Submit to Digest

Google v. Oracle: Silicon Valley Braces for "Lawsuit of the Decade" as Google Petitions for Cert to decide API Copyrightability

Copyright Reports

Petition for Writ of Certiorari, Google LLC v. Oracle America, Inc., 886 F.3d 1179 (Fed. Cir. 2018), No.18-956. Petition hosted by Reuters.

In January of 2019, Google petitioned for certiorari in Google LLC v Oracle America, Inc. The case concerned a copyright infringement claim filed by Oracle against Google for use of the Java API in Android smartphones. Oracle seeks damages that could exceed $8 billion.

Java Platform, Standard Edition ("Java SE") is a software platform owned by Oracle that enables code written in the Java Programming Language to be run on a variety of computers using the “Java virtual machine.” It also includes a “library” of standardized pre-written “methods,” or blocks of code, to handle basic programming language features, such as mathematical calculations, strings, and simple graphics.  The included “Java API” is the list of names of those methods. Java developers use those names to cause the pre-written, underlying blocks of code to execute. Experienced Java developers prefer to use this standard API to avoid having to take the time to learn a new one.

The Java Programming Language has been free to use since the 1990s, but Java SE requires a license.

In 2005, Google negotiated with Sun Microsystems, then owner of Java SE, to use Java SE in its Android platform. Negotiations fell through, and Google developed its own Java platform for Android. Google used the Java Language in its platform, and used the Java API names, but used those names to refer to their own methods rather than the Java SE methods.  

In 2010, after Oracle acquired Sun Microsystems, Oracle sued Google for Copyright infringement in the Northern District of California, in the Ninth Circuit. At trial in 2012, Google presented a fair use defense, resulting in a hung jury. The trial court entered judgment as a matter of law that Google’s use was fair use, because the API was a “method of implementation” and because of the merger doctrine, which states that an expression of an idea cannot be copyrighted when there are only a limited number of ways to express it.

In 2014, the Federal Circuit Court of Appeals held that methods of operation can be protected as long as they are also an expression of an idea, and that the merger doctrine does not apply because the API declarations could have been written differently. The court remanded for a new trial based on a fair use defense.

In the new trial in 2016, the jury found that Google’s use constituted fair use. In 2018, the Federal Circuit Court of Appeals overturned the verdict, finding as a matter of law that the use was not fair use. They found that the use was not transformative, harmed the market value of existing phones using Java SE, and diminished the market for use of Java SE in future smartphones. The court remanded for a trial on damages.

Google makes four arguments in support of its petitions for Certiorari. First, google argues that the Federal Circuit court erred in adopting a narrow reading of “methods of operation.” Google argues that the API is a “method of operation” because it is necessary to use the underlying Java SE methods; Google stresses the API should be treated differently from the copyright to the code itself.

Second, Google notes a circuit split on “methods of operation”, and argues that the Federal Circuit erred in its purported application of the Second Circuit test for whether “methods of operation” are copyrightable.  First and Sixth circuit precedent hold that methods of operation are never copyrightable, because they are an idea itself. However, the Third Circuit held that software interfaces are copyrightable so long as software performing the same function could have been written differently. The Second Circuit uses an “abstraction/filtration/comparison” test, which determines what part of the method of operation is protected, and tests if this was copied; the Fifth and Tenth Circuits have adopted this approach. Google argues that Ninth Circuit law more closely resembles that of the First Circuit.

Third, Google argues that the Federal Circuit erred in placing excessive emphasis on individual factors within a fair use test rather than evaluating it holistically. Google argues that its use was fair because applying the Java API to the constraints of a smartphone environment is transformative, and that facilitating access to the pool of experienced Java Language developers is fair use.

Fourth, Google argues it is critical to resolve the circuit split on this issue in light of the prevalence of software APIs within the technology industry, and the significant impact this could have on the economy. Lawsuit liability from use of APIs could drastically alter the way corporations invest and conduct research and development.

The lawsuit has attracted significant attention from the technology industry. The Electronic Frontier Foundation supports Google, citing “enormous legal uncertainty” in the software industry while the case is pending. A summary of Google’s arguments can be found at Ars Technica.