Google LLC v. Oracle America, Inc Implications of the Case on Intellectual Property Law

The Facts of the Case as described by the Court of Appeals for the Federal Circuit:

 

Oracle America Inc. owns a copyright in Java SE, a computer platform that uses the popular Java computer programming language. In 2005 Google acquired Android and sought to build a new software platform for mobile devices. To allow the millions of programmers familiar with the Java programming language to work with its new Android platform, Google copied roughly 11,500 lines of code from the Java SE program. The copied lines are part of a tool called an Application Programming Interface (API). An API allows programmers to call upon pre-written computing tasks for use in their own programs. 

The summary of the case goes on to say that it was the purpose of the lower courts to determine whether the owner of the Java SE could copyright the copied lines and whether Google copying constituted a permissible fair use of that material freeing Google from copyright liability. 

The case between Google and Oracle is in my view essentially about the foundations of Intellectual Property Law dealing with what is copyrightable especially when it comes to computer programs as well as what constitutes of fair use and the right to utilize the works of others. The foundations of copyright law deals with the theories of copyright and attempts to differentiate between ideas and expressions in the effort to determine what can and what cannot be protected. When dealing with the theories of Intellectual Property (Fairness, Personality, Welfare and Cultural) we are dealing with the philosophy behind Intellectual Property practice. It is important to note that these theories govern how different nations handle their IP cases as well as the general approach that is used in viewing IP related cases. This is why for example you are more likely to win cases based on the personality theory in Europe than you would say in the U.S where for example the fairness theory is prevalent. A case such as this (Google Vs. Oracle) would therefore have seen a lot more protection for Oracle as was seen in a case like say Von Gerkan Vs. Deutsche Bank where the courts ruled in favor of Von Gerkan and his right to have protection over his architectural designs long after completion of his project. An argument like this could be used in the Google Vs. Oracle case in favor of Oracle and their right to maintain protection over their API. The personality theory therefore as an example seeks to protect the rights of creators well beyond the works themselves. 

In Alexander Walker Margaret Vs. Alex Haley twin copyright infringements actions were instituted against Alex Haley and Doubleday Publishing Company and Doubleday and Co. for similarities between Alex Haley’s Roots and the Novel Jubilee and 

the pamphlet How I wrote Jubilee both written by the Alexander Walker. Both books are based on both fact and fiction on the lives of Black Slaves in the United States. 

The court ruled in Haley's favor stating that the similarities were based on historical facts that are available to anyone and everyone and that what is copyrightable is expressions and not the ideas themselves. Patents on the other hand confer proprietary rights in relation to general ideas and concepts per se when construed as methods, copyrights cannot confer such rights. No matter how many similarities were found as long as these existed historically, they could 

not be claimed exclusively by one author, therefore they were not protected. This key difference between Copyright and Patent is important because of these ideas sprung up in the discussion about the Application Programming Interface or API which is a major subject in the case between Google and Oracle. 

The Decision for fair use was based on a case Campbell v. Acuff-Rose Music Inc. which was a case about a parody of a song called Oh Pretty Woman. At the start, one group (two live crew) wanted to use a song for the purposes of parody but was denied access to the song and a contract that would have enabled them to use the song. They went ahead and used the song. Acuff-Rose sued 2 live crew and its record company for copyright infringement. The District Court granted summary judgment for 2 live crew holding that their song was a parody that made fair use of the original song under 17 U.S.C 107. The court of appeals reversed and remanded holding that the commercial nature of the parody rendered it presumptively unfair under 17 U.S.C 107 that by taking the heart of the original and making it the heart of the new work 2 live crew had taken too much under the third section of 17 U.S.C 107 and that market harm for purposes of the fourth 17 U.S.C 107 factor had been established by a presupposition attaching to commercial use.  

The Supreme court on the other hand held that 2 live crew's commercial parody may be fair use within the meaning of 17 U.S.C 107 he stated that the very nature of the parody demanded that some use of the original work be made and made further reference to 17 U.S.C 106 and 106b which speak on purposes such as criticism, commenting, teaching, scholarship and research. The court also found that the more transformative the work, the less will be the significance of the other three factors. This is where 17 U.S.C 107 comes in. 17 U.S.C 107 sets out the limitations on exclusive right or what is called Fair Use. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include;

1. The purpose and character of the use including whether such use is of a commercial nature or is for nonprofit educational purposes. 

