Yesterday, the U.S. Supreme Court heard oral arguments in Google v. Oracle America-a case that’s been ongoing for more than a decade. Before we delve into the arguments, let’s get up to speed on the background and procedural history of the case.
Phase 1: Are Java APIs Protected by Copyright?
In 2010, Oracle filed a lawsuit in the Northern District of California against Google for patent and copyright infringement based on Google’s unauthorized use of Oracle’s Java API (application programming interface). Google admittedly copied the entire declaring code (over 11,000 lines of code) along with the structure, sequence, and organization of 37 Java API packages to develop a competing product-its Android operating system. Initially, the case focused on whether the Java APIs in question were protected under copyright. In May 2014, the Federal Circuit held that Oracle’s Java APIs are, in fact, copyrightable. Google filed a cert petition requesting review by the Supreme Court, which was denied.
Phase 2: Does Google’s Use of the Java APIs Qualify as Fair Use?
On remand, the case was heard again in the Northern District of California, but this time, the focus was on Google’s claims that its use of Oracle’s code qualifies as fair use. In May 2016, a jury found in favor of Google, holding that its use of Oracle’s Java API was fair use. Oracle filed a motion to challenge the verdict, which the district court denied in June 2016.
Oracle appealed the adverse fair use ruling to the FederalÊCircuit, and Google cross-appealed to preserve the claim that the Java APIs were not copyrightable. In March 2018, in a reversal of the district court’s decision, the Federal Circuit held, as a matter of law, “that Google’s use of the declaring code and [the structure, sequence, and organization] of the 37 API packages was not fair [use].” Specifically, the Court weighed the first and fourth factor heavily in favor of Oracle, the second factor in favor of Google, and weighed the third factor as neutral. The Court also denied Google’s cross appeal regarding the copyrightability of the Java APIs at issue, holding that the Court’s previous 2014 ruling (see Phase 1) resolved that question. The case was remanded for a trial on damages.
In response, Google filed a cert petition with the Supreme Court in January 2019, asking the Court to review both Federal Circuit decisions. Notably, the Supreme Court called for the Solicitor General to weigh in with the views of the United States, which recommended the Court deny the petition, saying the Federal Circuit correctly held that neither Section 102(b) of the Copyright Act nor the merger doctrine forecloses copyright protection, and that no reasonable jury could find fair use on this record. The Supreme Court granted the cert petition.
SUPREME COURT ORAL ARGUMENTS
Thomas Goldstein of Goldstein & Russell, P.C. presented arguments on behalf of Google, while Joshua Rosenkranz of Orrick Herrington & Sutcliffe LLP argued on Oracle’s behalf. Malcolm L. Stewart, Deputy Solicitor General, argued on behalf of the United States, as amicus curiae in support of Oracle.
Those who tuned in to yesterday’s oral arguments likely expected the discussion to focus on the three arguments Google raised in its brief: (1) the declaring code it copied is an uncopyrightable method of operation; (2) the declaring code can only be written in one way, and as a result, the merger doctrine says the code is not protected by copyright; and (3) Google’s copying amounts to fair use.
Copyrightability of the Java SE API
While the discussion touched on each of these arguments, Google’s attempt to paint the declaring code as uncopyrightable subject matter was quickly tossed aside. Justice Gorsuch noted that Goldstein moved past that argument “rather rapidly”-a move Gorsuch called “wise” given that the Copyright Act clearly defines computer programs as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result,” which are, without a doubt, copyrightable. Echoing Gorsuch’s point, Rosenkranz said, “Congress defined literary work to include software and granted copyright protection as long as the code is original. Google conceded Oracle’s code is original. That’s the end of the question.” Goldstein conceded that the merger doctrine is, in fact, Google’s primary argument, and its copyrightability argument was essentially abandoned (at one point, Goldstein even seems to outright concede that declaring code is at least eligible for thin copyright protection).
