  United States Court of Appeals
      for the Federal Circuit
                ______________________

              ORACLE AMERICA, INC.,
                 Plaintiff-Appellant

                           v.

                    GOOGLE LLC,
               Defendant-Cross-Appellant
                ______________________

                 2017-1118, 2017-1202
                ______________________

   Appeals from the United States District Court for the
Northern District of California in No. 3:10-cv-03561-
WHA, Judge William H. Alsup.
                ______________________

                Decided: March 27, 2018
                ______________________

     E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sut-
cliffe LLP, New York, NY, argued for plaintiff-appellant.
Also represented by PETER A. BICKS, MATTHEW LEE BUSH,
ANDREW D. SILVERMAN, LISA SIMPSON; MELANIE L.
BOSTWICK, KELSI BROWN CORKRAN, MARK S. DAVIES,
JEREMY PETERMAN, Washington, DC; ANNETTE LOUISE
HURST, San Francisco, CA; DALE M. CENDALI, JOSHUA L.
SIMMONS, Kirkland & Ellis LLP, New York, NY; RUCHIKA
AGRAWAL, DORIAN ESTELLE DALEY, DEBORAH KAY MILLER,
MATTHEW SARBORARIA, Oracle America, Inc., Redwood
Shores, CA.
2                      ORACLE AMERICA, INC.   v. GOOGLE LLC



    DARYL JOSEFFER, King & Spalding LLP, Washington,
DC, argued for defendant-cross-appellant. Also repre-
sented by BRUCE WILLIAM BABER, Atlanta, GA; CHRISTA
M. ANDERSON, STEVEN A. HIRSCH, MICHAEL SOONUK
KWUN, REID P. MULLEN, ROBERT A. VAN NEST, Keker, Van
Nest & Peters LLP, San Francisco, CA; RENNY F. HWANG,
Google LLC, Mountain View, CA.

    KENNETH L. DOROSHOW, Jenner & Block LLP, Wash-
ington, DC, for amicus curiae The Copyright Alliance.
Also represented by ERICA LAUREN ROSS.

   DANIEL J. BROOKS, Scarola Malone & Zubatov LLP,
New York, NY, for amicus curiae New York Intellectual
Property Law Association. Also represented by CHARLES
R. MACEDO, Amster Rothstein & Ebenstein LLP, New
York, NY; ANNEMARIE HASSETT, NYU School of Law, New
York, NY.

    JARED BOBROW, Weil, Gotshal & Manges LLP, Red-
wood Shores, CA, for amici curiae Eugene H. Spafford,
Zhi Ding, Adam Porter, Ken Castleman. Also represented
by AMANDA BRANCH, AARON Y. HUANG.

   STEVEN THOMAS COTTREAU, Clifford Chance Rogers &
Wells LLP, Washington, DC, for amici curiae Scott
McNealy, Brian Sutphin.

    MARC ROBERT LEWIS, Lewis & Llewellyn LLP, San
Francisco, CA, for amicus curiae Ralph Oman. Also
represented by EVANGELINE ZIMMERMAN BURBIDGE.

    ROBERT H. ROTSTEIN, Mitchell, Silberberg & Knupp,
LLP, Los Angeles, CA, for amici curiae Motion Picture
Association of America, Inc., Independent Film & Televi-
sion Alliance. Also represented by J. MATTHEW WILLIAMS,
Washington, DC.
ORACLE AMERICA, INC.   v. GOOGLE LLC                    3



   DUNCAN W. CRABTREE-IRELAND, SAG-AFTRA, Los
Angeles, CA, for amicus curiae Screen Actors Guild –
American Federation of Television and Radio Artists.

    WILLIAM M. JAY, Goodwin Procter LLP, Washington,
DC, for amici curiae Recording Industry Association of
America, Association of American Publishers. Also repre-
sented by ANDREW KIM. Recording Industry Association
of America also represented by GEORGE M. BORKOWSKI,
Mitchell, Silberberg & Knupp, LLP, Los Angeles, CA.

    REBECCA MURPHY THOMPSON, Competitive Carriers
Association, Washington, DC, for amicus curiae Competi-
tive Carriers Association.

   ANTIGONE GABRIELLA PEYTON, Protorae Law PLLC,
Tysons, VA, for amici curiae Sandra Aistars, Matthew
Barblan, Jon A. Baumgarten, Stephen Carlisle, Jon M.
Garon, Hugh Hansen, Devlin Hartline, Jiarui Liu, Adam
Mossoff, Raymond T. Nimmer, Eric Priest, Sean M.
O’Connor, Mark F. Schultz.

    LINDSAY WARREN BOWEN, Cowan, DeBaets, Abrahams
& Sheppard LLP, New York, NY, for amici curiae PACA,
Digital Media Licensing Association, Inc., Graphic Artists
Guild, National Press Photographers Association, North
American Nature Photography Association, American
Society of Media Photographers, Inc., American Photo-
graphic Artists, Professional Photographers of America.
Also represented by SCOTT J. SHOLDER.

    RICHARD L. RAINEY, Covington & Burling LLP, Wash-
ington, DC, for amicus curiae BSA | The Software Alli-
ance. Also represented by PETER ANDREW SWANSON.

   JONATHAN BAND, Jonathan Band PLLC, Washington,
DC, for amicus curiae Computer & Communications
Industry Association. Also represented by MATTHEW
4                      ORACLE AMERICA, INC.   v. GOOGLE LLC



SCHRUERS, Computer & Communications Industry Asso-
ciation, Washington, DC.

   MICHAEL BARCLAY, Electronic Frontier Foundation,
San Francisco, CA, for amici curiae Electronic Frontier
Foundation, Public Knowledge.     Also represented by
MITCHELL L. STOLTZ.

   MARCIA HOFMANN, Zeitgeist Law PC, San Francisco,
CA, for amicus curiae Mozilla Corporation.

    RICHARD M. BRUNELL, American Antitrust Institute,
Washington, DC, for amicus curiae American Antitrust
Institute. Also represented by SHUBHA GHOSH, Syracuse
University College of Law, Syracuse, NY.

    JEFFREY A. LAMKEN, MoloLamken LLP, Washington,
DC, for amici curiae Microsoft Corp., Red Hat, Inc.,
Hewlett Packard Enterprise Company. Also represented
by RAYINER HASHEM, MICHAEL GREGORY PATTILLO, JR.;
LISA WANG BOHL, Chicago, IL.

    JASON MICHAEL SCHULTZ, NYU School of Law, New
York, NY, for amici curiae Timothy K. Armstrong, Cark
D. Asay, Shyamkrishna Balganesh, Ann Bartow, Oren
Bracha, Annemarie Bridy, Dan L. Burk, Michael A.
Carrier, Michael W. Carroll, Andrew Chin, Julie E. Co-
hen, Kevin Collins, Rebecca Curtin, Ben Depoorter, Roger
Allan Ford, Brian L. Frye, Jim Gibson, Eric Goldman,
James Grimmelmann, Peter Jaszi, Yvette Joy Liebesman,
Jessica Litman, Brian J. Love, Michael J. Madison, Mark.
P. McKenna, Joseph Scott Miller, Deirdre K. Mulligan,
Tyler T. Ochoa, Aaron Perzanowski, Victoria F. Phillips,
Arti K. Rai, Jerome H. Reichman, Michael Rustad, Mat-
thew Sag, Pamela Samuelson, Jessica Sibley, Joshua
David Sarnoff, Lea Shaver, Christopher Jon Sprigman,
Katherine J. Strandburg, Rebecca Tushnet, Jennifer M.
Urban.
ORACLE AMERICA, INC.   v. GOOGLE LLC                   5




    PHILLIP R. MALONE, Stanford Law School, Stanford,
CA, for amici curiae Harold Abelson, Tom Ball, Brian
Behlendorf, Gordon Bell, Jon Bentley, Matthew Bishop,
Joshua Bloch, Dan Boneh, Gilad Bracha, Eric Brewer,
Frederick Brooks, Rick Cattell, Vinton G. Cerf, William
Cook, Mark Davis, Miguel de Icaza, Jeffrey Dean, L. Peter
Deutsch, Whitfield Diffie, David L. Dill, Lester Earnest,
Brendan Eich, Dawson Engler, Martin Fowler, Neal
Gafter, Robert Harper, John Hennessy, Tom Jennings,
Alan Kay, Brian Kernighan, David Klausner, Ray Kur-
zweil, Kin Lane, Ed Lazowska, Doug Lea, Bob Lee, Sheng
Liang, Barbara Liskov, Paul Menchini, Andrew W. Moore,
James H. Morris, Peter Norvig, Martin Odersky, Tim
Paterson, David Patterson, Alex Payne, Tim Peierls,
Simon Phipps, Bill Pugh, Ronald L. Rivest, Curtis
Schroeder, Robert Sedgewick, Mary Shaw, Barbara
Simons, Dave Snigier, Alfred Z. Spector, Bjarne Strou-
strup, Gerald Jay Sussman, Ivan E. Sutherland, Andrew
Tanenbaum, Brad Templeton, Ken Thompson, Michael
Tiemann, Linus Torvalds, Andrew Tridgell, Jeffrey
Ullman, Andries Van Dam, Guido Van Rossum, John
Villasenor, Jan Vitek, Philip Wadler, James H. Waldo,
Daniel S. Wallach, Peter J. Weinberger, Steve Wozniak,
Frank Yellin. Also represented by JEFFREY THEODORE
PEARLMAN.

    MARK A. LEMLEY, Durie Tangri LLP, San Francisco,
CA, for amici curiae Engine Advocacy, The App Develop-
ers Alliance, GitHub, Inc. Also represented by JOSEPH
GRATZ, CLEMENT ROBERTS.
                 ______________________

Before O’MALLEY, PLAGER, and TARANTO, Circuit Judges.
O’MALLEY, Circuit Judge.
6                        ORACLE AMERICA, INC.   v. GOOGLE LLC



    This copyright case returns to us after a second jury
trial, this one focusing on the defense of fair use. Oracle
America, Inc. (“Oracle”) filed suit against Google Inc.
(“Google”) 1 in the United States District Court for the
Northern District of California, alleging that Google’s
unauthorized use of 37 packages of Oracle’s Java applica-
tion programming interface (“API packages”) in its An-
droid operating system infringed Oracle’s patents and
copyrights.
    At the first trial, the jury found that Google infringed
Oracle’s copyrights in the Java Standard Edition plat-
form, but deadlocked on the question of whether Google’s
copying was a fair use. 2 After the verdict, however, the
district court found that the API packages were not
copyrightable as a matter of law and entered judgment for
Google. Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d
974 (N.D. Cal. 2012). Oracle appealed that determination
to this court, and we reversed, finding that declaring code
and the structure, sequence, and organization (“SSO”) of
the Java API packages are entitled to copyright protec-
tion. Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1348
(Fed. Cir. 2014). We remanded with instructions to
reinstate the jury’s infringement verdict and for further
proceedings on Google’s fair use defense and, if appropri-
ate, on damages. Id. at 1381.
    Google subsequently filed a petition for certiorari on
the copyrightability determination. The Supreme Court
called for the views of the Solicitor General, who ex-
pressed agreement with our determination and recom-
mended denying review. The Supreme Court denied


