Computer Programs are Different, Says SCOTUS in Landmark Ruling that Google’s Use of Oracle’s API Packages Was Fair

By Eileen McDermott
April 5, 2021

“Computer programs differ to some extent from many other copyrightable works because computer programs always serve a functional purpose. Because of these differences, fair use has an important role to play for computer programs by providing a context-based check that keeps the copyright monopoly afforded to computer programs within its lawful bounds.” – Supreme Court opinion in Google v. Oracle

fair use, Google v. Oracle - https://depositphotos.com/133300380/stock-photo-u-s-supreme-court.htmlThe U.S. Supreme Court this morning found Google’s use of Oracle’s Java application programming interface (“API packages”) a fair use as a matter of law, with Justices Thomas and Alito dissenting. The decision reverses a 2018 Federal Circuit ruling in favor of Oracle. Google appealed that decision to the Supreme Court in January 2019, and three attorneys made arguments to the High Court in October 2020: 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. Although the justices’ questioning at that hearing seemed skeptical of Google’s arguments, it also revealed that the Court wanted to avoid upending industry practices in computer programming.

The High Court agreed in 2019 to consider the following 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.

Today, the Court held:

Google’s copying of the Java SE API, which included only those lines of code that were needed to allow programmers to put their accrued talents to work in a new and transformative program, was a fair use of that material as a matter of law…. Computer programs differ to some extent from many other copyrightable works because computer programs always serve a functional purpose. Because of these differences, fair use has an important role to play for computer programs by providing a context-based check that keeps the copyright monopoly afforded to computer programs within its lawful bounds.

Justice Breyer delivered the opinion for the Court. The majority explained that, in reviewing the Federal Circuit’s decision, the Court assumed, “for argument’s sake,” that the material was copyrightable. However, applying the Copyright Act’s four guiding factors to assess fair use, the Court determined that Google’s “limited copying of the API” was a fair use.

The four factors are:

  • The purpose and character of the use;
  • The nature of the copyrighted work;
  • the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  • the effect of the use upon the potential market for or value of the copyrighted work.

As to the nature of Oracle’s copyrighted work, the Court said that, while the declaring code on the one hand “resembles other copyrighted works in that it is part of a computer program…it differs, however, from many other kinds of copyrightable computer code.” This is because it cannot be separated from other, uncopyrightable elements. For instance, it is “inextricably bound together” with “the division of computing tasks; the idea of organizing tasks into what we have called cabinets, drawers, and files, an idea that is also not copyrightable;…the use of specific commands known to programmers, known here as method calls (such as java.lang.Math.max, etc.), that Oracle does not here con-test;  and implementing code, which is copyrightable but was not copied.”

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This makes the declaring code that Google copied further from “the core of copyright” than other kinds of works, said the Court. It added:

That fact diminishes the fear, expressed by both thedissent and the Federal Circuit, that application of “fair use” here would seriously undermine the general copyright protection that Congress provided for computer programs. And it means that this factor, “the nature of the copyrighted work,” points in the direction of fair use.

On the subject of the purpose and character of the use, the Court assessed whether Google’s use was transformative in some way, so as to add something new and important to the copyrighted work. The majority said:

Here, Google’s use of the Sun Java API seeks to create new products. It seeks to expand the use and usefulness of Android-based smartphones. Its new product offers programmers a highly creative and innovative tool for a smartphone environment…. Google, through Android, provided a new collection of tasks operating in a distinct and different computing environment. Those tasks were carried out through the use of new implementing code(that Google wrote) designed to operate within that new environment.

The Court likewise found that the amount and substantiality of the copied content should be viewed in light of “the several million lines that Google did not copy,” rather than the 11,500 lines of code it did copy, because those lines were copied for a “valid and transformative purpose.” While the Federal Circuit had argued that Google could have copied only the 170 lines of code that were necessary to write the Java language, the High Court said that view of Google’s legitimate objectives was too narrow. The Court explained:

Google’s basic objective was not simply to make the Java programming language usable on its An-droid systems. It was to permit programmers to make use of their knowledge and experience using the Sun Java API when they wrote new programs for smartphones with the Android platform. In principle, Google might have created its own, different system of declaring code. But the jury could have found that its doing so would not have achieved that basic objective. In a sense, the declaring code was the key that it needed to unlock the programmers’ creative energies. And it needed those energies to create and to improve its own innovative Android systems.

Finally with respect to market effects, the Court said there was too much uncertainty as to whether Sun/ Oracle could have successfully competed in Android’s market place; an inability to accurately determine whether Oracle’s lost revenue has to do with its own investments in creating the Sun Java API or with third parties’ investments; and a high risk of creativity-related harms to the public, all of which weighed in favor of fair use.

