jurisdiction, we apply the law of theregional circuit in which the district court sits; here, theNinth Circuit. Atari Games Corp. v. Nintendo of Am.,
Inc., 975 F.2d 832, 837 (Fed. Cir. 1992).
II. ORACLE’S APPEAL
A. Legal Framework
It is undisputed that Google copied Oracle’s declaring
code and SSO for the 37 API packages verbatim. The
question is whether that copying was fair. “From theinfancy of copyright protection, some opportunity for fairuse of copyrighted materials has been thought necessary
to fulfill copyright’s very purpose, ‘to promote the Progress of Science and useful Arts.’” Campbell v. Acuff-Rose
Music, Inc., 510 U.S. 569, 575 (1994) (quoting U.S. Const.,
art. I, § 8, cl. 8). As the Supreme Court noted in Campbell, “[i]n truth, in literature, in science and in art, there
are, and can be, few, if any, things, which in an abstract
sense, are strictly new and original throughout. Everybook in literature, science and art, borrows, and mustnecessarily borrow, and use much which was well known(16 of 59)

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and used before.” Id. (quoting Emerson v. Davies, 8 F.
Cas. 615, 619 (C.C.D. Mass. 1845)).
The fair use defense began as a judge-made doctrine
and was codified in Section 107 of the 1976 Copyright Act.
Id. at 576. It operates as a limited exception to the copyright holder’s exclusive rights and permits use of copyrighted work if it is “for purposes such as criticism,comment, news reporting, teaching . . ., scholarship, or
research.” 17 U.S.C. § 107. The “such as” language
confirms that the listing “was not intended to be exhaustive,” but nevertheless “give[s] some idea of the sort ofactivities the courts might regard as fair use under thecircumstances.” Harper & Row Publishers, Inc. v. Nation
Enters., 471 U.S. 539, 561 (1985) (citation omitted).
“Section 107 requires a case-by-case determination
whether a particular use is fair, and the statute notes four
nonexclusive factors to be considered.” Id. at 549. Those
factors include: (1) “the purpose and character of the use,
including whether such use is of a commercial nature or isfor nonprofit educational purposes;” (2) “the nature of the
copyrighted work;” (3) “the amount and substantiality ofthe portion used in relation to the copyrighted work as awhole;” and (4) “the effect of the use upon the potential
market for or value of the copyrighted work.” 17 U.S.C.
§ 107. The Supreme Court has cautioned against adopting bright-line rules and has emphasized that all of thestatutory factors “are to be explored, and the results
weighed together, in light of the purposes of copyright.”
Campbell, 510 U.S. at 578.
The legislative history reveals that Congress intended§ 107 “‘to restate the present judicial doctrine of fair use,
not to change, narrow, or enlarge it in any way’ andintended that courts continue the common-law traditionof fair use adjudication.” Id. at 577 (quoting H.R. Rep.
No. 94-1476, at 66 (1976), S. Rep. No. 94-473 at 62 (1975),
U.S. Code Cong. & Admin. News 5659, 5679 (1976)).

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Accordingly, in balancing the four statutory factors,
courts consider “whether the copyright law’s goal of‘promot[ing] the Progress of Science and useful Arts,’ U.S.
Const., art. 1, § 8, cl. 8, ‘would be better served by allowing the use than by preventing it.’” Castle Rock Entm’t,
Inc. v. Carol Publ’g Grp., Inc., 150 F.3d 132, 141 (2d Cir.
1998) (quoting Arica Inst., Inc. v. Palmer, 970 F.2d 1067,
1077 (2d Cir. 1992)).
Despite this guidance, the doctrine of fair use has long
been considered “the most troublesome in the whole lawof copyright.” Monge v. Maya Magazines, Inc., 688 F.3d
1164, 1170 (9th Cir. 2012) (quoting Dellar v. SamuelGoldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939) (percuriam)). It both permits and requires “courts to avoid
rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law isdesigned to foster.” Campbell, 510 U.S. at 577 (quoting
Stewart v. Abend, 495 U.S. 207, 236 (1990)).
Because fair use is an affirmative defense to a claim of
infringement, Google bears the burden to prove that thestatutory factors weigh in its favor. Id. at 590. Not all of
the four factors must favor Google, however. See Wall
Data Inc. v. L.A. Cty. Sheriff’s Dep’t, 447 F.3d 769, 778(9th Cir. 2006). Instead, “fair use is appropriate where a‘reasonable copyright owner’ would have consented to theuse, i.e., where the ‘custom or public policy’ at the time
would have defined the use as reasonable.” Id. (citation
omitted).
On appeal, Oracle argues that each of the four statutory factors weighs against a finding of fair use. Specifically, it submits that: (1) the purpose and character of
Google’s use was purely for commercial purposes; (2) thenature of Oracle’s work is highly creative; (3) Google
copied 11,330 more lines of code than necessary to writein a Java language-based program; and (4) Oracle’s
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Android because Google provided free access to it. In thealternative, Oracle argues that it is entitled to a new trial
because the district court made several errors that deprived it of a fair opportunity to present its case. Because, as explained below, we agree with Oracle that
Google’s copying was not fair use as a matter of law, weneed not address Oracle’s alternative arguments for a
new trial.
B. Standards of Review
Before turning to a consideration of the four statutory
factors and any relevant underlying factual determinations, we first address the standard of review we are to
employ in that consideration. While this section of mostappellate opinions presents easily resolvable questions,like much else in the fair use context, that is not completely the case here.
There are several components to this inquiry. First,
which aspects of the fair use determination are legal innature and which are factual? Particularly, is the ultimate question of fair use a legal inquiry which is to bereviewed de novo? Second, what factual questions are
involved in the fair use determination and under whatstandard are those determinations to be reviewed? Finally, though neither party addresses the question in detail,
we consider what, if any, aspects of the fair use determination are for the jury to decide.
The Supreme Court has said that fair use is a mixed
question of law and fact. Harper & Row, 471 U.S. at 560(citing Pac. & S. Co. v. Duncan, 744 F.2d 1490, 1495 n.8(11th Cir. 1984)). Merely characterizing an issue as amixed question of law and fact does not dictate the applicable standard of review, however. See U.S. Bank Nat’l
Ass’n ex rel. CWCapital Asset Mgmt. LLC, No. 15-1509,
2018 WL 1143822, at *5 (U.S. Mar. 5, 2018).

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The Supreme Court has recently explained how weare to determine what the standard of review should be inconnection with any mixed question of law and fact. Id.
Specifically, the Court made clear that an appellate court
is to break mixed questions into their component parts
and to review each under the appropriate standard ofreview. Id. at *5-7. In U.S. Bank, the Supreme Court
considered the level of review to be applied to a Bankruptcy Court’s determination of whether a creditor in abankruptcy action qualified as a “non-statutory insider”
for purposes of 11 U.S.C. § 1129(a). Id. at *3-4. The
Court found that there were three components to thatinquiry: (1) determining the legal standard governing thequestion posed and what types of historical facts are
relevant to that standard; (2) finding what the historicalfacts in the case at hand are; and (3) assessing whether
the historical facts found satisfy the legal test governing
the question to be answered. Id. at *4-5. As the Court
explained, the first of these three is a purely legal question to be reviewed de novo on appeal and the second
involves factual questions which “are reviewable only forclear error.” Id. at *4 (citing Fed. R. Civ. P. 52(a)(6) (clear
error standard)). The third is what the Court characterized as the “mixed question.” Id. at *5.
Importantly, the Court noted that “[m]ixed questions
are not all alike.” Id. The Court then held that “thestandard of review for a mixed question all depends—on
whether answering it entails primarily legal or factual
work.” Id. Where applying the law to the historical facts“involves developing auxiliary legal principles of use inother cases—appellate courts should typically review adecision de novo.” Id. (citing Salve Regina College v.
Russell, 499 U.S. 225, 231-33 (1991)). But where themixed question requires immersion in case-specific factualissues that are so narrow as to “utterly resist generalization,” the mixed question review is to be deferential. Id.
(quoting Pierce v. Underwood, 487 U.S. 552, 561-62(20 of 59)

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be deferential because de novo review of the question
would do little to “clarify legal principles or provide guidance to other courts resolving other disputes.” Id. at *7.
While this may be the first time the Supreme Court
has so clearly explained how appellate courts are to
analyze mixed questions of law and fact, it is not the firsttime the Supreme Court has told us how to analyze theparticular mixed question of law and fact at issue here.
In other words, while the Supreme Court has not previously broken the fair use inquiry into its three analyticalcomponents as expressly as it did the question in U.S.
Bank, it has made clear that both the first and third of
those components are subject to de novo review.
In Harper & Row, the Court explained that, “[w]here
the district court has found facts sufficient to evaluateeach of the statutory factors, an appellate court ‘need not
remand for further factfinding but may conclude as amatter of law that the challenged use does not qualify asa fair use of the copyrighted work.’” 471 U.S. at 560(quoting Pac. & S. Co., 744 F.2d at 1495) (internal alterations omitted)). The Ninth Circuit has resolved the question in the same way. Where fair use is resolved onsummary judgment, the Ninth Circuit reviews the district
court’s ultimate determination de novo. SOFA Entm’t,
Inc. v. Dodger Prods., Inc., 709 F.3d 1273, 1277 (9th Cir.
2013) (“Whether Dodger’s use of the clip constitutes fairuse is a mixed question of law and fact that we review de
novo.”). That court has explained that, “as fair use is amixed question of fact and law, so long as the record is‘sufficient to evaluate each of the statutory factors,’ wemay reweigh on appeal the inferences to be drawn fromthat record.’” Mattel Inc. v. Walking Mountain Prods.,
353 F.3d 792, 800 (9th Cir. 2003) (quoting L.A. News Serv.
v. CBS Broad., Inc., 305 F.3d 924, 942 (9th Cir. 2002)).

