Google v. Oracle: The History Leading up to this Case and the Potential Consequences of the Upcoming Supreme Court Decision

Posted on by Alice Choi

After almost a decade-long fight between Google and Oracle, two of Silicon Valley’s tech giants, the Supreme Court will finally rule on a case which is considered by many to be the “most important copyright case of the decade.”1 The path which led up to this point is a long and complicated one. This article will unpack this extensive history and offer some conclusions as to how the results of this case will impact the tech industry and consumers.

Since 2010, Google and Oracle have fought over Google’s use of Oracle’s Java APIs in Google’s Android platform.2 API, which stands for Application Programming Interface, is a set “of commands, functions, protocols, and objects that programmers can use to create software or interact with an external system.”3 APIs act as shortcuts in a sense; with APIs, software developers do not need to start from scratch.4 For example, if someone wanted to develop an iPhone app which would utilize the iPhone’s camera, they could simply use the camera API which was already created by iPhone developers rather than developing their own camera API.5 Another advantage of using APIs is that it leads to “more consistency across apps for the same platform” since, considering the previous example, when any updates are made to the iPhone camera API, all apps which utilize this API automatically reflect those changes.6

In 2010, Oracle acquired Sun, which is responsible for developing the Java platform.7 Prior to Oracle’s acquisition of Sun, Sun and Google had tried to negotiate a licensing agreement for Google’s use of Java APIs for mobile devices to no avail.8 Google ended up using Java APIs (in particular, 37 API packages, with Google copying 11,500 lines of code from Java) for its Android platform without reaching an agreement with Sun.9

Thus, Oracle, in the same year that it acquired Sun, sued Google for copyright infringement, claiming that Android and Java are mobile operating system competitors and Google, in using Java APIs without a license, is “‘knowingly, directly and repeatedly infring[ing upon] Oracle’s Java-related intellectual property.’”10 At the time, federal courts had never addressed the issue of whether APIs are copyrightable.11 The court decided that, although Google had used the same method specification (inputs, outputs, parameters) in its Android platform as Oracle had used in its Java platform, since Google implemented it differently, it did not violate the Copyright Act.12 The court reasoned that since “the method specification is the idea” while the implementation of that method specification is considered an expression of that idea and ideas are not copyrightable, the method specification can therefore not be given copyright protection.13 Furthermore, the court determined that since the declaration, also known as the method header, has to be written in one specific way in order to implement a particular function, the merger doctrine prevents Oracle from exclusively copyrighting the declarations.14 The merger doctrine states that when there is a limited number of ways for an idea to be expressed, then those expressions are not copyrightable because the idea and expression have essentially merged together.15 Since 17 U.S.C. § 102(b) does not extend copyright protection to “any idea, procedure, process, system, [or] method of operation . . . ,” an expression which has merged with an idea cannot be extended this protection.16

The Federal Circuit court reversed the district court’s decision, claiming that the declarations and the “structure, sequence and organization” of the Java API packages at issue are copyrightable.17 The court reasoned that the district court incorrectly applied the merger doctrine because the district court focused “on the options available to Google at the time of copying” when it should have actually focused “on the options that were available to Sun/Oracle at the time it created the API packages.”18 If the district court had focused on the latter, then the merger doctrine would not apply because Oracle had “unlimited options” as to how to create the APIs.19 Although the code performs functions, the fact that the declaring code could have been written in many different ways while still having the same functions meant that 17 U.S.C. § 102(b) does not prevent these API packages from receiving copyright protection.20 Finally, the Federal Circuit court remanded the decision to the district court in regards to Google’s fair use affirmative defense.21 Under 17 U.S.C. § 107, “the fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching . . . , scholarship, or research, is not an infringement of copyright.”22 Fair use is determined on a case-by-case basis by four nonexclusive factors:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.23

The Federal Circuit Court determined that there were not enough factual findings to decide whether Google’s use of the API packages constituted fair use.24