    1   In September 2017, Google converted from a cor-
poration to a limited liability company and changed its
name to Google LLC, as reflected in the amended caption.
    2   The jury found no patent infringement, and the
patent claims are not at issue on appeal.
ORACLE AMERICA, INC.   v. GOOGLE LLC                     7



certiorari in 2015. Google Inc. v. Oracle Am., Inc., 135 S.
Ct. 2887 (2015) (Mem.).
    At the second jury trial, Google prevailed on its fair
use defense. After the jury verdict, the district court
denied Oracle’s motion for judgment as a matter of law
(“JMOL”) and entered final judgment in favor of Google.
Oracle Am., Inc. v. Google Inc., No. C 10-03561, 2016 WL
3181206 (N.D. Cal. June 8, 2016) (“Order Denying
JMOL”); Final Judgment, Oracle Am., Inc. v. Google Inc.,
No. 3:10-cv-3561 (N.D. Cal. June 8, 2016), ECF No. 1989.
Oracle filed a renewed motion for JMOL and separately
moved for a new trial. The district court denied both
motions in a single order. Oracle Am., Inc. v. Google Inc.,
No. C 10-03561, 2016 WL 5393938 (N.D. Cal. Sept. 27,
2016) (“Order Denying Renewed JMOL/New Trial”).
Consistent with these determinations, no damages verdict
was rendered.
    Oracle now appeals from the district court’s final
judgment and its decisions denying Oracle’s motions for
JMOL and motion for a new trial. Google cross-appeals
from the final judgment purportedly to “preserv[e] its
claim that the declarations/SSO are not protected by
copyright law,” but advances no argument for why this
court can or should revisit our prior decision on copy-
rightability. Cross-Appellant Br. 83.
    Because we conclude that Google’s use of the Java
API packages was not fair as a matter of law, we reverse
the district court’s decisions denying Oracle’s motions for
JMOL and remand for a trial on damages. We also dis-
miss Google’s cross-appeal.
                       I. BACKGROUND
                   A. The Technology
    Oracle’s predecessor, Sun Microsystems, Inc. (“Sun”),
developed the Java platform for computer programming
in the 1990s, and Oracle purchased Sun in 2010. The
8                        ORACLE AMERICA, INC.   v. GOOGLE LLC



Java platform is software used to write and run programs
in the Java programming language. It allows program-
mers to write programs that “run on different types of
computer hardware without having to rewrite them for
each different type.” Oracle, 750 F.3d at 1348. With
Java, programmers can “write once, run anywhere.” Id.
     The Java 2 Standard Edition (“Java SE”) of the plat-
form includes, among other things, the Java Virtual
Machine and the Java Application Programming Interface
(“API”). The Java API is a collection of “pre-written Java
source code programs for common and more advanced
computer functions.” Order Denying JMOL, 2016 WL
3181206, at *3. These APIs “allow programmers to use
the prewritten code to build certain functions into their
own programs rather than write their own code to per-
form those functions from scratch. They are shortcuts.”
Oracle, 750 F.3d at 1349. The prewritten programs are
organized into packages, classes, and methods. Specifical-
ly, an API package is a collection of classes and each class
contains methods and other elements. “Each method
performs a specific function, sparing a programmer the
need to write Java code from scratch to perform that
function.” Order Denying JMOL, 2016 WL 3181206, at
*3.
    To include a particular function in a program, the
programmer invokes the Java “declaring code.” As the
district court explained, the declaring code is the line or
lines of source code that “declares or defines (i) the meth-
od name and (ii) the input(s) and their type as expected by
the method and the type of any outputs.” Id. at *4. After
the declaring code, each method includes “implementing
code,” which takes the input(s) and gives the computer
step-by-step instructions to carry out the declared func-
tion.
    By 2008, Java SE included 166 API packages divided
into 3,000 classes containing more than 30,000 methods.
ORACLE AMERICA, INC.   v. GOOGLE LLC                    9



At issue in this appeal are 37 API packages from Java SE
Version 1.4 and Version 5.0. We have already concluded
that the declaring code and the SSO of the 37 Java API
packages at issue are entitled to copyright protection.
Oracle, 750 F.3d at 1348.
    The Java programming language itself is free and
available for use without permission. At this stage, it is
undisputed that, to write in the Java programming lan-
guage, “62 classes (and some of their methods), spread
across three packages within the Java API library, must
be used. Otherwise the language itself will fail.” Order
Denying JMOL, 2016 WL 3181206, at *5. It is also un-
disputed that anyone using the Java programming lan-
guage can write their own library of prewritten programs
to carry out various functions.
     Although Oracle makes the Java platform freely
available to programmers building applications (“apps”),
it devised a licensing scheme to attract programmers
while simultaneously commercializing the platform. In
relevant part, Oracle charges a licensing fee to those who
want to use the APIs in a competing platform or embed
them in an electronic device. To preserve the “write once,
run anywhere” philosophy, Oracle imposes strict compati-
bility requirements on licensees. Oracle, 750 F.3d at
1350. Oracle also made available without charge under
an open source license a version of Java called “Open-
JDK.” Order Denying JMOL, 2016 WL 3181206, at *10.
Oracle maintains, however, that OpenJDK came with an
important catch: any company that improved on the
packages in OpenJDK had to “‘give away those changes
for free’ to the Java community.” Appellant Br. 53.
    The evidence showed that Oracle licensed Java in 700
million PCs by 2005. Although Oracle never successfully
developed its own smartphone platform using Java, it
licensed Java SE for mobile devices. According to Oracle,
the “mobile device market was particularly lucrative,” and
10                      ORACLE AMERICA, INC.   v. GOOGLE LLC



“Java quickly became the leading platform for developing
and running apps on mobile phones.” Appellant Br. 9.
              B. Google’s Android Platform
   In 2005, Google acquired Android, Inc. as part of a
plan to develop a software platform for mobile devices.
That same year, Google and Sun began discussing the
possibility of Google taking a license to use and adapt the
Java platform for mobile devices. Oracle, 750 F.3d at
1350. The parties were unable to reach an agreement, in
part because Google wanted device manufacturers to be
able to use Oracle’s APIs in Android for free with no
limits on modifying the code, which would jeopardize the
“write once, run anywhere” philosophy.
   The jury heard evidence that Google wanted to move
quickly to develop a platform that would attract Java
developers to build apps for Android. The Android team
had been working on creating its own APIs, but was
unable to do so successfully. After negotiations between
the parties reached an impasse, Google elected to “[d]o
Java anyway and defend [its] decision, perhaps making
enemies along the way.” Order Denying JMOL, 2016 WL
3181206, at *6. It is undisputed that Google copied verba-
tim the declaring code of the 37 Java API packages—
11,500 lines of Oracle’s copyrighted code. It also copied
the SSO of the Java API packages. Google then wrote its
own implementing code.
   Google announced its Android software platform for
mobile devices in 2007, and the first Android phones
went on sale the following year. Google provides the
Android platform free of charge to smartphone manufac-
turers and publishes the source code for use without
charge under an open source license. Although Google
does not directly charge its users, Android has generated
over $42 billion in revenue from advertising. Oracle
explains that Android was “devastating” to its licensing
strategy and that many of its customers switched to
ORACLE AMERICA, INC.   v. GOOGLE LLC                     11



Android. Appellant Br. 15. Even customers who stayed
with Oracle cited Android as a reason to demand dis-
counts. The jury heard evidence that Amazon, which had
entered into a license to use Java for its Kindle tablet
device, switched to Android for the subsequently released
Kindle Fire and then used the existence of Android to
leverage a steep discount from Oracle on the next genera-
tion Kindle.
                 C. Remand Proceedings
    In the first appeal, we held that the declaring code
and the SSO of the 37 API packages are entitled to copy-
right protection and ordered the district court to reinstate
the jury’s infringement finding. Oracle, 750 F.3d at 1381.
We also considered Oracle’s argument that it was entitled
to judgment as a matter of law on Google’s fair use de-
fense. Although we found that Oracle’s position was “not
without force,” and that Google was overstating what
could be fair use under the law, we found that the record
evidence regarding the relevant fair use factors was
insufficiently developed for us to resolve the issue on
appeal. Oracle, 750 F.3d at 1376. In doing so, we pointed
to sharp disputes between the parties, both legal and
factual, including whether Google’s use was transforma-
tive, whether “functional aspects of the package” and
Google’s “desire to achieve commercial ‘interoperability’”
weighed in favor of the second and third factors, and
whether Android caused market harm to Oracle. Id. at
1376-77. We concluded that “due respect for the limit of
our appellate function” required remand. Id. at 1376.
    During the pendency of the first appeal, Google’s An-
droid business expanded significantly. Android gained
new users and developers, and Google “released modified
implementations and derivatives of Android for use in
numerous device categories, including wearable devices
with small screens (Android Wear), dashboard interfaces
in cars (Android Auto), television sets (Android TV), and
12                       ORACLE AMERICA, INC.   v. GOOGLE LLC



everyday devices with Internet connectivity.” Oracle Am.,
Inc. v. Google Inc., No. C10-03561, 2016 WL 1743111, at
*1 (N.D. Cal. May 2, 2016) (“Order on Motion in Limine”).
     When the case returned to the district court, Oracle
filed a supplemental complaint adding allegations of
market harm and damages resulting from new versions of
Android released since the original complaint. Specifical-
ly, Oracle alleged that Google had launched new versions
of Android for phones and tablets and had expanded
Android into new device categories. Id. Google did not
oppose the supplemental complaint, and the district court
granted Oracle’s motion to file it. But when Oracle served
expert reports that addressed versions of Java SE that
were not at issue in the first trial, Google moved to strike
those reports. Id.
    When the parties were unable to agree on the scope of
the retrial, the district court limited it to: (1) the two
versions of Java SE that Oracle asserted in the first trial;
and (2) released versions of Android used in smartphones
and tablets “which Google . . . agreed would be subject to
the prior jury’s adverse finding of infringement and which
Oracle identified in its supplemental complaint.” Id. The
court explained that Oracle retained the right to sue
Google for infringement with respect to the other versions
and implementations of Android in a separate trial or
proceeding. Order re: Google’s Motion to Strike at 2,
Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D.
Cal. Feb. 5, 2016), ECF No. 1479. The court also granted
Google’s motion in limine to exclude all evidence of the
new Android products.
    The district court bifurcated the issue of fair use from
willfulness and monetary remedies, and the trial on fair
use began on May 10, 2016. After roughly one week of
evidence and several days of deliberations, the jury found
that Google’s use of the declaring lines of code and the
SSO of the 37 API packages constituted fair use.
ORACLE AMERICA, INC.   v. GOOGLE LLC                     13



    Oracle moved for JMOL, which the district court de-
nied. At the outset, the court noted that Oracle stipulated
before the jury “that it was fair to use the 62 ‘necessary’
classes given that the Java programming language itself
was free and open to use without a license.” Order Deny-
ing JMOL, 2016 WL 3181206, at *5. “That the 62 ‘neces-
sary’ classes reside without any identification as such
within the Java API library (rather than reside within the
programming language),” the court explained, “supports
Google’s contention that the Java API library is simply an
extension of the programming language itself and helps
explain why some view the Java API declarations as free
and open for use as the programming language itself.” Id.
Because Android and Java both “presupposed the Java
programming language in the first place,” the court noted
that a jury reasonably could have found that it “was
better for both to share the same SSO insofar as they
offered the same functionalities, thus maintaining usage
consistency across systems and avoiding cross-system
confusion.” Id. at *6.
    The district court then considered each of the four
statutory fair use factors. As to factor one—the purpose
and character of the use—the court concluded that a
reasonable jury could have found that, although Google’s
use was commercial, it was transformative because
Google integrated only selected elements for mobile
smartphones and added its own implementing code. Id.
at *7-9. With respect to factor two—the nature of the
copyrighted work—the district court found that a reason-
able jury could have concluded that, “while the declaring
code and SSO were creative enough to qualify for copy-
right protection,” they were not “highly creative,” and that
“functional considerations predominated in their design.”
Id. at *10.
    As to factor three—the amount and substantiality of
the portion used—the court concluded that a reasonable
jury could have found that “Google copied only so much as
14                       ORACLE AMERICA, INC.   v. GOOGLE LLC



was reasonably necessary for a transformative use,” and
that the number of lines duplicated was minimal. Id.
Finally, as to factor four—market harm—the court con-
cluded that the jury “could reasonably have found that
use of the declaring lines of code (including their SSO) in
Android caused no harm to the market for the copyrighted
works, which were for desktop and laptop computers.” Id.
The court determined that, on the record presented, the
jury could have found for either side and that the jury was
“reasonably within the record in finding fair use.” Id. at
*11.
    Oracle subsequently renewed its motion for JMOL
and separately moved for a new trial challenging several
of the court’s discretionary decisions at trial. The district
court denied both motions in a single order. With respect
to JMOL, the court simply stated that it denied Oracle’s
renewed motion for the same reasons it denied the origi-
nal motion. With respect to the motion for a new trial,
the court rejected Oracle’s argument that the court
abused its discretion by limiting the evidence at trial to
Google’s use of Android in smartphones and tablets.
    The court also rejected Oracle’s allegation that Google
engaged in discovery misconduct by withholding evidence
during discovery relating to Google’s App Runtime for
Chrome (“ARC”), which enabled laptops and desktops
running Google’s computer operating system to run
certain Android applications. Order Denying Renewed
JMOL/New Trial, 2016 WL 5393938, at *5. The court
found that Google had produced relevant documents
during discovery and that, in any event, those documents
pertained to issues beyond the scope of the retrial. Id. at
*7-8.
    Finally, the district court rejected Oracle’s argument
that certain of the court’s evidentiary rulings were abuses
of discretion. The court explained that it: (1) redacted one
line from an email because it was “too inflammatory and
ORACLE AMERICA, INC.   v. GOOGLE LLC                       15



