Argument Preview / Featured / Supreme Court Activity

On October 7, 2020, the Supreme Court will hear oral arguments from the attorneys for two leading technology giants in the long-running software copyright case, Google LLC v. Oracle America, Inc. At issue is the availability of copyright protection for software interfaces, in particular Oracle’s Java SE declarations, and Google’s copying of such code that it contends is fair use.

The parties have endured a decade-old and complicated legal battle that started in 2010 when Oracle sued Google for copyright infringement in the U.S. District Court for the Northern District of California. The case reached the Federal Circuit for the second time in 2017, and the court reversed the district court’s judgment in Google’s favor. The Federal Circuit deemed Oracle’s Java software interfaces to be copyrightable and held that Google’s reuse of the code could not be fair use as a matter of law. In response, Google filed a petition for writ of certiorari with the Supreme Court which the court granted on November 15, 2019. Google has presented two questions in its petition: (1) “Whether copyright protection extends to a software interface” and (2) “Whether, as the jury found, petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.”

In its opening merits brief, Google first focuses on the copyrightability of software interfaces and asserts that, “Oracle has no interest protected by copyright in the declarations of the Java SE libraries.” According to Google, the merger doctrine—which provides that copyright law will not protect an expression when there is only one or a limited number of ways to express the idea—excludes the declarations from copyright protection. Google argues that the declarations are “rote, de minimis instructions” and “no other instruction can perform the declarations’ function” and because of this, and only this, its engineers were forced to use the declarations to create Android. Google therefore draws the conclusion that allowing the declarations to be copyrightable “would impermissibly convert Oracle’s copyright in the declarations’ expression into an exclusive right to the declarations’ function.” This first argument by Google concludes by asserting that the ruling in favor of Oracle would be “contrary to the essential purpose of copyright: to promote the creation of expressive works” and would “give software companies the power to block reimplementation and to inhibit the development of new and better software.”

Google then turns to its second argument, that “[e]ven if the Court concludes that Oracle asserts an interest protected by copyright, there is no basis to overturn the jury’s determination—based on the testimony of dozens of witnesses and hundreds of exhibits—that Google’s reuse of the declarations was fair use.” Google contends that Oracle does not dispute the jury instructions and that there was plainly sufficient evidence to support the jury’s verdict, yet the Federal Circuit erroneously substituted its own view for the jury’s. Google then walks through the jury’s weighing of the four fair-use factors specified by the Copyright Act.

With respect to the first factor, Google argues that “the jury could reasonably have found that the purpose and character of the use weighed in [its] favor” because “the evidence supported the conclusion that Google’s reuse of a subset of the Java SE declarations, combined with Google’s own vast implementing code, to create an innovative smartphone operating system, was transformative.” Second, according to Google, “the jury could reasonably have found that the nature of the copyrighted work supported a finding of fair use, because the declarations were highly functional, rather than expressive.” Third, Google argues that “the jury could reasonably have found that the amount and substantiality of the use in relation to the copyrighted work as a whole favored Google” since it “reused less than 0.5% of the Java SE libraries . . . [and] reused no more material than was absolutely necessary.” Lastly, according to Google, “the jury could reasonably have found that Google’s fair-use defense was supported by the effect on the market for, or value of, the original work” since “Android is not a substitute for Java SE, which is not suitable for smartphones,” and it is not legally sufficient that Oracle only wanted to compete with Android.

Oracle, in its response on the merits, maintains that the Federal Circuit correctly concluded that its Java SE declaring code and organization are copyrightable. Oracle begins by addressing Google’s argument that the declaration code is not protected because it is functional and asserts in response that this argument “is wrong because it would negate Congress’s decision to protect all computer code, which by statutory definition is always functional.” Oracle then moves to Google’s merger argument, contending that merger is “a narrow judge-made doctrine that does not apply unless the original author had very few ways to express the idea” and thus, “[i]t does not apply here because, as Google concedes, Java SE’s authors had countless options.” It continues to explain that “Google focuses on the wrong author at the wrong time in arguing that Google needed to copy” and that “Google’s argument is not about necessity at all, but expedience: the desire to save time and make Android familiar to app developers for a commercial advantage.”

