by Lee Gesmer | May 12, 2020 | Copyright
I can’t let a decision on this case pass by, both because the facts are so bizarre and because the case is in my backyard, the Federal District Court for the District of Massachusetts.
The plaintiff, Leah Bassett, owns a house on Martha’s Vineyard. She entered into a several-month long lease with Joshua Spafford. Spafford allowed the house to be used to film a number of pornographic movies. Ms. Bassett sued everyone involved, and one of her claims is copyright infringement. She claims that the movies include shots of paintings, slipcovers, wall hangings and the like (over 50 works in total), all of which were created by her. She asserts that their appearance in the movie scenes violate her copyright rights (reproduction, distribution and public display).
This case received a lot of attention when it was filed. See, for example,What if your house was used in a porn shoot? This homeowner says hers was, and she’s suing (Boston Globe, March 2018)(link);Martha’s Vineyard homeowner says rental was used as porn set (New York Post, March 2018)(link). The case was assigned to District Court Judge Patti Saris, a federal judge highly experienced in copyright law. The defendants filed a motion for summary judgment, and Judge Saris issued her opinion on May 11, 2020 (link). Here’s a short summary of her ruling on the copyright claims.
Copyrightability. With a few exceptions, all of the works are protected by copyright.
De Minimis Doctrine. Maybe – the evidence in the record before the court was insufficient. Ms. Bassett has 45 days to file a document describing which of the works appear in which films, for how long, and in what level of detail. With representative screen shots. (No movies, please).
Fair Use. The first, second and third fair use factors favor Bassett. (Transformative use, nature of the work, and amount copied). The fourth factor (effect on potential market or value of the work) favors defendants. Three to one, fair use defense loses on summary judgment.
Damages. Bassett may be able to establish damages based on a“reasonable fair market licensing fee.” Damages discovery has not taken place, so this option remains open.
Bottom line and Further Thoughts: The defendants still have a chance of dismissing the case as to some of the works, depending on Bassett’s ability to overcome their de minimis defense. However, there will have to be a separate finding on each of the 50-plus works. In the meantime, Bassett has 45 days to compile her evidence on this. I expect it will be a lot of work with a spreadsheet and a stopwatch. With respect to damages, Ms. Bassett never sold her works, so she can’t prove lost profits. The defendants’ profits will be be a challenge, since it will be difficult to show that customers purchased the films because of the background art and allocate part of the profits associated with the films to her work. She hadn’t registered any of the works prior to the infringement, so statutory damages are not available. The judge is right – she is probably limited to “value of use” damages – what the film makers would have paid based on an arms-length licensing deal. However, Bassett may be hard-pressed to establish a licensing fee for her works, since she is not a commercial artist and has no sales/licensing history. And what would the producer of a porno film pay for background art in any case?
My prediction – Ms. Bassett will not go to the effort to catalogue which films her works appear in and how long each work appears in each scene. Her potential damages are not worth the effort. She survived summary judgment on several other counts (infliction of emotional distress, Chapter 93A and defamation, in particular). Including a copyright case over 50 works will only make the trial longer and more complicated, and distract the jury from the more sympathetic claims where she has a good shot at substantial damages. My two cents: discretion is the better part of valor, and Ms. Bassett will be better served by exercising discretion and dismissing her copyright claims. Bassett v. Jensen (D. Mass. May 11, 2020)
Update: I was mistaken – the plaintiff did submit additional detail on copyright infringement to the court, and on August 6, 2020 Judge Saris entered summary judgment with respect to ten items. (link, via Evernote) Presumably (and absent settlement) the case will now proceed to trial on copyright damages, along with the other claims asserted by the plaintiff-home owner.
by Lee Gesmer | May 11, 2020 | Copyright
The odds of Oracle coming out on top in the Supreme Court appeal of Oracle v. Google just took a turn for the worse.
