Google’s use of Declaring Code and SSO of 37 Java API packages was not fair as a matter of law

  1. In Oracle v. Google, the Court of Appeals for the Federal Circuit reversed the district court’s denial of Oracle’s motions for JMOL
  2. Google’s use of Declaring Code and SSO of 37 Java API packages was not fair as a matter of law
  3. The case is now remanded for a trial on damages and Oracle is seeking more than $8 billion

On March 27, 2018, the Court of Appeals for the Federal Circuit decided Oracle America, Inc., v. Google LLC. This is an appeal from the district court’s final judgment after jury trial. The district court had denied Oracle’s motions for JMOL. The Federal Circuit reversed that decision and remanded for a trial on damages.

Here are the ten things you should know about the decision.

1. What Oracle Copyrighted?

Oracle copyrighted Declaring Code and the structure, sequence, and organization (“SSO”) of Java API packages. In the 2014 appeal, the Federal Circuit held these to be entitled to copyright protection. Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1348 (Fed. Cir. 2014).

2. What Is Declaring Code and SSO?

The “declaring code” calls out the implementation code to be executed; that is to say, the functional code to be implemented and the inputs and the outputs to that functional code. The SSO are the structure, sequence, and organization of Oracle’s Java API packages.

3. What Did Google Do To Infringe?

Google copied Oracle’s Declaring Code and SSO for the 37 API packages verbatim to allow interoperability of Android with Java programming. In the 2018 appeal, the Federal Circuit held this conduct amounted to copyright infringement.

4. Why did the Federal Circuit Hear a Copyright Case?

The Federal Circuit heard this copyright case because the case originally also included charges of patent infringement and the Federal Circuit has exclusive jurisdiction over all appeals in actions involving patent claims, including where, as here, an appeal raises only non-patent issues. 28 U.S.C. § 1295(a)(1).

5. Why did the Federal Circuit Decide a Question of Law Here When the Ninth Circuit Court of Appeals Refused to Do So in Blurred Lines?

The attorneys filed a motion for JMOL in Oracle v. Google, which allowed the Federal Circuit to decide the question of law. In “Blurred Lines,” no JMOL motion was filed and so the Ninth Circuit could not go there. See “Blurred Lines” Copyright Infringement, Marvin Gaye, Patent Preemption and a New Frontier in Copyright Litigation.

6. Why Did The Federal Circuit Allow The Case To Go To Jury In Its 2014 Decision Only To Set Aside The Jury Verdict In The 2018 Decision?

In the 2014 decision, the Federal Circuit remanded the case back to the lower court to determine whether Google’s copying of Declaring Code and the SSO of Java API packages for Android amounted to a fair use because the factual record was not developed on this issue. In the 2018 decision, those facts were no longer in dispute and so the Federal Circuit could and did rule on the legal question.

7. Why did the Federal Circuit Find Google’s Use To Be Not Fair?

The “fair use” determination turns on four factors – namely: (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. In balance, the Federal Circuit found Google’s use to be not fair based on the first factor, Google’s use of the APIs was, in fact, not transformative, and on the fourth factor, Google’s android software resulted in “a substantially adverse impact on the potential market for the original [Java]” and its derivatives. Op. at 53.

8. Is Google Likely to Appeal?

It is possible that Google may appeal and still be heard by an en banc panel or even the U.S. Supreme Court. But history is not on Google’s side since the U.S. Supreme Court denied a petition for certiorari in the 2014 Federal Circuit decision. In addition, it is highly unlikely that the 2018 Federal Circuit raises issues that would require further appellate intervention.

9. Next Step?

The Federal Circuit reversed the district court’s decisions and remanded for new trial on damages. The new challenge for Google may now be how to contain damages on a technology that is core to Android. Oracle is seeking more than $8 billion in damages.

10. Why Was Google Able to Keep This Case Going for So Long?

Google was first called to answer to charges of copyright infringement in 2010. The first jury had no problem finding Google to have infringed the Oracle copyrights but couldn’t decide the fair use question. Throughout this litigation, many rulings of Judge Alsup have favored Google including (1) declaring, after the first jury trial, that Oracle’s code is not copyrightable as a matter of law, (2) issuing jury instructions in the second trial that sharply restricted the cerebrations of the jury on the issue of “fair use”, and (3) refusing to set aside the second jury finding of “fair use” as a matter of law. All of these rulings were set aside by the Federal Circuit in its 2014 and 2018 decisions.


In our 2014 blog on the Federal Circuit’s 2014 decision, we observed that the likelihood of Google prevailing on the “fair use” question was diminishing. We questioned the wisdom of Google’s continued fight to try to justify verbatim copying of copyrighted code of Oracle into their hugely successful Android product as a fair use.

These observations have been validated by the Federal Circuit’s 2018 decision. The 2018 decision should be a wake-up call to Google that, as we posited in 2014, focusing resources on containing the damages part of their case might be a better return on their litigation investment.

For more see Law of Diminishing Returns Hits Google: Oracle v. Google

About The Juhasz Law Firm

About Paul R. Juhasz