Please Note: We have edited our original October 6 posting on October 7, but prior to oral argument.
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At the United States Supreme Court, oral argument is scheduled for October 7, 2020, in the landmark case of Google LLC v. Oracle America Inc. which, as noted at SCOTUSblog and elsewhere, raises the following issues:
#1 -- Whether copyright protection extends to a
software interface;
and
#2 -- Whether, as the jury found, the petitioner’s
use of a software interface [API] in the context of creating a new computer
program constitutes fair use. [emphasis added by LawPundit]
Kris Kemp of Kemp IT Law writes in Google v Oracle: the Copyright Case of the Decade:
"It will be interesting to see if the US Supreme Court is influenced by the view of the Court of Justice of the European Union that “copyright in a computer program does not protect either the programming language
in which it is written or its interfaces (specifically, its data file formats) or its functionality from being copied.”9 [LawPundit includes here the actual footnote 9: Per SAS Institute Inc v World Programming Limited [2013] EWHC 69 (Ch), following C-406/10 SAS Institute Inc v World Programming Limited, ECLI:EU:C:2012:259)]"
Years ago, already, we posted at length at LawPundit about this case at:
Android and the Oracle Java API Copyright Scam Against Google
and
Jury Finds in Favor of Google Against Oracle in Android v. Java Fair Use Copyright Case
We thought that the case had been decided once and for all in favor of Google, but the Federal Circuit has once again upset the apple cart in now finding in favor of Oracle and negating and nullifying the jury verdict, so that the case has gone via the grant of writ of certiorari to the United States Supreme Court, in a case upon which the future of software -- at least in the USA -- hangs in the balance, as written by Tom Krazit at Protocol.com in Google and Oracle are headed to the Supreme Court. The future of software hangs in the balance.
"A generation of software built around shared assumptions for interoperability faces an uncertain future depending on the outcome of a yearslong legal fight between Google and Oracle."
Ronald Mann has a shorter detailed analysis at SCOTUSblog titled Case preview: Justices to weigh in on landmark copyright battle between Google and Oracle. See Ronald Mann, Case preview: Justices to weigh in on landmark copyright battle between Google and Oracle, SCOTUSblog (Oct. 5, 2020, 3:03 PM), https://www.scotusblog.com/2020/10/case-preview-justices-to-weigh-in-on-landmark-copyright-battle-between-google-and-oracle/
What is to be made of this case, which is so critical for the entire digital industry?
The legal issue of the copyrightability of software interfaces is so old that Jonathan Band has written extensively about it since 1995, most recently at Interfaces on Trial 3.0: Oracle America v. Google and Beyond, 148 Pages Posted: 5 Dec 2016 Last revised: 22 Jun 2018 -- the link to the pdf online is https://papers.ssrn.com/sol3/Delivery.cfm/SSRN_ID3197233_code1754101.pdf?abstractid=2876853&mirid=1&type=2.
Initially, as one can read there, software interfaces were correctly viewed as non-copyrightable, but, alas, weak judges and weak legislators in the USA and internationally have steadily eroded the inescapable conclusion that software interfaces were necessary for interoperability and were thus not "creative expression" in terms of copyright law. Rather such interfaces were solely functional and not within the ambit of the creative expression that the Founders intended to protect by establishing the Constitutional basis for copyright law.
Jonathan Band writes, to start out his most recent 2018 revision, Interfaces on Trial 3.0: Oracle America v. Google and Beyond, as follows:
"Here We Go Again.... [emphasis added by LawPundit]
In 1995, I coauthored the first volume, INTERFACES ON TRIAL: INTELLECTUAL PROPERTY AND INTEROPERABILITY ON THE GLOBAL SOFTWARE INDUSTRY (“INTERFACES ON TRIAL 1.0”), with Masanobu Katoh. At the time we published INTERFACES ON TRIAL 1.0, we thought that the interoperability debate was largely over. In the United States, several appellate decisions established that copyright did not protect interfaces specifications, the information necessary to achieve interoperability, nor did it prevent the reverse engineering necessary to determine the interface specifications. The European Union adopted a software directive that required member states to enact exceptions permitting reverse engineering for the purpose of achieving interoperability.
However, contrary to our expectations, the interoperability debate continued. This continuation of the debate between 1995 and 2010 is chronicled in our second volume, INTERFACES ON TRIAL 2.0. That volume focused on two new threats to interoperability that emerged in the United States. First, several courts enforced contractual restrictions on reverse engineering, even when the vendors placed the restrictions in “shrinkwrap” or “click-on” licenses for widely distributed consumer software. Second, the World Intellectual Property Organization Copyright Treaty, adopted in December 1996, required signatories to take adequate measures to prevent the circumvention of copy protection technologies for purposes of infringement. As Congress was implementing this requirement, interoperable developers recognized that the broad prohibition Congress was considering would allow dominant firms to frustrate interoperability by placing “locks” on their software. Accordingly, the interoperable developers lobbied for and secured an interoperability exception in the Digital Millennium Copyright Act (“DMCA”).