without foundation;” and (2) excluded other documents
because Oracle had withheld them as privileged until
trial. Id. at *9-12.
     On June 8, 2016, the district court entered final
judgment in favor of Google and against Oracle. Oracle
timely appealed from the district court’s judgment against
it, including the court’s underlying decisions denying its
motions for JMOL and for a new trial. Google timely
cross-appealed from all adverse orders and rulings under-
lying that final judgment.
    This court has exclusive jurisdiction over all appeals
in actions involving patent claims, including where, as
here, an appeal raises only non-patent issues. 28 U.S.C.
§ 1295(a)(1). Because copyright law is not within this
court’s exclusive jurisdiction, we apply the law of the
regional circuit in which the district court sits; here, the
Ninth Circuit. Atari Games Corp. v. Nintendo of Am.,
Inc., 975 F.2d 832, 837 (Fed. Cir. 1992).
                    II. ORACLE’S APPEAL
                   A. Legal Framework
     It is undisputed that Google copied Oracle’s declaring
code and SSO for the 37 API packages verbatim. The
question is whether that copying was fair. “From the
infancy of copyright protection, some opportunity for fair
use of copyrighted materials has been thought necessary
to fulfill copyright’s very purpose, ‘to promote the Pro-
gress of Science and useful Arts.’” Campbell v. Acuff-Rose
Music, Inc., 510 U.S. 569, 575 (1994) (quoting U.S. Const.,
art. I, § 8, cl. 8). As the Supreme Court noted in Camp-
bell, “[i]n truth, in literature, in science and in art, there
are, and can be, few, if any, things, which in an abstract
sense, are strictly new and original throughout. Every
book in literature, science and art, borrows, and must
necessarily borrow, and use much which was well known
16                       ORACLE AMERICA, INC.   v. GOOGLE LLC



and used before.” Id. (quoting Emerson v. Davies, 8 F.
Cas. 615, 619 (C.C.D. Mass. 1845)).
    The fair use defense began as a judge-made doctrine
and was codified in Section 107 of the 1976 Copyright Act.
Id. at 576. It operates as a limited exception to the copy-
right holder’s exclusive rights and permits use of copy-
righted work if it is “for purposes such as criticism,
comment, news reporting, teaching . . ., scholarship, or
research.” 17 U.S.C. § 107. The “such as” language
confirms that the listing “was not intended to be exhaus-
tive,” but nevertheless “give[s] some idea of the sort of
activities the courts might regard as fair use under the
circumstances.” Harper & Row Publishers, Inc. v. Nation
Enters., 471 U.S. 539, 561 (1985) (citation omitted).
    “Section 107 requires a case-by-case determination
whether a particular use is fair, and the statute notes four
nonexclusive factors to be considered.” Id. at 549. Those
factors include: (1) “the purpose and character of the use,
including whether such use is of a commercial nature or is
for nonprofit educational purposes;” (2) “the nature of the
copyrighted work;” (3) “the amount and substantiality of
the portion used in relation to the copyrighted work as a
whole;” and (4) “the effect of the use upon the potential
market for or value of the copyrighted work.” 17 U.S.C.
§ 107. The Supreme Court has cautioned against adopt-
ing bright-line rules and has emphasized that all of the
statutory factors “are to be explored, and the results
weighed together, in light of the purposes of copyright.”
Campbell, 510 U.S. at 578.
    The legislative history reveals that Congress intended
§ 107 “‘to restate the present judicial doctrine of fair use,
not to change, narrow, or enlarge it in any way’ and
intended that courts continue the common-law tradition
of fair use adjudication.” Id. at 577 (quoting H.R. Rep.
No. 94-1476, at 66 (1976), S. Rep. No. 94-473 at 62 (1975),
U.S. Code Cong. & Admin. News 5659, 5679 (1976)).
ORACLE AMERICA, INC.   v. GOOGLE LLC                      17



Accordingly, in balancing the four statutory factors,
courts consider “whether the copyright law’s goal of
‘promot[ing] the Progress of Science and useful Arts,’ U.S.
Const., art. 1, § 8, cl. 8, ‘would be better served by allow-
ing the use than by preventing it.’” Castle Rock Entm’t,
Inc. v. Carol Publ’g Grp., Inc., 150 F.3d 132, 141 (2d Cir.
1998) (quoting Arica Inst., Inc. v. Palmer, 970 F.2d 1067,
1077 (2d Cir. 1992)).
    Despite this guidance, the doctrine of fair use has long
been considered “the most troublesome in the whole law
of copyright.” Monge v. Maya Magazines, Inc., 688 F.3d
1164, 1170 (9th Cir. 2012) (quoting Dellar v. Samuel
Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939) (per
curiam)). It both permits and requires “courts to avoid
rigid application of the copyright statute when, on occa-
sion, it would stifle the very creativity which that law is
designed to foster.” Campbell, 510 U.S. at 577 (quoting
Stewart v. Abend, 495 U.S. 207, 236 (1990)).
    Because fair use is an affirmative defense to a claim of
infringement, Google bears the burden to prove that the
statutory factors weigh in its favor. Id. at 590. Not all of
the four factors must favor Google, however. See Wall
Data Inc. v. L.A. Cty. Sheriff’s Dep’t, 447 F.3d 769, 778
(9th Cir. 2006). Instead, “fair use is appropriate where a
‘reasonable copyright owner’ would have consented to the
use, i.e., where the ‘custom or public policy’ at the time
would have defined the use as reasonable.” Id. (citation
omitted).
    On appeal, Oracle argues that each of the four statu-
tory factors weighs against a finding of fair use. Specifi-
cally, it submits that: (1) the purpose and character of
Google’s use was purely for commercial purposes; (2) the
nature of Oracle’s work is highly creative; (3) Google
copied 11,330 more lines of code than necessary to write
in a Java language-based program; and (4) Oracle’s
customers stopped licensing Java SE and switched to
18                       ORACLE AMERICA, INC.   v. GOOGLE LLC



Android because Google provided free access to it. In the
alternative, Oracle argues that it is entitled to a new trial
because the district court made several errors that de-
prived it of a fair opportunity to present its case. Be-
cause, as explained below, we agree with Oracle that
Google’s copying was not fair use as a matter of law, we
need not address Oracle’s alternative arguments for a
new trial.
                 B. Standards of Review
    Before turning to a consideration of the four statutory
factors and any relevant underlying factual determina-
tions, we first address the standard of review we are to
employ in that consideration. While this section of most
appellate opinions presents easily resolvable questions,
like much else in the fair use context, that is not com-
pletely the case here.
     There are several components to this inquiry. First,
which aspects of the fair use determination are legal in
nature and which are factual? Particularly, is the ulti-
mate question of fair use a legal inquiry which is to be
reviewed de novo? Second, what factual questions are
involved in the fair use determination and under what
standard are those determinations to be reviewed? Final-
ly, though neither party addresses the question in detail,
we consider what, if any, aspects of the fair use determi-
nation are for the jury to decide.
     The Supreme Court has said that fair use is a mixed
question of law and fact. Harper & Row, 471 U.S. at 560
(citing Pac. & S. Co. v. Duncan, 744 F.2d 1490, 1495 n.8
(11th Cir. 1984)). Merely characterizing an issue as a
mixed question of law and fact does not dictate the appli-
cable standard of review, however. See U.S. Bank Nat’l
Ass’n ex rel. CWCapital Asset Mgmt. LLC, No. 15-1509,
2018 WL 1143822, at *5 (U.S. Mar. 5, 2018).
ORACLE AMERICA, INC.   v. GOOGLE LLC                        19



    The Supreme Court has recently explained how we
are to determine what the standard of review should be in
connection with any mixed question of law and fact. Id.
Specifically, the Court made clear that an appellate court
is to break mixed questions into their component parts
and to review each under the appropriate standard of
review. Id. at *5-7. In U.S. Bank, the Supreme Court
considered the level of review to be applied to a Bank-
ruptcy Court’s determination of whether a creditor in a
bankruptcy action qualified as a “non-statutory insider”
for purposes of 11 U.S.C. § 1129(a). Id. at *3-4. The
Court found that there were three components to that
inquiry: (1) determining the legal standard governing the
question posed and what types of historical facts are
relevant to that standard; (2) finding what the historical
facts in the case at hand are; and (3) assessing whether
the historical facts found satisfy the legal test governing
the question to be answered. Id. at *4-5. As the Court
explained, the first of these three is a purely legal ques-
tion to be reviewed de novo on appeal and the second
involves factual questions which “are reviewable only for
clear error.” Id. at *4 (citing Fed. R. Civ. P. 52(a)(6) (clear
error standard)). The third is what the Court character-
ized as the “mixed question.” Id. at *5.
    Importantly, the Court noted that “[m]ixed questions
are not all alike.” Id. The Court then held that “the
standard of review for a mixed question all depends—on
whether answering it entails primarily legal or factual
work.” Id. Where applying the law to the historical facts
“involves developing auxiliary legal principles of use in
other cases—appellate courts should typically review a
decision de novo.” Id. (citing Salve Regina College v.
Russell, 499 U.S. 225, 231-33 (1991)). But where the
mixed question requires immersion in case-specific factual
issues that are so narrow as to “utterly resist generaliza-
tion,” the mixed question review is to be deferential. Id.
(quoting Pierce v. Underwood, 487 U.S. 552, 561-62
20                       ORACLE AMERICA, INC.   v. GOOGLE LLC



(1988)). Ultimately, the Court found that review of the
mixed question at issue in that bankruptcy context should
be deferential because de novo review of the question
would do little to “clarify legal principles or provide guid-
ance to other courts resolving other disputes.” Id. at *7.
    While this may be the first time the Supreme Court
has so clearly explained how appellate courts are to
analyze mixed questions of law and fact, it is not the first
time the Supreme Court has told us how to analyze the
particular mixed question of law and fact at issue here.
In other words, while the Supreme Court has not previ-
ously broken the fair use inquiry into its three analytical
components as expressly as it did the question in U.S.
Bank, it has made clear that both the first and third of
those components are subject to de novo review.
     In Harper & Row, the Court explained that, “[w]here
the district court has found facts sufficient to evaluate
each of the statutory factors, an appellate court ‘need not
remand for further factfinding but may conclude as a
matter of law that the challenged use does not qualify as
a fair use of the copyrighted work.’” 471 U.S. at 560
(quoting Pac. & S. Co., 744 F.2d at 1495) (internal altera-
tions omitted)). The Ninth Circuit has resolved the ques-
tion in the same way. Where fair use is resolved on
summary judgment, the Ninth Circuit reviews the district
court’s ultimate determination de novo. SOFA Entm’t,
Inc. v. Dodger Prods., Inc., 709 F.3d 1273, 1277 (9th Cir.
2013) (“Whether Dodger’s use of the clip constitutes fair
use is a mixed question of law and fact that we review de
novo.”). That court has explained that, “as fair use is a
mixed question of fact and law, so long as the record is
‘sufficient to evaluate each of the statutory factors,’ we
may reweigh on appeal the inferences to be drawn from
that record.’” Mattel Inc. v. Walking Mountain Prods.,
353 F.3d 792, 800 (9th Cir. 2003) (quoting L.A. News Serv.
v. CBS Broad., Inc., 305 F.3d 924, 942 (9th Cir. 2002)).
ORACLE AMERICA, INC.   v. GOOGLE LLC                     21