Before reversing and remanding the case back to the Federal Circuit, the Court made clear that its decision does not overturn or modify its earlier cases on fair use, but rather that this case is different:

[W]e here recognize that application of a copyright doctrine such as fair use has long proved a cooperative effort of Legislatures and courts, and that Congress, in our view, intended that it so continue. As such, we have looked to the principles set forth in the fair use statute, §107, and set forth in our earlier cases, and applied them to this different kind of copyrighted work.

In their dissent, authored by Justice Thomas, Justices Thomas and Alito argued that the Court reached the “unlikely result” that Google’s use was fair “in large part because it bypasses the antecedent question clearly before us: Is the software code at issue here protected by the Copyright Act?”

By choosing not to analyze the question of copyrightability, the Court skipped “half the relevant statutory text” and denied the reality that Google’s use was “anything but fair.” In its own analysis of the four fair use factors, the dissent found that three of the four factors weighed “decidedly against Google” and that the sole factor that possibly favored Google—the nature of the work—“cannot by itself support a determination of fair use.” The dissent concluded:

The majority purports to save for another day the question whether declaring code is copyrightable. The only apparent reason for doing so is because the majority cannot square its fundamentally flawed fair-use analysis with a finding that declaring code is copyrightable. The majority has used fair use to eviscerate Congress’ considered policy judgment.

In a statement following the ruling, Dorian Daley, Executive Vice President and General Counsel, Oracle, said:

The Google platform just got bigger and market power greater — the barriers to entry higher and the ability to compete lower.  They stole Java and spent a decade litigating as only a monopolist can.  This behavior is exactly why regulatory authorities around the world and in the United States are examining Google’s business practices.

J. Michael Keyes of Dorsey & Whitney called the ruling “the biggest copyright decision in a generation” and said that it’s “hard to overstate the significance.” He added that the Court’s fair use analysis is likely to result in “more copying, more cases, and more claims of fair use” with respect to software-related claims.

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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 16 Comments comments.

  1. IPdude April 5, 2021 1:16 pm

    Does this make patents more or less important in protecting software?

  2. Anon April 5, 2021 1:24 pm

    Contrast the lead quote (“always serve a functional purpose”) with that same Court’s disdain for the aspect of intellectual property law that is geared towards protecting function….

  3. Pro Say April 5, 2021 5:07 pm

    “The majority has used . . . to eviscerate Congress’ considered policy judgment.”

    Yet it’s somehow O.K. to eviscerate Congress’ considered patent eligibility-for-all-innovations policy judgment.

    Hypocrisy with a capital “H.”

  4. Paul Morinville April 5, 2021 10:11 pm

    Might be a good decision for farmers who cannot work on their tractors due to copyright infringement of an API.

  5. Curious April 5, 2021 11:33 pm

    There is a term that comes to mind from the late Justice Scalia …. ah yes, “gobbledygook.”

    SCOTUS had a result in mind (spare Google the expense of actually paying for using what Oracle created) and just added a whole bunch of nonsense to justify it.

    BTW, whatever happened to the “commercial use” consideration of “fair use”? Actually, in reading the decision, I see that they gave it short shrift. Apparently, being used commercially is not dispositive because “news reporting” is an example of fair use and new reporting can be done for commercial profit. With that loophole, SCOTUS basically eviscerated the “commercial nature” consideration of “fair use.” Google’s copying was directly related to making their product more commercially viable. This isn’t “news reporting” which has a 1st Amendment counter-considerations to take into account. Google was engaged in a money-making endeavor — plain and simple.

    As for SCOTUS’s assertion that the Google’s use was “transformative” SCOTUS again makes an exceptionally poor analogy. They write, for example, “An “‘artistic painting’” might, for example, fall within the scope of fair use even though it precisely replicates a copyrighted “‘advertising logo to make a comment about consumerism.’” There, the fair use involved freedom of speech and potentially political speech, which enjoys a high level of protection. By comparison this is what the wrote about Google’s use: “Google copied portions of the Sun Java API precisely, and it did so in part for the same reason that Sun created those portions, namely, to enable programmers to call up implementing programs that would accomplish particular tasks.” I’m sorry, enabling programmers to call up implementing programs that would accomplish particular tasks makes for an exceptionally poor comparison to someone copying something in order to create what could be considered political speech.

    These are absolutely horrible analogies that goes to show the extent of mental gymnastics that SCOTUS had to go through to fit a square peg in to a round hole — again, in order to arrive at their predetermined result. This is, unfortunately, yet another example of where SCOTUS allows the desired result to dictate the law rather than having the law dictate the result.

