“If the Supreme Court either rejects Google’s petition or accepts the appeal and affirms in favor of Oracle, expect an uptick in software infringement litigation.”
On Monday, the U.S. Supreme Court invited the United States Solicitor General to file a brief expressing its views in the long-running case of Google LLC v. Oracle America Inc. The case highlights the complexities of protecting software via IP rights.
As with patents, the courts often struggle to apply copyright concepts to software, leaving companies bleeding time and resources. Determining what can be protected and what can’t be is complex—even for appellate courts.
“These software piracy cases are convoluted because there can be both literal and nonliteral copying, as shown by the Google v. Oracle case,” said Brian Darville, chair of the trademark and copyright practice group at Oblon. “It’s critical for companies to legally safeguard their software and ensure they’re not infringing on their competitors.”
“Although the Federal Circuit limited its ruling to the facts of the case, the decision casts a shadow over current software development, as the practice of working with other companies’ API codes is widespread,” said Mitchell Stein, an intellectual property group and litigation department partner at Sullivan & Worcester. “If the Supreme Court either rejects Google’s petition or accepts the appeal and affirms in favor of Oracle, expect an uptick in software infringement litigation. Developers will be forced to choose between designing their own API code or paying Oracle—and others—for licenses.”
As we move into the digital future, we will be surrounded by software code and APIs—whether it resides in devices in our pockets, our vehicles, or our refrigerators.
“This fight, like earlier fights in copyright, is not so much about money as it is about control,” said Dave Davis, research analyst for Copyright Clearance Center. “In that way, it might almost be seen as a primarily political contest, of which the court actions are merely a single aspect.”
The DMCA’s Impact on Software Piracy
According to the U.S. Copyright Office, Congress enacted the Digital Millennium Copyright Act (DMCA) in an effort to update national laws for the digital age and to facilitate robust development and worldwide expansion of electronic commerce, communications, research, development, and education.
“The DMCA seeks to advance two mutually supportive goals: The protection of intellectual property rights in today’s digital environment and the promotion of continued growth and development of electronic commerce,” the Copyright Office website reads. “The act attempts to accomplish these priorities through the interaction of two carefully crafted imperatives. As a means of preventing the theft of copyrighted works, the act affords copyright owners legal protection and remedies against unauthorized circumvention of technological measures employed to prevent unauthorized access to copyrighted works.”
The DMCA gives vendors of computer software a set of legal tools to prevent piracy and copyright infringement, according to Stoel Rives LLP. But to take advantage of those tools, a vendor must implement technological measures that “effectively control access” to a copyrighted work, or “effectively protect a right” of the copyright owner, such as use of passwords and encryption.
The provisions of the DMCA makes it impermissible to circumvent or create a means of circumventing any technology meant to protect a copyrighted work.
“Simply put, circumventing any technological protections for copyrighted work, or creating or trafficking any means of circumvention is not allowed under the DMCA,” said Craig S. Horbus, partner, Brouse McDowell. “However, the act does allow for limited exemptions and exceptions, such as testing, research, protection of minors, and nonprofits.”
And while the DMCA is a powerful and intimidating legal tool, it does not obviate the effectiveness of how software copyrights can help battle software piracy.
“The DMCA anti-circumvention provisions provide an important weapon in the plaintiff’s arsenal: the anti-circumvention provisions give plaintiffs a second and separate means of asserting claims,” Stein said. “Even if copyright infringement is ultimately not proven, if the alleged copier circumvented various anti-copying protections, including deletion of metadata, they may still be liable. It is common to see copyright plaintiffs send demand letters seeking damages both for copyright infringement and DMCA violations.”
Register Copyrights As Soon As Possible After Publishing
It may be common sense, but copyright lawyers cannot emphasize enough the importance of computer software owners registering their copyrights as soon as possible after they publish their software.
“Registering your copyrights is a necessary prerequisite for filing a lawsuit for copyright infringement,” said Craig R. Smith, partner, Lando & Anastasi, LLP. “The Supreme Court recently confirmed in the Fourth Estate case that no action for infringement may be brought until the copyright is registered with the Copyright Office. “Copyright owners should register important copyrights upon creation because the Copyright Office can take over six months to register the copyright. Any delays in registering a copyright will delay the enforcement of the copyright.”
Of course, in a copyright case, whether about software or otherwise, the burden is on the copyright holder to enforce their rights.
“If someone infringes on the creator’s work, it is up to the creator to take legal action,” Horbus said. “A creator is unable to file a lawsuit to protect their work unless the copyright is registered with the U.S. Copyright Office. Expedited registrations are costly, so waiting until an infringement occurs can be costly.”
And the sooner that copyrights are filed and awarded, the sooner the copyright holder may obtain damages.
“By registering the work as soon as the software is published—prior to any infringement or within three months of publishing—the creator may be able to recover attorney fees and court costs as well as statutory damages of up to $150K per infringement.” Horbus said. Oracle, for example, is seeking roughly $1 billion in damages related to its copyright claims.
“Registering as soon as possible is important to ensure that the creator is eligible for these damages and awards of fees so that the costs of litigation are lessened.”