Posted by on February 29, 2020 9:50 am
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By Thomas Carey, Sunstein LLP


In its current term, the Supreme Court will decide Google v. Oracle, a copyright case that has huge implications for the software industry. The smaller issue, potentially involving billions of dollars, is whether Google’s Android operating system infringes Oracle’s copyright in Java. The larger question is whether copyright covers application programming interfaces (APIs)—portions of code that often serve as doorways to chunks of software that carry out specific tasks; and whether it covers a complex cluster of programs that interoperate by means of their APIs.


Fundamentally, the court must decide whether Java’s APIs (and by extension, whether any APIs) can rise to a level of creative expression that warrants copyright protection. The answer should depend upon two questions: First, was the code creative? And second, are other solutions available to developers? To borrow from analogies used to argue both sides of the case, are the APIs more like a functional key, which is the only design that can open a lock? Or are they akin to a blueprint that shows the design of a building, one of many designs that an architect could create? In the case of Java, the answer is undeniably the latter.


Java is both a virtual machine environment and a programming language that allows developers to write code that can run in a variety of computer environments without adaptation. Sun Microsystems (later absorbed by Oracle) spent hundreds of millions of dollars creating Java, ultimately making it the core of its business. Sun made Java available under an open-source license, attracting a world-wide army of volunteers who contributed to it—and millions of programmers who used it to produce their software.


Google was unwilling to accept an open-source license to Java because it wanted to offer its own proprietary versions to cell phone makers. However, the license barred Java from being redistributed as proprietary software. And Google could not agree with Sun on the terms of a proprietary license because Sun insisted that Google adhere to the “Write once, run anywhere” philosophy underpinning Java. Unable to negotiate a license, Google went ahead and copied 11,500 lines of API code from Oracle’s Java 2 Standard Edition (J2SE) platform. Google gave Android away for free, devastating the market for Sun’s mobile version of Java.


Google now makes two principal arguments as to why its actions were not an infringement. First, it argues that APIs are inherently not protectable, citing previous court cases favoring interoperability over copyright. Second, it cites fair use, an exemption to copyright that permits the limited use of the copyrighted material, but generally only for purposes that do not harm the market for the original work. The Federal Circuit Court of Appeals rejected both of those arguments, which are now before the Supreme Court.


Copyright does not protect ideas or functional items, but only the expression of an idea or the artistic element of a work. The degree of art required to qualify for copyright protection is not high. The Supreme Court has held that white pages of a telephone directory do not qualify, but the yellow pages do because of their organization of products and services into categories. The structure, not the content, was deemed protectable.


Oracle’s infringement claim is based not only on the direct copying of portions of Java, but more significantly upon the reproduction of the structure of Java. The copied sections of Java included declaring code of over 6,000 programs that were organized in clusters of “classes” that were then organized into “packages.” The analysis and design that went into this particular organizational structure is the heart of the case. Is this structure protectable as a creative work under copyright, or is it denied protection as a “system,” which by its nature is not protectable?


The following diagrams compare the interconnections among Java’s classes and the corresponding interconnections of the portions copied by Google:




Java’s taxonomy is at least as creative as that of the yellow pages, and the diagram shows that Google’s Android directly copied substantial portions of it.


For its part, Oracle has received support from both the Obama and the Trump administrations, yet Google’s perspective dominates the academic commentary. At bottom, most legal scholars are advancing two policy arguments: first, that interoperability should trump copyright in order to promote rapid progress in software. Second, Java’s APIs have become the standard for thousands of independent software engineers to build upon, and neither the standard, nor the network effects created, should be proprietary to Oracle because that result would stifle competition.


The first argument leads to a slippery slope: if denying APIs copyright protection advances software development, why protect any software by copyright? Why not let developers decompile Microsoft Office and create derivatives based upon it? Clearly, this option is not available to the courts because software is expressly covered by the copyright statute.


There is no doubt – and Google has admitted – that Java’s APIs and structure were both highly creative and expensive to develop. For authors, copyright is supposed to protect the value of their creations, at least for a while. There is no sound policy reason to deny Oracle the advantage of the value inherent in the Java APIs and structure.


The second policy argument—the ownership of network effects—is more interesting, especially because some of the value of Java was created by independent programmers. However, there is a ready answer to those concerned about the monopolistic quality of networks: open networks can be created using new standards developed by industry associations, which is a common practice. Essentially, if companies like Google don’t want to license Java, they are free to build their own alternatives. 


After all, Google’s literal copying of Java was not the result of a real technical need. It was the result of a desire to allow for the nearly instantaneous development of thousands of cellphone apps to compete with Apple’s iPhone. If Java programmers had to master a different lexicon to create these apps, it would have slowed Google down. Now that Google has reaped the benefit of its shortcut, it wishes to deny Oracle compensation for the benefit that it derived from copying Java. Neither sound policy nor any principle of fairness compels this result.


Google’s arguments ultimately fail to address the underlying reality that Java’s APIs and their organizational structure – the architecture of JAVA – are expressions of creativity, not merely functional code. And as creative expressions, they should be protected under copyright.


Thomas Carey is a partner at Sunstein, LLP, an intellectual property law firm in Boston, MA.