April 19, 2021

Volume XI, Number 109

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April 16, 2021

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United States Supreme Court Rules for Google in a Landmark Fair Use Decision

On April 5, 2021, the United States Supreme Court issued a significant fair use decision, holding six to two that Google’s copying of 11,500 lines of code from Oracle’s Java SE API in Google’s Android platform was a fair and transformative use. 

The Court pushed the boundaries of the “transformative” test beyond determining whether the use is different than the one originally intended by the copyright holder, and in doing so, handed Google a major legal victory in a case with extremely high stakes given the ubiquity of Google’s Android platform in smartphones worldwide.

When Google designed its Android platform, it made it free to developers to allow them to build applications for smartphones that, in the words of the Court, “make the phone better.”

In doing so, Google wanted millions of programmers already familiar with the popular Java programming language to be able interact easily with the Android platform.  So Google included a user interface – called an API -- through which programmers could run common computer programs via a series of menu commands.  Google knew that programmers were familiar with the commands, or “method calls,” in Sun’s Java SE API (later acquired by Oracle) that directed the computer to perform those common tasks, so Google sought to mimic that same instruction set. 

For example, when a programmer wanted to compare two integers in order to determine which one was greater, the programmer would type “java.lang.Math.max”, a method call that would instruct the computer to find the program elsewhere in the API that would perform that operation.  This shorthand and others like it saved programmers from having to re-program thousands of common tasks by the simple use of Java SE API commands with which they were already familiar. 

While Google wrote its own code for the programs that actually performed the operations – known as the implementing code – it copied from Oracle the 11,500 lines of code that enabled programmers to use that structured instruction set, analogized by the Court to a filing system (known as the declaring code).  Notably, Google had tried four times to license the declaring code from Google, but negotiations fell apart and Google copied it anyway.

There were two questions before the Court: i) whether Oracle’s Java API was copyrightable in view of a statutory provision that permits copyrighting of computer programs and another that forbids copyrighting “processes” and “methods of operations”; and ii) whether, assuming copyrightability, Google’s use was a “fair use.”  Because the Court found for Google on fair use, and this finding was sufficient to resolve the case in Google’s favor, the majority did not address copyrightability.

A jury had previously found that Google’s copying was fair use, but the Court of Appeals for the Federal Circuit overturned that finding, ruling that fair use was ultimately a legal question for judges to review de novo.  Although the Supreme Court agreed with the standard of review for fair use, the Court reversed Federal Circuit’s legal conclusion on the merits.

In arriving at its decision, the Court analyzed the four statutory fair use factors in 17 U.S.C. § 107: i) the nature of the copyrighted work; ii) the purpose and character of the use; iii) the amount and substantiality of the portion used; and iv) market effects.

With respect to the first factor, the Court acknowledged that the declaring code is part of a computer program, which has been expressly accorded protection under the Copyright Act.  Declaring code, however, is “inextricably bound up” with non-copyrightable ideas such as “the division of computing tasks,” “organizing tasks into what we have called cabinets, drawers and files,” and specific commands with which programmers were familiar like “java.lang.Math.max.”  By contrast, copyrightable implementing code – which Google did not copy –requires a great deal of creativity to develop for use “not in laptops or desktops but in the very different context of smartphones.” Thus, unlike implementing code, the declaring code is “further than most programs from the core of copyright” because its value derives not from its creativity but from the fact that it encourages programmers to learn the system so that they will use Oracle implementing programs.

Turning to the purpose and character of the use, the Court found that Google’s copying of the declaring code was “transformative” even though Google used the code for the same purpose that Sun developed it – to enable programmers to call up specific functions in the implementing code.  Google’s use of the declaring code in the Sun Java API to “create a new platform that could be readily used by programmers [for smartphones] ... was consistent with the constitutional objective of copyright itself … ‘[t]o promote the Progress of Science and the useful Arts’ (quoting U.S. Const., Art. I, § 8, cl. 8).”  The Court stressed that while Sun had created the API for desktop and laptop computers, Google “reimplemented” it for smartphone programs “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.”  Thus, Google used the Sun Java API code in a transformative way to enable programmers already familiar with it to develop programs for smartphones using the new Android platform.

With respect to the amount and substantiality of the portion used, the Court stressed that Google used only 11,500 lines of code out of 2.86 million, which amounted to .4%, and that the majority of the Android code was implementing code that Google rewrote.  The declaring code should not be viewed in isolation, according to the Court, because Google’s objective was to permit programmers familiar with the Sun Java API instruction set and to write new programs for smartphones on the Android platform.  And if developers would have been forced to learn a new command syntax, they would not have been as willing to develop new programs for the smartphone platform, which would have been inconsistent with the constitutional objective of copyright law.  “In a sense, the declaring code was the key that [Google] needed to unlock the programmers’ creative energy.”  Thus, the Court found Google on the substantiality factor as well.

