Two Kinds of Fair Use: The Unintended Effect of Google v. Oracle

By: Sarah Law

“[F]air use presents a holistic, context-sensitive inquiry ‘not to be simplified with bright-line rules[.] . . . All [four statutory factors] are to be explored, and the results weighed together, in light of the purposes of copyright.’”[1] The fair use defense in copyright law is very flexible and highly contextual, resulting in adaptability of the doctrine across copyright cases. In a revised judgement issued on August 24, 2021, the Second Circuit indirectly recognized a distinction between applying fair use factors to cases involving functional works versus cases involving more expressive works. Such a distinction has been generally understood by practitioners for some time,[2] but there has been no clear articulation of this distinction in the courts.


Fair use is a doctrine of copyright law that permits limited use of other’s copyrighted work, without permission, in order to promote the advancement of the sciences and arts. The four factors to analyze fair use are: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount or substantiality of the portion used; and (4) the effect on the potential market for the original work.[3] The four factors are applied very differently across copyright cases depending on the facts of the case. Traditionally, the second factor of “the nature of the work” has not been understood to be as important in fair use analysis, unless the work was highly functional.[4] For functional works, there is a greater concern of being able to build on those endeavors, meaning the second factor is “of the utmost importance” and will affect the other factors.[5]


The recent U.S. Supreme Court decision, Google v. Oracle, affirmed that in technological software copyright cases courts must interpret the other factors in light of the functionality highlighted by the second factor.  A recent application of this principle in the Second Circuit goes further and suggests that fair use analysis developed for a functional work should not be used in analyzing a fair use claim involving an expressive work. After the Court handed down Google, the Andy Warhol Foundation petitioned for a rehearing of its case based not on the Court’s analysis of the nature of the work factor (significant in Google), but on the purpose and character of the use (factor 1). However, the Foundation was unable to persuade the Second Circuit to rely on Google because this relationship between these first two factors meant none of the Google holding could be applied directly to the Foundation’s case.


As the Court itself noted in Google, the fair use analysis for more traditional, expressive copyrighted material was not changed much by its decision. The holding in Google was very narrow and explicitly meant to not disrupt the fair use doctrine.[6] Yet, the Second Circuit’s application of Google shows that every factor of the fair use analysis must be understood in light of how the second factor has been decided. Because the Court emphasized the importance and prominence of the second factor in understanding how the other factors are analyzed, the Second Circuit in response refused to apply any Google analysis of the fair use doctrine at all because the AWF case concerned an expressive work and not a functional one. In effect, the second factor is not like every other factor. It needs to be considered and decided first because it will frame how the other factors are understood.


The Supreme Court: Google v. Oracle

Last April, the Supreme Court handed down its opinion in Google v. Oracle, in which Oracle sued Google for copyright infringement based upon Google copying verbatim 37 Javascript declaring code packages, totaling 11,500 lines of code.[7] The Court found in favor of Google, holding that its copying of the declaring code constituted fair use.[8] The declaring code is what organizes the different kinds of functions a computer can execute and relates that organization to the computer user.[9] This stands in contrast to the implementing code which tells the computer how to carry out its task.[10] The implementing code requires a far greater level of creativity as it is the portion of code that needs to change based on the speed and processing power of the computer, life of the battery, etc.[11] The declaring code however, the Court found, to have a functional value, increasing the likelihood of success of a fair use defense under copyright law because to rule otherwise would hinder scientific and creative advancement.[12]


The Google court started its fair use analysis with the second factor, the nature of the copyrighted work.[13] In finding that the nature of the declaring code was “further than are most computer programs (such as the implementing code) from the core of copyright,” the Court found that the code itself was more functional than expressive.[14] This functionality then affected the other fair use factors, becoming the context in which those factors were understood.[15] As Justice Thomas wrote in his dissent, “[t]his opening mistake taints the Court’s entire analysis.”[16] Regardless as to whether or not it was a “mistake” to find the second factor in favor of Google, the rest of the factors were all directly affected by this finding of functionality. In finding the work to be functional, the Court found for itself an exigency to favor potential defendants across every factor in order to promote progress.


