These Are the Droids You’re Looking For: Google’s Copying Not Fair Use

Stephen Carlisle March 29, 2018

In a significant ruling on March 27, 2018, the Court Appeals for the Federal Circuit ruled that Google’s copying of 11,500 lines of code from the Java programming language was not fair use. ¹

Plaintiff Oracle America, the owner of Java, originally was seeking $8.8 billion dollars in damages, though they are now expected to ask for more than that. ² The Court has remanded the case back to the District Court in California for a trial on damages. ³

The dispute arises out of one of Google’s most frequent tactics: take what you want without permission, and duke it out in Court later. ⁴

Google initially approached Oracle about a license to use the Java programming language in software it was developing for its smartphone. It had acquired Android, Inc. as a first step to doing so. ⁵ It wanted to use the widely available Java as a means for third parties to write apps for the new operating system. ⁶ Google had been unsuccessful in writing the “application programming interface” and thus needed to use Java’s APIs. ⁷ When negotiations stalled, Google simply copied the code anyway, ⁸ and released the Android operating system in 2007.

Google insured the wide adoption of its (slightly purloined) operating system by giving it away for free to mobile device manufacturers. ⁹ The effect on Oracle was immediate and severe. There was a massive switch away from using the Java platform, and those that did stay with Java demanded steep discounts. ¹⁰

Oracle filed suit in 2010. Since that time, the case has literally bounced around the Court system for the next 8 years, with sudden reversals of fortune for each side.

The first trial ended in a finding of infringement against Google. The trial Judge reversed that ruling, holding that the APIs were not copyrightable. In the appeal, the Federal Circuit then reversed that ruling, saying that the APIs were copyrightable. Google filed a petition for certiorari with the Supreme Court, who in response asked for an advisory opinion from the Solicitor General. The Solicitor General agreed that the APIs were copyrightable, leading to the Supreme Court denying the petition. The case then headed back to California to determine whether Google’s copying was (all together now) fair use. The jury did return a finding of fair use. In the inevitable appeal that followed, the case wound up back before the Court of Appeals for the Federal Circuit, who now ruled the copying not to be fair use as a matter of law, and sent the case back to California for a trial on damages. ¹¹

If you are wondering (as did I) how a copyright case wound up at the Court of Appeals for the Federal Circuit, it is because Oracle’s case originally contained a patent claim in addition to the copyright claim. Even though the patent claim has since been removed from the case, its original presence means the appeal goes to the Federal Circuit, which has exclusive jurisdiction over patent appeals. ¹² Even though the Federal Circuit is obliged to follow 9^th Circuit precedent, Google probably feels that they would have gotten a different result in their “home court.” Google apologist, the Electronic Frontier Foundation, makes no bones about this point, whining that the Federal Circuit was a playing field slanted in favor of the Plaintiff. ¹³

Since this is a fair use case, and we’ve got Google as a defendant, it’s not hard to guess how Google is going to defend its verbatim copying: (all together now) it’s “transformative.”

The Court spends 9 pages addressing Google’s argument, so there can be no complaint that every point was not seriously considered. Yet, in the final analysis, Google loses every single point.

“Google’s use of the API packages is not transformative as a matter of law because: (1) it does not fit within the uses listed in the preamble to § 107; (2) the purpose of the API packages in Android is the same as the purpose of the packages in the Java platform; (3) Google made no alteration to the expressive content or message of the copyrighted material; and (4) smartphones were not a new context.” ¹⁴

“Google’s primary argument on appeal is that Android is transformative because Google incorporated the declarations and SSO of the 37 API packages into a new context—smartphones. But the record showed that Java SE APIs were in smartphones before Android entered the market. Specifically, Oracle presented evidence that Java SE was in SavaJe mobile phones and that Oracle licensed Java SE to other smartphone manufacturers, including Danger and Nokia. Because the Java SE was already being used in smartphones, Google did not ‘transform’ the copyrighted material into a new context and no reasonable jury could conclude otherwise.” ¹⁵

It is reassuring that a Court finally looks to the wording of Section 107 guidance. The primary reason for fair use is to promote criticism, commentary, news reporting and the like. Too often, fair use is stretched to absurd lengths to justify the result the Court wishes. ¹⁶ The whole argument that an exact copy merely placed into a different setting, somehow “transforms” does not hold true to the purposes of fair use of promoting criticism, commentary and news reporting.

