Is a software company entitled to copyright protection for its unique programming platform; and, if so, under what conditions does a secondary use of that programming platform to create a new computer program constitute fair use?
This case asks the Supreme Court to determine whether, under the Copyright Act of 1976, software interfaces can receive copyright protections that convey exclusive rights to the software author and, if so, under what conditions a secondary use of that software constitutes fair use. Google argues that no copyright protections should extend to Oracle’s Java SE declaring code under copyright law’s merger doctrine. Even if copyright protection is warranted, Google contends that its use of the Java SE declaring code to create its Android platform constitutes fair use due to the transformative nature of and limited copying in the Android platform. Oracle counters that software interfaces deserve the same copyright protections as other works because of the expressive nature of the software. As such, Oracle asserts that Google’s use of Java SE is not fair use because it harmed Oracle’s market for licensing Java SE. The outcome of this case has heavy implications for the use of programming languages in future technology as well as the open-book industry standard for borrowing computer code to further technological advances.
Questions as Framed for the Court by the Parties
(1) Whether copyright protection extends to a software interface; and (2) whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.
In 2010, Respondent Oracle America, Inc. (“Oracle”) purchased Sun Microsystems, Inc. (“Sun”), which transferred ownership of the Java programming language to Oracle. Oracle Am., Inc. v. Google LLC (Federal Circuit) at 5. Java 2 Standard Edition (“Java SE”) is an open-source software platform that allows programmers to write programs using the Java programming language that run on different types of computers without having to rewrite the program for each type of hardware. Id. The Java SE platform incudes the Java Application Programming Interface (“API”), which consists of prewritten code organized into different classes and designed to provide programmers with predetermined functions. Id.
Programmers must use a set of API packages to enable the Java language to function. Id. at 6. Oracle created a library of over 166 API packages, containing 3,000 classes, that enable programmers to “write once, run anywhere.” Id. at 5–6. Oracle licenses its API packages to programmers in exchange for a fee. Id. at 6. Oracle does, however, provide access to a free version of the API packages through OpenJDK, but it requires companies that improve any API packages to give away the improvements to the Java community for free. Id.
In 2005, Petitioner Google LLC (“Google”) started negotiating with Sun to use and adapt the Java SE platform for its Android mobile device software platform; however, talks fell apart due to Google’s desire to use the Java APIs for free and without limits on modification. Id. After failing to reach an agreement, Google software developers unsuccessfully attempted to create their own APIs. Id. At that point, Google elected to copy verbatim 37 Java APIs for use in the Android platform—constituting 11,500 lines of Oracle’s copyrighted code—and write its own implementing code. Id. In 2007, Google released the Android platform for free under an open source license. Id. at 7. As a result, many of Oracle’s costumers that were licensing APIs left in favor of the Android platform, and the clients that remained with Oracle demanded that Oracle provide the licenses at a “steep discount.” Id.
In response, Oracle sued Google in the United States District Court for the Northern District of California (the “District Court”) for copyright infringement. Id. at 4. The jury found that Google infringed on Oracle’s copyright but failed to determine whether using the Java APIs constituted fair use. Id. Despite the jury verdict, the District Court held that the APIs were not copyrightable as a matter of law and entered judgment for Google on May 31, 2012. Id. On appeal, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) reversed the District Court’s judgment, holding that the declaring code and structure, sequence, and organization (“SSO”) of the APIs were entitled to copyright protection under the Copyright Act, thus requiring programmers to purchase the license to avoid infringement. Id. at 4–5. The Federal Circuit then remanded the case to the District Court to determine the fair-use question. Id. at 5.
When evaluating fair use courts look at: (1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion used, and (4) the effect of the use on the potential market. Id. at 8. After a second trial, a jury found in favor of Google on its fair-use defense. Id. at 5. Oracle moved for both judgment as a matter of law and for a new trial, but the District Court denied both motions and entered judgment for Google on June 8, 2016. Id. at 8–9.
Oracle appealed once again to the Federal Circuit to redetermine the fair-use question, or alternatively, to seek relief from the District Court’s denial of a new trial. Id. at 9. Google likewise filed a cross-appeal against all adverse orders and rulings under the final judgment. Id. On March 27, 2018, the Federal Circuit reversed the District Court’s judgment, determining that Google did not meet the four fair-use requirements. Id. at 15–27. As such, the Federal Circuit denied Google’s cross-appeal and remanded the case to the District Court to determine damages. Id. at 27–28. Google filed a petition for a writ of certiorari, which the United States Supreme Court granted on November 15, 2019. Brief for Petitioner, Google LLC at 1.
