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 two – The SCOTUS’ Holding of Copyright Protection.

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

Let’s dive into the facts of the case. Oracle America, Inc., owns a copyright in Java SE, a computer platform that uses the popular Java computer programming language. In 2005, Google acquired Android and sought to build a new software platform for mobile devices. Google copied roughly 11,500 lines of code from the Java SE program to allow the millions of programmers familiar with the Java programming language to work with its new Android platform. The copied lines are part of a tool called an Application Programming Interface (or API), an API allows programmers to call upon prewritten computing tasks for use in their own programs.

Prior to this battle, it was reported that Google negotiated with Sun back in 2005 for a license to use Java for mobile devices, but a licensing deal was never reached. Instead, Google decided to develop its own implementations of the methods contained in the 37 Java API packages, which accounts for 97 percent of the lines of code in those packages. Here, it is stipulated that Google committed no copyright infringement in rewriting the methods. However, to allow developers to develop for the Android platform in the familiar “JAVA” language, Google kept the remaining 3 percent of the code at the heart of Oracle’s copyright claim. This code refers to the method declarations—lines of code specifying package, class, and method names; definitions; and parameters.

Google argued that there is only one way to express an API call – and that is with the exact lines of code in the API. Under previously established law, known as the merger doctrine, which dictates that when there is only one usable expression to express a function (such as an API call invoke a method of operation, then there can be no copyright protection for computer code that is the only way to perform a function.

(b)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.

First – Oracle states: Google admits our code is original. Section 101 allows for original software code to be protected under copyright law. End of story.

The court assumes, for argument’s sake, in an attempt to avoid setting precedent on a complicated issue, that any copied software lines of code are protectable under copyright law and that it can resolve the dispute by only addressing the question of Fair Use. Now, this decision, to ‘assume for argument’s sake’ that any software code is copyrightable is very difficult to accept for many of us the IP community – but it is understandable.  Software is only protectable by copyright law for a specific expression of code, rather than the functional intent.  I would argue, however, that the Courts avoidance of ruling on this issue is actually favorable to all software companies who provide an API to their end-users.

I would further suggest that it’s also good practice by the courts to avoid ruling where a ruling is not needed. Generally, where there is not a dispute as to a stipulated axiom and the litigants aren’t debating the issue, the Court likes to keep its opinion out of the way – allowing for the elected officials to decide the matter through legislation.   Here, neither Google nor Oracle was disputing that Software Code shouldn’t be protected under copyright law – as it would NOT have been in either of these Tech Giant’s their interest to do so. Instead, they were debating as to the extent of the protection available for software APIs and declarations that are bound to the pre-set parameters of a particular programming language.

Google argued that, since there is only one way to express certain API calls and declarations within a programming language, and that expression is inherently tied to the performance of a functional software method of operation, then such calls and declarations should not be entitled to Copyright protection. Oracle, on the other hand, generally suggested that every portion of a programming language should be protected under copyright law because the entire programming language is a work of authorship and qualifies for copyright protection and that there are many alternatives to execute the same methods and functions – just with different programming languages. The court avoided taking sides directly and resolved the dispute with a FAIR USE analysis.

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