    This treatment of the ultimate question posed when a
fair use defense is raised makes sense. The fair use
question entails, in the words of U.S. Bank, a primarily
legal exercise. It requires a court to assess the inferences
to be drawn from the historical facts found in light of the
legal standards outlined in the statute and relevant case
law and to determine what conclusion those inferences
dictate. Because, as noted below, the historical facts in a
fair use inquiry are generally few, generally similar from
case to case, and rarely debated, resolution of what any
set of facts means to the fair use determination definitely
does not “resist generalization.” See U.S. Bank, 2018 WL
1143822, at *5. Instead, the exercise of assessing whether
a use is fair in one case will help guide resolution of that
question in all future cases.
    For these reasons, we conclude that whether the court
applied the correct legal standard to the fair use inquiry
is a question we review de novo, whether the findings
relating to any relevant historical facts were correct are
questions which we review with deference, and whether
the use at issue is ultimately a fair one is something we
also review de novo.
    We have outlined the legal standard governing fair
use above. We consider below whether the court properly
applied those standards in the course of its fair use analy-
sis and whether it reached the correct legal conclusion
with respect to fair use. Before doing so, we briefly dis-
cuss the historical facts relevant to the fair use inquiry
and consider the jury’s role in determining those facts.
    The Supreme Court has described “historical facts” as
“a recital of external events.” Thompson v. Keohane, 516
U.S. 99, 110 (1995); see also U.S. Bank, 2018 WL
1143822, at *4 (describing the historical facts at issue
there as facts relating to “the attributes of a particular
relationship or the circumstances and terms of a prior
transaction”). In the fair use context, historical facts
22                       ORACLE AMERICA, INC.   v. GOOGLE LLC



include the “origin, history, content, and defendant’s use”
of the copyrighted work. Fitzgerald v. CBS Broad., Inc.,
491 F. Supp. 2d 177, 184 (D. Mass. 2007); see also Lotus
Dev. Corp. v. Borland Int’l, Inc., 788 F. Supp. 78, 95 (D.
Mass 1992) (defining historical facts to include “who did
what, where, and when”). When asked at oral argument
to identify historical facts relevant to the fair use inquiry,
counsel for Oracle agreed that they are the “who, what,
where, when, how, [and] how much.” Oral Arg. at 3:28-
54,                        available                        at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
17-1118.mp3. Google did not dispute this characteriza-
tion. This is, in part, because, in most fair use cases,
defendants concede that they have used the copyrighted
work, and “there is rarely dispute over the history, con-
tent, or origin of the copyrighted work.” See Ned Snow,
Judges Playing Jury: Constitutional Conflicts in Deciding
Fair Use on Summary Judgment, 44 U.C. Davis L. Rev.
483, 493 (2010).
    While some courts once treated the entire question of
fair use as factual, and, thus, a question to be sent to the
jury, that is not the modern view. 3 Since Harper & Row,
the Ninth Circuit has described fair use as an “equitable
defense.” Fisher v. Dees, 794 F.2d 432, 435 (9th Cir. 1986)
(“The fair-use doctrine was initially developed by courts
as an equitable defense to copyright infringement.”).
Indeed, the Supreme Court referred to fair use as “an



     3  In DC Comics, Inc. v. Reel Fantasy, Inc., 696 F.2d
24, 28 (2d Cir. 1982), the Second Circuit found that “[t]he
four factors listed in Section 107 raise essentially factual
issues and, as the district court correctly noted, are nor-
mally questions for the jury.” So too, Justice Joseph Story
described fair use as a “question of fact to come to a jury”
in 1845. Emerson v. Davies, 8 F. Cas. 615, 623-24 (C.C.D.
Mass. 1845).
ORACLE AMERICA, INC.   v. GOOGLE LLC                     23



equitable rule of reason” in Harper & Row. 471 U.S. at
560. Congress did the same when it codified the doctrine
of fair use in 1976. See H.R. Rep. No. 94-1476, 94th
Cong., 2d Sess. 65-66 (1976), U.S. Code Cong. & Admin.
News 1976, 5659, 5679-80 (“[S]ince the doctrine [of fair
use] is an equitable rule of reason, no generally applicable
definition is possible, and each case raising the question
must be decided on its own facts . . . .”). If fair use is
equitable in nature, it would seem to be a question for the
judge, not the jury, to decide, even when there are factual
disputes regarding its application. See Granite State Ins.
Co. v. Smart Modular Techs., Inc., 76 F.3d 1023, 1027
(9th Cir. 1996) (“A litigant is not entitled to have a jury
resolve a disputed affirmative defense if the defense is
equitable in nature.”). In that instance, it would be the
judge’s factual determinations that would receive a defer-
ential review—being assessed for clear error on the record
before the court.
    That said, the Supreme Court has never clarified
whether and to what extent the jury is to play a role in
the fair use analysis. Harper & Row involved an appeal
from a bench trial where the district court concluded that
the use of the copyrighted material was not a fair use.
Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d
195, 199 (2d Cir. 1983). The Court, thus, had no reason
to discuss a jury determination of fair use and has not
since taken an opportunity to do so.
    Perhaps because of this silence, even after Harper &
Row, several courts—including the Ninth Circuit—have
continued to accept the fact that the question of fair use
may go to a jury, albeit without analysis of why it may.
Compaq Comput. Corp. v. Ergonome Inc., 387 F.3d 403,
411 (5th Cir. 2004) (“The evidence presented at trial and
the reasonable inferences therefrom, when viewed
through the lens of the statutory fair use factors, support
the jury’s fair use finding.”); Jartech, Inc. v. Clancy, 666
F.2d 403, 407-08 (9th Cir. 1982) (concluding that substan-
24                        ORACLE AMERICA, INC.   v. GOOGLE LLC



tial evidence supported the jury’s verdict on fair use);
Fiset v. Sayles, No. 90-16548, 1992 WL 110263, at *4 (9th
Cir. May 22, 1992) (finding that a reasonable jury could
have concluded that “the evidence supporting fair use was
not substantial”); see also BUC Int’l Corp. v. Int’l Yacht
Council, 489 F.3d 1129, 1137 (11th Cir. 2007) (noting that
the fair use defense went to the jury); N.Y. Univ. v. Planet
Earth Found., 163 F. App’x 13, 14 (2d Cir. 2005) (“As to
the copyright infringement claim, the evidence also sup-
ports the jury’s finding of fair use, under the four-factored
analysis prescribed by statute.”).
    The Ninth Circuit has clarified, however, that the jury
role in this context is limited to determining disputed
“historical facts,” not the inferences or conclusions to be
drawn from those facts. See Fisher, 794 F.2d at 436. In
Fisher, for example, the court explained that “[n]o materi-
al historical facts are at issue in this case. The parties
dispute only the ultimate conclusions to be drawn from
the admitted facts. Because, under Harper & Row, these
judgments are legal in nature, we can make them without
usurping the function of the jury.” Id.; see also Seltzer v.
Green Day, Inc., 725 F.3d 1170, 1175 (9th Cir. 2013) (“As
in Fisher, ‘[n]o material historical facts are at issue in this
case. The parties dispute only the ultimate conclusion to
be drawn from the admitted facts.’” (citing Fisher, 794
F.2d at 436)); Hustler Magazine, Inc. v. Moral Majority,
Inc., 606 F. Supp. 1526, 1532 (C.D. Cal. 1985) (noting that
“fair use normally is a question of fact for the jury,” but
concluding that “the issue of fair use, at least in the
context of this case, presents primarily a question of
law”). Accordingly, while inferences from the four-factor
analysis and the ultimate question of fair use are “legal in
nature,” in the Ninth Circuit, disputed historical facts
represent questions for the jury. Fisher, 794 F.2d at 436.
Where there are no disputed material historical facts, fair
use can be decided by the court alone. Id.
ORACLE AMERICA, INC.   v. GOOGLE LLC                      25



     Despite this case law, all aspects of Google’s fair use
defense went to the jury with neither party arguing that
it should not. Thus, the jury was asked not just what the
historical facts were, but what the implications of those
facts were for the fair use defense. During the first ap-
peal, Google argued to this court that there were disputed
issues of material historical fact relevant to its fair use
defense. As discussed below, the parties stipulated—or at
least ceased to dispute—some of those facts, and present-
ed the remaining disputed historical facts to the jury on
remand. The jury returned a verdict in favor of Google on
its fair use defense. Because the verdict form—though
captioned as a “special verdict”—did not ask the jury to
articulate its fact findings in any detail, we must assume
that the jury resolved all factual issues relating to the
historical facts in favor of the verdict. 4 Despite the pos-
ture of the fair use finding, we must break that finding
into its constituent parts. We must then review the
subsidiary and controverted findings of historical fact for


    4   As counsel for Oracle noted at oral argument, this
is similar to the standard we apply in obviousness cases.
Oral Argument at 9:34-10:24. Because obviousness is a
mixed question of law and fact, we “first presume that the
jury resolved the underlying factual disputes in favor of
the verdict [ ] and leave those presumed findings undis-
turbed if they are supported by substantial evidence.
Then we examine the [ultimate] legal conclusion [of
obviousness] de novo to see whether it is correct in light of
the presumed jury fact findings.” Kinetic Concepts, Inc. v.
Smith & Nephew, Inc., 688 F.3d 1342, 1356-57 (Fed. Cir.
2012) (quoting Jurgens v. McKasy, 927 F.2d 1552, 1557
(Fed. Cir. 1991)). Likewise, Google cited our decision in
Kinetic Concepts for the proposition that we must “pre-
sume that the jury made all findings in support of the
verdict that are supported by substantial evidence.”
Cross-Appellant Br. 35.
26                       ORACLE AMERICA, INC.   v. GOOGLE LLC



substantial evidence. See Seltzer, 725 F.3d at 1175; see
also Brewer v. Hustler Magazine, Inc., 749 F.2d 527, 528
(9th Cir. 1984) (“We may disturb a jury verdict only if the
evidence was insufficient as a matter of law.”).
    All jury findings relating to fair use other than its im-
plied findings of historical fact must, under governing
Supreme Court and Ninth Circuit case law, be viewed as
advisory only. Accordingly, while we might assess the
jury’s role in the assessment of fair use differently if not
bound by Ninth Circuit law, we proceed on the assump-
tion both that: (1) it was not error to send the question to
the jury, because the Ninth Circuit has at least implicitly
endorsed doing so; and (2) we must assess all inferences
to be drawn from the historical facts found by the jury
and the ultimate question of fair use de novo, because the
Ninth Circuit has explicitly said we must do so.
    The parties have identified the following historical
facts relating to Google’s use of the copyrighted work:
     •   the history and origin of the copyrighted work,
         including what declaring code is;

     •   how much of the copyrighted work was copied;

     •   whether there were other ways to write the API
         packages;

     •   whether the copied material was used for the
         same purpose as in the original work;

     •   whether the use was commercial in nature;

     •   whether Google acted in bad faith in copying the
         work;
ORACLE AMERICA, INC.   v. GOOGLE LLC                     27



    •    whether there are functional aspects to the cop-
         yrighted work that make it less deserving of
         protection; and

