What started largely as a patent spat is set to become a software industry blockbuster case after the Supreme Court granted cert late last week in Google v Oracle.

The nine Justices will now have the opportunity to weigh in on a dispute which goes to the heart of what constitutes fair use and the extent to which copyright protection applies in the context of computer code.

The fight between the two tech giants has unfolded over almost a decade with the Court of Appeals for the Federal Circuit (CAFC) twice overturning lower court decisions (including one jury verdict) which had gone in Google’s favour.  

The Supreme Court will now consider two questions posed by Google:

  1. Whether a copyright protection extends to a software interface.
  2. Whether, as the jury found, petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

Oracle originally sued Google in the Northern District of California on seven counts of patent infringement. Five of those were eventually withdrawn and the court found against Oracle on the remaining two.

But the original complaint also included a claim of copyright infringement over Google’s use of the Java language’s application programming interface (API) declarations in its Android operating system. According to the CAFC, those declarations are not only subject to copyright but also Google’s use of those declarations does not constitute fair use.

Given the ubiquity of software in almost every industry, the implications of the case could reverberate well beyond Silicon Valley. The stakes led several academics, such as Stanford’s Mark Lemley and Dennis Crouch at Patently-O, to hail the significance of the Supreme Court's decision to grant cert. "The copyright case of the century,” insisted Lemley, while Crouch went with “big, big, big”. As we ponder the appropriate descriptor here are IAM's key takeaways from the cert grant.

More trouble for the Federal Circuit?

Any time the Supreme Court grants cert in a major IP case concerning a decision from the Federal Circuit it is easy to assume that the lower court is going to be reversed and called out for its decision making. You only have to look at the morass of 101 decisions over the last decade, and the flak that the CAFC has taken there, to predict that it can expect more flak in Google v Oracle.

Google is obviously itching for the US's highest court not to hold back. In its cert petition, the company sniped that the CAFC has “no specialised expertise” in copyright law and referred to its pair of decisions as a “devastating one-two punch at the software industry”.

The search giant then added: “If allowed to stand the Federal Circuit’s approach will upend the longstanding expectation of software developers that they are free to use existing software interfaces to build new computer programs.” The implication is clear that here is a court that has little understanding of the realities of software engineering.

So can we expect another barn buster with SCOTUS laying waste to the CAFC’s reasoning? Not so fast, cautions Professor John Duffy of the University of Virginia. Duffy is a former Supreme Court clerk so is very familiar with what goes into a cert decision and he suggests that taking a case does not mean that SCOTUS has made up its mind.

“The cert process is very, very fast,” Duffy wrote in an email. “The justices really don’t focus too much energy on the merits of the case but instead think about the case’s importance and the need for review.” In other words all is not quite yet lost for the CAFC - or for Oracle.  

Finding a middle ground

As in any case that the Supreme Court hears, oral arguments will give us some sense of how the justices might be leaning. They might also offer clues as to what kind of opinion they’re set to craft.

According to Villanova University law professor Michael Risch, SCOTUS should seek to stake out new ground in its final opinion. “My concern continues to be that there is no voice for the middle ground position that I have been advocating for years - namely that APIs can be protectible, but that they cannot be used to find a use such as this one infringing,” he explains.

Risch points to copying object code directly without re-writing for a developer’s own use as one example that could be labelled as infringing. “The problem with saying that it’s not copyrightable is that you can’t use it to show infringement in those cases where the copying goes too far,” Risch adds.

With his comments in mind it’s worth remembering that a SCOTUS decision is about both which side the majority comes out for and how it tailors its opinion. The latter can often be where the long-term implications of a case lie.   

An industry united

The case pits two of Silicon Valley’s largest and best-known companies firmly against each other. But it’s clear that most sympathies in the software industry as a whole lie firmly with Google. Among the briefs urging SCOTUS to take the case, Microsoft’s is certainly worth a read. Like Google’s cert petition, it is clear on the implications for the industry should the Fed Circuit’s approach be allowed to stand.

That approach, the software company argued, “will upend the longstanding expectation of software developers that they are free to use existing software interfaces to build new computer programs”. The brief then adds: “Developers who have invested in learning free and open programming languages such as Java will be unable to use those skills to create programs for new platforms - a result that will undermine both competition and innovation.”

Oracle has countered that Google’s infraction is the “epitome of copyright infringement”, but there are few other voices in the industry backing it up. Instead, it is pretty certain that a large chunk of the software engineering community is now going to have its say on the merits of the case, no doubt hoping to push the justices into Google’s corner.

The likes of Microsoft coming out firmly in support of its one-time patent rival underlines the extent to which the giants of the tech industry now walk in lockstep on many of the biggest IP issues.

What, no patents?

Despite its beginnings, this case is now firmly in the realm of copyright That, though, doesn’t mean that patent law is off the table. In its cert petition, Google argued that the CAFC’s approach “risks disturbing the balance between copyright law and patent law”; and that the court has “effectively provided blanket copyright protection to an entire class of computer code”.

To make its case Google cites the 19th century dispute of Baker v Selden, which was a copyright fight over a form of bookkeeping. In that suit, SCOTUS suggested that the plaintiff should have pursued a patent to protect its work, although as Dennis Crouch points out over at Patently-O, any attempts today to seek such protection immediately run into a 101-sized problem.    

“The innovations at issue in the case sit near the fuzzy borders of copyright and patent law,” Crouch explained in relation to Google v Oracle. If the subject matter debate has taught us anything, “fuzzy borders” can lead the IP market into very uncertain territory.

How the Supreme Court now handles the interplay between patents and copyright will be fascinating to watch.   

A seismic term

The decision to grant cert in Google v Oracle has catapaulted the dispute to the top of the list of most significant IP cases to be heard in the US before the end of June next year.

But there are potentially a few others waiting in the wings, including several related to 101 in the shape of Berkheimer and Vanda Pharmaceuticals. If the Supreme Court agrees to hear either it could transform an already consequential term into one of possibly seismic proportions.

Both cases have big implications for an IP community in the US that has been struggling for years over what constitutes patent eligible subject matter. Should America’s highest court get involved in either (let alone both) it may also have a significant impact on the debate currently raging on Capitol Hill around 101 legislation.  

This article first appeared in IAM. For further information please visit  https://www.iam-media.com/corporate/subscribe