Supreme Court Holds Google’s Use of Oracle’s Java API Packages Constitutes Fair Use Under 17 U.S.C. § 107

By Charles R. Macedo, David Goldberg and Olivia Harris, Amster, Rothstein & Ebenstein LLP

On April 5, 2021, the U.S. Supreme Court finally addressed the long standing dispute between Google and Oracle over Google’s alleged copyright infringement of Oracle’s Java Declaration Code.  In a split decision (6-2), the Court (per Justice Breyer) found that Google’s literal copying of 11,500 lines of Oracle’s Java Declaration Code was fair use.[i]  The Court declined to address the question as to whether Declaration Code is capable of copyright protection, although there were numerous statements in the majority opinion to suggest that “software” does not fit neatly into traditional copyright protection.

Background

The background of the dispute is extensive and involves Google’s inclusion of 37 of Oracle’s Java Application Programming Interface (“API”) packages in Google’s Android operating system for smartphones and other devices.[ii] At the first trial, the jury found that Google’s incorporation of a subset of the Java APIs into the Android operating system infringed Oracle’s copyright, but was deadlocked on whether it was fair use.[iii]  After the verdict, the district court held that, regardless, the APIs were not copyrightable.[iv]  The Federal Circuit reversed that decision, and held that the structure, sequence, and organization of the Java APIs are entitled to copyright protection.[v]  The case was remanded on the question of whether Google’s use of a subset of the Java APIs constituted a fair use.[vi]  On remand, the district court submitted the question of fair use to the jury, and the jury found that Google had shown fair use.[vii]  On appeal, the Federal Circuit again reversed, concluding that Google’s copying was not a fair use as a matter of law, and remanded for a trial on damages.[viii]

The Supreme Court then granted Google’s petition for certiorari, agreeing to review the Federal Circuit’s determinations as to both copyrightability[ix] and fair use.[x]

Majority Opinion

In a 6-2 decision[xi] authored by Justice Breyer, and joined by Chief Justice Roberts and Justices Sotomayor, Kagan, Gorsuch, and Kavanaugh, the Court reversed the Federal Circuit’s decision and remanded for further proceedings in conformity with the Court’s opinion.

The majority applied the traditional four factors in its fair use analysis, including “(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.”[xii]

The Court began its analysis with the second factor of the fair use analysis, which looks at the nature of the work and whether the work is informational or creative. Under this factor, the Court found that “[t]he declaring code at issue here . . . differs[ ] from many other kinds of copyrightable computer code” in that “its use is inherently bound together with uncopyrightable ideas (general task division and organization) and new creative expression (Android’s implementing code).”[xiii]  Accordingly, in the Court’s view, “the declaring code is, if copyrightable at all, further than are most computer pro-grams (such as the implementing code) from the core of cop-yright.  That fact diminishes the fear, expressed by both the dissent and the Federal Circuit, that application of ‘fair use’ here would seriously undermine the general copyright protection that Congress provided for computer programs.”[xiv]  For these reasons, the Court found that this factor “points in the direction of fair use.”[xv]

The first factor of the fair use analysis examines the purpose and character of the copier’s use, which looks to whether the use is “transformative”—that is, whether the use “adds something new and important.”[xvi]  Under this factor, the Court found that “Google copied portions of the [] Java API precisely, and it did so in part for the same reason that [Oracle] created those portions, namely, to enable programmers to call up implementing programs that would accomplish particular tasks.”[xvii]  “Google’s basic purpose was to create a different task-related system for a different computing environment (smartphones) and to create a platform—the Android platform—that would help achieve and popularize that objective.”[xviii]  For these reasons, the Court found that “the ‘purpose and character’ of Google’s copying was transformative—to the point where this factor too weighs in favor of fair use.”[xix]

The third factor of the fair use analysis considers the amount and substantiality of the portion used.  Here, “Google copied 37 packages of the [] Java API, totaling approximately 11,500 lines of code.”[xx]  Under this factor, the Court found that while “those [11,500] lines of code amount to virtually all the declaring code … if one considers the entire set of software material in the [] Java API [—i.e., 2.86 million lines], the quantitative amount copied was small.”[xxi]

