Can Computer Code by Copyrighted?

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February 11, 2021
By Andrew David Easler, Esq.

The issue of whether or not computer code is subject to copyright protection has finally reached the Supreme Court of the United States (SCOTUS).[1] Although the particular court case surrounding this controversial issue has only been making its way through the hierarchy of the courts for the past 10 years, the core issue that is up for debate has been in the making over the past 40 years.[2] Additionally, while the stakes for the parties who are involved in the lawsuit, namely Google LLC and Oracle America, Inc., are high and amount to billions of dollars in potential damages, the wider impact on the global software industry itself is far wider reaching.

In analyzing the debate, it’s important to understand what is subject to copyright protection and what type of computer code is at the heart of the matter in controversy. Section 102 of the U.S Copyright Act sets forth what is and what is not subject to copyright protection.[3] The first part of the statute states the eight types of works which are subject to copyright protection such as; literary works, musical works, dramatic works, pantomimes and choreographic works, pictorial, graphic, and sculptural works, audiovisual works, sound recordings; and architectural works.[4] The second part of the statute states that copyright protection does not “extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery…”[5]

The U.S Copyright Act also specifically defines “computer program” as a “set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.”[6] These set of “statements” or “instructions” are more commonly referred to as a computer program’s source code or object code. Source code is “a set of statements and instructions written by a human being using a particular programming language,” such as Java, Perl and C++, to name a few.[7] On the other hand, object code is “a representation of a computer program that is written in a machine language consisting of binary code (i.e., ones and zeroes).[8] Object code is comprehensible to a computer or other electronic device, but as a general rule, it is not comprehensible to human beings.”[9]

In the case that the SCOTUS has recently heard oral arguments in, Google LLC v. Oracle America, Inc.[10], the heart of the issue is whether source code, and in particular, the Java programming language’s application programming interfaces (APIs), are subject to copyright protection. In 1990, Java was created as a programming language which included libraries of APIs which are used to help facilitate a software programmer in determining what functions certain coding instructions may have.[11] The Java programming language, which was originally developed by Sun Microsystems, Inc., and was subsequently purchased by Oracle Corporation in 2010,[12] had undergone a series of different licensing structures over the years but had always maintained a strict set of standards to which licensees had to adhere to in utilizing the API.[13]

Google LLC, which had purchased the Android operating system in 2005,[14] had entered into licensing negotiations with Sun Microsystems for Google’s use of the Java API in connection with the development of the Android operating system. However, due to the manner of control which Sun Microsystems would have exerted over Google’s use of the API, the negotiations failed to come to fruition. Instead, Google went on to develop and utilize its own version of Java that was based in part on Apache Harmony, a former open source and free Java implementation which was developed by the Apache Software Foundation.[15]

In 2010, Oracle sued Google for copyright and patent infringement arising from Google’s development of the Android operating system which copied some of Oracle’s Java APIs.[16] In 2012, the jury in that case found that Google had infringed upon Oracle’s copyright through its implementation of the Java APIs in the Android operating system, however the jury was deadlocked as to whether these uses fell within the doctrine of fair use. Despite the jury’s finding in favor of Oracle that Google had infringed upon the copyright to Oracle’s APIs, Judge Aslup of the District Court for the Northern District of California stated that “[s]o long as the specific code used to implement a method is different, anyone is free under the Copyright Act to write his or her own code to carry out exactly the same function or specification of any methods used in the Java API. It does not matter that the declaration or method header lines are identical.”[17] Judge Alsup’s holding therefore found that APIs in general were not subject copyright protection.

Shortly thereafter, Oracle filed an appeal to the decision which in turn resulted in Google filing a cross-appeal. Then the United States Court of Appeals for the Federal Circuit held that “the overall structure of Oracle’s API packages is creative, original, and resembles a taxonomy.”[18] This in turn resulted in the court finding that APIs were in fact subject to copyright protection and thereafter remanded the case back to the District Court for a second trial. Following this ruling, Google petitioned the SCOTUS to hear the case, however the Court denied the certiorari petition upon the recommendation of the U.S Solicitor General.[19]