On May 4, 2020 the following entry appeared on the Supreme Court docket in the long-pending Oracle v. Google copyright case:
The parties are directed to file supplemental letter briefs addressing the appropriate standard of review for the second question presented, including but not limited to the implications of the Seventh Amendment, if any, on that standard. The briefs, not to exceed 10 pages, are to be filed simultaneously with the Clerk and served upon opposing counsel on or before 2 p.m., Friday, August 7, 2020. (Emphasis added)
The “second question presented” is Google’s appeal of the Federal Circuit’s decision reversing a trial jury’s fair use finding in favor of Google. The “standard of review” is a reference to the “de novo” standard used by the Court of Appeals for the Federal Circuit (CAFC) in the opinion under review. The Seventh Amendment is the constitutional right to a jury trial (“the right of trial by jury shall be preserved, and no fact tried by a jury, shall be otherwise reexamined in any court of the United States …”).
This order appeared without warning after the Supreme Court bumped oral argument in this copyright case to an as yet unspecified date in the 2020 term. The case had been scheduled for argument on March 24, 2020, and the Court removed it from the calendar only 12 days before that date.
We aren’t told what prompted the Court to ask for additional briefs in this case, but the order brought to mind one of the amicus briefs filed in support of Google. The brief (link), filed by several law professors (the “Professors Brief”), focused on precisely the issued on which the Court requested briefing. The opening section of the brief summarized their argument –
Reversal of a jury verdict on the issue of fair use is extraordinarily rare. For two centuries, courts have given great deference to jury verdicts. Indeed, history overwhelmingly demonstrates that juries are uniquely situated to make the discretionary judgments that fair-use cases call for. But in this case, the Federal Circuit ignored history, along with the law. It applied de novo review to overturn the jury verdict of fair use. This is the first time that has ever happened. And it is unconstitutional. The Seventh Amendment requires that a jury finding of fair use not be “re-examined” under a de novo standard of review.
This is a powerful argument. It may be Google’s best argument now that the Court has (if belatedly) focused on this issue.
A Brief Recap. In this case following a trial, appeal and remand on infringement a jury trial was held solely on the issue of fair use. After a two week trial the jury returned a verdict for Google, finding that Google’s copy of the Java application programming interface (the Java API) was protected by fair use. Oracle appealed to the CAFC.
On appeal the CAFC held that while fair use is a mixed question of fact and law, this did not “dictate the applicable standard of review.” The CAFC concluded that in deciding copyright fair use the jury’s role “is limited to determining disputed ‘historical facts, not inferences or conclusions to be drawn from those facts.” Thus, “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 as advisory only.” Accordingly, the CAFC held that it must “assess all inferences to be drawn from the historical facts found by the jury and the ultimate question of fair use de novo” – without reference to any legal conclusion made by the previous court to hear the case.
Based on de novo review the CAFC set aside the jury verdict for Google and decided the copyright fair use issue in favor of Oracle. In other words, despite the jury verdict it decided that Google’s use of the Java API is not protected by fair use.
The CAFC’s decision was surprising, to say the least. Appellate reversal of a jury finding on fair use is virtually unprecedented in the law. A determination fair use at trial is based on a weighing of the four fair use factors, and the CAFC was wrong to abrogate the jury’s conclusion on this issue. Or so the argument went.
However, in the three merits briefs filed with the Supreme Court Google and Oracle gave short shrift to the standard of review, at least relative to the other issues. They discussed the Seventh Amendment not at all.
Clearly the Supreme Court has concluded that this issue deserves more attention.
Does the Standard of Review/Seventh Amendment Argument Have Legs? Until we see the parties briefs in August the Professors Brief may be the best guide on this issue. The Professors ground their argument in 18th and 19th Century English common law, their point being that English law courts heard issues similar to modern fair use, and that under English law the courts left the issue of fair use to the jury to decide. This is not as far-fetched as it might seem at first – the Supreme Court has often looked to English common law as an antecedent to help it interpret and apply U.S. copyright law.
From there they move to the Supreme Court’s 1998 decision in Feltner v. Columbia Pictures Television where, tying modern U.S. copyright law to English common law precedents, the Court held that the Seventh Amendment provides a right to a jury trial on all issues pertinent to an award of statutory damages. Fair use, the Professors argue, is pertinent to an award of statutory damages, since statutory damages are a potential remedy in a case premised on a fair use defense. That being the case, the Seventh Amendment applies to a jury determination on fair use, implying a deferential (not de novo) review of a fair use jury verdict.