The Merger Doctrine
Most of the discussion focused on the merger doctrine and how it should-or should not-be applied to the facts at issue. According to Goldstein, Google’s copying of more than 11,000 lines of Oracle’s proprietary code is allowed under the merger doctrine because “the merger doctrine tells us is that if there is only way to provide the method of operation of Java SE, you cannot get a copyright on that expression.” While the Justices seemed to understand the concept of the merger doctrine just fine, several of them questioned Google’s contention that there is only one way to write code that would achieve the desired function.
Chief Justice Roberts pointed out a major flaw in Google’s argument: “the only reason that there’s only one way to do it is because  Oracle’s product expression was very successfulÛ_ There were a lot of ways to do it when they did it the fact that programmers really liked it and that’s what everybody used, it seems a bit much to penalize them for that.” Here, Justice Roberts gets at the very point we made in our amicus brief in this case: “Curtailing copyright protection based on the familiarity of a work would have a devastating impact on copyright, effectively penalizing creators whose works become popular and squelching the incentive to innovate.”
To that point, Justice Thomas raised an important question: at what point do we consider whether there is “only one way” to express a work, such that the merger doctrine would apply? At the time of the creation of the original work-here, Java SE-or at the time when the unauthorized copying occurred? Google responded with the incorrect assertion that merger should be evaluated when the copying takes place-an unsurprising response given that to say otherwise would be to unravel their entire argument. Goldstein claims that this position is “the teaching of Baker v. Selden,” but that case cannot possibly be construed to even support, much less “teach,” that proposition.
Stewart, arguing on behalf of the United States, addressed this point indirectly, saying, “at the time that the work was created, there were no calls known to developers. The argument wouldn’t have flown as a justification for copying at that time.”
“Only one way” vs. Efficient Infringement
Justices Breyer and Sotomayor raised another important point. It’s not so much that Google could not create its own code, it seems that Google just did not want to invest the time and money into doing so. As Justice Sotomayor stated, “Apple has a different way of declaring the same functions. They spent the billions of dollars necessary. Presumably, you could have.” Justice Gorsuch also engaged in a similar line of questioning regarding the fact that both Apple and Microsoft were able to do what Google claims it could not: develop its own code to create a successful phone operating system without unauthorized copying. In response, Goldstein suggests that Apple and Microsoft were able to do so without copying because they developed their platforms using an entirely different language. But, as Rosenkranz explained, there are other competing platforms that were developed using Java that do not copy Oracle’s code. He also adds that while Google chose to copy, “other major companies like IBM and SAP were paying a lot of money to license [it].”
“The sky will fall”
Justice Kavanaugh brought up the “sky will fall” argument raised in an amicus brief filed by 83 computer scientists, which essentially says that a decision in favor of Oracle will upend the tech industry. He pointed out that in the years since the Federal Circuit’s 2014 decision in favor of Oracle on copyrightability, the sky has yet to fall. While Goldstein claims this is a result of the fact that the 2014 decision left open the question of fair use, that still begs the question: why hasn’t the sky fallen in the years since the Federal Circuit’s 2018 decision which determined that, as a matter of law, Google’s use did not qualify as fair use?
“Google is just wrong that the success of the software industry depends on unlicensed copying. Major corporate entities were paying a lot of money just to license our declaring code,” Rosenkranz said. “Two different administrations would not be supporting us if our position were a threat to innovation. The software industry rose to world dominance since the 1980s because of copyright protection, not unlicensed copying.” He added that ruling in favor of Google would “decimate the incentive to create high-quality user-facing declaring code, the code that the amici on both sides insist is essential for the industry to survive.”
A number of less-than-stellar analogies were raised by the Justices as they attempted to make sense of the issues, including restaurant menus, a system for mixing and organizing spices-for those wondering, no it was not yet lunchtime-the periodic table, and telephone switchboards. The most contorted analogy raised delt with the QWERTY keyboard arrangement. Justice Breyer first raised the analogy in the context of the merger doctrine, stating, “You didn’t have to have a QWERTY keyboard on typewriters at the beginning, but, my God, if you let somebody have a copyright on that now, they would control all typewriters, which really has nothing to do with copyright.” Rosenkranz highlighted the first issue with the analogy, which is that the keyboard does not contain expressive elements. And recognizing the QWERTY scenario as a play on the facts in Baker v. Selden-a case in which “the author Selden published a book describing a bookkeeping system [then] tried to extend his copyright in the description to block everyone else from using that system”-Rosenkranz distinguished the facts at issue in this case from the facts in Baker. He explains that Oracle is not “trying to block others from using their own package, class, method, structure, to organize their own prewritten programs We seek to protect only that fully realized expression. And others are free to write and organize their own prewritten programs however they see fit, as long as they don’t copy ours.”
