News

Supreme Court Sides with Google in Landmark Software Copyright Case Over Java APIs

• By John K. Waters
• April 5, 2021

The Supreme Court of the United States (SCOTUS) ruled on Monday that Google did not commit copyright infringement when it used 37 Java APIs in its Android mobile operating system without Oracle's permission.

In its 6-2 ruling, the high court held that "Google’s copying of the Java SE API, which included only those lines of code that were needed to allow programmers to put their accrued talents to work in a new and transformative program, was a fair use of that material as a matter of law."

The ruling spares Google, which is a subsidiary of Alphabet, Inc., from having to give Oracle an $8.8 billion piece of the operating system’s business and $475 million in lost potential licensing revenue, but perhaps more importantly, establishes a precedent for future disputes of this kind.

The question of whether Google copied those APIs, totaling 11,330 lines of code, as well as “the intricate organization and relationships” among them, was never in dispute.

Oracle sued Google in 2010, claiming that, in developing the Android OS, 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. As John T. Kennedy, an attorney at Dorsey & Whitney specializing in patent litigation, prosecution, and licensing, explained in an email at the time, the court found that 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. In 2018, 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 last year. SCOTUS agreed to hear Google's appeal in November 2019.

Justice Stephen Breyer wrote the majority opinion in this case: "We reach the conclusion that in this case, where Google reimplemented a user interface, taking only what was needed to allow users to put their accrued talents to work in a new and transformative program, Google's copying of the Sun Java API was a fair use of that material as a matter of law…."

Justice Clarence Thomas wrote the minority opinion: "The majority acknowledges that Google used the copied  declaring code 'for the same reason' Oracle did. So, by turns, the majority transforms the definition of "transformative." Now, we are told, 'transformative' simply means—at least for computer code—a use that will help others 'create new products.' …That new definition eviscerates copyright…"

Breyer was joined by Chief Justice John Roberts and Justices Sonia Sotomayor, Elena Kagan, Neil Gorsuch and Brett Kavanaugh. Justices Clarence Thomas and Samuel Alito dissented. Justice Amy Coney Barrett, who was not yet confirmed by the Senate when the case was argued in October of last year, did not participate in the case.