On April 5, 2021, the U.S. Supreme Court decided a copyright case that was a decade in the making: whether Google’s copying of approximately 11,500 lines of Oracle’s Java SE API program to develop the Android smartphone platform was a protected “fair use” under US copyright law. Assuming “for argument’s sake” that the Java SE API code was copyrightable, the Court held that Google’s use of the API code was a fair use and not copyright infringement. Google LLC v. Oracle America, Inc., No. 18-956, ____ S. Ct. ____ (April 5, 2021) (2021 WL 1240906).
Sun Microsystems created the Java SE API software, as part of an “open source platform.” The Java platform allowed developers using the Java programming language to write programs that were able to run on any desktop or laptop computer, regardless of the underlying hardware, i.e., the programs were in large part “interoperable”.
After acquiring Android in 2005, Google negotiated with Sun Microsystems to license the Java SE platform. These negotiations failed when Google would not agree to the interoperability requirement. Google proceeded to develop the Android smartphone platform using approximately 100 programmers over the course of three years. According to the Court: “Because Google wanted millions of programmers, familiar with Java, to be able easily to work with its new Android platform, it also copied roughly 11,500 lines of code from the Java SE program. The copied lines of code are part of a tool called an Application Programming Interface, or API.” Google LLC v. Oracle America, Inc. at 3. Programmers use APIs to access a vast library of prewritten code to carry out complex tasks. Of the millions of lines of code created for the Android platform, Google copied 11,500 lines from the Java SE API program. The Java SE API program consists of nearly 3 million lines of code. “Without that copying, programmers would need to learn an entirely new system to call up the same tasks.” Id. at 8.
In 2010, Oracle acquired Sun Microsystems and, shortly thereafter, brought action against Google for copyright and patent infringement based upon Google’s copying of the Java SE API code. In the first trial, the jury rejected Oracle’s patent infringement claims but found that Google infringed Oracle’s copyright in the Java SE API code. The jury deadlocked on whether Google’s copying was a protected “fair use” under the copyright law. The district court set the verdict aside holding that the Java SE API code was not subject to copyright protection as the code is a “system or method of operation” and as such is not copyrightable. Id. at 10.
On appeal, the U.S. Court of Appeals for the Federal Circuit reversed the district court holding that the Java SE API code was copyrightable. The case was remanded for trial on Google’s fair use defense. Google’s petition to the United States Supreme Court on the issue of the copyrightability of the Java SE API code was denied.
In the second trial, the jury found that Google’s use of the Java SE API code was a fair use. The Federal Circuit reversed the decision and remanded the case for a trial on the measure of damages to be awarded Oracle for Google’s copyright infringement. Google sought review again petitioning the Supreme Court to consider the copyrightability of APIs and whether Google’s use of the Java SE API code was a protected fair use and not copyright infringement. The Supreme Court granted the petition.
The Supreme Court’s decision
Justice Stephen Breyer wrote the majority opinion, joined by Chief Justice Roberts and Justices Sotomayor, Kagan, Gorsuch, and Kavanaugh, reversing the Federal Circuit’s decision and holding that “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.” Id., Syllabus at 1. Justice Thomas authored the dissent, joined by Justice Alito. Justice Barrett did not participate.
In reaching this decision the Court assumed that the Java SE API code was protected by copyright, choosing to focus only on the question of fair use. The Court recognized that a decision in favor of Google on either one of the two issues presented by the petition would dispense with Oracle’s copyright claims. The Court thus chose to answer no more than was necessary to resolve the dispute in view of “the rapidly changing technological, economic, and business-related circumstances.” Id. at 15.
The Court first decided that Congress did not shield computer software from the application of the fair use doctrine or any other copyright limiting doctrine. Exclusive rights in computer programs are limited in the same way as any other works. “Just as fair use distinguishes among books and films, which are indisputably subjects of copyright, so too must it draw lines among computer programs. And just as fair use takes account of the market in which scripts and paintings are bought and sold, so too must it consider the realities of how technological works are created and disseminated.” Id. at 18.