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This treatment of the ultimate question posed when afair use defense is raised makes sense. The fair use
question entails, in the words of U.S. Bank, a primarily
legal exercise. It requires a court to assess the inferences
to be drawn from the historical facts found in light of thelegal standards outlined in the statute and relevant caselaw and to determine what conclusion those inferences
dictate. Because, as noted below, the historical facts in afair use inquiry are generally few, generally similar fromcase to case, and rarely debated, resolution of what any
set of facts means to the fair use determination definitely
does not “resist generalization.” See U.S. Bank, 2018 WL
1143822, at *5. Instead, the exercise of assessing whether
a use is fair in one case will help guide resolution of thatquestion in all future cases.
For these reasons, we conclude that whether the court
applied the correct legal standard to the fair use inquiry
is a question we review de novo, whether the findings
relating to any relevant historical facts were correct arequestions which we review with deference, and whether
the use at issue is ultimately a fair one is something we
also review de novo.
We have outlined the legal standard governing fairuse above. We consider below whether the court properly
applied those standards in the course of its fair use analysis and whether it reached the correct legal conclusion
with respect to fair use. Before doing so, we briefly discuss the historical facts relevant to the fair use inquiry
and consider the jury’s role in determining those facts.
The Supreme Court has described “historical facts” as“a recital of external events.” Thompson v. Keohane, 516
U.S. 99, 110 (1995); see also U.S. Bank, 2018 WL
1143822, at *4 (describing the historical facts at issue
there as facts relating to “the attributes of a particular
relationship or the circumstances and terms of a priortransaction”). In the fair use context, historical facts(22 of 59)

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include the “origin, history, content, and defendant’s use”
of the copyrighted work. Fitzgerald v. CBS Broad., Inc.,
491 F. Supp. 2d 177, 184 (D. Mass. 2007); see also Lotus
Dev. Corp. v. Borland Int’l, Inc., 788 F. Supp. 78, 95 (D.
Mass 1992) (defining historical facts to include “who did
what, where, and when”). When asked at oral argument
to identify historical facts relevant to the fair use inquiry,
counsel for Oracle agreed that they are the “who, what,
where, when, how, [and] how much.” Oral Arg. at 3:2854,
availableat
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
17-1118.mp3. Google did not dispute this characterization. This is, in part, because, in most fair use cases,
defendants concede that they have used the copyrighted
work, and “there is rarely dispute over the history, content, or origin of the copyrighted work.” See Ned Snow,
Judges Playing Jury: Constitutional Conflicts in Deciding
Fair Use on Summary Judgment, 44 U.C. Davis L. Rev.
483, 493 (2010).
While some courts once treated the entire question offair use as factual, and, thus, a question to be sent to thejury, that is not the modern view. 3 Since Harper & Row,
the Ninth Circuit has described fair use as an “equitabledefense.” Fisher v. Dees, 794 F.2d 432, 435 (9th Cir. 1986)(“The fair-use doctrine was initially developed by courts
as an equitable defense to copyright infringement.”).
Indeed, the Supreme Court referred to fair use as “an

In DC Comics, Inc. v. Reel Fantasy, Inc., 696 F.2d
24, 28 (2d Cir. 1982), the Second Circuit found that “[t]hefour factors listed in Section 107 raise essentially factualissues and, as the district court correctly noted, are normally questions for the jury.” So too, Justice Joseph Story
described fair use as a “question of fact to come to a jury”
in 1845. Emerson v. Davies, 8 F. Cas. 615, 623-24 (C.C.D.
Mass. 1845).
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equitable rule of reason” in Harper & Row. 471 U.S. at
560. Congress did the same when it codified the doctrineof fair use in 1976. See H.R. Rep. No. 94-1476, 94th
Cong., 2d Sess. 65-66 (1976), U.S. Code Cong. & Admin.
News 1976, 5659, 5679-80 (“[S]ince the doctrine [of fairuse] is an equitable rule of reason, no generally applicabledefinition is possible, and each case raising the question
must be decided on its own facts . . . .”). If fair use isequitable in nature, it would seem to be a question for thejudge, not the jury, to decide, even when there are factual
disputes regarding its application. See Granite State Ins.
Co. v. Smart Modular Techs., Inc., 76 F.3d 1023, 1027
(9th Cir. 1996) (“A litigant is not entitled to have a jury
resolve a disputed affirmative defense if the defense isequitable in nature.”). In that instance, it would be thejudge’s factual determinations that would receive a deferential review—being assessed for clear error on the record
before the court.
That said, the Supreme Court has never clarified
whether and to what extent the jury is to play a role in
the fair use analysis. Harper & Row involved an appeal
from a bench trial where the district court concluded thatthe use of the copyrighted material was not a fair use.
Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d
195, 199 (2d Cir. 1983). The Court, thus, had no reason
to discuss a jury determination of fair use and has notsince taken an opportunity to do so.
Perhaps because of this silence, even after Harper &Row, several courts—including the Ninth Circuit—havecontinued to accept the fact that the question of fair use
may go to a jury, albeit without analysis of why it may.
Compaq Comput. Corp. v. Ergonome Inc., 387 F.3d 403,
411 (5th Cir. 2004) (“The evidence presented at trial andthe reasonable inferences therefrom, when viewed
through the lens of the statutory fair use factors, support
the jury’s fair use finding.”); Jartech, Inc. v. Clancy, 666
F.2d 403, 407-08 (9th Cir. 1982) (concluding that substan-(24 of 59)

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tial evidence supported the jury’s verdict on fair use);
Fiset v. Sayles, No. 90-16548, 1992 WL 110263, at *4 (9thCir. May 22, 1992) (finding that a reasonable jury could
have concluded that “the evidence supporting fair use was
not substantial”); see also BUC Int’l Corp. v. Int’l Yacht
Council, 489 F.3d 1129, 1137 (11th Cir. 2007) (noting thatthe fair use defense went to the jury); N.Y. Univ. v. Planet
Earth Found., 163 F. App’x 13, 14 (2d Cir. 2005) (“As tothe copyright infringement claim, the evidence also supports the jury’s finding of fair use, under the four-factored
analysis prescribed by statute.”).
The Ninth Circuit has clarified, however, that the juryrole in this context is limited to determining disputed“historical facts,” not the inferences or conclusions to be
drawn from those facts. See Fisher, 794 F.2d at 436. In
Fisher, for example, the court explained that “[n]o material historical facts are at issue in this case. The parties
dispute only the ultimate conclusions to be drawn fromthe admitted facts. Because, under Harper & Row, thesejudgments are legal in nature, we can make them without
usurping the function of the jury.” Id.; see also Seltzer v.
Green Day, Inc., 725 F.3d 1170, 1175 (9th Cir. 2013) (“Asin Fisher, ‘[n]o material historical facts are at issue in thiscase. The parties dispute only the ultimate conclusion to
be drawn from the admitted facts.’” (citing Fisher, 794
F.2d at 436)); Hustler Magazine, Inc. v. Moral Majority,
Inc., 606 F. Supp. 1526, 1532 (C.D. Cal. 1985) (noting that“fair use normally is a question of fact for the jury,” butconcluding that “the issue of fair use, at least in thecontext of this case, presents primarily a question oflaw”). Accordingly, while inferences from the four-factor
analysis and the ultimate question of fair use are “legal innature,” in the Ninth Circuit, disputed historical facts
represent questions for the jury. Fisher, 794 F.2d at 436.
Where there are no disputed material historical facts, fairuse can be decided by the court alone. Id.