But the most absurd argument put forth by Google was the assertion that because it gave away the Android operating system for free, and its revenue was from advertising, that this made it a non-commercial use. ¹⁷ Under this loopy theory, every pirate website in the world could not be held liable for copyright infringement for allowing users to download pirated works for free. Of course Google, and its apologist the EFF, would love for this to be true, but the Court rules decisively this is not the case.

“First, the fact that Android is free of charge does not make Google’s use of the Java API packages noncommercial. Giving customers ‘for free something they would ordinarily have to buy’ can constitute commercial use (citation omitted)… [T]he question ‘is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price.’(citation omitted)… [T]o the extent we must assume the jury found Google’s use of the API packages to be anything other than overwhelmingly commercial, that conclusion finds no substantial evidentiary support in the record. Accordingly, Google’s commercial use of the API packages weighs against a finding of fair use.” ¹⁸

If the use is commercial, and non-transformative, this is a big strike against Google, because, as we have seen time and time again, Courts tend to let the “transformative” label turn into a trump card.

The Court then turns to the second factor: the nature of the work used. There was conflicting testimony as to whether the APIs were more functional or artistic. The Court held that a reasonable jury had sufficient evidence to determine that the nature was primarily functional, and that this would tend to favor a finding of fair use. ¹⁹

The third factor, the amount and substantiality of the taking, winds up being ruled neutral to perhaps weighing against fair use. ²⁰

The amount copied by Google was 11,500 lines of code. The Java SE platform has 2.86 million lines of code. So, it would seem that the portion used is very small. The problem is that only 170 lines of code were necessary to write in the Java language. Google copied 11,500 lines, or 11,300 lines more than were necessary. ²¹

“Google sought ‘to capitalize on the fact that software developers were already trained and experienced in using the Java API packages at issue.’ (citation omitted) But there is no inherent right to copy in order to capitalize on the popularity of the copyrighted work or to meet the expectations of intended customers. Taking those aspects of the copyrighted material that were familiar to software developers to create a similar work designed to be popular with those same developers is not fair use.” (emphasis added) ²²

As to the fourth factor, market harm, the Court found plenty of evidence of harm to Oracle.

“Specifically, the jury heard testimony that Java SE was already in smartphones, including Blackberry, SavaJe, Danger, and Nokia. That Android competed directly with Java SE in the market for mobile devices is sufficient to undercut Google’s market harm arguments. With respect to tablets, the evidence showed that Oracle licensed Java SE for the Amazon Kindle. After Android’s release, however, Amazon was faced with two competing options—Java SE and Android—and selected Android. The jury also heard evidence that Amazon later used the fact that Android was free to negotiate a steep discount to use Java SE in its newer e-reader. In other words, the record contained substantial evidence that Android was used as a substitute for Java SE and had a direct market impact. Given this evidence of actual market harm, no reasonable jury could have concluded that there was no market harm to Oracle from Google’s copying.” ²³

“Android’s release effectively replaced Java SE as the supplier of Oracle’s copyrighted works and prevented Oracle from participating in developing markets. This superseding use is inherently unfair.” ²⁴

But what was probably the killer nail in the coffin for Google, was its admission that it could have written its own APIs for Android, but was having problems, so it resorted to copying Oracle APIs. ²⁵

“Google could have furthered copyright’s goals of promoting creative expression and innovation by developing its own APIs, or by licensing Oracle’s APIs for use in developing a new platform, it chose to copy Oracle’s creative efforts instead. There is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.” ²⁶ (emphasis added)

Again, we need to kill once and for all the idea that people cannot create unless they are able to copy what someone else has done.

As the EFF whines “the Ninth Circuit generally protects innovation by recognizing that copying of a functional work, like an API, is often necessary and appropriate in order to make something new.” ²⁷

How in the world is something “new” when you copied it from someone else? Copying is not creativity! ²⁸

What now? A second petition to the Supreme Court is a foregone conclusion. Whether the Court would choose to hear it is anybody’s guess. It might be a good opportunity to reign back in the mess that is transformative use. But barring that, the case will return to California for a trial on damages. I’m sure Oracle will have plenty of evidence as to their lost licensing revenue for Java, and on the other side there’s the fact that Google realized $42 billion dollars in revenue from advertising on Android. ²⁹

Oracle has found the droids they were looking for. And it’s going to get very expensive for Google.