By , June 01, 2021.

In April, the Supreme Court capped a long running and closely watched lawsuit between Google and Oracle stemming over Google’s copying of elements of Java code owned by Oracle into its Android software platform. Justice Breyer penned the 6-2 opinion, which left intact the Federal Circuit’s 2014 decision holding that the aspects of Java code copied by Google are copyrightable but found that Google’s copying was excused by fair use.

Justice Breyer’s opinion in Google v. Oracle is unusual in a number of respects, but I find one aspect in particular troubling from both a legal and a principled standpoint and worth highlighting. In his discussion of market effects (i.e., the fourth fair use factor), Breyer says, “we must take into account the public benefits the copying will likely produce.”1Slip op. at 31.

My concern is not that we shouldn’t take into account public benefits from copying as part of a fair use analysis, it’s that we already do—and if courts tread too far down the path Breyer lays out here, it could actually undermine the balance that fair use attempts to strike and lead to a result that is contrary to the public interest.

From a legal standpoint, I think Breyer is wrong to suggest that courts should consider the public benefits of copying as part of the fourth factor analysis. This type of consideration is already a part of the fair use analysis, which is designed overall to determine when certain publicly beneficial, but otherwise infringing, uses of works should be permitted.2Report of the Register of Copyrights on the General Revision of the US Copyright Law at 24 (1961) (“[B]roadly speaking, [fair use] means that a reasonable portion of a copyrighted work may be reproduced without permission when necessary for a legitimate purpose which is not competitive with the copyright owner’s market for his work.”). The consideration of publicly beneficial copying is addressed specifically through the first fair use factor—and Congress has even provided an illustrative list the types of copying considered publicly beneficial to aid courts: “criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research”. Incorporating an additional, independent consideration of the public benefits of copying within the fourth fair use factor undermines that factor, which the Supreme Court has said “is undoubtedly the single most important element of fair use.”3Harper & Row v. Nation Enterprises, 471 US 539, 566 (1985). Breyer’s approach is inconsistent with the statutory scheme crafted by Congress and upsets the holistic balancing exercise that section 107 directs courts to engage in.

In making his statement, Justice Breyer cites to MCA, Inc. v. Wilson4677 F.2d 180, 183 (2d Cir. 1981). for the proposition that courts should balance “public benefits and losses to copyright owner under this factor,” but a closer look at the case reveals that Breyer is—perhaps inadvertently—engaged in judicial sleight of hand. The passage cited in MCA does indeed discuss the fourth fair use factor, but the balance it is referring to is not a balance within the factor, but a balance between this factor and the others. In other words, the court is discussing the relative weight that should be placed on this factor, which is clear from context. In discussing the first fair use factor, the court says, “While commercial motivation and fair use can exist side by side, the court may consider whether the alleged infringing use was primarily for public benefit or for private commercial gain.”5Id. at 182. Later, it concludes, “The less adverse effect that an alleged infringing use has on the copyright owner’s expectation of gain, the less public benefit need be shown to justify the use.”6Id. at 183. This point is reinforced when we look at the cases MCA itself cites: consideration of public benefit is accomplished through the fair use inquiry as a whole, not separately in the fourth factor.7See, e.g., Meeropol v. Louis Nizer, Doubleday & Co., 560 F.2d 1061, 1069-70 (2d Cir. 1977) (“the purpose and character of the use of the copyrighted material, the nature of the copyrighted work, and amount and substantiality of the work used, and its effect upon the potential market for the copyrighted material are factors which must be evaluated in concert. If the effect on the market by an infringing work is minimal, for example, far greater use may be privileged than where the market value of the copyrighted material is substantially decreased.”).

