On October 7, 2020, the Supreme Court held oral arguments in Google LLC. v. Oracle America, Inc.
The case raises interesting questions about the protectability of computer code, the intersection between copyright and patent law, and the appropriate standard of review of jury determinations on fair use.
The outcome could have longstanding repercussions for the protection and use of software.
When creating software applications, developers rely on functionality built into operating systems and programming languages. An API provides a menu of available functionality and tells developers what to provide and what information will be returned. According to the U.S. Court of Appeals for the Federal Circuit, the jury heard evidence that Google wanted to “move quickly to develop a platform that would attract Java developers.” Oracle Am., Inc. v. Google LLC, 886 F.3d 1179, 1187 (Fed. Cir. 2018). After negotiations with Oracle reached an impasse, Google moved forward with its own implementation of Java but “copied verbatim the declaring code of the 37 Java API packages.” Id.
In 2018, Oracle accused Google of, among other things, copyright and patent infringement. Though the patent claims were resolved early on by a jury verdict of non-infringement, which Oracle did not appeal, the U.S. Court of Appeals for the Federal Circuit nonetheless retained appellate jurisdiction over the copyright issues for the duration of the case, but, as required, applied Ninth Circuit law.
In 2012, the U.S. District Court for the Northern District of California found that the Java API was not subject to copyright protection. Oracle appealed. In 2014, the Federal Circuit reversed (holding APIs copyrightable), and, in 2015, the Supreme Court denied certiorari. The case was remanded to the district court, went to trial on fair use, and, in 2016, a jury found for Google. Oracle appealed and, in 2017, the Federal Circuit held that the jury verdict finding fair use was in error. In 2019, the Supreme Court granted certiorari on two issues: (1) whether copyright protection extends to software interfaces such as APIs and (2) whether use of software interfaces when creating new applications constitutes fair use. Prior to the oral argument the Supreme Court requested supplemental briefing on the standard of review for jury findings of fair use and the implications of the Seventh Amendment.
During the argument, Google’s attorney, Thomas Goldstein, focused on the merger doctrine and idea/expression dichotomy embodied in 17 U.S.C. § 102(b). Specifically, Goldstein argued that the declaring code in the Java API was the only way to invoke Java, so those particular expressions (the declaring code) “merge” with the “idea” of using the Java language.
Several Justices questioned Mr. Goldstein about other companies that had developed mobile platforms without using Java or its APIs, which, according to the Justices, seemed to call into question Google’s argument that it was ‘necessary’ for Google to copy the declaring code because it could only be written one way. When Justice Gorsuch posed such a question, Mr. Goldstein responded that, “[i]f the task is at a high level of generality, as you say, an idea of just being able to create a phone, fair enough. But that is not the test. The test is look at the actual copyrighted work and find its methods of operation.”
Mr. Goldstein also attempted to focus on larger policy considerations that preventing reuse of APIs would lead to inefficiency and stifle innovation, contrary to the goals of copyright, and repeatedly asserted that granting copyright protection to the Java APIs is equivalent to granting patent rights. Specifically, Mr. Goldstein argued that Java’s functionality is the domain of patent rather than copyright, and that granting copyright protection in the declaring code would effectively be granting Oracle a copyright in Java’s functionality, which is wrong because functionality is a patent right.
At the same time, Mr. Goldstein attempted to alleviate fears that ruling that copyright did not protect software APIs would eviscerate copyright protection for software programs. In doing so, Mr. Goldstein attempted to draw a distinction between APIs and other kinds of code, arguing that an API “tells someone else how to operate the computer program,” and accordingly, is unlike any other code. In fact, Mr. Goldstein argued that a ruling for Oracle would lead to disastrous consequences in the software industry by stifling the common practice of reusing APIs with custom implementations.
Oracle, represented by Joshua Rosenkranz, first grappled with the Court’s questioning around the protectability of the declaring code. Justice Roberts analogized to the organization of a restaurant menu by “appetizers,” “entrees,” and “desserts”, which organization all are free to use. In reply, Mr. Rosenkranz distinguished this analogy, explaining “[i]t’s like there’s an app for that. There’s a doctrine for that, too, actually. First, for the—menu, there’s scènes à faire … What we’ve got here is very different… We filled the blanks in 30,000 times over, and each time had its own description that no one else was using.”
Mr. Rosenkranz also addressed the fair use issues on appeal, arguing that “[n]o court has found fair use or upheld a fair use verdict where a copyist copied so much valuable expression into a competing commercial sequel to mean the same thing and serve the same purpose as the original.” Mr. Rosenkranz also defended the Federal Circuit’s de novo review of the jury’s fair use verdict, pointing to the Supreme Court’s Harper & Row decision as an example of de novo review.
Throughout oral argument, Mr. Rosenkranz also answered high-level policy questions similar to those posed to Google about the effects of a ruling on the software industry. He asserted that a finding that Google’s use was fair would lead to rampant copying in the software industry and undermine the incentives for creating new, innovative works.
Rosenkranz, and Deputy Solicitor General Malcolm Stuart, who argued for the Government supporting Oracle’s position, also pointed out that the Federal Circuit rulings in Oracle’s favor did not upend the industry as Google suggested. The Court also questioned Stuart on the Federal Circuit’s decision to review a jury finding de novo and whether a remand with a different standard of review would be more appropriate. Stuart expressed concern that remanding the case would open up concerns for trial practice, and in particular, rulings on summary judgment which can include questions of law and fact.
Throughout the arguments, several Justices expressed concern that a finding that the Java API was not protectable would go against the protection afforded computer programs in 17 U.S.C. § 101. It will be interesting to see if the Court identifies a distinction between the protectability of APIs/declaring code and computer code.
Alternatively, the Court could uphold the copyrightability of the Java API (with implications for the copyrightability of APIs in general) while also finding that the use of the API in this case (if not in other cases) was protected fair use, either by simply deferring to the jury or on the basis of the Court’s own reasoning. Such a ruling could lead to specific case-by-case analysis of future use of software APIs.
The Court could also sidestep the copyright issues altogether, focusing instead on the Federal Circuit’s de novo review of the jury verdict on fair use, and ask the Federal Circuit to review the jury verdict under a more deferential standard of review.
In any event, the Supreme Court’s decision in this case will likely have lasting effects on copyright law and the software industry, and the software development and legal communities eagerly await a ruling.
The case is Google LLC v. Oracle Am., Inc., Dkt. 18-956 (S. Ct. 2018)
 See 28 U.S.C. § 1295
 Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 974 (N.D. Cal. 2012)
 Oracle Am., Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014)
 Google, Inc. v. Oracle Am., Inc., 576 U.S. 1071 (2015)
 Oracle Am., Inc. v. Google Inc., No. C 10-03561 WHA, 2016 U.S. Dist. LEXIS 145601 (N.D. Cal. Sep. 27, 2016)
 Oracle Am., Inc. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018)
 Google LLC v. Oracle Am., Inc., 140 S. Ct. 520 (2019)
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