Lastly, the Professors argue that Supreme Court precedent requires a deferential standard of review in cases involving a mixed question of law and fact (such as fair use), where the issue entails “primarily . . . factual work.” U.S. Bank National Ass’n v. Village at Lakeridge, LLC. The Professors argue that the copyright fair use determination in this case rested upon its individualized facts, and therefore primarily involved factual work. Accordingly, the CAFC erred in declining to apply a deferential standard of review to the jury verdict.
Did Oracle Make a Mistake By Agreeing That The Jury Could Issue a “General Verdict”? It’s not uncommon for juries to be asked complete detailed “special verdicts” that may shed light on the the bases for their decisions. For example, in a copyright fair use case the jury might be asked to indicate how it decided each of the fair use factors in reaching its decision.
But that didn’t happen in this case. Instead, Oracle and Google agreed that the jury need only issue a “general verdict.” The jury made no specific findings of fact.
Whether this was a strategic mistake by Oracle or part of a calculated trial strategy we don’t know, but at this point it appears to put Oracle at a disadvantage. The general verdict could weigh in favor of a finding that the CAFC erred in applying a de novo standard, since there were no “historical facts” for the CAFC to analyze, short of the CAFC reviewing the entire trial record and finding facts without the ability to evaluate witness credibility.
What Next? We will have to see what the parties have to say on this issue when they file their briefs in August. However, a decision based on a narrow procedural ground such as the standard of review is likely to be attractive to the Supreme Court. It allows it to avoid the mystifying complexities of copyright law as applied to computer software technology. It allows the Court to avoid revisiting the law of copyright fair use, a doctrine the Court has not addressed in-depth in the 26 years since it decided Campbell v. Acuff-Rose Music, Inc. It enables it to decide the case on a narrow standard-of-review issue and hold that a jury verdict on fair use should not be reviewed de novo on appeal, at least where the jury has issued a general verdict.
And, potentially (should the Court decide to resolve the case on this ground per curiam without hearing before the start of the 2020 term), it is one less case from the 2019 term that the Court would need to carry over into the 2020 term.
It’s worth noting that such an outcome would be disappointing to many people in the computer industry who are hoping for a reversal of the CAFC’s 2014 holding (on an earlier appeal) that the Java API is protected by copyright. And, while Google would be happy with this outcome, it’s not certain that it would be a clear winner for Google and end this case once-and-for all. It’s likely that the Court would decide that the jury verdict should stand, ending the case. But there’s also a risk that it could send the case back to the CAFC for yet another appeal, to be decided under a more deferential standard of review, but one that (given the CAFC’s hard-to-ignore antipathy to Google in this case), still leaves Google at risk.
It’s also worth noting the unusual sequence of events in this case. But for COVID-19’s disruption to the Court’s schedule, argument on this case would have been heard on March 24, 2020. The Court had not requested supplemental briefing prior to that date, and the case would have been taken under advisement on the thin record (as to this issue) as it existed at that time. The delay gave the Court time to request additional briefing on the standard of review, and the risk of that action falls entirely on Oracle.
by Lee Gesmer | Mar 4, 2020 | General
“Discourage litigation. Persuade your neighbors to compromise whenever you can. Point out to them how the nominal winner is often a real loser – in fees, expenses, and waste of time. As a peacemaker the lawyer has a superior opportunity of being a good man.” Abraham Lincoln.
Does your lawyer have emotional intelligence? Or if you’re a lawyer, do you?*
*Note: “Studies show that lawyers score high in intelligence but below average in emotional intelligence, and Ronda Muir, author of ‘Beyond Smart: Lawyering with Emotional Intelligence,’ says that plays a part in the public’s low opinion of them.” American Bar Association, October 2017
Listening to a couple of doctors on radio interviews talk about how important emotional intelligence is for the doctor-patient relationship got me thinking about emotional intelligence in the context of lawyering.
What is emotional intelligence (EQ)? Howard Gardener describes it this way –
Your EQ is the level of your ability to understand other people, what motivates them and how to work cooperatively with them,” says Howard Gardner, the influential Harvard theorist. Five major categories of emotional intelligence skills are recognized by researchers in this area.
He goes on to describe the five major factors, one of which is empathy:
The ability to recognize how people feel is important to success in your life and career. The more skillful you are at discerning the feelings behind others’ signals the better you can control the signals you send them. An empathetic person excels at s service orientation. Anticipating, recognizing and meeting clients’ needs.
