In the blockbuster case of Oracle v. Google, the Federal Circuit has once again questioned the role of juries in deciding technical issues, this time in the context of fair use of copyrighted software. Oracle sued Google in 2010 after acquiring Sun Microsystems, 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 copyrights. 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 structure, sequence, and organization (SSO) of the Java API packages. Google then wrote its own implementing code, all of which ultimately became part of its ubiquitous Android operating system for mobile devices.

In the first round of litigation, the jury found Google infringed Oracle’s code. The trial court judge vacated that verdict and held that the software code at issue was purely functional and therefore not entitled to copyright protection. But the Federal Circuit reversed, finding that declaring code and the SSO of the Java API packages at issue are entitled to copyright protection. The court remanded the case to back to the lower court to decide issues of fair use and, if appropriate, damages. Google petitioned for Supreme Court review, but the Supreme Court decided not to take the case at that time.

The second, and most recent, round of litigation revolved around Google’s fair use defense. Google argued that its use of the Java APIs fell under the fair use exception of copyright law. Fair use is a legal doctrine that permits the unlicensed use of copyright-protected works in certain circumstances. The issue of fair use went to the jury, which decided in favor of Google that its actions were protected by fair use. Oracle again appealed to the Federal Circuit.

On March 26, 2018, the Federal Circuit held that Google was not protected by copyright’s fair use doctrine when it copied Oracle’s Java APIs to create the Android mobile operating system. Though the court did not conclude that a fair use defense could never be sustained in an action involving the copying of computer code, it stated “[t]here is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.” Strikingly, although neither party objected to the jury’s instructions on the fair use defense, the Federal Circuit (relying heavily on its precedents regarding “obviousness” under patent law) decided that the jury’s role was only to decide “historical facts,” not the inferences that flow from those facts, and that fair use is ultimately an issue to be decided by a judge, not a jury.

The Federal Circuit remanded the case to the lower court to decide the issue of damages, which Oracle has alleged to have reached $8.8 billion. Google will almost certainly appeal the decision, and given the Federal Circuit’s somewhat novel view of the jury’s role (and its almost unbroken record of being reversed by the Supreme Court lately, e.g. TC Heartland v. Kraft Foods, Impression Products v. Lexmark, Nautilus Inc. v. Biosig Instruments, and Medtronic, Inc. v. Mirowski Family Ventures LLC, further review by the Supreme Court seems likely. But in the meantime, companies should be aware that repurposing APIs from another’s software may result in infringement claims.