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Google v. Oracle

The Supreme Court Copyright Battle Between Google and Oracle Will Confront “Fair Use” of Software

ArgumentOctober 7, 2020
DecisionApril 5, 2021
Petitioner BriefGoogle
Respondent BriefOracle
Court BelowFederal Circuit Court of Appeals
Court Below: Federal Circuit Court of Appeals

Case Decision

On April 5, 2021, the Supreme Court ruled for Google. Google’s use of the Java API code was “fair use” and not a copyright infringement.

Scroll down for our Decision Analysis.

 

Argument Analysis

February 18, 2020

Google and Oracle will soon argue before the Supreme Court over the scope of copyright protection in an important area of software development. Oracle sued Google for its use of Java application programming interfaces (APIs) in the Android operating system. APIs are computer code that allow different software programs to communicate with each other.

After two separate appeals in the lower courts, Oracle stands on top with a ruling that Google infringed its copyrights in the Java platform. Google is asking the Supreme Court to overturn the infringement ruling.

The facts

In 2005, Google began negotiating for a license to adapt the entire Java SE platform for smartphones and other mobile devices.  Oracle, which owns the Java platform, insisted that any Google product incorporating Java maintain compatibility with other Java programs.  Google and Oracle were unable to reach an agreement and Google wrote the Android operating system instead.  Unlike Java, Android is optimized for the constraints of mobile devices such as limited battery life and limited computing power.

Android did, however, reuse aspects of the Java platform.  Android replicated the syntax and structure of declaration codes associated with 37 Java API libraries.  Reusing these Java APIs allowed third-party developers to use familiar Java declarations and commands to write applications that Android would recognize.

In total, Google copied 11,330 lines of Java code including the structure and arrangement of the copied code.  Despite reusing the Java code, it took almost 100 Google engineers over three years to build Android.  The copied Java APIs represents less than 0.1% of the over 15 million relevant lines of code in Android.

Using Java code, Android developers have created millions of applications used by more than a billion people.  Between 2007 and 2016, Android generated over $42 billion for Google.  However, Android applications are incompatible with Oracle’s Java platform and Java applications are incompatible Android devices.

The lawsuit

In 2010, Oracle sued Google for copyright infringement.  Oracle estimates its damages to be $9 billion.  The jury concluded that Google’s use of the copied Java APIs was “fair” and therefore immune from copyright infringement and damages.  The Court of Appeals reversed the jury verdict and ruled that Google’s use was not fair, wiping out Google’s defense to copyright infringement.  Google appealed the infringement and fair use holdings to the Supreme Court.

This case will turn on whether the Java APIs copied by Google are eligible for copyright protection and if they are, was Google’s use of the Java APIs considered to be fair and therefore immune from infringement of Oracle’s copyrights.

Copyright eligibility

The copyright eligibility question asks whether the API code that Google copied can be copyrighted in the first place.  Copyright is meant to protect “creative expression,” not functions or methods of operation.

Google argues the Java APIs it reused in Android were functional – namely, allowing its operating system to recognize commands written in Java, a computer language that many developers know (and created by Oracle).  Oracle, on the other hand, claims Google made use of Java’s creative expressions and elegant organizational framework.  Oracle claims Google could have taken a commercial license to reuse the Java APIs or created its own organizational framework for implementing the API functions.  Instead, Google copied the Java APIs, including their copyrightable expression and organization.

U.S. Federal law provides in 17 U.S.C. § 102 that:

Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression . . . from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

However, § 102 also states that “in no case does copyright protection . . . extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery.”

Oracle’s position

Oracle argues that the expression and organization of Java APIs are eligible for copyright protection.  The Java APIs copied by Google are “original” because the copied code is meant to be readable by humans.  The copied code explains to app developers a function of the code, how the computer will use the code, and how the code relates to other parts of the Java platform.  The copied code could have been written in countless other ways and Oracle’s creative choices represent an expressive, copyrightable work.

Oracle also argues that aside from the expressiveness of the copied Java APIs, its copyright covers “structure, sequence and organization” (“SSO”) of the code.  A computer would run perfectly fine if thousands of lines of code were all stored in single file.  However, such an arrangement would be difficult for humans to use.  Java’s authors determined relationships and built interdependencies between different Java modules.  Oracle argues that the SSO itself reflects creative choices that were critical to Java’s widespread adoption and are therefore independently copyright eligible.

Google’s position

Google counters that the copied Java APIs and its SSO are not eligible for copyright protection because of the “merger doctrine.”  The law states that “in no case does copyright protection . . . extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery.”  Under the merger doctrine, when there are only a few options to express a particular function, any potentially copyrightable expression in such content “merges” with the functionality of the content, obliterating copyright protection.