APPLICABILITY OF THE MERGER DOCTRINE
Google argues that no copyrightable interest existed in Oracle’s Java SE due to copyright law’s “merger doctrine.” Brief for Petitioner, Google LLC at 18. According to Google, the merger doctrine dictates that no copyright can vest to an expression if that expression is one of only a few ways to access a system or method of operation. Id. Vesting copyright, Google asserts, would effectively allow the copyright holder to circumvent Section 102(b) of the Copyright Act of 1976, which bars copyrighting ideas. Id. In the present case, Google contends that the merger doctrine applies because the declaring codes it borrowed from Oracle were the only declaring codes that could perform programming functions in the way that experienced Java developers would expect. Id. at 20.
Moreover, Google states that, when possible, its Android developers only borrowed Oracle’s declaring codes to the extent they absolutely needed to, and even then, Google’s developers input their own implementing code. Id. at 20–21. Additionally, Google argues that the merger doctrine applies even if assessed at the time a work is created. Id. at 30. If applied at the time Java SE was created, Google argues that merger still applies because outside of choosing the names of methods (which are not copyrightable), Sun only made conceptual choices about the way a method should perform, and concepts cannot be copyrighted. Id. at 29. Following those conceptual choices, Google states, the declarations could only be written one way due to the rigid nature of the Java language. Id.
Oracle counters that the merger doctrine does not apply here because there were “countless ways” for the authors of Java SE to express their ideas embodied in the platform, none of which were necessary. Brief for Respondent, Oracle America, Inc. at 28, 30. Oracle insists that the Court must look to the options available to the original author at the time of conception; otherwise a work could be copyrighted only to later be deregistered based on what was available at the time of reuse. Id. at 29. In fact, according to Oracle, no Circuit Court has ever analyzed merger from the time of reuse. Id.
Oracle also rebuts Google’s assertion that Google had no choice but to copy the Java SE declaring codes by pointing out that Oracle had offered Google three available licensing agreements. Id. at 31. Furthermore, Oracle argues that Google could have used its abundant resources to write its own programming platform for app developers from scratch, as other companies such as Microsoft and Apple have done. Id. Additionally, Oracle contends that Google was not required to copy all that it did because the parties stipulated that only 170 lines of code were necessary to write in the Java language. Id. at 32. Oracle also asserts that simply because the Java language is well-known and pervasive, Google is not allowed to just copy it without permission. Id. at 34. Oracle analogizes that under Google’s arguments, a plagiarizing filmmaker could take recognizable literary characters and their back stories and create an unapproved movie with no recourse for the original author. Id. at 34.
THE PROPER FAIR USE BALANCING
Google contends that, even if the Court were to find a copyrightable interest in the Java SE APIs, Google’s use still constitutes fair use under the four-factor balancing test of Section 107 of the Copyright Act of 1976. Brief for Petitioner at 41–42. First, Google argues that the purpose and character of its secondary use of the Java SE APIs in creating the Android platform added new methods, classes, and packages that gave new meaning and expression to the borrowed code. Id. at 42–43. Therefore, Google contends, its use was transformative. See id. As such, Google suggests that any commercial purpose of the Android platform should be given less weight in this factor, particularly in light of the fact that declaring codes only become commercial through the implementing code—which Google created itself. Id. at 43–44. The fact that the borrowed declaring codes in Android serve the same function and purpose as the originals in Java SE is of no importance, Google contends, because declaring codes are meant to be replicated precisely for their functional qualities. Id. at 45.
Second, Google asserts that, although the declaring codes are “minimally expressive,” they are functional—not creative—in nature, which weighs in favor of a finding of fair use. Id. at 45–46. Third, Google argues that the amount and substantiality of the original APIs borrowed was fair because Google only borrowed as much as was necessary—less than 0.5 percent of the Java SE code—to allow Google to fulfill its purpose of having Java function on Android. Id. at 46–48. And fourth, Google contends that Android did not negatively impact Oracle’s market for Java SE because, unlike Android, Java SE was not designed for modern smartphone technology; therefore, Android could not have supplanted Java SE’s market. Id. at 48. If anything, Google maintains, its use boosted the market for Java SE because developers flocked to Java following the release of Android. Id. at 49. Thus, on balance, Google concludes that its use of the Java SE APIs in Android constitutes fair use. Id. at 50.
