On April 5th in Google, LLC v. Oracle America, Inc. the Supreme Court issued a 7 to 2 ruling favoring the alleged infringer of copyrighted software on fair use grounds. Justices Thomas and Alito dissented, agreeing with the position of the Federal Circuit Court of Appeals: that Google’s use of Oracle’s copyrighted software violated the most important factor in establishing fair use – the effect of the copying on the market for the copyrighted work. This blog discusses the decision which has created considerable consternation for the owners of registered software copyrights. Although the commentator infrequently agrees with Justices Thomas and Alito, in this case she does.
This blog discusses the decision and its potential impact on software copyright infringement lawsuits.
A. Why Was the Fair Use Doctrine an Issue?
Fair use is defense used by parties accused of copyright infringement. The Fair Use Doctrine is codified in § 107 of the Copyright Act.
Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.
In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
Google alleged that copying of nearly 11,500 lines of code from Oracle’s Java SE program constitutes fair use.
B. The Vexing Decision. The majority’s reasoning to find in favor of Google based on the fair use doctrine is perplexing. Regarding the nature of the copyrighted work, the Court stated that Google’s usage of the infringing code was limited to smartphones, i.e., Google’s Android. According to the majority, “Google, through Android, provided a new collection of tasks operating in a distinct and different computer environment.” Why? Because was developed for use with desktop and laptop computers. Never mind that smart phones are in essence hand-held computers as software patent law recognizes, namely that smartphones, laptops, and smartphones are indistinguishable, general purpose machines. The Court seemed to overlook the fact that Google’s usage of the copied code is commercial to the tune of billions of dollars a year.
The Court also inexplicably focused on the amount of code Google copied, namely only 11,500 lines of the JAVA SE program, rather than the substantiality of the portion of the code. Substantiality generally means – how important is the part of the work copied in the infringing work? In this case, the 11,500 lines of code was that portion of the Sun Java API that allowed programmers to use the task-calling system that was most useful to programmers working on applications for mobile devices. In other words, the infringed code was essential for speeding up the development of Android apps.
Google argued that its copyright infringement was somehow justified because it “wanted millions of programmers, familiar with JAVA, to be able to easily to work with its new Android platform” and develop applications for the Android. The Court bought this rationale of Google’s purported interest in benefitting millions of programmers who are familiar with Java as justification of its copying of the Java SE program. According to the Court’s rationale, Google’s 3rd party beneficiary argument on behalf of “millions of developers” gave Google the unfettered right to copy Java’s code rather than negotiate a licensing agreement with Oracle. Yet, Google intentionally and knowingly used copyrighted code to enhance its APP profile in the marketplace of mobile devices.
Perhaps the Court’s most egregious error, as the dissenting opinion asserts, was its failure to give proper consideration to factor 4, the effect of the use [of the copyrighted content] upon the potential market for or value of the copyrighted work. In a 1985 case, Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985), the Court had held that the effect of the use upon the potential market for or value of the copyrighted work was the most important factor in a fair use analysis. That earlier case also stood for the proposition that only 300 to 400 words of an entire Presidential memoir [or entire work] can be infringing when the value of the copyrighted work is affected by the taking. Fast forward to 2021 where the Court has effectively overturned its own precedent because clearly the “mere” 11,500 lines Google decided to use in the multi-billion dollar Android platform has without question destroyed Oracle’s ability to license. And why should other parties now seek a license with Oracle when apparently the 11,500 lines of code are free for the taking? Nor is Google “giving away” the infringed code. Instead that code is contributing to Google’s bottom “Android” line.
C. Should Software Be Copyrighted After Google v. Oracle?
First with patent law and now copyright law, the Court’s tunnel vision negatively impacts intellectual property law and the rights of inventors and creators. The Court seems to have forgotten that the Founding Fathers recognized the importance of rewarding creativity and innovation. It is that very creativity and innovation that has resulted in the technical advances that have been made during the past two over two hundred years including the technology so many have relied on during the pandemic including the courts. The Founding Fathers had the idea that creators and innovators willing to spend time and money in realizing a dream should be rewarded rights such as the right to take legal action to prevent others from the unauthorized usage of a patented invention, copyrighted works, etc. Absent action by Congress to correct the actions taken by the Court in its numerous patent law decisions including the infamous Alice and Prometheus decisions and now this Google copyright decision, that lofty idea will continue to be eroded by cynicism and bad players.
As an IP attorney, the commentator has registered software codes with the U.S. Copyright Office on behalf of clients. After this decision, is there any point in obtaining a registered software copyright?
It is my hope that the Google decision turns out to be an aberration. In the meantime, software developers and/or the companies they work for have the following options to protect their code: trade secret maintenance, software registration, or a combination of the two. Copyright registration is not costly compared to, e.g., patent procurement. Therefore, copyright registration should still be considered. At the very least, registration is a prerequisite to commencing a copyright infringement lawsuit. Moreover, Google relied on the argument that its actions were not really on its own behalf but on the behalf of developers which the Court bought. In the end, this disingenuous argument may well not be applicable in many situations. Nevertheless, the plaintiff in any software infringement lawsuit must be familiar with the Google decision and be prepared to thwart a fair use defense.
Intellectual property law is a complex area of the law. Contact us at 305-279-4740 for a complimentary consultation on protecting your inventions, creative works, brands, and proprietary information through patents, copyrights, trademarks and trade secrets or our litigation services involving intellectual property disputes. We represent both individuals and business entities. Our mission is to serve innovators and creators in protecting the fruits of their hard work and ingenuity through our Client Services Creed: Conscientious, Rigorous, Energic, Empathetic, and Diligent legal services.
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