(August 25, 2021) - Attorneys Eric N. Kohli and Meng Zhong of Lewis Roca explain how a recent Supreme Court decision could influence future litigants in software copyright disputes.

The United States Supreme Court recently held that copying another's software was okay. Specifically, it held that Google's copying of Oracle's software was fair use.1

The case concerns copyright protection of computer software. The Court described the software that was at issue, including its purpose, function, and use. But does the opinion provide a clear roadmap for copyright protection of software? Or for fair use of someone else's software?

The Supreme Court's opinion is narrow. It is limited to Oracle's specific software and Google's specific use of that software. Whether that precedent can be creatively argued to successfully allege copyright infringement, or to successfully assert a fair use defense, will vary by case and depend on the cogency of the arguments.

The only thing we know definitively is that Google's particular use of Oracle's specific API code was fair use, nothing more.

Copyright protection of software

The Computer Software Copyright Act ("CSC Act") of 1980 adds a definition of "computer program" to the 1976 Copyright Act.2 Based on its legislative history, the CSC Act of 1980 "clearly [applies] the 1976 copyright law to computer programs."3 Consequently, computer programs are a "work of authorship" subject to copyright protection.4

Since then, the TRIPs agreement5 requires all adhering states to protect computer programs as literary works under the Berne Convention.6

Google v. Oracle

In Google v. Oracle, the Supreme Court narrowly focused on the specific facts of the parties' software-copyright dispute.7 Acknowledging the fast-changing pace of modern technology, the Court stated that "[it] should not answer more than is necessary to resolve the parties' dispute." For added measure, the Court held that the case does not change the "nature of traditional copyright concepts" for computer software.

This is a Supreme Court case, so it will quintessentially be quoted countless times at various levels of the nation's legal system. Did the Supreme Court intend to restrict the case's precedent, or was it "not answer[ing] more than is necessary to resolve the parties' dispute?" Only the Court knows. But the Court did provide other guidance.

Technical details

A) Terminology

Google copied and used software code from Oracle's Sun Java Application Programming Interface ("API"). The Court provided the following technical descriptions for the software:

(1) Sun's Java  API: a user interface that provides a way through which programmers can manipulate and control task-performing computer programs via a series of menu commands.

(2) Tasks: an API allows programmers to call upon prewritten computing tasks for use in their own programs.

(3) Methods, classes,  and packages: each individual task is known as a method. Groups of similar methods are known as classes. Groups of similar classes are known as packages.

(4) Method calls: commands corresponding to specific tasks that are used to call up a specific task, or method. Method  calls locate and invoke a particular implementing  code.

(5) Implementing code: software code that tells the computer how to execute a particular task.

(6) Declaring code: part of the API that provides the name for each task and the location of each task within the API's overall organizational system.

Implementing code is the vast majority of the software each party created for their respective APIs. Google did not copy Java API's implementing  code, it wrote its own. In fact, Google created a substantial majority of its own declaring code as well.

However, for 37 packages, Google copied Sun Java API's declaring  code. Those 37 packages, some 7,000 lines of code, amounted to only 0.4% of Google's API. And that 0.4% of code, i.e. those 37 packages, is what the entire case is about. Oracle claimed it was software copyright infringement, while Google asserted that it was fair use.

B) The software

The Supreme Court did not answer the question of copyrightability of Java API's declaring  code. It expressly chose not to. But the Court did say that such declaring code "resembles other copyrighted works in that it is part of a computer program" and "Congress has specified that computer programs are subjects of copyright." Nonetheless, if the declaring code is in fact copyrightable, the Court said it is "further than are most computer programs (such as the implementing code) from the core of copyright."

The Court stated that such declaring code "differs . from many other kinds of copyrightable computer code" because "[i]t is inextricably bound together with a general system, the division of computing tasks, that no one claims is a proper subject of copyright." It is "inextricably bound" with: i) the idea of organizing tasks, ii) the use of specific commands known to programmers (method calls), and with iii) "the implementing  code, which is copyrightable." (Emphasis added.)

Regarding declaring  code, the Court said that it "differs to some degree from the mine run of computer programs" because although it is functional in nature like other computer programs, "its use is inherently bound together with uncopyrightable ideas . and new creative expression."

Such declaring code 's value, unlike many other computer programs, derives significantly from the computer programmers who do not hold the copyright but invest their own time and effort to learn the API's system.

Further regarding the declaring code, the Court found that it was the "key" that Google needed to unlock the programmers' creative energies, "to create and to improve its own innovative Android systems . its value lies in its efforts to encourage programmers to learn and to use that system so that they will use . Sun-related implementing programs that Google did not copy."

Allowing enforcement of a copyright in that declaring code would create "a lock limiting the future creativity of new programs . to which . Oracle alone would hold the key." To the extent such a lock would burden creative improvements and new applications, it would interfere with copyright's creativity objectives rather than furthering them.

Professional software developers might find the Supreme Court's technical provisions limiting. However, these technical provisions arguably serve as precedent for future software copyrightability and fair use arguments.

Limitations of the court's holding

While the Court's 15-page opinion expounded on policies, ideas, and copyrights in general, its explicit holding is limited to the software that was at issue - some lines of declaring code in Sun's Java API.