With the Court of Appeals holding that APIs were subject to copyright protection, the remaining copyright related issue was whether Google’s use of Oracle’s Java API constituted fair use. Despite Oracle seeking damages in excess of $9 billion, the jury then unanimously held that Google’s use of Oracle’s Java APIs was fair use.[20] This resulted in Oracle filing a subsequent appeal where the Court of Appeals was then to determine whether the jury’s decision was that of what a reasonable jury could have reached and whether the judge’s decision could be correct and reasonable in law. The United States Court of Appeals for the Federal Circuit analyzed Google’s use of Oracle’s Java APIs in the context of the fair use doctrine which was set forth by the SCOTUS in the landmark copyright case Campbell v. Acuff-Rose Music, Inc.[21] In light of such analysis, the court held that Google’s use was not fair use and thereafter remanded the case back to the District Court of the Northern District of California for the purpose of determining the damages that Oracle had sustained.[22]

In 2019, Google filed a petition for writ of certiorari with the SCOTUS to adjudicate whether APIs were subject to copyright protection and if so, whether Google’s use of Oracle’s Java API had been fair use. In light of the importance of the issues that Google had asked the SCOTUS to decide upon, a myriad of amicus briefs were filed by academics and computer professionals in support of Google’s position while the Trump administration held firmly in favor of having the SCOTUS deny certiorari in favor of Oracle’s position. On November 15, 2019, the SCOTUS granted certiorari over the case and despite delays arising as a result of the COVID-19 pandemic, oral arguments were finally heard telephonically on October 7, 2020.

The significance behind how the SCOTUS will decide this matter is of considerable importance to the entire technology industry, and in particular the software industry. As evident by the breadth of the different individuals, entities, organizations and academic institutions which had filed amicus briefs in support of Google’s position, such as that of the Electronic Frontier Foundation which is a non-profit civil liberties organization, the impact that a decision would have if the SCOTUS was to decide in either party’s favor will have tremendous consequences to software developers.

The issues of whether APIs are subject to copyright protection and if so, whether Google’s use of Oracle’s Java API was fair use was argued for and against by each party’s respective counsel before the SCOTUS. On behalf of Oracle, attorney E. Joshua Rosenkranz argued that Congress had specifically defined literary work to include software and had granted copyright protection to computer code as long as the code is original. Additionally, throughout his oral arguments, Rosenkranz reiterated that Google had conceded on record that Oracle’s code is original. In his argument regarding the fair use issue, Rosenkranz further argued that Google’s use of Oracle’s code was a superseding use, rather than transformative use, and that such superseding usage is always unfair as a matter of law.

Rosenkranz further pointed out that other major companies, like IBM and SAP, had paid a lot of money to license Sun Microsystems’ declaring code precisely to avoid having to recreate the coding themselves. Additionally, Rosenkranz argued that if the Court were to hold that a jury may conclude that copying declaring code is fair, that doing so would encourage copying, create legal uncertainty and upend the entire licensing business model of the technology industry, which would in turn undermine the very incentives that copyright protection was intended to promote.

Arguing on behalf of Google, attorney Thomas C. Goldstein relied in part on the language set forth in Section 102(b) of the U.S Copyright Act[23] in support of the notion that Google has a right to provide the functionality of a program in order to make a computer do something. Additionally, Goldstein further cited to the “merger doctrine” arguing that where there is only one way to express a method of operation, such as in the case of Java; that such expression is not subject to copyright protection. Goldstein then cited to the SCOTUS holding in Baker v. Selden[24] where the Court held that the objective of publishing a book on science or useful arts would be frustrated if such knowledge was unable to be used without infringing upon the rights of such book.[25]

Goldstein argued that once Oracle published Java SE, that the public as well as developers and companies like Google had the right to create their own versions of it that would provide the same functionality. Goldstein often hinged his discussion on Oracle’s Java SE being the only way to accomplish a particular desired functionality. In closing, Goldstein stated that ruling in favor of Oracle’s position would result in making the creation of innovative computer programs less efficient.

In turning to the fair use part of the case; while the majority of discussions between the justices and each party’s legal counsel focused on what the correct standard of review should be and should have been, there were some substantive discussions regarding whether Google’s use of Oracle’s code was transformative or superseding and how the fair use factors in this case should appropriately be weighed.