When the case was remanded to the lower court, the jury found that Google’s use of Java API packages constituted fair use.25 However, the Federal Circuit Court once again reversed the decision made by the lower court.26 In doing so, it analyzed each of the four factors provided as considerations of whether a use is considered fair use under § 107.27 Regarding the purpose and character of the use, the court concluded that this factor weighs heavily against a finding of fair use because Google’s use was both highly commercial and non-transformative.28 Even though Android is “free under an open source license,” the fact that Google gave its customers “‘for free something they would ordinarily have to buy’” means that Google’s use of Java APIs can be considered commercial.29 Furthermore, the lower court stated that “it [was] undisputed that Google’s use . . . served commercial purposes.”30 Thus, as there was not sufficient evidence in the record to determine otherwise, the use is highly commercial.31 The use is not transformative because Google basically “cop[ied] code verbatim” from Java API packages to smartphones, which were not a new context as smartphones already contained Java APIs before Android’s release.32 Furthermore, although Oracle had not created a smartphone platform up to this point, the fact that Oracle had previously engaged in licensing negotiations regarding Google’s use of Java APIs in smartphones shows that, for Oracle, the smartphone market was a potential market; since “the law . . . protects a copyright’s owner to enter a ‘potential market,’” factor four weighs heavily against Google’s use being considered fair use.33 Since the other factors were considered either generally less significant in analyzing fair use or neutral and Google did not “further[] copyright’s goals of promoting creative expression and innovation” as it used Oracle’s APIs without a license when it could have created its own APIs or gone through the proper route of licensing Oracle’s APIs, Google’s use did not constitute fair use.34

According to most, the results of this decision can be summed up by one word: disastrous.35 There is overwhelming support for Google to win this case as some of the most influential tech companies and trade groups, such as Microsoft, CCIA and the Internet Association (to name a few), have filed amicus briefs on Google’s behalf.36 Many in the tech industry fear Google’s loss for the widespread, harmful consequences that would arise in the aftermath.37 APIs, as discussed earlier, act as shortcuts.38 Rather than spending time “reinvent[ing] the wheel,” software programmers can build upon these foundations and reimplement the functions in creative ways.39 If the Supreme Court decides that APIs are copyrightable, then it would be like “requiring car manufacturers to invent a substitute for the steering wheel.”40 To further elaborate upon this metaphor, programmers would waste time creating an alternative to the steering wheel when they could be creating an autonomous vehicle. The importance of this case is further highlighted by the fact that not only is this the first time that the Supreme Court has ever tackled software copyrights, but it is also the first time the Supreme Court has made a ruling regarding fair use in 25 years.41

Imagine this: a world where copyright trolls roam freely in search of programmers to sue in frivolous lawsuits for API copyright infringement, where programmers struggle to create new software as they are forced to either start from scratch or pay licensing fees to numerous people and companies for implementing APIs that were previously free for others to use without expense and where consumers pay higher prices for fewer programs.42 This is the world that many fear will arise if Google loses this case. It’s not just Google’s problem (which might have to pay billions of dollars in damages if it loses this case), it’s everyone’s problem.43 So as June approaches, watch out for the Supreme Court’s decision on this matter; regardless of how it plays out, the results will be momentous.44

  1. Bill Donohue, 4 Copyright Cases to Watch in 2020, Law360 (Jan. 1, 2020, 12:04 PM), https://www.law360.com/articles/1230006/4-copyright-cases-to-watch-in-2020. ↩

  2. Joseph Petersen & Jenny Goak, Google’s Use of Oracle’s APIs Not Fair Use Under U.S. Copyright Law, Kilpatrick Townsend (April 30, 2018), https://www.kilpatricktownsend.com/en/Insights/Alert/2018/4/Googles-Use-of-Oracles-APIs. ↩

  3. API Definition, TechTerms, https://techterms.com/definition/api (last visited Feb. 3, 2020). ↩

  4. Chris Hoffman, What is an API?, How-To Geek (Mar. 21, 2018, 6:40 AM), https://www.howtogeek.com/343877/what-is-an-api/. ↩

  5. Id. ↩

  6. Id. ↩

  7. Joseph Petersen & Jenny Goak, Google’s Use of Oracle’s APIs Not Fair Use Under U.S. Copyright Law, Kilpatrick Townsend (April 30, 2018), https://www.kilpatricktownsend.com/en/Insights/Alert/2018/4/Googles-Use-of-Oracles-APIs. ↩

  8. Id. ↩

  9. Oracle Am., Inc. v. Google, Inc., 872 F. Supp. 2d 974, 975 (N.D. Cal. 2012), rev’d, 750 F.3d 1339 (Fed. Cir. 2014); Erica Klein & Anna Robinson (Heinl), Supreme Court Will Decide Computer Code Copyright Issues in Oracle v. Google Case, JD Supra (Nov. 26, 2019), https://www.jdsupra.com/legalnews/supreme-court-will-decide-computer-code-87051/; Joseph Petersen & Jenny Goak, Google’s Use of Oracle’s APIs Not Fair Use Under U.S. Copyright Law, Kilpatrick Townsend (April 30, 2018), https://www.kilpatricktownsend.com/en/Insights/Alert/2018/4/Googles-Use-of-Oracles-APIs. ↩