The Court next addressed whether the issue of fair use is strictly a legal issue, factual issue or a mixed question of law and fact. Whether or not an issue is a legal or factual one dictates the deference provided by the reviewing court when considering the decisions made by the district court. Here, the Court agreed with the Federal Circuit that fair use is a mixed question of law and fact and “ a reviewing court should try to break such a question into its separate factual and legal parts, reviewing each according to the appropriate legal standard. But when a question can be reduced no further, ….“the standard of review for a mixed question all depends—on whether answering it entails primarily legal or factual work.” Id. at 19 (citation omitted). The Court concluded that in this case the ultimate “fair use” question primarily involves legal work.
The Court then turned to the “basic legal issue” before it: whether Google’s copying of the Java SE API code was “fair use.” The Court proceeded to consider the four factors set forth in §107 of the Copyright Act: the nature of the copyrighted work; the purpose and character of the use; 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. See 17 U.S.C. §107.
The Court held that the nature of the copyrighted work weighed in favor of “fair use.” The Court compared the code in question to other types of computer code. Unlike many other computer programs, the copied lines are “inherently bound together with uncopyrightable ideas (general task division and organization) and new creative expression (Android’s implementing code).” Id. at 24. Distinct from other computer programs, the Java SE API code’s value lies in the investment of time by computer programmers to learn the Java API system. As such, the Court concluded that that the application of fair use in this context is unlikely to undermine the general copyright protection that Congress provided for computer programs.
As to the purpose and character of the use, the Court concluded that Google’s copying of the Java SE API code was transformative and pointed in favor of fair use. Specifically, the record included numerous ways in which reimplementation could further the development of computer programs. In fact, all of the copying was done for the purpose intended by Sun Microsystems: to enable programmers to call up implementing programs that would accomplish particular tasks. The widespread use of the Java programming language was known by Sun Microsystem executives and they believed that use would benefit the company.
When considering the third factor, the amount and substantiality of the portion used, the Court emphasized that the copied code was only 0.4 percent of the entire Java SE API program. The total lines of the Java SE API computer code, including the implementing code, was 2.86 million lines, and Google only copied 11,500 lines. Id. at 28. In addition, the Court recognized that Google did not copy these lines for “their creativity, their beauty, or even (in a sense) because of their purpose.” Id. at 29. Rather, Google copied this code because programmers were already familiar with the Java SE API software and programming language. Therefore, the “substantiality” factor weighs in favor of fair use as the copying was “tethered to a valid, and transformative, purpose.” Id. (citation omitted).
In considering the market effects, the Court concluded that the Android platform did not harm the actual or potential markets for Java SE API software. Further, Sun Microsystems was not positioned to succeed in the mobile phone market based on its primary focus on laptops and desktops. The former CEO of Sun Microsystems was directly asked if the company’s failure to build a smartphone was attributable to Google’s development of the Android platform, and he answered that it was not. Id. at 31.
The Court also recognized that the record demonstrated that the devices were drastically different. Google did not just simply repurpose Sun Microsystems’ code into a small computer. Google’s Android platform was in a “distinct (and more advanced)” market. Id. at 32. Based on these differences, Google’s Android platform was not a market substitute for the Java software. Finally, the Court considered that any enforcement of Oracle’s copyright in this case had the potential to stifle creativity. Due to the uncertain nature of Sun Microsystems’ ability to compete in the Android market place, the fourth factor also weighed in favor of fair use.
After concluding that each fair use factor pointed in favor of fair use, the Court acknowledged that computer programs are primarily functional, making it difficult to apply traditional copyright concepts. Yet, where Google only took what was needed to allow users to put their “accrued talents to work in a new and transformative program,” the Court held that Google’s copying of the Sun Java API was fair use as a matter of law. Id. at 35.
The Supreme Court was careful to avoid overstating the significance of its decision: the opinion notes specifically that the Court did not change the nature of traditional copyright concepts, nor overturn or modify earlier decisions involving application or analysis of the fair use defense. Nevertheless, the finding that fair use applies to the copying of the Java APIs may pave the way for companies to engage in copying not only the Java APIs, but also other APIs to create interoperable software programs.
Special thanks to San Antonio associate Mary Catherine Amerine, who works under the supervision
of Felicia Boyd, for contributing to the production of this content.