With regards to this, the court ruled that the use of the API by Google was transformative in nature because "Google's purpose was to create a different task-related system for a different computing environment (smartphones) and to create a platform-Android platform-that would help achieve and popularize that objective."  

2. The nature of the copyrighted work

In the ruling regarding Google V. Oracle, and the discussion about the API what the court made use of is the argument that the nature of the work necessitated the the fair use doctrine and its application in this case because no further progress could be made or creativity garnered without the use of Java SE. They go on to argue that "as part of the interface, the copied lines are inherently bound together with uncopyrightable idea (the overall organization of the API) and the creation of new creative expression (the code independently written by Google).  

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole

According to the judges, the amount of code that google used (11,500 lines of declaring code) from the API only amounted to 0.4 percent of the entire API 

at issue which consists of 2.86 million total lines. They therefore ruled that "The substantiality factor will generally weigh in favor of fair use" 

4. The effect of the use upon the potential market for or value of the copyrighted work

With reference to the markets, the judges found that the use of Java SE would benefit the copyright holder who would gain from the reimplementation of its own interface to a different market. 

Also important in the decision was as the court stated the fact that computer programs are primarily functional therefore making it difficult to apply traditional copyright concepts in that technological world. 

The rest of the arguments and the summary statements made by both the majority of the supreme court justices and the dissenters (2) were about definitions and sought to elaborate on hardware and software as well as identify users and the technicalities within APIs especially the type of code and that was copied and where that part of the code falls or fell in the bigger picture.  

 

17 U.S.C 102 and 102b deals with the subject matter of copyright and speaks of the need to have original works of authorship "fixed in any tangible medium of expression

from which they can be perceived, reproduced, or otherwise communicated directly or with the aid of a machine or device" but an important part of the second section is that "in no case does copyright protection extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery regardless of the form in which it is described" This is why in the Supreme Court a lot of effort had to be put in defining what an API is and what its sub-parts are made up of. Equally important for the courts was the mixed question of law and fact in resolving the fair use question. Judgment of  facts could be handled by the jury but judgments of the law were to remain the preserve of judges of the courts of law. 

Justice Breyer's Opinion (The Opinion of the Majority)

The ideas below are a summary of what Justice Breyer presented in his opinion of the court. The first was a definition of the term API. Second to this was a deep dive into what API constitute of. Third was a discussion about The Copyright Act. Fourth looks at the four factors set forth in the fair use statute. 

The API

For the sake of this case the Federal Circuit described an API as a tool that “allow[s] programmers to use...prewritten code to build certain functions into their own programs, rather than write their own code to perform those functions from scratch. The API includes both the declaring code that links each part of the method call to the particular task-implementing program, and the implementing code that actually carries it out.  Google did not copy the task-implementing programs , or implementing code, from Sun Java API. It wrote its own task-implementing programs, such as those that would determine which of two integers is the greater or carry out any other desired (normally far more complex) task. 

What the API consists of

This implementing code constitutes the vast majority of both the Sun Java API and the API that Google created for Android. For 37 packages, however, Google copied the declaring code from the Sun Java API...Without that copying, programmers would need to learn an entirely new system to call up the same tasks. Within five years of its release in 2007, Android-based devices claimed a large share of the United States market. As of 2015,Android sales produced more that $42 billion in revenue. 

Based on this the judge ruled that the copied material was a system or method of operation which copyright law specifically states cannot be copyrighted (17 U.S.C 102 b). On appeal the Federal Circuit reversed. That court held that both the API's declaring code and its organizational structure could be copyrighted. Furthermore the circuit court on the fair use issue ruled that fair use “both permits and requires courts to avoid the rigid application of the copyright statute when on occasion it would stifle the very creativity which that law is designed to foster'“. On remand in the District Court, a jury was asked if Google has “shown by a preponderance of evidence that its use in Android” of the declaring code and organizational structure contained in the 37 Sun Java API packages that it copied “ constitutes a 'fair use' under the Copyright Act? After three days of deliberation the jury ruled in the affirmative.

