The Supreme Court Opinion in Google v. Oracle: The Fair Use Mess? Still a Mess

Stephen Carlisle April 8, 2021

On Monday, April 5, 2021, the Supreme Court of the United States released its long awaited opinion in the decades long dispute between Google and Oracle. ¹ I have written about this case before. ² Back then, I wrote:

“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. It wanted to use the widely available Java as a means for third parties to write apps for the new operating system. Google had been unsuccessful in writing the ‘application programming interface’ and thus needed to use Java’s APIs. When negotiations stalled, Google simply copied the code anyway, 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.  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.” ³

After the lawsuit was filed, the case bounced around the Court system for the next 8 years, including two trips to the Court of Appeals for the Federal Circuit. Google had previously petitioned for certiorari to the Supreme Court after the first opinion of the Federal Circuit, only to be refused. ⁴ For whatever reason, after the second opinion of the Federal Circuit, the SCOTUS decided to hear the case. ⁵ It heard oral arguments on October 7, 2020.

I wish I could say that the opinion was the picture of clarity, but it is not. What it really wants to do is rule that the declaring code is not copyrightable. Unable to cobble together a majority agreement on this issue, it leap-frogs the question and then shoehorns the non-copyrightability argument into its fair use analysis, using such hints as “thin copyright.” Along the way, the Court announces holdings that contradict past case law, and make vast generalizations about “the public good” while at the same time insisting that the opinion does not “overturn or modify our earlier cases involving fair use — cases, for example, that involve ‘knockoff’ products, journalistic writings, and parodies.” ⁶

The case involved two hotly contested issues: was Oracle’s “declaring code” copyrightable and if so, was Google’s copying fair use. ⁷

The Court spends a full three pages of the opinion explaining how the contested declaring code at issue operates. Then it drops the bomb that it will not decide if the declaring code is copyrightable.

“Google’s petition for certiorari poses two questions. The first asks whether Java’s API is copyrightable. It asks us to examine two of the statutory provisions just mentioned, one that permits copyrighting computer programs and the other that forbids copyrighting, e.g., ‘process[es],’ ‘system[s],’ and ‘method[s] of operation.’ (citation omitted). Google believes that the API’s declaring code and organization fall into these latter categories and are expressly excluded from copyright protection. The second question asks us to determine whether Google’s use of the API was a ‘fair use.’ Google believes that it was.

A holding for Google on either question presented would dispense with Oracle’s copyright claims. Given the rapidly changing technological, economic, and business-related circumstances, we believe we should not answer more than is necessary to resolve the parties’ dispute. We shall assume, but purely for argument’s sake, that the entire Sun Java API falls within the definition of that which can be copyrighted. We shall ask instead whether Google’s use of part of that API was a ‘fair use.’” ⁸ (emphasis added)

This is just wrong. Fair use is an affirmative defense. Who said that? You did, SCOTUS. Twice. ⁹ As an affirmative defense, it does not even arise as a consideration until such time as copyright infringement is proven. So the fair use claim cannot even be considered, much less decided, unless infringement has been proven, not just “assumed.” When did the Supreme Court get rule on a point raised on appeal by an “assumption” made “purely for argument’s sake”? When did the SCOTUS get to “decide” one of the two contentious issues before it, without actually fully deciding it?

I bring this up because under Article III, Section 2 of the Constitution, the SCOTUS does not have the power to issue “advisory opinions” based on hypotheticals. It is only supposed to decide active “cases and controversies.” To wit, a day after issuing this opinion, the SCOTUS dismissed as moot a case involving former President Trump and his Twitter feed, including whether Twitter was a public forum, and whether former President Trump had the power to block people. ¹⁰ But under the reasoning of this Court, it could well say, “We shall assume, but purely for ‘arguments sake,’ that Trump is still President, and still has a Twitter feed,” and proceed to decide the case.

How did we get to this point? Why not decide the issue of copyrightability? Most likely because the Justices could not weave together a majority resolving the two main issues. The decision was made by a 6-2 majority. Perhaps the split went like this:

Not copyrightable and fair use – 3 Justices

Copyrightable, but fair use – 3 Justices

Definitely copyrightable and not fair use – 2 Justices

So instead of a real decision, we get what is in effect, an advisory opinion.

Except the Court wants to play it both ways. Having said that they are expressing no opinion on whether the declaring code is copyrightable, it then casts doubt on that issue to bolster its fair use argument.

“In our view, for the reasons just described, the declaring code is, if copyrightable at all, further than are most computer programs (such as the implementing code) from the core of copyright.” ¹¹ (emphasis added)

Next, the opinion contradicts prior rulings on the precise issue being decided.