All five factors described by Gardener are important (the others are self-awareness, self-regulation, motivation and social skills), but I’ll focus on empathy in this post, since it’s had the biggest impact in my legal practice.
To be honest, my awareness of empathy was slow to develop. When I first graduated law school my goal was to be a competent legal technician, my definition of a “good lawyer” at the time. That meant learning the law in my practice area, which was all-consuming for the first few years. But eventually my eyes began to open to the empathic needs of my clients. My experience with two clients in particular made me aware of this.
Clients 1 and 2 – What a Difference!
The first client dates back to when I was a young lawyer at a large Boston law firm. The firm took on a contingent fee personal injury case. It was a relatively small case, so they assigned it to me to handle through trial. The facts were simple enough – an employee fell on a flight of stairs that didn’t meet building code. The client, I’ll call her Client 1, fell and injured herself quite badly. We were seeking $150,000 in damages from the building owner. The defendant (represented by insurance company lawyers) offered us $35,000.
The case was scheduled to go to trial, and one of the trial practice books I was reading suggested a good practice was to expose clients to the courtroom before trial. The theory was that a courtroom is an unfamiliar environment (boy, is it ever!), and the client should be familiarized with it before trial.
I walked the client up to Suffolk Superior Court a few days before trial, on an afternoon when I knew our courtroom would be vacant. Client 1 walked into the courtroom, took one look around, and I could see the blood drain from her face. She turned to me and said, “settle the case for whatever you can get.” I settled for the $35,000 that was on the table.
Not many years later, in my own law practice, I represented a businessman who had a net worth of $20 million. This man – Client 2 – was sued in a complex breach of fiduciary duty case that threatened his entire net worth. You might think that this would be stressful for him (it was for me), but as near as I could tell, he slept like a baby and this risk didn’t phase him one bit. I gradually came to realize that this man had nerves of steel. We ended up settling that case on very favorable terms, in large part due to his emotional resilience.
These two cases showed me two client extremes, and for many years I’ve used them as mental markers to gauge where my clients fall on this continuum. Were they, like Client 1, terrified of the courtroom (and very likely the entire legal process), or were they unfazed and able to handle the risk of a major lawsuit, like Client 2?
How has this changed me? Well, in the first place I try to suss out a client’s risk tolerance as early as possible. I discuss the realities of a lawsuit and the stress it puts people under. Rather than ask clients about their fortitude head-on, I’ll tell them the stories of Client 1 and Client 2, so that they have specific examples. This often gets them thinking, and by comparing themselves to these two situations clients can examine their own feelings and, perhaps, share them with me.
Sometimes I share with them the Abraham Lincoln quote at the top of this post. If the client thinks that the other side is weak and will settle early, I dissuade them of this belief. I may share one of my favorite proverbs: “a feather that floats into a court of law on a gentle breeze may require two oxen to remove.” I’ll tell them that I have seen many lawsuits where my client thought the opposing party was financially weak and would settle early, but the case dragged on for years.
I describe a deposition and trial, and explain that they may be the target of an aggressive lawyer on the other side of the case. You’d think that, based on popular television, everyone would know this, but you’d be surprised how many people don’t. A lawsuit is a stressful experience, and a client shouldn’t have to wake up one morning halfway through the case with the sudden realization that a lawsuit is like an endless root canal.
If the client has a spouse, I try to make sure the spouse is aware of how stressful a lawsuit can be. Most clients will discuss their feelings with their spouse before they discuss them with their lawyer, and stress on a spouse can be a major factor in the client’s mental health. I recall one case in which the client refused to settle, even on the threat of divorce from his wife. In fact, the client’s wife did divorce him.
Why is all of this important? First, you may be able to save your client emotional suffering and legal fees. Client 1, in my example above, was on a contingent fee, but I certainly could have saved her emotional suffering as that lawsuit dragged on and finally headed to trial. I should have seen her fear, but as a young lawyer I was probably too focused on my own insecurities. Second, like it or not, the lawyer and her client are a team, and the lawyer needs to know how strong the other member of that team is. Are they going to fold, like Client 1? If so, it would be good to know this as early as possible, especially if the lawyer has taken the case on a contingent fee. After all, the client, not the lawyer, controls the decision to settle.
