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U.S. Supreme Court Holds Google’s Re-Implementation of Java API is Fair Use | Firm Alert

Summary

On April 5, 2021, the U.S. Supreme Court ruled that Google’s re-implementation of a software tool Application Programming Interface (“API”) owned by Oracle was fair use.  The Court did not address the copyrightability of APIs.  Rather, the Court assumed copyrightability and concluded that Google’s copying was fair use because it satisfied all four fair-use factors.  The Court affirmed that fair use is a legal question for judicial review based on underlying factual determinations by the jury or other fact finder. 

Background of the Case

In 2010, Oracle sued Google for copying elements of the Java programming language into Android, Google’s operating system for mobile devices.  Specifically, Google designed Android to be familiar to programmers who already were experienced with Java by reusing Java’s API.  The copied Java API makes up a small portion of Android’s code and relies on other code that Google did not copy. 

After a first trial, the district court found that the copied API code was not protected by copyright.  Oracle appealed the trial decision to the Federal Circuit, which reversed the copyrightability determination and remanded the case for a trial on the issue of fair use.  At that second trial, the jury found that Google’s copying was fair use.  The Federal Circuit reversed on appeal, concluding that the Java API is copyrightable and that Google’s copying was not a fair use as a matter of law.  Prior to remand for a third trial, on damages, the Supreme Court agreed to review the Federal Circuit’s determinations as to both copyrightability and fair use.

Decision

The Supreme Court did not address the issue of whether the Java API was copyrightable.  Instead, the Court assumed that the API was copyrightable and addressed whether Google’s copying of the Java API was fair use.

The Court held that the ultimate question of fair use is a legal question to be decided by a court, not a jury.  However, courts should defer to a jury’s findings of underlying facts in making that decision.  Because fair use is a legal question, it should be reviewed de novo on appeal, meaning that the appellate court does not defer to the district court judge’s conclusion. 

The Supreme Court held that Google’s copying of the Java API constituted fair use. The Court considered the four factors appearing in the Copyright Act’s fair use provision: (1) the purpose and character of the use; (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.  First, the nature of the Java API favored fair use because the portion of the API code that Google copied is more functional than creative, and is significantly different from the underlying code, which Google did not copy.  The Court explained that the API code is further from the “core” of copyright than the underlying code.  Second, Google’s limited copying of the API was a transformative use.  Google copied only what was needed to allow programmers to work in a new computing environment without discarding a portion of a familiar programming language.  Third, although Google copied virtually all the API code, that code constituted only 0.4 percent of the entire Java code at issue.  Fourth, the Court held that Google’s Android smartphone operating system is not a market substitute for Oracle’s Java programming language.  The Court also held that enforcing Oracle’s copyright would risk harming public creativity.  

The Court concluded that Google’s copying of Oracle’s Java API allowed users to put their accrued talents to work in a new and transformative program, and constituted fair use as a matter of law.  In reaching that result, the Court did not expressly overturn or modify its earlier cases involving fair use.  Justice Thomas was joined by Justice Alito in dissenting.  The dissent contended that the Copyright Act’s statutory definition of computer program covered the copied API code.  Thus, the dissent argued, 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 favor Oracle.  In support of an absence of fair use, the dissent noted that (i) Google’s copying decimated Oracle’s market and interfered with Oracle’s licensing opportunities, (ii) Google’s purpose for copying was overwhelmingly commercial, and (iii) the substantial copying is what attracted programmers to the Android platform.

Takeaways

With the Supreme Court concluding that all four statutory factors weighed in favor of fair use, the Supreme Court’s decision is likely to be cited as supporting the conclusion that copying a software API is fair use in many circumstances, particularly when it is copied for functional reasons.