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Google LLC v. Oracle America, Inc.: The Supreme Court Considers the “Copyright Lawsuit of the Decade”

Reports Patent

Google LLC v. Oracle America, Inc., No. 18-956

When Google built its Android platform, it sought to make the platform compatible with Java, a programming language owned by Oracle. Java developers use application programming interface (API) packages to perform certain functions. To make Android Java-compatible, Google reverse-engineered the Java APIs. Google LLC v. Oracle America, Inc. now poses the question of whether the alleged resulting similarity to the “structure, sequence, and organization” (SSO) of Google’s software infringes Oracle’s copyright.

Litigation over the issue began when Oracle sued Google in the Northern District of California in 2010. The trial jury found copyright infringement, but failed to reach a verdict on whether the fair use exception applied. In a post-verdict judgment, the court found that the APIs at issue could not be copyrighted. The Federal Circuit found that SSO did fall under copyright protection and reversed, remanding for trial of the fair use issue. This second trial found for Google on the fair use question; on appeal, the Federal Circuit again reversed, finding SSO infringement was “not fair as a matter of law.”

In its petition for certiorari, Google argued that the copied APIs expressed intrinsic functionality not subject to copyright. Google also noted a circuit split on the question of whether copyright protection could attach to “methods of operation,” and claimed that fair use had been assessed in an overly atomized way that shortchanged a holistic view of fairness.

The Supreme Court granted certiorari and oral argument was held on October 7, 2020. Issues discussed at oral argument included the idea-expression distinction, with some focus on whether forms of organization are more of an idea or an expression of an idea. Other questions focused on fair use doctrine and on the Federal Circuit’s review.

Counsel for Oracle and Google addressed the idea-expression distinction in arguments. Thomas Goldstein, representing Google, reiterated the argument that the code at issue embodied only an uncopyrightable idea, rather than creative expression. “There is no copyright protection,” Goldstein argued, “for computer code that is the only way to perform those functions.” By way of response, Joshua Rosenkranz, representing Oracle, replied that certain features of the software were individually bespoke to Java and thereby under Oracle’s copyright.

The justices took up the idea-expression issue. Chief Justice Roberts commented that “the only reason that there’s only one way to do it is because Sun and Oracle’s product expression was very successful.” Justice Kavanaugh noted: “You’re not allowed to copy a song just because it’s the only way to express that song.” Justice Kagan analogized to mathematical proofs, where many possible solutions might exist but a particularly elegant solution might be “better than others.”

Another line of questioning focused on the idea of attaching copyright to forms of organization. Justice Breyer compared the code at issue to the QWERTY keyboard, and Justice Kagan hypothesized an advantageous and particularly novel store format. Both expressed doubts that such forms of organization should receive copyright protection.

On the fair use issue, Justice Kagan built on the QWERTY metaphor to ask Malcolm Stewart, arguing for Oracle on the government’s behalf, whether a cell-phone maker might fairly copy a “new and very useful keyboard” so that its customers could “rely on something familiar.” Justice Sotomayor questioned Oracle about whether Google’s work might have constituted transformative use, given that it extended use of the APIs to a new platform.

Several justices specifically questioned the standard of review applied by the Federal Circuit on the fair use question. Justice Gorsuch commented that “fact-specific questions like fair use … are reviewed for substantial evidence in the record, and that is not what the Federal Circuit here did,” and asked Rosenkranz to justify the scope of the Federal Circuit’s review. In response, Rosenkranz argued that the Federal Circuit was appropriately suited to make the fair use determination.

Google previously noted in its petition for certiorari the technology industry’s interest in resolving the issues of the case. Much may turn on the outcome.
Oral arguments were reported in SCOTUSBlog and the New York Times. A full transcript is available from the Electronic Frontier Foundation. Supplemental briefs for Google and Oracle were filed August 7. News analysis at The Verge.