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Google v. Oracle: Implications for Fair Use
Doctrine, Developing, Copying and Licensing
Software API
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TUESDAY, JUNE 15, 2021
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Paul H. Arne, Partner, Morris Manning & Martin, LLP, Atlanta
David H. Herrington, Partner, Cleary Gottlieb Steen & Hamilton LLP, New York
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Google v. Oracle: Implications for Fair Use Doctrine, Developing, Copying and Licensing
Software API
Paul H. ArneMorris, Manning & Martin, L.L.P.
parne@mmmlaw.com
David H. HerringtonCleary Gottlieb Steen & Hamilton LLP
dherrington@cgsh.com
Agenda
I Copyright as Applied to Software 3Idea/ ExpressionFair Use
II What is an API? 10
III Google v. Oracle 12
IV Hypotheticals 19
V Conclusions 27
2
Copyright as Applied to Software
3
Copyright Does Not Protect An Idea, Process, System Or Method
Baker v. Selden, 101 U.S. 99 (1879)— Copying grid used for bookkeeping method described in a
book was not copyright infringement because copyright laws protect the specific expression of an idea, not the idea itself.
— “ 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.”
Section 102(b) of the Copyright Act
4
Congress Decides To Extend Copyright Protection To Computer Programs
5
—As part of the work leading to the Copyright Act of 1976, Congress asked: Should copyright extend to computer programs?
—Establishes National Commission on New Technological Uses of Copyrighted Works (“CONTU”) to address the question. CONTU says yes.
—Computer programs “are prepared by the careful fixation of words, phrases, numbers, and other symbols in various media.” CONTU Report at 10.
—“That the word writing in the Constitution has broad and dynamic meaning may be seen in the nature of works that have been found constitutionally copyrightable.” Id. at 14
—“[S]ome form of protection is necessary to encourage the creation and broad distribution of computer programs in a competitive market.” Id. at 11.
—Copyright Act amended to expressly provide that a “computer program”—which it defines as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result”—can be copyrighted. 17 U.S.C. § 101.
5
Tension Because Computer Programs Are Inherently Functional
6
“Section 102(b) is intended, among other things, to make clear that the expression adopted by the programmer is the copyrightable element in a computer program, and that the actual processes or methods embodied in the program are not within the scope of the copyright law.” CONTU Report at 19.
“The way copyright affects games and game-playing is closely analogous: one may not adopt and republish or redistribute copyrighted game rules, but the copyright owner has no power to prevent others from playing the game.” Id. at 20. Further, “copyright leads to the result that anyone is free to make a computer carry out any unpatented process, but not to misappropriate another’s writing to do so.” Id.
“The fact that computer programs are primarily functional makes it difficult to apply traditional copyright concepts.” Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1208 (2021).
“[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.”
FAIR USE, § 107
7
Fair Use: Factors
[T]HE FACTORS TO BE CONSIDERED SHALL INCLUDE:
the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;1
the nature of the copyrighted work [“transformative use”];2
the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and3
the effect of the use upon the potential market for or value of the copyrighted work.4
8
“[E]very commercial use of copyrighted material is presumptively an unfair
exploitation of the monopoly privilege that belongs to the owner of the
copyright.”
COMMERCIAL USE
Sony Corp. v. Universal City Studios, Inc., 646 U.S. 417, 451 (1984).
9
What’s an API?
10
APIK LNameLocationCommandsCommand OptionsSyntax of InputsSyntax of Outputs
10
Google v. Oracle
1111
— Java SE is a popular open-source programming platform.
— Google’s Android platform supports applications written in Oracle’s Java programming language.
Google v. Oracle: Facts
12
3%
97%
When Google set out to design its Android operating system for smartphones, it initially sought to license Java SE from Sun, including the Sun Java API. But these negotiations fell apart, and Google ultimately developed its own platform, which would be compatible with legacy Java applications.
To achieve interoperability, Google copied ~11,500 lines of code, comprising 37 Java shorthand commands (APIs), replicating the structure, names and functions (3% of the code), but independently re-implementing the methods (97% of the code).
Declaring CodeNot Copied
In 2010, Oracle America, Inc. (“Oracle”) purchased ownership rights to Java and brought suit against Google claiming Google infringed its copyright by copying the “structure, sequence and organization” of the API packages.
12
Google v. Oracle: Case History
13
Found APIs uncopyrightable under Section 102(b) as a “system or method of operation,” relying heavily on Lotus v. Borland (menu commands are uncopyrightable methods, even if the organization of the menus incorporate some expression).
DISTRICT COURT
2012
Reversed and held that (1) Copyright is “a low bar” that only requires a work be original and expressive in the sense that “the author had multiple ways to express the underlying idea” and (2) Section 102(b) does not extinguish protection “merely because [an] expression is embodied in a method of operation.”
FEDERAL CIRCUIT
2014
Jury found that Google’s use of declaring code qualified as fair use.DISTRICT
COURT2016
Reversed and held that “[t]here is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.”
FEDERAL CIRCUIT
2018
13
Google v. Oracle: Issue
14
Supreme Court granted cert to consider (1) whether copyright extends to APIs and (2) whether Google’s use was a fair use.