Oracle next addresses the fair use issue and argues that “Google’s competing commercial use of Oracle’s code is the classic superseding use that fair use has always precluded.” In support of the Federal Circuit’s determination, Oracle then walks through the four fair-use factors. With respect to the first factor, it argues that since Android generated over $42 billion and since Google used the declaration code for its original purpose without altering its expression, meaning, or message—Google copied for a commercial and nontransformative purpose, which “strongly weighs against fair use.” Second, according to Oracle, its code “is a work Congress intended copyright to incentivize.” Third, Oracle argues that “[c]opying 11,330 lines of code, and Java SE’s intricate organization, is substantial” and “[g]iven the importance of what Google took, it makes no difference that Google copied only a fraction of a large work.” Lastly, according to Oracle, the “undisputed evidence that Android harmed actual and potential markets for Java SE” is the most important factor and if the Court were to allow uses like this, “Java SE would have no market.” Oracle concludes its brief with a policy argument, contending that

[i]n the six years since the Court of Appeals’ copyrightability decision, the software industry has continued its meteoric rise. Fears of the industry’s demise rest on overreading the Court of Appeals’ narrow decisions. Rewriting the Copyright Act to exclude code from protection is what threatens innovation: No company will make the enormous investment required to launch a groundbreaking work like Java SE if this Court declares that a competitor may copy it precisely because it is appealing.

In its reply brief, Google maintains its position on the copyrightability issue and reiterates its argument that the district court correctly found “that declarations are excluded from copyright protection by Section 102(b) . . . as either a ‘method of operation’ or (under the merger doctrine) as one of only a few ways to express a method of operation.” Google similarly maintains its position on the fair use issue, arguing that the district court correctly found “that there were ‘myriad’ ways that the jury . . . could have deemed Google’s reuse of the declarations to be ‘fair use.’” Google also adds that “Oracle’s contrary claim that Google’s limited reuse of the mandatory declarations is nonetheless copyright infringement amounts to an anti-competitive ‘hold up,’” as it “seeks to lock developers into using the Java SE platform to write programs in the Java language.” Lastly, Google stresses the argument urged by its amici that “the long-settled practice of reusing interfaces means that a ruling in Oracle’s favor threatens to impose debilitating retroactive liability.”

In this case, the Supreme Court has also granted the United States ten minutes of argument time. In the United States’ amicus brief supporting Oracle, it argues that computer programs are copyrightable despite their functional character and that the merger doctrine does not apply here since Oracle had “unlimited” expressive options when designing Java. With respect to fair use, the United States argues that Google’s commercial and nontransformative use, and the harm to Oracle’s market “weigh so decisively against fair use that the second and third factors cannot tip the balance in petitioner’s favor.”

On May 4, 2020, the Court requested briefing from both parties on the appropriate standard of review for the second question presented. In its supplemental brief, Google contends that “[t]he Federal Circuit erred in applying de novo review based on its incorrect premise that only a court can decide fair use.” To support this assertion, Google argues that the “second question presented arises from Oracle’s argument that the trial evidence was insufficient to support the jury’s verdict that Google’s limited reuse of the Java SE declarations was fair use” and “[t]he settled standard of review governing that assertion asks whether—construing all the evidence in support of the verdict—a reasonable jury could find fair use.” Oracle on the other hand, argues in its supplemental brief that, “[a]s this Court has already held, the ultimate question whether a use is a fair use is the kind of mixed question that is determined de novo.” Oracle asserts that “[d]e novo review is appropriate because fair use hinges on legal judgments that balance competing interests of property rights, the progress of science and the arts, and free expression, and because copyright holders and the public rely on the stable development of the doctrine.”

Interested parties have submitted over 80 amicus briefs to the Court to present their perspectives and arguments on the issues in this case. Particularly significant are the briefs from IBM, Microsoft, and two opposing groups of IP scholars. In IBM’s amicus brief supporting Google, IBM argues against the copyrightability of computer interfaces, contending that extending protection to computer interfaces “contravenes more than sixty years of settled expectations in the software industry and calls into question a fundamental aspect of software innovation and development.” In Microsoft’s amicus brief supporting Google, Microsoft argues against the Federal Circuit’s “rigid” fair use analysis, asserting that it “threaten[s] innovation in the software industry” and “undermines the reuse of functional code to achieve compatibility and interoperability, [thereby] endangering another linchpin of today’s interconnected world.” Pamela Samuelson and Catherine Crump co-authored an amicus brief on behalf of 72 IP scholars in support of Google, arguing that the Federal Circuit’s 2014 Oracle decision “adopted an unduly narrow view of this Court’s ruling in Baker v. Selden” and “misapplied the merger doctrine.” They take the position that “[p]rogrammers should have to write their own implementation code, as Google did, but interfaces that enable compatibility should be free from copyright restrictions.” Conversely, Sandria Aistars and Robert S. Friedman co-authored an amicus brief on behalf of 9 IP professors and scholars in support of Oracle, contending that Congress recognized, in its 1980 amendments to the Copyright Act, that computer programs are “literary works” and thus enjoy copyright protection under the statute. They further argue that “[f]undamentally, fair use does not apply here” since “Google chose to use Oracle’s copyrighted code verbatim for a purely commercial purpose in connection with its Android platform, which became an enormous success.”

Many have referred to this case as the “copyright case of the century” and for good reason. The Supreme Court’s decision will likely have a far-reaching, significant effect on future software innovation.