Several features of Google’s copying suggest that the better way to look at the numbers is to take into account the several million lines that Google did not copy. For one thing, the [] Java API is inseparably bound to those task-implementing lines.  Its purpose is to call them up. For another, Google copied those lines not because of their creativity, their beauty, or even (in a sense) because of their purpose.  It copied them because programmers had already learned to work with the [] Java API’s system, and it would have been difficult, perhaps prohibitively so, to attract programmers to build its Android smartphone system without them.  Further, Google’s basic purpose was to create a different task-related system for a different computing environment (smartphones) and to create a platform—the Android platform—that would help achieve and popularize that objective.  The ‘substantiality’ factor will generally weigh in favor of fair use where, as here, the amount of copying was tethered to a valid, and transformative, purpose.”[xxii]

Thus, the Court determined that this factor “weighs in favor of fair use.”[xxiii]

The fourth and final factor of the fair use analysis examines the effect on the potential market.  Under this factor, the Court pointed to evidence of record showing that “Android [is] not a market substitute for Java’s software” and that Oracle would “benefit from the broader use of the Java programming language in a new platform like Android, as it would further expand the network of Java-trained programmers.”[xxiv]  Finally, the Court found that “given programmers’ investment in learning the [] Java API, to allow enforcement of Oracle’s copyright here would risk [creativity-related] harm to the public.”[xxv]  For these reasons, the Court determined that this factor “also weighs in favor of fair use.”[xxvi]

Upon examining all four factors together, the Court found that Google’s copying did constitute a fair use.  The Court made clear that in “apply[ing] traditional copyright concepts” to computer programs, which “are primarily functional,” it has neither “changed the nature of those concepts” or “overturn[ed] or modif[ied] [the Court’s] earlier cases involving fair use.”[xxvii]

Thomas Dissent

The dissenting opinion, authored by Justice Thomas and joined by Justice Alito, starts off by noting that Google copied Oracle’s code only after licensing negotiations broke down (which implicitly undercuts the majority’s analysis of the fourth fair use factor) and proceeds to clarify that the two dissenters would find both that Oracle’s code to be entitled to copyright protection and that Google’s actions were not excusable as fair use.

In particular, Justice Thomas argued that “[t]he Court wrongly sidesteps the principal question that we were asked to answer:  Is declaring code protected by copyright?  I would hold that it is.”[xxviii]  Citing to “Congress’ decision to define protected computer code as ‘a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result’”, Thomas argued that “Congress rejected any categorical distinction between declaring and implementing code.”[xxix]  “But the majority creates just such a distinction.”[xxx]  Accordingly, Thomas fears that the majority opinion “makes it difficult to imagine any circumstance in which declaring code will remain protected by copyright.”[xxxi]

Proceeding to the fair use analysis, Justice Thomas argued that three of the four factors “decisively favor Oracle.  And even assuming that the remaining factor favors Google, that factor, without more, cannot legally establish fair use in this context.”[xxxii]

Starting, like the majority, with the second fair use factor, Justice Thomas argued that the majority’s distinction between declaring and implementing code, based on the fact that declaring code is inherently bound together with uncopyrightable ideas, “is untenable.”[xxxiii]  All copyrightable works are bound up with uncopyrightable ideas:

Books are inherently bound with uncopyrightable ideas—the use of chapters, having a plot, or including dialogue or footnotes.  This does not place books far “from the core of copyright.”  And implementing code, which the majority concedes is copyrightable, is inherently bound up with “the division of computing tasks” that cannot be copyrighted. … We have not discounted a work of authorship simply because it is associated with noncopyrightable ideas.[xxxiv]

With respect to the fourth factor, Justice Thomas argued that the Federal Circuit correctly determined that evidence of actual and potential harm to Oracle was overwhelming, since Google’s inclusion of Oracle’s code in its Android operating system, which was provided for free to device manufacturers, directly undercut Oracle’s efforts to license Java to those same device manufacturers.  Addressing the majority’s assertion that public harm might ensue if Oracle’s copyrights were enforced, by giving Oracle power to limit future programs on Android, Justice Thomas noted that the suit only concerned versions of Android released through November 2014, that Apple and Microsoft created mobile operating systems without using Oracle’s code, and that Oracle always made its declaring code freely available to programmers.

