Supreme Court Leaves as Many Questions as It Answers in 'Google v. Oracle'

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The Court cleared Google of copyright infringement in terminating a 16-year long dispute as to whether Google's Android mobile platform had infringed Oracle's Java programming language's copyright. However, the Court did not answer the question of whether specific components of computer software qualifies for copyright protection at all.

On April 5, 2021, the U.S. Supreme Court ended a copyright case that left as many questions as it gave answers, in Google LLC v. Oracle America, Inc., 141 S.Ct. 1183 (2021). In a lengthy decision, the Court cleared Google of copyright infringement in terminating a 16-year long dispute as to whether Google's Android mobile platform had infringed Oracle's Java programming language's copyright. A 6-2 panel (Justice Barrett did not participate) found in favor of Google, holding that its use the copied code constituted fair use. However, the Court did not answer the question of whether specific components of computer software qualifies for copyright protection at all.

Google v. Oracle Factual Background

The dispute started in 2005 when Google first acquired Android, Inc. and its operating system for mobile devices. Shortly after acquiring Android, Google began talks with Sun Microsystems (now Oracle) to license the Java platform for new smartphone technology. At the time, Java was understood by many developers and as many as six million programmers had spent time learning and using Java. However, Sun insisted that Java programs be "interoperable," or able to be run on any device regardless of the underlying hardware. When Google and Sun could not reach an agreement on the interoperability of programs made for Android, negotiations broke down.

For three years, approximately 100 Google engineers worked to create Google's Android software writing millions of lines of new code. Because Google wanted programmers familiar with Java to be able to write software for Android, Google also copied roughly 11,500 lines of code from the "Java SE" program's Application Programming Interface (API). The API was a tool that allowed programmers to use prewritten code to build certain functions into new programs rather than write new lines of code from scratch. In creating Android's API, Google copied 37 packages verbatim from the Java API.

The Federal Circuit held that Google's copying of the code constituted infringement of a valid copyright and did not constitute fair use. Finding that a holding for Google on either the valid copyright claim or fair use claim would dispense with the suit, the Supreme Court held that it would not analyze whether the Java API was properly the subject of copyright, noting that "the rapidly changing technological, economic, and business-related circumstances" the court would "assume, … purely for argument's sake, that the entire Sun Java API falls within the definition of that which can be copyrighted." The Court went on to find that Google's use was a fair use, analyzing the four enumerated factors in 17 U.S.C. §107.

Fair Use Analysis

In determining that it could decide the question of fair use, the Court noted that fair use is "a mixed question of law and fact" and that "a reviewing court should try to break such question into its separate factual and legal parts, reviewing each according to the appropriate legal standard." Here, the Court had the benefit of years of factual determinations made by a jury at the district court, and made legal determinations de novo.

Nature of the Copyrighted Work

The Court started its fair use determination by analyzing the second factor, "[t]he Nature of the Copyrighted Work." Specifically, the Court posited that the Java API had three essential parts:

  1. "implementing code," which actually instructs a computer on the steps to follow;
  2. a method call which actually calls up each task; and
  3. "declaring code" that will associate the writing of a method call with particular "places" in the computer that contain the needed implementing code.

The Court found that the declaring code of the Java API and its value derived significantly not from those who actually hold the API copyrights, but from programmers who can then use that code in other software. Because the declaring code was "inextricably bound together with a general system," it was "bound up with the idea of organizing tasks" and was "further than … most computer programs … from the core of copyright protection." This factor favored fair use.

Purpose and Character of the Use

Next, the Court analyzed "[t]he Purpose and Character of the Use" to determine if the copier "add[ed] something new, with a further purpose or different character, altering the copyrighted work with new expression, meaning, or message." It found that while Google copied portions of the Java API precisely, it did so to enable programmers to call up implementing programs to accomplish particular tasks — the same reason Sun created the copied portions of code.

The Court also found that Google sought to create new products to "expand the use and usefulness of Android-based smartphones." The Court found that "Google, through Android, provided a new collection of tasks operating in a distinct and different computing environment" and noted that although Google's use was commercial, the overwhelming strength of factors pointed towards fair use.

Amount and Substantiality of the Portion Used

Third, the Court analyzed "[t]he Amount and Substantiality of the Portion Used." In isolation, the copied code accounted for 11,500 lines out of 2.87 million total lines of code. Taken in its totality and considering Google's purpose of attempting to enable Java programmers to more readily create programs for the Android platform, the third factor also weighed in favor of fair use.

Effect of Use on the Market

Fourth, the Court analyzed "Market Effects" and found that the factual record indicated that Oracle "was poorly positioned to succeed in the mobile phone market," its "many efforts to move into the mobile phone market had proved unsuccessful," and this failure was not attributable to Google's development of Android. The Court also noted that devices using Google's Android platform "were different in kind from those that licensed" the Java technology. While simpler devices, such as the Kindle, used Java software, advanced products, such as the Kindle Fire, were built on Android instead.

These important differences indicated that Google's Android platform was not a market substitute for Java's software. Instead, Google's use of Java's API would likely further expand the network of Java-trained programmers, and because the two markets were different, one could then theoretically learn Java to then work on non-Android based platforms such as laptops. The Court believed that such an expansion would benefit Oracle. Ultimately, the court found that this factor, too, weighed in favor of fair use.

Conclusion

The Court "reach[ed] the conclusion that … where Google reimplemented a user interface, taking only what was needed to allow users to put their accrued talents to work in a new and transformative program, Google's copying of the Sun Java API was a fair use … as a matter of law" without answering the question of whether the copied code was the proper subject of copyright law at all. How the decision will affect the scope of copyright as it relates to hot-button technology, such as source code, remains to be seen and will be the subject of further debate. Until a decision defines the scope of software's eligibility for copyright, developers should be prepared to determine if copying of code constitutes fair use.

Published in The Intellectual Property Strategist (May 2021). Reprinted here with permission.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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