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Despite this case law, all aspects of Google’s fair use
defense went to the jury with neither party arguing thatit should not. Thus, the jury was asked not just what thehistorical facts were, but what the implications of thosefacts were for the fair use defense. During the first appeal, Google argued to this court that there were disputed
issues of material historical fact relevant to its fair use
defense. As discussed below, the parties stipulated—or atleast ceased to dispute—some of those facts, and presented the remaining disputed historical facts to the jury on
remand. The jury returned a verdict in favor of Google onits fair use defense. Because the verdict form—thoughcaptioned as a “special verdict”—did not ask the jury toarticulate its fact findings in any detail, we must assume
that the jury resolved all factual issues relating to thehistorical facts in favor of the verdict. 4 Despite the posture of the fair use finding, we must break that finding
into its constituent parts. We must then review thesubsidiary and controverted findings of historical fact for
As counsel for Oracle noted at oral argument, thisis similar to the standard we apply in obviousness cases.
Oral Argument at 9:34-10:24. Because obviousness is amixed question of law and fact, we “first presume that thejury resolved the underlying factual disputes in favor of
the verdict [ ] and leave those presumed findings undisturbed if they are supported by substantial evidence.
Then we examine the [ultimate] legal conclusion [ofobviousness] de novo to see whether it is correct in light ofthe presumed jury fact findings.” Kinetic Concepts, Inc. v.
Smith & Nephew, Inc., 688 F.3d 1342, 1356-57 (Fed. Cir.
2012) (quoting Jurgens v. McKasy, 927 F.2d 1552, 1557
(Fed. Cir. 1991)). Likewise, Google cited our decision in
Kinetic Concepts for the proposition that we must “presume that the jury made all findings in support of theverdict that are supported by substantial evidence.”
Cross-Appellant Br. 35.
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substantial evidence. See Seltzer, 725 F.3d at 1175; seealso Brewer v. Hustler Magazine, Inc., 749 F.2d 527, 528(9th Cir. 1984) (“We may disturb a jury verdict only if theevidence was insufficient as a matter of law.”).
All jury findings relating to fair use other than its implied findings of historical fact must, under governing
Supreme Court and Ninth Circuit case law, be viewed asadvisory only. Accordingly, while we might assess thejury’s role in the assessment of fair use differently if notbound by Ninth Circuit law, we proceed on the assumption both that: (1) it was not error to send the question to
the jury, because the Ninth Circuit has at least implicitly
endorsed doing so; and (2) we must assess all inferences
to be drawn from the historical facts found by the jury
and the ultimate question of fair use de novo, because theNinth Circuit has explicitly said we must do so.
The parties have identified the following historicalfacts relating to Google’s use of the copyrighted work:•

the history and origin of the copyrighted work,
including what declaring code is;•how much of the copyrighted work was copied;•whether there were other ways to write the API
packages;•whether the copied material was used for thesame purpose as in the original work;•

whether the use was commercial in nature;•whether Google acted in bad faith in copying thework;(27 of 59)

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27•

whether there are functional aspects to the copyrighted work that make it less deserving ofprotection; and•whether there was harm to the actual or potential markets for the copyrighted work.

The parties now agree on the resolution of the first
four factual questions: (1) what the declaring code is andwhat it does in Java SE and Android, and that the code atissue was a work created by Oracle; (2) how many lines ofcode were copied; (3) that there were other ways for
Google to write API packages; and (4) that Google used
the API packages in Android for the same purpose they
were created for in Java. The parties dispute, however,
the remaining historical facts they identified. We address
those disputes in the context of our assessment of thestatutory factors to which the respective historical fact isrelevant.
C. Applying the Fair Use Factors
Factor 1: The Purpose and Character of the Use
The first factor in the fair use inquiry involves “thepurpose and character of the use, including whether such
use is of a commercial nature or is for nonprofit educational purposes.” 17 U.S.C. § 107(1). This factor has two
primary components: (1) whether the use is commercial innature, rather than for educational or public interest
purposes; and (2) “whether the new work is transformative or simply supplants the original.” Wall Data, 447
F.3d at 778 (citing Campbell, 510 U.S. at 579). As explained below, the first is a question of fact and the second is a question of law. As Oracle points out, moreover,courts sometimes also consider whether the historicalfacts support the conclusion that the infringer acted inbad faith. See Harper & Row, 471 U.S. at 562. We address each component in turn.

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a. Commercial Use
Analysis of the first factor requires inquiry into thecommercial nature of the use. Use of the copyrighted
work that is commercial “tends to weigh against a findingof fair use.” Harper & Row, 471 U.S. at 562. Courts haverecognized, however, that, “[s]ince many, if not most,secondary users seek at least some measure of commercial
gain from their use, unduly emphasizing the commercial
motivation of a copier will lead to an overly restrictive
view of fair use.” Am. Geophysical Union v. Texaco, Inc.,
60 F.3d 913, 921 (2d Cir. 1994); see also Infinity Broad.
Corp. v. Kirkwood, 150 F.3d 104, 109 (2d Cir. 1998)(“[N]otwithstanding its mention in the text of the statute,commerciality has only limited usefulness to a fair use
inquiry; most secondary uses of copyrighted material,
including nearly all of the uses listed in the statutory
preamble, are commercial.”). Accordingly, although thestatute requires us to consider the “commercial nature” ofthe work, “the degree to which the new user exploits the
copyright for commercial gain—as opposed to incidental
use as part of a commercial enterprise—affects the weight
we afford commercial nature as a factor.” Elvis PresleyEnters., Inc. v. Passport Video, 349 F.3d 622, 627 (9th Cir.
2003).
“[I]t is undisputed that Google’s use of the declaring
code and SSO from 37 Java API packages served commercial purposes.” Order Denying JMOL, 2016 WL 3181206,
at *7. Although the jury was instructed that commercial
use weighed against fair use, the district court explainedthat the jury “could reasonably have found that Google’s
decision to make Android available open source and free
for all to use had non-commercial purposes as well (suchas the general interest in sharing software innovation).”Id.
On appeal, Oracle argues that Android is “hugely
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Java in Android.” Appellant Br. 29. As such, Oracle
maintains that no reasonable jury could have foundAndroid anything but “overwhelmingly commercial.” Id. 5
Google responds that: (1) because it gives Android
away for free under an open source license the jury could
have concluded that Android has non-commercial purposes; and (2) the jury could have reasonably found that
Google’s revenue flows from the advertisements on its
search engine which preexisted Android. Neither argument has merit.
First, the fact that Android is free of charge does notmake Google’s use of the Java API packages noncommercial. Giving customers “for free something theywould ordinarily have to buy” can constitute commercial
use. A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004,
1015 (9th Cir. 2001) (finding that “repeated and exploitative copying of copyrighted works, even if the copies are
not offered for sale, may constitute a commercial use”).
That Google might also have non-commercial motives is
Oracle also argues that Google conceded that its
use was “entirely commercial” during oral argument tothis court in the first appeal. Order Denying JMOL, 2016
WL 3181206, at *7 (“Q: But for purpose and character,though, you don’t dispute that it was entirely a commercial purpose. A: No.”). The district court treated thiscolloquy as a judicial admission that Google’s use was“commercial.” Id. (noting that the word “entirely” was“part of the give and take” of oral argument). The court
therefore instructed the jury that Google’s use was commercial, but that it was up to the jury to determine theextent of the commerciality. Id. at *8. Oracle does notchallenge the district court’s jury instructions on appeal.
In any event, as the district court noted, “even a whollycommercial use may still constitute fair use.” Id. at *7(citing Campbell, 510 U.S. at 585).
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irrelevant as a matter of law. As the Supreme Court
made clear when The Nation magazine published excerpts
from Harper & Row’s book, partly for the purpose ofproviding the public newsworthy information, the question “is not whether the sole motive of the use is monetary
gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price.” Harper & Row, 471 U.S. at 562. Second,although Google maintains that its revenue flows fromadvertisements, not from Android, commerciality does notdepend on how Google earns its money. Indeed, “[d]irect
economic benefit is not required to demonstrate a commercial use.” A&M Records, 239 F.3d at 1015. We find,therefore, that, to the extent we must assume the jury
found Google’s use of the API packages to be anythingother than overwhelmingly commercial, that conclusion
finds no substantial evidentiary support in the record.
Accordingly, Google’s commercial use of the API packages
weighs against a finding of fair use.
b. Transformative Use
Although the Copyright Act does not use the word
“transformative,” the Supreme Court has stated that the“central purpose” of the first fair use factor is to determine “whether and to what extent the new work is transformative.” Campbell, 510 U.S. at 579. Transformative
works “lie at the heart of the fair use doctrine’s guaranteeof breathing space within the confines of copyright, andthe more transformative the new work, the less will be
the significance of other factors, like commercialism, that
may weigh against a finding of fair use.” Id. (internal
citation omitted).
A use is “transformative” if it “adds something new,with a further purpose or different character, altering thefirst with new expression, meaning or message.” Id. The
critical question is “whether the new work merely supersede[s] the objects of the original creation . . . or instead(31 of 59)

