Copying From a Copyrighted Computer Program May Be Fair Use to the Extent Needed to Promote Adoption of the Use of Accrued Talents in Creating a New Software Platform

| Makoto Tsunozaki, Ph.D.Kendall Loebbaka


Before the United States Supreme Court (Opinion by Justice Breyer) on Writ of Certiorari to the United States Court of Appeals for the Federal Circuit.

Summary: Where use of copyrighted computer code is inherently bound together with uncopyrightable ideas and new creative expression, it may be fair use to copy that which is needed to reimplement a user interface for others to make use of their accrued talents.

Google sought to use Oracle’s Java platform to create a software platform for smartphones, but was unable to agree to a license. Google built its own Android platform and copied a portion of Oracle’s Application Programming Interface (“API”) from the Java platform. Oracle sued Google for copyright infringement. The district court found that the copied code was not protected by copyright. On appeal, the Federal Circuit reversed the copyrightability determination and remanded for a trial on the issue of fair use. The district court held a jury trial solely on the issue of fair use. The jury found that Google had shown fair use. On appeal, the Federal Circuit reversed again, holding Google’s use of the Java API was not fair use and remanded for a trial on damages. Google appealed to the Supreme Court.

The Supreme Court granted certiorari. The Supreme Court did not address the copyrightability of the Java API, and instead assumed that it is copyrightable. The Supreme Court then addressed the issue of fair use. The Supreme Court agreed with the Federal Circuit that fair use is a mixed question of fact and law, with deference to a jury’s findings of underlying fact and the ultimate question on fair use decided by the judge de novo. The Supreme Court applied the four statutory factors for fair use: (1) purpose and character of the use; (2) nature of the copyrighted work; (3) amount and substantiality of the portion taken; and (4) effect of the use upon the potential market. The Supreme Court found that all factors favored Google and reversed the Federal Circuit, holding that Google’s use of the Java API was a fair use because Google only took what was needed to allow Java programmers to use their learned skills in a new and transformative program.

First, the Supreme Court noted that the nature of the copied Java API differed from other kinds of copyrightable computer code. The copied Java API was bound up inextricably to uncopyrightable ideas, such as the idea of organizing tasks, as well as to uncopied portions of the Java API that actually instructs the computer on steps to carry out a task. The Supreme Court held that the value of the copied code derived from the investment of time and effort of programmers in adopting the new system. These considerations made the copied portions further from the core of copyright than most computer programs. Second, the Supreme Court held that Google’s purpose for using the Java API, to reimplement a user interface that could readily be used by other programmers, was consistent with the constitutional objective of copyright in promoting “progress,” and was transformative. Third, the Supreme Court held that Google did not copy the code for its creativity or purpose, but to facilitate others to adopt the new Android platform and write new programs using their Java experience. Fourth, the Supreme Court held that that there was evidence that Oracle was not in a position to benefit financially from the smartphone market, that Android was a distinct and more advanced market from the Java platform, and that Oracle foresaw a benefit from broader use of the Java programming language through Android.

Justice Thomas dissented, contending that the Copyright Act’s statutory definition of computer program covered the copied code. Thus, while Oracle cannot copyright the idea underlying the copied code, it can copyright the specific expression of the idea represented in the copied code. The dissent also disagreed with the four-factor fair use analysis, noting that at least three of the four factors favored Oracle. In support of an absence of fair use, the dissent noted that Google’s copying decimated Oracle’s market and interfered with Oracle’s licensing opportunities; Google’s purpose for copying was overwhelmingly commercial; and the substantial copying is what attracted programmers to the Android platform.

Editor: Paul Stewart