This article is written by Priyanka Saraswat who is pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.
Table of Contents
Introduction
Earlier last week, the greatest IP battle of recent times finally came to an end, with Google emerging as the winner, as adjudged by the U.S. Supreme Court. The case that began as early as August, 2010, was considered the first major legal fight in what was dubbed as the “smartphone wars” by the media and went through a lot of back and forth between the District and the Federal Courts, before being filed in the Supreme Court and being finally decided in Google’s favour on 5th April, 2021.
The focus of this article is to analyse the take of the judgment regarding the doctrine of Fair Use with a focus on the copyrightability of the subject matter of the case. The case has brought copyright laws and the fair use doctrine into a grey area with a need for newer interpretations and hereby we attempt to examine whether the U.S. Supreme Court judgment was successfully able to shed some light on it.
(While the original case included a claim of patent infringement, it was ruled in Google’s favour since the beginning and was later dropped from the debate and therefore shall not be discussed further in this article.)
API and Subject Matter
The subject matter of this long-lasting case was the unauthorized use of over 37 packages or 11,500 lines of the Application Programming Interface (API) of the Java programming language (presently owned by Oracle America, Inc.) in developing the Android system by Google. API is essentially a software intermediary that allows two programmes or applications to interact with each other. We use APIs in almost all of our digital movements throughout the day.
For Java, these APIs document the computing libraries for use with the language itself, which was made open source i.e. freely available with the language but required that any commercial derivative works were licensed. Google had essentially replicated the sequence and structure of the overall code by copying the declaratory methods that can call upon the methods as stored in the Java libraries. While it is the subject matter of the case, it is not very essential to perfectly understand the whole system of it to know the legal standpoints argued over the course of the last decade.
Background
In the original suit for copyright infringement filed by Oracle in 2010, the District Court for the Northern District of California ruled that the subject matter was not copyrightable in the first place even though the court agreed that Google had infringed the rights of Oracle in the APIs. The case was then appealed by both the parties to the United States Court of Appeal for the Federal Circuit and in 2014 the Federal Court ruled that just because the API also performed functions does not mean that it cannot be awarded copyright protection, essentially overruling the order given by the District Court earlier, but the matter to the extent of fair use was remanded back to the District Court for further consideration since earlier the jury had deadlocked on the question.
The second District Court trial that began in 2016 was focused on whether Google’s actions fell within the ambit of Fair Use, and the jury unanimously agreed with Google’s Fair Use defence. Oracle appealed the matter once again to the Federal Court where the previous decision of the second District Court trial was overturned in Oracle’s favour on the idea that Google’s copying of the API was too extensive to constitute fair use and was remanded yet again to the District Court for the matter of damages.
It is after this long duration of back and forth that Google filed a writ of Certiorari before the Supreme Court regarding the matters of copyrightability and fair use and we arrive at the judgment in question. The Supreme Court had previously refused to admit the writ of Certiorari in 2014 after the first Federal Court order, but granted a hearing on the matter the second time and finally gave an order with a 6:2 majority (while one judge did not participate in the judgement).
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Should APIs be copyrightable?
Copyrightability is a question that the U.S. Supreme Court refused to delve into and assumed the existence of based on the findings of the Federal Court. It’s only the minority opinion in the judgement that gives any time and effort in finding out the answer to this question which is unsurprisingly and clearly affirmative and based simply on statutory interpretations. Nevertheless, even if APIs are not standalone computer programmes, there is still hard work of a person behind it and there is as much creativity and novelty involved in the creation of it as a cinematograph film or a novel. One school of thought around this idea propounds that just because they are functional, one should not be able to take away the copyrightability of the creative uniqueness of it.
Rules of Law involved
Copyright
American Copyright Laws state that in no case can copyright protection be afforded to any procedure, process, system or method of operation. Which is exactly the reason that the copyrightability of APIs was disputed in the beginning; and it was only after the Federal Court adjudged that there was a creation of alternative expression in a computer programme and it did not, therefore, limit the number of ways it could be expressed (as per the Merger Doctrine). This was what helped in the determination that Java APIs were unique enough to not be precluded from the protection of copyright, leading to the copyrightability of the API becoming an undisputed fact of this case going further. Even the Supreme Court in its judgement assumed copyrightability and focused mostly on whether Google’s use of the data fell under Fair Use or not.