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adds something new.” Id. (citations and internal quotation marks omitted). This inquiry “may be guided by theexamples given in the preamble to § 107, looking towhether the use is for criticism, or comment, or news
reporting, and the like.” Id. at 578-79. “The Supreme
Court has recognized that parodic works, like other works
that comment and criticize, are by their nature often
sufficiently transformative to fit clearly under the fair use
exception.” Mattel Inc. v. Walking Mountain Prods., 353
F.3d 792, 800 (9th Cir. 2003) (citing Campbell, 510 U.S. at
579).
“Although transformation is a key factor in fair use,
whether a work is transformative is a often highly contentious topic.” Seltzer, 725 F.3d at 1176. Indeed, a “leading
treatise on this topic has lamented the frequent misuse of
the transformation test, complaining that it has become aconclusory label which is ‘all things to all people.’” Id.
(quoting Melville B. Nimmer & David Nimmer, 4 Nimmer
on Copyright § 13.05[A][1][b], 13168-70 (2011)).
To be transformative, a secondary work must either
alter the original with new expression, meaning, or message or serve a new purpose distinct from that of theoriginal work. Campbell, 510 U.S. at 579; Elvis PresleyEnters., 349 F.3d at 629. Where the use “is for the same
intrinsic purpose as [the copyright holder’s] . . . such use
seriously weakens a claimed fair use.” Worldwide Churchof God v. Phila. Church of God, Inc., 227 F.3d 1110, 1117
(9th Cir. 2000) (quoting Weissmann v. Freeman, 868 F.2d
1313, 1324 (2d Cir. 1989)).
Although “transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, topromote science and the arts, is generally furthered by
the creation of transformative works.” Campbell, 510
U.S. at 579 (citation and footnote omitted). As such, “themore transformative the new work, the less will be thesignificance of other factors, like commercialism, that may(32 of 59)

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weigh against a finding of fair use.” Id. Importantly, in
the Ninth Circuit, whether a work is transformative is aquestion of law. See Mattel, 353 F.3d at 801 (explainingthat parody—a well-established species of transformativeuse—“is a question of law, not a matter of public majority
opinion”); see also Fox News Network, LLC v. TVEyes,
Inc., No. 15-3885, 2018 WL 1057178, at *3-4 (2d Cir. Feb.
27, 2018) (reassessing whether the use in question wastransformative and deciding it was as a matter of law).
In denying JMOL, the district court explained that “ofcourse, the copied declarations serve the same function inboth works, for by definition, declaring code in the Java
programming language serves the [same] specific definitional purposes.”Order Denying JMOL, 2016 WL
63181206, at *8. The court concluded, however, that thejury could reasonably have found that Google’s selectionof some, but not all, of the Java API packages—“with new

According to the district court, if this fact were
sufficient to defeat fair use, “it would be impossible everto duplicate declaring code as fair use and presumably theFederal Circuit would have disallowed this factor on thefirst appeal rather than remanding for a jury trial.” Id.
But in our prior decision, we remanded in part because
Google represented to this court that there were disputesof fact regarding how Android was used and whether theAPIs Google copied served the same function in Android
and Java. Oracle, 750 F.3d at 1376. Without the benefitof briefs exploring the record on these issues, and Google’s
later agreement with respect to these facts, we concluded
that we could not say that there were no material facts indispute. Id. As explained previously, however, thosefacts are no longer in dispute. The only question thatremains regarding transformative use is whether, on the
now undisputed facts, Google’s use of the APIs was, infact, transformative.
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implementing code adapted to the constrained operating
environment of mobile smartphone devices,” together withnew “methods, classes, and packages written by Google
for the mobile smartphone platform”—constituted “a fresh
context giving new expression, meaning, or message tothe duplicated code.” Id. at *9.
On appeal, Oracle argues that Google’s use was nottransformative because it did not alter the APIs with“new expression, meaning, or message.” Appellant Br. 29(quoting Campbell, 510 U.S. at 579). Because Google
concedes that it uses the API packages for the same
purpose, Oracle maintains that it was unreasonable for
either the jury or the court to find that Google sufficiently
transformed the APIs to overcome its highly commercial
use.
Google responds that a reasonable jury could haveconcluded that Google used a small portion of the Java
API packages to create a new work in a new context—“Android, a platform for smartphones, not desktops andservers.” Cross-Appellant Br. 37. Google argues that,
although the declarations and SSO may perform the samefunctions in Android and Java, the jury could reasonably
find that they have different purposes because the “pointof Android was to create a groundbreaking platform for
smartphones.” Id. at 39.
Google’s arguments are without merit. As explained
below, Google’s use of the API packages is not transformative as a matter of law because: (1) it does not fit within
the uses listed in the preamble to § 107; (2) the purpose of
the API packages in Android is the same as the purpose of
the packages in the Java platform; (3) Google made noalteration to the expressive content or message of the
copyrighted material; and (4) smartphones were not a
new context.
First, though not dispositive, we turn to the examples
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use is for criticism, or comment, or news reporting, andthe like.” Campbell, 510 U.S. at 578-79. Google’s use of
the Java API packages does not fit within the statutory
categories, and Google does not suggest otherwise. Instead, Google cites Sony Computer Entertainment, Inc. v.
Connectix Corp., 203 F.3d 596 (9th Cir. 2000), for the
proposition that the “Ninth Circuit has held other types ofuses—specifically including uses of computer code—to be
fair.” Cross-Appellant Br. 41. In Sony, the court foundthat the defendant’s reverse engineering and intermediate copying of Sony’s copyrighted software system “was afair use for the purpose of gaining access to the unprotected elements of Sony’s software.” 203 F.3d at 602. The
court explained that Sony’s software program contained
unprotected functional elements and that the defendant
could only access those elements through reverse engineering. Id. at 603. The defendant used that information
to create a software program that let consumers playgames designed for Sony’s PlayStation console on their
computers. The court found that the defendant’s use wasonly “modestly transformative” where: (1) the defendantcreated “a wholly new product” with “entirely new . . .
code,” and (2) the intermediate copying was performed to“produce a product that would be compatible.” Id. at 60607. As Oracle points out, even the “modest” level oftransformation at issue in Sony is more transformative
than what Google did here: copy code verbatim to attract
programmers to Google’s “new and incompatible platform.” Appellant Response Br. 21.
It is undisputed that the API packages “serve thesame function in both works.” Order Denying JMOL,
2016 WL 3181206, at *8. And, as Oracle explains, thehistorical facts relevant to transformative use are also
undisputed: what declaring code is, what it does in Javaand in Android, how the audience of computer developers
perceives it, how much Google took and added, what theadded code does, and why Google used the declaring code

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and SSO. Indeed, Google conceded that “including thedeclarations (and their associated SSO) was for the benefit of developers, who—familiar with the Java programming language—had certain expectations regarding thelanguage’s APIs.” Google’s Opp. to Oracle’s Rule 50(a)Motion for JMOL at 20, Oracle Am., Inc. v. Google Inc.,
No. 3:10-cv-3561 (N.D. Cal. May 21, 2016), ECF No. 1935.
The fact that Google created exact copies of the declaring
code and SSO and used those copies for the same purposeas the original material “seriously weakens [the] claimed
fair use.” See Wall Data, 447 F.3d at 778 (finding that,
where the “Sheriff’s Department created exact copies of
RUMBA’s software . . . [and] put those copies to theidentical purpose as the original software,” the use was
not transformative); see also Campbell, 510 U.S. at 580(noting that where the alleged infringer merely seeks “toavoid the drudgery in working up something fresh,” any“claim to fairness . . . diminishes accordingly”).
Google argues that Android is transformative because
Google selectively used the declarations and SSO of only
37 of the 166 Java SE API packages and wrote its own
implementing code. But taking only select passages of a
copyrighted work is, by itself, not transformative. See
L.A. News Serv. v. CBS Broad., Inc., 305 F.3d 924, 938-39(9th Cir. 2002) (“Merely plucking the most visually arresting excerpt from LANS’s nine minutes of footage cannot
be said to have added anything new.”). While, as discussed below, the volume of work copied is relevant to thefair use inquiry generally, thought must be given to thequality and importance of the copied material, not just to
its relative quantity vis-à-vis the overall work. See
Campbell, 510 U.S. at 586-87. To hold otherwise would
mean that verbatim copying could qualify as fair use aslong as the plagiarist stops short of taking the entire
work. That approach is inconsistent with settled law andis particularly troubling where, as here, the portion copied
is qualitatively significant. See Harper & Row, 471 U.S.

