IP Law Daily Google’s copying of Oracle’s Java code to create Android was fair use
Monday, April 5, 2021

Google’s copying of Oracle’s Java code to create Android was fair use

By Thomas Long, J.D.

Google prevails in what it has called "the copyright case of the decade."

Google LLC’s copying of approximately 11,000 lines of code from the Java SE application programming interface to create the Android mobile operating system was a fair use of that material as a matter of law and did not support copyright infringement by the code’s owner, Oracle America, Inc., the U.S. Supreme Court has held in a six-to-two decision. In what Google has called "the copyright case of the decade," the Court held that Google’s use included only those lines of code that were needed to allow programmers to create a new and transformative program. The opinion was authored by Justice Stephen Breyer. Justice Thomas wrote in dissent and was joined by Justice Samuel Alito. Justice Amy Coney Barrett did not participate (Google LLC v. Oracle America, Inc., April 5, 2021).

Java API dispute. In its complaint, filed in the Northern District of California, Oracle asserted that Google’s unauthorized use of 37 packages of Oracle’s Java application programming interface (API packages) in Android infringed Oracle’s patents and copyrights. An API package is a collection of classes; each class contains methods and other elements. Each method performs a specific function, sparing a programmer the need to write Java code from scratch to perform that function. At issue were API packages from Java SE Version 1.4 and Version 5.0. The U.S. Court of Appeals for the Federal Circuit held in May 2014 that the API packages were entitled to copyright protection. Google did not dispute that it copied the declaring code of the 37 Java API packages. It also copied the "Single Sign-On" (SSO) of the Java API packages. Google then wrote its own implementing code.

Lower court proceedings. A jury found in favor of Google based on its fair use defense. Oracle appealed to the Federal Circuit, which reversed. The appellate court held that Google’s use of Oracle’s Java API interfaces in its Android operating system, while not done in bad faith, was highly commercial and non-transformative. Although the nature of the work was primarily functional, in the court’s view Google used a substantively significant portion of the code and copied far more lines than was necessary for offering Java compatibility. Most importantly, Google deprived Oracle of a significant potential market in the mobile phone market segment, said the court.

Parties’ arguments. Google petitioned the High Court for review, and the Court granted the petition. Google argued that it did not infringe Oracle’s copyrights because protection under the Copyright Act does not extend to any system or method of operation, or to one of only a few ways to express or embody the system or method. According to Google, the Java declarations reused by Google, as well as the Java libraries’ organizational system, should receive no copyright protection because they are entirely functional. Google further contends that even if the Court concludes that Google’s reuse of the code infringed copyright, there is no basis to overturn the jury’s finding of fair use.

Google also put forth policy arguments in favor of its position. "The Federal Circuit’s rulings are inconsistent with both basic copyright principles and the role of the jury in our justice system," its brief argues. "They would disrupt the ongoing development of modern, interoperable computer software. The judgment of the court of appeals should be reversed."

Oracle countered by pointing out that computer programs are protected as "literary works" under the Copyright Act, and that Google "copied 11,330 lines of Oracle’s original and creative computer code, as well as the intricate organization of its computer program, into a competing software platform, Android." Oracle argued that Java SE’s declaring code and organization are protected under Section 102(a) of the Act, adding that Oracle sought protection only for its particular expression, not ideas. Further, Oracle contended that Google’s copying was an unfair superseding use because Google’s use was commercial and for the same purpose as Oracle’s; Google copied creative and expressive portions of Oracle’s work; Google’s copying was substantial; and Android harmed Java SE in actual and potential markets.

Google’s policy arguments are "misplaced and misguided," Oracle also contended. "By adopting the same approach to software as other literary works, Congress preserved the flexibility inherent in copyright doctrine, which protects authors’ original expression, regardless of format, while allowing later uses of existing works in ways that do not supersede the objects of the original," Oracle stated in a brief. "It is under the current rules and incentives that the U.S. software industry has enjoyed its meteoric rise." According to Oracle, "neither Google nor its amici cite a single real-world example of any innovation being chilled."

