Oracle v. Google: Now the Fair Use Argument for Java APIs

Now that the Supreme Court has decided not to review Oracle America Inc. v. Google Inc., the long-running lawsuit returns to the Federal Circuit Court in San Francisco, where Google will have a chance to argue that its use of 37 Java APIs -- now considered copyrightable becuase of the Supreme Court's pass -- in its Android operating system falls under the doctrine of fair use.

Oracle has won a significant argument here, but not the lawsuit. You could say that Google has a Plan B. But what exactly is "fair use," and how do you prove it in court?

The U.S. Copyright Office defines fair use as "a legal doctrine that promotes freedom of expression by permitting the unlicensed use of copyright-protected works in certain circumstances." Federal courts decide fair use issues using four criteria:

• the purpose and character of the use (is it commercial, nonprofit, educational, etc.)

• the nature of the copyrighted work (is it a novel, movie, song, technical article, news item)

• the amount and "substantiality" of the portion used (how much of it was used and was that the "heart" of the work)

• the effect of the use upon the potential market value of the work

There's also the question of whether the use was "transformative." Transformative uses, the Copyright Office says, "are those that add something new, with a further purpose or different character, and do not substitute for the original use of the work."

"Fair use is a fact-specific inquiry," explained attorney Case Collard via e-mail. "It depends on what the item is that is copyrighted and how the entity claiming fair use is using it."

I reached out to Collard, a partner at Dorsey & Whitney, who specializes in intellectual property disputes and developing strategies for safeguarding intellectual property rights, to get his take on the latest development in the Big O versus Big G saga. He said the Federal Circuit's decision, which will now stand, laid out something of a road map for how Google might apply a fair use argument.

"In my opinion, the biggest problem for Google is the commercial nature of its use [of the APIs]," he said. "That is generally a strike against finding fair use. Its best argument is probably interoperability -- in other words, it should be fair use because Google must use the APIs in order to make its products interoperable."

Both the Federal Circuit and the White House recognized that Google was entitled to a fair-use defense. At the high court's request, the U.S. Solicitor General actually weighed in with an amicus curiae brief.

"Petitioner argues that its copying of respondent's code promoted innovation by enabling programmers to switch more easily to another platform," he wrote. "But it is the function of the fair-use doctrine... to identify circumstances in which the unauthorized use of copyrighted material will promote rather than disserve the purposes of the copyright laws." And he concluded: "Although petitioner has raised important concerns about the effects that enforcing respondent's copyright could have on software development, those concerns are better addressed through petitioner's fair-use defense…"

But the legal eagles at the Electronic Frontier Foundation (EFF), a California-based international nonprofit that advocates for digital rights, argue that fair use should not be the only defense against API copyright claims.

"Fair use is a complex and potentially expensive defense to develop and litigate," EFF legal director Corynne McSherry and special counsel Michael Barclay wrote in a blog post. "While Google has the financial resources to take that defense to trial, few start-ups have the ability to do so. The Federal Circuit's decision thus could deter new companies from competing with a large, litigious competitor by using the latter's APIs..."

The EFF is one of the staunchest opponents of API copyright. In an amicus brief filed in support of Google last year on behalf of 77 computer scientists, the organization articulated some widely held fears about the consequences of the appeals court's decision that the APIs are protected under U.S. copyright law. "The Federal Circuit's decision poses a significant threat to the technology sector and to the public," the brief stated. "If it is allowed to stand, Oracle and others will have an unprecedented and dangerous power over the future of innovation. API creators would have veto rights over any developer who wants to create a compatible program -- regardless of whether she copies any literal code from the original API implementation. That, in turn, would upset the settled business practices that have enabled the American computer industry to flourish, and choke off many of the system's benefits to consumers."

IDC analyst Al Hilwa is less apprehensive about the potential impact of API copyright.

"The impact will be felt in various ways," Hilwa told me. "APIs are likely to be more explicitly associated with terms of use, for example, and potentially with more lawsuits relating to interoperability. But it also means that developers wanting to bring alternative implementations of a system may choose to be less imitative of the behavior of the system, and more innovative by creating entirely different competing systems. I think we just have to wait and see how it plays out."

"In the end, it may not matter to developers much whether APIs are copyrightable, if (big if) they can be used under the fair use doctrine," Collard said. "In other words, after this is all said and done, if the fair use doctrine allows developers to use APIs without fear of a lawsuit, then it would have a very similar practical effect."

"Fair use" is codified in the U.S. in section 107 of the Copyright Act of 1976.

Posted by John K. Waters on July 8, 2015