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at 569 (finding that verbatim copying of 300 words from amanuscript of more than 200,000 words was not a fairuse); see also Folsom v. Marsh, 9 F. Cas. 342, 345 (C.C.D.
Mass 1841) (Story, J.) (“There must be real, substantial
condensation of the materials, and intellectual labor andjudgment bestowed thereon; and not merely the facile useof the scissors; or extracts of the essential parts, constituting the chief value of the original work.”).
That Google wrote its own implementing code is irrelevant to the question of whether use of the APIs wastransformative. As we noted in the prior appeal, “noplagiarist can excuse the wrong by showing how much of
his work he did not pirate.” Oracle, 750 F.3d at 1375
(quoting Harper & Row, 471 U.S. at 565). The relevant
question is whether Google altered “the expressive content
or message of the original work” that it copied—not
whether it rewrote the portions it did not copy. See Seltzer, 725 F.3d at 1177 (explaining that a work is not transformative where the user “makes no alteration to theexpressive content or message of the original work”). Thatsaid, even where the allegedly infringing work “makes few
physical changes to the original or fails to comment on theoriginal,” it will “typically [be] viewed as transformative
as long as new expressive content or message is apparent.” Id. Here, however, there is no suggestion that the
new implementing code somehow changed the expression
or message of the declaring code. While Google’s use
could have been transformative if it had copied the APIs
for some other purpose—such as teaching how to design
an API—merely copying the material and moving it fromone platform to another without alteration is not transformative.
Google’s primary argument on appeal is that Android
is transformative because Google incorporated the declarations and SSO of the 37 API packages into a new context—smartphones. But the record showed that Java SE
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market. Specifically, Oracle presented evidence that JavaSE was in SavaJe mobile phones and that Oracle licensed
Java SE to other smartphone manufacturers, including
Danger and Nokia. Because the Java SE was alreadybeing used in smartphones, Google did not “transform”
the copyrighted material into a new context and no reasonable jury could conclude otherwise. 7
In any event, moving material to a new context is nottransformative in and of itself—even if it is a “sharply
different context.” TCA Television Corp. v. McCollum,
839 F.3d 168, 181-83 (2d Cir. 2016) (finding that use “atsome length, almost verbatim,” of the copyrighted comedy
routine “Who’s on First?” in a dramatic play was nottransformative where the play neither “imbued the Routine with any new expression, meaning, or message,” noradded “any new dramatic purpose”). As previously explained, a use becomes transformative only if it serves adifferent purpose or alters the “expression, meaning, or
message” of the original work. Kelly, 336 F.3d at 818. As
such, “[c]ourts have been reluctant to find fair use whenan original work is merely retransmitted in a different
medium.” A&M Records, 239 F.3d at 1015. Accordingly,
although a change of format may be “useful,” it “is nottechnically a transformation.” Infinity Broad., 150 F.3d
at 108 n.2 (finding that retransmitting copyrighted radiotransmissions over telephone lines was not transformative because there was no new expression, meaning, or
message).

Because we conclude that smartphones were not a
new context, we need not address the argument, made byOracle and certain amici, that the district court’s order
excluding evidence of Google’s use of Android in multiple
other circumstances—including laptops—tainted thejury’s and the court’s ability to fairly assess the characterof the use.
7

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The Ninth Circuit has stated that “[a] use is considered transformative only where a defendant changes aplaintiff’s copyrighted work or uses the plaintiff’s copyrighted work in a different context such that the plaintiff’s work is transformed into a new creation.” Perfect 10,
Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir.
2007) (quoting Wall Data, 447 F.3d at 778). In Perfect 10,
for example, the court found Google’s use of thumbnail
versions of copyrighted images “highly transformative”
because, “[a]lthough an image may have been createdoriginally to serve an entertainment, aesthetic, or informative function, a search engine transforms the image
into a pointer directing a user to a source of information.”
Id. Although the court discussed the change in context(moving the copyrighted images into the electronic reference tool), it emphasized that Google used the images “ina new context to serve a different purpose.” Id. In reaching this conclusion, the court reiterated that “even making an exact copy of a work may be transformative so longas the copy serves a different function than the original
work.” Id. (citing Kelly, 336 F.3d at 818-19). It is clear,
therefore, that the change in context alone was not dispositive in Perfect 10; rather, the change in context facilitatedthe change in purpose, which made the use transformative.
To some extent, any use of copyrighted work takes
place in a slightly different context than the original. Andof course, there is no bright line identifying when a use
becomes transformative. But where, as here, the copying
is verbatim, for an identical function and purpose, andthere are no changes to the expressive content or message, a mere change in format (e.g., from desktop andlaptop computers to smartphones and tablets) is insuffi-(39 of 59)

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cient as a matter of law to qualify as a transformativeuse. 8c. Bad faith
In evaluating the “purpose and character” factor, theNinth Circuit applies “the general rule that a party
claiming fair use must act in a manner generally compatible with principles of good faith and fair dealing.” Perfect
10, 508 F.3d at 1164 n.8 (citing Harper & Row, 471 U.S.
at 562-63). In part, this is based on the fact that, in
Harper & Row, the Supreme Court expressly stated that“[f]air use presupposes ‘good faith’ and ‘fair dealing.’” 471
U.S. at 562 (citation omitted). It is also in part true
because, as the Ninth Circuit has said, one who acts in
bad faith should be barred from invoking the equitabledefense of fair use. Fisher, 794 F.2d at 436 (calling theprinciple of considering the alleged infringer’s “bad conduct” as a “bar [to] his use of the equitable defense of fairuse” a sound one). 9As some amici note, to hold otherwise could encroach upon the copyright holder’s right to “prepare
derivative works based upon the copyrighted work.” 17
U.S.C. § 106(2); see Br. of Amicus Curiae N.Y. Intell. Prop.
L. Ass’n at 17-20.
8

As the district court recognized, there is some debate about whether good or bad faith should remain
relevant to the factor one inquiry. Order Denying JMOL,
2016 WL 3181206, at *2 (“[T]here is a respectable viewthat good or bad faith should no longer be a consideration
after the Supreme Court’s decision in Campbell.”); see also
Hon. Pierre N. Leval, Toward a Fair Use Standard, 103
Harv. L. Rev. 1105, 1128 (1990) (“Whether the secondary
use is within the protection of the [fair use] doctrine
depends on factors pertinent to the objectives of the9(40 of 59)

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Consistent with this authority, and at Oracle’s request, the district court instructed the jury that it could
consider whether Google acted in bad faith (or not) as partof its assessment of the first fair use factor. Order Denying JMOL, 2016 WL 3181206, at *6. And, because Oracle
was permitted to introduce evidence that Google acted inbad faith, the court permitted Google to try to prove its
good faith. Id.
At trial, Oracle introduced evidence suggesting that
“Google felt it needed to copy the Java API as an accelerant to bring Android to the market quicker” and knewthat it needed a license to use Java. Id. For its part,
Google presented evidence that it believed that the declaring code and SSO were “free to use and re-implement,
both as a matter of developer practice and because theavailability of independent implementations of the JavaAPI enhanced the popularity of the Java programming
language, which Sun promoted as free for all to use.” Id.
at *7. Given this conflicting evidence, the district court
copyright law and not on the morality or motives of either
the secondary user or the copyright-owning plaintiff.”). In
Campbell, the Supreme Court expressed skepticism about“the weight one might place on the alleged infringer’s
state of mind.” Campbell, 510 U.S. at 585 n.18. But theNinth Circuit has not repudiated its view that “‘the propriety of the defendant’s conduct’ is relevant to the character of the use at least to the extent that it may
knowingly have exploited a purloined work for free that
could have been obtained for a fee.” L.A. News Serv. v.
KCAL-TV Channel 9, 108 F.3d 1119, 1122 (9th Cir. 1997)(quoting Harper & Row, 471 U.S. at 562). For that reason, and because we conclude in any event that the jury
must have found that Google did not act in bad faith, we
address that question and the parties’ arguments relating
thereto.

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found that the jury could reasonably have concluded that
“Google’s use of parts of the Java API as an accelerant
was undertaken based on a good faith belief that at least
the declaring code and SSO were free to use (which it diduse), while a license was necessary for the implementing
code (which it did not use).” Id.
On appeal, Oracle argues that there was ample evidence that Google intentionally copied Oracle’s copyrighted work and knew that it needed a license to use Java.
Google responds that the jury heard sufficient evidence ofGoogle’s good faith based on industry custom and wasentitled to credit that evidence.
But, while bad faith may weigh against fair use, a
copyist’s good faith cannot weigh in favor of fair use.
Indeed, the Ninth Circuit has expressly recognized that“the innocent intent of the defendant constitutes nodefense to liability.” Monge, 688 F.3d at 1170 (quoting 4
Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.08[B][1] (Matthew Bender rev. ed. 2011)). If it
were clear, accordingly, that the jury found fair use solely
or even largely because it approved of Google’s motives
even if they were in bad faith, we would find such a
conclusion improper. Because evidence of Google’s goodfaith was relevant to rebut evidence of its bad faith,
however, and there is no objection to the instructions to
the jury on this or any other point, we must assume thatthe jury simply did not find the evidence of Google’s bad
faith persuasive. 10 We note, moreover, that merely “being

The jury was instructed that, “[i]n evaluating theextent to which Google acted in good faith or not, you may
take into account, together with all other circumstances,the extent to which Google relied upon or contravened any
recognized practices in the industry concerning reimplementation of API libraries.” Order Denying JMOL,
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denied permission to use a work does not weigh against afinding of fair use.” Campbell, 510 U.S. at 585 n.18 (“Ifthe use is otherwise fair, then no permission need besought or granted.”).
Ultimately, we find that, even assuming the jury was
unpersuaded that Google acted in bad faith, the highly
commercial and non-transformative nature of the use
strongly support the conclusion that the first factor
weighs against a finding of fair use.
Factor 2: Nature of the Copyrighted Work
The second factor—the nature of the copyrighted
work—“calls for recognition that some works are closer tothe core of intended copyright protection than others, withthe consequence that fair use is more difficult to establish
when the former works are copied.” Campbell, 510 U.S.
at 586. This factor “turns on whether the work is informational or creative.” Worldwide Church of God, 227
F.3d at 1118; see also Harper & Row, 471 U.S. at 563(“The law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy.”).
Creative expression “falls within the core of the copyright’s protective purposes.” Campbell, 510 U.S. at 586.
Although “software products are not purely creative
works,” it is well established that copyright law protects
computer software. Wall Data, 447 F.3d at 780 (citing
Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1519
(9th Cir. 1992) (“[T]he 1980 amendments to the CopyrightAct unambiguously extended copyright protection tocomputer programs.”)).
Here, the district court found that the jury could haveconcluded that the process of designing APIs was “highly
creative” and “thus at the core of copyright’s protection” or2016 WL 3181206, at *3 n.2. Oracle has not challenged
this instruction on appeal.

