May 11, 2021

Volume XI, Number 131

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May 11, 2021

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May 10, 2021

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SCOTUS says ‘Fair Use’ in Google v. Oracle Copyright Battle

In a 6–2 decision authored by Justice Breyer, the Supreme Court of the United States reversed the US Court of Appeals for the Federal Circuit’s 2018 ruling that Google’s use of Oracle’s Java application programming interface (API) packages in its Android operating system did not qualify as fair use as a matter of law. Before that Federal Circuit decision could be sent back for a trial on damages for copyright infringement (where it was anticipated that Oracle would seek damages upward of $10 billion), the Supreme Court granted certiorari to consider (1) whether copyright law protects an API, and (2) whether Google’s use of Oracle’s APIs in creating a new computer program constitutes fair use. Google LLC v. Oracle America, Inc., Case No. 18–956 (S Ct Apr 5, 2021) (Breyer, Justice) (Thomas, Justice, dissenting)

IN DEPTH


BACKGROUND

In 2005, Google acquired Android and began the creation of its now-famous Android software platform for mobile devices. Google’s plan was to make Android a free and open platform, enabling software developers to build upon it for their respective mobile applications.

Sun Microsystems was the original inventor of the Java programming language and Oracle’s predecessor. At the time of Google’s acquisition of Android, many software developers understood and wrote programs using the Java language, with many of those developers using the Sun Java SE platform to write interoperable programs for desktop or laptop computers.

With its goal of developing the Android platform for mobile devices, Google began talks with Sun about the possibility of licensing the entire Java platform. However, the parties’ views regarding Google’s desired free and open-source nature of the Android platform were not compatible. The negotiations fell apart, leaving Google to build its platform, tailored to smartphone technology, on its own.

In creating its Android platform for mobile devices, Google wrote millions of lines of new code. But, Google also copied a portion of Sun’s Java SE program, constituting roughly 11,500 lines of code comprising 37 Java API packages, which can be described as pre-written computer source code programs that allow programmers to build and customize their own programs. Here, the Java APIs organize and declare certain functions or specific tasks when interacting with Google’s own task-implementing codes.

By the time Oracle Corporation bought Sun in 2010, the Android platform was a notable success. Oracle promptly filed a lawsuit for patent and copyright infringement. The first trial resulted in the district court’s judgment for Google ruling that the API packages were not copyrightable as a matter of law. Oracle appealed, which resulted in the Federal Circuit finding that the Java API packages were entitled to copyright protection given the “declaring code and the structure, sequence, and organization…” of the APIs, and remanding for further proceedings on Google’s copyright infringement defense of fair use.

The second jury trial resulted in a favorable ruling for Google finding fair use of the copyrighted API packages. On Oracle’s further appeal, the Federal Circuit reversed the district court and held that, as a matter of law, Google’s use of the Java APIs did not constitute fair use (“[t]here is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.”)

Before making it back to the district court on the issue of damages, Google filed a certiorari petition in January 2019 and asked the Court to review both Federal Circuit decisions. On November 15, 2019, the Supreme Court granted Google’s certiorari petition.

OPINION OF THE COURT

The Supreme Court granted certiorari on two questions:

  1. Whether Oracle’s Java API was copyrightable

  2. Whether Google’s use of the API constituted “fair use.”

Since a holding for Google on either question would otherwise be a rejection of Oracle’s copyright claims, and in the interests of not unduly obstructing an environment of “rapidly changing technological, economic, and business-related circumstances,” the Supreme Court declined to “answer more than is necessary to resolve the parties’ dispute.” The Court framed its decision on the assumption that the entire Java API is copyrightable and therefore examined only whether Google’s use of part of that API was a “fair use” under the four factors comprising the fair use inquiry: (1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion used, and (4) the market effects.

The Supreme Court began its assessment of the second factor and held that the nature of the copyrighted work weighed in favor of a finding of fair use. The Court explained that because the building block nature of the API results in functional declaring codes for task division and organization, as opposed to the more “creative expression” found in implementing code (which Google did not copy), Google engaged in fair use when it copied the portions of the Sun Java API at issue.

