“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.
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.
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)