In analyzing the case, the issue of whether Oracle’s code is subject to copyright protection would depend in part on whether such code meets the requirements that a work of authorship be subject to copyright protection that it must be original[26] and sufficiently creative[27]. To meet the originality requirement “a work must be original to the author.” To meet the creativity threshold, the work must contain some “creative spark.”[28] The crux of Google’s argument focuses on Oracle’s code lacking the level of creativity that is necessary to qualify for copyright protection. Indeed, the SCOTUS has ruled on various cases where the creativity threshold was at the heart of the issue. In Feist Publications, Inc., v. Rural Telephone Service Co., the SCOTUS unanimously held that information by itself and without a minimum level of original creativity cannot be protected by copyright.[29]

Another landmark case, which counsel for Google repeatedly cited to in his oral arguments, was Baker v. Selden.[30] In Baker, the SCOTUS decided that a particular system of bookkeeping was not subject to copyright protection as the “useful art” that had been described in a book was only subject to patent protection, not copyright protection. Another core principal of copyright law which SCOTUS upheld in Baker was the “merger doctrine.” Under the merger doctrine, the SCOTUS held that if an idea can only be expressed in a single way, then the expression will not be subject to copyright protection due to the expression having “merged” with the idea. Over the past century, the merger doctrine has been subject to further elaboration such as in the case Kern River Gas Transmission v. Coastal Corp. where there was found to be no separation between idea and expression in the case where a pipeline was superimposed on a map of the western U.S and was therefore not subject to copyright protection.[31] Similarly, in Morrissey v. Procter & Gamble Co., the court held that sweepstakes contest instructions for entering a box top from a purchased product was not subject to copyright protection due to there only being a finite possible small number of expressions of the idea.[32]

In this case, there is evidence to support that there is more than one way to write a declaring code that accomplishes the same functionality that Oracle’s code does. This can be seen by the fact that companies such as Apple and Microsoft have managed to create their own code which is able to declare those same functions but in a different way. The fact that doing so may be costly and require a considerable amount of resources has no impact on the fact that it is possible.

In approaching the question of whether Google’s use of Oracle’s code was fair use, the Copyright Act itself sets forth what types of uses constitute fair use, and therefore do not constitute copyright infringement, as well as the factors which are to be considered in analyzing a question of fair use. The Copyright Act provides that reproductions of a copyrighted work for “purposes such as criticism, comment, news reporting, teaching, scholarship, or research” is not does not constitute copyright infringement.[33] Additionally, the purpose and character of its use, the nature of the copyrighted work, the amount and substantiality of the use and the effect of the use upon the potential market or value of the copyrighted work are factors that are set forth by the Copyright Act which are intended to be used in analyzing whether a use constitutes fair use.[34]

The first factor, concerning the purpose and character of Google’s use of Oracle’s code is undoubtedly commercial, which weighs against a finding of fair use. However, Google’s position is that the use was transformative because it’s being used in a new platform. In the case Campbell v. Acuff-Rose Music, Inc., the SCOTUS held that a transformative use, which weighs heavily in favor of a finding of fair use, is one that alters the original with new expression, meaning, or message.[35] However, Oracle’s position is that Google’s commercial use of Oracle’s code is a superseding use. The SCOTUS has held that “when a commercial use amounts to mere duplication of the entirety of an original, it clearly ‘supersedes the objects’ of the original and serves as a market replacement for it, making it likely that cognizable market harm to the original will occur.”[36] The SCOTUS has further held that “the fair use doctrine has always precluded a use that [supersedes] the use of the original.”[37] In evaluating this factor, the fact that Google’s use of Oracle’s code is being on a new platform does not appear to meet the definition of being transformative and therefore appears to be more of a superseding use.

The second factor of analyzing whether a use constitutes fair use goes to the nature of the copyrighted work. Courts have held that works that are more creative in nature are closer to the core of intended copyright protection[38] and that copies of such creative works are less likely to be deemed fair use. Also considered in evaluating this factor is whether the copyrighted work is commercial in nature.[39] This second factor doesn’t appear to lean heavily in either parties favor. The nature of Oracle’s code is undoubtedly commercial; however the creativity of the code is not nearly along the lines of the level of creativity that a book or a song would possess.

The third factor can be more definitively evaluated in analyzing the amount and substantiality of the use of the copyrighted work as a whole. Here, it appears that Google had used 37 out of Oracle’s 166 Java API packages[40] which translated to Google having used 11,500 lines of Oracle’s copyrighted code.[41] During Oracle’s oral arguments before the SCOTUS, attorney Rosenkranz repeatedly mentioned that Oracle had “filled in the blanks 30,000 times over.” As such, it appears that Google’s use of Oracle’s code was in fact substantial.