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it could “reasonably have gone the other way and concluded that the declaring code was not highly creative.” Order
Denying JMOL, 2016 WL 3181206, at *10. While the jury
heard testimony from Google’s own expert that API
design is “an art, not a science,” other witnesses emphasized the functional role of the declaring code and the SSO
and minimized the creative aspects. Id. Accordingly, thedistrict court concluded that the “jury could reasonably
have found that, while the declaring code and SSO werecreative enough to qualify for copyright protection, functional considerations predominated in their design.” Id.
On appeal, Oracle emphasizes that designing theAPIs was a highly creative process and that the organization of the packages was not mandated by function.
Indeed, this court has already held that the declaring codeand the SSO of the 37 API packages at issue were sufficiently creative and original to qualify for copyrightprotection. Oracle, 750 F.3d at 1356. According to Oracle, the district court erred in assuming that, because theAPIs have a “functional role,” they cannot be creative.
As Google points out, however, all we found in thefirst appeal was that the declarations and SSO were
sufficiently creative to provide the “minimal degree ofcreativity,” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499
U.S. 340, 345 (1991), that is required for copyrightability.
We also recognized that a reasonable jury could find that“the functional aspects of the packages” are “relevant toGoogle’s fair use defense.” Oracle, 750 F.3d at 1369, 137677. On remand, Oracle stipulated that some of the declarations were necessary to use the Java language andpresented no evidence explaining how the jury could
distinguish the functionality and creativity of thosedeclarations from the others. Google maintains that itpresented evidence that the declarations and SSO werefunctional and the jury was entitled to credit that evidence.

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Although it is clear that the 37 API packages at issue
involved some level of creativity—and no reasonable juror
could disagree with that conclusion—reasonable jurors
could have concluded that functional considerations wereboth substantial and important. Based on that assumed
factual finding, we conclude that factor two favors afinding of fair use.
The Ninth Circuit has recognized, however, that thissecond factor “typically has not been terribly significant in
the overall fair use balancing.” Dr. Seuss Enters., L.P. v.
Penguin Books USA, Inc., 109 F.3d 1394, 1402 (9th Cir.
1997) (finding that the “creativity, imagination andoriginality embodied in The Cat in the Hat and its central
character tilts the scale against fair use”); Mattel, 353
F.3d at 803 (similar). Other circuits agree. Fox News
Network, 2018 WL 1057178, at *5 (“This factor ‘has rarely
played a significant role in the determination of a fair use
dispute,’ and it plays no significant role here.” (quoting
Authors Guild v. Google, Inc., 804 F.3d 202, 220 (2d Cir.
2015))). We note, moreover, that allowing this one factor
to dictate a conclusion of fair use in all cases involving
copying of software could effectively negate Congress’s
express declaration—continuing unchanged for some forty
years—that software is copyrightable.
Accordingly,
though the jury’s assumed view of the nature of the
copyrighted work weighs in favor of finding fair use, it hasless significance to the overall analysis.
Factor 3: Amount and Substantiality of the Portion Used
The third factor focuses on the “amount and substantiality of the portion used in . . . the context of the copyrighted work, not the infringing work.” Oracle, 750 F.3d
at 1375. Indeed, the statutory language makes clear that“a taking may not be excused merely because it is insubstantial with respect to the infringing work.” Harper &Row, 471 U.S. at 565. “[T]he fact that a substantial
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the original work] is evidence of the qualitative value ofthe copied material, both to the originator and to theplagiarist who seeks to profit from marketing someone
else’s copyrighted expression.” Id. Thus, while “wholesale copying does not preclude fair use per se, copying anentire work militates against a finding of fair use.”
Worldwide Church of God, 227 F.3d at 1118 (citation andquotation marks omitted). But, there is no relevance tothe opposite—i.e., adding substantial content to the
copyrighted work is not evidence that what was copied
was insubstantial or unimportant.
The inquiry under this third factor “is a flexible one,rather than a simple determination of the percentage ofthe copyrighted work used.” Monge, 688 F.3d at 1179.
The Ninth Circuit has explained that this third factor
looks to the quantitative amount and qualitative value ofthe original work used in relation to the justification for
its use. Seltzer, 725 F.3d at 1178. The percentage of work
copied is not dispositive where the portion copied was
qualitatively significant. Harper & Row, 471 U.S. at 566(“In view of the expressive value of the excerpts and their
key role in the infringing work, we cannot agree with theSecond Circuit that the ‘magazine took a meager, indeed
an infinitesimal amount of Ford’s original language.’”(citation omitted)). Google is correct that the Ninth
Circuit has said that, “this factor will not weigh against
an alleged infringer, even when he copies the whole work,
if he takes no more than is necessary for his intended
use.” Id. (citing Kelly v. Arriba Soft Corp., 336 F.3d 811,
820-21 (9th Cir. 2003)). But the Ninth Circuit has only
said that is true where the intended use was a transformative one, because the “extent of permissible copying
varies with the purpose and character of the use.” Id.
(quoting Campbell, 510 U.S. at 586-87). Here, we havefound that Google’s use was not transformative and
Google has conceded both that it could have written its
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Android attractive to programmers. “Necessary” in thecontext of the cases upon which Google relies does not
simply mean easier.
In assessing factor three, the district court explainedthat the “jury could reasonably have found that Google
duplicated the bare minimum of the 37 API packages, justenough to preserve inter-system consistency in usage,
namely the declarations and their SSO only, and did notcopy any of the implementing code,” such that Google“copied only so much as was reasonably necessary.”
Order Denying JMOL, 2016 WL 3181206, at *10. In
reaching this conclusion, the court noted that the jury
could have found that the number of lines of code Google
duplicated was a “tiny fraction of one percent of the
copyrighted works (and even less of Android, for thatmatter).” Id. We disagree that such a conclusion would
have been reasonable or sufficient on this record.
On remand, the parties stipulated that only 170 lines
of code were necessary to write in the Java language. It is
undisputed, however, that Google copied 11,500 lines ofcode—11,330 more lines than necessary to write in Java.
That Google copied more than necessary weighs against
fair use. See Monge, 688 F.3d at 1179 (finding that,
where the copyist “used far more than was necessary” ofthe original work, “this factor weighs against fair use”).
And, although Google emphasizes that it used a small
percentage of Java (11,500 lines of declarations out ofroughly 2.86 million lines of code in the Java SE libraries), it copied the SSO for the 37 API packages in its
entirety.
The district court emphasized Google’s desire to “preserve inter-system consistency” to “avoid confusion among
Java programmers as between the Java system and theAndroid system.”
Order Denying JMOL, 2016 WL
3181206, at *10-11. As we noted in the prior appeal,
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consistency” between its platform and Oracle’s Javaplatform. Oracle, 750 F.3d at 1371. And Google does notrely on any interoperability arguments in this appeal. 11
Google sought “to capitalize on the fact that softwaredevelopers were already trained and experienced in using
the Java API packages at issue.” Id. But there is noinherent right to copy in order to capitalize on the popularity of the copyrighted work or to meet the expectationsof intended customers. Taking those aspects of the copyrighted material that were familiar to software developers
to create a similar work designed to be popular with thosesame developers is not fair use. See Dr. Seuss Enters.,
109 F.3d at 1401 (copying the most famous and wellrecognized aspects of a work “to get attention” or “to avoid
the drudgery in working up something fresh” is not a fairuse (quoting Campbell, 510 U.S. at 580)).
Even assuming the jury accepted Google’s argumentthat it copied only a small portion of Java, no reasonable
jury could conclude that what was copied was qualitatively insignificant, particularly when the material copied
was important to the creation of the Android platform.
Google conceded as much when it explained to the jury
the importance of the APIs to the developers it wished to
attract. See Tr. of Proceedings held on 5/16/16 at 106:8-

