IN BRIEF
- Google has petitioned the U.S. Supreme Court for certiorari in a copyright infringement suit brought by Oracle after the Federal Circuit twice ruled in favor of Oracle.
- The Federal Circuit’s decisions reflect its strong view of the copyrightability of software, which informed its decision on fair use.
- A Supreme Court decision in this case will have substantial impact on the application of longstanding copyright doctrines and the software industry.
Oracle’s decade-long copyright infringement suit against Google may be heading to the Supreme Court. The case involves the copyrightability of application programming interfaces (APIs) and the application of the fair use doctrine to copying APIs for the purpose of creating interoperable programs. The case pits software copyright owners against software developers creating interoperable programs.
As Google was developing its Android mobile operating system, it wanted to use Java so that the vast network of Java developers would develop applications for the Android mobile operating system and could use the Java programming shortcuts with which they were familiar from Java app development. Google wanted rapid application development for its Android mobile operating system. Google initially sought a license from Oracle, which now owns Java, but the negotiations broke down, in part because Google refused to make the implementation of its programs compatible with the Java virtual machine or interoperable with other Java programs, which violates Java’s “write once, run anywhere” philosophy.
Ultimately, Google copied the declaring code of 37 APIs in their entirety and the structure, sequence, and organization of the 37 APIs—over 11,000 lines of code in total—as part of its competing commercial platform. Google only had to copy 170 lines of code to ensure interoperability. It was undisputed that the copied APIs could have been written in multiple ways, and Google could have written its own APIs. It would have required more time and effort, and it would have required more effort by developers of mobile applications for Android mobile, but it could have been done. After copying Java’s code, Google purposely made its Android platform incompatible with Java, which meant that Android Apps run only on Android devices, and Java Apps do not run on Android devices.
In Oracle v. Google I, the Federal Circuit held that in light of the evidence and controlling precedent, the Java APIs were copyrightable, reversing the district court’s judgment that they were not, after a jury verdict finding copyright infringement. After Oracle v. Google I, the U.S. Supreme Court denied certiorari, probably in part due to the interlocutory nature of the case. However, the United States took the position that the Java code at issue was copyrightable, and there was no circuit split on the merger doctrine or section 102(b). On remand, the jury returned a verdict that Google’s copying of 37 APIs and the structure, sequence and organization of the corresponding implementing code was a fair use.
In Oracle v. Google II, the Federal Circuit held that no reasonable jury could conclude that Google’s copying of over 11,000 lines of code, where it only had to copy 170 lines of code for interoperability, was a fair use. On the fair use factors, the Federal Circuit concluded that Google’s use of the Java code was overwhelmingly commercial (Factor 1), the nature of the work—software—favored Google (Factor 2), the amount of the work taken was neutral or favored Oracle because the code was a highly valuable part of the Java platform (Factor 3), and the effect on Oracle’s existing and potential markets heavily favored Oracle because the Android platform caused Oracle to lose customers and impaired Oracle’s ability to license its work for mobile devices (Factor 4).
These decisions reflect the Federal Circuit’s strong view of the copyrightability of software. That view informed its decision on fair use, particularly regarding the first and fourth fair use factors—namely, the overwhelming commercial nature of Google’s use of the Java APIs and the substantial evidence of market harm to Oracle from Google’s unauthorized copying of the Java APIs.
Google again has petitioned for certiorari, arguing that the APIs are not copyrightable, and the Federal Circuit should not have reversed the jury’s fair use verdict. Now that the Federal Circuit has ruled for Oracle on the issue of fair use, only the damages phase of the case remains. At this juncture, there are two issues that potentially could be dispositive of the case if the Supreme Court granted certiorari and ruled for Google. If Google were to prevail on either copyrightability or fair use, the case would be over, and there would be no need for a trial on Oracle’s damages. If the Supreme Court believes either Federal Circuit decision is erroneous, however, it may be more likely to grant certiorari at this point.
Google’s appeal is important for several reasons. It involves the scope of copyright as applied to software and the application of the fair use defense in copying software code for purposes of interoperability. Second, the decision involves the somewhat complicated application of longstanding copyright doctrines—merger, scènes à faire, and the idea/expression dichotomy embodied in section 102(b)—to software. A Supreme Court decision on copyrightability and fair use in the context of software would impact the use of existing software code to build new programs, thereby significantly impacting the software industry. Oracle’s potential damages in the case have been estimated variously at between $8 billion and $9 billion, a number staggeringly large for a copyright software case (or any other case for that matter). Last, if copyrights in the Java code were timely registered and Oracle ultimately prevails, it could be awarded attorney’s fees in the court’s discretion, which at this point are substantial. See 17 U.S.C. §§ 504–505.
Any Supreme Court decision in Google could have substantial impact on the issue of copyrightability and the application of longstanding copyright doctrines such as the merger doctrine, scènes à faire doctrine, and section 102(b), which prohibits copyright protection for a command structure, system, or method of operation, among other things. A decision on these subsidiary issues in assessing copyrightability could have substantial impact on how these doctrines are applied in the software context. Similarly, a Supreme Court decision on fair use of computer code would significantly impact the industry and the balance between software copyright owners and others seeking to use their code in creating competing programs. This is a case to watch.