News

Oracle Appeals Ruling on Google's Fair Use of Java

• By John K. Waters
• February 14, 2017

Oracle Corp. on Friday filed an appeal with the U.S. Court of Appeals for the Federal Circuit, seeking to overturn a federal jury's decision that Google's use of Java in its Android OS constituted fair use.

In the latest appeal in the long-running copyright infringement lawsuit, Oracle argued 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."

Google, which is a subsidiary of Alphabet Inc., declined to comment on Oracle's latest appeal at press time.

Oracle sued Google in 2010, claiming that, in developing its Android mobile OS, the Internet search giant infringed on patents associated with the Java Platform, which Oracle acquired when it bought Sun Microsystems Inc. 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, returning it to the district court.

What the appeals court found initially 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. John T. Kennedy, an attorney at Dorsey & Whitney specializing in patent litigation, prosecution and licensing, explained in an e-mail 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, the 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. Oracle had asked for $9 billion in damages.

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 or 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."

Google won the fair-use argument, Oracle's appeal states, by claiming that Android was used for a different market from Java, primarily smartphones, and not personal computers. "The district court's orders prevented Oracle from fully countering Google's Fiction by demonstrating that there was a huge market overlap," the appeal states. Google "exploited the evidentiary void at trial," and then announced that it was launching Android for PCs "minutes after Oracle rested."

The jury never learned about "a growing ecosystem of devices well beyond smartphones," the appeal states, which allowed Google to "realize the full promise of the Android platform: competing with the existing Java ecosystem for market share across a broad variety of devices."