“While ‘there is a sense in which all computer code could be described as a method of operating a computer…the Copyright Act as a whole makes clear that computer programs can be protected by copyright, refuting any suggestion that the functional character of computer code suffices to bring it within Section 102(b).'” – Solicitor General’s September brief recommending the Supreme Court deny cert

The Supreme Court has agreed to hear Google’s petition for a writ of certiorari in its long-running case with Oracle. The High Court will decide: 1. Whether copyright protection extends to a software interface; and 2) Whether Google’s use of a software interface in the context of creating a new computer program constitutes fair use.

In March 2018, the Federal Circuit issued its opinion in favor of Oracle in the case. See Oracle America, Inc. v. Google LLC. The Court found Google’s use of Java application programming interface (‘API packages’) not fair as a matter of law, reversing the district court’s decision on the matter. The ruling resurrected a multi-billion dollar copyright case brought by Oracle Corp against Google and was appealed to the Supreme Court in January 2019, after the Federal Circuit denied rehearing in August 2018.

In a press release issued the same day Google filed its petition, Oracle dismissed Google’s move as “a rehash of arguments that have already been thoughtfully and thoroughly discredited” and said that Google’s “fabricated concern about innovation hides Google’s true concern: that it be allowed the unfettered ability to copy the original and valuable work of others as a matter of its own convenience and for substantial financial gain.”

The Solicitor General’s View

A host of amici have weighed in on the case in support of Google and/or granting the petition. In late September, the U.S. Solicitor General (SG) filed a brief at the invitation of the Court in which it said the Court should deny the petition.

The SG’s brief said that Google’s first question presented does not warrant a review because the Supreme Court previously denied Google’s petition seeking review on essentially the same question. In response to Google’s second question, The SG held the Federal Circuit’s ruling to be correct and said that Google’s unauthorized copying of 11,500 lines of computer code verbatim for their own commercial success had harmed the market for the respondent’s Java platform.

The brief went on to conclude that the CAFC’s holding on fair use was limited to the case’s particular facts, making it inapplicable for addressing the application of copyright law to software generally; and that no other considerations favored granting review.

In addressing the copyrightability question, the SG said that “[t]he Court of Appeals correctly held neither section 102(b) nor the merger doctrine forecloses copyright protection.”

Section 102(b) states:

In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

While “there is a sense in which all computer code could be described as a method of operating a computer,” said the SG, “the Copyright Act as a whole makes clear that computer programs can be protected by copyright, refuting any suggestion that the functional character of computer code suffices to bring it within Section 102(b).” The SG further argued that the merger doctrine—which precludes someone from copyrighting an idea that “can only be expressed in a limited number of ways…lest one author own the idea itself”— was not implicated, as there were” ‘unlimited options as to the selection and arrangement’’’of the lines of code that Google copied.

As to the fair-use question the SG said that the CAFC was correct in its holding that the first and fourth factors of Section 107, which outlines the factors for determining fair use, weigh heavily against fair use, and that Google’s criticism of the Court’s approach lacked merit.

Google Responds

Google filed a Supplemental Brief on October 16 in response to the SG’s brief. Google refuted the SG’s arguments, noting that the two specialist departments of the federal government did not sign the brief, the brief failed to engage the opposition of a total of 73 scholars, and it contradicted the SG’s prior invitation brief in the case. The Solicitor General’s previous brief had expressed “important concerns about the effects that enforcing respondent’s copyright could have on software development,” said Google, but advised to wait on granting cert because “those issues ‘are better addressed through petitioner’s fair use defense’ after remand.”

Google added that an additional 175 individuals and organizations filed 15 amicus briefs, highlighting the importance of granting certiorari. The amici arguments demonstrate that the Federal Circuit’s ruling would cause severe harm and hamper future innovation in the software industry, said Google. Furthermore, the SG insufficiently weighed the fact that the case raises an issue on which the High Court has previously granted cert, but was divided four-to-four.

Google’s Supplemental Brief addressed three main arguments for granting cert:

The overriding importance of the questions presented; to determine the copyrightability of software interfaces; and to determine whether the reimplementation of software interfaces may be fair use.

The Upshot

The case will be closely watched by the copyright community. J. Michael Keyes, a partner at Dorsey & Whitney, said “this will likely be one of the most seminal copyright cases in at least a generation, if not longer.” In addition to ruling on copyright protection for software and the scope of fair use, Keyes said that another issue that could be implicated in the case is damages. “If Google is ultimately liable for infringement, the damages claim could well be into billions of dollars,” Keyes said. “It’s a massive sum that underscores what is at stake and the importance of the issues.”

Professor Dennis Crouch of Patently O said that the high-profile copyright case could be “the biggest patent case of the year.”

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