Fair Use in Oracle: Proximate Cause at the Copyright/Patent Divide

48 Pages Posted: 13 Mar 2020

Date Written: March 12, 2020


In Oracle America, Inc. v. Google LLC, the Federal Circuit undermined copyright law’s deference to patent law and, in doing so, delivered a blow to both regimes. Copyright’s deference— including a historic refusal to enforce rights that might undermine the public’s liberty to copy unpatented inventions-- is a necessary part of preserving inventors’ willingness to accept the short duration, mandatory disclosure, and other stringent bargains demanded by patent law. Deference to patent law is also integral to copyright law’s interior architecture; copyright’s refusal to monopolize functional applications of creative work lowers the social costs that would otherwise be imposed by copyright’s ease of acquisition and long duration.

If patent law refuses to protect a functional device or other innovation (perhaps because its patent has expired, or because the innovation would be obvious to anyone skilled in the field), various copyright doctrines make it difficult for an eager claimant to use copyright law instead. These doctrines act like fences.

For example, under 17 USC § 102(b), copyright cannot extend to “ideas” or to any “procedure, process, system,[or] method of operation.” This prohibition applies “regardless” of the copyrighted “form” in which the idea, procedure, process or method appears. Id. Therefore, the public violates no copyright duties when it copies, say, ideas about how to improve the manufacture of steel from a copyrighted instruction manual or video. If the creator of the manufacturing idea wants protection for it, the inventor needs to look to patent law.

Similarly, although copyright can subsist in drawings of a useful article, the statute and caselaw disable those copyrights from giving any rights to keep others from making or selling the article. 17 USC § 113(b). Say the inventors of an automobile engine with improved fuel efficiency want to restrain others from building and selling copycat engines. To restrain such functional copying, the inventors get no mileage out of the copyrights that subsist in their blueprints. Rather, to stop competitors from building and selling the new engine, the inventors must seek the protection of patent law.

Under yet another statutory rule, sculptured shapes that have “an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information” are not copyrightable unless their aesthetic and functional components are separable. 17 USC § 101.

The instant Article discusses these and other limits on copyright law. Their overall impact is to emphasize the importance Congress and the courts give to preventing copyright law from directly or indirectly competing with, or undermining, the decisions of patent law.

Computer-program copyrights were intended to respond to programmer’s expression, not their engineering ingenuity. As technology poses new chanllenges, separate intellectual property laws need to keep conguent with the separate purposes each serves. The Supreme Court has granted certiorari in Oracle, allowing the Court to evaluate a judicial opinion that, this Article argues, ignored these first principles.

A need for congruence (‘or ‘fit’) is recognized in most areas of civil liability. For example, in enforcing the Clayton Act, the Supreme Court honored that need for congruence by creating a doctrine it called ’antitrust injury’ to limit liability. Common-law tort generally employs the doctrine called “proximate cause” to similarly assure fit between the facts of a given case and the law’s purposes. In copyright law, the courts and Congress entrust this familiar but crucial task to “fair use”. The instant Article employs analogies from antitrust and common-law tort to reinforce the appropriateness of using the fair use doctrine to keep copyright law in its own yard.

Suggested Citation

Gordon, Wendy J., Fair Use in Oracle: Proximate Cause at the Copyright/Patent Divide (March 12, 2020). Boston University Law Review, Vol. 100, No. 389, 2020, Available at SSRN: https://ssrn.com/abstract=3553408

Wendy J. Gordon (Contact Author)

Boston University School of Law ( email )

765 Commonwealth Avenue
Boston, MA 02215
United States
617-353-4420 (Phone)
617-353-3077 (Fax)

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