Ed. NoteThis is the second in a series of WLF Legal Pulse posts on the U.S. Supreme Court’s Google v. Oracle decision.

Elizabeth Rogers Brannen is Managing Partner of Stris & Maher LLP practicing in the firm’s Los Angeles, CA and Tallahassee, FL offices. She also leads the firm’s intellectual property litigation practice.

On April 5, 2021, the long-awaited U.S. Supreme Court decision in the Google v. Oracle copyright case dealt a blow to copyright protection for software. The Court held (6-2, with Justice Amy Coney Barrett taking no part) that even assuming Oracle’s Java application programming interfaces (“APIs”) were copyrightable, Google’s copying was permissible fair use.

By declining to address copyrightability, the decision offers more questions than answers. It leaves companies and individuals who may be considering devoting the substantial resources necessary to develop software uncertain about the extent to which they can count on meaningful copyright protection. That is not supposed to be the case; after all, Congress carefully considered the issue and granted copyright protection to computer programs—including interfaces.

What’s more, the answers the decision does appear to provide are bad policy. In the course of excusing Google’s copying of over 11,000 lines of Java source code as fair use, the Court essentially penalized Oracle for the popularity of its expression. It also departed from traditional fair use analysis and transformed the concept of transformational use—at least in the software context and possibly more broadly. The resulting incentives are the opposite of what copyright is supposed to promote.

The Court granted review of two questions: (1) is the Java code that Google copied copyrightable? and (2) if so, was Google’s copying nevertheless a permissible fair use of that material? The Court declined to consider the first question, citing “rapidly changing technological, economic, and business-related circumstances.” With respect to fair use, as a preliminary matter the Court held that the question is a mixed question of fact and law in which courts should defer to the jury’s findings of underlying facts, but decide the ultimate question of whether those facts amount to a fair use de novo as a legal question. After cautioning that copyright “should not grant anyone more economic power than is necessary to achieve the inventive to create,” the Court discussed each of the four statutory fair use factors set forth in 17 U.S.C. § 107: (1) the nature of the copyrighted work, (2) the purpose and character of the use, (3) amount and substantiality of portion used, and (4) market effects.

Nature of the copyrighted work. The Court found that this factor favored fair use because the code Google copied provided a “user interface.” By that it meant “a way through which users (here the programmers) can manipulate and control task-performing computer programs via a series of menu commands.” The Court distinguished this from “implementing code,” which Google largely did not copy, and “which actually instructs the computer on the steps to follow” to carry out tasks.

The Court placed significance upon this line between user interfaces and other kinds of code—a line Congress never drew. It did so even though creative expression arguably matters more for code with which users interact. And it did so despite (and without acknowledging) the contributions of amici who joined Oracle in pointing out that the notion of a “software interface” is at best amorphous. The brief of renowned Professor and Former CONTU Member Arthur R. Miller, for example, had observed: “Nor does calling the copied material an ‘interface’ aid in the line-drawing exercise. Though that term may seem precise * * * it really has no specific meaning in programming.” At least in this case, the Court found the line clear and believed that the value of the copied code stemmed, in significant part, from the time and effort programmers (i.e., not the copyright-holder) spent to learn the system. Perhaps the decision of Sun Microsystems (the company that created Java, which Oracle acquired in 2010) to make the Java APIs open contributed implicitly to the fair use finding on this factor. At minimum, because of certain statements and testimony by former Sun Microsystems executives, there was arguable confusion about whether the company had intended to make the APIs, like the Java language itself, available to use without a license. In any event, the Court distinguished the interfaces in question from other code, writing that what Google copied “is, if copyrightable at all, further than are most computer programs (such as implementing code) from the core of copyright.” This distinction may prove important in future cases, particularly where an accused infringer copies more. But we can also expect accused infringers going forward to make every effort to characterize what they have copied as merely an “interface.”