To expound a bit on Rosenkranz’s comments, if we square the QWERTY analogy more closely to the facts in Google v. Oracle and assume, strictly for argument’s sake, that the elements on a keyboard are copyrightable subject matter, having come up with the QWERTY arrangement does not mean one “would control all typewriters.” There are a number of different ways a keyboard can be arranged, and typewriters could continue to be produced with all kinds of keyboard variations. The fact that, today, QWERTY is the format the we all know and are used to does not suggest that there is now, or ever was, just one workable keyboard arrangement.
Most of the discussion regarding fair use centered on the appropriate standard of review. In his opening statement, Goldstein said that “the issue is not whether this Court would find fair use. The standard of review asks the much narrower question whether the jury could reasonably find fair use.” Rosenkranz disagreed, saying that the appropriate standard is de novo review, whereby the Court can “respect the jury’s findings of historical fact” and “decide what legal conclusions to draw from those facts.” While Goldstein pointed out that no prior appellate court has ever overturned a fair use verdict, Rosenkranz, quoted the Supreme Court in Harper which said, “an appellate court may conclude, as a matter of law, that the challenged use does not qualify as fair use once it has the factual record and resolves all subsidiary factual questions in favor of the fact-finder.”
Stewart, who agrees that the Court should review the fair use determination de novo, discussed how the district court erred in “treat[ing] as a factual question what it should have treated as a subsidiary legal judgment.” As Stewart explained, the question of whether Google’s use is transformative, despite being “the same code being used for the same purposes” on a different platform, is fundamentally a legal question, not a factual determination. He also told the Court that if the Court determines that fair use is fundamentally a question of fact, such that it would not be subject to de novo review, it is “not only going to affect jury trial practice; it’s going to affect summary judgment practice because a lot of fair use questions are decided on summary judgment. That won’t be possible any longer if issues like ‘does putting it on a new platform make for transformativeness’ are regarded as jury questions.”
More substantively, Rosenkranz emphasized that a finding of fair use in this case is inappropriate, in light of the first and fourth factors. “This Court held in Harper and in Stewart that a superseding use is always unfair as a matter of law. No court has found fair use or upheld a fair use verdict where a copyist copied so much valuable expression into a competing commercial sequel to mean the same thing and serve the same purpose as the original. Google conceded the purpose and the meaning are the same.”
While it is difficult to predict which way the Supreme Court will decide based simply on the line of questioning, yesterday’s arguments suggest that (1) Google did not seem to clearly prevail on any of its arguments (and definitely lost on a few points), and (2) the Court’s decision will likely turn on the question of merger. I would also guess that the Court is likely to side with Oracle on the question of the appropriate standard of review regarding the fair use verdict.
At first blush, this case is just about Oracle’s propriety rights in its Java API software. However, the decision in this case could have far-reaching implications that will affect creators of all sizes and across all industries. A decision in favor of Google would surely upend the very foundations of copyright law. And while this case certainly is about Oracle’s proprietary rights, on a deeper level, it’s about the ability of all creators to enforce their rights against this kind of blatant infringing, opportunistic, and anti-competitive behavior. This time the victim of Google’s “so, sue me” attitude happens to be another Fortune 500 company with the resources to battle it out in court for 10+ years. Most creators could not afford to do so. So, in this case, Oracle stands in the shoes of every creator. Here’s to hoping the Supreme Court rules in favor of Oracle (and all creators) so that Google and others who seek to emulate Google’s reckless behavior will think twice next time.