Questions addressed by Court. Google’s petition for a writ of certiorari asked the Court to consider: (1) whether copyright protection extends to a software interface and (2) whether Google’s use of a software interface in the context of creating a new computer program was fair use. Justice Breyer, writing for the majority, explained why the Court based its decision only on the second question. "Given the rapidly changing technological, economic, and business-related circumstances, we believe we should not answer more than is necessary to resolve the parties’ dispute," Justice Breyer said. "We shall assume, but purely for argument’s sake, that the entire Sun Java API falls within the definition of that which can be copyrighted." Turning then to the question of fair use, the Court reached the opposite conclusion from the Federal Circuit and decided that the defense covered Google’s actions in this case.

Standard of review. The Supreme Court agreed with the Federal Circuit on one point: that fair use was a mixed question of fact and law, and that reviewing courts should try to break fair use questions into separate factual and legal parts, reviewing each according to the appropriate legal standard. However, in the Court’s view, the ultimate fair use question was primarily legal in nature. The Court therefore rejected an argument by Google that the Court should restrict its analysis to deciding whether the jury’s fair use determination was supported by substantial evidence. Noting that fair use originated as a judge-made doctrine, the Court explained that judicial interpretation provided valuable insight; it also rejected Google’s contention that the Federal Circuit’s approach in reviewing legal questions de novo violated Google’s Seventh Amendment right to trial by jury.

Fair use test. In addressing the main legal question before it—whether Google’s copying of the Sun Java API, specifically its use of the declaring code and organizational structure for 37 packages of that API, was a "fair use"—the Court considered the four factors set forth in Section 107 of the Copyright Act as it deemed them applicable to the kind of computer programs involved here.

Nature of the copyrighted work. Beginning with the second fair use factor, the Court noted that the Java API is a "user interface." An API contains three parts. The first part, the "implementing code," which instructs the computer on the steps to follow to carry out each task, was not as issue because Google had written its own implementing programs. In the second part, the API associated a particular command, called a "method call," with the calling up of each task. Oracle did not assert that Google infringed its copyrights by using these commands. Finally, there is the "declaring code," which labels the particular tasks in the API and organizes those tasks, or "methods," into "packages" and "classes." Oracle did accuse Google of infringing by using the Java API’s declaring code. Justice Breyer pointed out that declaring code, by its nature, was "inextricably bound together" with a general system, the division of computing tasks, that no one claimed was protected by copyright, as well as other unprotectable ideas and functions. As part of a user interface, declaring code differs from other, more ordinary types of programs because of its inherent binding together with uncopyrightable ideas and new creative expression (such as Android’s implementing code).

"Unlike many other programs, its value in significant part derives from the value that those who do not hold copyrights, namely, computer programmers, invest of their own time and effort to learn the API’s system," Justice Breyer explained. "And unlike many other programs, its value lies in its efforts to encourage programmers to learn and to use that system so that they will use(and continue to use) Sun-related implementing programs that Google did not copy."

This factor, the Court decided, pointed in the direction of fair use.

Purpose and character of the use. Next, the Court held that Google’s use of the Java API code was "transformative" because it was aimed at creating new products and to expand the use and usefulness of Android-based smartphones. "Its new product offers programmers a highly creative and innovative tool for a smartphone environment," Justice Breyer wrote. "To the extent that Google used parts of the Sun Java API to create a new platform that could be readily used by programmers, its use was consistent with that creative ‘progress’ that is the basic constitutional objective of copyright itself."

Google copied the API—which originally was created for desktop and laptop computers—only to the extent necessary to allow programmers to call upon tasks that would be useful in smartphone programs. Google, through Android, provided a new collection of tasks operating in a distinct and different computing environment, which were carried out through the use of new implementing code designed to operate within that new environment. The Court noted that the jury had heard evidence that this type of "reimplementation" of interfaces was necessary for the development of software and was common in the industry. Accordingly, the Court held that this factor also favored a finding of fair use.

Amount and substantiality of the portion used. Google copied the declaring code for 37 packages of the Java API, totaling approximately 11,500 lines of code—virtually all the declaring code needed to call up hundreds of different tasks. However, compared to the entire set of software material in the Java API, the quantitative amount copied amounted only to about 0.4 percent. Rather than viewing the copied lines of code in isolation, the Court reasoned that features of Google’s copying suggested that it would be better to take into account the several million lines that Google did not copy. First, the API was "inseparably bound" to the task-implementing lines it called up. Second, Google didn’t copy the lines "because of their creativity, their beauty, or even (in a sense) because of their purpose." Google copied the code because its programmers had already learned to work with the Java API’s system, and it would have been difficult or even impossible to attract programmers to build the Android smartphone system without them. "Further," Justice Breyer wrote, "Google’s basic 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." In the Court’s view, Google did not copy more than was reasonably necessary to achieve its basic objective; therefore, this factor, too, weighed in favor of fair use.

