On April 5, 2021, the Supreme Court of the United States (SCOTUS) decided GOOGLE LLC v. ORACLE AMERICA, INC.  The decision has implications that touch almost every software company that develops or licenses software, as either a licensor or a licensee.  Our overview and commentary on this case are divided into three parts. This is part one – Copyright Law in View of Google v. Oracle.

Jump to:  Part Two – The Case & Holding  |  Part Three – On Fair Use

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Meet our team | Request a Software IP Protection Audit | Talk to Us About Your IP Legal Needs NeedsTo understand the meaning and importance of this case, let’s first introduce a few key points in the history of Software IP protection.  Software has always held a strange and awkward place in Copyright protection. Copyright protection, as of its foundation in the US Constitution, was designed to protect non-functional works of authorship like Literature, Artwork, and Music.

In 1979, congress had decided that software source code, due to its typographical nature, would qualify for a similar scope of protection as Literature under copyright law.

17 U.S. Code § 101

“Literary works” are works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied.Yet, if software is functional in nature, meaning it performs a useful action, why then should it be afforded protection under copyright law? After all, software function, regardless of the source code used to develop it, is protectable under patent law when deemed to be useful, novel, and non-obvious. To obtain patent protection, Applicants must go through a rigorous patent examination process designed to grant limited exclusivity to only certain inventions, the inner workings of which the inventors are willing to publicly disclose. Patent protection is limited, lasting only 20 years.  After the 20 year period has expired the public can then benefit from the technology and use it freely in the public domain.

In contrast, copyrights can last for well over a century and undergo almost NO examination process!  This means we must be very careful in assessing the utilitarian nature of the subject matter which gets registered under copyright law.  While we are OK with giving such lengthy exclusivity for works of art, monopolizing technology in the hands of a single owner is not the same. If it’s not done right, we can have technology monopolized for much longer than is within the original constitutional intent or desirable public policy behind IP Law.

So why would congress issue copyright protection for Software inventions? In fact, this very question is why this Holding is of particular importance today. In this case, the Supreme Court does clearly specify the limits in the scope of copyright protection available to software, but what it does not do is address the actual legitimacy of software source code’s protection within copyright law in the first place.  In fact, it specifically avoids the issue, stating in its opinion:So, before we dive into the case, here are the commonly accepted answers as to why Software code is protected under copyright law – and these will help you better understand what the SCOTUS was grappling with:

• Some works are just too easy to copy. In fact, in the digital age, making copies of software is even easier than it was back in 1979.
• Since there is an element of authorship in coding, that is – there’s more than one way to express the source code to get the same functional result, congress decided that the authors of software source code were entitled to protection as authors, not just as inventors.
• Similar extensions of copyright protections have been extended to other, functional devices, such as the design of an integrated circuit.

Exceptions are typically reserved for those works that took many resources, engineering, and creativity, but are so easy to replicate once the final product was designed. The exceptions have an important exclusion that is governed by the Merger Doctrine that states that, when there is only one way to express the idea, fact, or function, meaning that there are no reasonable alternatives available to achieve the same functional result, then copyright protection is NOT available to such expression. So, common exceptions are for Directories of IP addresses, Email Addresses, Phone Numbers) or Mathematics (like abstract formulas). Although they were really difficult to come up with and compile, because there is no other way to express these ideas, facts, and functions, we do not provide copyright protection to such items! Instead, you must turn to patent law or trade secret governance.

Next, we discuss the facts of the case, the arguments of each party, and the court’s holding in Part II.

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