Often, I’ll find my self representing a group of individuals whose interests are aligned. For example, several partners or co-owners of a business. From the EQ perspective that multiplies the complexity of the representation, since each of the partners may have a different capacity to endure the stress and uncertainty of a lawsuit, and the partners are forced to work that out among themselves. Better that they do that sooner than later, and if I can help with that process, so much the better.
So, to clients involved in a lawsuit (or considering bringing one), ask your lawyer to explain the process to you in detail, with an eye toward your emotional reaction to the events she describes. And lawyers, developing the skill I describe here may save you both emotional and financial pain.
by Lee Gesmer | Jan 17, 2020 | Copyright
Analogies, it is true, decide nothing, but they can make one feel more at home – Sigmund Freud
One good analogy is worth three hours discussion – Dudley Field Malone
Oracle v. Google, now before the Supreme Court, is a complicated case in more ways than one. The copyright law issues are difficult, but the case is made even more challenging by its subject matter, which involves highly technical and abstruse computer technology. Judges have a hard enough time applying copyright law to traditional media like music, novels and photographs, but software copyright cases add another order of magnitude of complexity.
The legal briefs now before the Supreme Court are overflowing with computer jargon. You can read all about the “Java language,” the “Java virtual machine,” the “Dalvik
virtual machine,” “application programming interfaces (APIs),” “packages,” “classes,” “calls,” “declarations,” “methods,” “implementing code” and “declaring code,” and much more.
Nor did the Federal Circuit pull any punches in its 2014 decision (one of two under appeal.) The Federal Circuit described the Java system as follows:
In the Java system, source code is first converted into `bytecode,’ an intermediate form, before it is then converted into binary machine code by the Java virtual machine” that has been designed for that device. The Java platform includes the Java development kit (JDK), javac compiler, tools and utilities, runtime programs, class libraries (API packages), and the Java virtual machine.
If you’re shaking your head with confusion (or your eyes are glazing over), you’re probably not a Java programer. These are difficult concepts, especially when they are encountered for the first time by people with no background in the complex world of the Java runtime environment.
As best I can determine, the nine Supreme Court justices have little or no background in computer technology. It’s unlikely many of the Supreme Court justices have seen a computer program, less likely they have written one, and even less likely that they are familiar with the Java programming environment. Even if the younger judges received some exposure to programming in college, the world of Java programming is a far cry from the days of BASIC, Fortran and Cobol, the languages taught when the justices were in college.
If, as commentators have suggested, the Federal Circuit’s 2014 decision reflects “a fundamental misunderstanding of how software works” where does this leave Google and Oracle, who have to explain the Java environment to the justices so that they can understand the Java API and decide whether Google infringed it?
One answer is through analogy and metaphor. The right analogy has the potential to go to the heart of the case and persuade a judge who might otherwise feel uncomfortable with the technicalities of the case. The right analogy can make the difference between winning and losing this case. However, analogies can also be dangerous – an analogy may be distinguished or even turned against the offering party, so an advocate has to use them carefully.
The last (and until now only) computer software copyright case heard by the Supreme Court in 1996 — Lotus v. Borland — demonstrates this. That case, which involved an easy to understand menu command hierarchy, was far simpler than Oracle/Google from a technical standpoint. Nevertheless, analogies played a significant role. The First Circuit compared Lotus’s menu commands to the buttons used to control a VCR. During oral argument before the Supreme Court the analogies included the dashboard of a Model T Ford (Justice Souter), a system for organizing a department store and labels on the controls in a plane’s cockpit (Justice Breyer), and a method of dance notation and a language (Borland’s attorney).
There has been no shortage of attempted analogies as Oracle v. Google has made its 
way through the courts over the last ten years. However, in its Supreme Court merits brief filed on January 6, 2020, Google seems to have forgotten the power of analogy. Beyond a simple filing cabinet analogy the district court judge used and that neither party disputes (each package is like a filing cabinet, each class like a drawer and each method like a folder), Google’s brief is lacking analogies that go to the heart of what an API is and how it relates to the Java implementing code.
