Oracle America, Inc. v. Google Inc., No. 3:2010cv03561 - Document 1781 (N.D. Cal. 2016)
Court Description: MEMORANDUM OPINION RE GOOGLE'S MOTION IN LIMINE NO. 2 REGARDING NEW PRODUCTS by Judge William Alsup [granting 1559 Motion in Limine]. (whasec, COURT STAFF) (Filed on 5/2/2016)
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Oracle America, Inc. v. Google Inc. Doc. 1781 1 2 3 4 5 IN THE UNITED STATES DISTRICT COURT 6 FOR THE NORTHERN DISTRICT OF CALIFORNIA 7 8 9 ORACLE AMERICA, INC., 11 For the Northern District of California United States District Court 10 12 13 14 15 16 No. C 10-03561 WHA Plaintiff, v. MEMORANDUM OPINION RE GOOGLE’S MOTION IN LIMINE NO. 2 REGARDING NEW PRODUCTS GOOGLE INC., Defendant. / INTRODUCTION In this copyright infringement action, the accused infringer seeks to exclude evidence 17 relating to new implementations of its software platform that are not accused herein. The final 18 pretrial order GRANTED defendant Google Inc.’s motion and ruled that evidence regarding 19 Android Wear, Android Auto, Android TV, and Brillo would be excluded from the forthcoming 20 trial. Now this memorandum explains the reasoning for that decision. 21 STATEMENT 22 Plaintiff Oracle America, Inc., commenced this action against defendant Google Inc. in 23 2010, asserting claims that certain versions of Google’s Android operating system infringed its 24 copyrights in Java 2 Standard Edition versions 1.4 and 5.0. The case proceeded to trial and the 25 jury found that Google infringed Oracle’s copyrights but did not infringe its patents. The jury 26 deadlocked on Google’s fair use defense. The undersigned granted Google’s motion for 27 judgment as a matter of law, holding that the declaring code and the SSO of the 37 API 28 packages were not entitled to copyright protection. The Court of Appeals for the Federal Dockets.Justia.com 1 Circuit reversed and remanded the case for further proceedings regarding Google’s fair use 2 defense and Oracle’s damages. 3 During the pendency of the appeal, Google’s Android business expanded significantly. 4 Not only did Anrdoid gain more users, applications, and developers, but it also released 5 modified implementations and derivatives of Android for use in numerous device categories, 6 including wearable devices with small screens (Android Wear), dashboard interfaces in cars 7 (Android Auto), television sets (Android TV), and everyday devices with Internet connectivity, 8 such as household appliances or medical sensors, that comprise the so-called “Internet of 9 Things” (Brillo). Google now moves to exclude evidence of Android Auto, Android TV, Android Wear, 11 For the Northern District of California United States District Court 10 and Brillo from the trial on remand, which will evaluate Google’s fair use defense and, failing 12 that, Oracle’s remedies. This order follows full briefing and oral argument. ANALYSIS 13 14 When this case returned on remand, Oracle sought to file a supplemental complaint for 15 the limited purpose of adding allegations concerning market harm and damages resulting from 16 new versions of Android released in the time since the first trial. Oracle’s supplemental 17 complaint, which Google did not oppose, alleged, inter alia, that Google had launched new 18 versions of Android for phones and tablets and expanded Android’s adoption into new device 19 categories such as wearable devices, televisions, automobiles, and household appliances (Supp. 20 Compl. ¶¶ 5–9). 21 After the parties served their initial expert reports, Google moved to strike references in 22 Oracle’s expert reports to additional versions of the Java platform that Oracle had not addressed 23 in any of the operative pleadings. After a hearing on that motion, the Court ruled that this case 24 would proceed only with the versions of Java SE and Android addressed in the first trial plus 25 the Gingerbread, Honeycomb, Ice Cream Sandwich, Jelly Bean, KitKat, and Lollipop versions 26 of Android that had been released since the first trial, which Google had agreed would be 27 subject to the prior jury’s adverse finding of infringement and which Oracle identified in its 28 supplemental complaint. (The parties later stipulated to add the Marshmallow version of 2 1 Android, which Google released after Oracle filed its supplemental complaint.) The order on 2 Google’s motion to strike expressly held, “[a]mong possibly others, our trial will not include 3 implementations of Android in Android TV, Android Auto, Android Wear, or Brillo. 4 Nevertheless, if Oracle prevails at the trial and if an injunction is warranted, the equitable 5 remedy might extend beyond the versions expressly in play in the trial pursuant to the ordinary 6 scope of equitable relief” (Dkt. No. 1479 at 2). 7 In light of the prior order on the new implementations of Android, Google’s second Brillo, as well as expert testimony about those products. Oracle contends that evidence of those 10 products is relevant to the first fair use factor, which considers “the purpose and character of the 11 For the Northern District of California motion in limine seeks to exclude evidence of Android TV, Android Auto, Android Wear, and 9 United States District Court 8 use.” 17 U.S.C. 107(1). Specifically, Oracle contends that Google’s use of Android in new 12 product categories in which Oracle already licensed derivatives of the copyrighted works 13 demonstrates that Android was not a transformative use of the declaring code and SSO of the 14 37 API packages under the first fair use factor because it served the same function as Oracle’s 15 derivative works. Oracle also contends that evidence of the new products is relevant to the 16 fourth fair use factor, which considers “the effect of the use upon the potential market for or 17 value of the copyrighted work,” because Oracle allegedly lost licensing revenue in those 18 markets due to competition from Android. 