This guest post under the RFMLR Blog Series on Evolving Landscape of Intellectual Property Rights is authored by Ms. Niharika Salar, Assistant Professor at NALSAR University of Law, Hyderabad.
Image Credits: https://nordicapis.com/
When Java was brought into existence by James Gosling in 1995, little did he foresee his creation being the crux of a rather lengthy litigation.
The United States Supreme Court gave its much-awaited opinion recently, after a long-drawn courtroom war between tech giants Google and Oracle over copyright issues in the use of Java programming language’s Application Programming Interfaces ("APIs"). Applying copyright law principles over developing technology has always been a challenge for courts, due to which, the Intellectual Property ("IP") Law fraternity was looking forward to this opinion. This blog post seeks to argue that the opinion takes a rather narrow approach, especially while analysing the fair use factors, but at the same time takes a step further towards the welfare theory of copyright.
2. THE STORY SO FAR
Java Platform, Standard Edition (“Java SE”) is a computing platform that is meant for development of portable code for desktop and server environments. The American giant, Oracle Corporation, claims to be the owner of intellectual property in the language and has had an aggressive history of seeking license fees for any unlicensed use. The dependence of more mobile phone models on the Java platform resulted in Oracle gaining a stronger hold in the market. Amongst many interested parties, Google also made multiple attempts to strike a deal with Oracle but was unsuccessful in its endeavour.
Google, nevertheless, used a part of the API code.[i] According to Google, the 37 packages in question comprised tasks that were anticipated to be most valuable to programmers working on mobile applications. Programmers would have to learn a completely new system to perform the same tasks if they didn't copy.
Once Google had a part of the code without Oracle’s consent, other license holders like Samsung and Amazon manipulated their way out of previous agreements.[ii] Consequently, this resulted in Oracle bearing heavy monetary losses, and hence, it made the decision to challenge Google’s use of the technology. Patent claims were rejected at the outset, and limited copyright infringement was found by the jury. Climbing its way up Courts, the Federal Circuit held that the concerned portion is copyrightable and Google’s act can’t be defended under the fair use doctrine. In reviewing this decision, the US Supreme Court assumed that the material is indeed copyrightable.
3. FAIR USE ANALYSIS
Since copyright law has negative aspects of limiting access, the exceptions help pave a way for a more robust IP system. The US Copyright law has been following a more open-ended approach in the form of a four-factor analysis and has been a court developed regime.[iii]
One of the most difficult aspects of this dispute has been the application of this four-factor fair use analysis, which was traditionally believed to be better suited for creative industries. The analysis essentially looks at whether the usage of a copyrighted work can be exempted from legal action via the following 4 factors : (i) what is the purpose and character of the use, (ii) what is the nature of the copyrighted work, (iii) whether a substantial portion of the copyrighted work is used, and (iv) what is the effect of such use on the potential market.
Copyrights were never meant to protect functional elements, patents did that. As a result, applying the fair use approach to computer programmes proved more difficult due to the fact that they typically serve a functional purpose that copyright does not intend to protect.
a) The nature of the copyrighted work
Contrary to previous judgements, this factor was considered first for analysis by the court in a way that it is the operative factor and it controls the entire fair use analysis. Since the larger question was whether any copyright could be claimed for the computer programming language, the court, in this regard, opined that its use is inherently bound together with un-copyrightable ideas (general task division and organization) and new creative expression (Android’s implementing code).
b) Purpose and character of defendant’s use
The word “transformation” has played a key role in shaping this particular factor. Courts in the US have increasingly relied on whether the meaning of the original work has been changed by the defendant in a manner that it is sufficiently transformed. Courts began to offer some relief in cases involving creative aspects like music[iv] and photography[v]. With test and data mining being held fair use,[vi] application of transformation in computer programming language stood as an interesting challenge but was somewhat predictable.
Google’s use of the API intended to create new products which offered programmers an innovative tool for a smartphone environment. In this regard, Google used parts of the API to create a new platform that could be readily used by the programmers, and its use was consistent with creative “progress” (the basic constitutional objective of copyright). The court was of the opinion that a bare minimum amount of API was copied to materialise the new “collection of tasks operating in a distinct and different computing environment.”[vii]
c) Amount and substantiality of the portion used
The predominant question here was whether the declaring code was to be looked at in isolation or in entirety with the software. If one considered the declaring code in isolation, the quantitative amount of what Google copied was magnanimous as the copied declaring code amounted to 11,500 lines. However, since it was a part of 2.86 million lines of code it can be concluded that Google merely copied 0.4% of the entire code.
It was important to see that what and how much Google did not duplicate. This was because the purpose of establishing a distinct task-related system for a different computing environment (smartphones) and familiarity of code with programmers to work on the task-calling function were crucial aspects which suggested so. Therefore, the court believed that fair use can be invoked here as the amount copied by Google was needed to enhance the programmer’s knowledge to write new programmes for smartphones. However, this approach to the third factor potentially invites the lower courts to analyse and determine how much the infringer did not copy – an approach that has been looked down upon in previous cases.[viii]
d) Market Effects
The Court in this criterion decided to not address the word “potential” before market – resulting in what one may argue a wrong analysis of the fourth factor.