Fortunately for Google, Google’s supporting amici came to the rescue. Or, it would be more accurate to say that they tried – there’s no guarantee that the justices actually read amicus briefs (there are 27 of them so far, and that number will increase after Oracle files its merits brief).
Nevertheless, the analogies posited by the Google amici are potentially powerful. Here is a sampling.
The Juke Box Analogy. Few academics have written more about copyright protection of APIs than Professor Peter Menell. The Brief of Professors Peter S. Menell, David Nimmer and Shyamkrishna Balganesh (link), written by him, is an argument in support of Google wrapped in a treatise explaining the history of software copyright law. Here is my favorite example from this brief:
If the Java programming language is analogized to musical language, each API implementation can be characterized as a record album featuring songs (methods). Java Standard Edition (SE) then functions like an electrical-mechanical juke box, containing API record albums from which programmers can choose particular songs by invoking declarations (song titles). The fact that another juke box uses those song titles (declarations) to invoke a known song (method) is purely functional: it does not copy a song (method), it merely identifies a known song (method).
I suspect that if there is one amicus brief the justices may want to read it is this one, given that the Nimmer treatise caries so much authority on copyright law.
The Car Controls Analogy. The Brief Amici Curiae of Eighty Three Computer Scientists (link). borrows from the First Circuit’s decision in Lotus v. Borland and uses the analogy of the controls of a car:
A steering wheel and gas and brake pedals have been standard in cars for over a century. . . . Treating software interfaces as copyrightable would be like requiring car manufacturers to invent a substitute for the steering wheel. Startups would not risk manufacturing such a car, and even if they did, consumers likely would not purchase it.
This analogy never gained much traction in the many software copyright cases decided post-Lotus, and I doubt that it will be persuasive here.
The New York City Map Analogy. IBM and Red Hat’s amicus brief (link) analogizes the Java software interface to the New York city maps at issue in a 1879 Supreme Court case, Perris v. Hexamer, where the Court held that a copyright in maps did not extend to a “system of coloring and signs” for identifying real property characteristics or to a “key” which explained symbolic meanings of coloring and signs. Interestingly, Google does not cite this case, even in passing.
The Supreme Court Language Analogy. The entire amici brief of the Empirical Legal Researchers (link) is devoted to developing and explaining an analogy. The brief states:
The facts of this case are unusually technical and threaten to obscure the legal issues. As attorneys who are also software developers, the amici offer an analogy between the computer languages, with which the Court may be unfamiliar, and a kind of language with which the Court is uniquely familiar: the text of Supreme Court opinions.
You’ll have to read the brief if you want to understand this complex analogy and the statistic analysis on which it is based. Perhaps it’s accurate, but it didn’t hit home with me.
The Book and Title Analogy. The Software and System Developers and Engineers for U.S. Government Agencies amici brief (link) uses the analogy of the relationship between a book and its title:
For developers, relying on a declaration to identify a component for interoperation is like relying on a book title to refer to a book, enabling someone to identify the book to locate it and read it. While a book, like an entire software program, may be subject to copyright, a title of a book has long been understood as not subject to copyright.
This is the simplest and best analogy that I’ve seen in the amicus briefs. It will be interested to see if any of the Justices raise it at oral argument.
The Online Checkout Analogy. The amicus brief of the Small, Medium and Open Source Technology Organizations (which includes Mozilla, Shopify, Etsy and Wikimedia Foundation; link) encourages the Court to view software interfaces as “similar to electronic checkout forms you see when shopping online,” where the fields and structure, sequence and organization have become standard conventions. I’m not sure I agree with this analogy, but I can’t challenge the technical qualifications of the companies that proposed it, so perhaps it has some merit.
What about Oracle? How will it respond to these analogies?
We won’t know that until Oracle files its merits brief in February. But Oracle hasn’t been shy in using analogies in this case. Oracle’s 2014 opening brief to the Federal Circuit (link) began with this lengthy analogy:
Ann Droid wants to publish a bestseller. So she sits down with an advance copy of Harry Potter and the Order of the Phoenix—the fifth book—and proceeds to transcribe. She verbatim copies all the chapter titles—from Chapter 1 (“Dudley Demented”) to Chapter 38 (“The Second War Begins”). She copies verbatim the topic sentences of each paragraph, starting from the first (highly descriptive) one and continuing, in order, to the last, simple one (“Harry nodded.”). She then paraphrases the rest of each paragraph. She rushes the competing version to press before the original under the title: Ann Droid’s Harry Potter 5.0. The knockoff flies off the shelves.