    •    whether there was harm to the actual or poten-
         tial markets for the copyrighted work.
    The parties now agree on the resolution of the first
four factual questions: (1) what the declaring code is and
what it does in Java SE and Android, and that the code at
issue was a work created by Oracle; (2) how many lines of
code were copied; (3) that there were other ways for
Google to write API packages; and (4) that Google used
the API packages in Android for the same purpose they
were created for in Java. The parties dispute, however,
the remaining historical facts they identified. We address
those disputes in the context of our assessment of the
statutory factors to which the respective historical fact is
relevant.
              C. Applying the Fair Use Factors
        Factor 1: The Purpose and Character of the Use
    The first factor in the fair use inquiry involves “the
purpose and character of the use, including whether such
use is of a commercial nature or is for nonprofit educa-
tional purposes.” 17 U.S.C. § 107(1). This factor has two
primary components: (1) whether the use is commercial in
nature, rather than for educational or public interest
purposes; and (2) “whether the new work is transforma-
tive or simply supplants the original.” Wall Data, 447
F.3d at 778 (citing Campbell, 510 U.S. at 579). As ex-
plained below, the first is a question of fact and the sec-
ond is a question of law. As Oracle points out, moreover,
courts sometimes also consider whether the historical
facts support the conclusion that the infringer acted in
bad faith. See Harper & Row, 471 U.S. at 562. We ad-
dress each component in turn.
28                       ORACLE AMERICA, INC.   v. GOOGLE LLC



                   a. Commercial Use
     Analysis of the first factor requires inquiry into the
commercial nature of the use. Use of the copyrighted
work that is commercial “tends to weigh against a finding
of fair use.” Harper & Row, 471 U.S. at 562. Courts have
recognized, however, that, “[s]ince many, if not most,
secondary users seek at least some measure of commercial
gain from their use, unduly emphasizing the commercial
motivation of a copier will lead to an overly restrictive
view of fair use.” Am. Geophysical Union v. Texaco, Inc.,
60 F.3d 913, 921 (2d Cir. 1994); see also Infinity Broad.
Corp. v. Kirkwood, 150 F.3d 104, 109 (2d Cir. 1998)
(“[N]otwithstanding its mention in the text of the statute,
commerciality has only limited usefulness to a fair use
inquiry; most secondary uses of copyrighted material,
including nearly all of the uses listed in the statutory
preamble, are commercial.”). Accordingly, although the
statute requires us to consider the “commercial nature” of
the work, “the degree to which the new user exploits the
copyright for commercial gain—as opposed to incidental
use as part of a commercial enterprise—affects the weight
we afford commercial nature as a factor.” Elvis Presley
Enters., Inc. v. Passport Video, 349 F.3d 622, 627 (9th Cir.
2003).
    “[I]t is undisputed that Google’s use of the declaring
code and SSO from 37 Java API packages served commer-
cial purposes.” Order Denying JMOL, 2016 WL 3181206,
at *7. Although the jury was instructed that commercial
use weighed against fair use, the district court explained
that the jury “could reasonably have found that Google’s
decision to make Android available open source and free
for all to use had non-commercial purposes as well (such
as the general interest in sharing software innovation).”
Id.
    On appeal, Oracle argues that Android is “hugely
profitable” and that “Google reaps billions from exploiting
ORACLE AMERICA, INC.   v. GOOGLE LLC                    29



Java in Android.” Appellant Br. 29. As such, Oracle
maintains that no reasonable jury could have found
Android anything but “overwhelmingly commercial.” Id. 5
    Google responds that: (1) because it gives Android
away for free under an open source license the jury could
have concluded that Android has non-commercial purpos-
es; and (2) the jury could have reasonably found that
Google’s revenue flows from the advertisements on its
search engine which preexisted Android. Neither argu-
ment has merit.
    First, the fact that Android is free of charge does not
make Google’s use of the Java API packages non-
commercial. Giving customers “for free something they
would ordinarily have to buy” can constitute commercial
use. A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004,
1015 (9th Cir. 2001) (finding that “repeated and exploita-
tive copying of copyrighted works, even if the copies are
not offered for sale, may constitute a commercial use”).
That Google might also have non-commercial motives is


   5     Oracle also argues that Google conceded that its
use was “entirely commercial” during oral argument to
this court in the first appeal. Order Denying JMOL, 2016
WL 3181206, at *7 (“Q: But for purpose and character,
though, you don’t dispute that it was entirely a commer-
cial purpose. A: No.”). The district court treated this
colloquy as a judicial admission that Google’s use was
“commercial.” Id. (noting that the word “entirely” was
“part of the give and take” of oral argument). The court
therefore instructed the jury that Google’s use was com-
mercial, but that it was up to the jury to determine the
extent of the commerciality. Id. at *8. Oracle does not
challenge the district court’s jury instructions on appeal.
In any event, as the district court noted, “even a wholly
commercial use may still constitute fair use.” Id. at *7
(citing Campbell, 510 U.S. at 585).
30                       ORACLE AMERICA, INC.   v. GOOGLE LLC



irrelevant as a matter of law. As the Supreme Court
made clear when The Nation magazine published excerpts
from Harper & Row’s book, partly for the purpose of
providing the public newsworthy information, the ques-
tion “is not whether the sole motive of the use is monetary
gain but whether the user stands to profit from exploita-
tion of the copyrighted material without paying the cus-
tomary price.” Harper & Row, 471 U.S. at 562. Second,
although Google maintains that its revenue flows from
advertisements, not from Android, commerciality does not
depend on how Google earns its money. Indeed, “[d]irect
economic benefit is not required to demonstrate a com-
mercial use.” A&M Records, 239 F.3d at 1015. We find,
therefore, that, to the extent we must assume the jury
found Google’s use of the API packages to be anything
other than overwhelmingly commercial, that conclusion
finds no substantial evidentiary support in the record.
Accordingly, Google’s commercial use of the API packages
weighs against a finding of fair use.
                  b. Transformative Use
    Although the Copyright Act does not use the word
“transformative,” the Supreme Court has stated that the
“central purpose” of the first fair use factor is to deter-
mine “whether and to what extent the new work is trans-
formative.” Campbell, 510 U.S. at 579. Transformative
works “lie at the heart of the fair use doctrine’s guarantee
of breathing space within the confines of copyright, and
the more transformative the new work, the less will be
the significance of other factors, like commercialism, that
may weigh against a finding of fair use.” Id. (internal
citation omitted).
     A use is “transformative” if it “adds something new,
with a further purpose or different character, altering the
first with new expression, meaning or message.” Id. The
critical question is “whether the new work merely super-
sede[s] the objects of the original creation . . . or instead
ORACLE AMERICA, INC.   v. GOOGLE LLC                      31



adds something new.” Id. (citations and internal quota-
tion marks omitted). This inquiry “may be guided by the
examples given in the preamble to § 107, looking to
whether the use is for criticism, or comment, or news
reporting, and the like.” Id. at 578-79. “The Supreme
Court has recognized that parodic works, like other works
that comment and criticize, are by their nature often
sufficiently transformative to fit clearly under the fair use
exception.” Mattel Inc. v. Walking Mountain Prods., 353
F.3d 792, 800 (9th Cir. 2003) (citing Campbell, 510 U.S. at
579).
    “Although transformation is a key factor in fair use,
whether a work is transformative is a often highly conten-
tious topic.” Seltzer, 725 F.3d at 1176. Indeed, a “leading
treatise on this topic has lamented the frequent misuse of
the transformation test, complaining that it has become a
conclusory label which is ‘all things to all people.’” Id.
(quoting Melville B. Nimmer & David Nimmer, 4 Nimmer
on Copyright § 13.05[A][1][b], 13168-70 (2011)).
    To be transformative, a secondary work must either
alter the original with new expression, meaning, or mes-
sage or serve a new purpose distinct from that of the
original work. Campbell, 510 U.S. at 579; Elvis Presley
Enters., 349 F.3d at 629. Where the use “is for the same
intrinsic purpose as [the copyright holder’s] . . . such use
seriously weakens a claimed fair use.” Worldwide Church
of God v. Phila. Church of God, Inc., 227 F.3d 1110, 1117
(9th Cir. 2000) (quoting Weissmann v. Freeman, 868 F.2d
1313, 1324 (2d Cir. 1989)).
    Although “transformative use is not absolutely neces-
sary for a finding of fair use, the goal of copyright, to
promote science and the arts, is generally furthered by
the creation of transformative works.” Campbell, 510
U.S. at 579 (citation and footnote omitted). As such, “the
more transformative the new work, the less will be the
significance of other factors, like commercialism, that may
32                       ORACLE AMERICA, INC.   v. GOOGLE LLC



weigh against a finding of fair use.” Id. Importantly, in
the Ninth Circuit, whether a work is transformative is a
question of law. See Mattel, 353 F.3d at 801 (explaining
that parody—a well-established species of transformative
use—“is a question of law, not a matter of public majority
opinion”); see also Fox News Network, LLC v. TVEyes,
Inc., No. 15-3885, 2018 WL 1057178, at *3-4 (2d Cir. Feb.
27, 2018) (reassessing whether the use in question was
transformative and deciding it was as a matter of law).
    In denying JMOL, the district court explained that “of
course, the copied declarations serve the same function in
both works, for by definition, declaring code in the Java
programming language serves the [same] specific defini-
tional purposes.”      Order Denying JMOL, 2016 WL
3181206, at *8. The court concluded, however, that the
                6

jury could reasonably have found that Google’s selection
of some, but not all, of the Java API packages—“with new



     6   According to the district court, if this fact were
sufficient to defeat fair use, “it would be impossible ever
to duplicate declaring code as fair use and presumably the
Federal Circuit would have disallowed this factor on the
first appeal rather than remanding for a jury trial.” Id.
But in our prior decision, we remanded in part because
Google represented to this court that there were disputes
of fact regarding how Android was used and whether the
APIs Google copied served the same function in Android
and Java. Oracle, 750 F.3d at 1376. Without the benefit
of briefs exploring the record on these issues, and Google’s
later agreement with respect to these facts, we concluded
that we could not say that there were no material facts in
dispute. Id. As explained previously, however, those
facts are no longer in dispute. The only question that
remains regarding transformative use is whether, on the
now undisputed facts, Google’s use of the APIs was, in
fact, transformative.
ORACLE AMERICA, INC.   v. GOOGLE LLC                      33



implementing code adapted to the constrained operating
environment of mobile smartphone devices,” together with
new “methods, classes, and packages written by Google
for the mobile smartphone platform”—constituted “a fresh
context giving new expression, meaning, or message to
the duplicated code.” Id. at *9.
    On appeal, Oracle argues that Google’s use was not
transformative because it did not alter the APIs with
“new expression, meaning, or message.” Appellant Br. 29
(quoting Campbell, 510 U.S. at 579). Because Google
concedes that it uses the API packages for the same
purpose, Oracle maintains that it was unreasonable for
either the jury or the court to find that Google sufficiently
transformed the APIs to overcome its highly commercial
use.
    Google responds that a reasonable jury could have
concluded that Google used a small portion of the Java
API packages to create a new work in a new context—
“Android, a platform for smartphones, not desktops and
servers.” Cross-Appellant Br. 37. Google argues that,
although the declarations and SSO may perform the same
functions in Android and Java, the jury could reasonably
find that they have different purposes because the “point
of Android was to create a groundbreaking platform for
smartphones.” Id. at 39.
    Google’s arguments are without merit. As explained
below, Google’s use of the API packages is not transform-
ative as a matter of law because: (1) it does not fit within
the uses listed in the preamble to § 107; (2) the purpose of
the API packages in Android is the same as the purpose of
the packages in the Java platform; (3) Google made no
alteration to the expressive content or message of the
copyrighted material; and (4) smartphones were not a
new context.
    First, though not dispositive, we turn to the examples
given in the preamble to § 107, “looking to whether the
34                       ORACLE AMERICA, INC.   v. GOOGLE LLC



use is for criticism, or comment, or news reporting, and
the like.” Campbell, 510 U.S. at 578-79. Google’s use of
the Java API packages does not fit within the statutory
categories, and Google does not suggest otherwise. In-
stead, Google cites Sony Computer Entertainment, Inc. v.
Connectix Corp., 203 F.3d 596 (9th Cir. 2000), for the
proposition that the “Ninth Circuit has held other types of
uses—specifically including uses of computer code—to be
fair.” Cross-Appellant Br. 41. In Sony, the court found
that the defendant’s reverse engineering and intermedi-
ate copying of Sony’s copyrighted software system “was a
fair use for the purpose of gaining access to the unprotect-
ed elements of Sony’s software.” 203 F.3d at 602. The
court explained that Sony’s software program contained
unprotected functional elements and that the defendant
could only access those elements through reverse engi-
neering. Id. at 603. The defendant used that information
to create a software program that let consumers play
games designed for Sony’s PlayStation console on their
computers. The court found that the defendant’s use was
only “modestly transformative” where: (1) the defendant
created “a wholly new product” with “entirely new . . .
code,” and (2) the intermediate copying was performed to
“produce a product that would be compatible.” Id. at 606-
07. As Oracle points out, even the “modest” level of
transformation at issue in Sony is more transformative
than what Google did here: copy code verbatim to attract
programmers to Google’s “new and incompatible plat-
form.” Appellant Response Br. 21.
    It is undisputed that the API packages “serve the
same function in both works.” Order Denying JMOL,
2016 WL 3181206, at *8. And, as Oracle explains, the
historical facts relevant to transformative use are also
undisputed: what declaring code is, what it does in Java
and in Android, how the audience of computer developers
perceives it, how much Google took and added, what the
added code does, and why Google used the declaring code
ORACLE AMERICA, INC.   v. GOOGLE LLC                     35