  10. Tom Krazit, Oracle Sues Google Over Android and Java, CNET (Aug. 12, 2010, 8:18 PM), https://www.cnet.com/news/oracle-sues-google-over-android-and-java/. ↩

  11. Oracle Am., Inc. v. Google, Inc., 872 F. Supp. 2d 974, 987 (N.D. Cal. 2012), rev’d, 750 F.3d 1339 (Fed. Cir. 2014). ↩

  12. Id. at 997-98. ↩

  13. Id. at 998. ↩

  14. Id. at 979, 998; Oracle Am., Inc. v. Google, Inc., 750 F.3d 1339, 1353 (Fed. Cir. 2014). ↩

  15. Merger Doctrine Law and Legal Definition, USLegal,https://definitions.uslegal.com/m/merger-doctrine/ (last visited Feb. 3, 2020). ↩

  16. 17 U.S.C. § 102(b) (2018). ↩

  17. Oracle Am., Inc. v. Google, Inc., 750 F.3d 1339, 1348 (Fed. Cir. 2014). ↩

  18. Id. at 1361. ↩

  19. Id. ↩

  20. Id. at 1368. ↩

  21. Id. at 1354. ↩

  22. 17 U.S.C. § 107 (2018). ↩

  23. Id. ↩

  24. Oracle Am., Inc. v. Google, Inc., 750 F.3d 1339, 1377 (Fed. Cir. 2014). ↩

  25. Joseph Petersen & Jenny Goak, Google’s Use of Oracle’s APIs Not Fair Use Under U.S. Copyright Law, Kilpatrick Townsend (April 30, 2018), https://www.kilpatricktownsend.com/en/Insights/Alert/2018/4/Googles-Use-of-Oracles-APIs. ↩

  26. Oracle Am., Inc. v. Google, L.L.C., 886 F.3d 1179 (Fed. Cir. 2018). ↩

  27. See id. ↩

  28. Id. at 1204, 1210. ↩

  29. Id. at 1197. ↩

  30. Oracle Am., Inc. v. Google, Inc., No. C 10-03561 WHA, 2016 U.S. Dist. LEXIS 74931, at *27 (N.D. Cal. June 8, 2016), rev’d, 886 F.3d 1179 (Fed. Cir. 2018). ↩

  31. Oracle Am., Inc. v. Google, L.L.C., 886 F.3d 1179, 1198 (Fed. Cir. 2018). ↩

  32. Id. at 1201-02. ↩

  33. Id. at 1209-10. ↩

  34. Id. at 1205, 1210. ↩

  35. Ephrat Livni, US Supreme Court Holds Innovation in the Balance in Google v. Oracle, Quartz (Nov. 20, 2019), https://qz.com/1751975/in-google-v-oracle-scotus-holds-innovation-in-the-balance/. ↩

  36. Adi Robertson, Some of Google’s Biggest Rivals are Taking its Side in a Supreme Court Battle, The Verge (Jan. 14, 2020, 2:50 pm), https://www.theverge.com/2020/1/14/21059180/oracle-google-supreme-court-copyright-lawsuit-amicus-brief-filings. ↩

  37. Ephrat Livni, US Supreme Court Holds Innovation in the Balance in Google v. Oracle, Quartz (Nov. 20, 2019), https://qz.com/1751975/in-google-v-oracle-scotus-holds-innovation-in-the-balance/. ↩

  38. Chris Hoffman, What is an API?, How-To Geek (Mar. 21, 2018, 6:40 AM), https://www.howtogeek.com/343877/what-is-an-api/. ↩

  39. Ephrat Livni, US Supreme Court Holds Innovation in the Balance in Google v. Oracle, Quartz (Nov. 20, 2019), https://qz.com/1751975/in-google-v-oracle-scotus-holds-innovation-in-the-balance/. ↩

  40. Id. ↩

  41. Bill Donohue, 4 Copyright Cases to Watch in 2020, Law360 (Jan. 1, 2020, 12:04 PM), https://www.law360.com/articles/1230006/4-copyright-cases-to-watch-in-2020. ↩

  42. Ephrat Livni, US Supreme Court Holds Innovation in the Balance in Google v. Oracle, Quartz (Nov. 20, 2019), https://qz.com/1751975/in-google-v-oracle-scotus-holds-innovation-in-the-balance/. ↩

  43. Bill Donohue, 4 Copyright Cases to Watch in 2020, Law360 (Jan. 1, 2020, 12:04 PM), https://www.law360.com/articles/1230006/4-copyright-cases-to-watch-in-2020. ↩

  44. Id. ↩

Category: Blog Articles