In analyzing the first factor (purpose and character of the use), the Court found that the coding was transformative, even though 11,500 lines were copied verbatim.[17] To do otherwise would in its view, “severely limit the scope of fair use in the functional context.”[18] The Court found that the Google’s use of the code was consistent with the constitutional objective of promoting creative “progress” because the company was using the code to create its own platform.[19] This finding that the work was transformative is significant, even given how relatively small the amount of coding was in context, because the lines were identical copies. Even though the lines were exact copies, the functionality of the use created greater leeway for others to use the work as a matter of fair use. This seemingly low threshold for transformative use however does not extend to expressive works, as the Second Circuit has recently demonstrated.


The Second Circuit: Andy Warhol Found. For the Visual Arts, Inc. v. Goldsmith

In 1981, photographer Lynn Goldsmith conducted a photoshoot with Prince, the photos from which she licensed to Vanity Fair in 1984 to use as an artist reference.[20] The artist that Vanity Fair hired to perform its work was Andy Warhol, who did not just create one image for Vanity Fair but created fifteen other prints based on Goldsmith’s photograph (the “Prince series”).[21] Goldsmith learned of these additional prints only when one of Warhol’s prints was used in 2016 in a print publication memorial for Prince.[22] Goldsmith notified the Andy Warhol Foundation (AWF) of the alleged copyright violation and AWF subsequently sued her for a declaratory judgement that its use of the image was non-infringing, or alternatively, a fair use of the image.[23] Goldsmith countersued for copyright infringement.[24] The district court found for AWF, which was reversed by the Second Circuit.[25] After Google v. Oracle was handed down, the appellate court granted a motion to review and rehear in light of the new Supreme Court holding.[26] The Second Circuit upheld its previous decision to vacate the district holding and updated its opinion to include discussion of the effect the Google decision had on the AWF case.[27]


The Purpose and Character of the Use

In regard to the first factor, purpose and character of the use, AWF argued that the transformative nature of the Prince Series weighed heavily in AWF’s favor.[28] In its initial opinion, the Second Circuit found that the AWF Prince Series was not transformative, but a derivative of the original photograph in which the original copyright holder holds a right.[29] Relying on Google, AWF then argued that even though the original photograph was recognizable in the print series, it was nonetheless transformative.[30] After all, in Google, the lines of coding were copied verbatim and still found to be transformative.[31] In AWF, the photograph was copied but altered by color and style and artistic medium.[32] To AWF, the “purpose and nature of the use” analysis in Google showed that in situations of verbatim copying, transformative use can still be found in favor of the copying party.[33] Such a finding would have reversed the Second Circuit’s decision that the “Prince series” was not a transformative work within the meaning of the first factor.[34]


The Second Circuit did not just reject AWF’s application of Google to its transformative use argument. Although most of the amended opinion was unchanged from its original version, the court created an entire new subsection of its amended opinion to address the effect of Google on the case before them.[35] Where in their brief AWF had argued for a reconsideration in ruling on the first factor of the fair use analysis, the court disagreed.[36] Because copyright cases are highly contextual, and “the Supreme Court in Google took pains to emphasize that the unusual context of that case . . ., [this] may well make its conclusions less applicable to contexts such as ours,” the court reasoned.[37] As the court continued, “the “[Google] opinion expressly noted that ‘copyright’s protection may be stronger where the copyrighted material . . . serves an artistic rather than a utilitarian function.’”[38] It appears that what is called “context” in the Second Circuit’s opinion could be substituted for “nature of the work” as “context” is referring to the label of a work as either artistic or utilitarian. This is language that is used in evaluating the second factor. As a result, the Second Circuit found that Google’s analyses of the other factors could not bear weight in a case of expressive copyrighted work, but instead only reaffirmed there are no bright line rules in copyright. No other part of the opinion could have authoritative or persuasive effect on fair use arguments for expressive works.


