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Copying of API for a New and Transformative Program is Fair Use, SCOTUS Rules

In Google LLC v. Oracle America, Inc., decided on April 5, 2021, the Supreme Court of the United States ruled in a 6–2 decision that Google’s use of Java APIs (application programming interfaces) owned by Oracle falls within the four factors of fair use and is not considered as copyright infringement.

In 2005, Google purchased Android, Inc. to develop its own mobile phone platform. During its development, Google wanted to incorporate the Java Standard (JavaSE) Edition libraries which were owned by Sun Microsystems. Licensing deals failed between the two companies because of Sun’s request for some control of Android allegedly to maintain interoperability among the different versions of its libraries. On the other hand, Google also wanted more control in order to open source the language and allow third parties to take advantage of the code.

Instead of licensing, Google developed a clean-room version of JavaSE, wherein Google was able to completely recreate the libraries from start without access to Sun’s original codes, a reverse engineering in a way. In 2007, Google released a beta version of the Android platform and acknowledged that their SDK (software development kit) includes Java technologies. A couple of years later, Oracle acquired Sun.

In 2010, Oracle sued Google for copyright infringement of 37 Java APIs. The Court of Appeals for the Federal Circuit ruled that the overall structure of Oracle’s API packages is creative, original, and resembles taxonomy, holding that the “structure, sequence and organization” of an API is copyrightable. Assuming that APIs are copyrightable, the Supreme Court determined whether Google’s use was permissible under the fair use doctrine. The majority opinion, written by Justice Stephen Breyer, explained that Google’s use had met all four factors of fair use.

Satisfying the four factors permits the use of copyrighted material without having to acquire permission from the copyright holder. The four factors which are only guidelines that courts are free to adapt to particular situations are:

a) the purpose and character of the use (Has the material been transformed by adding expression or new meaning? Was value added to the original by creating new information?),

b) the nature of the copyrighted work (Does the information benefit the public?),

c) the amount and substantiality of the portion taken (Was the copied portion the “heart” of the original work?), and

d) the effect of the use upon the potential market (Does the copied work deprives the copyright owner of income or undermines a new or potential market for the copyrighted work?).

For the first factor, the analysis identified that APIs served as “declaring code” rather than implementation. In the context of copyright, it served as an “organization function” similar to Dewey Decimal System, in which fair use is more applicable.

For the second factor, Google took and transformed the Java APIs “to expand the use and usefulness of Android-based smartphones” which “created a new platform that could be readily be used by programmers.” Google limited the use “as needed to include tasks that would be useful in smartphone programs.”

For the third factor, Google only used 0.4% of the total Java source code and was minimal. Google did not copy the code that was at the “heart” of how Java was implemented, and that “Google copied those lines not because of their creativity, their beauty, or even (in a sense) because of their purpose. It copied them because programmers had already learned to work with JavaSE, and it would have been difficult to attract programmers to Android without them.”

For the fourth factor, it was not clear at the time Google copied the APIs that Android would become successful, and it should not be considered as a replacement for Java but as a product operating on a different platform. It is further stated that if Google’s use is found to be an infringement, it “would risk harm to the public” as “Oracle alone would hold the key. The result could well prove highly profitable to Oracle, but the lock would interfere with, not further, copyright’s basic creativity objectives.”

In conclusion, Google’s copying of the JavaSE API, which included only those lines of code that were needed to allow programmers to put their accrued talents to work in a new and transformative program, was a fair use of that material.

In the lone dissenting opinion by Justice Clarence Thomas, Google initially attempted to purchase a license to use Sun’s coding. But because of disagreements, “Google simply copied verbatim 11,500 lines of codes from the library.” What happened thereafter was anything but fair. Apple and Microsoft simply wrote their own declaring codes instead of copying; Google did not have to copy. The decision also ignored whether the computer code was actually copyrightable. If companies can freely copy libraries of declaring codes, they will hesitate to do what Oracle did to create an intuitive, well-organized libraries that attract programmers and could compete with Android.

Justice Thomas compared this to staging a play. A script (declaring code) needs actors (programmers) to invest time learning and rehearsing it. But a theater (Google) cannot copy a script simply because it wants to entice actors to switch theaters and because copying a script is more efficient than requiring the actors to learn a new one. In the world of computer codes, is it necessary to create a new script, or simply copy an existing one?

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