Market effects. The evidence showed that Google’s new smartphone platform was not a market substitute for Java SE, in the Court’s view. In addition, the record showed that Oracle itself would benefit from the reimplementation of its interface into a different market. The Court also expressed concern that finding copyright liability on these facts would risk harming the public by stifling or limiting creativity. The Court also took into account the "uncertain nature" of Oracle’s ability to compete in Android’s marketplace, given its (and its predecessor in interest, Sun’s) poor positioning to succeed in the mobile phone market. Accordingly, this factor weighed in favor of fair use.

Conclusion. "We reach the conclusion that in this case, 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 of that material as a matter of law," the Court stated. The Court reversed the Federal Circuit’s holding and remanded for further proceedings.

Dissenting opinion. Justice Thomas, joined by Justice Alito, dissented, calling the majority’s fair use analysis "fundamentally flawed." Justice Thomas opined that three of the fair use factors—all but the nature of the copyrighted work—weighed "decidedly" against Google. And that remaining factor could not by itself support a fair use finding, especially considering the fact that Congress had determined that declaring code was copyrightable. Justice Thomas particularly focused on the "market effects" factor, arguing that Google had "ruined Oracle’s potential market" by eliminating the reason manufacturers were willing to pay to install the Java platform and by interfering with opportunities for Oracle to license the Java platform to smartphone operating system developers. Justice Thomas also opined that the "overwhelming commercial nature" of Google’s copying weighed against fair use, and he rejected the majority’s conclusion that Google’s use was transformative. The majority’s holding, according to Justice Thomas, "eviscerate[s] Congress’ considered policy judgment."

Practitioner commentary.Jason Bloom, partner and chair of the Copyright Practice Group at Haynes and Boone, told Wolters Kluwer, "I find it interesting that the Court bypassed the copyrightability ground and focused on a defense. Ordinarily, a court would first determine if there is a claim before addressing defenses to that claim."

Bloom explained, "I think the Supreme Court intentionally dodged the copyrightability question in order to narrow the scope of the holding. By deciding the case on fair use, the Court was able to create a relatively narrow holding that, by design, will not likely have far-reaching impacts beyond this case and these parties." Pointing out that fair use always involves a fact-intensive inquiry, Bloom said, "The Court did go out of its way to say that it was not modifying any of its prior fair use precedent, so I do not think it intended to change the body of law. But fair use is such a fact intensive (and inconsistently applied) inquiry that outcomes are rarely predictable, even at the Supreme Court."

However, he pointed out that the Court’s opinion could be read to expand the meaning of transformative use to include uses that have traditionally been thought of as derivative and violative of copyright rights. "Rather than a use that transforms the work itself, which has been the traditional test, the majority’s opinion could expand the transformative use doctrine to any use that exploits the work in a different setting or format, or potentially to a different audience," Bloom said. "Here, the argument was not that Google transformed Oracle’s code, but rather that it used it in a different environment—smartphones."

In Bloom’s view, the decision’s broader effects on the software engineering field are difficult to gauge. "I think the ruling will make it much easier in future software cases to mount a successful fair use defense," said Bloom. "On one hand, that could discourage innovators like Oracle from creating open source languages, but it could encourage innovators like Google and programmers to create new applications and platforms."

Mike Davis, Founder and President of the Internet Accountability Project (IAP), a conservative advocacy group, expressed disappointment in the Court’s holding. "As Justice Thomas correctly stated in his dissent, ‘something is very wrong with our fair-use analysis,’" Davis said. "Instead of following the Copyright Act’s purpose of promoting innovation, this Supreme Court decision transforms the law into a get-away vehicle for copyright theft."

This case is No. 18-956.

Attorneys: Thomas C. Goldstein (Goldstein & Russell, PC) for Google LLC. Rosenkranz E. Joshua (Orrick, Herrington & Sutcliffe LLP) for Oracle America, Inc. Jason Bloom (Haynes and Boone, LLP).

Companies: Google LLC; Oracle America, Inc.

MainStory: TopStory Copyright TechnologyInternet GCNNews

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