 To utilize the Java APIs, code must strictly adhere to the Java syntax and SSO.  No other code can perform the Java API functionality.  Google utilized the copied the Java APIs only to the extent necessary to achieve functionality of the APIs.  Therefore, the merger doctrine dictates that any creative expression of the copied Java APIs “merges” with its functionality, obliterating copyright protection.  Without applying the merger doctrine, Oracle’s copyrights would convey an exclusive right to the functionality of the copied Java APIs, a right that should be properly secured by the patent laws – not the copyright laws.

 Note – Google cursorily argues that even without the merger doctrine, the copied Java APIs are rote, de minimis instructions that do not include enough creative expression to be eligible for copyright protection.

Fair Use

If the Court determines the Java APIs at issue are eligible for copyright protection (as Oracle argues), it will then evaluate whether Google made “fair use” of the code.  Copyright law allows people to make limited use, or “fair use,” of copyrighted material without infringing the copyright.  Google argues that even if the copied Java APIs are eligible for copyright protection, the jury correctly found that its use of the code was a non-infringing “fair use.”

The copyright statute, in 17 U.S.C. § 107, provides that:

[F]air use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.

The statute lists the following four factors that should be considered to determine use of copyrighted material is fair:

(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.

The arguments

The Court will weigh the four factors to determine if they favor Google (that the use of the Java APIs is fair) or Oracle (that Google infringed Oracle’s copyright).

Factor #1

With respect to factor #1, Google argues it “transformed” use of the copied Java APIs by implementing them on the constrained operating environment of mobile devices.  This new implementation gave new expression and meaning to the copied code.  Although creation of Android was a commercial endeavor, any commercial advantage was due to the underlying code implemented by the copied Java APIs – which Google wrote on its own.

Oracle counters that to be transformative, a use must change the expression or meaning of the copied material.  Every line of code copied by Google has the same meaning and serves the same purpose in Android as it did in Java.  Factor #1 should focus on whether the copied material itself was transformed.  Exemplary transformative uses of the copied Java APIs would include copying to critique the code or for research on how to make a program that does not infringe.

Factor #2

Under factor #2, a more creative work is accorded stronger copyright protection.  An informational or functional work is more likely to be entitled to a fair use defense.  Google argues that substantial evidence indicates that the copied Java APIs were primarily functional, not creative.  Therefore, the jury reasonably concluded that the copied Java APIs were entitled to minimal copyright protection and reusing the code was a “fair use.”

Oracle argues that even minimally creative works are entitled to copyright protection against copying of their expressive elements.  The copied APIs were designed to be read by humans and its expressive elements were copied by Google.

Factor #3

Factor #3 looks at (1) the amount of material that was copied relative to the entire copyrighted work and (2) accounts for the importance of the copied material relative to the entire copyrighted work.  Google argues the copied Java APIs comprise less than 0.5% of the code in the Java SE libraries, which are themselves only a subset of the entire Java SE platform.  Evidence was presented to the jury that although the copied Java APIs were necessary to allow code written in Java to work on Android, the copied code had no value independent of the underlying implementing code which Google independently wrote.

Oracle argues that “statistics cannot trump quality.”  The copied code included “central” and “important” Java packages.

Factor #4

Courts consider factor #4 to be the most important in the fair use analysis.

Google argues that use of the copied code (including their SSO) caused no harm to the market for the Oracle’s copyrighted works.  Evidence was presented that Android did not supplant or supersede the market for Java.  Rather, Java was designed for servers and desktop computers and is not suitable for the smartphone market.

Oracle contends that its commercial customers leveraged the availability of Android for steep discounts on Java licenses.  Furthermore, Google’s copying harmed the potential market for Java.  For example, the 2005 licensing negotiations with Google show that Oracle was attempting to license Java for the smartphones market.

Oracle filed its brief last week, and Google will have an opportunity to file a reply brief in March.

The numerous amici briefs (25+) filed in this case raise various policy and legal concerns.  Most of the amici briefs support Google’s position and argue that a ruling for Oracle will have an adverse impact on innovation.  In a future report, we expect to provide an overview of key amici positions and Oracle’s responses.


 

Decision Analysis

April 6, 2021

On April 5, 2021, the Supreme Court in Google LLC v. Oracle America, Inc. held that Google’s copying of roughly 11,500 lines of Java code constitutes permissible “fair use.”  The Court did not decide the question of whether the copied Java code is itself independently copyrightable.

Background

In 2005, Google began negotiating for a license to adapt the entire Java SE platform for smartphones and other mobile devices.  Oracle, which owns the Java platform, insisted that any Google product incorporating Java maintain compatibility with other Java programs.  Google and Oracle were unable to reach an agreement, and Google wrote the Android operating system instead.  Unlike Java, Android is optimized for the constraints of mobile devices such as limited battery life and limited computing power.