The Supreme Court then turned back to the first factor (the purpose and character of the use), which often considers the extent to which the secondary work is transformative and adds something new to alter the expression or meaning of the original. On this factor, the Court found that Google used parts of the Sun Java API to create a new platform with “a new collection of tasks operating in a distinct and different computing environment. Those tasks were carried out through the use of new implementing code (that Google wrote) designed to operate within that new environment.” Thus, the Court concluded that the purpose and character of Google’s copying was transformative and weighed in favor of fair use. While the commerciality of use of the copyrighted work is also considered as part of the first factor, it is not dispositive, and here the Court found that the commercial nature of the Android platform did not overwhelm the fair use assessment in light of the “inherently transformative” use of the Java API.

The third factor, the amount and substantiality of the portion of the copyrighted work used, was also found to weigh in Google’s favor. The Supreme Court held that the amount of code Google copied was small relative to the amount of code contained in the Android platform. Moreover, the Court cited its application of the factors in Campbell v. Acuff-Rose Music and explained that the substantiality factor generally weighs in favor of fair use when “the amount of copying is tethered to a valid, and transformative, purpose.” Google’s transformative purpose was the creation of the new Android platform for mobile devices.

Turning to the fourth and final fair use factor, the potential for market harm and whether the secondary work usurps the market for the original by offering a competing substitute, the Supreme Court determined that “Sun was poorly positioned to succeed in the mobile phone market” in the first place, and that Google’s Android platform catered to a different kind of device (mobile) than Sun’s platform (desktop computer/laptop). “Google’s Android platform was part of a distinct (and more advanced) market than Java software.” Therefore, the Court determined that the market effects factor also weighed in favor of fair use.

In closing, the Supreme Court noted that its ruling only applied to the specific code at issue in the case, and not to software generally. It also emphasized the importance of protecting the public interest by not limiting the future creativity of programmers who had already invested in learning Sun’s Java API, but who would be violating copyright laws when using the pre-existing API building blocks in their future creative endeavors if Oracle was successful in terms of its enforcement. Reversing the Federal Circuit’s judgment, the Supreme Court determined that Google’s copying and use of “only what was needed” from a known user interface for a “new and transformative” program was fair use of the existing material as a matter of law.

DISSENT

Justice Thomas, with whom Justice Alito joined, authored the dissent. According to the dissent, Oracle’s declaring code was central to its business model and was copyrightable. Thus, Google’s copying and use of the code was “anything but fair.”

In Thomas’ opinion, Oracle’s declaring code was not unprotectable simply because it is functional. While Oracle cannot copyright the idea of using declaring code, it can copyright the specific expression of that idea. Thomas thus criticized the Court’s baseline assumption that declaring code is protected under copyright without engaging in any real analysis of that question.

According to the dissent, three of the four fair use factors relied on by the Court favored Oracle, not Google. Under the market effects factor, the dissent noted that Google interfered with opportunities for Oracle to license the Java platform to developers of smartphone operating systems. The dissent also disagreed with the assessment of the purpose and character of use, finding that the use of APIs for their same essential purposes was derivative (and thus protected by copyright) rather than transformative. Finally, the dissent found that the portion of the work used by Google was “substantial” given that the dissent perceived the copied code to be what attracted programmers to the platform and “is what made Android a ‘market substitute’ for ‘potentially licensed derivatives’ of Oracle’s Java platform.”

PRACTICE NOTE

This decision suggests that the Supreme Court is cognizant of the rapid and exponential growth of technology and the importance of a system that allows for innovation built on pre-existing, standard industry knowledge, functionality and practices in order to prevent the hindrance of progress.

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© 2021 McDermott Will & EmeryNational Law Review, Volume XI, Number 104
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About this Author

Sarah Bro, McDermott Will Emery Law Firm, Intellectual Property Attorney
Associate

Sarah Bro is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Orange County office.Sarah focuses her practice on trademark prosecution and trademark litigation support.

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Ewa A. Wojciechowska IP Attorney McDermott Will and Emery
Associate

Ewa A. Wojciechowska focuses her practice on intellectual property litigation matters.

While in law school, Ewa served as a judicial extern to the Hon. Matthew F. Kennelly of the US District Court for the Northern District of Illinois, and as a patent legal intern for a leading medical device and healthcare company. During her last year in law school, Ewa completed a full semester’s study at Universidad de Navarra in Pamplona, Spain, where she expanded her legal knowledge by gaining a unique, international perspective on the practice of law and...

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