In this article, Roshni Singh, pursuing Diploma in Entrepreneurship Administration and Business Laws from NUJS, Kolkata discusses the Oracle-Google case.

Introduction

Oracle America, Inc. v. Google, Inc.
Court	United States Court of Appeals for Federal Circuit
Full case name	Oracle America, Inc. v. Google, Inc.
Decided	March 27, 2018
Citation(s)	750 F.3d 1381, 750 F
Judge(s) sitting	Kathleen M. O’Malley, S. Jay Plager, Richard G.Taranto
Damages sought	upward US$ 8.8 billion

The most trending and endless lawsuit of copyright and patent claims has again hinged at the judgment of the federal appeals court of United States. The judgement stated that Google had violated the copyrights of Oracle when it made the custom version of Java platform i.e. API (Application Programming Interface) which is used for building software applications with the help of routines, protocols and tools and use to facilitate communication between various software components, for its Android operating system.

This case started in 2010 by Oracle after it acquired the Sun Microsystem (the company which originally built the Java Language and the platform). Where Google used the Java language and its API in a cleanroom version. Oracle filed a lawsuit claiming infringement of both copyright and patent.

The district court in 2012 ruled that the APIs are not copyrightable. And that was overturned by the appeals court to decide by the jury that the Google’s use of Java APIs is within the ambit of “fair use” under the law.

In 2016, Jury gave its decision in the favour of Google. Oracle appealed against the decision of the jury and then the appeals court gave the decision against Google ruling that Google violated the copyrights of Oracle

Background

Sun microsystem originally developed Java in 1990, which was an Object-Oriented language. It runs with a principle of “Write Once Run Anywhere” which means it needs to be written just once, which can be run on different platforms without making changes in the Java program. Only the Java interpreter is changed depending upon the platform. Google purchased Android in 2005 and started developing its Android operating system which included the use of Java language and API also, by using it in a cleanroom version for its own Android platform. Google decided to take the Java API’s instructions for how to program all that code that does the parsing and converting source code into object code themselves, and they did it in a cleanroom environment, so that Oracle’s code is not included in it, yet the API has remained the same as the Java apps would not work without the same API. Prior to this Google and Sun Microsystem were initiated to deal for the license. But due to disagreement on the conditions of both the parties, the deal failed to arrive at a decision and Google failed to get the Java license.

Later in 2010, Oracle acquired Sun Microsystem for US$ 7.4 billion and it continued developing Java and pursued licensing opportunities and in the same year, it filed a lawsuit claiming both copyright and patent violation on Google.

Trial Phase

Phase 1

The first district court trial tried by the District Court for the Northern District of California in 2010, when Google was sued by Oracle for patent and copyright violation. Oracle accused Google of being aware of their Android developing without a Java license and also illegally copied its APIs which were 37 in number and hence created the infringement of copyright. Oracle sued for both pecuniary damages as well as an injunction to use the claimed materials by Google.

The Jury in 2012 ascertains that the copyrights of Oracle has been infringed by Google related to code, structure, sequence, organization, APIs and also range check function but still it was a question that whether it was within the ambit of fair use or not.

The same Jury also decided the patent claims which comprised claim for two patents:

• US6061520A- method and system for performing static initialization, and
• USRE38104E1- method and apparatus for resolving data references

And here the Jury didn’t found infringement in any of the patent claims.

This case was handed over to Judge Alsup who himself learned the Java language to better understand the technicalities of this case and he related the Java language to a ‘bookshelf’. The final verdict given by Judge Alsup was that “anyone is free under the Copyright Act to write his or her own code to carry out exactly the same function or specification of any methods used in the Java API”.

Appeal filed by Oracle

Oracle filed an appeal against the decision of District Court which was assigned to the United States Court of Appeals for the Federal Circuit. The court keeping in mind the Copyrights Act in mind concluded that “the overall structure of Oracle’s API packages is creative, original and resembles a taxonomy”. Therefore the Court held that the SSO (Structure, Sequence and Organization) of an API is copyrightable.

The Appeals Court remanded the case to the District Court for Second Trial and to get the matter of ‘fair use’ concluded.

In 2014 Google filed a petition in Supreme Court to hear the case which was denied by the Supreme Court in 2015.

Phase 2

The appeals court remanded the case to the District Court to start a new trial on the matter of “fair use”. Again the Jury found out that the Google didn’t infringe Oracle’s copyright as the use of Java’s API were under the ambit of fair use.

As against to the verdict of Jury, Oracle filed an appeal in 2016. The appeal was heard by the United States Court of Appeal for the Federal Circuit.

The Appeals court came on a verdict that the fact that Google has copied the copyrighted API packages and also it copied the SSO (structure, sequence and organization) of Java API packages. The Court found out that Google didn’t follow the prescribed criteria of fair use and hence it doesn’t come under the ambit of fair use and was just a non-transformed reuse. It was pointed that “the fact that Android is free of charge does not make Google’s use of Java API packages noncommercial”. And in the counterpart, Oracle charges a fee for licensing its API for who wants to use it and also imposes strict parameters on licensees.

And the situation created huge damages to Oracle and hence Court found it commercial and was not fair use. The Appeals Court ruled in the favour of Oracle and remanded the case to the District Court of Northern District of California to decide that how much of pecuniary damages shall be paid by Google to Oracle.

Violation of Oracle’s copyright

Now the main question arises that whether the use of Java infringes the copyright of Oracle or not?

In the U.S. to copyright a work there should be two parameters to be fulfilled which are as follows:

1. It has to be work of requisite level of creativity.
2. It has to be fixed into a tangible medium of expression.

As far as computer programs are concerned they are under the definition of literary works as under the Copyrights Act of U.S.

Copying of both literal as well as non-literal elements of a computer program are prohibited from copying, it also includes SSO of the program.

Terms of Free and Open Source Licenses are also enforced through Copyright law.

Oracle allowed the use of java freely to the developers but licensed it to a certain including in mobile devices. Google used Java language including its API to develop its Android operating system which had to compete with iOS which already have been on the market for few years.

Here Oracle sued Google as soon as its acquisition of Sun Microsystem regarding copyright and patent claims. And Google claimed that it was unaware of any patent infringements and that its use of freely available API’s was within fair use.

Jury decided in the favour of Google. But the Jury didn’t give a final verdict on the matter of “fair use”.

The appellate court gave the decision in favour of Oracle. And concluded that the use of Java language and its API package is not under the attributes of fair use.

Taking the Copyrights Act and the context of fair use into consideration it can be said that Google has violated the copyrights and patents of Oracle. Though Sun Microsystem didn’t show any obligation on the use of Java by Google but Oracle as soon as it acquired Sun Microsystem it sued Google as it used the Java for commercial purpose and the Android Operating System was a competing product.

Conclusion

An almost a decade-long Tech-War which seems to have been arrived at a decision now. Though Google can approach Supreme Court against the decision so arrived by the Appellate Court.

This lawsuit has also been criticized by many people around the world, most of them are found saying that Google could have licensed Java at much lesser cost than his legal expenses which it spent over years.

Patrick Lenihan, spokesman of Google had said in a statement that “We are disappointed that the court reversed the jury finding that Java is open and free for everyone, this type of ruling will make apps and online services more expensive for users.”

The whole case matter revolves around APIs and ‘fair use’ of the intellectual property of Oracle.

It will be now interesting to watch the further step of Google, whether it stops now and pay off the damages or it will again go for appeals.

Taking the whole scenario into consideration it is likely to again get a completely different decision by the Supreme Court.