Justices need to hear Oracle v Google

In recent weeks, the U.S. Supreme Court has handed down two copyright rulings -- one addressed the timing of Copyright Office action on an application to register a work as compared to filing a complaint for the work's infringement, the other the extent of recoverable costs to a victorious litigant. Though undoubtedly of high interest to their particular parties, neither ruling exerts much impact on the field as a whole.

By contrast, a matter of blockbuster significance is the subject of a current petition for certiorari. The case is Oracle v. Google. We submitted a brief as amici curiae supporting that petition out of the strong conviction that review is vitally necessary of the U.S. Court of Appeals for the Federal Circuit's wrong-headed decisions in this case.

This essay addresses the substantive defects of those rulings. Our follow-up article will tackle the unanticipated fork in federal appellate jurisdiction from the Federal Circuit's arrogation to itself of a decisive role in adjudicating copyright software disputes nationwide.

By various measures -- economic output and growth, employment, international competitiveness, strategic national defense -- the computer software industry is among the most significant in the United States. As the digital revolution continues to unfold, the software industry's importance will only grow. The balance of intellectual property protection for the software industry drives innovation and competition in this critical economic sector.

The issues in Oracle v. Google go to the heart of that industry. Oracle is the current owner of Java, a popular language used to write applications ("apps"') for devices ranging from desktops to smartphones. Oracle's predecessor originally wrote a number of ready-to-use Java programs to perform common computer functions; those "application programming interfaces" ("APIs") thus constitute shortcuts that save others from writing their own code to perform the same function from scratch.

Google copied function labels or calls for 37 of 166 Java API packages to optimize the Android mobile operating system. The Android operating system afforded partial interoperability with the large installed base of Java users while offering new functionality (such as user's location and preferences) all within the constrained design parameters of mobile devices (such as battery limitations, less memory than a desktop computer or server, and slower CPU speed). Google wrote its own implementations for the functions in the Java API that were key to mobile devices. Judge William Alsup in the Northern District of California determined that "Google believed Java application programmers would want to find the same thirty-seven sets of functionalities in the new Android system callable by the same names as used in Java." He invoked foundational copyright doctrine to rule in Google's favor.

But the Federal Circuit reversed and remanded the case for trial on the basis that Google had copied verbatim the declarations necessary to interoperate with the 37 APIs. On remand, a jury ruled in Google's favor based on fair use. On the second appeal, the Federal Circuit reversed again. Both of those rulings in favor of Oracle are the subject of the current petition for certiorari.

Baker v. Selden, 101 U.S. 99 (1879), established the structural foundation for the U.S. intellectual property system. Accountant Selden devised a condensed ledger bookkeeping system for government accounting. After some initial success, Selden's enterprise foundered. In 1867, a competitor released a similar accounting system with some advantages that made it easier to use. By 1871, Baker's rival system was in wide use while Selden's languished.

In its seminal ruling, the Supreme Court ruled that copyright could not extend to the "art" or methods described in the work. "To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of copyright." Justice Joseph Bradley thereupon established a fundamental principle for channeling protection among the intellectual property regimes.

The Federal Circuit's decisions directly conflict with Baker v. Selden. By affording Oracle exclusive rights to not just the implementing code for Java API elements but also the declarations that are necessary to call those methods, the Federal Circuit has protected the computer system's functionality through copyright law. That determination contradicts the essential basis on which Congress afforded protection to computer software: "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." 17 U.S.C. Section 102(b). As the legislative history makes plain, "Some concern has been expressed lest copyright in computer programs should extend protection to the methodology or processes adopted by the programmer, rather than merely to the "writing" expressing his ideas. 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." H.R. Rep. No. 94-1476, at 57 (1976). Congress' special Commission on software embroidered on those thoughts: "[O]ne is always free to make a machine perform any conceivable process (in the absence of a patent) [so long as one does not] take another's program."

Google was entitled to make a mobile device ("a machine") perform the same functions as a Java API package (a "conceivable process") with independently developed implementation code (i.e., not "another's program"). Each Java API package constituted a particular subsystem within a larger particular computing environment. Hence, Google was justified in selecting a set of Java API packages and implementing them with original code to create a new machine. See Peter S. Menell, "Rise of the API Copyright Dead?" 31 HARV. J.L. & TECH. 305, 433-52 (2018).

The above represents the major defect in the Federal Circuit's approach. But its other appellate resolution is also problematic. In evaluating the judgment below in favor of fair use (ratifying the jury verdict), the appellate court's job was to evaluate the usage at bar in the context of copyright law's four factors for determining fair use. 17 U.S.C. Section 107. In contrast, it reversed without giving any weight to the second factor ("nature of the copyrighted work").

That stance misapplies governing law in the 9th Circuit, which the Federal Circuit was bound to apply. Indeed, Google v. Oracle's only citations under this factor to 9th Circuit cases were to litigation brought by Dr. Seuss and Mattel concerning children's doggerel and Barbie dolls. Yet, when complex computer software is at issue, the 9th Circuit departs markedly from that stance applicable to juvenile works. Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524-27 (9th Cir. 1993), extensively discusses the second fair use factor and its connection to Baker v. Selden and Section 102(b). Sony Comput. Entm't, Inc. v. Connectix Corp., 203 F.3d 596, 602-05 (9th Cir. 2000), leads its discussion of fair use with the second fair use factor, affording it great significance. The problem here is that the Federal Circuit has evaded its obligation to follow the copyright rulings of the regional circuit from which the case arose. We elaborate on that defect in our forthcoming installment.

This commentary is based on the authors' Google v. Oracle amicus certiorari stage brief, which is available here