The last factor of evaluating fair use goes towards “the effect of the use upon the potential market for or value of the copyrighted work.”[42] In analyzing this factor, courts look at whether the infringing use has a negative impact on the value and potential market of the copyright work. In such analysis, courts will not only look merely to the precise market that the copyright work is in, but also what the potential market of the copyrighted work could be. In Rogers v. Koons, which involved a photographer suing a sculpture for copyright infringement, the court weighed this factor against a finding of fair use in holding that it was immaterial whether the photographer had considered making sculptures but rather whether a potential market for sculptures of the photograph existed.[43]  Another core concept behind this factor goes towards whether such use deprives the copyright owner of income. In this case, not only has Oracle in fact expanded to offer mobile application development tools, but Oracle would also undoubtedly be deprived of income if developers were not required to seek a license in order to use and implement Oracle’s code into their own projects.

The remaining issues surrounding the case go towards what the consequences of a ruling for either party would be. Google’s position is that a ruling in favor of Oracle would have a chilling effect for software developers and would in turn devastate the software development industry as a whole. Oracle’s position is that a ruling in favor of Google would destroy the entire licensing business model that software companies have come to rely on and would further weaken the proprietary nature that software itself holds. However, until the SCOTUS makes its decision, the industry can only wait and see.

 References:

[1] See Google LLC v. Oracle America, Inc., ___ U. S. ___ (20__). [2] Final Report of the National Commission on the New Technological Uses of Copyrighted Works (CONTU Rep.), ISBN 0-8444-0312-1 (1978). [3] 17 U.S.C. § 102 (2020). [4] 17 U.S.C. § 102(a) (2020). [5] 17 U.S.C. § 102(b) (2020). [6] 17 U.S.C. § 101 (2020). [7] U.S. Copyright Office, Compendium of U.S Copyright Office Practices, Glossary (3d ed. 2017). [8] Id. [9] Id. [10] See Google LLC v. Oracle America, Inc., ___ U. S. ___ (20__). [11] Southwick, Karen (1999). “High Noon: the inside story of Scott McNealy and the rise of Sun Microsystems.” New York [u.a.]: Wiley. pp. 120-122. ISBN 0471297135. [12] Stephen Shankland (January 27, 2010). “Oracle buys Sun, becomes hardware company”. CNET News. [13] Lamonica, Martin (February 13, 2007). “Sun picks GPL license for Java code”. CNet. https://www.cnet.com/news/sun-picks-gpl-license-for-java-code/ [14] Elgin, Ben (August 17, 2005). “Google Buys Android for Its Mobile Arsenal”. Bloomberg Businessweek. Bloomberg. [15] “Original FAQ Questions from Project Launch”. harmony.apache.org. ( February 27, 2011) http://harmony.apache.org/faq.html [16] See Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 974 (N.D. Cal. 2012). [17] See Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 974 at 976 (N.D. Cal. 2012). [18] See Oracle Am., Inc. v. Google Inc., 750 F.3d 1339 at 1352 (Fed. Cir. 2014). [19] See Google, Inc. v. Oracle America, Inc., U.S. Supreme Court case no. 14-410, docketed October 8, 2014. [20] See Oracle Am., Inc. v. Google Inc., No. 3:10-cv-03561 1988 (N.D. Cal. Jun. 8, 2016). [21] See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). [22] See Oracle Am., Inc. v. Google Inc., 886 F.3d 1179 (Fed. Cir. 2018). [23] 17 U.S.C. § 102(a) (2020). [24] See Baker v. Selden, 101 U.S 99 (1880). [25] Id. [26] 17 U.S. Code § 102. [27] See Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991). [28] 1 M. Nimmer & D. Nimmer, Copyright §§ 2.01[A], [B] (1990)§ 1.08[C][1]. [29] See Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991). [30] See Baker v. Selden, 101 U.S 99 (1880). [31] See Kern River Gas Transmission v. Coastal Corp., 899 F.2d 1458 (5th Cir. 1990). [32] See Morrissey v. Procter & Gamble Co., 379 F.2d 675, 678 (1st Cir. 1967). [33] 17 U.S. Code § 107. [34] Id. [35] See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). [36] Id. [37] See Harper & Row v. Nation Enterprises, 471 U.S. 539 (1985). [38] See Kelly v. Arriba Soft Corp., 336 F.3d 811 (2003). [39] See American Geophysical Union v. Texaco, 60 F.3d 913 (2d Cir. 1995). [40] See Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 974 (N.D. Cal. 2012). [41] See Oracle Am., Inc. v. Google Inc., 886 F.3d 1179 (Fed. Cir. 2018). [42] 17 U.S. Code § 107(4). [43] See Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992).

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