Joshua Rosenkranz Joshua Rosenkranz

Oracle has renewed its copyright clash with Google in a return trip to the U.S. Court of Appeals for the Federal Circuit. The software giant submitted its opening brief Friday from its unsuccessful trial bid to recover $8 billion for Google’s copying of Java application programming interfaces (APIs) into its Android operating system.

The Federal Circuit ruled in 2014 that the APIs are copyrightable and sent the case back to U.S. District Judge William Alsup for a second trial on whether the copying was a fair use. The jury found last year that it was after Google argued that it transformed Java into a mobile-friendly platform.

Oracle has toned down the fiery rhetoric—somewhat—that marked much of the proceedings before Alsup. The brief signed by Orrick, Herrington & Sutcliffe partner E. Joshua Rosenkranz argues that Congress intended fair use to apply to criticism, commentary, news reporting or teaching, not a $42 billion juggernaut like Google’s Android business. Here are five takeaways from a look at Oracle’s brief.

We’ll huff and we’ll puff, but we won’t challenge Alsup’s jury instructions on appeal. Before last year’s trial, Oracle filed page after page ripping Alsup’s instructions as “unnecessary,” “irrelevant,” “irrevocably prejudicial,” and generally accused him of defying the law of the case from the previous Federal Circuit opinion.

Surprisingly, Oracle is not raising a formal claim of instructional errors on appeal, though criticisms of them pop up here and there. Perhaps Alsup was sufficiently responsive to the concerns Oracle raised. Maybe Oracle believes it has better issues for appeal. Or it could be the company is confident that the Federal Circuit, having already laid down the law once, won’t need much encouragement to look closely at the issue.

Ignore what the jury said, give us de novo review. Oracle says it accepts “Google’s version of the very few disputed facts,” but urges the Federal Circuit to “apply the law and balance the [fair use] factors de novo.”

Oracle cites six fair-use cases—two each from the U.S. Supreme Court, the Ninth Circuit and the Federal Circuit—for de novo review. But five arose from summary judgment orders or bench trials where judges carefully explained their reasoning.

The sixth is from the hung jury in the first Oracle v. Google appeal. None is from a jury verdict. And in this appeal there’s the added wrinkle that the Federal Circuit already remanded the case three years ago explicitly to let a jury have its say.

It’s not the jury’s fault, it’s Alsup’s. To avoid the uphill climb on standard of review, Oracle argues that but for Alsup’s handling of the trial, the jury would have ruled in its favor. “At every turn, in countless ways, the district court issued rulings that obstructed Oracle’s case,” Rosenkranz writes.

First, Alsup would not tell the jury that the Federal Circuit had found Google’s copying was for “purely” commercial purposes. Second, he let Google argue that its use was transformative despite the Federal Circuit having ruled Google “overstated” that point.

And because Alsup limited the trial to the smartphone and laptop markets only, Oracle didn’t get to show Android is cutting into Oracle’s existing share of smart TVs, cars and wearable devices. “This evidence would have eviscerated Google’s theory of ‘transformative’ use, the core of its fair use defense,” Rosenkranz writes.

A Ninth Circuit case about porn websites could be Oracle’s undoing. Oracle argues that Google could not have transformed the Java APIs—and therefore qualify for fair use—because it copied them verbatim, even if for the new medium of smartphones.

Rosenkranz argues that courts have found no transformation where exact images of statues were recreated on postage stamps, or where printed song lyrics were incorporated into a karaoke machine. But in 2007 Judge Sandra Ikuta wrote for the Ninth Circuit that it was “highly tranformative” for Google to copy precise images from a porn website but in thumbnail size for the purpose of search indexing.

“In reaching this conclusion, we note the importance of analyzing fair use flexibly in light of new circumstances,” Ikuta wrote. Rosenkranz argues that the thumbnails were transformative because they were “not for aesthetic pleasure, but to educate the searcher about what they look like.”

Google may be its own worst enemy. In closing arguments at the fair-use trial, Google argued that Android doesn’t compete with Oracle. “Java SE is on personal computers; Android is on smartphones,” the company argued. But at that point Google had already announced, outside of court, that it was preparing to launch an Android product for PCs.

This apparent switcheroo provides the most compelling arguments in Oracle’s brief. “Google’s ploy violated the basic rule that litigants may not urge the jury to base its verdict on ‘a fact known to be false,’” Rosenkranz writes.

But Alsup let Google off the hook because he’d already created an “artificial universe” in which the trial was only about smartphones and laptops. “Far from justifying Google’s misconduct, this logic confirms how wrong the court’s evidentiary rulings were,” Rosenkranz writes.

Oracle also renews its accusation that Google denied during discovery that it planned an Android PC, then buried its disclosure in a 350,000-document dump just as discovery was closing. “Nevertheless,” Rosenkranz writes, “the district court faulted Oracle for not discovering the needle in this haystack after Google repeatedly assured it in written discovery responses that there was no needle.”