Oracle counters that Google’s use of the Java SE APIs does not constitute fair use because Android superseded the concept behind Java SE entirely. Brief for Respondent at 36. First, Oracle asserts that the commercial purpose and nature of Google’s Android platform weighs against fair use. Id. at 39. Indeed, Oracle argues, Google has made $42 billion from Android—a direct result of copying the Java SE APIs. Id. Further, Oracle asserts that Android is not transformative because the function of the borrowed code remained the same once implemented into Android. Id. at 40. This is proven by the fact that, according to Oracle, the Java SE APIs were already being used for smartphone purposes, contrary to Google’s assertions. Id. at 41–42. Second, Oracle contends that the Java SE code was undeniably creative in nature because the choices that went in to making the code arose out of a desire to make a memorable and appealing code. Id. at 44. Oracle further asserts that the declaring codes’ high functionality cannot be dispositive because all software is functional. Id. Likewise, Oracle notes that the Court has previously recognized that “functional works can be highly creative” and that even minimally creative works deserve copyright protection. Id.
Third, Oracle contends that because Google admitted to copying the most valuable lines of the Java SE code, the amount and substantiality factor weighs against fair use. Id. at 45. Thus, Oracle maintains that Google’s argument that only a small percentage of code was copied from Java SE fails because “statistics cannot trump quality.” Id. Fourth, Oracle reasons that Google did negatively impact Oracle’s market for Java SE because Google marketed Android to Oracle’s otherwise loyal clients based on Android’s use of Java. Id. at 46. In fact, Oracle states, many of Oracle’s commercial customers switched to Android entirely and others used Android as a bargaining chip to receive discounts on Java SE. Id. at 47. Additionally, Oracle maintains that it did intend to enter the market of next-generation smartphones because Oracle had already entered negotiations with other companies to license Java SE for that purpose. Id. at 48. Oracle thus concludes that the factors show Google’s use of the Java SE declaring codes to be “a classic, unfair superseding use.” Id. at 49.
UPENDING THE PURPOSE OF COPYRIGHT LAW?
Professors Peter Menell, David Nimmer, and Shyamkrishna Balganesh (the “Law Professors”), in support of Google, argue that the Federal Circuit’s decision runs contrary to copyright law because API packages possess a functional element. See Brief of Amicus Curiae Professors Peter Menell, David Nimmer, and Shyamkrishna Balganesh, in Support of Petitioner at 15, 25–28. The Law Professors contend that extending copyright protection to protect functional elements would upend Congress’s intentional dichotomy between patent law’s time-limited monopoly—which is designed to protect functions—and copyright law’s lengthy protection. Id. at 7, 33–35. Furthermore, the Developers Alliance, also in support of Google, argues that rigid application of the fair-use doctrine creates an unworkable framework for software because the nature of software is critically different than the nature of literature or other types of work generally protected with copyrights. Brief of Amicus Curiae Developers Alliance, in Support of Petitioner at 30. For example, the Developers Alliance suggests that while the capitalization of particular words in a literary work can be a creative element, in software the capitalization of words is “usually rigidly formulaic and highly functional.” Id.
The United States, in support of Oracle, argues conversely that the API packages falls within the range of copyrightable material that Congress intended to protect. Brief of United States, in Support of Respondent at 14–15. According to the United States, the API packages are not merely functional implementations, but rather embody expressive choices made by Sun in order to make them appealing to developers. Id. at 23–24. Similarly, the Copyright Alliance contends, in support of Oracle, that a finding of fair use would diminish the balance between copyright protection and fair use because putative infringers could couch a mere adaptation to a different hardware as an innovation. See Brief of Amicus Curiae Copyright Alliance, in Support of Respondent at 15–17, 19–20.