J.K. Rowling sues for copyright infringement. Ann’s defenses: “But I wrote most of the words from scratch. Besides, this was fair use, because I copied only the portions necessary to tap into the Harry Potter fan base.”
Obviously, the defenses would fail.
Defendant Google Inc. has copied a blockbuster literary work just as surely, and as improperly, as Ann Droid—and has offered the same defenses.
The analogy between the Java API and the topic sentences of a fictional literary work seems far fetched. Nevertheless, Oracle seems very attached to it, so look for Oracle to use it again in its Supreme Court brief.
I have no doubt that the many lawyers and technologists on both sides of this case have devoted hundreds, if not thousands, of hours searching for the perfect analogy – the analogy that will go to the heart of the case, make sense to the justices, and lead to victory for their side. Whether Google or Oracle will reach this goal remains to be seen. But when the transcript of oral argument is released keep an eye open for analogies used by the justices and the parties to see which were used and whether they appeared to be effective.
By the way, if you’ve read this post and you’re still wondering, “what the heck is an application programming interface?” you may want to start with Sara Jeong’s 2016 article, What an API Is and Why It’s Worth Fighting For” (link).
* * *
Postscript: Of the nine justices serving on the Supreme Court when Lotus v. Borland was argued in 1996, only three remain today: Ruth Bader Ginsburg, Clarence Thomas and Stephen Breyer. Justice Breyer has a particular interest in copyright law, and he was the most active questioner during oral argument in that case. Pay close attention to him during oral argument in this case.
For a summary of all of the amicus briefs filed to date see Jonathan Brand’s post: Broad Support for Google in the First Round of Supreme Court Briefing
Update, 2-13-2020: Oracle did use the Harry Potter analog in its merits brief, but a much shorter version than it used at the Federal Circiuit:
By Google’s logic, a plagiarist could define J.K. Rowling’s idea as “a story about Harry Potter, Ron Weasley, and Hermione Granger who attend Hogwarts” and steal the characters and their back stories. Or she could market detailed knock-offs of bestsellers by declaring that she “had no other choice” but to reproduce verbatim the 11,300 most memorable sentences or scenes because they were “necessary” to allow fans to use their existing knowledge
by Lee Gesmer | Dec 18, 2019 | Contracts
Genius Media Group Inc., the owner of the music lyric site genius.com has sued Google and LyricFind for “scraping” lyrics from the genius.com website. Two aspects of this new case (only a complaint so far) are interesting – the way that Genius established that Google was scraping, which is quite clever, and the basis for Genius’s legal claim which appears to be quite weak.
Assume you have a work that you want to protect from copying but that you can’t copyright. You might be unable to use copyright law because it’s a database or compilation that lacks sufficient originality. Or, perhaps you’ve licensed the components of the database and you don’t own the copyright in them.
This is the position Genius is in. Genius publishes song lyrics online. Many of these lyrics are crowd-sourced by the Genius user community. However, Genius doesn’t own the lyrics – it licenses the right to publish them from authors and publishers. So it owns a compilation of lyrics, but can’t assert a copyright in that content.
Since Genius has no copyright ownership, it tries to use contract law to prevent copying. It’s website contains the following terms of service:
“you agree not to modify, copy, frame, scrape, rent, lease, loan, sell, distribute or create derivative works based on the Service or the Genius Content, . . . In connection with your use of the Service you shall not engage in or use any data mining, robots, scraping or similar data gathering or extraction methods.”
A couple of years ago Genius noticed that some song lyrics published in Google “Information Boxes” were suspiciously similar to Genius lyrics based on punctuation, contractions and line breaks. However, Genius couldn’t be sure that Google copied lyrics from its site and hadn’t acquired them somewhere else. This was complicated by Genius’s knowledge that Google licensed song lyrics from third parties, specifically LyricFind. If Google’s lyrics were scraped or copied from Genius in violation of the terms of service who was responsible, Google or LyricFind?
Here’s where the lawsuit gets interesting.
