News

Oracle v. Google: Solicitor General Sides with Oracle

• By John K. Waters
• June 1, 2015

When the Supreme Court asked the Obama Administration in January to offer its opinion on whether the high court should hear Google's appeal of a lower court ruling in favor of Oracle in the closely watched Oracle v. Google copyright infringement lawsuit, the tech industry reacted with a combination of surprise and confusion. News that the Justice Department has urged the high court not to hear the case came as a shock.

Oracle sued Google in 2010, claiming that, in developing its Android mobile operating system, the Internet search giant infringed on patents associated with the Java Platform, which Oracle acquired when it bought Sun Microsystems. In 2012 a 10-person jury serving in the Federal District Court in San Francisco ruled unanimously that Google had not infringed on Oracle's patents. Later that year, U.S. District Judge William Alsup also ruled that the 37 Java APIs at the center of the lawsuit were not subject to copyright. In May 2014, a federal appeals court overturned that ruling, declaring that the Java APIs were protected under U.S. copyright law. In October 2014 Google filed a petition with the Supreme Court, asking it to review and reverse the appeals court's decision.

What the appeals court found was that the declaration code in Oracle's API packages, which Google copied verbatim, was copyrightable. Google developed the implementation code independently, so it wasn't at issue. The court found the Oracle code had not been merged with the functions performed by the code; that combinations of short code phrases, such as those used in the APIs, can be copyrightable; and the fact that the code serves a function does not preclude its copyrightability if, the as the appeals court put it, "the author had multiple ways to express the underlying idea" at the time of creation of the code.

"The tech and IP community was surprised at the federal circuit's ruling," said attorney Case Collard, a partner at Dorsey & Whitney, who specializes in intellectual property disputes and developing strategies for safeguarding intellectual property rights. "The prevailing thought was that the district court got it right on the question of whether these APIs are functional; if they are, they don't fall under copyright protection. That's what the district court found. The federal circuit found that they are expressive, even comparing them to the works of Charles Dickens. A lot of people in the tech industry felt that the district court was a lot closer."

But the White House agrees with the appeals court. In an amicus curiae brief, the U.S. Solicitor General stated:

"Declaring code may be one step further removed than implementing code from the ultimate operation that a computer performs. Petitioner [Google] offers no conceptual or linguistic basis, however, for concluding that the status of particular code as a Section 102(b) 'method of operation' or 'system' depends on the directness of the link between that code and the ultimate computer function. And even if the terms 'method of operation' and 'system' were otherwise susceptible of such a reading, the statutory definition of 'computer program' -- 'a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result' -- indicates that copyrightability should not turn on that distinction."

The Administration argued that the dispute is best understood within the context of the fair-use doctrine:

"Petitioner argues that its copying of respondent's code promoted innovation by enabling programmers to switch more easily to another platform. But it is the function of the fair-use doctrine ... to identify circumstances in which the unauthorized use of copyrighted material will promote rather than disserve the purposes of the copyright laws."

And it concluded:

"Although petitioner has raised important concerns about the effects that enforcing respondent's [Oracle] copyright could have on software development, those concerns are better addressed through petitioner's fair-use defense...."

The high court's decision to ask for input from the Feds underscores the potentially far-reaching impact of their decision, should they decide to hear the case. Java developers in particular will feel that impact, Redmonk analyst Stephen O'Grady told ADTmag when the appeal was filed. The court's decision could have a "chilling effect on the Java community and its developers," he said. "Android has been a boon to the [Java] language, bringing it relevance in the exploding mobile development ecosystem. Any binding decision, therefore, that might impact its viability over the longer term raises questions for developers currently focused on building mobile Java applications for Android."

The big-picture issue in this years-long back-and-forth is, in the words of Google's Oct. 6, 2014, petition to the high court, "whether copyright protection extends to all elements of an original work of computer software, including a system or method of operation, that an author could have written in more than one way."

"Every developer that I work with is navigating a number of potential pitfalls," Collard said, "and this adds another one to their list. If you're on the ground, developing code, trying to make sure it works is a big enough problem. Making sure that you don't run afoul of open source licensing issues is another big challenge. The idea that you'll also have to make sure that you've cleared the use of APIs adds yet another layer of stress to an already stressful job. That's why this decision is being met with some unhappiness in the tech industry."

Keep in mind that asking for an opinion from the executive branch is actually a common practice of the high court, and that, although the Justices frequently take the Solicitor General's advice, they are not required to do so.

"The high court often wants to get the administration's position on how these statutes should be interpreted," Collard explained. "Because the U.S. is not a party in this case, the Solicitor General is acting in an advisory role. Sometimes the judicial branch takes that advice; sometimes it doesn't."