On Monday, April 5, 2021, the Supreme Court of the United States ruled that Google’s use of certain computer code representing a Java software application programming interface (API) within Google’s Android smartphone operating system constituted a “fair use” of the Java computer code and did not, therefore, constitute infringement of any potential copyright in such code that may be owned by Oracle (the proprietor of Java software).
Although the 6-2 opinion, authored by Justice Breyer (Justice Thomas dissenting, joined by Justice Alito), focuses on Google’s specific use of the code, it has much more sweeping implications. In particular, whereas courts have always weighed how a particular use of ostensibly copyright-protected material would affect the market for or value of the copyrighted material in assessing whether unauthorized third-party use constitutes fair use, the Supreme Court’s recent decision invites lower courts to compare these economic impacts to the copyright owner against the public benefits of the third-party use. The Court also underscored that Google’s use of the Java API was new and transformative, and that it used only as much of the API as was necessary to achieve the new and transformative use. Whether a work is transformative of the underlying copyrighted work, and whether the transformative work only used as much of the underlying work as necessary to achieve the intended new and transformative work, are core components of the traditional fair use analysis. It is clear that the Court did not intend to supplant the traditional test entirely.
As a result of this ruling, going forward, these kinds of “reimplemented” software may thus be treated more favorably in the event of copyright infringement claims by owners of the original software. This may have downstream implications for software licensing, as it likely gives more leverage to prospective licensees who could increasingly opt to avoid licensing altogether and take their chances on a fair use defense to any infringement claims from software copyright owners.
However, despite the guidance from the Court regarding the fair use defense in the software context, the Court avoided the broader question of whether APIs are even copyrightable in the first place. The Court specified that it assumed they were, but did not expressly rule on the issue. The U.S. Court of Appeals for the Federal Circuit, whose ruling Google appealed to the Supreme Court, had rejected Google’s argument that APIs were not copyrightable. Justice Thomas’ dissent notes that he would explicitly find that APIs are copyright-protected (affirming the lower court’s finding). But by assuming without deciding, the majority opinion still seems to suggest that APIs would be protectable – it certainly did not displace the lower court’s finding to that effect.
In the wake of this decision, in a case which some have called “the copyright case of the century,” we could see significant changes to the software marketplace, and potentially broader implications on US copyright practice. It will be interesting in the coming months and years to see how this decision might practically shift the legal risk analysis vis-à-vis licensing and use of copyrighted content.
If you have any questions regarding this alert or wish to discuss these matters in more detail, please contact any of the following Winterfeldt IP Group team members:
Brian Winterfeldt, brian@winterfeldt.law, +1 202 903 4422
Griffin Barnett, griffin@winterfeldt.law, +1 202 759 5836
