Google’s Copying of APIs Held Transformative and Fair Use

Intellectual Property Law

In Google LLC v. Oracle America Inc.,1 the Supreme Court, in a 6–2 decision2 written by Justice Breyer, held that Google’s copying of Oracle’s Java application programming interface (API) naming convention was a fair use as a matter of law. The Court concluded that Google made a “transformative use” of the software and had only used a relatively small amount of it.

Oracle’s Java APIs (created by Sun Microsystems, which was later purchased by Oracle) comprised set packages of Java software so programmers could easily access frequently used functions instead of rewriting them each time. Google copied 37 of the API packages. The Court concluded that Google thought Java application programmers would want to use the same 37 sets of functionalities in the new Android operating system using the same names as used in Java. Google then copied the declaring source code from the 37 Java API packages, including all the names of methods, classes, interfaces and packages covering the 37 API packages, with over 600 classes and 6,000 methods. Google inserted that source code into its Android software.

The Court noted:

Copyright and patents, the Constitution says, are to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Art. I, § 8, cl. 8. Copyright statutes and case law have made clear that copyright has practical objectives. It grants an author an exclusive right to produce his work (sometimes for a hundred years or more), not as a special reward, but in order to encourage the production of works that others might reproduce more cheaply.3

The Court reasoned that the “fair use” doctrine “permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.”4 The statutory provision of fair use states the following:

[T]he fair use of a copyrighted work, … for purposes such as criticism, comment, news reporting, teaching … 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. § 107.5

The Court indicated that determining fair use is a mixed fact/legal question. The Court remarked that the Federal Circuit correctly left the factual determinations to the jury and reviewed the ultimate question of fair use, a legal question, de novo. The Court explained the issue as follows:

The question here is whether those 11,500 lines of code should be viewed in isolation or as one part of the considerably greater whole. We have said that even a small amount of copying may fall outside of the scope of fair use where the excerpt copied consists of the “ ‘heart’ ” of the original work’s creative expression. … On the other hand, copying a larger amount of material can fall within the scope of fair use where the material copied captures little of the material’s creative expression or is central to a copier’s valid purpose.6

The Court also explained:

Several features of Google’s copying suggest that the better way to look at the numbers is to take into account the several million lines that Google did not copy. For one thing, the Sun Java API is inseparably bound to those task-implementing lines. Its purpose is to call them up. For another, 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. … The “substantiality” factor will generally weigh in favor of fair use where, as here, the amount of copying was tethered to a valid, and transformative, purpose.7

The Court concluded that Google employed a valid fair use when it used Oracle’s Java source code in its Android operating system because Google used “only what was needed to allow users to put their accrued talents to work in a new and transformative program.”8 The Court appeared to emphasize the functional nature of Oracle’s copyrighted code, writing that the declaring code was “inherently bound together with uncopyrightable ideas,” requiring other companies to use it.9

We reach the conclusion that in this case, where Google reimplemented a user interface, taking only what was needed to allow users to put their accrued talents to work in a new and transformative program, Google’s copying of the Sun Java API was a fair use of that material as a matter of law.10

Therefore, the Court reversed the Federal Circuit’s decision and remanded the case for further proceedings in conformity with its opinion.

Justice Thomas, joined by Justice Alito, dissented and argued that the majority opinion “disregards half the relevant statutory text and distorts its fair-use analysis. … Oracle’s code at issue here is copyrightable, and Google’s use of that copyrighted code was anything but fair.”11

Key Takeaways:

The Court continues to limit or erode the reach of intellectual property (IP) protections for inventions, seeming to be overly biased in favor of competition at the potential cost of discouraging or limiting innovation. Justice Breyer arguably oversimplified/limited the purposes of the copyright clause of the Constitution by reasoning that the clause’s only purpose is to aid the progress of the arts, which would exclude any reward for the creator/owner. However, the backdrop of the Constitutional Convention does not provide such a limiting view, and with no recorded debate during the convention this clause of the Constitution, such a simplified interpretation is not necessary and weakens long-standing intellectual property protections.

In fact, Justice Breyer, being a member of the liberal group of the Court, should be the last person to limit constitutional rights/provisions to the specific text. Limiting the reward to a creator/owner can discourage disclosure of information, encourage maintaining information as trade secret, and inhibit the progress of science and the arts. This more limiting view of IP protection appears to be taking hold in the Court, putting creators/owners of intellectual property on notice that a full intellectual property protection strategy should be considered/employed.

Given the Court’s overall attitude today in favor of limiting IP protections, a company should actively manage and audit its IP assets carefully. Companies that strategically manage their IP assets are likely to enjoy greater success than those that fail to appreciate the value of IP.

Focused strategic management of IP assets in light of the Court’s ruling also represents an opportunity to maximize investor/shareholder value while minimizing the risks presented by the Court’s decision. An IP audit can enable a company to develop an effective IP strategy. An IP audit synchronizes a number of parties within a company, such as legal counsel, research and development, and marketing. The main goal is to identify valuable IP assets and develop an effective strategy that suitably reflects company objectives and priorities.

Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law. Irah was also a software developer and former Member of Technical Staff at Bell Communications Research (Bellcore).

1 Google LLC v. Oracle America Inc., 141 S.Ct. 1183, 2021 USPQ2d 391 (2021).

2 Justice Barrett took no part in the consideration or decision of the case.

3 Id., 141 S.Ct. at 1195.

4 Id., 141 S.Ct. at 1196 (quoting Stewart v. Abend, 495 U.S. 207, 236, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990) (internal quotation marks omitted)).

5 Id., 141 S.Ct. at 1196-97 (quoting 17 U.S.C. § 107).

6 Id., 141 S.Ct. at 1205.

7 Id., 141 S.Ct. at 1205.

8 Id., 141 S.Ct. at 1209.

9 Id., 141 S.Ct. at 1202.

10 Id., 141 S.Ct. at 1209.

11 Id., 141 S.Ct. at 1211 (Thomas, C., dissenting).



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