Appeals Court Says APIs Copyrightable in Oracle v. Google; Analysts Cite 'Chilling' Effect

A federal appeals court sided with Oracle on Friday, ruling that the 37 Java APIs at the center of the now four-year-old Oracle v. Google patent infringement lawsuit are, in fact, protected under U.S. copyright law. The appeals court overturned the 2012 ruling of Judge William Alsup of the U.S. District Court of Northern California, and referred the case back to that court, which will now take up the question of whether Google's use of those APIs in Android constitutes fair use.

To be clear, 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.) As John T. Kennedy, an attorney at Dorsey & Whitney specializing in patent litigation, prosecution, and licensing, explained in an e-mail, the court found that the Oracle code had not 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 court put it, "the author had multiple ways to express the underlying idea" at the time of creation of the code.

"Whether an alleged copier has multiple ways to perform a function was also found to be not relevant to the copyrightability of such code," Kennedy said, "but, might arise as a fair use defense. In a nutshell, since the functions performed by the Oracle APIs at the time of their creation could have been achieved by code 'written and organized in any number of ways' Oracle's code is copyrightable."

This case still has a long way to go, and Google has a chance to win a fair use argument, but the court's decision that APIs are copyrightable could have far-reaching implications for developers if it stands.  

The court's decision could have a "chilling effect on the Java community and its developers," Redmonk analyst Stephen O'Grady predicts. "Android has been a boon to the [Java] language," he told ADTmag, "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."

That chill could spread throughout the industry, said Gartner analyst Mark Driver, icing the long-standing tolerance for clean-room implementations. "Imagine if this precedent were on the books when they first started calling the NetBIOS API," he said. "That's a standard API for developing client-server apps. We would have a very, verydifferent personal computing industry, one that is much more fragmented and nowhere near the critical mass we have today."

The court's decision could have a great impact on Java, specifically, he said, because it would mark it as clearly not open. "Anyone with a strategy around open source is going to seek a path of technology that is far removed from anything closed, and vice versa."

Forrester analyst Jeffrey S. Hammond see's no short-term impact, but expects the API decision to accelerate a transition toward other app authoring technologies on Android, "perhaps based more on HTML and JavaScript, or accelerated investment in Chrome." But if those changes do come, it's likely they won't be here for a while, he said.

Wayne Citrin, CTO of JNBridge, sees copyrightable APIs as bad for Java, which is also bad for Oracle. "Java is valuable to Oracle to the extent that it's relevant," he said. "Cutting off Google's Android/Java initiative at the knees certainly will make Java less relevant. Whatever money they make from the copyright on the APIs is outweighed by the long-term hit that they take on Java's relevance and reach."

Driver agrees: "If this decision stands, it's going to be a Pyrrhic victory for Oracle, because they're part of the industry. Ultimately, it hurts them too."

"At some point someone is going to have to sit down with the court and explain exactly how far reaching this is going to be," Driver added, "precisely how destructive it's going to be to the idea of open development and the concepts of the Internet, all the things that are driving most of the innovation that's happening today. Perhaps they'll take a step back and see that this isn't just an argument between two vendors."

But Citrin doesn't see any long-term negative affect on Java developers, especially those doing mainstream development. "Just about all 'mainstream' Java development (mostly server-side development written to run inside Java EE app servers) runs on Oracle JREs or other licensed JREs," he said, "so this should have absolutely no impact."

"As to how it affects Android developers, or developers using unofficial open-source JREs, I would gather that it would provide difficulties," he said, "though probably more so for Android developers, since Oracle has a specific target in Google. For open-source JRE projects, it's not clear who Oracle would go after."

Posted by John K. Waters on May 12, 2014