Oracle appealed again to the Federal Circuit. The circuit reversed the District Court and assumed all factual questions in Google's favor. But it stated that the fair use question was a matter of the law. It states that there is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform. Google then filed a petition for certiorari in the Supreme Court asking for the review of the Federal Circuit's determinations as both copyrightability and fair use. This was granted. 

The Copyright Act

There are four provisions of the Copyright Act that are of relevance to the case above. First that there must be a work of authorship and that this work must be fixed in any tangible medium of expression. Second is a list of works that can be protected literary, musical, architectural, dramatic, motion picture, and certain other works. In 1980, congress expanded the reach of Copyright act to  include computer programs. Third sets forth limits on the works that can be copyrighted for example protection cannot extend to “any idea, procedure, process, system, method of operation, concept, principle or discovery. Fourth congress together with the courts has imposed limitations upon the scope of copyright protection even in respect to works that are entitled to a copyright. 

Generically, speaking, computer programs differ from books and films and many other literary works in that such programs always serve functional purposes. 

The Four Factors Set forth in the Fair Use Statute

The Nature of the Copyrighted Work

Here the key differences between user-centered declaratory code and the innovative implementing code were emphasized. The court held the view that declaring code is if copyrightable at all, further than are most computer programs (such as implementing code) from the core of copyright. 

The Purpose and Character of the Use

Is the act of copying in any way transformative? There were labors to prove that the new work was going to benefit the greater Java user community by introducing a new market that of smartphone users. 

The Amount and Substantiality of the Portion Used

If you consider declaring code alone, then the amount that Google copied was large. If you on the other hand consider the entire set of software material in the Sun Java API then the amount was small. 

Market Effects

The fourth statutory factor focuses upon the effect of the copying in the market for or value of the copyrighted work. It could mean considering the amount of money that the copyright owner might lose or the source of the loss. The uncertain nature of Sun's ability to compete in Android's market place, sources of its lost revenue, and the risk of creativity-related harms to the public, when taken together convince that this fourth factor-market effects-also weighs in favor of fair use.

Justice Thomas's Dissenting Opinion

In his opening remarks he focuses on the fact that Oracle or Sun had spent years crating a programming library that was a success. He mentions the deal that went wrong between the Google and Oracle and the idea that as a result a Oracle's code was copied verbatim (11,500 lines).  He also talks about how 97.5% of Oracle's value was erased as a result of this single move. Justice Thomas goes on to summarize the differences between declaring code and implementing code. He states or emphasizes the importance of Oracle's declaring code in its business model. Justice Clarence Thomas goes on to explain how in the history of this dispute Google did not create its own declaring code as had Apple and Microsoft. He goes on to sight Feist Publications,Inc. v. Rural Telephone Service Co. (in which Feist Publications copied entries from Rural Telephone Service's listings to include in its own. Rural sued for copyright infringement. The courts ruled that information contained in the directory was not copyrightable and that therefore no infringement existed). 

The Four Factors Set forth in the Fair Use Statute and Justice Thomas' use of them. 

The Nature of the Copyrighted Work

A theater cannot copy a script-the rights to which are held by a small theater-simply because it wants to entice actors to switch theaters and because copying the script is more efficient than requiring the actors to learn a new one. 

Market Effects

Firstly, Google eliminated the reason manufacturers were willing to pay to install the Java platform. Oracle earned revenue by charging device manufacturers to install the Java platform. Secondly, Google interfered with opportunities for Oracle to license the Java platform to developers of smartphone operating systems.  

The Purpose and Character of the Use

In 2015 alone the year before the fair use trial Google earned $18 billion from Android. 

Google's purpose for its transformative work mirrors none of the given ones. Criticism, scholarship, research, news reporting and comment.  

The Amount and Substantiality of the Portion Used

11,500 lines of declaring code is enough to fill about 600 pages in an appendix. A copied work is quantitatively substantial if it could serve as a market substitute for the original work or potentially licensed derivatives of that work.