On November 15, the Supreme Court granted certiorari in Google v. Oracle, indicating potential resolution on the contentious litigation that has been dubbed Silicon Valley’s “Lawsuit of the Decade.”i On January 6, 2019, Google filed its Petitioner Brief, with Respondent Oracle’s brief due next month.

Background

As followers of this litigation will recall, Oracle sued Google in 2010, alleging Google’s use of the Java programing language and declarations (specifically 37 Java APIs) in building the Android platform amounted to copyright and patent infringement.ii A victory for Oracle would not only result in significant damages for unpaid royalties, but also impact the future of API use. At the District Court, a jury determined Google did infringe the copyright as to the compilable code for the 37 Java API packages, and then deadlocked on the issue of whether the use constituted fair use. The jury found no copyright infringement as to the documentation for the Java API packages, but found infringement as to one snippet of code. However, on the issue of copyrightability of the APIs generally (which was simultaneously tried to the presiding District Court judge), Judge William Alsup concluded that APIs were not copyrightable in the first place as a matter of law.iii The jury found no patent infringement.

On appeal, the Federal Circuit considered the Copyright Act’s legislative history explaining that literary works subject to copyright protection include computer programs to the extent that the expression of original ideas is distinguished from the ideas themselves.iv The Federal Circuit reversed, holding that the structure, sequence, and organization of an API is copyrightable and remanded on the issue of whether Google’s use was a permissible fair use.v Following this reversal, Google filed its first petition for writ of certiorari, with the Supreme Court’s inviting the U.S. Solicitor General to express the United States’ views regarding whether the petition should be granted. The Court denied the petition in accordance with the Solicitor General’s position that no review was necessary.

On remand from the Federal Circuit, a jury determined Google’s use of the 37 Java APIs was protected by the fair use doctrine. Oracle appealed and the Federal Circuit overturned the jury verdict holding that, as a matter of law, Google’s use was not protected by the fair use doctrine.vi

Google’s second and current petition for a writ of certiorari raises two issues: (1) Whether copyright protection extends to a software interface; and (2) whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

What’s Next

When viewed alongside its June 2019 grant of certiorari in Georgia v. Public Resource Org., Inc.vii concerning the copyrightability of legislative annotations in light of the government edicts doctrine, the Supreme Court’s grant of certiorari may indicate a willingness to re-examine copyrightability. The Court’s 21st century copyright jurisprudence has generally favored strengthening protections for copyright holders.viii Indeed, its initial refusal to grant Google’s first petition for certiorari following the Federal Circuit’s holding that APIs are copyrightable at least passively reinforced a broad approach to copyrightability.

The Court’s most recent copyright decisions rely on textualist reasoning and were both unanimously decided. It upheld the lower court’s reliance on the plain text of 17 U.S.C. § 411(a) requiring “registration” (rather than application for registration) to occur before commencing an infringement suit in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et al.I,ix and limited the statutory damages for copyright infringement to those six categories of costs provided in the federal statute authorizing district courts to award costs in Rimini Street, Inc., et al. v. Oracle USA, Inc., et al.x Although the present matter does not present so obvious a conclusion as Fourth Estate and demands a more technical analysis than required in Rimini Street, the Justices’ textualism in both cases instruct followers of this matter to give particular credence to the parties’ textual arguments. Although much of the narrative surrounding this litigation has focused on the practical impact on technology and innovation,xi the litigants focus briefing on the Copyright Act’s text and judicial interpretation. Google’s petition for certiorari cites the Copyright Act’s exclusion of “method of operation[s]”xii and the correlating legislative history arguably demonstrating Congress’ intent “‘to make clear that the expression adopted by the programmer is the copyrightable element in a computer program’ while ‘the actual processes or methods embodied in the program are not within the scope of the copyright law.’”xiii Oracle, too, presents at least one textualist argument, pointing out that the Copyright Act covers “literary works,” defined as works “expressed in words, numbers, or other verbal or numerical symbols.”xiv

The Court’s last attempt to consider whether innovation in the software space was entitled to copyright protection ended in deadlock,xv but the court has since replaced six justices who appear willing to reface this challenge. Justice Kavanaugh has entered the fray of copyright jurisprudence by authoring the recent Rimini Street, Inc. decision and before his appointment Justice Gorsuch faced the issue of copyrightability of new technologies in the 10th Circuit, where he faced the issue of whether a party held a valid copyright on digital models.xvi He drew guidance from prior Supreme Court reasoningxvii regarding the copyrightability of photographs, finding instructive the Court’s application of copyrightability standards to the new technology of the day.xviii Justice Gorsuch’s conclusion in Meshwerks, that digital models can possess the originality required to be fully protectable in copyright but the particular digital models were not copyrightable might predict his approach to the copyrightability issue in Google v. Oracle.xix

No matter the outcome on the copyrightability and fair use questions raised in Google’s petition, the decision in this case is a much anticipated resolution to the decades-long dispute and could mark a new beginning for the use of software interfaces.