News

Oracle and Google Back in Court Over Java APIs

• By John K. Waters
• May 11, 2016

The long-running court battle between Oracle Corp. and Google Inc. continued this week in San Francisco as the two companies faced off again in federal court before a new jury and a familiar judge.

U.S. District Judge William Alsup, whose original ruling that the 37 Java APIs at the center of the lawsuit were not subject to copyright was overturned by a federal appeals court, is again presiding. Google had petitioned the Supreme Court to hear an appeal of that ruling, but the high court decided not to review the case, returning it to the district court.

It has been six years since Oracle originally sued Google, 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.

Oracle is asking for $9.3 billion in damages. Of that amount, $475 million are actual damages—the amount of money Oracle claims it might have made from licensing Java to handset makers if Google hadn't developed Android; the rest represents Google's profits from the Android OS, including revenues from mobile advertising, apps and content sold through the Android Market and Google Play.

The high court's decision to leave the federal appeals court's decision in place means that APIs are now copyrightable. Historically, APIs have not been protected by copyright, but Oracle has argued that the "structure, sequence and organization" of the API packages in Java are sufficiently complex to merit protection.

Google is now arguing that its use of the APIs at issue falls under the doctrine of fair use. The original jury was split on the fair use question.

The U.S. Copyright Office defines fair use as "a legal doctrine that promotes freedom of expression by permitting the unlicensed use of copyright-protected works in certain circumstances."

"Fair use is a fact-specific inquiry," attorney Case Collard explained in an earlier interview. "It depends on what the item is that is copyrighted and how the entity claiming fair use is using it."

Collard, a partner at Dorsey & Whitney who specializes in intellectual property disputes and developing strategies for safeguarding intellectual property rights, explained that federal courts decide fair use issues using four criteria:

• The purpose and character of the use (is it commercial, nonprofit, educational,and so on).
• The nature of the copyrighted work (is it a novel, movie, song, technical article, news item).
• The amount and "substantiality" of the portion used (how much of it was used and was that the "heart" of the work).
• The effect of the use upon the potential market value of the work.
• There's also the question of whether the use was "transformative." Transformative uses, the Copyright Office says, "are those that add something new, with a further purpose or different character, and do not substitute for the original use of the work."

Earlier this year, Google announced that it would be replacing its Apache Harmony implementation of the Java libraries in upcoming versions of Android with Oracle's OpenJDK, effectively replacing the code at issue in the lawsuit.

"As an open-source platform, Android is built upon the collaboration of the open-source community," Google said in a statement. "In our upcoming release of Android, we plan to move Android's Java language libraries to an OpenJDK-based approach, creating a common code base for developers to build apps and services. Google has long worked with and contributed to the OpenJDK community and we look forward to making even more contributions to the OpenJDK project in the future."

IDC analyst Al Hilwa viewed the decision as a smart one, with the potential to help Google in its legal struggles with Oracle: "In one move, Google is able to make Android more compatible with Java, reduce its software development costs by leveraging OpenJDK, and potentially reduce future penalties in case its use of the Java APIs that are the subject of the lawsuit are not found to be fair use," he said.