and SSO. Indeed, Google conceded that “including the
declarations (and their associated SSO) was for the bene-
fit of developers, who—familiar with the Java program-
ming language—had certain expectations regarding the
language’s APIs.” Google’s Opp. to Oracle’s Rule 50(a)
Motion for JMOL at 20, Oracle Am., Inc. v. Google Inc.,
No. 3:10-cv-3561 (N.D. Cal. May 21, 2016), ECF No. 1935.
The fact that Google created exact copies of the declaring
code and SSO and used those copies for the same purpose
as the original material “seriously weakens [the] claimed
fair use.” See Wall Data, 447 F.3d at 778 (finding that,
where the “Sheriff’s Department created exact copies of
RUMBA’s software . . . [and] put those copies to the
identical purpose as the original software,” the use was
not transformative); see also Campbell, 510 U.S. at 580
(noting that where the alleged infringer merely seeks “to
avoid the drudgery in working up something fresh,” any
“claim to fairness . . . diminishes accordingly”).
    Google argues that Android is transformative because
Google selectively used the declarations and SSO of only
37 of the 166 Java SE API packages and wrote its own
implementing code. But taking only select passages of a
copyrighted work is, by itself, not transformative. See
L.A. News Serv. v. CBS Broad., Inc., 305 F.3d 924, 938-39
(9th Cir. 2002) (“Merely plucking the most visually arrest-
ing excerpt from LANS’s nine minutes of footage cannot
be said to have added anything new.”). While, as dis-
cussed below, the volume of work copied is relevant to the
fair use inquiry generally, thought must be given to the
quality and importance of the copied material, not just to
its relative quantity vis-à-vis the overall work. See
Campbell, 510 U.S. at 586-87. To hold otherwise would
mean that verbatim copying could qualify as fair use as
long as the plagiarist stops short of taking the entire
work. That approach is inconsistent with settled law and
is particularly troubling where, as here, the portion copied
is qualitatively significant. See Harper & Row, 471 U.S.
36                        ORACLE AMERICA, INC.   v. GOOGLE LLC



at 569 (finding that verbatim copying of 300 words from a
manuscript of more than 200,000 words was not a fair
use); see also Folsom v. Marsh, 9 F. Cas. 342, 345 (C.C.D.
Mass 1841) (Story, J.) (“There must be real, substantial
condensation of the materials, and intellectual labor and
judgment bestowed thereon; and not merely the facile use
of the scissors; or extracts of the essential parts, constitut-
ing the chief value of the original work.”).
     That Google wrote its own implementing code is irrel-
evant to the question of whether use of the APIs was
transformative. As we noted in the prior appeal, “no
plagiarist can excuse the wrong by showing how much of
his work he did not pirate.” Oracle, 750 F.3d at 1375
(quoting Harper & Row, 471 U.S. at 565). The relevant
question is whether Google altered “the expressive content
or message of the original work” that it copied—not
whether it rewrote the portions it did not copy. See Selt-
zer, 725 F.3d at 1177 (explaining that a work is not trans-
formative where the user “makes no alteration to the
expressive content or message of the original work”). That
said, even where the allegedly infringing work “makes few
physical changes to the original or fails to comment on the
original,” it will “typically [be] viewed as transformative
as long as new expressive content or message is appar-
ent.” Id. Here, however, there is no suggestion that the
new implementing code somehow changed the expression
or message of the declaring code. While Google’s use
could have been transformative if it had copied the APIs
for some other purpose—such as teaching how to design
an API—merely copying the material and moving it from
one platform to another without alteration is not trans-
formative.
    Google’s primary argument on appeal is that Android
is transformative because Google incorporated the decla-
rations and SSO of the 37 API packages into a new con-
text—smartphones. But the record showed that Java SE
APIs were in smartphones before Android entered the
ORACLE AMERICA, INC.   v. GOOGLE LLC                      37



market. Specifically, Oracle presented evidence that Java
SE was in SavaJe mobile phones and that Oracle licensed
Java SE to other smartphone manufacturers, including
Danger and Nokia. Because the Java SE was already
being used in smartphones, Google did not “transform”
the copyrighted material into a new context and no rea-
sonable jury could conclude otherwise. 7
    In any event, moving material to a new context is not
transformative in and of itself—even if it is a “sharply
different context.” TCA Television Corp. v. McCollum,
839 F.3d 168, 181-83 (2d Cir. 2016) (finding that use “at
some length, almost verbatim,” of the copyrighted comedy
routine “Who’s on First?” in a dramatic play was not
transformative where the play neither “imbued the Rou-
tine with any new expression, meaning, or message,” nor
added “any new dramatic purpose”). As previously ex-
plained, a use becomes transformative only if it serves a
different purpose or alters the “expression, meaning, or
message” of the original work. Kelly, 336 F.3d at 818. As
such, “[c]ourts have been reluctant to find fair use when
an original work is merely retransmitted in a different
medium.” A&M Records, 239 F.3d at 1015. Accordingly,
although a change of format may be “useful,” it “is not
technically a transformation.” Infinity Broad., 150 F.3d
at 108 n.2 (finding that retransmitting copyrighted radio
transmissions over telephone lines was not transforma-
tive because there was no new expression, meaning, or
message).



    7   Because we conclude that smartphones were not a
new context, we need not address the argument, made by
Oracle and certain amici, that the district court’s order
excluding evidence of Google’s use of Android in multiple
other circumstances—including laptops—tainted the
jury’s and the court’s ability to fairly assess the character
of the use.
38                       ORACLE AMERICA, INC.   v. GOOGLE LLC



     The Ninth Circuit has stated that “[a] use is consid-
ered transformative only where a defendant changes a
plaintiff’s copyrighted work or uses the plaintiff’s copy-
righted work in a different context such that the plain-
tiff’s work is transformed into a new creation.” Perfect 10,
Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir.
2007) (quoting Wall Data, 447 F.3d at 778). In Perfect 10,
for example, the court found Google’s use of thumbnail
versions of copyrighted images “highly transformative”
because, “[a]lthough an image may have been created
originally to serve an entertainment, aesthetic, or in-
formative function, a search engine transforms the image
into a pointer directing a user to a source of information.”
Id. Although the court discussed the change in context
(moving the copyrighted images into the electronic refer-
ence tool), it emphasized that Google used the images “in
a new context to serve a different purpose.” Id. In reach-
ing this conclusion, the court reiterated that “even mak-
ing an exact copy of a work may be transformative so long
as the copy serves a different function than the original
work.” Id. (citing Kelly, 336 F.3d at 818-19). It is clear,
therefore, that the change in context alone was not dispos-
itive in Perfect 10; rather, the change in context facilitated
the change in purpose, which made the use transforma-
tive.
    To some extent, any use of copyrighted work takes
place in a slightly different context than the original. And
of course, there is no bright line identifying when a use
becomes transformative. But where, as here, the copying
is verbatim, for an identical function and purpose, and
there are no changes to the expressive content or mes-
sage, a mere change in format (e.g., from desktop and
laptop computers to smartphones and tablets) is insuffi-
ORACLE AMERICA, INC.   v. GOOGLE LLC                      39



cient as a matter of law to qualify as a transformative
use. 8
                         c. Bad faith
     In evaluating the “purpose and character” factor, the
Ninth Circuit applies “the general rule that a party
claiming fair use must act in a manner generally compat-
ible with principles of good faith and fair dealing.” Perfect
10, 508 F.3d at 1164 n.8 (citing Harper & Row, 471 U.S.
at 562-63). In part, this is based on the fact that, in
Harper & Row, the Supreme Court expressly stated that
“[f]air use presupposes ‘good faith’ and ‘fair dealing.’” 471
U.S. at 562 (citation omitted). It is also in part true
because, as the Ninth Circuit has said, one who acts in
bad faith should be barred from invoking the equitable
defense of fair use. Fisher, 794 F.2d at 436 (calling the
principle of considering the alleged infringer’s “bad con-
duct” as a “bar [to] his use of the equitable defense of fair
use” a sound one). 9




    8   As some amici note, to hold otherwise could en-
croach upon the copyright holder’s right to “prepare
derivative works based upon the copyrighted work.” 17
U.S.C. § 106(2); see Br. of Amicus Curiae N.Y. Intell. Prop.
L. Ass’n at 17-20.
    9   As the district court recognized, there is some de-
bate about whether good or bad faith should remain
relevant to the factor one inquiry. Order Denying JMOL,
2016 WL 3181206, at *2 (“[T]here is a respectable view
that good or bad faith should no longer be a consideration
after the Supreme Court’s decision in Campbell.”); see also
Hon. Pierre N. Leval, Toward a Fair Use Standard, 103
Harv. L. Rev. 1105, 1128 (1990) (“Whether the secondary
use is within the protection of the [fair use] doctrine
depends on factors pertinent to the objectives of the
40                      ORACLE AMERICA, INC.   v. GOOGLE LLC



     Consistent with this authority, and at Oracle’s re-
quest, the district court instructed the jury that it could
consider whether Google acted in bad faith (or not) as part
of its assessment of the first fair use factor. Order Deny-
ing JMOL, 2016 WL 3181206, at *6. And, because Oracle
was permitted to introduce evidence that Google acted in
bad faith, the court permitted Google to try to prove its
good faith. Id.
    At trial, Oracle introduced evidence suggesting that
“Google felt it needed to copy the Java API as an acceler-
ant to bring Android to the market quicker” and knew
that it needed a license to use Java. Id. For its part,
Google presented evidence that it believed that the declar-
ing code and SSO were “free to use and re-implement,
both as a matter of developer practice and because the
availability of independent implementations of the Java
API enhanced the popularity of the Java programming
language, which Sun promoted as free for all to use.” Id.
at *7. Given this conflicting evidence, the district court


copyright law and not on the morality or motives of either
the secondary user or the copyright-owning plaintiff.”). In
Campbell, the Supreme Court expressed skepticism about
“the weight one might place on the alleged infringer’s
state of mind.” Campbell, 510 U.S. at 585 n.18. But the
Ninth Circuit has not repudiated its view that “‘the pro-
priety of the defendant’s conduct’ is relevant to the char-
acter of the use at least to the extent that it may
knowingly have exploited a purloined work for free that
could have been obtained for a fee.” L.A. News Serv. v.
KCAL-TV Channel 9, 108 F.3d 1119, 1122 (9th Cir. 1997)
(quoting Harper & Row, 471 U.S. at 562). For that rea-
son, and because we conclude in any event that the jury
must have found that Google did not act in bad faith, we
address that question and the parties’ arguments relating
thereto.
ORACLE AMERICA, INC.   v. GOOGLE LLC                     41



found that the jury could reasonably have concluded that
“Google’s use of parts of the Java API as an accelerant
was undertaken based on a good faith belief that at least
the declaring code and SSO were free to use (which it did
use), while a license was necessary for the implementing
code (which it did not use).” Id.
    On appeal, Oracle argues that there was ample evi-
dence that Google intentionally copied Oracle’s copyright-
ed work and knew that it needed a license to use Java.
Google responds that the jury heard sufficient evidence of
Google’s good faith based on industry custom and was
entitled to credit that evidence.
    But, while bad faith may weigh against fair use, a
copyist’s good faith cannot weigh in favor of fair use.
Indeed, the Ninth Circuit has expressly recognized that
“the innocent intent of the defendant constitutes no
defense to liability.” Monge, 688 F.3d at 1170 (quoting 4
Melville B. Nimmer & David Nimmer, Nimmer on Copy-
right § 13.08[B][1] (Matthew Bender rev. ed. 2011)). If it
were clear, accordingly, that the jury found fair use solely
or even largely because it approved of Google’s motives
even if they were in bad faith, we would find such a
conclusion improper. Because evidence of Google’s good
faith was relevant to rebut evidence of its bad faith,
however, and there is no objection to the instructions to
the jury on this or any other point, we must assume that
the jury simply did not find the evidence of Google’s bad
faith persuasive. 10 We note, moreover, that merely “being



