Justices Look for Reassurance That the Sky Won’t Fall When They Rule in Google v. Oracle

By Eileen McDermott
October 7, 2020

“Oracle has a copyright to the computer code, not a patent. That means the public, not Oracle, has the right to these functions.” – Thomas Goldstein (Google)

“We’ve heard dire predictions from Google about the future of software innovation, but two different administrations would not be supporting us if our position were a threat to innovation.” – Joshua Rosenkranz (Oracle)

Google and Oracle each got to have their say in U.S. Supreme Court today, when eight justices heard oral argument in the closely-watched battle between the two tech giants. The questioning revealed some strong skepticism of Google’s arguments, but also potent fear that a ruling for either side might upend industry practices in computer programming. Both sides claim that a ruling for the other will harm innovation.

Road to SCOTUS

The High Court agreed to hear Google’s petition for a writ of certiorari last year. The Court is considering the questions: 1) Whether copyright protection extends to a software interface; and 2) Whether Google’s use of a software interface in the context of creating a new computer program constitutes fair use.

In March 2018, the Federal Circuit issued its opinion in favor of Oracle in the case. It found Google’s use of Java application programming interface (‘API packages’) not fair as a matter of law, reversing the district court’s decision on the matter. The ruling resurrected the multi-billion dollar copyright case, which was brought by Oracle Corp against Google and was appealed to the Supreme Court in January 2019, after the Federal Circuit denied rehearing in August 2018.

Three attorneys made arguments before the Court today: Thomas Goldstein of Goldstein & Russell argued for Google; Joshua Rosenkranz of Orrick argued for Oracle; and Deputy Solicitor General Malcolm Stuart argued on behalf of the U.S. Government. All eight of the justices participated in questioning, including the often-silent Justice Clarence Thomas.

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Google: We Had No Choice

In questioning Goldstein, the justices struggled to understand why Google could not have just written its own declaring code, as others, like Apple and Microsoft, have done. Goldstein focused in his remarks on the “merger doctrine” argument, which says that, since Oracle’s copyright in the Java program extends to the method of operation for that program, the idea and expression have merged, making it uncopyrightable. He explained in his introductory remarks:

Oracle has a copyright to the computer code, not a patent. That means the public, not Oracle, has the right to these functions…. Under the merger doctrine, there is no copyright protection for computer code that is the only way to perform those functions…. Because there are no substitutes, Oracle is claiming the exclusive right to not merely what the declaration is saying, but what the declarations do.  

Following some tough questioning by Justices Roberts and Thomas, Justice Breyer asked Goldstein: “Why is there just one way to do it? If you spent enough time and you had the most brilliant computer programmers, don’t you think they could devise a system of calling up the Java program?”

Goldstein responded that such an approach would make computer programming inefficient and result in fewer creative programmers. “Why would we have a copyright system that does that?” he asked.

Justice Sotomayor pushed back, asking why Apple spent the billions of dollars necessary to develop a different method of declaring the same functions at issue? Goldstein replied that Apple wasn’t using Java.

“That’s the nub of the problem right there – what gives you the right to use their original work?” Sotomayor interjected.

But Goldstein maintained that Google simply had no choice: “We would have happily written our own. We could not write a computer program that would respond to the developers’ instructions without re-using this limited set of instructions.”

Justice Alito was concerned that Google’s argument would result in all computer code losing protection under Section 102(b) of the U.S. copyright law, and asked how Goldstein squared that position with Congress’s express intent to protect computer code. Goldstein explained that, under the merger argument, the loss of protection is limited to circumstances in which the function that is disclosed can only be written one way.

Justices Gorsuch, Sotomayor and Kavanaugh also pressed Goldstein on his merger argument, although Kavanaugh pointed out that some of the claims made by amici about a “sky-is-falling” effect if the Court were to rule against Google did not seem to have come to pass yet.

Kavanaugh asked: “The Federal Circuit ruled in 2014, this Court denied cert in 2015 on the first issue. I’m not aware that the sky has fallen in the last five or six years with that ruling on the books. I know it’s different if we rule here, but can you respond to that?”

Goldstein claimed that “interfaces have been reused for decades” and that “it would upend that world to rule the other way.”

Oracle Predicts: Innovation Threat Lies in a Ruling for Google

The questioning of Rosenkranz was somewhat softer, but several justices did push him to expound on how the industry might be affected by a ruling for Oracle, and whether it would have a similar “sky-is-falling” effect to the one it claims a finding for Google would have.

Focusing on the fair use analysis, Rosenkranz warned in his opening argument that “if this Court holds that a jury may conclude that copying declaring code is fair, it will encourage copying, create legal uncertainty, and decimate the business model which a lot of companies depend on, undermining the very incentives copyright was designed to promote.”

But Justice Sotomayor noted that, since 1992, other circuits have held that application programming interfaces (APIs), of which the declaring code is a part, are not copyrightable. “Please explain to me why we should now upend what the industry has viewed as the copyrightable elements…. Why should we change that understanding?”

