On April 5, 2021, the United States Supreme Court issued its much-anticipated decision in the long-running case of Google v. Oracle, a case that we have been following for nearly five years. In its long awaited decision, the Court held that Google’s copying of the “declaring code” from the application program interface (API) of Oracle’s Java SE platform when creating Google’s Android operating system constituted fair use under copyright law. By deciding the case on these grounds, the Court managed to sidestep the issue of whether the software code at issue was copyrightable in the first place. Instead, the Court simply assumed that it was, virtually guaranteeing that it will be forced to address the issue in a future case.
The saga that culminated in the Court’s decision dates all the way back to 2005 when Google acquired Android and began creating its now-famous Android software platform for mobile devices. Google’s goal was to create an open platform that would allow software developers to build mobile applications to run on it. The Java programming language, originally invented by Sun Microsystems which was later acquired by Oracle, was an obvious candidate for use in the Android platform as it was a popular programming language among software developers.
Shortly after Google’s acquisition of Android, Google began talks with Sun to explore the potential for licensing the entire Java platform. However, negotiations broke down after it became apparent that Sun’s requirement of interoperability was not compatible with Google’s vision for the Android platform. This left Google to build the Android platform on its own.
Creating the Android platform required roughly 100 Google engineers working for more than three years and required writing millions of lines of new code. Google did not write the entire platform from scratch, however. Instead, it copied roughly 11,500 lines of code from the Java SE program, consisting of 37 Java API packages. APIs are used by software programmers to simplify the creation of complex computer programs by allowing two programs to communicate with each other. Java’s API provides access to a collection of prewritten software programs that carry out a large number of specific tasks.
When Oracle Corporation acquired Sun in 2010, Google’s Android platform had been completed for several years and was already a notable success. Oracle promptly filed suit against Google alleging infringements of Oracle’s patents and copyrights. The first trial ended in a victory for Google when the district court ruled that the API packages were not copyrightable as a matter of law. That decision was overturned on appeal and remanded further proceedings on Google’s copyright infringement defense of fair use. Following a second trial, a jury found that Google’s copying constituted fair use, but this verdict was overturned on appeal when the Federal Circuit found that Google’s use of the declaring code was not a fair use as a matter of law. The Supreme Court then agreed to consider both the copyrightability and fair use questions.
The Court’s Decision
Since deciding in favor of Google on either question would defeat Oracle’s copyright claims, the Supreme Court declined to “answer more than is necessary to resolve the parties’ dispute.” The Court opted for a narrowly tailored approach to its decision in the interests of not unduly obstructing an environment of “rapidly changing technological, economic, and business-related circumstances.”
To this end, the Court prefaced its decision by stating that it would proceed on the assumption that the entire Java API is copyrightable. The Court then proceeded directly to the issue of fair use under the four factors comprising the fair use inquiry: (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 market effects. In a clarification for practitioners and courts alike, the court provided an important clarification that as a procedural matter, fair use is a mixed question of law and fact. This means that a jury’s findings are respected on matters of fact, such as “whether there was harm to the actual or potential markets for the copyrighted work” or “how much of the copyrighted work was copied,” but the ultimate question of fair use is one of law to be decided by the judge.
The Court began its assessment by turning to the second factor first and found that the nature of the software code at issue weighed in favor of a finding of fair use. “Unlike many other programs,” the Court reasoned, the value of the declaring code that Google copied “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.” Because this declaring code “embodies a different kind of creativity” from the implementing code that was not copied, the Court concluded that this factor favored fair use. In other words, the Court concluded that because the declaring code was more functional in nature (as opposed to creative), the factor favored a finding of fair use.
The Court then returned to the first factor, which typically considers the extent to which the allegedly infringing work is transformative and adds something new to the meaning of the original. On this factor, the Court found that Google used parts of the Java SE program to create a new platform with “a new collection of tasks operating in a distinct and different computing environment.” The Court also pointed out that those tasks “were carried out through the use of new implementing code (that Google wrote)” and were “designed to operate within that new environment.” Given this, the Court concluded that Google’s copying was transformative and weighed in favor of fair use.
The Court next considered the third factor, which considers the amount and substantiality of the portion of the copyrighted work used. The Court found that the amount of code Google copied constituted a small portion of the overall code contained in the Android platform. Moreover, the Court explained that the third factor generally weighs in favor of fair use when “the amount of copying is tethered to a valid, and transformative, purpose.” Given that Google’s purpose was the transformative creation of an entirely new mobile device platform, the Court found that this factor too weighed in Google’s favor.
The Court concluded its analysis by considering the fourth and final factor, the effect of the use on the potential market. Here, the Court concluded that “the jury could have found that Android did not harm the actual or potential markets for Java SE.” The Court reasoned that because Sun/Oracle’s platform was geared towards traditional desktop and laptop computing but was not successful in the smartphone market at the time of Google’s copying, it was reasonable for the jury to conclude that Google did not harm the market for the original work. In other words, “Google’s Android platform was part of a distinct (and more advanced) market than Java software.” Therefore, the Court determined that this factor favored a finding of fair use as well.
The Court’s opinion is available here.
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