Fair Use Shields Google in Its Copyright Battle with Oracle

by Jo Dale Carothers, Ph.D.
The IP Law Blog

Finding Google’s copying a fair use, the Supreme Court ended Oracle’s decade-long attempt to recover copyright damages.  The battle began between these tech giants when Google designed its Android software platform for mobile devices, such as smartphones.  The platform allows “computer programmers to develop new programs and applications” for Android-based devices.  In designing the mobile platform, Google independently developed most of the code but copied what the parties referred to as “declaring code” for 37 application programming interfaces, or APIs.  The declaring code in APIs “enables a set of shortcuts for programmers.”  A programmer can select a particular task from the API’s task library without having to learn anything more than a simple command, thus allowing the programmer to use a library of prewritten code to carry out complex tasks without having to write the code from scratch.

At the time Google was developing the Android platform, many software developers were using Sun Microsystems’ Java programming language and its popular Java SE platform.  Oracle, shortly after acquiring Sun Microsystems in 2010, accused Google of taking critical portions of the APIs in the Java code for unauthorized use in its Android platform.  While Google independently developed the underlying code for the tasks, Google copied the declaring code for certain tasks “useful to programmers working on applications for mobile devices.”  “Without that copying, programmers would need to learn an entirely new system to call up the same tasks.”  With the “structure, sequence, and organization” of the APIs so similar, Oracle alleged Google infringed its copyrights.

The U.S. Constitution proclaims that copyright protection is to “promote the Progress of Science and useful Arts …”  Art. I, §8, cl. 8.  In particular, “copyrights protect ‘expression’ but not the ‘ideas’ that lie behind it.”  While Congress expressly expanded the Copyright Act to include computer programs, Google asserted that APIs are different because they are merely building blocks for developers, and the APIs exhibit little creative expression.  According to Google, it is standard for software developers to use APIs to increase interoperability between products.  Google argued that the material it used from Oracle’s APIs was not copyrightable because of this lack of creative expression.  But, even if APIs are subject to copyright protection, Google argued its use was protected as fair use.  The fair use doctrine “permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster,” such as when the copying transforms the original work into something new.

From a policy perspective, Google opined that applying strict copyright protection to APIs would have a chilling effect on developers.  In contrast, Oracle argued that allowing use of the APIs would discourage programmers from investing in software development if they knew they would not be compensated when others used their work.

In reaching its decision, the Supreme Court avoided the burning question as to whether APIs are copyrightable, stating “[g]iven the rapidly changing technological, economic, and business-related circumstances, we believe we should not answer more than is necessary to resolve the parties’ dispute.”  Instead, the 6-2 majority assumed for the sake of argument that the code was copyrightable, and found Google’s copying represented a fair use.  (Justice Barrett did not participate in the decision because she had not been present for oral argument.)

The Court reasoned that the fair use doctrine “can play an important role in determining the lawful scope of a computer program copyright” and “distinguish between expressive and functional features of computer code where those features are mixed.”  According to the Court, the fair use doctrine “can focus on the legitimate need to provide incentives to produce copyrighted material while examining the extent to which yet further protection creates unrelated or illegitimate harms in other markets or to the development of other products.”

Weighing the fair-use factors, the Court found in Google’s favor.  Google copied a relatively small amount of code, and Google’s use of the code was transformative.  The Court stated, “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.”  The Court also explained Google used the APIs to let Java programmers easily build Android apps, which is fundamentally a transformative use.  As a result, much of the value is from developers investing time to learn the system rather than from the actual program operation itself.  “Google copied only what was needed to allow programmers to work in a different computing environment without discarding a portion of a familiar programming language.  Google’s purpose was to create a different task-related system for a different computing environment (smartphone) and to create a platform – the Android platform – that would help achieve and popularize that objective.”

The Court expressed concern that given programmer’s investment to learn the Java API, allowing Oracle to enforce a copyright claim “would risk harm to the public” by essentially locking up the declaring code.  “Oracle alone would hold the key.”  “The result could well prove highly profitable to Oracle (or other firms holding a copyright in computer interfaces) … [but] the lock would interfere, not further, copyright’s basic creativity objectives.”  On the other hand, “[t]o the extent that Google used parts of the Sun Java API to create a new platform that could be readily used by programmers, its use was consistent with that creative ‘progress’ that is the basic constitutional objective of copyright itself.”

In dissent, Thomas and Alito argued the Court was wrong to skip the step of determining whether APIs are copyrightable because jumping to the fair-use analysis “distorts” the outcome.  The dissent further stated that “Oracle’s code at issue here is copyrightable, and Google’s use of that copyrighted code was anything but fair.”  However, the majority did not agree.

While the decision was narrowly limited to the APIs in this case and did not overturn or modify earlier fair-use cases, it will still have a significant impact on computer programmers and app developers.  However, the lack of a decision as to whether APIs are copyrightable means more battles are likely to follow.