Android did, however, reuse aspects of the Java platform.  Android replicated the syntax and structure of declaration codes associated with 37 Java API libraries.  Reusing these Java APIs allowed third-party developers to use familiar Java declarations and commands to write applications that Android would recognize. 

In total, Google copied 11,330 lines of Java code including the structure and arrangement of the copied code.  Despite reusing the Java code, it took almost 100 Google engineers over three years to build Android.  The copied Java APIs represents less than 0.1% of the over 15 million relevant lines of code in Android. 

Using Java code, Android developers have created millions of applications used by more than a billion people.  Between 2007 and 2016, Android generated over $42 billion for Google.  However, Android applications are incompatible with Oracle’s Java platform and Java applications are incompatible Android devices. 

In this decision, the Supreme Court overturned a decision of the Court of Appeals for the Federal Circuit in Oracle’s favor (i.e., that Google’s copying did not constitute a “fair use”).

The Majority Opinion

(authored by Justice Breyer and joined by Justices Roberts, Sotomayor, Kagan, Gorsuch and Kavanaugh)

As an initial matter, the Court held that due to the “rapidly changing technological, economic, and business-related circumstances” they will not answer more than is necessary to resolve the parties’ dispute.  Therefore, the Majority assumed, but purely for argument’s sake, that the entire Java API falls within the definition of that which can be copyrighted.  The Majority decided this case by tackling the fair use issue.

The Majority agreed with the Federal Circuit that the ultimate “fair use” question is primarily a legal question.  Therefore, the Federal Circuit properly left factual determinations to the jury and reviewed the ultimate legal question of fair use de novo.  However, the Majority disagreed with the Federal Circuit’s legal conclusion.

The Majority reexamined whether Google’s limited copying of the Java API constitutes fair use by considering the four guiding factors set forth in the Copyright Act’s fair use provision (17 U.S.C. §§ 107(1)-(4)):

(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.

(1) Purpose and Character of the Use – the Court considered whether Google’s copying was “transformative” and whether Google added something new and important to the underlying copyrighted work.  The Court held that Google’s limited copying of the Java API was a transformative use.  Google’s copying repurposed the Java API for use on the constrained operating environment of mobile devices.  This new implementation gave new expression and meaning to the copied code. 

The record also showed other ways in which copying API code promotes development of computer programs, which in turn promotes the constitutional objective of copyright itself.  For example, copying APIs is necessary for different programs to communicate with each other, for programmers to utilize their acquired skills and, is a common, accepted practice in the software industry.

Even though Google’s copying was unquestionably for a commercial endeavor, that itself was not dispositive in view of the transformative role of the copied Java API in the Android system.

(2) Nature of the Copyrighted Work – The Court held this factor favored a finding of fair use.  The Copyright Statute defines protectable computer programs as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.”  However, in this case the copied Java API does not instruct the computer to execute a task.  The copied code is part of a “user interface” that provides a way for programmers to access prewritten computer code.  The copied API is inextricably bound up with the uncopyrightable idea of organizing tasks in way that is intuitive and understandable to software developers.  Unlike many other computer programs, the value of the copied code is derived from the investment of third-party computer programmers who have spent time learning the Java API system.  Therefore, application of fair use to the Java API is unlikely to undermine the general copyright protection that Congress provided for computer programs.

(3) Amount and Substantiality Used – The Court held that the total amount of computer code in the Java platform, including all declaring and implementing code, must be considered when assessing the amount copied.  The Java platform includes 2.86 million lines of code.  The 11,500 lines copied by Google is less than 0.5% of the total amount of Java code.  “The amount and substantiality of” the copied portion is a very small part of the considerably greater whole, favoring fair use.

Furthermore, this factor will generally favor of fair use when the copying is associated with a transformative purpose.  Google copied the 11,500 lines not because of their creativity, beauty, or expression.  Rather it copied the declaring code because programmers had already learned to work with the Java API system, and it would have been prohibitively difficult to attract programmers to build its Android smartphone system without reusing them.  The copied code was the key Google needed to unlock programmers’ creative energies to build its own innovative Android operating system.  Because Google’s copying was tethered to a valid, and transformative, purpose, further weighs this factor in favor of fair use.   

(4) Market Effects – The fourth statutory factor focuses on the “effect” of the copying in the “market for or value of the copyrighted work.”  Courts consider this factor to be the most important in the fair use analysis.  

The Court held that evidence demonstrated Java was poorly positioned to succeed in the mobile phone market.  The jury heard ample evidence that Java’s primary market was laptops and desktops.  The record also includes ample evidence showing that the licensing value of the Java API was not due to its expressive qualities or superior functionality.  Rather, the Java API was valuable because programmers were used to it and has learned how to work with it. 

