Supreme Court Sides with Google in Landmark Copyright Suit
The U.S. Supreme Court recently held that Google’s inclusion of Oracle’s software code in its Android mobile operating system constituted fair use under U.S. copyright law...
Supreme Court Sides with Google in Landmark Copyright Suit
<strong>The U.S. Supreme Court recently held that Google’s inclusion of Oracle’s software code in its Android mobile operating system constituted fair use under U.S. copyright law.</strong>..
The U.S. Supreme Court recently held that Google’s inclusion of Oracle’s software code in its Android mobile operating system constituted a fair use under U.S. copyright law. The 6-2 decision in Google LLC v. Oracle America Inc. concludes what had been dubbed the “copyright lawsuit of the decade.”
Copyright Dispute Over Software Code
In 2010, Oracle America, Inc. (Oracle) filed suit against Google Inc. (Google) in the U.S. District Court for the Northern District of California, alleging that Google's unauthorized use of 37 packages of Oracle's Java application programming interface (API packages) in its Android operating system infringed Oracle's patents and copyrights. APIs allow programmers to use the prewritten code to build certain functions into their own programs rather than write their own code to perform those functions from scratch. Although Oracle makes the Java platform freely available to programmers building applications, Oracle charges a licensing fee to those who want to use the APIs in a competing platform or embed them in an electronic device.
In developing its Android software platform, Google initially sought a license from Oracle. When negotiations broke down, Google elected to move forward with using the declaring code of 37 Java API packages. It also copied the structure, sequence, and organization (SSO) of the Java API packages. Google then wrote its own implementing code.
After the first jury trial in 2012, the district court ruled that the APIs are not entitled to copyright protection as a matter of law because they represent a command structure, or method of operation, that could not be written any other way. The Federal Circuit reversed, finding that the declaring code and SSO of the Java API packages are entitled to copyright protection. It remanded the case for a second trial on whether Google’s use of the APIs was a fair use.
In 2016, a jury found that the doctrine of fair use applied. However, the Federal Circuit reversed, concluding that Google's use of the Java API packages was not fair as a matter of law. It held that Google's use of the API packages is not transformative as a matter of law because: (1) it does not fit within the uses listed in the preamble to § 107 of the Copyright Act; (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.
Supreme Court’s Ruling in Google v. Oracle
The Supreme Court reversed by a vote of 6-2. According to the majority, Google’s limited copying of the Java SE Application Programming Interface allowed programmers to put their accrued talents to work in a transformative program and constituted a fair use of that material under copyright law.
Notably, the Supreme Court did not examine the threshold issue of whether the Java API source code was eligible for copyright protection. Citing that a holding for Google on either question presented would dispense with Oracle’s copyright claims, the Court assumed, purely for argument’s sake, that the entire Sun Java API could be copyrighted.
Accordingly, the Supreme Court’s opinion focuses on whetherGoogle’s copying of the Sun Java API, specifically its use of the declaring code and organizational structure for 37 packages of that API, constitutes “fair use.” As Justice Stephen Breyer explained, fair use analysis requires weighing the four factors codified in Section 107 of the Copyright Act: (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 court noted that it has recognized that some factors may prove more important in some contexts than in others.
Nature of the Copyrighted Work
The Court started its analysis with the second factor. It concluded that the nature of the copyrighted work weighed in favor of a finding of fair use. In reaching its decision, the Court focused on the type of code that Google copied, namely that the Java API is an interface that provides a way for programmers to access prewritten computer code through the use of simple commands. As Justice Breyer explained, unlike many other programs, its use is inherently bound together with uncopyrightable ideas (general task division and organization) and new creative expression (Android’s implementing code). In addition, unlike many other programs, its value in significant part derives from the value that those who do not hold copyrights, namely, computer programmers, invest their own time and effort to learn the API’s system.
“[T]he declaring code is, if copyrightable at all, further than are most computer programs (such as the implementing code) from the core of copyright. That fact diminishes the fear, expressed by both the dissent and the Federal Circuit, that application of ‘fair use’ here would seriously undermine the general copyright protection that Congress provided for computer programs,” Justice Breyer wrote. “And it means that this factor, ‘the nature of the copyrighted work,’ points in the direction of fair use.”
Purpose and Character of the Use
The Court next turned back to the first factor, focusing its analysis on whether the copying at issue was “transformative,” i.e., whether it “adds something new, with a further purpose or different character.” It concluded that this factor also weighed in Google’s favor.
In support, Justice Breyer noted that Google copied only what was needed to allow programmers to work in a different computing environment without discarding a portion of a familiar programming language. “It copied the API (which Sun created for use in desktop and laptop computers) only insofar as needed to include tasks that would be useful in smartphone programs,” Justice Breyer wrote. “And it did so only insofar as needed to allow programmers to call upon those tasks without discarding a portion of a familiar programming language and learning a new one.”
