To Get a Big Award, Oracle Must Prove Google Stole Code Outright

By Darryl K. Taft  |  Posted 2012-05-07

Oracle Wins Partial Victory Over Google, Jury Deadlocks on Java Fair Use

A California jury returned a partial victory for Oracle May 7, finding that Google did indeed violate the company's copyrights related to the Java programming language and effectively stole some APIs for use in the Android operating system. However, the findings were perhaps good for both sides, as the verdict leaves several key questions unanswered.

The case, which was heard in federal court in California, captivated the technology community for several weeks as Oracle CEO Larry Ellison clashed with Google CEO Larry Page about what company, if any, owns the rights to Java€”one of the world's most widely used programming languages. The trial also featured a parade of former Sun Microsystems executives and detailed accounts of the creation of APIs used with the popular Android mobile OS.

While Oracle can claim a partial victory€”in all likelihood Google will appeal the decision€”the case still leaves many unanswered questions about the nature of intellectual property. A number of companies, including Microsoft, Motorola, Apple, Samsung and many others are engaged in an ongoing series of court cases concerning which ones own patents on a number of different technologies, especially technology related to mobile device hardware and software.

In what was the most pressing question of this phase €“Question 1A€”whether Google infringed on Oracle's copyrights, the jury came back with a unanimous finding for Oracle.

However, on the second part of that query €“Question 1B€“ whether Google was able to prove fair use of the copyrighted works, the jury deadlocked. Fair use is a copyright principle that says that copyrighted material may be freely used if certain factors are in place or the use meets certain criteria.

The partial verdict says Google infringed the sequence, structure and organization of 37 Java APIs through the use of those APIs in Android, according to the jury of five men and seven women. The jury deliberated for a week before returning the verdict today in U.S. District Court in San Francisco.

Question 1A read: "As to the compilable code for the 37 Java API packages in question taken as a group: A. Has Oracle proven that Google has infringed the overall structure, sequence and organization of copyrighted works?" And Question 1B read: "B. Has Google proven that its use of the overall structure, sequence and organization constituted 'fair use'?"

With answers of "yes" to A and a deadlock on B, Google lawyers immediately requested a mistrial saying there could not be a partial verdict on question 1. U.S. District Judge William Alsup, who is overseeing the case, said he would hear motions on the mistrial and have that issue sorted out by Thursday, May 10.

To Get a Big Award, Oracle Must Prove Google Stole Code Outright

However, be that as it may, with the verdict returned as it has, some observers as well as Judge Alsup himself noted that Oracle's win would only be for statutory damages. According to this tweet from a ZDNet reporter in the courtroom, Alsup said: Unless the court can give a verdict on 1B in favor of Oracle, there's nothing except one line of statutory damages.

To get a big pay day from this case, Oracle has to show that Google stole Java outright. And fair use is key to that. The fair use doctrine has to be shot down in order for Oracle to show that Google willfully infringed on its copyrights and patents. And with willful infringement, Oracle would be eligible for triple damages from Google. Alsup hinted that he believed evidence of willful infringement by Google was strong earlier in the trial.

In a post about fair use from May 6, Florian Mueller, an expert on technology patents who has been watching the case closely, but who also took a position as a consultant to Oracle, said:

"There's consensus among observers of the Oracle vs. Google Android/Java trial that the jury has most likely identified infringements but hasn't yet reached unanimity on Google's 'fair use' defense. Google's counsel was initially opposed to a partial verdict, though it appears that he would now accept one. But he didn't want the judge to ask the jury foreman whether the vote on the remaining question was 'close.' Google can probably figure that the evidence for willful infringement and against 'fair use' is overwhelming, but [former Sun CEO] Jonathan Schwartz' testimony might have had just enough of an effect that a minority of jurors doesn't want to consent to a finding that would be very likely to result in Google being found liable."

And in a follow-up post today, Mueller wrote: "In any event, the jury did not decide on API copyrightability. This one will have to be decided by Judge Alsup himself. The parties are due to respond to various copyrightability-related questions by Thursday, May 10."

Meanwhile, as soon as the jury finished entering its partial verdict on the copyright issue, Alsup moved directly to the second phase of the trial to focus on patents. Phase three of the trial will deal with damages.

In a brief period of courtroom drama, one juror was reported to have spoken to the jury about a conversation with her husband who holds three patents. The judge brought the juror out and determined that all she had gleaned from her husband was the shelf life of a patent. The judge then brought the full jury out and asked if they had been swayed or influenced by the juror's comments. They said they had not, so he sent them back to continue deliberating.

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