IP Law Daily Supreme Court hears arguments in the ‘the copyright case of the decade’ over Google’s use of Oracle’s code in its Android OS
Wednesday, October 7, 2020

Supreme Court hears arguments in the ‘the copyright case of the decade’ over Google’s use of Oracle’s code in its Android OS

By Jody Coultas, J.D.

The Justices considered whether the JAVA API declaring code at issue was copyrightable, whether Google’s use of the code in Android constituted noninfringing fair use, and the policy implications of ruling in favor of either party.

In a suit that has the potential to upend the tech industry, the Supreme Court heard telephonic oral arguments from Google LLC and Oracle America, Inc. in a dispute over whether Google’s use of Oracle’s software code to create its Android system constituted copyright infringement. Google argued that Section 102(b) of the Copyright Act provides that the functionality of the computer code cannot be protected by a copyright. Even if the code were protected, according to Google, its use was noninfringing transformative fair use. Oracle countered that Congress mandated that original software code is covered by the Copyright Act, and that Google’s concession that the code at issue is original should put an end to this case. The Justices seemed concerned that ruling in favor of Oracle would significantly disrupt the software sector. On the other hand, they seemed sympathetic to Oracle’s assertion that computer code is creative and deserving of protection, even if it serves a functional purpose. Several Justices also expressed concern about the Federal Circuit’s review of the jury’s fair use finding. A decision is not likely to be issued until next year (Google LLC v. Oracle America, Inc.Dkt. 18-956).

In 2010, Oracle filed suit in the Northern District of California alleging copyright infringement arising from Google’s unauthorized use of 11,000 lines of declaring code to replicate the overall structure, sequence, and organization of the 37 Java API (application programming interface) packages that Oracle had created. 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 on appeal to the Federal Circuit were API packages from Java SE Version 1.4 and Version 5.0. The Federal Circuit had previously held 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.

A jury found in favor of Google based on its fair use defense. Oracle appealed to the Federal Circuit, which reversed, rejecting the fair use defense. The appellate court held that Google’s use of Oracle’s Java API interfaces in its Android operating system, while not 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.

Google, in its petition for review, asserted that the case presented two important questions concerning the copyrightability and fair use of software interfaces. The first question was whether copyright protection extends to a software interface—lines of computer code that are needed to enable developers to operate prewritten libraries of code for various tasks. The second question was whether Google’s specific use of the API packages in the context of creating a new computer program (the Android operating system) constituted fair use. Google further maintained that the lower courts need guidance on the fair-use doctrine in the context of computer code and that this case involved a high-profile dispute between two leading technology companies.

Google’s argument. On behalf of Google, Thomas Goldstein argued that under Section 102(b) of the Copyright Act Google has the right to "provide a certain functionality to make a computer do something." Because there is only one way to provide the method of operation in Java SE, there is no copyright protection. Specifically, the method of operations of Java SE is arguably a combination of commands by the developers and the declarations in Java SE. Preventing Google and others from using the declarations is essentially giving Oracle patent rights, Goldstein argued. Also, once Oracle published Java SE, Google had the right to create its own versions that provided the same functionality.

Justice Alito expressed concern that Google’s argument would result in all computer code losing Section 102(b) protection. Goldstein responded that Google’s argument is limited to instances where the function is disclosed and where there is only one way for the code to be written. Also, Goldstein pointed to the merger doctrine, which provides that where there is only one only one way to write the computer code that will provide a certain functionality, copyright protection is not available and the company must get a patent instead. To support its fair use defense, Google argued that it had no choice but to reuse Oracle’s code because there was no way to write a computer program that would respond to the developer's instructions without using Oracle’s limited set of instructions.

Several Justices asked about the Federal Circuit’s treatment of the jury’s fair use finding. Goldstein emphasized that the jury was presented with all the evidence, including that declarations were barely creative and were used by millions of creative computer programs.

A few of the Justices questioned whether Google could have spent the money to develop its own operating system that did not use Java code as Apple and Microsoft did. Goldstein answered that Google had no choice but to copy the code because it was so basic.

Oracle’s argument. E. Joshua Rosenkranz, arguing for Oracle, also noted that Apple and Microsoft were able to create their own operating systems without using Oracle’s code without spending billions of dollars and creating a situation where innovation and development was stifled. Also, the Copyright Act does not give Google a pass in this case just because it may have been difficult or expensive to create the Android system without copying Java SE.

Rosenkranz also disagreed with Justice Sotomayor’s suggestion that circuit courts, and the tech industry, have come to the understanding that declaring codes are not copyrightable. He noted that no case has ever held that one can copy this vast amount of code on any platform to use for the same purpose. Also, Rosenkraz argued that no court has drawn a distinction between implementing code and declaring code. Further, it was not true that the success of the software industry depends on licensed copying.

While many computer scientists have suggested that a ruling for Oracle would cause significant disruption to the market, Rosenkranz argued that a ruling for Google would decimate the incentive to create high quality user facing declaring code and destabilize the Copyright Act. The software industry has flourished under the current understanding of copyright protection, not unlicensed copying, Rosenkranz said. The market for licensed code would arguably be wiped out by a ruling for Google.

Justice Alito asked why the Federal Circuit was not required to apply the Rule 50 standard. Rozenkranz said that the Federal Circuit in effect did apply the "no reasonable jury standard" in examining the four fair use factors. "Having found that Factors 1 and 4 strongly favored Oracle and that Google's use was superseding, there was no other reasonable conclusion but that Google's use was an unfair use," Rozenkranz said.

Government’s argument. Deputy Solicitor General Malcolm L. Stewart argued on behalf of the federal government in favor of Oracle. Stewart suggested that a ruling in favor of Google would be an economic disincentive for developers to create computer code.

In response to Justice Thomas’s question about whether the Federal Circuit applied the correct standard of review, Stewart answered in the affirmative. He said that the correct inquiry is whether a reasonable jury, applying an accurate version of the law, could have found fair use. The Federal Circuit in this case assumed all facts in favor of Google and yet concluded that Google’s use of the Java code was not transformative.

Justice Sotomayor asked Stewart to explain why Google’s use of code on a new platform was not transformative. Stewart likened the situation to "a motion picture that has only been released in theaters and somebody gets the print and offers to live stream it over the Internet."

The case is Dkt. No. 18-956.

Attorneys: Thomas Goldstein (Goldstein & Russell, P.C.) for Google LLC. E. Joshua Rosenkranz (Orrick, Herrington & Sutcliffe LLP) for Oracle America, Inc. Malcolm L. Stewart, Deputy Solicitor General, Department of Justice.

Companies: Google LLC; Oracle America, Inc.

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