The opinion states when gauging the amount and substantiality of the copying:

“Several features of Google’s copying suggest that the better way to look at the numbers is to take into account the several million lines that Google did not copy.” ¹²

But yet there’s this ruling:

“As the statutory language indicates, a taking may not be excused merely because it is insubstantial with respect to the infringing work. As Judge Learned Hand cogently remarked, ‘no plagiarist can excuse the wrong by showing how much of his work he did not pirate.’” (citation omitted)

Who said that? You did, SCOTUS. ¹³

Plus, the Oracle opinion makes factual errors, and not insignificant ones.

The opinion states:

“Finally, given programmers’ investment in learning the Sun Java API, to allow enforcement of Oracle’s copyright here would risk harm to the public. Given the costs and difficulties of producing alternative APIs with similar appeal to programmers, allowing enforcement here would make of the Sun Java API’s declaring code a lock limiting the future creativity of new programs. Oracle alone would hold the key.” ¹⁴

Except that is simply not the case. As the dissent points out, both Apple and Microsoft had created their own declaring code, yielding highly competitive products, without resorting to copying. Not only that, but Google resorted to copying only after “…Google sought a custom license from Oracle. At least four times between 2005 and 2006, the two companies attempted to negotiate a license, but they were unsuccessful, in part because of ‘trust issues.’” ¹⁵

Other problematic language:

“To the extent that Google used parts of the Sun Java API to create a new platform that could be readily used by programmers, its use was consistent with that creative ‘progress’ that is the basic constitutional objective of copyright itself. Cf. Feist, 499 U.S., at 349–350, 111 S.Ct. 1282 (‘The primary objective of copyright is not to reward the labor of authors, but ‘[t]o promote the Progress of Science and useful Arts’ (quoting U. S. Const., Art. I, § 8, cl. 8)).” ¹⁶

This quote is taken completely out of context. Feist concerned the copyrightability of the telephone book. It was there that the SCOTUS ruled that there was no “sweat of the brow” theory of copyright. In other words, it did not matter how hard the author worked, if the end result was not capable of copyright protection. That is what the phrase “reward the labor of authors” refers to. Here is the sentence that immediately precedes the quote:

“It may seem unfair that much of the fruit of the compiler’s labor may be used by others without compensation.” ¹⁷

Copyright is certainly designed to protect the labor of authors, when that labor results in copyrightable material. So yet again, the majority’s unspoken conclusion that the declaring code was not copyrightable in the first place, despite its “assumption” to the contrary, seeps into and colors the fair use analysis.

And as to the market effect:

“First, evidence at trial demonstrated that, regardless of Android’s smartphone technology, Sun was poorly positioned to succeed in the mobile phone market. The jury heard ample evidence that Java SE’s primary market was laptops and desktops. (citation omitted) It also heard that Sun’s many efforts to move into the mobile phone market had proved unsuccessful” ¹⁸

So, having failed to enter the mobile phone market successfully, Oracle should be forced to subsidize Google’s business in the same exact market?

It seems we now moved into the “social Darwinism” theory of fair use. So, it is OK for the dominant player in a market to copy the intellectual property of a weaker rival. Which begs the question: does a best-selling author now get to plagiarize from an author that sells decidedly less? In addition, is this copying now excused because one writes romance novels and the other writes spy thrillers?

It certainly seems that this is the logical conclusion of the Court’s reasoning.

So, we will have to take the majority at its word when the majority opinion states “We do not overturn or modify our earlier cases involving fair use—cases, for example, that involve ‘knockoff’” products, journalistic writings, and parodies.” ¹⁹ In other words, given that chance to clear up the total mess that fair use is, the Court refuses to move the ball forward. What we are given instead, is an opinion on copyrightability, masquerading as a fair use decision.

But I readily see that those that support the weakening of copyright protections will use the language of this opinion to do just that. I have already seen posts suggesting applying the decision to fan fiction.

Undoubtedly, that is Justice Thomas’ concern.

“Because the majority’s reasoning would undermine copyright protection for so many products long understood to be protected, I understand the majority’s holding as a good-for-declaring-code-only precedent.” ²⁰

And finally:

“The majority purports to save for another day the question whether declaring code is copyrightable. The only apparent reason for doing so is because the majority cannot square its fundamentally flawed fair-use analysis with a finding that declaring code is copyrightable. The majority has used fair use to eviscerate Congress’ considered policy judgment.” ²¹