In closing his opinion, Justice Breyer wrote that in the difficult task of applying copyright concepts to the technological world, the Court has not “changed the nature of those concepts.”[39] And while this statement is true in most regards, there is a significant difference now in application of those concepts depending on the type of work being claimed. In this effort to keep the rest of copyright’s fair use factors untouched, this distinction has accidentally created a fork in the road that will affect how the factors are applied to the facts of each case. Parties will first have to argue over the nature of the work, or in other words, the context of the work, because it will affect the understanding of the other fair use factors.

Additionally, for expressive works it seems there now may be a higher threshold for copiers to win a transformative use argument. Perhaps in AWF the Second Circuit is simply wishing to minimize the effect of its 2013 decision in Cariou v. Prince on fair use application.[40] Nevertheless, the Second Circuit’s refusal to apply Google’s fair use analyses to an expressive work carries an implication that no matter the work, the second factor must be decided initially as a separate step, and its determination will set the path for how the other the other factors will be applied. For as much as Google favored copiers of functional works, AWF shows in the case of expressive work, there is favoring of original creators.

What remains unknown is how this distinction will apply to works where there is a combined expressiveness and functionality, such as architecture or the design of useful articles. Will litigants have to categorically define the work as one or the other in order to properly argue a fair use defense? Will courts have to carefully pull apart the features that make a work expressive and the features that make it functional, applying different understandings of fair use for each portion? If so, what exactly would be the effect of a split ruling on the expressive and the functional portions where the expressiveness and the functionality of a work are completely intertwined? Would the difference even matter in such a case, or would the work as a whole have to succumb to whichever ruling the particular judge cares about the most, no matter the expressiveness or functionality?

[1] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith (AWF), No. 19-2420-cv, 2021 U.S. App. LEXIS 25277, at *14 (2d Cir. Mar. 26, 2021).

[2] Bill Donahue, 6 Things to Know About High Court’s Google-Oracle Ruling, Law360 (Apr. 5, 2021, 9:38 PM), [].

[3] 17 U.S.C.S. §107

[4] 6 Things to Know, supra note 2.

[5] Id.

[6] Bill Donahue, Top 7 Copyright Rulings Of 2021: A Midyear Report, Law360 (June 25, 2021, 8:13 PM), [] [hereafter Top 7 Copyright Rulings].

[7] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1204 (2021).

[8] Id. at 1209.

[9] Id. at 1192.

[10] Id. at 1191.

[11] Id. at 1202.

[12] Id.

[13] Id. at 1209, 1201.

[14] Id. at 1202.

[15] See Id. at 1203, 1205, 1208.

[16] Id. at 1216.

[17] Id. at 1203-04.

[18] Id. at 1203 (emphasis added).

[19] Id.

[20] AWF, 2021 U.S. App. LEXIS 25277, at *7-8.

[21] Id. at *8-9.

[22] Id. at *11.

[23] Id.

[24] Id.

[25] Id. at *12, *59.

[26] Id. at *51.

[27] Id. at *59.

[28] Petition for Panel Rehearing and Rehearing En Banc at 10-11, Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, No. 19-2420-cv (2nd Cir. Apr. 23, 2021).

[29] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99, 116 (2d Cir. 2021).

[30] Petition for Panel Rehearing, supra note 27, at 11.

[31] Google, 141 S. Ct. at 1203.

[32] AWF, 2021 U.S. App. LEXIS 25277, at *9.

[33] Petition for Panel Rehearing, supra note 27, at 11 (arguing Google’s example of an exact replica of copyrighted advertising material falling within fair use is a nod to Warhol himself and is directly applicable to its present case).

[34] See AWF, 2021 U.S. App. LEXIS 25277, at *42.

[35] Bill Donahue, 2nd Circ. Won’t Redo Warhol Case, Even After Google Ruling, Law360 (Aug. 24, 2021, 12:37 PM) []; AWF, 2021 U.S. App. LEXIS 25277, at *51-5.

[36] AWF, 2021 U.S. App. LEXIS 25277, at *51.

[37] Id. at *52.

[38] Id. (quoting Google, 141 S. Ct. at 1197).

[39] Google, 141 S. Ct. at 1208.

[40] Top 7 Copyright Rulings, supra note 5.