By Shane Wax
While many eyes are focused on the Supreme Court and the appointment process of Amy Coney Barrett, the Court of eight began its Fall session this month, taking oral argument on several cases, including one important and complex copyright case: Google v. Oracle.
This case is the first software copyright case taken up by the high Court since its 1996 split (non-) decision in Lotus Development v Borland, and the first “fair use” case since the Court addressed musical parodies in 1994. The decision in Google v. Oracle, a case that was first commenced back in 2010, could have a huge impact on software and technological interoperability, earning it the label “Lawsuit of the Decade.”
Specifically, the case presents two questions under US copyright law — first, whether copyright protection extends to software interfaces, and if so, whether a jury could determine that use of a software interface in the context of creating a new computer program constitutes fair use. The district court initially sided with Google back in 2012, finding software interfaces not copyrightable under the idea-expression merger doctrine, but the Federal Circuit Court of Appeals reversed in 2014, and the Supreme Court declined to take up the case at that juncture. The case was sent back to a jury to determine the question of fair use, but after a jury ruled in favor of Google’s fair use defense in 2016, the Appeals Court reversed as a matter of law in 2018. In November 2019, the Supreme Court agreed to review both issues and initially scheduled argument for March 16, 2020, but arguments were postponed until October 7 in light of the pandemic.
Here we take a brief look at both legal questions and analyze oral arguments in an attempt to predict the outcome.
The Question of Copyrightability of Software Interfaces
The first question – the copyrightability of API packages – presents a threshold question and is the more complicated issue the Court has been tasked with addressing, and the issue most of the Justices focused on at oral argument. First, we will offer a simplified primer on the software at issue in this case, namely Java Application Programming Interfaces, or “API,” and how the courts below addressed the issues. Finally, we will look at how the issue was addressed earlier this month at oral argument.
This case revolves around the Java programming platform, and while a basic understanding of how it works is helpful, one does not need to be a computer programmer to understand this case. Simply put, Oracle’s predecessor-in-interest, Sun Microsystems developed the Java platform, language and “Virtual Machine,” which enables software developers to write computer programs or applications using source code (i.e., human-readable computer code) that follows certain linguistic and syntactic rules of the Java language, which when run through or input into the Java Virtual Machine, will achieve the desired function, regardless of underlying computer hardware, thus promoting interoperability between computer operating systems. Java is open source and free to use, meaning anyone is free to write any new program in Java, provided they return the fruit of their labor to the community at large.
Sun also “wrote a number of ready-to-use Java programs to perform common computer functions and organized those programs into groups it called ‘packages’,” which “allow programmers to use the pre-written code to build certain functions into their own programs, rather than write their own code to perform those functions from scratch. They are shortcuts.” Packages were then broken down into classes and methods, but ultimately “[e]very package consists of two types of source code—what the parties call (1) declaring code; and (2) implementing code. Declaring code is the expression that identifies the prewritten function and is sometimes referred to as the “declaration” or “header.”
Oracle offers three type of licenses to programmers who want to use their API packages, including a free “General Public License” or “open source license,” and a paid commercial license for businesses that wish to keep their source code secret rather than commit to open source community rules. Google attempted, but failed, to obtain a commercial license to use Oracle’s APIs for use in its Android phones. Instead, Google “decided to use the Java programming language to design its own virtual machine—the Dalvik virtual machine (“Dalvik VM”)—and to write its own implementations for the functions in the Java API that were key to mobile devices.” However, Oracle claims that 37 of Google’s 168 API packages copied the “structure, sequence, and organization” of Oracle’s API packages – a la an “elaborately organized taxonomy” – Google concededly copied some of the declaring code, or “headers,” verbatim under the guise of familiarity to users and promoting interoperability, and much of Google’s implementing code paraphrased the implementing code in Oracle’s API packages.
Importantly, the district court found that these individual “headers” of declaring code were not copyrightable under both the prohibition against copyrighting short phrases and under the idea-expression merger doctrine, and thus, it found that the source code that Google concededly literally copies was not copyrightable and was free to be copied. However, the Court of Appeals held that the “merger cannot bar copyright protection for any lines of declaring source code unless Sun/Oracle had only one way, or a limited number of ways, to write them,” noting that Oracle and Google each had “unlimited options as to the selection and arrangement of” the copied declaring code, as well as in the naming and structure of the packages, methods and classes. On the question of “short phrase,” the Court of Appeals cautioned that a novel could be broken down into nothing but a string of short phrases, but the “question is not whether a short phrase or series of short phrases can be extracted from the work, but whether the manner in which they are used or strung together exhibits creativity.” The Court of Appeals also held that the structure, sequence and organization of the API packages was a copyrightable taxonomy as opposed to a non-copyrightable system or method.
Chief Justice Roberts dove into the copyrightability question right as arguments began and many of the questions focused on when merger is analyzed – at the time the original expression is created or at the time it is copied. If the former, the merger question depends on the number of ways the author could have expressed his or her idea; if the latter, then a unique and original expression can later merge with the underlying idea. Though difficult to read, the Court appeared wary of the latter suggestion and Justice Alito cautioned that Google’s merger argument was circularly flawed. In this sense, the Court seemed wary of adopting a pro-interoperability rule based on merger doctrine.
On the other hand, the oral argument transcript suggests the Court was equally unimpressed with Oracle’s argument that the structure, sequence and organization of its API packages was protectable. Justice Sotomayor compared the arrangement of packages, methods and classes to the organization of a grocery store, much like the lower courts compared it to the organization of a library down to which book go on which shelves, noting that competing grocers are free to copy the layout of items within the store. The Chief Justice compared it to the seminal case, Baker v. Selden, and an author trying to prevent people from using in practice the bookkeeping system described in his book.