Finally, given programmers’ investment in learning the Java API, allowing enforcement of Oracle’s copyright would risk harming the public.  Copyright enforcement of the Java API would limit future creative development of new computer programs by allowing Oracle to exploit the Java API’s commercial acceptance rather than its value as a copyrighted work.  When taken together, these considerations demonstrate that the fourth factor weighs in favor of fair use.

In this case, Google’s copying of the Java API reimplemented a user interface by taking only what was needed to allow users to put their accrued talents to work in a new and transformative program.  Accordingly, the copying was fair use as a matter of law.  The Court acknowledged that it is difficult to apply traditional copyright concepts because computer programs are primarily functional.  Therefore, the Court expressly noted that this decision does not overturn or modify any of its earlier cases involving fair use.

The Dissenting Opinion

(authored by Justice Thomas and joined by Justice Alito)

The Dissent argues that the copied Java API is copyrightable, and Google’s use of that copyrighted code was not fair.  The Dissent argues that Majority’s distinction between “declaring” code and “implementing” code drives its fair use analysis. 

Congress has categorically rejected this distinction, and without this distinction, Google’s use would not be fair.  The Copyright Statute defines a “computer program” as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.”  The Dissent argues that the statutory definition covers declaring code which are statements that indirectly perform computer functions by triggering prewritten implementing code. 

Furthermore, the Java API satisfies the “extremely low” threshold for copyright protection.  The Java API is an original work of authorship.  Oracle could have formulated the Java API in any number of ways.  Other companies such as Apple and Microsoft created their own declaring code.  Granted, Oracle cannot copyright the idea of using declaring code, but it can copyright the specific expression of that idea found in its Java API.  After properly evaluating the copyrightability of the Java API, three of the four fair use factors favor Oracle.

(1) Purpose and Character of the Use – This is generally considered the second most important fair use factor.  In 2015 alone, Google earned $18 billion from Android.  That number has no doubt dramatically increased as Android has grown to dominate the global market share.  On this scale, Google’s use of Oracle’s declaring code weighs heavily—if not decisively—against fair use. 

Commercial use may sometimes be overcome by use that is “transformative.”  However, a work is only “transformative” if it “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”  “Helping others” create new products is not a recognized transformative use.  Nearly every computer program, once copied, can be used to create new products.  In any case, here Google copied the Java API verbatim and used it for the same purpose and function as the original in a competing platform. 

(2) Nature of the Copyrighted Work – The Java API is closer to the “core of copyright” than the implementing code.  Programmers cannot see the implementing code.  Implementing code conveys no expression to the programmers.  On the other hand, declaring code, is user facing.  It must be designed and organized in a way that is intuitive and understandable to programmers so that they can invoke it.

It makes no difference that the value of declaring code depends on how much time third parties invest in learning it.  The value of other copyrighted works also depends on the similar third-party effort.  For example, a musical script needs actors and singers to invest time learning and rehearsing it.  But a theater cannot copy a script because copying the script is more efficient than requiring actors to learn a new one.

(3) Amount and Substantiality Used – Even if a copier takes only a small amount, copying the “heart” or “focal points” of a work weighs against fair use.  Here Google copied the heart or focal points of Oracle’s work.  The Java API is what attracted programmers to the Java platform and why Google was so interested in that code.  A copied work is quantitatively substantial if it could “serve as a market substitute for the original” work or “potentially licensed derivatives” of that work.  The copied Java API is what made Android a “market substitute” for the Java platform.  Therefore, Google’s copying was both qualitatively and quantitatively substantial. 

(4) Market Effects – the most important element of fair use is the effect of the copying on the potential market for, or value of, a copyrighted work.  Evidence of actual and potential harm to Oracle from Google’s copying was overwhelming.  After Google released Android, Amazon used the cost-free availability of Android to negotiate a 97.5% discount on its license fee with Oracle.  Evidence also showed that after Google released Android, Samsung’s contract with Oracle dropped from $40 million to about $1 million. 

Whether Oracle would or could itself enter the smartphone market successfully is only half the picture.  This fair use factor also considers potential markets the copyright holder might license others to develop.  It is undisputed that Oracle could have licensed its code for use in Android.

Furthermore, this case only concerns versions of Android released through November 2014.  Only about 7.7% of active Android devices still run the versions at issue in this case, mitigating any concerns that allowing copyright enforcement would stifle creativity. 

For these reasons, Justices Thomas and Alito would have held that Google’s use was not fair. 

 
 

 

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About the Author

Jacob Baldinger

Jacob Baldinger

Jacob Baldinger is a partner at Weiss & Arons LLP in Spring Valley, NY, and advises on intellectual property procurement and enforcement.

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