SUPREME COURT
2019
AMICI
FOR
— Microsoft— IBM and Red Hat— Mozilla
FOR
— Motion Picture Association— Recording Industry Association
of America— Dolby Laboratories
— Solicitor General supports Oracle
Google v. Oracle: Decision
Copyrightability question unresolved — Given the rapidly changing technological, economic, and
business-related circumstances, we believe we should not answer more than is necessary to resolve the parties’ dispute. We shall assume, but purely for argument’s sake, that the entire Sun Java API falls within the definition of that which can be copyrighted.
Disappointment for those eagerly awaiting a ruling setting out the standards for assessing whether particular forms of software qualify for copyright protection—and in particular an answer to the question of whether APIs are entitled to protection.
15
Google v. Oracle: Decision (cont’d.)
6-2 majority ruledin favor of fair use
— “[Fair use] can help to distinguish among technologies. It can distinguish between expressive and functional features of computer code where those features are mixed. It can focus on the legitimate need to provide incentives to produce copyrighted material while examining the extent to which yet further protection creates unrelated or illegitimate harms in other markets or to the development of other products. In a word, it can carry out its basic purpose of providing a context-based check that can help to keep a copyright monopoly within its lawful bounds.”
16
Google v. Oracle: Decision (cont’d.)
17
Fair use is ultimately a legal question
Fair use factors:— Purpose and character of the use: APIs/ declaring code distinct from other computer programs because is inherently bound together with uncopyrightable ideas (general task division and organization) and new creative expression (Android’s implementing code),” and “its value lies in its efforts to encourage programmers to learn and to use that system so that they will use (and continue to use) Sun-related implementing programs that Google did not copy.”
— Nature of the copyrighted work: Google copied no more than the necessary portions of the Sun Java API in order to “create a new platform,” the Android platform, which is consistent with the “creative ‘progress’ that is the basic constitutional objective of copyright itself.”
— Amount and substantiality of the portion used: the 11,500 lines that were copied amounted to only 0.4 percent of the total code in the Sun Java API
— Effect on the potential market or value: minimal because markets for smartphones and computers are different and value derived from new users being attracted to a program because of its expressive qualities is distinguishable from a program this is valuable because users are accustomed to it.
Fair use factors:
17
18
Two EHR systems can’t talk to each other. One EHR provider uses API of the other EHR provider to create
software to software connection.
HYPOTHETICAL #1
EHR Connection
19
“Copyright on largely functional elements of software that [have]
become an industry standard gives a copyright holder anti-competitive power”
HYPOTHETICAL #1
Quoting Amici Curiae 7
20
“Google copied … them because programmers had already learned
to work with the Sun Java API’s system….”
HYPOTHETICAL #1
21
“We have no reason to believe that the Copyright Act seeks to protect third
parties’ [programmer’s] investment in learning how to operate a created work.”
HYPOTHETICAL #1
22
“Linking a GPL covered work statically or dynamically with other modules is making a combined work based on the
GPL covered work. Thus, the terms and conditions of the GNU General Public License cover the whole combination.”
HYPOTHETICAL #2
Scope of OSS
23
FinTech Startup wants to provide services to customers; needs data
from bank account.
Can FinTech use bank’s APIs without permission?
HYPOTHETICAL #3
Getting Data from Bank
24
Healthcare Technology wants to provide additional information at point of care. Can it use an EHR provider’s API to
determine the program’s state, i.e., when a doctor is meeting with a patient?
HYPOTHETICAL #4
Determining State of Other Software
25
“To the extent that Google used parts of the Sun Java API to create a new
platform that could be readily used by programmers, its use was consistent with that creative ‘progress’ that is the basic constitutional objective
of copyright itself.”
HYPOTHETICAL #4
Conclusions
What happened to idea/expression?
Did Google v. Oracle change the fair use defense?
How has the enforcement of rights in copyright changed?
1426
Idea/Expression Changed?
27
“These limitations, along with the need to ‘fix’ a work in a ‘tangible medium of
expression,’ have often led courts to say, in shorthand form, that, unlike patents,
which protect novel and useful ideas, copyrights protect ‘expression’ but not the ‘ideas’ that lie behind it.”
Did Fair Use Change?
28
“Unlike many other programs, [the API’s] value in significant part derives from the
value that those who do not hold copyrights, namely, computer programmers, invest
of their own time and effort to learn the API’s system.”
Enforcement
29
“[Fair use] might more closely tailor the limits on copyright protection to the reasons for limiting that
protection; but it would entail a host of administrative problems that would cause cost and delay, and would
also reduce the ability of the industry to predict outcomes...
[T]the majority's result persuades me and its formulationis as good, if not better, than any other….”
Alternatives To Copyright for Software
30
Licensing/ contractual protections
Patent
Trade Secret
31
Paul H. ArneMorris, Manning & Martin, L.L.P.3343 Peachtree Rd.1600 Atlanta Financial CenterAtlanta, GA 30326parne@mmmlaw.comwww.mmmlaw.com
[BD to add]David H. HerringtonCleary Gottlieb Steen & Hamilton LLPOne Liberty PlazaNew York, NY 10006dherrington@cgsh.comwww.cgsh.com
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