This suggests at least a few Justices agree with the district court that the overall structure of the API packages is not copyrightable under Section 102(b).
The Questions Surrounding Fair Use
Perhaps sensing that this case could be determined on the threshold question, oral argument focus heavily on the second question presented, which touches on the doctrine of fair use, which, as the Court of Appeals noted, “has long been considered the most troublesome [issue] in the whole law of copyright.’” While this case demonstrates why American courts have grappled with the issue – both on the question of who makes the determination (judge or jury) and how to apply the non-exhaustive statutory factors, it might not beget any new guidance from the High Court.
On the question of who decides fair use, the Court of Appeals began by discussing the standard of review and level of deference, if any, owed to the jury, emphasizing the historical fact that fair use was developed by courts as an equitable affirmative defense before Congress codified it into law, citing precedential decisions arising out of bench trials and summary judgment motions, and noting the Supreme Court’s silence on the question of what, if any, role a jury has in deciding fair use. Ultimately, the Court concluded that while fair use is a “mixed question of fact and law,” the jury’s role was limited to finding disputed historical facts, while any inferences or conclusions to be drawn from those facts – including the ultimate determination of whether a use is fair – is up to the Court to decide.
Since it was an error for the district court to let the jury render a conclusion on the legal question, and since a court of appeals is free to substitute its own legal opinions for those of a district court judge, the Court of Appeals reviewed the fair use determination “de novo,” and suffice to say, in applying the statutory fair use factors to this case, the Court of Appeals reached the opposite conclusion. Specifically, the Court of Appeals disagreed with the district court’s determination that Google’s use of Oracle’s API packages, traditionally used on desktop computers, into mobile phones, was transformative.
At oral argument, Justices Alito and Gorsuch questioned whether “de novo” review of fair use was proper or whether the Court should adopt a standard of review that is more deferential to juries and remand. In response, Oracle’s advocate suggested it was not necessary or warranted because “this is a question that courts have primacy,” citing the fact that the record contained “over a hundred fair use cases decided by courts on summary judgment in a 30-year time span. . . . [but] only five cases that even went to a jury in a similar 30-year span.” Of particular concern was whether a jury should be allowed to decide if a use is “transformative” or whether “the nature of” the infringing work, the first statutory factor, is a purely legal issue for the court to decide. While Oracle’s advocate pressed that Google’s use was not transformative and not fair as a matter of law, the Justices demonstrated reluctance to wholesale take away a jury’s ability to make those determinations.
Ultimately, however, this case seems more likely to be decided on the copyrightability question, with interoperability being saved by the freedom to use similarly structured software packages.
 Oracle Am., Inc. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018) (“Oracle II”), cert. granted sub nom., Google LLC v. Oracle Am. Inc., No. 18-956 (Nov. 15, 2019).
 See Lotus Dev. Corp. v. Borland Int’l, Inc., 516 U.S. 233 (1996) (per curium, 4-4).
 See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).
 See Ward, Aaron, Google v. Oracle: Silicon Valley Braces for “Lawsuit of the Decade” as Google Petitions for Cert to decide API Copyrightability, Harvard Jolt Digest (Mar. 13, 2019), https://jolt.law.harvard.edu/digest/google-v-oracle-silicon-valley-braces-for-lawsuit-of-the-decade-as-google-petitions-for-cert-to-decide-api-copyrightability; Donahue, Bill, The Google-Oracle Copyright War, Explained, Law360 (Oct. 6, 2020), https://www.law360.com/articles/1317193/the-google-oracle-copyright-war-explained; Rigg, Robert S. and Sudip K. Mitra, Google v. Oracle and the Future of Software Development, 10 Nat’l L. Rev 283 (Oct. 9, 2020) https://www.natlawreview.com/article/google-v-oracle-and-future-software-development
 Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 974 (N.D. Cal. 2012) (“Oracle I”), rev’d, 750 F.3d 1339, 1348 (Fed. Cir. 2014) (“Oracle II”), cert. denied, 135 S.Ct. 2887 (2015).
 Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D. Cal. June 8, 2016) (“Oracle III”), rev’d, 886 F.3d 1179 (Fed. Cir. 2018) (“Oracle IV”).
 Oracle II, 750 F.3d at 1348-49 (quoting Oracle I, 872 F. Supp. 2d at 977, 982).
 Oracle II, 750 F.3d at 1351.
 Oracle I, 872 F. Supp. 2d at 1000.
 Oracle II, 750 F.3d at 1361.
 Id. at 1363.
 Oracle IV, 886 F.3d at 1191 (quoting Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1170 (9th Cir. 2012); Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939)).
 Oracle IV, 886 F.3d at 1192-96 (citing Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985); Fisher v. Dees, 794 F.2d 432, 435-36 (9th Cir. 1986); Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 800 (9th Cir. 2003); SOFA Entm’t, Inc. v. Dodger Prods., Inc., 709 F.3d 1273, 1277 (9th Cir. 2013); Seltzer v. Green Day, Inc., 725 F.3d 1170, 1175 (9th Cir. 2013); H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. 65–66 (1976), U.S. Code Cong. & Admin. News 1976, 5659, 5679–80).
 Heritage Reporting Corp., Supreme Court Oral Argument Transcript in the matter of Google LLC v. Oracle Am., Inc., No. 18-956, 49:09-51:25, 58:09-60:16, 79:01-79:18, available at https://www.supremecourt.gov/oral_arguments/argument_transcripts/2020/18-956_kifl.pdf