Including Copyrighted Work in a Broader Work is Not Necessarily Transformative Fair Use: N.D. Cal. | Practical Law

Including Copyrighted Work in a Broader Work is Not Necessarily Transformative Fair Use: N.D. Cal. | Practical Law

In Oracle America, Inc. v. Google Inc., the US District Court for the Northern District of California rejected a jury instruction that cited decisions of the US Court of Appeals for the Ninth Circuit for the principle that including a copyrighted work in a broader work is necessarily transformative for purposes of determining fair use.

Including Copyrighted Work in a Broader Work is Not Necessarily Transformative Fair Use: N.D. Cal.

by Practical Law Intellectual Property & Technology
Published on 05 May 2016 • USA (National/Federal)
In Oracle America, Inc. v. Google Inc., the US District Court for the Northern District of California rejected a jury instruction that cited decisions of the US Court of Appeals for the Ninth Circuit for the principle that including a copyrighted work in a broader work is necessarily transformative for purposes of determining fair use.
On May 2, 2016, in Oracle America, Inc. v. Google Inc., in a memorandum opinion, the US District Court for the Northern District of California rejected Google, Inc.'s proposal to modify a jury instruction to state that the mere incorporation of a copyrighted work as part of a broader work is transformative.
On April 20, 2016, Google sought to add a paragraph to the court's draft jury instruction on fair use and transformativeness. Google argued both that:
  • A new work is transformative when it incorporates a prior work "as part of a broader work."
  • The new work need not change the expressive elements of the original work to be transformative.
In support of the first argument, Google relied on the US Court of Appeals for the Federal Circuit's decision in Oracle Am., Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014), in which the Federal Circuit cited Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1176 (9th Cir. 2012) for the principle that transformative use consists of either:
  • The alteration of the expressive content or message of the original work.
  • The incorporation of the original work as part of a broader work.
The district court took issue with Google's reliance on the Ninth Circuit's decision in Monge for the latter statement, finding that this unqualified, "as part of a broader work" principle, was extracted from the Federal Circuit's citation of Monge in a parenthetical, string cite "snippet" that:
  • Was lifted out of context.
  • Was contrary to the Monge case's actual holding.
  • Actually misstated Ninth Circuit copyright fair use law.
Analyzing the Ninth Circuit's decision in Monge, the district court explained that incorporation of a work "as part of a broader work" can be transformative, depending wholly on the circumstances. However, it also emphasized that "can be" does not mean "must be", as Google's instruction suggests. The court therefore rejected Google's proposed jury instruction that "transformative" use includes incorporation of a copyrighted work as part of a broader work.
The district court's ruling underscores that the determination of copyright fair use requires a complex, fact-driven inquiry that cannot be answered by resort to unqualified, bright-line rules.