Rosenkranz disagreed with Sotomayor’s interpretation of the case law and said that not a single case on record “has ever said that you can copy this vast amount of code into a competing platform to use for the same purpose.” He later added: “We’ve heard dire predictions from Google about the future of software innovation, but two different administrations would not be supporting us if our position were a threat to innovation.”

U.S. Government: A General Rule is Inappropriate

Questioning Stewart, who is supporting Oracle’s position for the U.S. government, Chief Justice Roberts again asked for reassurance that a finding for Oracle will not “ruin the tech industry in the United States.”

Stewart reiterated the earlier assertion that there have been no detrimental effects since the Federal Circuit’s 2014 ruling, and added that, while “it may be that in particular circumstances, particular interfaces can be copied without authorization,” such as in the case of short segments of code, “that’s not a basis for a general rule.”

“There’s a prevalent practice of licensed copying of declarations,” Stewart added, including through open source licensing.

The justices also questioned Stewart on whether the Federal Circuit’s decision to review the jury’s finding of fair use de novo was appropriate, or if the case should be remanded under a new standard of review.

While Stewart conceded that the issues are subject to the fair use analysis, he argued that the use was not fair in this instance. He also pointed out that a remand could have significant effects on summary judgment and trial practice.

Possible Affirmance?

Brian Michalek of Saul Ewing Arnstein & Lehr said that “questioning from Chief Justice Roberts, Justice Thomas, and Justice Gorsuch seemed to suggest that each had a comfort level that the Oracle software code was, in fact, protectable under the copyright laws. In contrast, Justice Sotomayor and Justice Breyer were concerned about what the particular code was.”

However, given the direction of the questioning overall, “it looks like many of the justices were comfortable enough with Oracle’s code being copyright protectable to suggest a possible affirmance,” Michalek said.

IPWatchdog Founder and CEO Gene Quinn said “it seems to me that unless the Supreme Court fundamentally changes the law, Google will lose.” He added:

They copied the code and their argument has essentially been that they should be allowed to do it because they are Google. They are making the same arguments they always make. Copyright laws shouldn’t apply to them because if it does then their business model collapses and their services won’t be nearly as useful. Hardly a reason to engage in tortious interference with the creative works of others.

It’s All in the Analogy

Supreme Court Justices love analogies – here are some brought up in today’s oral argument in an attempt to help illustrate whether Google’s copying of Oracle’s APIs was justified:

  • Copying the headings and organization of a brief (Roberts)
  • Cracking a safe to get what you want (Roberts)
  • Copying the combination to a safe (Roberts)
  • Turning over a football team’s playbook (Thomas)
  • Twenty students in a math class coming up with multiple proofs, some more elegant than others (Kagan)
  • Organization of a menu in a restaurant
  • A QWERTY keyboard (Breyer)
  • A novel way of arranging a grocery store (Kagan)

 

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 5 Comments comments. Join the discussion.

  1. Jeremy Lea October 7, 2020 6:02 pm

    The one that everyone missed is that APIs are digital forms. You fill one in and give it to a worker, it does what you asked (possibly with side effects) and returns results. This is not an analogy, it is a fact (ask a computer scientist if you doubt me). Forms are not copyrightable, for good reason. Imagine if every bank had to make up a new name for a ‘deposit slip’, and someone could copyright “First Name, Last Name” on a form! Google copied Java’s API, the same as businesses have been copying each others forms since the dawn of time, and for the same reason: it’s easier to present a known interface to customers – even if some people don’t think it is fair.

  2. Mark October 8, 2020 10:47 am

    The justices comments and questions in support of copyright law seem equally applicable to patent law.

  3. Anon October 8, 2020 12:43 pm

    Mr. lea – may one distinguish between blank forms and a compilation of completed forms?

    Leastwise as to API’s, I do not think that the analogy (and no, it IS analogy and not fact as you put it) quite holds up.

  4. Night Writer October 14, 2020 6:43 am

    It was scary how the justices cited to briefs that had names that indicated the represented the software community as if those briefs represented the actual opinions of the software community.

    Just total BS.

  5. Thorne October 20, 2020 8:56 am

    Googles argument is that of a person who wants to copy a book that shows how to create a perfect sphere, and says because a perfect sphere is what it is, there is only one way to write the book, therefore the book must be public domain.

    The fact is, that the perception of a “Perfect Sphere” is not something you can copywrite because “It is what it is”, but a book about it, (IE: The expression of that perception), is a work of creation and that “Is” something you can copywrite.

    The real question is: Have we had enough innovation in writing of any kind (not just software) ?

    A decision for Google using Googles arguments will actually end software innovation over time. Why sit for hours working or spend millions to have software written when you can claim, (which is totally false) “There is only one way to do this”.

    Then you can just copy someone else’s hard work. ( yes small bits of software are copied from others, like using the expression “Works like a charm” when writing a book, but at the end of the day it is the end result that is the creation to be protected.

    Actually the test should be exactly that. Can you change some of the interior phrases and achieve the same result? If so then it is the end result that is the “Actual” work product to be protected.

    The fact that Google, who has the money, chose not to have an even better interface written by one of it’s many software teams, which they have done in many other cases, is a loss to us all.

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