The U.S. Supreme Court will have the final word in an epic legal battle between Google and Oracle. The case involves whether Google committed copyright infringement when it copied Oracle’s software code to build the Android mobile operating system.

Copyright Act

The Copyright Act provides that "original works of authorship" are generally eligible for copyright protection. However, it further states that "[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." The key question before the Court in Google v. Oracle is whether copyright protection extends to a software interface— the languages, codes and messages that programs use to communicate with each other and to the hardware.

The case also involves the doctrine of fair use. As set forth in Section 107 of the Copyright Act, "the fair use of a copyrighted work” does not constitute copyright infringement. It specifically permits the use of copyrighted work if it is "for purposes such as criticism, comment, news reporting, teaching ..., scholarship, or research." The Copyright Act sets forth an nonexhaustive list of  factors to consider when determining if a use 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."

Facts of Google v. Oracle

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, which code arguably has a functional role in that it informs how certain other code should be read. Google 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; (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.

Copyright Law Issues Before the Supreme Court

Google appealed the Federal Circuit’s decision to the U.S. Supreme Court. In its petition for certiorari, it urged the justices to resolve the existing circuit split on the appropriate standard for determining the circumstances under which a software interface is copyrightable.

“Because new software builds on components of existing software, innovation in this field largely depends on how copyright law treats software interfaces, the essential building blocks of software development,” Google wrote. “The Federal Circuit has upended the computer industry’s longstanding expectation that developers are free to use software interfaces to build new computer programs.”

The Supreme Court granted certiorari on November 15, 2019. The justices have agreed to consider two questions: “(1) Whether copyright protection extends to a software interface; and (2) whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.”

What’s Next?

The Supreme Court’s decision is predicted to have a significant impact on the software industry, as it involves two important issues: whether copyright protection extends to a software interface and how to apply the fair use doctrine in the context of computer code. Not surprisingly, it has been dubbed the “copyright lawsuit of the decade.”

Oral arguments have not been scheduled, but a decision is expected by the end of the term in June 2020. Scarinci Hollenbeck’s intellectual property and copyright attorneys will be closely following the case, and we encourage you to check back regularly for updates.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Bill Samuels, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.