On April 5th, 2021 the Supreme Court issued a 6-2 ruling in Google LLC v. Oracle Am., Inc., No. 18-956, a dispute which has lasted over a decade between Google LLC and Oracle America, Inc., finding that Google’s use of approximately 11,500 lines of Oracle’s computer code from its Java SE program in creating its Android operating system was a fair use. Writing for the majority, Justice Breyer wrote that “where Google reimplemented a user interface, taking only what was needed to allow users to put their accrued talents to work in a new and transformative program, Google's copying of the Sun Java API was a fair use of that material as a matter of law.” Slip Op. at 35.
The case began in the Northern District of California in 2010, where Oracle claimed that Google’s use of 11,500 lines of code in Oracle’s Sun Java API constituted copyright and patent infringement. After a jury rejected the patent claims, found limited copyright infringement, and deadlocked on whether Google’s use was fair, the court issued a post-verdict judgment finding the APIs at issue to be uncopyrightable, starting a years-long back-and-forth with the Federal Circuit. Slip Op. at 9. In 2015, on appeal, the Federal Circuit held that the declaring code and its organizational structure were copyrightable as a matter of law and remanded the case for a trial on fair use. After the jury found that Google’s use was fair, the Federal Circuit in 2018 once against reversed the district court and found that the use was “not fair as a matter of law,” remanding for a trial on damages. Slip Op. at 11. The Supreme Court subsequently took up the case after granting Google’s petition for certiorari. Id.
Importantly, the majority opinion did not examine in detail the fundamental question of whether the claimed copyrighted work at issue, Oracle’s API, was itself copyrightable, as the Court noted it “should not answer more than is necessary to resolve the parties’ dispute… and shall assume, but purely for argument’s sake, that the entire Sun Java API falls within the definition of that which can be copyrighted.” Slip Op. at 15. Instead, the Court’s opinion focused on the narrow question of fair use. Id.
As a preliminary matter, the Court agreed with the Federal Circuit that fair use is a mixed question of law and fact. Slip Op. at 19. The Court noted that where, as here, it is not possible to break apart the issue into separate factual and legal parts, the standard of review for a mixed question will depend on whether answering the issue requires primarily legal or factual analysis—and here, the question was primarily legal in nature. Slip Op. at 19 (citing U.S. Bank N.A. v. Village at Lakeridge, LLC, 583 U.S. ___, ___ (2018) (slip op., at 9)). Accordingly, the Court dispensed with Google’s arguments that the Federal Circuit’s displacement of the jury’s fair use finding violated the Seventh Amendment, noting that “[i]t does not violate the Reexamination Clause for a court to determine the controlling law in resolving a challenge to a jury verdict.” Slip Op. at 20.
In turn, the Court considered each of the four statutory fair use factors— 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, and the effect of the use upon the potential market. 17 U.S.C. § 107. First, the Court analyzed the second factor, the nature of the copyrighted work, devoting a significant portion of the opinion to differences between implementing code and declaring code; while implementing code instructs a computer on the steps to follow to carry out a particular task—and Google wrote its own implementing programs that would perform each of the tasks called by the API—declaring code labels and organizes the tasks in the API. Slip Op. at 22. The Court held that “the declaring code is, if copyrightable at all, further than are most computer programs (such as the implementing code) from the core of copyright.” Slip Op. at 24. Noting that Google had not copied implementing code, the Court found that the nature of the copyrighted work weighed in favor of a fair use determination. Id.
As to the first factor, the Court assessed the purpose and character of Google’s use, a factor which often assesses whether the use is “transformative,” meaning “a copying use that adds something new and important.” Slip Op. at 24 (citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)). The Court found that Google’s use was indeed transformative in part because “Google used parts of the API to create a new platform” making its use “consistent with creative ‘progress’ in the copyright law.” Slip Op. at 25. The Court referenced the characterization of Google’s use in several amicus curiae briefs, namely as a “‘reimplementation,’ defined as the ‘building of a system… that repurposes the same words and syntaxes’ of an existing system—in this case so that programmers who had learned an existing system could put their basic skills to use in a new one.” Slip Op. at 26. The Court indicated that “reimplementing an interface can further the development of computer programs” and therefore, the use was transformative such that the purpose and character of the use weighed in favor of fair use. Id.
As to the amount and substantiality of the use, the Court acknowledged that although 11,500 lines of code may, in isolation, be considered a large amount, the more important consideration to this third fair use factor was the fact that the 11,500 lines only comprised 0.4 percent of the total 2.86 million lines of code in Oracle’s API. Slip Op. at 28. The Court also noted that a valid “transformative” purpose often causes the “substantiality” of a use to weigh in favor of fair use. Slip Op. at 29. Rejecting the Federal Circuit’s contention that, in order to prevail on the amount and substantiality factor, Google could only copy what was strictly “necessary,” to achieve its goal of compatibility with Java, the Court instead determined that Google’s objective was bigger than simply making Java usable on Android. Slip Op. at 29-30. According to the Court, Google’s aim was transformative: to allow programmers to make use of their knowledge and expertise of the Sun Java API to write new programs for smartphones with the Android platform. Slip Op. at 30. “The declaring code was the key that it [Google] needed to unlock the programmers’ creative energies. And it needed those energies to create and to improve its own innovative Android systems.” Slip Op. at 30. Therefore, given the transformative purpose of Google’s use, the substantiality of the work taken weighed in favor of fair use. Id.
Finally, the Court found that the market effect of Google’s use on Oracle weighed in favor of fair use because various pieces of evidence demonstrated that Oracle likely would not have been able to enter the mobile phone market successfully, and interestingly, the Court considered not only the market value of the copyrighted work, but the “public benefits the copying will likely produce” as part of this analysis, suggesting that in some circumstances, copying itself may be part of the very “progress” that the Copyright Act was meant to promote. Slip Op. at 31 (emphasis added).
In his dissenting opinion, Justice Thomas, joined by Justice Alito, was critical of the majority’s failure to examine the question of copyrightability, as he noted that “skipping over” this question “distorts its fair-use analysis.” Dissent at 2. Rather, Justice Thomas insisted that he would find that declaring code is protected by copyright and is “closer to the ‘core of copyright’”, which would affect the analysis of fair use and, in his view, lead to the conclusion that Google’s use was not fair. Dissent at 10, 19. While the majority opinion does not provide a robust analysis of why it elected not to address copyrightability, it emphasized that fair use is not an “all-or-nothing” approach, Slip Op. at 18, criticizing the dissent’s refusal to “distinguish among computer code… when considering the ‘nature of the work’… even though there are important distinctions in the way that programs are used and designed”, its refusal to acknowledge that “reuse of code in a new program will ever have a valid ‘purpose and character’… even though the reasons for copying computer code may vary greatly and differ from those applicable to other sorts of works”, and its insistence on prioritizing “certain factors over others… even though our case law instructs that fair use depends on the context.” Slip Op. at 17-18.
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