Fair use
This whole debate boils down to this doctrine used as a defence against infringement, and as a defence, it is a fairly strong one because it emerges from the need for protection of public interest and innovation. The American understanding and use of this doctrine stand on four factors, as per Article 17 the United States Copyright Laws Section 107 – purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of use, and market harm to copyrighted work. While each of these factors can’t be taken at face value, the factorization of fair use does indeed heavily rely on just these four. In the present case, while adjudging Google’s fair use of Oracle’s copyrighted material, the U.S. Supreme Court concluded that Google used only what was necessary to allow programmers to put their accrued talents to work in creating new and transformative works.
India v. US
The Indian understanding of copyrightability of computer programmes and the doctrine of fair dealings that we follow are derived from the statutory provisions of the Copyright Act, 1957. While computer programmes come under the purview of literary works for the definition of Copyrights, its usage, the rights attached to it, and the exceptions from infringement are all distinct. If the present case was filed and adjudged from the standpoint of Indian Laws, Section 52 (1) (ab) of the Copyright Act, 1957 would have come into play which provides that any action necessary to obtain essential information for interoperability with other programmes by a lawful possessor provided that such information is not otherwise readily available shall not constitute an infringement of copyright.
While Indian and American legal sensibilities on the matter of fair use may differ, the final result of this battle would have essentially been the same in either jurisdiction, if Google’s interoperability claim is to be focused upon, that is. Interoperability is however only a claim and was not proven beyond doubt in this case where the focus was pulled more towards the substantiality of use and its impact on the market, therefore the standing of this judgment in the Indian legal scenario is shaky at best.
What did the U.S. Supreme Court Say?
Fair Use is considered a mixed question of fact and law by the Court in this judgement and it is said that the nature of work at issue favours fair use considering that the copied lines are inherently indivisible from the non-copyrightable idea in the API and therefore unlikely to undermine the copyright protection awarded to computer programmes. Concerning the purpose and character of the use the greater question is whether the use was transformative, that is, “does it add something new with a further purpose or different character” and the Court concluded that Google’s purpose was to create a task-based system for the different computing environment of smartphones and to create a platform that would help achieve that objective.
The Court brings up the doctrine of de minimis while bringing attention to the fact that the 11,500 lines copied by Google form only 0.4% of the entire API library at issue while in the same breath stating that the copied code amounts to virtually all the declaring code needed to perform hundreds of different tasks. With the fourth factor of “market harm,” the Court was of the view that Google’s Android was never a market substitute for Java SE along with the fact that Oracle would also benefit from the reimplementation of Java’s interface into a different market. The Court also noted that upholding copyrightability, in this case, would risk causing creativity related harm to the public. This together was the majority ruling of the Court delivered by Justice Breyer joined by five other judges on the quorum while two other judges filed a dissenting opinion.
The dissenting opinion of Justices Thomas and Alito only supports the majority opinion on the idea that fair use being a question of fact and law, the court was entitled to review it de novo, but not much else. The distinction that the majority opinion creates between declaring code and implementing code is the first point of contention between the two opinions on the basis that the declaring code is central to Java’s business model and that neither of the two can be given more or less weightage while deciding upon copyrightability. The interpretation awarded to “transformative” by the majority was disagreed upon by the minority for the reason that a transformation requires creative addition to the work while in the present case it was a mere verbatim copy just on another platform.
In deriving from the previous findings and that of the Federal Court which stated that the portions copied by Google were technically the heart and soul of the subject matter, the minority argued that it leads to the copying being qualitatively substantial. On the fourth factor, the dissenting opinion focuses on the harm done to Oracle’s business in direct response to Google’s actions and notes that just because Oracle was facing difficulties in the smartphone market, does not mean that Google’s action would have indirectly benefited them.
The dissent, in my opinion, is a more logically and effectively sound one and could possibly in the future pave way for a different interpretation of these laws and maybe even overturning of the judgment.
Conclusion
The majority and minority opinion of the U.S. Supreme Court seems to be siding with the technological world and legal world respectively. While for the tech world, it’s a major win and another affirmation for the way the world currently works, for the legal world the ideas of Copyright and Fair Use have been somewhat distorted and will need further debate and interpretation.
Detaching the problem from its subject matter for a minute, we are left purely with the law that brings out one question – does the public advantage of an act of infringement have more weight than the rights of the ones who own the work? The question has been answered in affirmative by the U.S. Supreme Court in a way that feels like it diminishes the power that Intellectual Property Rights grant.
A constant argument, in this case, has been that considering the growth and innovation it fosters, rigid application of Copyright Laws should be avoided, however rigid application of anyone’s rights is what the people demand from any law that governs them. But, does this interpretation of the legislative intent in return not harm the drive of innovation in the programmers themselves when the precedent has been set that in favour of scientific development, the protection afforded to them can be disregarded. While it might be a win for innovation, the same can’t be said about innovators.
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