Summary

On April 5, 2021, the US Supreme Court held in a 6-2 decision that Google’s copying of computer code from Oracle’s Application Program Interfaces (APIs) into new API’s used in Google’s Android™ operating system was a transformative work, and therefore a “fair use” under US Copyright law. ¹ This decision expands the fair use exception, which will benefit proponents of interoperability as well as API software developers, and slightly diminish copyright protection for certain IP rights holders but encourage obtaining patent rights in APIs. The fair use exception is a defense to copyright infringement, and is codified in US Copyright Act. ² In recent years, US courts have been busy shaping the scope of the fair use exception, which has traditionally relied on principles of criticism, commentary, news reporting, teaching, scholarship or research. ³ The present decision relies on the principle of transformation, wherein the alleged infringer transforms an original copyrighted work into a new work. The Supreme Court first used the transformation principle in 1994 to uphold the creation of a rap song parody by 2 Live Crew, which copied the opening lyrics and bass riff of the popular song “Oh, Pretty Woman,” originally co-authored by Roy Orbison in 1964, but then substantially deviated from the original lyrics and music. ⁴ In the present decision, the Court relied on the purpose and character of Google’s copying to find that the new APIs it had created were transformative, and therefore a fair use under US Copyright law.

Background of the case

The case between Google and Oracle originated from a licensing offer from Oracle’s predecessor, Sun Microsystems, which attempted to license certain JAVA APIs to Google for use in an early version of Google’s Android™ operating system. The APIs were used to enable programmers to call certain implementing programs to perform particular tasks in the JAVA programming environment. After licensing negotiations between the parties failed, Google copied about 11,500 lines of program code and used the copied code in newly written APIs. Google‘s new APIs with the copied code were released in an early version of the Android™ operating system, but were later discontinued by Google from further use after Oracle filed its copyright infringement suit. After two district court decisions and two appeals to the US Court of Appeals for the Federal Circuit, Google appealed its case to the US Supreme Court.

The Court’s analysis

Without directly addressing the specific issue of whether Oracle’s APIs could be protected under US Copyright law, the Supreme Court analyzed the fair use exception using a four-factor test outlined under US Copyright law. ⁵ The four factors are the nature of the copyrighted work, purpose and character of the use, amount and substantiality of the portion used and the effect of the copying in the market for or value of the copyrighted work. ⁶ The Court held that evaluation of all four factors favored a finding of fair use, but most importantly, the Court found that the second factor, the purpose and character of the use, were transformative since “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,” and “Google’s 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.” ⁷

Impact on IP rights holders

The finding of fair use transformation in Google’s copying of Oracle’s programming code used in its JAVA APIs will likely have limited applicability in the software industry. When copying certain portions of previously existing third-party APIs, software developers working on interoperability solutions between platforms and devices, as well as developers of new APIs, will likely benefit from the Supreme Court’s decision in this case, since they will likely find safety from copyright infringement liability in the fair use provisions of US Copyright law. On the other side, authors and owners of existing and new APIs will have to potentially find intellectual property rights based on US Patent law rather than copyright for their APIs and associated programming code.

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^{1. Google LLC v. Oracle America, Inc., 593 U. S. ____ (2021).}

^{2. 17 USC §107.}

^{3. See US Copyright Office Fair Use Index at https://www.copyright.gov/fair-use/fair-index.html.}

^{4. See Campbell v. Acuff-Rose Music, Inc., 510 U. S. 569, 577 (1994).}

^{5. 17 USC §107.}

^{6. 593 U. S. ____ (2021), pp. 21-35.}

^{7. Id. at 3.}

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