Oracle v. Google: Will SCOTUS Take Up Case With Significant Software Implications?

Does copyright cover application programming interfaces? This will have significant impacts on computers, software, and technology.

In a long-running legal battle between Oracle and Google, the Court of Appeals for the Federal Circuit has endangered software interoperability in two separate rulings, one in 2014 and one in 2018. Last week, Google petitioned SCOTUS for cert, asking the court to review whether copyright protection covers application programming interface (APIs) and, in the alternative, whether use of API in a new computer program is a fair use. (NB: Google petitioned for cert after the 2014 decision, but the Federal Circuit had not made a determination on the fair use issue; in this second go-round, Google has presented both questions for review. The Disruptive Competition Project has a great timeline, background, and blog posts for various stages of this case.)

The basic facts of the case are: Java is one of the most popular programming platforms and was created by Sun Microsystems in the 1990s. In creating its Android smartphone platform, Google used a miniscule fraction of the software interface — according to Google’s brief, “the overlapping code represented less than 0.1% of the over 15 million relevant lines of code” in its smartphone — but primarily relied on its own libraries of code. After Oracle acquired Sun Microsystems in 2010, Oracle sued Google, throwing into question long-standing industry practice.

Prior to this case, copyright was not used to restrict re-use of APIs, which allowed the promotion of software interoperability. Software industry practices were fairly consistent prior to the Federal Circuit’s landmark ruling in 2014, and because Java is a popular programming platform, small portions of the API have been used in other platforms. The Federal Circuit’s ruling raises a number of concerns that ultimately threaten how the software industry operates, including copyright trolls, reduced interoperability in software platforms, and increased costs either for licenses for existing software, or creation of independent (and incompatible) standards. Notably, in both cases, the Federal Circuit overruled the trial court decisions that APIs were not copyrightable (the Federal Circuit’s 2014 decision), in the alternative, the use in the present case was fair (the 2018 decision).

The Federal Circuit — which, you’ll recall, is a patent specialty court; the judges sitting on this court are not copyright experts — ruled that copyright does protect APIs and that fair use did not apply to Google’s use. The Federal Circuit’s opinion seems to conflate APIs with software, which is considered a literary work and subject to copyright protection. API, however, is an interface that allows software programs to interact, essentially setting the ways that different components can interact with each other.

In its ruling, the Federal Circuit seems to ignore 102(b) of the Copyright Act — which explicitly details what copyright does not protect, including “any idea, procedure, process, system, method of operation, concept, principle, or discovery.”

Google points to a circuit split in the application of the idea/expression dichotomy — the concept that only the expression of an idea is copyrightable, and the idea itself cannot be copyrighted — to application programming interfaces (APIs). Also at issue in the present case, an extension of the idea/expression dichotomy, is the merger doctrine. This doctrine concludes that an idea and expression can be so intertwined that they essentially “merge” and cannot be copyrighted. The First and Sixth Circuits have found that there is no copyright protection in the interfaces because they are merely methods of operation. By contrast, the Third Circuit and Federal Circuit that the interface is copyrightable if the embodiment could have been expressed differently.

Remember, of course, this is the same Federal Circuit that repeatedly blessed the patentability of non-patentable discoveries until SCOTUS intervened, often unanimously overturning the lower court. In the 2012 case of Mayo v. Prometheus, for example, SCOTUS unanimously ruled that patent claims directed at the method of giving a drug to a patient, measuring the results, and then determining whether to increase or decrease the dosage, were not eligible for patent protection. The Federal Circuit in Mayo v. Prometheus had two opportunities to get it right, after SCOTUS remanded the case in the wake of its rejection of the “machine-or-transformation” test as an absolute in Bilski v. Kappos, but still found this method to patentable. So, perhaps it’s not surprising that even in spite of the Copyright Act’s clear language rejecting copyrightability over methods, the Federal Circuit has approved copyrightability over API. I think this is the most significant issue in the case — whether copyright covers API.

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Alternatively, even if the Java interfaces at issue are copyrightable, Google asks for review on whether its uses were fair, arguing that the Federal Circuit erred in its application of the four fair use factors. Indeed, the Federal Circuit’s 2018 opinion seems to impose a novelty standard for a work to be transformative — perhaps because of the novelty standard for patents, which doesn’t exist under copyright law. Indeed, courts have repeatedly found that transformativeness need not result in an entirely new work, but can instead be a new way to use the work. Additionally, in its analysis, the Federal Circuit seems to ignore the fact that even if copyright should be granted to the API, such copyright should only be considered “thin” because of its highly functional purpose, rather than artistic value. The Federal Circuit also found the amount copied to be “at best, neutral” because of the number of lines copied, even though it represented a mere 0.1 percent of the Android’s code. Finally, the Federal Circuit found market harm to Oracle, including in potential markets. However, relying on potential markets is a mistake as any fair use case would assert some hypothetical, speculative market harm.

Ultimately, the conclusion in this case — be it the Federal Circuit’s decision on a SCOTUS decision — will have significant impacts on computers, software, and technology.


Krista L. Cox is a policy attorney who has spent her career working for non-profit organizations and associations. She has expertise in copyright, patent, and intellectual property enforcement law, as well as international trade. She currently works for a non-profit member association advocating for balanced copyright. You can reach her at kristay@gmail.com.

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