From a principled standpoint, Breyer’s departure from settled fair use analysis raises concerns. The danger Breyer invites with his freewheeling consideration of the public benefit in the fourth factor, untethered from the illustrative purposes of the first factor, is that it may cause courts to overlook the public benefit advanced through copyright protection itself. The public interest is served by creating marketable rights in works of creative expression, which enables the pursuit of private ends through the creation and dissemination of such works.8It bears emphasizing here the Court’s previous statements regarding copyright’s advancement of the public interest. In Eldred v. Ashcroft, the majority admonished Justice Breyer’s assertion that “copyright statutes must serve public, not private, ends,” saying “The two ends are not mutually exclusive, copyright law services public ends by providing individuals with an incentive to pursue private ones.” 537 US 186, 212 n.18 (2003). More directly, in Harper and Row, the Court agreed with the Second Circuit “that copyright is intended to increase and not to impede the harvest of knowledge” but believed that the Circuit Court, in finding fair use, “gave insufficient deference to the scheme established by the Copyright Act for fostering the original works that provide the seed and substance of this harvest.” 471 US at 545-46. It’s challenging to see this public interest in action—it’s not like we can compare a world with copyright to a world without copyright to see the differences. And it is difficult, if not impossible, to identify and measure the results of any changes—they are prospective, occur over a long period of time, and are subtle and diffuse.

Thus, it may be too easy for a court, confronted with a potential use “impeded” by copyright to fixate on the benefit of permitting the use in front of it while ignoring the more diffuse public benefit advanced by copyright protection. Judges can’t be blamed for this; it’s human nature. We are wired to make decisions based on what affects us more deeply rather than through a rational cost-benefit analysis, and immediately perceivable outcomes are far more affective than delayed, diffused outcomes.9See Paul Slovic et al., Risk as Analysis and Risk as Feelings: Some Thoughts About Affect, Reason, Risk, and Rationality, 24 Risk Analysis 311 (2004). That’s not to say judges are ruled by their emotions. But it it does illustrate the benefits of constraining judicial decision-making through, for example, standards—like the four factors that Congress directs courts to consider when determining fair use. Judicial tools such as presumptions and burdens of proof might also play an important rule here. Instead, Breyer’s opinion leads courts down a path that compounds the inherent difficulties of assessing relative benefits and pushes fair use in the wrong direction.

References

References
1 Slip op. at 31.
2 Report of the Register of Copyrights on the General Revision of the US Copyright Law at 24 (1961) (“[B]roadly speaking, [fair use] means that a reasonable portion of a copyrighted work may be reproduced without permission when necessary for a legitimate purpose which is not competitive with the copyright owner’s market for his work.”).
3 Harper & Row v. Nation Enterprises, 471 US 539, 566 (1985).
4 677 F.2d 180, 183 (2d Cir. 1981).
5 Id. at 182.
6 Id. at 183.
7 See, e.g., Meeropol v. Louis Nizer, Doubleday & Co., 560 F.2d 1061, 1069-70 (2d Cir. 1977) (“the purpose and character of the use of the copyrighted material, the nature of the copyrighted work, and amount and substantiality of the work used, and its effect upon the potential market for the copyrighted material are factors which must be evaluated in concert. If the effect on the market by an infringing work is minimal, for example, far greater use may be privileged than where the market value of the copyrighted material is substantially decreased.”).
8 It bears emphasizing here the Court’s previous statements regarding copyright’s advancement of the public interest. In Eldred v. Ashcroft, the majority admonished Justice Breyer’s assertion that “copyright statutes must serve public, not private, ends,” saying “The two ends are not mutually exclusive, copyright law services public ends by providing individuals with an incentive to pursue private ones.” 537 US 186, 212 n.18 (2003). More directly, in Harper and Row, the Court agreed with the Second Circuit “that copyright is intended to increase and not to impede the harvest of knowledge” but believed that the Circuit Court, in finding fair use, “gave insufficient deference to the scheme established by the Copyright Act for fostering the original works that provide the seed and substance of this harvest.” 471 US at 545-46.
9 See Paul Slovic et al., Risk as Analysis and Risk as Feelings: Some Thoughts About Affect, Reason, Risk, and Rationality, 24 Risk Analysis 311 (2004).