IP Law Daily, COPYRIGHT—11th Cir.: Borrowing of iPhone iOS for security research is covered by fair use, (May 8, 2023)

By Matthew Hersh, J.D.

A technology company engaged in a transformational use of the widespread operating system by using it to fashion a cybersecurity product.

An R&D company that marketed a software product based on Apple’s iPhone operating system was protected by the fair use doctrine because it transformed the technology powering the ubiquitous consumer product into a tool that enabled security researchers to more effectively investigate potential threats from hackers, the U.S. Court of Appeals for the Eleventh Circuit has held. The court, affirming the holding of a Florida district court in an unpublished decision, drew from a long line of cases finding that the use of technology to adapt an existing work into a product that served a different utilitarian purpose was protected conduct under the Copyright Act. The case, however, was remanded for the district court to consider in the first instance two other claims by Apple (Apple Inc. v. Corellium, Inc., May 8, 2023, per curiam).

The lawsuit involves a high-priced product from an R&D company named Correllium. The company offers a software solution that allows users to view and interact with the operating system powering the iPhone (and the Android too, for that matter) on devices other than their phone. The product, which according to the court sells for up to “hundreds of thousands of dollars,” allows security researchers not only to host the operating system on a different platform but also to modify the software, see and halt running processes, view system calls, take live snapshots, and interact with the program in other ways that further the purpose of security research.

Apple sued the R&D company in the Southern District of Florida, claiming direct and secondary infringement of its software. The trial court granted summary judgment in favor of the R&D company on the grounds of fair use, leading to this appeal.

Transformational use. The court of appeals affirmed the district court judgment. In assessing whether a new work is transformative, the court noted, “we ask whether the new work merely supersedes the objects of the original creation or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” The court easily found that this was the case here.

The court drew its conclusion from a number of precedents in the technology sphere. For example, in the 2021 Google v Oracle, 141 S. Ct. 1183 (2021), the Supreme Court found that it was fair use for Google to copy more than 10,000 lines of the Java code in order to make its Android phone interoperable with Java-based products. Similarly, in Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015), the Second Circuit found that it was fair use for Google to make digital copies of millions of books so that researchers could do word searches through those books and view snippets of the surrounding text. This case “looks a lot like” these precedents, the court observed. Here, the R&D company added tools that were not available to ordinary users in order to “help security researchers do their work in a way that physical iPhones just can’t.” That was easily enough, the court found, to constitute a transformational purpose.

Other fair use factors. With transformational use decided in favor of the R&D company, the other fair use factors—as is almost always the case—fell into line as well. While the product was for commercial use, the court noted, that was not “dispositive of the first fair use factor,” particularly in light of the transformational use. The nature of the software was primarily functional, the court noted, weighing in favor of fair use. The R&D company borrowed all of the iOS for its own product, the court noted, but because the company’s “use was tethered to its transformative purpose,” the third factor also favored fair use. Finally, the court noted, the fact that the R&D company’s product was designed for a different purpose than the consumer iPhone, it would not cause any substantial harm to Apple’s market. Thus, the fourth and final factor also favored fair use.

Remand. But while the court affirmed the district court’s decision on fair use, it remanded for the district court to consider two other claims by Apple: whether the R&D company’s product infringed on Apple’s exclusive rights to the visual design of its phone screen (icons and wallpaper) and whether the company contributed to the infringement of Apple’s exclusive rights by third parties. The remand was necessary, the court explained, because the district court did not even address these issues after deciding the fair use. Thus, the district court would be given the first chance to weigh in.

The Case is No. 21-12835.

Attorneys: Melissa Arbus Sherry (Latham & Watkins LLP) for Apple, Inc. Thomas Goldstein (Goldstein & Russell, PC) for Corellium, Inc.

Companies: Apple, Inc.; Corellium, Inc.

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