17 U.S.C. 107(4). 19 Thus, Oracle argues, if it is unable to present evidence of Google’s entrance into new 20 product markets, the jury may overestimate the transformative nature of Android and 21 underestimate the effect of Android on the market for Oracle’s copyrighted works. Not so. 22 The issue in the first phase of this limited retrial is whether Google’s use of 37 API 23 packages from Java 2 SE 1.4 and 5.0 in its implementations of Android in phones and tablets 24 constituted a fair use. There has been no determination that the implementations of Android in 25 other product categories infringe, and the jury will not be asked to consider that question in our 26 trial. Similarly, there will be no analysis of whether those new implementations constituted fair 27 use (assuming they infringe). The market effect attributable to works that are not the subject of 28 this action is irrelevant to the fair use analysis of the accused works. Similarly, any evidence 3 1 that the new implementations of Android superseded the copyrighted works (thus undermining 2 transformativeness) has no bearing on whether the accused works superseded the copyrighted 3 works. 4 Oracle cites Frank Music Corp. v. Metro-Goldwyn Mayer, Inc., 772 F.2d 505, 510 of Google’s infringement, regardless of whether Android Auto, TV, or Wear infringe[]” 7 (Pl.’s Opp. to Def.’s MIL No. 2 at 7). There, the accused infringer used the copyright owner’s 8 music in a ten-act revue but later removed the infringing act from the show. The accused 9 infringer saw no decrease in revenue after removing the infringing act and thus contended its 10 profits could not be attributable to the infringement. Frank Music held that the fact that the 11 For the Northern District of California (9th Cir. 1985), for the position that the fourth fair use factor may consider “the consequence 6 United States District Court 5 infringing act could be omitted without appreciable effect did not establish that the act was 12 unimportant to the interest in the revue. 13 Frank Music did not involve fair use at all. Nor did it concern the copyright owner’s 14 actual damages. It concerned disgorgement of the accused infringer’s profits attributable to the 15 infringement. Here, Oracle seeks to introduce de novo evidence of harm in an entirely different 16 set of product markets where there has been no determination that it suffered any harm in those 17 markets due to the original implementations of Android at issue in this action. Neither Frank 18 Music nor the plain language of Section 107 can be read to reach that far. 19 Oracle also cites Judge Richard Posner’s decision in Bucklew v. Hawkins, Ash Baptie & 20 Co., LLP, 329 F.3d 923, 933 (7th Cir. 2003), for the position that the calculation of the harm 21 attributable to the infringement “will sometimes require tracing those profits into another 22 [non-infringing] product.” Like Frank Music, Bucklew concerned disgorgement, not fair use. 23 Moreover, the tracing contemplated in Bucklew is not analogous to our case. In Bucklew, 24 Judge Posner offered the example of an accused infringer that offered a verbatim copy of a book 25 for free to anyone who paid $25 for a bookmark with a market value of fifty cents. In such a 26 case, he noted, there may be a need to determine whether an accused infringer had shifted his 27 profits to sales of a separate noninfringing product. Here, there is no indication that Google 28 4 1 launched its new products in an attempt to conceal the harm its initial Android products caused 2 to the potential markets for Java 2 SE 1.4 and 5.0. Thus, Bucklew offers Oracle no support. 3 Oracle contends that it could demonstrate that the implementations of Android in these summary judgment, so their inclusion in this case will not require a mini-trial. Oracle will be 6 free to sue on these new products in the future, but for now we already have a long list of 7 infringing products to impose on our jury and a line must be drawn somewhere to cabin 8 the universe under consideration. At all events, those new products remain irrelevant to 9 consideration of whether Google’s initial implementation of the declaring code and SSO of the 10 37 API packages constituted a fair use. Oracle also contends that it would be odd to require it 11 For the Northern District of California new products also include the 37 API packages at issue in a three to five page motion for 5 United States District Court 4 to present evidence of potential harm in the markets occupied by these new products regarding 12 the fourth fair use factor when it has evidence of actual harm. The strangeness of such evidence 13 does not result from the exclusion of these implementations of Android, but rather from 14 Oracle’s attempt to draw in attenuated examples of market harm in product categories 15 unaffected by the works accused herein. Thus, limiting Oracle’s contentions of harm in those 16 markets to the effect of copying like Google’s “if it should become widespread” is appropriate. 17 See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 451 (1984). 18 Google also may not refer to those implementations of Android or otherwise argue for 19 the inference that the use of the declaring code and SSO of the 37 API packages was 20 transformative because of the potential to reach those product categories. 21 22 Oracle will be free to sue on those new products in a future trial after they have been shown to infringe. 23 CONCLUSION 24 For the reasons stated above, the final pretrial order GRANTED Google’s motion to 25 exclude any evidence or expert testimony relating to Android Wear, Android Auto, Android 26 TV, Brillo, or any other new implementations of Android in devices other than phones or 27 tablets. 28 Dated: May 2, 2016. WILLIAM ALSUP UNITED STATES DISTRICT JUDGE 5
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