Google Wins Big Before Supreme Court – Java APIs Ruled To Be Keys For Unlocking Transformative Uses
Key Takeaways
- The words “key” and “transformative use of the key” are the operative words in the Google decision.
- Java is the key to downstream coding and Google’s use of that key was transformative.
- If a copyright – not just Java API or another API – holds the key to a downstream transformative use, it may also very well be likewise limited in copyright protection.
- Don’t take battle of experts at trial for granted. Testimony on new market or extension may demonstrate the existence or absence of a transformative use which may make or break your case.
On April 5, 2021, the Supreme Court decided Google LLC, Petitioner v. Oracle America, Inc. Supreme Court Docket No. 18-956. For a primer on history of the case and what is at issue now, see prior blog: Ten Things to Know. The Supreme Court found Google’s copying of the Java SE API to be transformative based on the balance of four factors determining copyright fair use.
The Court did not decide whether the Java APIs were copyrightable which were assumed to be true in the Court’s decision on fair use.
Important in the Court’s analysis was that Google copied the declaration code only. No implementation code was copied. The declaration code merely “labels” the particular tasks or methods into packages and classes not unlike file cabinets, drawers, and files.” Op. 22. It is not the “engine” that the implementation code provides by its step-by-step instructions that make the particular tasks or methods called out by the declaration code label run. The Court gave great weight to the evidence that 100 Google engineers worked for more than three years to create the implementation code of Google’s Android platform software. Op. 3
Having framed the declaration code as mere labels and the implementation code as the engine, the Court applied the four factors each of which the Court found tilted in Google’s favor.
On the “nature” of the copyrighted work, the Court seems to be saying that, if an expression is farther from the core of a copyright because like here the Java code is inherently bundled together with uncopyrightable ideas (general task division and organization) and new creative expression (Android’s implementing code), then that points the “nature” of the copyrighted work factor in favor of the unauthorized copier, namely Google here. Op. 24.
In this perhaps weakest part of the Court’s analysis, the Court may be saying that the farther an expression is from the core of the copyright, the more the factor tilts away from the copyright holder. Here, the expression of the Java code was far removed from the core of the copyright and so there was little tilt toward the copyright holder of this factor.
On the “purpose and character” of the copyrighted work, the Court found that Google copied portions of the Java API for the same reason as Sun, “to enable programmers to call up implementing programs that would accomplish particular tasks.” Op. 25. Despite the wholesale copying, the Court said that doesn’t matter where as here Google did not stop there but used the Java API to create new products. Id.
As explained by the Court, even if you are using the copyright for the same reason as the copyright holder, if in making use of that outright copyrighting you create a new collection of tasks operating in a distinct and different environment carried out by the non-copied implementation code, then that transforms Google’s use to the point that that the purpose and character factor weighs in favor of fair use. Op. 26. In so holding, the Court found persuasive the testimony of Google’s economic expert at the trial who explained that Sun and Google products are on very different devices. Op. 32. “Rather than just “repurposing [Sun’s] code from larger computers to smaller computers, . . . Google’s Android platform was part of a distinct (and more advanced) market than Java software.” Id. So on this factor, the Court found Google created a distinct (and more advance) market for a copyrighted work, and that transformed the unauthorized copying into one authorized as fair use.
The Court found the “substantiality” factor tilted in favor of Google because the amount of copying was tethered to a valid, and transformative, purpose. Op. 29. The copied declaring code was but the key to unlocking the programmers’ creative energies. The creative energies of the programmers flowed from the implementation code and so amount and substantiality factor favored Google. Op. 30.
On the “market effects” factor, the Court found relevant in this case – but not necessarily in all cases – the public benefits produced by the copying. Here, in balance, the public benefits outweighed the losses to the copyright holder under this factor. Op. 31. As the Court explained, Oracle is not entitled to the money made by Google from copying Java because while at first the value in the new interface provided by Java was attraction of new users because of its expressive qualities, such as a better visual screen or superior functionality, over time, it had value for a different reason, to wit, users were used to working with it; which is why Google wanted to use it. Google’s profitability has less to do with Sun’s investment in creating Java API than in the programmer’s investment in Sun Java programs. Op. 34. According to the Court, “We have no reason to believe that the Copyright Act seeks to protect third parties’ investment in learning how to operate a created work.” Op. 34
As the Court explained, enforcing Oracle’s copyright claim would risk harm to the public by creating a lock on the Java API and its use in future creativity of new programs and that interferes with, not furthers, copyright’s basic objectives. Op. 34.
Where, as here, 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. The Federal Circuit’s contrary judgment was thus reversed,
Public benefits notwithstanding, here the Java code may not seem so much like the Google snippets in Authors Guild that create efficient e-index cards for users to efficiently locate references where the Southern District of New York found fair use. But it does appear that the Supreme Court may be treating Java Code like Google snippets. After all, the declaring code of Java code arguably provides e-index cards for programmers to efficiently invoke downstream functions and in that sense may be analogous to the Google snippets in Authors Guild.
In short, in Google, the Supreme Court limited copyright protection available to the Java API under the Copyright laws because the API holds the key to transformative downstream coding. It is fair for the key to be used to unlock transformative coding (i.e., the Java implementation code) since that use releases the creative energies of programmers. To restrict the lock is an attempt to monopolize the market by making it impossible for others to compete and that runs counter to the statutory purpose of promoting creative expression. Op. 34.
The two operative words that stand out from the Google decision are the words “key” and “transformative use of the key.”
The first significant take-away from the Google decision hinges on the term “key.” That appears to be that the decision is not limited to Java API or APIs. Indeed, any copyright that holds the key to a downstream transformative use may very well be likewise limited in copyright protection. The second significant take-away hinges on the term “transformative use of the key.” And that appears to be that if the evidence shows the use of the copyright to create a new market that is distinct and different environment from the market served by the copyright, that use may very well be transformative.
It is perhaps Oracle’s failure in the battle of the experts at the trial level that cost them the win, since both the jury and the Court appeared to be heavily persuaded by testimony of Google experts on the new market created by Google over the testimony of the Oracle experts on Google’s use being an extension of the Java market.
As the decision in Google makes abundantly clear, in a copyright case, the testimony at trial on the use of the copyright to create a new market or extend the market of the copyright may make or break your case.
The copyright Samuel Morse held in the language of dots and dashes of Morse Code that he created back in the 1830s would surely have failed to be protected copyright under the Google decision, since it held the key to downstream transformative communication uses, not unlike the Java API of the Google decision held the key to transformative downstream programming uses.
But as uses of the Mickey Mouse copyrights serve to extend the Mickey Mouse market for the Disney Company, the copyrights the House of Disney hold in Mickey Mouse appear to be safe; at least for so long as the copyrights do not expire.