INTERFACES ON TRIAL 2.0 also examined the interoperability debate in the Pacific Rim after 1995. Dominant U.S. companies, with the assistance of the U.S. Trade Representative, vigorously opposed the adoption of reverse-engineering exceptions based on the EU Software Directive in Australia, Hong Kong, and Korea.
When we submitted the book for publication in 2010, we once again assumed that the interoperability debate was over. We believed that there was a global consensus that copyright should not interfere with interoperability. And once again, we were wrong. In May 2014, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued a decision in Oracle American v. Google that ignored the evolution of software copyright law over the past thirty years. In reaching its conclusion that copyright protects the elements necessary to achieve interoperability, the CAFC relied on a long-discredited Third Circuit decision, Apple Computer v. Franklin Computer, 714 F.2d 1240, 1253 (3d Cir. 1983), which stated that compatibility is “a commercial and competitive objective which does not enter into the somewhat metaphysical issue of whether particular ideas and
expression have merged.”
In addition to the CAFC’s disruptive decision, there have been developments relating to interoperability in the context of the DMCA’s prohibition on the circumvention of technological protection measures. Furthermore, the Court of Justice of the European Union (“CJEU”) in its 2012 decision in SAS Institute v. World Programming interpreted the European Union Software Directive in a manner consistent with U.S. law prior to the CAFC’s decision in Oracle America. These various developments have prompted me to write this third volume, this time without my friend and coauthor Masanobu Katoh."
Have the Federal Circuit judges read Band's work? We sincerely doubt it.
In the last 15 years we have never been wrong in pointing to decisions of the Federal Circuit that we thought would be overturned by the U.S. Supreme Court, and we hope that our streak does not end here in this very important case, as we again predict that the Supremes will find it an error that the jury decision was negated and nullified and replaced by the Federal Circuit's decision -- made only for the second jury trial and not for the first (!) -- that Google's actions were not fair use "as a matter of law" (the Federal Circuit opinion wrote that "we conclude that Google's use of the Java API packages was not fair as a matter of law").
In other words, we think the Supremes will formally skip the controversial copyright issue (#1 above) as such, and decide via the jury issue (#2 above), though there may be opinion dictum viz. dicta on the copyrightability of software interfaces, such interfaces being essential for software interoperability and which -- by their very strictly limited functional nature -- do not fall in any way under the creative "expression" required for a claim of copyright protection. Software interface code is not a book novel written for publication -- expressing an author's creative ideas -- rather, it is functional text, regardless of how it is written.
Historically, the Supreme Court has been very skeptical of the broad brush with which the Federal Circuit Court too often paints its decisions, and a court finding that certain challenged actions by Google -- contrary to the jury finding -- did not constitute fair use as a matter of law thus squarely puts the Federal Circuit at odds with the increasingly recognizable legal sanity found in modern Supreme Court decisions on intellectual property law, a common sense approach which recognizes that "fair use" -- "as a matter of law" -- is not such an easy thing to identify nor could one easily draw a "standard" from the Federal Circuit Court's decision here that could be applied to other cases.
Indeed, if the decision in favor of Oracle were upheld, it would lead to mass confusion everywhere in the world software industry -- especially if it is different from EU law -- as to what is protected and what is not protected by copyright law, not even mentioning the totally undeserved windfall profit that Oracle is trying to achieve via Java in this case, a result which was never intended by the Founders or the drafters of the U.S. Constitution. Obviously, American law and the U.S. Constitution prevail unequivocally, but one should also be aware of the rest of the world and be concerned about prevailing rules, especially in IP law.
Speaking of "the matter of law", American law has a four-factor test-- as a matter of law -- for fair use, and the jury found that fair use had not been violated. Mann, in his article cited above, in our opinion correctly identifies the standard to be applied: "Because the jury found that the use was fair, all agree that the verdict should be upheld if the evidence would have permitted a reasonable jury to reach that conclusion on any understanding of the factors."
It is obvious, we would think, that it is not the job of Federal Circuit Court judges to substitute their -- in our view -- oft errant opinions for those of "reasonable" juries. And we, for one, find the jury finding here to be eminently reasonable.
Case closed (or so we hope) -- for it all now depends on the opinions and decision of the Justices of the Supreme Court.
The upcoming oral argument will tell us more.
