News

Supreme Court Agrees To Decide Google v. Oracle

• By John K. Waters
• November 20, 2019

The Supreme Court of the United States (SCOTUS) has agreed to decide whether Google should have to pay Oracle billions of dollars for infringing on its copyright of 37 Java APIs Google used in its Android operating system.

Google, which is a subsidiary of Alphabet, Inc., filed a writ of certiorari with the Supreme Court earlier this year, asking for a review of the earlier judgment of the United States Court of Appeals for the Federal Circuit in this case. Google described the dispute as "the copyright case of the decade."

"Above and beyond the broader implications for copyright law, this case warrants the Court's attention for its sheer practical importance," the petition reads in part. The ruling "…threatens the prevailing approach to building computer software…"

The court granted the certiorari on Friday.

"We welcome the Supreme Court's decision to review the case and we hope that the Court reaffirms the importance of software interoperability in American competitiveness," Kent Walker, Google's senior vice president of global affairs, said in a statement. "Developers should be able to create applications across platforms and not be locked into one company's software."

Oracle is seeking $8.8 million in damages from Google for what it sees as the "epitome of copyright infringement," which has done "incalculable market harm."

"We are confident the Supreme Court will preserve long established copyright protections for original software and reject Google's continuing efforts to avoid responsibility for copying Oracle's innovations," Oracle spokesperson Deborah Hellinger said in a statement. "We look forward to presenting our arguments, which have been embraced by the Solicitor General and the Federal Circuit."

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, the presiding judge, 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. The high court decided not to review the case at that time, returning it to the district court.

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 that wasn't at issue. John T. Kennedy, an attorney at Dorsey & Whitney specializing in patent litigation, prosecution, and licensing, explained in an email at the time that 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, as the court put it, "the author had multiple ways to express the underlying idea" at the time of creation of the code.

In May 2016, a jury ruled that Google's use of the Java APIs was allowed under the "fair use" provisions of the federal copyright law, and therefore did not infringe on Oracle-owned copyrights.

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."

Oracle appealed that decision in February 2016, arguing that the jury "reached a wrong result" because the district court "repeatedly undermined" its case and failed to allow the database giant to present evidence that would disprove Google's claim that Android was limited to the smartphone market, and consequently, didn't compete with Oracle. The court "eliminated one of Oracle's central arguments by precluding Oracle from showing all the markets where Android and Java overlapped," the appeal states. It goes on to claim that "Android supersedes Java in markets Java occupied before Android -- including TVs, cars, and wearables."

In December 2017, the federal appeals court ruled that APIs were not protected under fair use. Last year, a U.S. Federal Circuit Court of Appeals declined to re-hear the case, which left Google with only one option: petition SCOTUS—which it did in January of this year.

In a blog post announcing that move, Google's SVP of Global Affairs and Chief Legal Officer Kent Walker rightly asserted that the Court's decision on the copyrightability of software "will have a far-reaching impact on innovation across the computer industry."

"Standardized software interfaces have driven innovation in software development," Walker wrote. "They let computer programs interact with each other and let developers easily build technologies for different platforms. Unless the Supreme Court steps in here, the industry will be hamstrung by court decisions finding that the use of software interfaces in creating new programs is not allowed under copyright law."

In a 46-page petition, Oracle disputed Google's claim that the lower court's decision will harm software developers.

"Google claims the Court of Appeals' decision imperils the future of 'interoperable' software," the petition reads. "But Google has conceded that it purposely made its platform incompatible with Oracle's. So this is no case to consider the copyright implications of interoperability…."

The Oracle petition also shot down Google's fair use argument: "Google cites not a single case—in any court—that has ever held that copying this volume of code (or this much structure and organization) into a competing work is fair."

And last month, the U.S. Justice Department urged the Supreme Court to deny Google's petition. Responding to an order from the High Court, requesting his views on the case, the Solicitor General filed an amicus curiae brief, which read in part, "Computer code can be used in transformative ways, such as by excerpting it in a textbook to illustrate a coding technique. And lower courts have wrestled with issues, not presented here, about whether making temporary copies of existing code to 'reverse engineer' a system, in order to create compatible works that do not incorporate the pre-existing code, constitutes fair use…. But here, petitioner took lines of code from a rival software platform to make a competing platform that is not interoperable with the Java platform."

"Petitioner copied 11,500 lines of computer code verbatim, as well as the complex structure and organization inherent in that code, in order to help its competing commercial product," the brief explained. "The record demonstrates, moreover, that petitioner's unauthorized copying harmed the market for respondent's Java platform…."

If Oracle prevails in the high court, the case returns to a federal jury in California, which will calculate the damages. If Google wins, it's finally over. Either decision is likely to establish a precedent for copyrighting code in the U.S. that will affect software makers everywhere.