    It is sad but unfortunately very predictable. Personally, this decision likely does not impact me or my clients in any significant way. However, as an attorney that values the LAW, decisions like this only serve to further my disgust with how SCOTUS has become (perhaps it has always been like this?) something of a shadow-Congress who get to rewrite laws in the manner they see fit.

  6. Anon April 6, 2021 7:42 am

    It is sad but unfortunately very predictable.

    Bingo

    However, as an attorney that values the LAW, decisions like this only serve to further my disgust with how SCOTUS has become

    Double Bingo.

    something of a shadow-Congress who get to rewrite laws in the manner they see fit.

    Triple Bingo.

  7. TFCFM April 6, 2021 9:57 am

    Whew!

    Every program but the first one WON’T have to rename its “open,” “save,” “print,” and “close” functions to avoid infringing an alleged copyright (as might well have been the next logical case if the court had ruled otherwise).

    Presumably, cookbook authors are now safe to categorize their works as “appetizers,” “entrees,” and “desserts” (or even more specifically) now, too.

  8. Curious April 6, 2021 11:43 am

    Every program but the first one WON’T have to rename its “open,” “save,” “print,” and “close” functions to avoid infringing an alleged copyright (as might well have been the next logical case if the court had ruled otherwise).
    I’m always amused when TFCFM pops up to wave his ignorance flag back and forth. Yes — we already know, you don’t have to prove it to us (yet) again.

  9. Peter Corcoran April 6, 2021 11:58 pm

    Google. Too big to fail. Thanks SCOTUS for clouding and paralyzing even more IP law.

  10. Peter Corcoran April 7, 2021 12:13 am

    Programmers, you’re now free to copy Google source code for transformative applications.

  11. George April 24, 2021 3:52 pm

    @IPDude #1

    MUCH LESS important (and were they ever?). Copyright and trade secret laws (along with encryption) are all that has ever been needed to almost 100% protect software from theft, illegal usage and widespread distribution – even internationally. When it comes to ‘guessing’ or reverse engineering how software works, even patents can’t protect against that anyway (if it’s done right, see Apple v. Franklin Computer & VTech’s 128 Laser).

  12. George April 24, 2021 3:57 pm

    @Paul Morinville #4

    Yeah, but it’s even more complicated than that! Rarely would they have to actually ‘hack’ their tractors. They just want to be able to fix them and maybe substitute cheaper parts (that now would void their warranties even if they could find a way to do it). Once you own something, you should be able to do anything with it that you want to.

    By the way, how’s your lawsuit coming? Any word yet if it will be allowed to proceed? Sure hope so!!! I might be on their ‘secret list’ too! Would sure like to find out!

  13. George April 24, 2021 4:10 pm

    @Curious

    “I’m sorry, enabling programmers to call up implementing programs that would accomplish particular tasks makes for an exceptionally poor comparison to someone copying something in order to create what could be considered political speech.”

    So ordering a dinner in precisely the way someone else might order it would involved copyright infringement of how the restaurant ‘describes it’ and violates their right to keep their ‘actual recipe’ and ‘cooking instructions’ a secret? If you just call the meal you make at home in which you all the same basic ingredients (but maybe leave out one ot two or substitute for them), you don’t have a right to actually make that meal? You seem to need a good course in making appropriate analogies and using logic to do it. Naming software and describing what’s needed to use it, is NOT the same as the software itself! The same API could execute 100’s of different types of code that could produce hundreds of different results! What you NAME something doesn’t fully describe what it does or how it does it, other wise you could get patent on just the title of your invention!

    The SCOTUS made the right ‘logical analysis’ and decision in this case.

  14. George April 24, 2021 4:12 pm

    @TFCFM

    LOL!!!! Excellent summary!

    I guess you actually know what an API is (and isn’t)!

  15. George April 24, 2021 4:19 pm

    @Curious

    “. . . wave his ignorance flag back and forth.”

    REALLY??? Are you saying the Chief Justices are guilty of doing the same thing? You seem to have contempt for the legal processes of this country. Can you suggest one where it’s more to your liking, ‘Curious’?

    You’d think (licensed) lawyers would have better sense than to make such ‘scurrilous’ remarks! After all, you might one day have to defend such remarks in court (if you make them against the wrong person)! Instead, why not just keep your mouth shut for a change and bite the bullet?

  16. George April 24, 2021 4:23 pm

    @Peter Corcoran

    “Thanks SCOTUS for clouding and paralyzing even more IP law.”

    IP law is already pretty opaque and inconsistent, so this does nothing to change it much, except actually provide a ‘tiny bit’ more clarity for a change. This decision is pretty easy to understand and hard to argue with on the merits. It gets no objections from actual experts in computer science and programming.