The legal battle between Google and Oracle is being titled by many as the ‘copyright case of the century’ and this article intends to tell you why this not a hyperbole. Presently pending in the Supreme Court of the USA, the case is centred on the main issue of whether the software of a program can be copied if the source codes of the impugned programs are different. In other words, the question being asked here is whether a software is entitled to a copyright. An alternative issue of the case which was contended by Google is whether the use of an unoriginal ‘software interface’ to create a completely new program amounts to fair use or not. As of February 2020, both Google and Oracle have submitted their opening briefs in the Supreme Court and the oral arguments are slated to be heard in October 2020.

Background: Facts and Arguments

At the centre of this intriguing case is the versatile computer language Java. It was developed by Sun Microsystems in 1996 and has been extremely popular with code writers as a program on Java can be run anywhere.[i] This attribute implied that a programmer could write and run the Java program on computers that had different operating systems. However, to write and run new programs, the Java language uses pre-existing declaration and implementation codes which are known as the Java Application Programming Interface (API). Sun Microsystems has always advertised their API as an ‘easy and practical way’ to write codes and make new software.[ii]

Google, intending to use Java for making Android OS, tried to negotiate with Sun to obtain a license but was unsuccessful. Thus, Google, instead of using the entire Java API, only proceeded to use a small part of Java’s declaration codes, i.e. about 0.5% of Java’s SE Libraries, citing that declaration code is not entitled to a copyright.[iii] At the time of such use in 2007, Sun Microsystems did not file any case against Google. However, Oracle acquired Sun in 2010 and sued Google for infringing Java’s licensing provisions by using its APIs in the Android system. The entire matter during its time of pendency in different courts of the US was divided into two different issues.

Issue I: Whether APIs (program software) are copyrightable

First District Court Trial:

The case was first heard in the United States District Court for the Northern District of California, in which Oracle claimed that Google’s use of the Java’s API amounted to patent and copyright infringement. The jury rejected the patent infringement claim but found that Google had infringed the copyright of Oracle’s 37 Java packages, and a routine called “rangeCheck”. However, the jury deadlocked on whether Google could claim fair use or not. The judge in the final verdict agreed with the judgment matter of law (“JMOL”) that was filed by Oracle. In the JMOL, Oracle pleaded to dismiss fair use as a defence and overturn the jury’s assessment that the 8 decompiled security files were non-infringing. The judge also held that the ‘rangeCheck’ routine was infringed upon by Google. However, the judge did not agree with the jury’s findings and stated that APIs were not copyrightable as long as the ‘specific code used to implement a method is different.’[iv]

Appeal in Circuit Court:

This decision of the District Court was appealed by Oracle in the US Court of Appeals for the Federal Circuit in which the Court noted that literary works protected under the Copyright Act did include computer programs to the extent of expression of original ideas by the programmer. As Google had already conceded that the expression of the limited Java API was original to Oracle, the Court concluded that the ‘the structure, sequence and organisation of an API is protected under copyright and held that Google had copied parts of Oracle API which were copyrightable. However, the case was further remanded to the District Court to consider Google’s defence of fair use as sufficient facts for the defence had not been brought up in Appeals Court.[v]

Issue II: Whether the copying of a small part of the software code amounts to the defence of fair use

District Court:

On the order of the appeals court, a trial on the question of whether Google’s use of Java’s API was fair use was initiated in a district court on May 9, 2016. The jury decided in favour of Google and found that Google’s Android was protected by the fair use exception and its copying of the impugned 37 Java APIs did not infringe upon Oracle’s copyrights. Oracle after filing several unsuccessful motions to reverse the jury’s verdict,[vi] filed a circuit court appeal to challenge the district court’s decision.

