(Reuters) - Google has finally filed its long-awaited petition for U.S. Supreme Court review of a pair of decisions from the U.S. Court of Appeals for the Federal Circuit that put Google on the hook for infringing Oracle’s copyright on certain programming interfaces in Java coding language. Pitching the case as a watershed for software development – and thus American innovation across untold industries – Google wants the Supreme Court to overturn the Federal Circuit’s rulings on both the copyrightability of the Java interfaces and Google’s fair use of the Java code.
“Google has never disputed that some forms of computer code are entitled to copyright protection,” the petition said. “But the Federal Circuit’s widely criticized opinions — in an area in which that court has no specialized expertise — go much further, throwing a devastating one-two punch at the software industry … Developers who have invested in learning free and open programming languages such as Java will be unable to use those skills to create programs for new platforms — a result that will undermine both competition and innovation.”
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Google contends that the Supreme Court must step in to resolve conflicts in the lower courts on the “exceptionally important” copyrightability issue, which the justices haven’t considered since they deadlocked in a 1996 case involving menu commands in Lotus spreadsheet software.
But here’s the thing: Google told the Supreme Court exactly the same thing about lower court disarray back in 2015, when it previously asked the justices to review the Federal Circuit’s ruling that the Java interfaces are copyrightable. And back then - after the U.S. solicitor general said in a court-requested amicus brief not only that the Federal Circuit ruled correctly but also that there was no circuit split on copyrighting the kind of code at issue in the Google case – the Supreme Court decided not to hear the case.
So why does Google think history shouldn’t repeat itself? Why should the justices now take a case presenting the same issue it sidestepped in 2015?
Google’s very able Supreme Court team – Kannon Shanmugam of Williams & Connolly is counsel of record, with Thomas Goldstein of Goldstein & Russell also on the petition – seem to have anticipated just that question. The new petition makes the obvious argument that the case is farther along now than it was in 2015, with more key questions resolved. But more subtly, the brief uses the solicitor general’s 2015 amicus brief as a foil, fleshing out its opposition to some of the government’s points and emphasizing language in the solicitor general’s brief that seems to boost Google’s case.
I’ll briefly recap the history of this case (emphasis on briefly). In 2010, after Oracle acquired Java’s developer, Sun Microsystems, it sued Google for patent and copyright infringement for using Java code in developing the Android system. In 2012, a federal jury in San Francisco found no patent infringement but said Google violated Java copyrights on code known as “declarations,” which allow programmers to interface with libraries of prewritten Java code for oft-used functions. (Google’s filings in the litigation often analogize declaring code to a standard keyboard: Just as you can type a particular letter by pushing a particular button on a keyboard, programmers use declarations to trigger particular functions.)
The trial judge overturned the jury verdict, holding that the copyrights were invalid under the Copyright Act’s exception for procedures, processes, systems and methods of operation. The Federal Circuit disagreed. In a 2014 decision, it reinstated Oracle’s copyright claims and remanded the case for retrial. A second jury determined that Google made fair use of the Oracle code, but in 2018, the Federal Circuit overruled the jury, holding that Google’s use of the Java declaring code was for commercial use and was not transformative.
In the new petition for certiorari, Google points out that one of the reasons the solicitor general advised against review in 2015 was because the fair use question hadn’t been decided. That’s no longer true, Google said – and the Federal Circuit’s cramped interpretation of transformation will have deeply deleterious consequences since developers are always building on old code when they write new programs.
The government already acknowledged in that 2015 brief that the Java copyright case raised “substantial and important” questions about whether developers can use copyrights to squelch competition by denying interoperability and locking programmers into their platforms. DOJ said that concern was best addressed in the context of fair use. Google argues in its new petition that the Federal Circuit’s fair use analysis makes the solicitor general’s previously-noted fears all the more pressing.
To amplify how, in its view, the Federal Circuit rulings squelch competition, Google cited an ancient Supreme Court case, 1880’s Baker v. Selden. In the Baker case, the Supreme Court said an accountant who had written a book detailing a new accounting system did not hold exclusive rights on the system, or even on the forms required to practice his innovative methods. The court’s ruling in Baker established a principle that has become known as the “merger doctrine,” which holds that when there’s only one way to express a method – like the accounting forms in the Baker case – a copyright holder cannot claim exclusive ownership. Under Baker, Google said, a monopoly that might be attainable via patent law can’t be achieved by copyright.
Google said in the new Supreme Court petition that the Federal Circuit misconstrued Baker in its copyrightability and fair use analysis because the Java declarations it adopted in its Android code were the only means by which its platform could interface with the uncopyrighted Java code. The Justice Department’s 2015 brief opposing review of the Federal Circuit’s copyrightability ruling didn’t engage deeply with the merger doctrine, noting just that the appeals court believed Google had plenty of alternative ways to craft declaring code.
By highlighting the merger doctrine’s core holding that copyright shouldn’t be a means to monopoly, Google is cleverly playing up the Justice Department’s concerns about squelching competition, giving the government a reason, this time around, to back its petition. “Precluding Google’s use of the Java API declarations would permit Oracle to accrue market power via copyright, locking in developers that had invested in learning the Java language and making it difficult for them to use those skills to program for new platforms,” Google said. “The Federal Circuit afforded software interfaces a government-granted monopoly based on a more relaxed standard and for a much longer period than permitted by patent law.”
Will the new petition accomplish what the old petition did not? Google said in a blog post Thursday that all kinds of businesses, tech firms, nonprofits and academics agree that the Federal Circuit botched this case. I’m expecting lots of amicus briefs backing the company’s request for Supreme Court review – but Google had lots of amicus support in 2015 as well.
Undoubtedly, Google has a good argument that the case is riper now than it was back then. And I think the new petition does a good job of turning the government’s previous opposition into a point in Google’s favor.
Oracle, however, will have potent counterarguments. In an email statement, the company said Google’s petition “presents a rehash of arguments that have already been thoughtfully and thoroughly discredited.” Google’s true concern, Oracle said, is “that it be allowed the unfettered ability to copy the original and valuable work of others for substantial financial gain....The Court of Appeals has twice sided with Oracle against Google. The Supreme Court should once again deny Google’s request to take the case.”
This post has been updated to include comment from Oracle.
The views expressed in this article are not those of Reuters News.