Purpose and character of the use. The Court held that Google’s use of the 37 Java APIs it copied was transformative. This finding is noteworthy because to qualify as transformative, use traditionally has to change the nature of the original expression. The use here would not qualify as traditionally transformative because Google didn’t change the APIs. It incorporated them into an alternative operating system. Nevertheless, the Court found Google’s use transformative because Google used the APIs to create a new platform, Android, that could readily be used by programmers to create new programs. “Reimplementing” the API, the Court found, furthered the use of the Java programming language and the development of computer programs, which is the kind of progress that is the “basic constitutional objective of copyright itself.”

The Court’s reasoning could reduce the incentive to create and improve user interfaces, and the incentive to make them available on open licensing terms. There must, of course, be some reason for others to take a license rather than simply copy and freely use software without compensating the creator. Trade secret protection alone cannot suffice, because at least portions of many programs cannot be kept secret. And the law should encourage broad disclosure, not secrecy. Patent protection alone cannot suffice, because many computer programs, including interfaces, are worth incentivizing even though nothing about them is innovative enough to qualify for patenting. Robust copyright protection is therefore critically important. As the amicus brief of Professor Eugene H. Spafford, Ph.D. and other software engineering professors had explained, Google could have taken a license to Java but chose instead to copy:

Amici agree that there is a potential public benefit in the open use of some, though not all, software interfaces, such as furthering interoperability. There are channels available for such use that do not violate copyright law. Consistent with those channels, Oracle offered three different types of licenses for Java. Yet Google did not take a license, and despite its copying did not make its Android platform interoperable with Java.

Amount and substantiality of portion used. In this analysis, the Court looked beyond the number of lines and took into account that Google did not copy several million lines of implementing code. The Court focused its assessment on the purpose for Google’s copying, finding that the substantiality factor favored fair use because Google’s copying was tethered to a valid and transformative purpose:

Google copied those lines not because of their creativity, their beauty, or even (in a sense) because of their purpose. It copied them because programmers had already learned to work with the Sun Java API’s system, and it would have been difficult, perhaps prohibitively so, to attract programmers to build its Android smartphone system without them. Further, Google’s basic purpose was to create a different task-related system for a different computing environment (smartphones) and to create a platform—the Android platform—that would help achieve and popularize that objective.

This analysis characterized Google’s objective as “permit[ting] programmers to make use of their knowledge and experience using the Sun Java API when they wrote new programs.”

Market effects. For this factor, the Court considered whether Oracle’s predecessor, Sun Microsystems, was well positioned to succeed in the mobile phone market. Although Oracle argued that Google copied to directly compete with Java SE, the Court rejected that premise and found that the jury could have understood Android and Java SE as operating in two distinct markets. The Court’s analysis on this point is critically important because it distinguishes future cases in which one competitor copies another’s work for purposes of creating a replacement.

The Dissent

Justice Thomas, joined by Justice Alito, dissented. The dissenting opinion criticized the Court for “wrongly sidestep[ping]” the principal question it was asked to answer (copyrightability). With respect to fair use, Justice Thomas pointed out that the majority’s discussion of “transformative use” represents a significant departure from previous cases.

What comes next?

One important question is whether courts will treat copying to create a competing commercial product differently. They should. If copyright law is to strike a healthy balance that incentivizes the creation of new works, interfaces, like other computer programs, must receive meaningful protection and cases in which a defendant copies for the purpose of taking a commercial short-cut to introduce a competing product cannot be excused as fair.

Another important question is how much of the Court’s reasoning is constrained to the software context. While some would limit the decision due to software’s functional nature and hope that other literary works continue to receive greater protection, much of the Court’s reasoning could apply more broadly. Those seeking to expand fair use in other contexts will certainly try. For example, in the wake of the Supreme Court’s decision, the Andy Warhol Foundation has asked the full Second Circuit to rehear the case in which a panel recently ruled that Warhol’s copying of an image of the musical artist Prince, which Warhol used to create a series of stylized silkscreen prints and pencil illustrations in 1984, was not fair use as a matter of law. The Second Circuit has ordered additional briefing to address the impact, if any, of the Google v. Oracle decision on the appropriate disposition of that appeal. The briefing will be completed in May.

Stay tuned.