To determine whether the Genius song lyrics were being copied Genius laid two traps for Google and LyricFind. First, 
Genius embedded a pattern of straight and curly apostrophes in song lyrics, as shown at the right. Genius calls this “Watermark #1.” The “dot-dash” pattern formed by the apostrophes spelled out “red handed” in Morse code. Google and LyricFind were unlikely to notice this small deviation, and it would allow Genius to see if its lyrics were being copied. Using Watermark #1, Genius concluded that Google was using lyrics copied from genius.com, and that in some instances these lyrics were sourced from LyricFind. In other words, Google and LyricFind had copied and pasted the lyrics from genius.com either manually or using an automated scraper.
Genius complained to Google, and disclosed Watermark #1 to Google to prove that Google was copying. However, according to Genius this was to no effect – Google continued to publish lyrics copied from genius.com.
Genius then laid a second trap based on a spacing pattern (Watermark #2). Genius’s complaint explains this as follows:
[Genius replaced] the 15th, 16th, 19th, and 25th spaces of each song’s lyrics with a special whitespace character called a “four-per-em space.” This character (U+2005) looks identical to the normal “space” character (U+0020), but can be differentiated via Unicode character codes readable by a computer. If one ignores the first 14 spaces of a song’s lyrics, then interprets the four-per-em spaces as dashes, and regular spaces as dots, the sequence spells out the word “GENIUS” in Morse code . . ..
Again, it was extremely unlikely that Google or LyricFind would notice this if they were copying from genius.com, but Genius would be able to identify copying.
To make a long and somewhat complicated story short (again, see the complaint), based on its analysis of song lyrics published by LyricFind and Google, Genius concluded that both companies were scraping lyrics from the Genius website, although LyricFind appears to be the primary offender.
Case closed? Not yet – this only takes us to the second question in this case: did Google or LyricFind violate the law? Remember, Genius has no copyright in the lyrics.
The complaint is vague on this point. It states:
Access to and use of Genius’s website, including the content appearing on its website, is subject to the Genius Terms of Service, … Genius’s Terms of Service are accessible from every page of its website by a link in the footer reading “Terms of Use.”
Per the Genius Terms of Service, “[b]y accessing or using the Service, you signify that you have read, understand and agree to be bound by the terms of service and conditions set forth below. . . . Registration may not be required to view content on the Service, but unregistered Users are bound by these Terms.
Based on this it appears that Genius is unable to allege that Google or LyricFind entered into a “click-wrap” agreement that would have bound them to these terms of service.
The problem with this is that Genius may have a difficult time establishing that Google or LyricFind agreed to be bound by these terms and conditions.
Admittedly, the law of online contract formation is a mess. Companies regularly fail to take proper steps to create enforceable online contracts, and the court decisions (which are usually based on state contract law) are confusing and non-uniform. I’ve written about the difficulties online companies have creating enforceable agreements many times.
And, cases are highly fact specific – courts carefully dissect and analyze web interfaces to determine whether users are put on notice of the website’s terms and have agreed to them. However, in this case Genius appears to be at the weak end of the law. Users are not required to enter into a click-wrap agreement to access lyrics, and the terms quoted above are accessible only via an inconspicuous link at the bottom of the screens. Nor are users warned that by using the site they are bound by the terms and conditions accessible via that link.
This case has a lot of history, much of which is discussed by Mike Masnick on TechDirt here. Bottom line, Genius has been complaining to Google about lyric scraping for over two years, and apparently it’s been unable to get a satisfactory response from Google. Maybe this complaint is just Genius’s way of raising the volume on that process. And since it appears that Google sources/licenses almost all of its lyrics from LyricFind, Google will look to LyricFind to solve the problem and pay any (unlikely) damages.
It’s also worth noting (in passing) that Genius alleges that Google’s display of lyrics in Google Information Boxes ahead of genius.com links in response to search queries (greatly reducing the number of click-throughs to genius.com) is unfair competition under New York common law. However, this allegation rests on Genius’s ability to establish that Google breached a contract with Genius which, as discussed above, appears unlikely.
Update: This case was removed to federal court and was dismissed in August 2020. All of Genius’s claim were preempted by the Copyright Act. This ruling was affirmed by the Second Circuit in March 2022.
