• Functional Software’s Limited Copyright Coverage: Jury Finds Google’s Limited Use of Oracle’s Java™ Code Was Fair
  • August 4, 2016 | Author: David E. Blau
  • Law Firm: Sunstein Kann Murphy & Timbers LLP - Boston Office
  • In 2010, Oracle sued Google over its implementation of the Java platform in smartphones running its Android™ operating system (OS). The Java platform is used to write and run programs written in the Java programming language and includes, among other things, the Java Virtual Machine and the Java application programming interface packages (“APIs”) that permit software developers to perform common functions without having to write equivalent code from scratch.

    The APIs contained declaring code that reflects the structure, sequence, and organization (“SSO”) of the APIs. Although Google developed its own version of the Java Virtual Machine, for compatibility purposes Google literally copied the declaring code of 37 APIs and with it the SSO of those APIs.

    In 2012, the trial court ruled that the APIs were not protectable under copyright law because they were essentially functional, not expressive. (Functional items are protectable, if at all, only under patent laws.) The Federal Circuit reversed the trial court in 2014, ruling the SSO of the APIs to be protectable under copyright. The appeals court instructed the trial court to consider whether the doctrine of fair use absolved Google of any liability in this case. On May 26, 2016, a jury found that Google’s use of the declaring code was fair use, thus absolving Google of copyright liability in connection with its use of the APIs.

    Fair use is a defense to copyright infringement, and helps balance the copyright owner’s property interest with the public’s interest in making some limited use of copyrighted works. Uses of copyrighted works are often fair when portions of the work are copied for commentary, parody, scholarship, news reporting, or educational purposes. Judges and juries will consider whether the use is commercial or educational, whether it transforms the underlying work, whether the work is more expressive or factual, how much and how important the portions copied were to the work as a whole, and whether the copying has (or could have) a negative financial impact on the copyright owner. After weighing all of these factors, the jury determined that Google’s use of the Java API was fair, and thus not an infringement of copyright.

    The origins of the legal dispute date to 1991, when the Java language was created at Sun Microsystems. Java slowly developed into a fully-featured platform, and in 1995 it was announced that Java would be included in one of the first web browsers, Netscape Navigator. Java shortly became a valuable asset to Sun, which nevertheless released the bulk of its implementation as free and open source software (FOSS) in 2006.

    One year later, Google released a beta version of its Android mobile platform that included Java. However, Sun refused to grant Google a license to Java for this implementation because Google wanted to revise the code in a way that would make it incompatible with the standard Java Virtual Machine. Google responded by promoting the development of the Dalvik virtual machine, a clone of Java. Although this was a “clean room” development, the developers did copy some declaring code from the Java APIs so that developers would find it easy to code for this implementation.

    Oracle purchased Sun in 2010 and promptly sued Google for copyright infringement involving the APIs, leading ultimately to last month’s jury determination that Google’s copying was fair use.

    According to documents Oracle presented at trial, Android has generated revenue of about $31 billion for Google, and a profit of $22 billion. Since Android apps are written using the Java programming language, it can fairly be said that Java represents a substantial portion of the value of smartphones running the Android operating system. Thus, Google’s unlicensed use of the Java API declaring code may have had a substantial negative impact on Oracle’s bottom line.

    The implications of the verdict are hard to divine because there is no written opinion explaining the result, only a one-sentence jury verdict. However, it supports the notion that copying limited amounts of largely functional software for purposes of interoperability may proceed without need of a license. The verdict may mean that if a platform becomes very successful, as Java has become, the public’s interest in interoperating with programs written for that platform, and with its APIs, outweighs the copyright owner’s right to profit from them, regardless of how many billions of dollars are lost. Such a result would be a great relief to those who wish software platforms to remain open to creative implementations by third parties.

    The jury may have been persuaded that it would have been unfair to require Google to pay the $8.8 billion in damages that Oracle was seeking for rights to what was once a free and open source (FOSS) project. Owners of copyrights in the structure, sequence, and organization of programming language APIs therefore may decide not to release those languages as FOSS at all, resulting in potentially fewer open source software platforms.

    ™ Java is a trademark of Oracle Corporation. Android is a trademark of Google Inc.