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Copyright, Software and Fair Use of APIs: U.S. Supreme Court decides Google v. Oracle

April 8, 2021

It is not an understatement to say that the economy is powered by software. So when a decision comes down from the U.S. Supreme Court on the extent to which software can be owned, it deservingly acquires “landmark case” status, as has Monday’s decision in Google LLC v. Oracle America, Inc., which provided some guidance in the context of a special type of software known as an Application Programming Interface or “API.”

Software is, in the words of the Copyright Act’s definition of a computer program, a “set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” When we think of software generally, we might be more inclined to think of patents – which are designed typically to protect inventions that do something. And, certainly, software does something. Unlike patent law, the law of copyright is designed to protect the expressive quality of a creation (the original organization of data resulting in a beautiful piece of music, literature, theater). At first blush, this does not sound much like software. But back to that definition of a computer program; although highly functional, software code contains that “set of instructions” – which, under U.S. law, has been held to constitute an original work, fixed in tangible form, entitled to copyright protection. The irony is that, for reasons we won’t go into here, patents have been somewhat difficult to obtain for software; so, in a sense, by placing protection over the expressive attributes of software (such as they are), copyrights have been affording an end run protection over the functional aspects of software. And the viability and extent of that protection, of course, means billions of dollars.

With the Google case, there was some expectation that the Supreme Court would add clarity to the reach of copyright law’s protection of software. The Court added clarity – but only some.  Google had copied roughly 11,500 lines of Oracle’s Java SE application programming interface API in order to integrate it into an Android development environment for smartphone App programmers. These programmers would call on original Android implementation code, written by Google, to create their Android developments. The copied API Oracle code is an interface – containing shorthands (called “declarations”) for certain tasks – for facilitating this development by Android developers. Google copied the declarations because the development community is very familiar with the Oracle Java API declarations and their system for calling out certain tasks. The known declarations have allowed Android developers to more easily and efficiently call out portions of original Android software that is actually used to develop and implement the various android developments.

The Court was faced with two questions: (1) to what extent was the highly functional copied Java code copyrightable; and (2) if copyrightable, was Google’s use a “fair use?”

Writing for the majority (Justice Breyer was joined by all but Justices Thomas and Alito, who dissented, and Justice Barrett, who did not participate), Justice Breyer elected not to decide the first question and jumped to the second. Assuming but not deciding that the code was copyrightable, Justice Breyer concluded that Google’s use of Java’s preexisting declaring code and organizational structure in its Android platform was protected by the fair use doctrine. Significantly, given Google’s use of the code in the smartphone marketplace, the Court’s determination averted roughly $8.8 billion in liability asserted by Oracle.

Although the majority came short of deciding the copyrightability issue, it made a number of statements pointing to the highly functional (as opposed to expressive) quality of the copied declaring code (“[T]he declaring code is, if copyrightable at all, further than are most computer programs (such as the implementing code) from the core of copyright”). Justice Thomas in dissent (joined by Justice Alito) would hold that the code was copyrightable and that Google infringed. No doubt lower courts will continue to battle over the extent of copyrightability of software.

In the meantime, on the fair use question, the majority offered some meaningful direction. The Court noted the unique manner in which the fair use doctrine applies to computer programs due to their functional nature, which requires some check on the monopoly provided by copyright protection. The Court then assessed traditional fair use notions concerning the purpose and character of the use, the nature of the protected work, the amount and substantiality of the portion used, and the effect of the use on the potential market for the protected work.  Overall, Google’s use of the functional Java declaring code, interfacing with its independently developed implementing code, to develop a new platform for software development in the smartphone environment was central to the Court’s application of the fair use doctrine. Further, the Court found that fair use applied given the relatively limited amount of Oracle code used (particularly when considering the copied declarations as part of a total basket of Oracle code that included 2.86 million lines of Oracle implementing code) and the fact that the resulting development environment did not damage the marketability of the Java SE platform outside the Android context.

The Court’s decision has significant implications both for the software industry and for copyright protection in general. Application of the fair use factors requires nuanced judgments as to the nature of the works, their purposes, their use, and their commercialization. As a result, owners and potential users of such protectable material may want to undertake a more nuanced assessment of their software technologies and of the application of the Court’s ruling in appropriate circumstances.

The views and opinions expressed in the article represent the view of the author and not necessarily the official view of Clark Hill PLC. Nothing in this article constitutes professional legal advice nor is intended to be a substitute for professional legal advice.

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