   10   The jury was instructed that, “[i]n evaluating the
extent to which Google acted in good faith or not, you may
take into account, together with all other circumstances,
the extent to which Google relied upon or contravened any
recognized practices in the industry concerning re-
implementation of API libraries.” Order Denying JMOL,
42                       ORACLE AMERICA, INC.   v. GOOGLE LLC



denied permission to use a work does not weigh against a
finding of fair use.” Campbell, 510 U.S. at 585 n.18 (“If
the use is otherwise fair, then no permission need be
sought or granted.”).
    Ultimately, we find that, even assuming the jury was
unpersuaded that Google acted in bad faith, the highly
commercial and non-transformative nature of the use
strongly support the conclusion that the first factor
weighs against a finding of fair use.
        Factor 2: Nature of the Copyrighted Work
    The second factor—the nature of the copyrighted
work—“calls for recognition that some works are closer to
the core of intended copyright protection than others, with
the consequence that fair use is more difficult to establish
when the former works are copied.” Campbell, 510 U.S.
at 586. This factor “turns on whether the work is infor-
mational or creative.” Worldwide Church of God, 227
F.3d at 1118; see also Harper & Row, 471 U.S. at 563
(“The law generally recognizes a greater need to dissemi-
nate factual works than works of fiction or fantasy.”).
Creative expression “falls within the core of the copy-
right’s protective purposes.” Campbell, 510 U.S. at 586.
Although “software products are not purely creative
works,” it is well established that copyright law protects
computer software. Wall Data, 447 F.3d at 780 (citing
Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1519
(9th Cir. 1992) (“[T]he 1980 amendments to the Copyright
Act unambiguously extended copyright protection to
computer programs.”)).
    Here, the district court found that the jury could have
concluded that the process of designing APIs was “highly
creative” and “thus at the core of copyright’s protection” or


2016 WL 3181206, at *3 n.2. Oracle has not challenged
this instruction on appeal.
ORACLE AMERICA, INC.   v. GOOGLE LLC                      43



it could “reasonably have gone the other way and conclud-
ed that the declaring code was not highly creative.” Order
Denying JMOL, 2016 WL 3181206, at *10. While the jury
heard testimony from Google’s own expert that API
design is “an art, not a science,” other witnesses empha-
sized the functional role of the declaring code and the SSO
and minimized the creative aspects. Id. Accordingly, the
district court concluded that the “jury could reasonably
have found that, while the declaring code and SSO were
creative enough to qualify for copyright protection, func-
tional considerations predominated in their design.” Id.
     On appeal, Oracle emphasizes that designing the
APIs was a highly creative process and that the organiza-
tion of the packages was not mandated by function.
Indeed, this court has already held that the declaring code
and the SSO of the 37 API packages at issue were suffi-
ciently creative and original to qualify for copyright
protection. Oracle, 750 F.3d at 1356. According to Ora-
cle, the district court erred in assuming that, because the
APIs have a “functional role,” they cannot be creative.
     As Google points out, however, all we found in the
first appeal was that the declarations and SSO were
sufficiently creative to provide the “minimal degree of
creativity,” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499
U.S. 340, 345 (1991), that is required for copyrightability.
We also recognized that a reasonable jury could find that
“the functional aspects of the packages” are “relevant to
Google’s fair use defense.” Oracle, 750 F.3d at 1369, 1376-
77. On remand, Oracle stipulated that some of the decla-
rations were necessary to use the Java language and
presented no evidence explaining how the jury could
distinguish the functionality and creativity of those
declarations from the others. Google maintains that it
presented evidence that the declarations and SSO were
functional and the jury was entitled to credit that evi-
dence.
44                       ORACLE AMERICA, INC.   v. GOOGLE LLC



    Although it is clear that the 37 API packages at issue
involved some level of creativity—and no reasonable juror
could disagree with that conclusion—reasonable jurors
could have concluded that functional considerations were
both substantial and important. Based on that assumed
factual finding, we conclude that factor two favors a
finding of fair use.
    The Ninth Circuit has recognized, however, that this
second factor “typically has not been terribly significant in
the overall fair use balancing.” Dr. Seuss Enters., L.P. v.
Penguin Books USA, Inc., 109 F.3d 1394, 1402 (9th Cir.
1997) (finding that the “creativity, imagination and
originality embodied in The Cat in the Hat and its central
character tilts the scale against fair use”); Mattel, 353
F.3d at 803 (similar). Other circuits agree. Fox News
Network, 2018 WL 1057178, at *5 (“This factor ‘has rarely
played a significant role in the determination of a fair use
dispute,’ and it plays no significant role here.” (quoting
Authors Guild v. Google, Inc., 804 F.3d 202, 220 (2d Cir.
2015))). We note, moreover, that allowing this one factor
to dictate a conclusion of fair use in all cases involving
copying of software could effectively negate Congress’s
express declaration—continuing unchanged for some forty
years—that software is copyrightable.           Accordingly,
though the jury’s assumed view of the nature of the
copyrighted work weighs in favor of finding fair use, it has
less significance to the overall analysis.
Factor 3: Amount and Substantiality of the Portion Used
     The third factor focuses on the “amount and substan-
tiality of the portion used in . . . the context of the copy-
righted work, not the infringing work.” Oracle, 750 F.3d
at 1375. Indeed, the statutory language makes clear that
“a taking may not be excused merely because it is insub-
stantial with respect to the infringing work.” Harper &
Row, 471 U.S. at 565. “[T]he fact that a substantial
portion of the infringing work was copied verbatim [from
ORACLE AMERICA, INC.   v. GOOGLE LLC                     45



the original work] is evidence of the qualitative value of
the copied material, both to the originator and to the
plagiarist who seeks to profit from marketing someone
else’s copyrighted expression.” Id. Thus, while “whole-
sale copying does not preclude fair use per se, copying an
entire work militates against a finding of fair use.”
Worldwide Church of God, 227 F.3d at 1118 (citation and
quotation marks omitted). But, there is no relevance to
the opposite—i.e., adding substantial content to the
copyrighted work is not evidence that what was copied
was insubstantial or unimportant.
     The inquiry under this third factor “is a flexible one,
rather than a simple determination of the percentage of
the copyrighted work used.” Monge, 688 F.3d at 1179.
The Ninth Circuit has explained that this third factor
looks to the quantitative amount and qualitative value of
the original work used in relation to the justification for
its use. Seltzer, 725 F.3d at 1178. The percentage of work
copied is not dispositive where the portion copied was
qualitatively significant. Harper & Row, 471 U.S. at 566
(“In view of the expressive value of the excerpts and their
key role in the infringing work, we cannot agree with the
Second Circuit that the ‘magazine took a meager, indeed
an infinitesimal amount of Ford’s original language.’”
(citation omitted)). Google is correct that the Ninth
Circuit has said that, “this factor will not weigh against
an alleged infringer, even when he copies the whole work,
if he takes no more than is necessary for his intended
use.” Id. (citing Kelly v. Arriba Soft Corp., 336 F.3d 811,
820-21 (9th Cir. 2003)). But the Ninth Circuit has only
said that is true where the intended use was a transform-
ative one, because the “extent of permissible copying
varies with the purpose and character of the use.” Id.
(quoting Campbell, 510 U.S. at 586-87). Here, we have
found that Google’s use was not transformative and
Google has conceded both that it could have written its
own APIs and that the purpose of its copying was to make
46                      ORACLE AMERICA, INC.   v. GOOGLE LLC



Android attractive to programmers. “Necessary” in the
context of the cases upon which Google relies does not
simply mean easier.
    In assessing factor three, the district court explained
that the “jury could reasonably have found that Google
duplicated the bare minimum of the 37 API packages, just
enough to preserve inter-system consistency in usage,
namely the declarations and their SSO only, and did not
copy any of the implementing code,” such that Google
“copied only so much as was reasonably necessary.”
Order Denying JMOL, 2016 WL 3181206, at *10. In
reaching this conclusion, the court noted that the jury
could have found that the number of lines of code Google
duplicated was a “tiny fraction of one percent of the
copyrighted works (and even less of Android, for that
matter).” Id. We disagree that such a conclusion would
have been reasonable or sufficient on this record.
     On remand, the parties stipulated that only 170 lines
of code were necessary to write in the Java language. It is
undisputed, however, that Google copied 11,500 lines of
code—11,330 more lines than necessary to write in Java.
That Google copied more than necessary weighs against
fair use. See Monge, 688 F.3d at 1179 (finding that,
where the copyist “used far more than was necessary” of
the original work, “this factor weighs against fair use”).
And, although Google emphasizes that it used a small
percentage of Java (11,500 lines of declarations out of
roughly 2.86 million lines of code in the Java SE librar-
ies), it copied the SSO for the 37 API packages in its
entirety.
    The district court emphasized Google’s desire to “pre-
serve inter-system consistency” to “avoid confusion among
Java programmers as between the Java system and the
Android system.”      Order Denying JMOL, 2016 WL
3181206, at *10-11. As we noted in the prior appeal,
however, Google did not seek to foster any “inter-system
ORACLE AMERICA, INC.   v. GOOGLE LLC                       47



consistency” between its platform and Oracle’s Java
platform. Oracle, 750 F.3d at 1371. And Google does not
rely on any interoperability arguments in this appeal. 11
Google sought “to capitalize on the fact that software
developers were already trained and experienced in using
the Java API packages at issue.” Id. But there is no
inherent right to copy in order to capitalize on the popu-
larity of the copyrighted work or to meet the expectations
of intended customers. Taking those aspects of the copy-
righted material that were familiar to software developers
to create a similar work designed to be popular with those
same developers is not fair use. See Dr. Seuss Enters.,
109 F.3d at 1401 (copying the most famous and well
recognized aspects of a work “to get attention” or “to avoid
the drudgery in working up something fresh” is not a fair
use (quoting Campbell, 510 U.S. at 580)).
    Even assuming the jury accepted Google’s argument
that it copied only a small portion of Java, no reasonable
jury could conclude that what was copied was qualitative-
ly insignificant, particularly when the material copied
was important to the creation of the Android platform.
Google conceded as much when it explained to the jury
the importance of the APIs to the developers it wished to
attract. See Tr. of Proceedings held on 5/16/16 at 106:8-



    11  In the prior appeal, we noted that “Google’s com-
petitive desire to achieve commercial ‘interoperability’ . . .
may be relevant to a fair use analysis.” Oracle, 750 F.3d
at 1376-77. But, although several amici in this appeal
discuss interoperability concerns, Google has abandoned
the arguments it once made about interoperability. This
change in course is not surprising given the unrebutted
evidence that Google specifically designed Android to be
incompatible with the Java platform and not allow for
interoperability with Java programs. Id. at 1371.
48                       ORACLE AMERICA, INC.   v. GOOGLE LLC



14, Oracle Am., Inc. Google Inc., No. 3:10-cv-3561 (N.D.
Cal. May 20, 2016), ECF No. 1930; Id. at 134:6-11. In-
deed, Google’s own expert conceded that “it was a sound
business practice for Google to leverage the existing
community of developers, minimizing the amount of new
material and maximizing existing knowledge,” even
though Google also conceded that it could have written
the APIs differently to achieve the same functions. Id. at
144:5-10. For these reasons, we find that the third factor
is, at best, neutral in the fair use inquiry, and arguably
weighs against such a finding.
        Factor 4: Effect Upon the Potential Market
    The fourth and final factor focuses on “the effect of the
use upon the potential market for or value of the copy-
righted work.” 17 U.S.C. § 107(4). This factor reflects the
idea that fair use “is limited to copying by others which
does not materially impair the marketability of the work
which is copied.” Harper & Row, 471 U.S. at 566-67. It
requires that courts “consider not only the extent of
market harm caused by the particular actions of the
alleged infringer, but also whether unrestricted and
widespread conduct of the sort engaged in by the defend-
ant . . . would result in a substantially adverse impact on
the potential market for the original.” Campbell, 510 U.S.
at 590 (citation and quotation marks omitted).
    The Supreme Court once said that factor four is “un-
doubtedly the single most important element of fair use.”
Harper & Row, 471 U.S. at 566. In its subsequent opinion
in Campbell, however, the Court emphasized that none of
the four factors can be viewed in isolation and that “[a]ll
are to be explored, and the results weighed together, in
light of the purposes of copyright.” 510 U.S. at 578; see
also Infinity Broad., 150 F.3d at 110 (“Historically, the
fourth factor has been seen as central to fair use analysis,
although the Supreme Court appears to have backed
away from this position.” (internal citation omitted)). The
ORACLE AMERICA, INC.   v. GOOGLE LLC                     49



Court has also explained that “[m]arket harm is a matter
of degree, and the importance of this factor will vary, not
only with the amount of harm, but also with the relative
strength of the showing on the other factors.” Campbell,
510 U.S. at 590 n.21.
     The Ninth Circuit recently indicated that likely mar-
ket harm can be presumed where a use is “commercial
and not transformative.” Disney Enters., Inc. v. VidAngel,
Inc., 869 F.3d 848, 861 (9th Cir. 2017) (citing Leadsinger,
512 F.3d at 531, for the proposition that, where a use
“was commercial and not transformative, it was not error
to presume likely market harm”). That presumption
allegedly traces back to Sony Corp. of America v. Univer-
sity City Studios, Inc., 464 U.S. 417, 451 (1984), where the
Supreme Court stated that, “[i]f the intended use is for
commercial gain, that likelihood [of future harm] may be
presumed. But if it is for a noncommercial purpose, the
likelihood must be demonstrated.” The Supreme Court
has since clarified that market impact, “no less than the
other three [factors], may be addressed only through a
‘sensitive balancing of interests’” and that earlier inter-
pretations of Sony to the contrary were incorrect. Camp-
bell, 510 U.S. at 590 n.21 (quoting Sony, 464 U.S. at 455
n.40); 12 see also Monge, 688 F.3d at 1181 (cautioning
against overemphasis on a presumption of market harm
after Campbell). On this point, we must apply clear
Supreme Court precedent rather than the more recent
Ninth Circuit’s statements to the contrary.