The majority also emphasized that Google copied the code to expand its use to a new platform — smartphones. “Here Google’s use of the Sun Java API seeks to create new products. It seeks to expand the use and usefulness of Android-based smartphones. Its new product offers programmers a highly creative and innovative tool for a smartphone environment,” Justice Breyer wrote. “To the extent that Google used parts of the Sun Java API to create a new platform that could be readily used by programmers, its use was consistent with that creative ‘progress’ that is the basic constitutional objective of copyright itself.”
The Court went on to explain that the record demonstrates numerous ways in which reimplementing an interface can further the development of computer programs. Examples cited in the opinion include that the reimplementation of interfaces is necessary if programmers are to be able to use their acquired skills; reuse of APIs is common in the industry; and shared interfaces are necessary for different programs to speak to each other. “These and related facts convince us that the ‘purpose and character’ of Google’s copying was transformative—to the point where this factor too weighs in favor of fair use,” Justice Breyer wrote.
Amount or Substantiality of the Portion Used
As set forth in the Court’s opinion, Google copied approximately 11,500 lines of declaring code from the API, which amounts to virtually all the declaring code needed to call up hundreds of different tasks. Those 11,500 lines, however, are only 0.4 percent of the entire API at issue, which consists of 2.86 million total lines.
In deciding the fourth factor in Google’s favor, the Court highlighted that the substantiality factor will generally weigh in favor of fair use where, as here, the amount of copying was tethered to a valid, and transformative, purpose. Justice Breyer explained:
Several features of Google’s copying suggest that the better way to look at the numbers is to take into account the several million lines that Google did not copy. For one thing, the Sun Java API is inseparably bound to those task-implementing lines. Its purpose is to call them up. For another, Google copied those lines not because of their creativity, their beauty, or even (in a sense) because of their purpose. It copied them because programmers had already learned to work with the Sun Java API’s system, and it would have been difficult, perhaps prohibitively so, to attract programmers to build its Android smartphone system without them. Further, Google’s basic purpose was to create a different task-related system for a different computing environment (smartphones) and to create a platform—the Android platform—that would help achieve and popularize that objective.
The Supreme Court rejected the Federal Circuit’s conclusion that Google could have achieved its Java-compatibility objective by copying only the 170 lines of code that are “necessary to write in the Java language.” As Justice Breyer explained: “In our view, that conclusion views Google’s legitimate objectives too narrowly. Google’s basic objective was not simply to make the Java programming language usable on its Android systems. It was to permit programmers to make use of their knowledge and experience using the Sun Java API when they wrote new programs for smartphones with the Android platform.”
Effect of the Use on the Potential Market for or Value of the Work
The Court concluded that the market effects factor also weighed in favor of fair use. “The uncertain nature of Sun’s ability to compete in Android’s marketplace, the sources of its lost revenue, and the risk of creativity-related harms to the public, when taken together, convince that this fourth factor—market effects— also weighs in favor of fair use,” Justice Breyer wrote.
In support, the Court highlighted that the record showed that Google’s new smartphone platform is not a market substitute for Java SE. Additionally, the record also showed that Java SE’s copyright holder would benefit from the reimplementation of its interface into a different market.
The Court further concluded that given programmers’ investment in learning the Sun Java API, to allow enforcement of Oracle’s copyright would risk harm to the public. “Given the costs and difficulties of producing alternative APIs with similar appeal to programmers, allowing enforcement here would make of the Sun Java API’s declaring code a lock limiting the future creativity of new programs. Oracle alone would hold the key,” Justice Breyer wrote. “The result could well prove highly profitable to Oracle (or other firms holding a copyright in computer interfaces). But those profits could well flow from creative improvements, new applications, and new uses developed by users who have learned to work with that interface. To that extent, the lock would interfere with, not further, copyright’s basic creativity objectives.”
Dissent in Google v. Oracle
Justice Clarence Thomas issued a dissent, which was joined by Justice Samuel Alito. Justice Thomas argued that Google’s use was “anything but fair,” and that the majority’s decision would hurt competition. If “companies may now freely copy libraries of declaring code whenever it is more convenient than writing their own, others will likely hesitate to spend the resources Oracle did to create intuitive, well-organized libraries that attract programmers and could compete with Android,” Justice Thomas wrote.
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It is important to note that this article provides a brief overview of the Supreme Court’s decision in Google v. Oracle. For entities potentially impacted by the landmark copyright decision, we encourage you to review the opinion with experienced legal counsel who can help determine how it may impact you.
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About Author David A. Einhorn
David Einhorn, Chair of the firm’s Technology Law practice group, handles diverse matters in intellectual property and technology areas. He has obtained successes in many prominent and precedent-setting cases in the fields of patent infringement, trademark infringement, copyright infringement, cybersquatting, trade name misappropriation and insurance coverage.
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