Addressing the market effect factor, the Court stated that potential loss of revenue “is not the whole story.”  It noted that a “lethal parody, like a scathing theater review, ‘may kill demand for the original,” quoting from Campbell v. Acuff-Rose Music, 510 U.S. 569 at 591-92 (1994), “yet this kind of harm, even if directly translated into foregone dollars . . . is not cognizable under the Copyright Act.”  The Court also referred to evidence that Sun was not well positioned to succeed in the smartphone marketplace and that they had tried and failed to do so.  It highlighted the fact that Google’s Android operated on more sophisticated devices like smartphones whereas Java SE was used on the Kindle and on simpler phones that lacked a touchscreen, so Android was not a market substitute for Java SE.  The Court referred to expert testimony that Android would benefit Oracle because it would encourage more programmers to learn Java, causing them to bring their talents to using Java to programming for laptop and desktops.  Finally, the Court stated that in view of programmers’ strong familiarity with the Sun Java API, enforcing Oracle’s copyright “would risk harm to the public” and would make the Sun declaring code “a lock limiting the future creativity of new programs” to which “Oracle alone would hold the key.”  For these reasons, the Court found in favor of Google on the market effects factor as well.

In sum, the Court held, Google’s copying of the declaring code – which it called “reimplent[ing] a user interface” -- was fair use because it allowed programmers to employ their familiarity with that the Java SE interface in the context of Android, which was “a new and transformative program.”

Justice Thomas, who was joined by Justice Alito, dissented.  He found that the majority’s distinction between the declaring code and the implementing code was artificial, pointing out that nowhere does the Copyright Act, which expressly grants copyright protection to computer programs, make such a distinction.  He argued that the majority’s failure to analyze copyrightability led it to a result that was not justified by the Act, and the fact that the code is bound together with uncopyrightable ideas should not disqualify it from protection.  “Books are inherently bound with uncopyrightable ideas – the use of chapters, having a plot, or including a dialogue or footnotes.  This does not place books far ‘from the core of copyright.’”  Further, the fact that third parties such as programmers invested lots of time in learning the Java SE commands should make no difference to copyrightability: “[A] theater cannot copy of script – the right to which are held by a smaller theater – simply because it wants to entice actors to switch theaters and because copying the script is more efficient than requiring the actors to learn a new one.”  Justice Thomas also disagreed vehemently with the majority’s finding on market effects, stating that the fact Oracle had not itself entered the smartphone marketplace did not mean that it could not have licensed others such as Google to do so.  He pointed out that Oracle was significantly harmed as a result of Google’s not having paid for a license, as third parties “no longer saw much reason to pay to embed the Java platform.”  That included companies who had previously licensed Java SE, including Amazon, who was able to negotiate a 97.5% discount in its license fee from Oracle, and Samsung, whose contract with Oracle dropped from $40 million to $1 million after Google’s copying.

This decision set an important and unique precedent in the realm of fair use. Here, for a use to be “transformative,” it can still be offered for a purpose that is the same as the author’s intended use.  Based on this decision, the copier’s use can be deemed fair if it encourages further creativity, consistent with the constitutional goal of copyright law to promote the progress of science and the useful arts.  Here, Google’s use of the declaring code was still found to be transformative because Google “reimplemented” the Java SE interface in Android, thus encouraging those already familiar with Java SE for laptops and desktops to use Java SE to develop smartphone programs.

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©1994-2021 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume XI, Number 96
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About this Author

Michael Greis, Mintz Levin Law Firm, Intellectual Property Law Attorney, New York
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Michael is an intellectual property attorney whose practice encompasses trademark and copyright enforcement, technology and licensing transactions, patent and trademark portfolio management, and counseling clients on intellectual property issues that arise in business deals. He also has extensive experience in cybersecurity, privacy, and social media law. His clients range from start-ups to Fortune 500 companies in a broad range of industries, including technology, manufacturing, sports & entertainment, and digital & social media.

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Matthew C. Hurley, Intellectual Property Attorney, Mintz Levin, Patent Litigation Arbitration, Mediation, ADR Federal District Court Complex Commercial Litigation Trademark Litigation
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Matt is the Section Manager for the Intellectual Property Section at Mintz. The primary focus of Matt’s practice is the representation of life sciences companies in disputes involving collaboration agreements, patent licenses, supplier agreements, and distribution contracts. Matt has a deep understanding of the legal and business issues that arise in the life sciences industry and has successfully represented clients in litigation over research, development, commercialization, licensing, royalties, and distribution. Matt also represents companies in patent, trademark, copyright, and other...

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Geoffrey A. Friedman, Mintz Levin, Litigation lawyer, Boston Attorney
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Geoff focuses on litigation matters in the firm’s Boston office. Prior to joining Mintz, Geoff served as a law clerk to the Honorable Raymond C. Fisher of the US Court of Appeals for the Ninth Circuit and the Honorable Christina A. Snyder of the US District Court for the Central District of California.

During law school, Geoff was a member of the Board of Student Advisors and a teaching assistant for the first-year legal research and writing course. He was a summer associate at another international law firm.

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