Oracle generated their revenues by charging device manufacturers for installing the Java platform, while Google obtained revenues primarily through ad sales. The strategy was to release Android to device manufacturers for free and then use Android as a vehicle to collect data on consumers and deliver behavioural ads.[ix] With a free product available that included much of Oracle’s code, device manufacturers no longer saw any reason to pay for embedding the Java platform.
The idea has often been used to understand the amount of money that the copyright owner may lose. The majority opinion, in this case, noted that the source of any potential loss has to be considered in addition to the amount of the loss. The court also noted that Oracle could have never been able to enter relevant markets due to its poor position in the smartphone market and previous failed attempts to do so.[x] Given the evidence on record, it appeared that Oracle’s loss had nothing to do with Google’s actions. The dissent on the other hand believed that Google essentially eliminated the reason for the manufacturers for paying to install the Java platform. This prima facie had a huge consequence and a huge role in Oracle’s predicament to begin with.
4. THE WELFARE THEORY LENS
The opinion creates some inconclusive precedents for API software developers and content providers alike. The industry continues to wait for all possible consequences to show up. In any case, there is some logic to be found in not making software developers reinvent the wheel, and invest resources to create identical functionality using different forms of expression.
The opinion can also be viewed as dependent heavily on the welfare theory of copyright as it talked about benefits to the society. The principal consequentialist goal of IP laws should be to maximize social welfare, where welfare is considered to be subjective well-being. Therefore, the welfare theory of IP law seeks to encourage society’s interests at large. It also marked an important shift while talking about the impact on the market as it now incorporated the factor of whether denying fair use would be detrimental to society at large. The more socially beneficial the work[xi] at hand was, the more transformative it could be.
Similarly, the fair use holding works up further on the welfare theory as the goal of the fair use defence is to induce optimal production and dissemination of intellectual products. The opinion, in its own sense, also attempts to curb copyright trolls. A copyright troll is usually referred to as any copyright owner enforcing its rights for money-making purposes through litigation, in a rather aggressive or opportunistic fashion. To explain it further, we can study the example of a light socket. The reason one did not have to pay anybody when a light bulb was fixed into a standard socket is because interfaces were considered fair use, and it was needed to be considered fair use for the industrial revolution to happen. If Oracle had won here, companies would have started using copyright to prevent people from re-implementing or interpreting with the APIs they built.
Copyrightability of APIs continues to be demarcated by blurred boundaries, given that the case at hand was a very fact-driven ruling. If at all they were copyrightable, such fair use analysis was not required to begin with. Having expressed serious doubts about the copyrightability of Oracle’s computer code and having concluded that at best it should receive minimal protection, the US Supreme Court examined the fair use analysis in a hasty manner. It argued that Google’s copying is “transformative” (despite the copying of the code for the exact same use), insubstantial (despite it being the heart of Oracle’s work), and innocuous (despite it being used in a directly competing product that generated billions of dollars in revenues while causing billions of dollars in losses for the owner of the copyrighted work).
Given this ruling in place now, it is extremely difficult to predict how and whether any unauthorized copying of an API program like Java would fall under the ambit of copyright infringement by qualifying as fair use. That in itself is very concerning. However, a breather can be taken given the limited reach of this decision. To that effect, the court expressly noted that “We do not overturn or modify our earlier cases involving fair use.”[xii] However, despite the disclaimer, the opinion still manages to raise more questions than answer them. A cocktail of copyright law and policy, the opinion claims to presume copyrightability while showing in its analysis that it does not. The opinion also somehow presents an arguably flawed contrast between copyrightability and innovation while ignoring the importance of licensing copyrighted works as a driver of innovation. The Court also paints a picture that Google would not have been able to further the goal of promoting new expression without copying Oracle’s work. All in all, this ruling has the potential to have dramatic impacts. The fact that the US Supreme Court heard a fair use case for the first time in the last 20+ years, it was bound to cause a stir.
Endnotes: [i] An Application Programming Interface or an API is an important element of any given programme as it helps towards smoother communication between two applications. [ii] Google LLC v. Oracle America, Inc. 593 U.S. ___ 12 (Thomas J., dissenting). [iii] In Gyles v Wilcox (1740) 26 ER 489, the Court of Chancery established the doctrine of “fair abridgement”, which permitted unauthorized abridgement of copyrighted works under certain circumstances. Over time, this doctrine evolved into the modern concepts of fair use and fair dealing. See : Salinger v. Random House, Inc 811 F.2d 90 ; Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417. [iv] See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) [v] See Annie Leibovitz v. Paramount Pictures Corp, 137 F.3d 109 [vi] See Authors Guild v. Google, Inc. - 804 F.3d 202 (2nd Cir. 2015) ; Authors Guild v. HathiTrust, 755 F.3d 87 (2nd Cir. 2014). [vii] Google LLC v. Oracle America, Inc., 593 U.S. ___. [viii] See Harper & Row v. Nation Enterprises, 471 U.S. 539 (1985). [ix] Google LLC v. Oracle America, Inc., 593 U.S. ___ 12 (Thomas J., dissenting). [x] Google LLC v. Oracle America, Inc., 593 U.S. ___31. [xi] For example: criticism, comment, news reporting, teaching, scholarship, or research. [xii] Google LLC v. Oracle America, Inc., 593 U.S. ___35.