CREATING BARRIERS TO ENTRY AND HARMING CONSUMERS
The Developers Alliance, supporting Google, contend that the Federal Circuit’s decision frustrates “copyright law’s stated intent” because granting copyright protection for functional API packages stifles innovation. Brief of Developers Alliance at 8. A group of Copyright Scholars, also in support of Google, likewise argue that granting copyright protection to declaring codes gives the creator undue control over the use of the platform, allowing the creator “to leverage its rights over copyrightable aspects . . . to forbid legitimate uses of the uncopyrightable aspects.” Brief of Amicus Curiae Copyright Scholars, in Support of Petitioner at 7. Microsoft, also supporting Google, furthers the concerns of the Copyright Scholars by asserting that centralizing control in the code originator stifles the creation of new technology by creating barriers to seamless interoperability. Brief of Amicus Curiae Microsoft, in Support of Petitioner at 12–14, 31. Microsoft predicts that these barriers will ultimately translate to less collaboration and innovation within the software development space, ultimately producing adverse consequences for consumers. Id. at 31.
The SAS Institute (“SAS”), in support of Oracle, argues conversely that failing to extend copyright protection in this situation is what would actually inhibit innovation because proprietary-software companies, like Oracle and SAS, would have no incentive to invest in researching and creating software if they were not able to monetize it. Brief of Amicus Curiae SAS Institute, in Support of Respondent at 26. Furthermore, SAS claims that failing to apply copyright protection would allow competitors to undercut software development firms by appropriating software interfaces under the guise of interoperability. Id. at 17. SAS warns that such a result would lead to greater secrecy and less collaboration between companies, ultimately hurting consumers. Id. at 27. Furthermore, Helienne Lindvall and the Songwriters Guild of America, in support of Oracle, assert that narrowing copyright protection would put content creators at an unfair disadvantage by allowing large companies to monetize the creators’ work without compensating the creator. See Brief of Amicus Curiae Helienne Lindvall and the Songwriters Guild of America, in Support of Respondent at 30–31.
COMMON PRACTICE OR WITHHOLDING FAIR COMPENSATION?
The Python Software Foundation, in support of Google, argues that upholding the Federal Circuit’s decision will implicate wide swaths of the economy because Google’s use of the API packages is ubiquitous with the common understanding of the open-source software community. Brief of Amicus Curiae Python Software Foundation, in Support of Google at 23. In the same vein, a group of Empirical Legal Researchers, also in support of Google, assert that charging royalties to access API interfaces would upend the common practice in the computer science industry of freely borrowing useful concepts and tools. Brief of Amicus Curiae Empirical Legal Researchers, in Support of Petitioner at 7. Furthermore, Professor Glynn Lunney, supporting Google, posits that broad copyright protection would provide undue compensation to software developers in the sense that it would prohibit follow-up creativity, thereby limiting scientific progress. Brief of Amicus Curiae Professor Glynn Lunney, in Support of Petitioner at 22–23.
The Alliance of U.S. Startups and Inventors for Jobs (“USIJ”), in support of Oracle, argues that a narrow interpretation of copyright law, on the other hand, will lead to companies “free-riding on creative labor.” Brief of Amicus Curiae Alliance of U.S. Startups and Inventors for Jobs, in Support of Respondent at 4, 7. Accordingly, USIJ contends, failing to provide compensation to innovators will create unfair marketplace advantages for free riders, while leaving innovators without a means to recoup research and development costs. Id. at 7–8. Similarly, the American Conservative Union (“ACU”) contends, in support of Oracle, that loose copyright enforcement offends the constitutional right to property and the receipt of fair compensation. Brief of Amicus Curiae American Conservative Union Foundation, in Support of Respondent at 16–17. The ACU further argues that failing to enforce “the current Constitutional copyright scheme” is what erodes scientific progress, because the current scheme is set up to provide creators—not users—economic incentives. Id. at 18.
- Rina Diane Caballar, Google v. Oracle Explained: The Fight for Interoperable Software, IEEE Spectrum (Feb. 19, 2020).
- Michael Shore, Earth to Google: Here’s Why APIs Need to be Copyrightable, IP Watchdog (Feb. 18, 2020).
- Jeff John Roberts, Oracle and Google are About to Face Off in Tech’s Trial of the Century, Fortune (Feb. 17, 2020).
- Brandon Butler, Google-Oracle High Court Fight Threatens Fair Use Ecosystem, Law 360 (Nov. 22, 2019).