Submit to Digest

Google v. Oracle: SCOTUS to Determine How Copyright Laws Apply to APIs

Copyright Reports

Google LLC v. Oracle America, Inc., 886 F.3d 1179 (Fed. Cir. 2018), cert. granted, (U.S. Jan. 24, 2019) (No.18-956), petition hosted by SCOTUSBlog.

On November 15th, 2019, the Supreme Court of the United States granted certiorari to Google LLC v. Oracle America, Inc., 886 F.3d 1179 (Fed. Cir. 2018). The issues to be decided are whether copyright protection extends to software interfaces and whether Google’s use of Oracle’s application programming interfaces (“APIs”) constituted fair use. With $9 billion being sought in damages, this case is significant not only for the parties, but also for the tech industry—many companies and experts have argued that excluding APIs from copyright protection has been essential to the development of modern computers and the Internet.

The case began in 2010 when, upon acquiring the Java SE platform along with Sun Microsystems, Oracle sued Google in the District Court for the Northern District of California for copyright infringement of its Java APIs. The court held that APIs could not be copyrighted, but the United States Court of Appeals for the Federal Circuit reversed, holding that Java API packages are entitled to copyright protection. The case was then remanded to determine the issue of fair use, and the trial court once again sided with Google. The Federal Circuit, however, reversed again, holding that Google’s use of the Java API packages was not fair as a matter of law.

The Supreme Court’s grant of certiorari is significant in three ways. First, the Court will have an opportunity to clarify the scope of copyright as applied to software and the application of key legal doctrines such as the merger doctrine, the fair use defense, and section 102(b)—the embodiment of the idea/expression dichotomy in copyright law. Google argued in its petition that there is a circuit split on these issues. The First and Sixth Circuits have interpreted section 102(b) to preclude copyright protection for all methods of operation, including those embodied in computer software interfaces. The Third Circuit has held that a “method of operation” embodied in a software interface is copyrightable as long as it could have been written differently and still

serve the same high-level purpose. The Second, Fifth, and Tenth Circuits have adopted the abstraction-filtration-comparison test, which identifies the parts that are protected and tests if they were copied. In fact, the Tenth Circuit had expressly declined to adopt the First Circuit’s approach to section 102(b).

Second, the Court’s decision may impact the tech industry in a number of ways. APIs are now ubiquitous and crucial to modern software interoperability. They afford software developers the freedom to focus on the unique aspects of their products, implement uniform standards across multiple operating systems, and create integrated platforms for end users. For example, an app developer for Android who wants to integrate biometric authentication may use the fingerprint API provided by Google instead of having to code it herself from scratch and ensure its compatibility with Android. Therefore, a ruling by the Supreme Court upholding the copyrightability of APIs may be disastrous for commercial platform developers, many of whom have been relying on various APIs being open-source. Moreover, such a ruling has the potential to stifle software innovation and blow up the number of lawsuits by “copyright trolls”—parties that enforce their copyrights through litigation without producing or licensing their work.

Third, the Court will likely address the balance between copyright law and patent law. In its petition, Google criticized “the Federal Circuit’s expansion of copyright law into the traditional territory of the patent system.” It argued that the Federal Circuit’s two rulings, both in favor of Oracle, effectively granted software owners a patent-like monopoly, but under “a more relaxed standard and for a much longer period than permitted by patent law.” While the patentability of APIs is certainly questionable under Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), the Supreme Court may provide clarity on what type of intellectual property protection, if any, software interfaces are entitled to. An earlier JOLT Digest report by Aaron Ward provides an overview of the petition. JOLT has also published a special issue on this case.