Appeal in Circuit Court:

The appeal was filed in the United States Court of Appeals for the Federal Circuit and in March 2018, the Court ruled in favour of Oracle. The ruling was an important one as the court emphasised on the dichotomy of factual and legal aspects of a claim of fair use. According to the court, in the present trial, the jury role was limited to deciding the facts of the case while the judge of the district court had to examine the concerned law. The Court noted that the jury in the district court had not discussed the facts and only proceeded to establish findings based on law. The Court held that the facts in the case were not in favour of Google and even if they were, the claim of fair use was not a valid one as none of the four-set criteria of fair use were satisfied. The Court made it clear Google’s use of Java’s API declaration code was:

(a) Non-transformative as the nature and purpose of Google’s use was not different

(b) Substantial as the of the 11,500 lines of code copied only 170 were required by Google

(c) Harmful and predatory for Oracle’s market operability as Oracle claimed that due to Google, other vendors had started to misuse its API

Further, the Court refused to treat the fact that Android was free as indicative of non-commercial use. The Court, stating that Google had only copied the said code to make things easier for itself, held that such a use of intellectual property cannot be said to be fair use and sent the case back to the District Court of the Northern District of California for deciding the damages that Google should pay for infringing the copyright held by Oracle.

Supreme Court:

The decision by the appeals court in favour of Oracle was challenged by Google in a writ of certiorari filed in the Supreme Court. The Supreme Court has accepted the writ and the judgment is expected to come later this year. The two main questions of law presented in the case are:

1. Whether software interfaces are entitled to be protection under copyright.

The first issue in the Supreme Court discusses treating Java APIs as literary works to make them eligible for copyright protection. However, the section 102(b) of the Copyright Act clearly states that ‘ideas, methods, systems and processes are not copyrightable’ and further merger’s doctrine makes it clear that if the expression and the idea are tied in such a way there is the only way to express the idea, the expression cannot be protected under copyright. This was submitted by Google in its brief while Oracle’s brief mainly relies on the Circuit Court’s decision which held that as long as the expression of the original idea by the programmer is different from the idea, software programs are copyrightable.[vii] Thus for this issue, the main dispute between the parties is whether there are many methods of writing and organising the Java APIs and still getting the same result as intended.

2. Whether copying an old software interface to create a new program constitutes fair use.

Although the Federal Circuit Court has already analysed the tenets of fair use doctrine and held that the facts of the present case do not fall under the exception, Google is adamant in maintaining fair use and has presented 26 amicus briefs to support its position. Further, Google is using the facts that a small portion of the Java API was used to create a huge amount of new code and the declaration codes of the API are essentially functional in nature to prove its fair use stand.

Conclusion: Implication and Importance

The oral arguments of the case will be heard by the Supreme Court in October but the speculations have already begun as the judgment is bound to have immense implications on copyrighting of software. If the Supreme Court upholds the judgment of the Federal Circuit and rules in favour of Oracle, all software developers and programmers will have to pay to use the declaration and implementation code of Java API or create original codes. Such a ruling will set a precedent that software is not free and increase the cost of new programs being created as the programmers will be forced to buy Oracle’s license or spend more money for creating a new API. However, if the Court rules against Oracle, it would imply that software is free and can be copied to create new applications without paying any licensing fee. This alleviation of protection will de-incentivise innovation in the software field.

Thus, no matter what the Court decides, there will be a definite shaking up of things in the world of software. In the author’s opinion, the best way to proceed should be to categorically define the variables of fair use specifically in the context of using declaration codes of API and then analyse things on a case to case basis rather than imposing a general precedent on all types of software.

[i] Oracle America, Inc. v. Google Inc., 750 F.3d 1339, 1348 (Fed. Cir. 2014) [ii] Writ of Certiorari, Google v. Oracle, at 3 [iii] Oracle America, Inc. v. Google Inc., 2016 WL 3181206, *7 (N.D. Cal. 2016) [iv] Oracle America, Inc. v. Google Inc., 872 F. Supp. 2d 974 (N.D. Cal. 2012). [v] Oracle America., Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014) [vi] Oracle America, Inc. v. Google Inc., No. 3:10-cv-03561 1988 (N.D. Cal. Jun. 8, 2016) [vii] Oracle America, Inc. v. Google Inc., 750 F.3d 1339, 1355 (Fed. Cir. 2014)

Title Image Source: Brainstorm Mag

This article has been written by Subodh Singh. Subodh is a fourth year law student at ILS Law College, Pune.