In the prior appeal, we noted that “Google’s competitive desire to achieve commercial ‘interoperability’ . . .
may be relevant to a fair use analysis.” Oracle, 750 F.3d
at 1376-77. But, although several amici in this appeal
discuss interoperability concerns, Google has abandoned
the arguments it once made about interoperability. Thischange in course is not surprising given the unrebutted
evidence that Google specifically designed Android to beincompatible with the Java platform and not allow forinteroperability with Java programs. Id. at 1371.
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14, Oracle Am., Inc. Google Inc., No. 3:10-cv-3561 (N.D.
Cal. May 20, 2016), ECF No. 1930; Id. at 134:6-11. Indeed, Google’s own expert conceded that “it was a soundbusiness practice for Google to leverage the existing
community of developers, minimizing the amount of newmaterial and maximizing existing knowledge,” eventhough Google also conceded that it could have written
the APIs differently to achieve the same functions. Id. at
144:5-10. For these reasons, we find that the third factor
is, at best, neutral in the fair use inquiry, and arguably
weighs against such a finding.
Factor 4: Effect Upon the Potential Market
The fourth and final factor focuses on “the effect of theuse upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4). This factor reflects theidea that fair use “is limited to copying by others which
does not materially impair the marketability of the work
which is copied.” Harper & Row, 471 U.S. at 566-67. It
requires that courts “consider not only the extent ofmarket harm caused by the particular actions of thealleged infringer, but also whether unrestricted andwidespread conduct of the sort engaged in by the defendant . . . would result in a substantially adverse impact on
the potential market for the original.” Campbell, 510 U.S.
at 590 (citation and quotation marks omitted).
The Supreme Court once said that factor four is “undoubtedly the single most important element of fair use.”
Harper & Row, 471 U.S. at 566. In its subsequent opinion
in Campbell, however, the Court emphasized that none of
the four factors can be viewed in isolation and that “[a]ll
are to be explored, and the results weighed together, inlight of the purposes of copyright.” 510 U.S. at 578; seealso Infinity Broad., 150 F.3d at 110 (“Historically, thefourth factor has been seen as central to fair use analysis,
although the Supreme Court appears to have backed
away from this position.” (internal citation omitted)). The(49 of 59)

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Court has also explained that “[m]arket harm is a matterof degree, and the importance of this factor will vary, notonly with the amount of harm, but also with the relative
strength of the showing on the other factors.” Campbell,
510 U.S. at 590 n.21.
The Ninth Circuit recently indicated that likely market harm can be presumed where a use is “commercial
and not transformative.” Disney Enters., Inc. v. VidAngel,Inc., 869 F.3d 848, 861 (9th Cir. 2017) (citing Leadsinger,
512 F.3d at 531, for the proposition that, where a use“was commercial and not transformative, it was not error
to presume likely market harm”). That presumption
allegedly traces back to Sony Corp. of America v. University City Studios, Inc., 464 U.S. 417, 451 (1984), where theSupreme Court stated that, “[i]f the intended use is forcommercial gain, that likelihood [of future harm] may bepresumed. But if it is for a noncommercial purpose, thelikelihood must be demonstrated.” The Supreme Court
has since clarified that market impact, “no less than theother three [factors], may be addressed only through a‘sensitive balancing of interests’” and that earlier interpretations of Sony to the contrary were incorrect. Campbell, 510 U.S. at 590 n.21 (quoting Sony, 464 U.S. at 455
n.40); 12 see also Monge, 688 F.3d at 1181 (cautioning
against overemphasis on a presumption of market harm
after Campbell). On this point, we must apply clear
Supreme Court precedent rather than the more recent
Ninth Circuit’s statements to the contrary.

The Court noted, however, that “what Sony said
simply makes common sense: when a commercial use
amounts to mere duplication of the entirety of an original,
it clearly ‘supersede[s] the objects,’ of the original andserves as a market replacement for it, making it likelythat cognizable market harm to the original will occur.”Id. at 591.
12

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In evaluating the fourth factor, courts consider not only harm to the actual or potential market for the copyrighted work, but also harm to the “market for potential
derivative uses,” including “those that creators of original
works would in general develop or license others to develop.” Campbell, 510 U.S. at 592; see also A&M Records,
239 F.3d at 1017 (“[L]ack of harm to an established market cannot deprive the copyright holder of the right todevelop alternative markets for the works.”). A court cantherefore consider the challenged use’s “impact on potential licensing revenues for traditional, reasonable, or
likely to be developed markets.” Swatch Grp. Mgmt.
Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 91 (2d Cir.
2014) (citation omitted); see also Seltzer, 725 F.3d at 1179(“This factor also considers any impact on ‘traditional,
reasonable, or likely to be developed markets.’” (citation
omitted)).
Also relevant to the inquiry is the fact that a copyright holder has the exclusive right to determine “when,‘whether and in what form to release’” the copyrighted
work into new markets, whether on its own or via alicensing agreement. Monge, 688 F.3d at 1182 (quoting
Harper & Row, 471 U.S. at 553). Indeed, the Ninth
Circuit has recognized that “[e]ven an author who haddisavowed any intention to publish his work during his
lifetime” was entitled to copyright protection because:(1) “the relevant consideration was the ‘potential market’”and (2) “he has the right to change his mind.” Worldwide
Church, 227 F.3d at 1119 (citing Salinger v. Random
House, Inc., 811 F.2d 90, 99 (2d Cir. 1987)); see also MicroStar v. Formgen Inc., 154 F.3d 1107, 1113 (9th Cir. 1998)(noting that only the copyright holder “has the right toenter that market; whether it chooses to do so is entirely
its business”).
Here, the district court concluded that the jury “could
reasonably have found that use of the declaring lines ofcode (including their SSO) in Android caused no harm to(51 of 59)

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the market for the copyrighted works, which were fordesktop and laptop computers.” Order Denying JMOL,
2016 WL 3181206, at *10. In reaching this conclusion,
the district court noted that, before Android was released,
Sun made all of the Java API packages available for free
and open source under the name OpenJDK, subject only
to the terms of a general public license. Id. According to
the district court, the jury could have concluded that“Android’s impact on the market for the copyrighted
works paralleled what Sun already expected via its OpenJDK.” Id.
On appeal, Oracle argues that the evidence of actualand potential harm stemming from Google’s copying was“overwhelming,” and that the district court erred as amatter of law in concluding otherwise. Appellant Br. 52.
We agree.
First, with respect to actual market harm, the evidence showed that Java SE had been used for years inmobile devices, including early smartphones, prior to
Android’s release. Specifically, the jury heard testimonythat Java SE was already in smartphones, includingBlackberry, SavaJe, Danger, and Nokia. That Android
competed directly with Java SE in the market for mobile
devices is sufficient to undercut Google’s market harmarguments. With respect to tablets, the evidence showedthat Oracle licensed Java SE for the Amazon Kindle.
After Android’s release, however, Amazon was faced withtwo competing options—Java SE and Android—andselected Android. 13 The jury also heard evidence that

Google submits that the jury could have discounted this evidence because the Java SE APIs were available
for free through OpenJDK. But Amazon moved from Java
to Android—not to OpenJDK. And the evidence of record
makes clear that device manufacturers did not view
13

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Amazon later used the fact that Android was free tonegotiate a steep discount to use Java SE in its newer ereader. In other words, the record contained substantial
evidence that Android was used as a substitute for JavaSE and had a direct market impact. Given this evidenceof actual market harm, no reasonable jury could haveconcluded that there was no market harm to Oracle from
Google’s copying.
Even if there were a dispute about whether Oracle
was licensing Java SE in smartphones at the time Android launched, moreover, “fair use focuses on potential,
not just actual, market harm.” Monge, 688 F.3d at 1181.
Accordingly, although the district court focused exclusively on the market it found that Oracle had already entered—desktops and laptops—it should have considered
how Google’s copying affected potential markets Oracle
might enter or derivative works it might create or licenseothers to create. See Campbell, 510 U.S. at 590. Licensing Java SE for smartphones with increased processing
capabilities was one such potential new market. And thefact that Oracle and Google engaged in lengthy licensing
negotiations demonstrates that Oracle was attempting tolicense its work for mobile devices, including
smartphones. 14 Smartphones were, therefore, a “tradiOpenJDK as a commercially viable alternative to using
Java SE because any improvement to the packages in
OpenJDK had to be given away for free to the Java community.
Of course, the fact that those negotiations were
not successful does not factor into the analysis. Campbell,
510 U.S. at 585 n.18 (“If the use is otherwise fair, then no
permission need be sought or granted. Thus, being denied
permission to use a work does not weigh against a findingof fair use.”). Such evidence was only relevant to show
Oracle’s interest in the potential market for smartphones.
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tional, reasonable, or likely to be developed market.” See
Swatch Grp., 756 F.3d at 91; see also Seltzer, 725 F.3d at1179.
Google argues that a reasonable jury could have concluded that Java SE and Android did not compete in thesame market because Oracle: (1) was not a device maker;
and (2) had not yet built its own smartphone platform.
Neither argument has merit. That Oracle never built asmartphone device is irrelevant because potential markets include licensing others to develop derivative works.
See Campbell, 510 U.S. at 592. The fact that Oracle had
not yet developed a smartphone platform is likewise
irrelevant as a matter of law because, as Oracle submits,a market is a potential market even where the copyrightowner has no immediate plans to enter it or is unsuccessful in doing so. See Worldwide Church, 227 F.3d at 1119;
Micro Star, 154 F.3d at 1113. Even assuming a reasonable jury could have found no current market harm, theundisputed evidence showed, at a minimum, that Oracle
intended to license Java SE in smartphones; there was noevidence in the record to support any contrary conclusion.
Because the law recognizes and protects a copyrightowner’s right to enter a “potential market,” this fact alone
is sufficient to establish market impact.
Given the record evidence of actual and potential
harm, we conclude that “unrestricted and widespread
conduct of the sort engaged in by” Google would result in“a substantially adverse impact on the potential market
for the original” and its derivatives. See Campbell, 510
U.S. at 590 (citation and quotation marks omitted).
Accordingly, the fourth factor weighs heavily in favor of
Oracle.
Balancing the Four Factors
Having undertaken a case-specific analysis of all four
factors, we must weigh the factors together “in light of the
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conclude that allowing Google to commercially exploit
Oracle’s work will not advance the purposes of copyrightin this case. Although Google could have furthered copyright’s goals of promoting creative expression and innovation by developing its own APIs, or by licensing Oracle’s
APIs for use in developing a new platform, it chose to copy
Oracle’s creative efforts instead. There is nothing fairabout taking a copyrighted work verbatim and using it forthe same purpose and function as the original in a competing platform.
Even if we ignore the record evidence and assume
that Oracle was not already licensing Java SE in thesmartphone context, smartphones were undoubtedly apotential market. Android’s release effectively replacedJava SE as the supplier of Oracle’s copyrighted works andprevented Oracle from participating in developing markets. This superseding use is inherently unfair.
On this record, factors one and four weigh heavily
against a finding of fair use, while factor two weighs infavor of such a finding and factor three is, at best, neutral.
Weighing these factors together, we conclude that
Google’s use of the declaring code and SSO of the 37 API
packages was not fair as a matter of law.
We do not conclude that a fair use defense could neverbe sustained in an action involving the copying of computer code. Indeed, the Ninth Circuit has made it clear thatsome such uses can be fair. See Sony, 203 F.3d at 608;
Sega, 977 F.2d at 1527-28. We hold that, given the facts
relating to the copying at issue here—which differ materially from those at issue in Sony and Sega—Google’s
copying and use of this particular code was not fair as amatter of law.
III. GOOGLE’S CROSS-APPEAL
Google cross-appeals from the district court’s final
judgment solely to “preserv[e] its claim that the declara-(55 of 59)

