Sometimes making the right call doesn’t mean getting the right result. This is how the grant of certiorari by the Supreme Court of the United States (SCOTUS) in Google v. Oracle feels to me right now. As I have written before here, the dispute between Google and Oracle regarding the copyrightability of application programming interfaces (APIs) is a big deal for business. Let’s face it — virtually every business today uses some form of software in providing its goods and services to its customers. From custom-developed mobile applications to software-as-a-service solutions, computer software no longer serves a supporting role, but is in many cases the leading business need. So it is no surprise that the ongoing battle between Google and Oracle on this issue has reached the SCOTUS; however, it is the result that they will inevitably reach that has me worried.
The background of this battle demonstrates the inevitability of SCOTUS review. Although previously written about here, a quick summary is in order for context. As part of Google’s ongoing mobile platform development after Google purchased Android, Inc. in 2005, Google sought compatibility of Java programs within its Android mobile operating system environment. Notwithstanding a majority of Java being available via open source, not all of it was publicly available, so Google tried to license the remaining Java components from Oracle’s predecessor-in-interest, Sun Microsystems. Unfortunately, the parties could not come to terms so Google did the next best thing — write its own version of Java. In so doing, Google essentially copied the same names, organization, and functions as the Java APIs, ostensibly to save development time. Oracle Corporation purchased Sun Microsystems (and its Java assets) a few years later, and Oracle proved even less inclined to come to license terms with Google for the remaining Java components. This action for copyright infringement followed not long thereafter.
The dispute essentially pivots around whether APIs are protectable copyrightable expression, and if so, whether Google’s use of the Java APIs constitutes “fair use” under copyright law. The last Federal Circuit opinion summarizes the procedural history best:
Oracle America, Inc. (“Oracle”) filed suit against Google Inc…. in the United States District Court for the Northern District of California, alleging that Google’s unauthorized use of 37 packages of Oracle’s Java application programming interface (“API packages”) in its Android operating system infringed Oracle’s patents and copyrights. [In] the first trial, the jury found that Google infringed Oracle’s copyrights in the Java Standard Edition platform, but deadlocked on the question of whether Google’s copying was a fair use. After the verdict, however, the district court found that the API packages were not copyrightable as a matter of law and entered judgment for Google. Oracle appealed that determination to [the Federal Circuit] court, and [the Federal Circuit] reversed, finding that declaring code and the structure, sequence, and organization (“SSO”) of the Java API packages are entitled to copyright protection. [The Federal Circuit] remanded with instructions to reinstate the jury’s infringement verdict and for further proceedings on Google’s fair use defense and, if appropriate, on damages.
Google subsequently filed a petition for certiorari on the copyrightability determination…[but the] Supreme Court denied certiorari in 2015.
Upon remand, the lower court found in favor of Google on its fair use defense; however, the Federal Circuit overturned the lower court’s finding of fair use by Google (again) and Google sought review by SCOTUS (again) to hopefully settle the issue once and for all. Well, they got their wish.
What SCOTUS will (hopefully) address is the nature of what an API really is, and if copyrightable, whether Google’s use constitutes fair use. The arguments on both sides are vocal, with Google’s arguments parsing the two key components of APIs (the “declaration” and the “implementing code”) as making all the difference. I won’t get into detail regarding that position (as I did so previously here), but suffice it to say that eminent computer scientists (and Google) feel strongly that APIs should be rated differently than programs because they do not “run” per se — they only specify what a program does, not how it does it.
I realize that some pretty informed minds disagree with Google’s position (and if you do, you are in good company), but the issue from my perspective cannot be viewed in a programming vacuum. Instead, it revolves around what APIs are intended to do. The whole point of APIs is to facilitate interoperability. What this means is that APIs, by their very nature, help interface one software program (or platform) to another. The whole point of APIs is to allow this interoperability to occur. Restricting API use without an express license goes against the intended purpose of APIs — if a company did not intend for another company’s programs to interface with it, why have the API set? At the very least, access to the APIs can be restricted without a license. It’s no wonder Google feels strongly that copyright should not extend to APIs under Section 102(b) of the Copyright Act (as well as the merger doctrine), and if it does, re-implementing APIs should be fair use — a reasoned analysis that the lower courts took pains to address that Google feels the Federal Circuit did not appreciate or understand.
I respect that a good number of you may disagree with my take on this issue (and in the interests of full disclosure, my experience in the industry may be influencing me accordingly). That said, I can understand the other side of the argument in favor of copyrightability and the owner’s exclusive rights to determine how such elements should be licensed. In fact, the United States (in its amicus curaie brief) argued against the need for SCOTUS review. My concern is that this issue is a nuanced one that, quite frankly, SCOTUS may not fully elucidate. I don’t know whether this case will represent “the copyright case of the decade” (as Google puts it), but it is definitely worth watching. How SCOTUS will rule is anyone’s guess, but when it comes to waiting for this decision, I know for sure is that I won’t be the only one doing so.
Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.