The holding did not discuss whether declaring code itself is copyrightable, whether the declaring code of other APIs is copyrightable, whether using declaring code from other APIs is fair use, or even whether another's use of declaring code from Sun's Java API would be fair use.

The opinion only said that Google's copying in this case was fair use. Whether some other copying of Sun's Java API is also fair use is also an issue for another day.

Despite its narrow nature, the opinion enlightens us on how the justices think about such issues and the policy considerations they find important. After all, why did the Supreme Court hold Google's copying of Oracle's software to be fair use?

To start, the Court said that computer programs "almost always serve functional purposes." This shows the Court's appreciation that limitations on software copying raise special considerations due to its potential impact on innovation and practical use.

Indeed, some scholars and caselaw have opined that copyright law is not well suited for protecting software.8 (To be fair, we must note that others support copyright as the proper mechanism for protecting software.9)

Oracle's software at issue was an API. Generally speaking, an API is software that serves as a bridge, or a conduit, between different computer applications, computer platforms, etc. Applications, platforms, etc, each perform their own tasks and, in simple speak, "do their own thing."

But when they need to interact with each other, such as a trading application on a laptop needing live data from a stock exchange's computer servers, an API helps the two interact. To facilitate the flow and interpretation of a data stream comprising live trading data, for example.

Notable about APIs is that they are usually provided for free. The purpose is to encourage the use of the company's software or platform, which is how that company truly makes its money. In the above example, the trading application will use an API provided by the stock exchange to facilitate the consumption of live data from the stock exchange.

That API will serve several companies' trading applications, to facilitate data service for those companies' users. Although the stock exchange provides the API for free, it profits from the users who must pay for a subscription to the live trading data. That running income justifies the stock exchange's initial investment in developing the API.

The Supreme Court faced such an issue in Google v. Oracle. It was like the stock exchange arguing that a trading-services company copied a portion of their API, so it is liable for copyright infringement. The trading-services company answers that the stock exchange provided the API for the world to use, it was fair use to copy a small portion for its own, separate, API. This is of course an over simplified analogy, but it illustrates the point.

The Supreme Court commented that "about 6 million programmers . spent considerable time" learning and using Oracle's Java. The Java API was provided for the world to use on multiple platforms, in fact their slogan was "write once, use anywhere."

Google used only a small portion of that API to create its popular Android platform. Again, open for the world to use. To say that Google must be deemed a copyright infringer who must pay Oracle is a "lock" that would restrain and defy the constitutional principles of creativity that underlie copyrights. Google's copying of the small amount of code from Oracle's API was, therefore, fair use.

Conclusion

In Google v. Oracle the Supreme Court provided very limited guidance for copyright protection and fair use of software.

The case's practical application will undoubtedly be argued by parties on both sides of software copyright disputes, forcing courts to reconcile this case's holdings with the facts of their respective cases. But will Courts limit this case's precedent only to APIs? Or only to software that is open to the world?

We don't know. But we do know that public policy considerations and the underlying purpose of copyrights played an important role in the Supreme Court's decision. That certainly provides guidance for future software copyright litigants.

For more guidance for software copyright protection we have to wait for the Supreme Court to grant certiorari again. Fortunately it is not uncommon for the Supreme Court to hear copyright issues - it delivered some 22 copyright-related opinions in the nineteenth century, 73 in the twentieth century, and 17 so far in the roughly twenty years of the current twenty-first century.10 In fact, the Supreme Court recently granted certiorari for another copyright case, although that case is not software related.

Despite the volume of copyright caselaw, we do not have much Supreme Court precedent for software copyrights. That creates a conspicuous void in today's software-driven technology environment. If we want more guidance from the Supreme Court, unfortunately all we can do for now is hurry up and wait!

Footnotes

1. Google LLC v.  Oracle America Inc., 141 S. Ct. 1183 (2021).

2. 17 U.S.C.A. §101.

3. H.R. Rep. No. 96-1307, Part 2, 96th Congress 2d Sess. 19 (1980).

4. See, for example, Williams Electronics,  Inc. v. Artic International  Inc., 685 F.2d 870 (3d Cir. 1982).

5. Effective January 1, 1995.

6. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), art. 10(1).

7. Google, supra note 1.

8. See  A Manifesto Concerning  the Legal Protection of  Computer Programs by Pamela Samuelson, Randall Davis, Mitchell D. Kapor, and J.H. Reichman, 94 COLUM. L. REV. 2308 at 2347-2361 (1994); Tailoring Legal Protection  for Computer Software by Peter S. Menell, 39 STAN. L. REV. 1329 (1987). Also see  Positive Software Solutions  Inc. v. New Century  Mortgage Corp., 259 F.Supp.2d 531 at 536 n.9 (N.D. Tex. 2003).

9. See Copyright Protection for  Computer Programs, Databases,  and Computer-Generated Works:  Is Anything New Since  CONTU? by Arthy Miller, 106 HARV. L. REV. 978 (1993);  Envisioning Copyright Law's  Digital Failure by Peter S. Menell, 46 N.Y.L. Sch. L. Rev. 63 at 68-97 (2002-2003).

10. See https://bit.ly/3sbE4og.

Originally Published by Thomson Reuters - Westlaw Today.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.