Justice Thomas thought that the first factor might possibly favor Google, since commercial uses sometimes may amount to fair use.  That said, he argued that “Google’s repurposing of Java code from larger computers to smaller computers” should not be considered transformative.[xxxv]  Using that code to “create new products,” he argued, alters “the definition of ‘transformative’” in the context of declaring code and “eviscerates copyright.”[xxxvi]  “Ultimately,” Justice Thomas argued, the majority wrongly conflates transformative use with derivative use.  To be transformative, a work must do something fundamentally different from the origi-nal.  A work that simply serves the same purpose in a new context—which the majority concedes is true here—is derivative, not transformative.[xxxvii]

Turning to the third factor, Justice Thomas noted that, although it is true that Google only copied a small portion of the Java API considered as a whole, it copied substantially all of the declaring code, which is what attracted programmers to Java in the first place, and “made Android a ‘market substitute’ for ‘potentially licensed derivatives’ of Oracle’s Java platform.”[xxxviii]

Given this, Justices Thomas and Alito dissented.

Conclusion

Although the long running dispute between Google and Oracle may soon be ending, its impact on copyright law is likely to be long lasting.  In this decision, which purports not to determine the copyrightability of declaring code, the Court set forth an analysis that will feed legal debate and likely be the subject of extensive legal briefing in the years to come.  For now, what is crystal clear is that Google has successfully taken Oracle’s code under a theory of fair use.

*Charles R. Macedo is a partner, and David Goldberg and Olivia Harris are associates at Amster, Rothstein & Ebenstein LLP. Their practices specialize in intellectual property issues, including litigating copyright, trademark, patent, and other intellectual property disputes. The authors may be reached at [email protected], [email protected], and [email protected].

[i].  Google LLC v. Oracle America, Inc., No. 18-956, slip op. at 35 (U.S. Apr. 5, 2021) (“Majority slip op.”).

[ii].  Id. at 8.

[iii].  Id. at 9.

[iv].  Id.

[v].  Id. at 10.

[vi].  Id.

[vii].  Id. at 10-11.

[viii].  Id. at 11.

[ix].  In reviewing the Federal Circuit’s decision, the Court assumed that the Java APIs are copyrightable. Id. at 1.

[x].  Id.

[xi].  Justice Barrett took no part in the consideration or decision of this case.

[xii].  17 U.S.C. § 107.

[xiii].  Majority slip op. at 22-24.

[xiv].  Id. at 24.

[xv].  Id.

[xvi].  Id. (citation omitted).

[xvii].  Id. at 25.

[xviii].  Id. at 29.

[xix].  Id. at 27.

[xx].  Id. at 28.

[xxi].  Id.

[xxii].  Id. at 29.

[xxiii].  Id. at 30.

[xxiv].  Id. at 32.

[xxv].  Id. at 34.

[xxvi].  Id. at 35.

[xxvii].  Id.

[xxviii].  Google LLC v. Oracle America, Inc., No. 18-956, dissenting slip op. at 4 (U.S. Apr. 5, 2021).

[xxix].  Id. at 6 (quoting with emphasis 17 U.S.C. § 107).

[xxx].  Id. at 7.

[xxxi].  Id. at. 7-8.

[xxxii].  Id. at 8.

[xxxiii].  Id. at 10.

[xxxiv].  Id. (footnote and internal citation omitted).

[xxxv].  Id. at 16.

[xxxvi].  Id. at 16-17.

[xxxvii].  Id. at 17.

[xxxviii].  Id. at 18.