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tions/SSO are not protected by copyright law.” CrossAppellant Br. 83. Specifically, Google maintains that thedeclaring code and SSO are: (1) an unprotected “method of
operation” under 17 U.S.C. § 102(b), because they allow
programmers to operate the pre-written programs of theJava language; and (2) subject to the merger doctrine. We
resolved these issues against Google in the first appeal,
finding that the declaring code and the SSO of the 37 API
packages at issue are entitled to copyright protection.
Oracle, 750 F.3d at 1354.
Google did not petition this court for rehearing andinstead filed a petition for a writ of certiorari asking theSupreme Court to determine whether our copyrightability
determination was in error. Oracle responded to thepetition, and the Supreme Court invited the Solicitor
General to express the views of the United States. The
government agreed that Oracle’s computer code is copyrightable, and the Supreme Court denied Google’s petitionin June 2015. Google, Inc. v. Oracle Am., Inc., 135 S. Ct.
2887 (2015).
Google neither asks the panel for relief on the copyrightability issue nor offers any arguments on that issue.
We remain convinced that our earlier copyrightability
decision was consistent with Congress’s repeated directives on the subject. Accordingly, we provide no relief toGoogle on its cross-appeal, finding a ruling on it unnecessary.
IV. CONCLUSION
For the foregoing reasons, we conclude that Google’s
use of the 37 Java API packages was not fair as a matterof law. We therefore reverse the district court’s decisions
denying Oracle’s motions for JMOL and remand for a trial
on damages. The district court may determine the appropriate vehicle for consideration of infringement allegations regarding additional uses of Android. We dismiss
Google’s cross-appeal.

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ORACLE AMERICA, INC. v. GOOGLE LLCREVERSED AND REMANDED;CROSS-APPEAL DISMISSEDCOSTS
No costs.

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UNITED STATES COURT OF APPEALSFOR THE FEDERAL CIRCUIT
Questions and Answers
Petitions for Rehearing (Fed. Cir. R. 40)
andPetitions for Hearing or Rehearing En Banc (Fed. Cir. R. 35)
Q. When is a petition for rehearing appropriate?
A. Petitions for panel rehearing are rarely successful
because they most often fail to articulate sufficient grounds
upon which to grant them. For example, a petition for panel
rehearing should not be used to reargue issues alreadybriefed and orally argued; if a party failed to persuade thecourt on an issue in the first instance, a petition for panel
rehearing should not be used as an attempt to get a second“bite at the apple.” This is especially so when the court hasentered a judgment of affirmance without opinion underFed. Cir. R. 36. Such dispositions are entered if the court
determines the judgment of the trial court is based on
findings that are not clearly erroneous, the evidence
supporting the jury verdict is sufficient, the record supports
the trial court’s ruling, the decision of the administrative
agency warrants affirmance under the appropriate standardof review, or the judgment or decision is without an error oflaw.

Q. When is a petition for hearing or rehearing en bancappropriate?
A. En banc decisions are extraordinary occurrences. To
properly answer the question, one must first understand the
responsibility of a three-judge merits panel of the court. The
panel is charged with deciding individual appeals according
to the law of the circuit as established in the court’s
precedential opinions. While each merits panel is
empowered to enter precedential opinions, the ultimate
duty of the court en banc is to set forth the law of theFederal Circuit, which merit panels are obliged to follow.
Thus, as a usual prerequisite, a merits panel of the court
must have entered a precedential opinion in support of its
judgment for a suggestion for rehearing en banc to beappropriate. In addition, the party seeking rehearing en
banc must show that either the merits panel has failed tofollow identifiable decisions of the U.S. Supreme Court orFederal Circuit precedential opinions or that the merits
panel has followed circuit precedent, which the party seeks
to have overruled by the court en banc.
Q. How frequently are petitions for rehearing granted by
merits panels or petitions for rehearing en banc acceptedby the court?
A. The data regarding petitions for rehearing since 1982shows that merits panels granted some relief in only three
percent of the more than 1900 petitions filed. The relief
granted usually involved only minor corrections of factual
misstatements, rarely resulting in a change of outcome inthe decision.
En banc petitions were accepted less frequently, in only 16
of more than 1100 requests. Historically, the court itself
initiated en banc review in more than half (21 of 37) of thevery few appeals decided en banc since 1982. This sua
sponte, en banc review is a by-product of the court’s
practice of circulating every precedential panel decision to
all the judges of the Federal Circuit before it is published.
No count is kept of sua sponte, en banc polls that fail tocarry enough judges, but one of the reasons that virtually
all of the more than 1100 petitions made by the parties
since 1982 have been declined is that the court itself has
already implicitly approved the precedential opinions before
they are filed by the merits panel.

Q. Is it necessary to have filed either of these petitions
before filing a petition for certiorari in the U.S. Supreme
Court?
A. No. All that is needed is a final judgment of the Court ofAppeals. As a matter of interest, very few petitions forcertiorari from Federal Circuit decisions are granted. Since
1982, the U.S. Supreme Court has granted certiorari in only
31 appeals heard in the Federal Circuit. Almost 1000
petitions for certiorari have been filed in that period.

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UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUITINFORMATION SHEETFILING A PETITION FOR A WRIT OF CERTIORARI
There is no automatic right of appeal to the Supreme Court of the United States from judgmentsof the Federal Circuit. You must file a petition for a writ of certiorari which the Supreme Court
will grant only when there are compelling reasons. (See Rule 10 of the Rules of the Supreme
Court of the United States, hereinafter called Rules.)Time. The petition must be filed in the Supreme Court of the United States within 90 days of theentry of judgment in this Court or within 90 days of the denial of a timely petition for rehearing.
The judgment is entered on the day the Federal Circuit issues a final decision in your case. [Thetime does not run from the issuance of the mandate, which has no effect on the right to petition.](See Rule 13 of the Rules.)Fees. Either the $300 docketing fee or a motion for leave to proceed in forma pauperis with anaffidavit in support thereof must accompany the petition. (See Rules 38 and 39.)
Authorized Filer. The petition must be filed by a member of the bar of the Supreme Court of theUnited States or by the petitioner representing himself or herself.
Format of a Petition. The Rules are very specific about the order of the required informationand should be consulted before you start drafting your petition. (See Rule 14.) Rules 33 and 34
should be consulted regarding type size and font, paper size, paper weight, margins, page limits,
cover, etc.
Number of Copies. Forty copies of a petition must be filed unless the petitioner is proceeding informa pauperis, in which case an original and ten copies of the petition for writ of certiorari andof the motion for leave to proceed in forma pauperis. (See Rule 12.)
Where to File. You must file your documents at the Supreme Court.
Clerk
Supreme Court of the United States
1 First Street, NE
Washington, DC 20543(202) 479-3000
No documents are filed at the Federal Circuit and the Federal Circuit provides no information to
the Supreme Court unless the Supreme Court asks for the information.
Access to the Rules. The current rules can be found in Title 28 of the United States CodeAnnotated and other legal publications available in many public libraries.

Revised December 16, 1999

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