The Supreme Court's Holding of Copyright Protection

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

VIDEO: The Supreme Court’s Holding of Copyright Protection (~12 Mins.)

Both Google and Oracle rely heavily upon software protection under copyright law. It’s how they control the use and distribution of their software!  Here, they are asking the court to interpret the software copyright laws on a sophisticated software issue at the risk that an overly narrow interpretation could actually hurt both Oracle and Google in other cases, and negatively impact software companies all over the world. But, Oracle had a lot at stake, as their licensing arrangements are at risk if their APIs and declarations in the Java language could be interoperable with the other languages without their permission or control.  This could mean that other companies could follow in Google’s footsteps and avoid licensing the Java platform but still given developers the ability to program on their own platform using the familiar Java Code.

With a lot of money at stake, 9 billion dollars to be exact, Oracle took to the courts. And, that was back in 2010 – and it already reached the Supreme Court once before, which refused to get involved on this thorny issue the first time around.

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 retained the Java method declarations in its implementation so that applications written in Java can call the new methods that Google created for Android, without requiring Android developers to learn new declarations or a new computer programming language. In this way, Google allowed android developers to use the familiar Java language to develop for the Android platform.

Oracle sued Google for copyright infringement. It argued that the 3% of code that google copied, is what developers recognize as the high-level JAVA language.  This copied code is necessary to call upon methods of operation provided by the ‘back-end’ JAVA SE platform.  Oracle pointed out that companies like IBM and SAP all properly license the JAVA platform, while companies like Apple and Microsoft (who supported Google in this case), developed their own programming languages to, as Oracle would lead the court to believe, avoid licensing from Oracle. Google, as we’ll detail in a bit, stated that the 3% of the code that it copied was not protectable under copyright law in the first place.  And, even if it were, using the 3% of the code would be fair use, which we’ll get into next.




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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.

Here, Google suggested that Java software developers should have the right to use certain commands to create applications for Google’s Android smartphones, but, to work, the commands require Google to reuse an exact set of declarations from Java SE to call Google’s propriety functions in order for Android to be interoperable with the Java Language. And, because there are no substitutes, Oracle is impermissibly claiming the exclusive right not merely to what the declarations say but also to what the declarations do. That is not a copyright; it is a patent right.

Furthermore, even if its copyright protection were to extend to API calls and declarations, such protection should still be limited by the FAIR USE principle. The Fair Use principle would allow developers to use certain bits of other copyrights to create new and transformative works, as Google claimed it did itself, with the creation of its own Proprietary Methods but with the adoption of commonly known Java declarations.  The Fair Use principle would further extend to the Android developers, who would be empowered to create new and transformative works on the Android platform using a computer programming language they already know. Google argued that the long-settled practice of reusing software interfaces is critical to modern interoperable computer software. Here, reusing the minimally creative declarations allowed the developers to write millions of creative applications that are used by more than a billion people. It further argued that a jury in the lower courts has already decided that its copying was of Java code was fair use and that no court has ever overturned a jury’s fair-use verdict.


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.

Both Apple and Microsoft decided to create a competing platform without copying our code.  Why didn’t Google take that route if it didn’t think it would be easier to simply copy our code? Other major companies, like IBM and SAP pay Oracle licensing fees to copy the same declarations that Google did!  Google never denied this.

So many companies provide APIs and use APIs – and, what Google’s arguing could mean that Once you put an API to your functions out there, you might not retain control of how those API are used, even though they were your creation!!

After over a decade of litigation, the SCOTUS Held: Google’s copying of portions of the Java SE code, 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 as a matter of law.

Copyright encourages the production of works that others might cheaply reproduce by granting the author an exclusive right to produce the work for a period of time. Because such exclusivity may trigger negative consequences, Congress and the courts have limited the scope of copyright protection to ensure that a copyright holder’s monopoly does not harm the public interest.

“In reviewing that decision, we assume, for argument’s sake, that the material was copyrightable. But we hold that the copying here at issue nonetheless constituted a fair use. Hence, Google’s copying did not violate the copyright law.”

The court identified two areas that implicate the limits in the current Copyright Act. First, the Act provides that copyright protection cannot extend to “any idea, procedure, process, system, method of operation, concept, principle, or discovery . . . .” 17 U. S. C. §102(b).  Second, the Act provides that a copyright holder may not prevent another person from making a “fair use” of a copyrighted work. §107.

“A platform provides the necessary infrastructure for computer programmers to develop new programs and applications. One might think of a software platform as a kind of factory floor where computer programmers (analogous to autoworkers, designers, or manufacturers) might come, use sets of tools found there, and create new applications for use in, say, smartphones”

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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Yuri L. Eliezer, Managing Partner

Partner, Patents & Advanced Technology Attorney

Yuri heads the Intellectual Property practice group at Founders Legal.  A practice he co-founded at the Atlanta Tech Village – the nation’s fourth-largest incubator.  By the nominations of colleagues that have worked with him over the past several years, Yuri was selected to the 2021 and 2020 Super “Patent” Lawyer Lists, an award that is given to just 2.5% of attorneys.  His recognition relates to his work in securing multi-million dollar patents for his clients – patents that have been tested through USPTO examination, re-examination and litigation.  Yuri also strives to use his first-hand knowledge of the legal industry to develop innovative methods to improve the practice of law, and has been recognized as a player in the law practice technology field.

His degree in Electrical and Computer Engineering has helped him serve technology companies of all sizes including various startups, Microsoft, Cisco, Cox, AT&T, General Electric, Georgia Institute of Technology, and Coca-Cola.

Founders Legal (Bekiares Eliezer LLP) is a boutique Corporate & Intellectual Property Law Firm based in Atlanta, Georgia USA, and trusted by thousands of companies nationwide. Founders Legal focuses exclusively on complex matters in the areas of Intellectual Property, Corporate, Transactional, and Securities law.




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