by Dennis Crouch
Google v. Oracle (Fed. Cir. 2017) (pending software API copyright case)
In its return-trip to the Federal Circuit, the Oracle’s JAVA-Copyright case against Google appears have some chance of once again making interesting precedent. I previously described the case as follows:
When Google wrote its program-interface (API) for Android, the company made a strategic decision to mimic the method-calls of Java. Java was already extremely popular and Google determined that free-riding on Java popularity would facilitate its catch-up game in the third-party app marketplace. As an example, Google used the Java method header “java.lang.Math.max(a,b)”. When called, the “max” function returns the greater of the two inputs. In Android’s API, Google copied a set of 37 different Java “packages” that each contain many classes and method calls (such as “max()”). Overall, Google copied the header structure for more than six-thousand methods. Although Java is offered for both open source and commercial licenses, Google refused to comply with either regime.
Java’s originator Sun Microsystems was known for broadly sharing its creations without enforcing its IP rights. That aura changed when Sun was purchased by Oracle.
Back in 2012, the N.D. Cal. district court ruled that the portions of Java structure that Google copied were not themselves entitled to copyright protection. On appeal, however, the Federal Circuit reversed and ordered a new trial. In particular, the Federal Circuit panel led by Judge O’Malley held that the Java API taxonomy copyrightable as a whole and rejected the applicability of idea/expression merger doctrine. “Merger cannot bar copyright protection for any lines of declaring source code unless Sun/Oracle had only one way, or a limited number of ways, to write them.”
On remand, the jury sided with Google – finding that the accused use was a “fair use” and therefore not infringement. On appeal, Oracle asks the court to overturn that verdict – both based upon the evidence presented and the additional evidence excluded.
Oracle has filed its opening brief that is supported by eleven additional amicus briefs. [Oracle Brief: 02-10-17_oracle-opening-brief-second-appeal]. Google’s will be due next month as well as amicus supporting the broader conception of fair use.
Although the briefs provide good arguments for the limited nature of fair use and the ‘creativity’ associated with API development, none of them squarely addressed how partial failings under 17 USC 102(b) should impact the fair use determination under Section 107.
102 (b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
Although the API was found not to violate the limitations of 102(b), I would suggest that this close-call should have a relevant impact on the scope of fair use. I would also suggest that platform-interoperability and being able to take advantage of a skilled work-force (i.e., Java Programmers) should be included within the fair use debate even if they don’t fully reach the 102(b) threshold. Prof. Randy Picker works in this area and tries to tease-out what counts as legitimate restrictions on access and those that are illegitimate.
The Fair Use provision is written as follows:
107 [T]he fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above
In walking through these factors, Oracle argues:
- Google’s purpose was purely commercial; not transformative; and not in good faith.
- API’s packages should be given strong protections because they are “undisputedly creative.”
- The API’s represent the “heart” of Java.
- The copying led to significant harms both to current and potential markets.
McNealy and Sutphin are former Sun Microsystems executives who helped develop and promote Java. In their amicus brief, the pair provide a nice overview of how Java works and its purpose. The key portion of the brief here is the allegation that Google’s copying allowed it to “steal the legions of developers already using the Java platform.” The question for me is whether that is a harm protectable through copyright. [2017-02-17_mcnealy-sutphin_amicus-brief] Software engineers Spafford, Ding, Porter, and Castleman add that the Java API should be given strong copyright protection because “design and expression of an API reflects the creative choices and decision-making of its author.” [2017-02-17_spafford-ding-porter-castleman_amicus-brief]
A group of 13 law professors have filed their brief in support of the copyright holder Oracle – arguing, inter alia, that (1) fair use is narrow by design; and (2) there is no special fair use test for copyrighted software. Again here, the scholars do not address the 102(b) bar or the functional nature of the API – other than by noting that Google’s copying “achieve[d] the same functions as Oracle” and therefore was not transformative. [2017-02-17_ip-scholars_amicus-brief] Falling in-line, the RIAA suggests that the purpose-focused-transformation-test has no basis in the statute and should not be relied upon for fair use analysis. [2017-02-17_riaa-amer-assn-of-publishers_amicus-brief] Likewise, New York’s IP Law Association [2017-02-17_nyipla_amicus-brief] argues that a mere “change in context” cannot be seen as transformative for first amendment analysis.
The old Perfect-10 case almost seems to treat Google as if it is a library providing a major public service. A number of briefs attempt to counter this pro-Google bias. CCA (smaller mobile carries), for instance, argues that “Google’s current marketplace dominance with respect to mobile software platforms, online advertising, and online traffic is the result of many strategic decisions, including its decision to flout Oracle’s copyrights in Java – harming competition and CCA members.” The ask her is simply: Treat Google as you would any other commercial market participant. [2017-02-17_competitive-carriers-assn_amicus-brief]
In perhaps the most moderate brief of this first round, the BSA argues that the equitable origins of the Fair Use analysis suggest favoring broad admissibility of evidence – unlike what happened in this case. [2017-02-17_bsa-the-software-alliance_amicus-brief]. Fair use should be limited to its origins as a “narrow and equitable tool for promoting public benefits like criticism, comment, news reporting, teaching, scholarship, or research.” [2017-02-17_paca-digital-licensing-assn_photographers_amicus-brief]. Former Register of Copyrights Ralph Oman agrees with this approach. “Google’s copying of the Java APIs is inconsistent with the historic goals of the Fair Use Doctrine.” [2017-02-17_ralph-oman_amicus-brief].
The MPAA, Screen Actors Guild and other combined efforts in a short brief arguing simply that the market for a copyrighted work should not be limited to the existing market for the work, but should also include “traditional, reasonable, or likely to be developed markets.” Quoting Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 930 (2d Cir. 1994). [2017-02-17_mpaa-ifta-sag-aftra_amicus-brief]. Here, the district court refused to consider (or allow the jury to consider) potential markets for JAVA including television, automobile, and wearabledevice markets. The Copyright Alliance agrees that the district court’s approach to looking at impact on current market (rather than potential market) in the fair use analysis is “particularly problematic for small businesses and individual creators . . . who may not have the resources to enter all potential or derivative marketes at once.” [2017-02-17_the-copyright-alliance_amicus-brief]