   12   The Court noted, however, that “what Sony said
simply makes common sense: when a commercial use
amounts to mere duplication of the entirety of an original,
it clearly ‘supersede[s] the objects,’ of the original and
serves as a market replacement for it, making it likely
that cognizable market harm to the original will occur.”
Id. at 591.
50                       ORACLE AMERICA, INC.   v. GOOGLE LLC



    In evaluating the fourth factor, courts consider not on-
ly harm to the actual or potential market for the copy-
righted work, but also harm to the “market for potential
derivative uses,” including “those that creators of original
works would in general develop or license others to devel-
op.” Campbell, 510 U.S. at 592; see also A&M Records,
239 F.3d at 1017 (“[L]ack of harm to an established mar-
ket cannot deprive the copyright holder of the right to
develop alternative markets for the works.”). A court can
therefore consider the challenged use’s “impact on poten-
tial licensing revenues for traditional, reasonable, or
likely to be developed markets.” Swatch Grp. Mgmt.
Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 91 (2d Cir.
2014) (citation omitted); see also Seltzer, 725 F.3d at 1179
(“This factor also considers any impact on ‘traditional,
reasonable, or likely to be developed markets.’” (citation
omitted)).
     Also relevant to the inquiry is the fact that a copy-
right holder has the exclusive right to determine “when,
‘whether and in what form to release’” the copyrighted
work into new markets, whether on its own or via a
licensing agreement. Monge, 688 F.3d at 1182 (quoting
Harper & Row, 471 U.S. at 553). Indeed, the Ninth
Circuit has recognized that “[e]ven an author who had
disavowed any intention to publish his work during his
lifetime” was entitled to copyright protection because:
(1) “the relevant consideration was the ‘potential market’”
and (2) “he has the right to change his mind.” Worldwide
Church, 227 F.3d at 1119 (citing Salinger v. Random
House, Inc., 811 F.2d 90, 99 (2d Cir. 1987)); see also Micro
Star v. Formgen Inc., 154 F.3d 1107, 1113 (9th Cir. 1998)
(noting that only the copyright holder “has the right to
enter that market; whether it chooses to do so is entirely
its business”).
    Here, the district court concluded that the jury “could
reasonably have found that use of the declaring lines of
code (including their SSO) in Android caused no harm to
ORACLE AMERICA, INC.   v. GOOGLE LLC                    51



the market for the copyrighted works, which were for
desktop and laptop computers.” Order Denying JMOL,
2016 WL 3181206, at *10. In reaching this conclusion,
the district court noted that, before Android was released,
Sun made all of the Java API packages available for free
and open source under the name OpenJDK, subject only
to the terms of a general public license. Id. According to
the district court, the jury could have concluded that
“Android’s impact on the market for the copyrighted
works paralleled what Sun already expected via its Open-
JDK.” Id.
    On appeal, Oracle argues that the evidence of actual
and potential harm stemming from Google’s copying was
“overwhelming,” and that the district court erred as a
matter of law in concluding otherwise. Appellant Br. 52.
We agree.
    First, with respect to actual market harm, the evi-
dence showed that Java SE had been used for years in
mobile devices, including early smartphones, prior to
Android’s release. Specifically, the jury heard testimony
that Java SE was already in smartphones, including
Blackberry, SavaJe, Danger, and Nokia. That Android
competed directly with Java SE in the market for mobile
devices is sufficient to undercut Google’s market harm
arguments. With respect to tablets, the evidence showed
that Oracle licensed Java SE for the Amazon Kindle.
After Android’s release, however, Amazon was faced with
two competing options—Java SE and Android—and
selected Android. 13 The jury also heard evidence that



   13    Google submits that the jury could have discount-
ed this evidence because the Java SE APIs were available
for free through OpenJDK. But Amazon moved from Java
to Android—not to OpenJDK. And the evidence of record
makes clear that device manufacturers did not view
52                       ORACLE AMERICA, INC.   v. GOOGLE LLC



Amazon later used the fact that Android was free to
negotiate a steep discount to use Java SE in its newer e-
reader. In other words, the record contained substantial
evidence that Android was used as a substitute for Java
SE and had a direct market impact. Given this evidence
of actual market harm, no reasonable jury could have
concluded that there was no market harm to Oracle from
Google’s copying.
    Even if there were a dispute about whether Oracle
was licensing Java SE in smartphones at the time An-
droid launched, moreover, “fair use focuses on potential,
not just actual, market harm.” Monge, 688 F.3d at 1181.
Accordingly, although the district court focused exclusive-
ly on the market it found that Oracle had already en-
tered—desktops and laptops—it should have considered
how Google’s copying affected potential markets Oracle
might enter or derivative works it might create or license
others to create. See Campbell, 510 U.S. at 590. Licens-
ing Java SE for smartphones with increased processing
capabilities was one such potential new market. And the
fact that Oracle and Google engaged in lengthy licensing
negotiations demonstrates that Oracle was attempting to
license its work for mobile devices, including
smartphones. 14 Smartphones were, therefore, a “tradi-


OpenJDK as a commercially viable alternative to using
Java SE because any improvement to the packages in
OpenJDK had to be given away for free to the Java com-
munity.
     14 Of course, the fact that those negotiations were
not successful does not factor into the analysis. Campbell,
510 U.S. at 585 n.18 (“If the use is otherwise fair, then no
permission need be sought or granted. Thus, being denied
permission to use a work does not weigh against a finding
of fair use.”). Such evidence was only relevant to show
Oracle’s interest in the potential market for smartphones.
ORACLE AMERICA, INC.   v. GOOGLE LLC                     53



tional, reasonable, or likely to be developed market.” See
Swatch Grp., 756 F.3d at 91; see also Seltzer, 725 F.3d at
1179.
     Google argues that a reasonable jury could have con-
cluded that Java SE and Android did not compete in the
same market because Oracle: (1) was not a device maker;
and (2) had not yet built its own smartphone platform.
Neither argument has merit. That Oracle never built a
smartphone device is irrelevant because potential mar-
kets include licensing others to develop derivative works.
See Campbell, 510 U.S. at 592. The fact that Oracle had
not yet developed a smartphone platform is likewise
irrelevant as a matter of law because, as Oracle submits,
a market is a potential market even where the copyright
owner has no immediate plans to enter it or is unsuccess-
ful in doing so. See Worldwide Church, 227 F.3d at 1119;
Micro Star, 154 F.3d at 1113. Even assuming a reasona-
ble jury could have found no current market harm, the
undisputed evidence showed, at a minimum, that Oracle
intended to license Java SE in smartphones; there was no
evidence in the record to support any contrary conclusion.
Because the law recognizes and protects a copyright
owner’s right to enter a “potential market,” this fact alone
is sufficient to establish market impact.
    Given the record evidence of actual and potential
harm, we conclude that “unrestricted and widespread
conduct of the sort engaged in by” Google would result in
“a substantially adverse impact on the potential market
for the original” and its derivatives. See Campbell, 510
U.S. at 590 (citation and quotation marks omitted).
Accordingly, the fourth factor weighs heavily in favor of
Oracle.
               Balancing the Four Factors
    Having undertaken a case-specific analysis of all four
factors, we must weigh the factors together “in light of the
purposes of copyright.” Campbell, 510 U.S. at 578. We
54                       ORACLE AMERICA, INC.   v. GOOGLE LLC



conclude that allowing Google to commercially exploit
Oracle’s work will not advance the purposes of copyright
in this case. Although Google could have furthered copy-
right’s goals of promoting creative expression and innova-
tion by developing its own APIs, or by licensing Oracle’s
APIs for use in developing a new platform, it chose to copy
Oracle’s creative efforts instead. There is nothing fair
about taking a copyrighted work verbatim and using it for
the same purpose and function as the original in a com-
peting platform.
    Even if we ignore the record evidence and assume
that Oracle was not already licensing Java SE in the
smartphone context, smartphones were undoubtedly a
potential market. Android’s release effectively replaced
Java SE as the supplier of Oracle’s copyrighted works and
prevented Oracle from participating in developing mar-
kets. This superseding use is inherently unfair.
    On this record, factors one and four weigh heavily
against a finding of fair use, while factor two weighs in
favor of such a finding and factor three is, at best, neutral.
Weighing these factors together, we conclude that
Google’s use of the declaring code and SSO of the 37 API
packages was not fair as a matter of law.
     We do not conclude that a fair use defense could never
be sustained in an action involving the copying of comput-
er code. Indeed, the Ninth Circuit has made it clear that
some such uses can be fair. See Sony, 203 F.3d at 608;
Sega, 977 F.2d at 1527-28. We hold that, given the facts
relating to the copying at issue here—which differ mate-
rially from those at issue in Sony and Sega—Google’s
copying and use of this particular code was not fair as a
matter of law.
               III. GOOGLE’S CROSS-APPEAL
    Google cross-appeals from the district court’s final
judgment solely to “preserv[e] its claim that the declara-
ORACLE AMERICA, INC.   v. GOOGLE LLC                     55



tions/SSO are not protected by copyright law.” Cross-
Appellant Br. 83. Specifically, Google maintains that the
declaring code and SSO are: (1) an unprotected “method of
operation” under 17 U.S.C. § 102(b), because they allow
programmers to operate the pre-written programs of the
Java language; and (2) subject to the merger doctrine. We
resolved these issues against Google in the first appeal,
finding that the declaring code and the SSO of the 37 API
packages at issue are entitled to copyright protection.
Oracle, 750 F.3d at 1354.
    Google did not petition this court for rehearing and
instead filed a petition for a writ of certiorari asking the
Supreme Court to determine whether our copyrightability
determination was in error. Oracle responded to the
petition, and the Supreme Court invited the Solicitor
General to express the views of the United States. The
government agreed that Oracle’s computer code is copy-
rightable, and the Supreme Court denied Google’s petition
in June 2015. Google, Inc. v. Oracle Am., Inc., 135 S. Ct.
2887 (2015).
    Google neither asks the panel for relief on the copy-
rightability issue nor offers any arguments on that issue.
We remain convinced that our earlier copyrightability
decision was consistent with Congress’s repeated direc-
tives on the subject. Accordingly, we provide no relief to
Google on its cross-appeal, finding a ruling on it unneces-
sary.
                       IV. CONCLUSION
     For the foregoing reasons, we conclude that Google’s
use of the 37 Java API packages was not fair as a matter
of law. We therefore reverse the district court’s decisions
denying Oracle’s motions for JMOL and remand for a trial
on damages. The district court may determine the appro-
priate vehicle for consideration of infringement allega-
tions regarding additional uses of Android. We dismiss
Google’s cross-appeal.
56                  ORACLE AMERICA, INC.   v. GOOGLE LLC



             REVERSED AND REMANDED;
             CROSS-APPEAL DISMISSED
                      COSTS
     No costs.
