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REINVENTING THE WHEEL

US Supreme Court holds innovation in the balance in Google v Oracle

Oracle building.
Reuters/Tom Brenner
How many ways are there to skin a cat?
  • Ephrat Livni
By Ephrat Livni

Senior reporter, law & politics, DC.

The US Supreme Court recently agreed to resolve an epic dispute between Google and Oracle to the delight of many technologists and legal scholars who say the fate of the $564 billion software industry—and indeed tech innovation itself—hinges on the copyright fight.

The case is about the ownership and implementation of application programming interfaces (APIs). These APIs allow different computer programs to communicate with each other, specifying how information is processed, transformed, and shared. Here, Oracle claims Google infringed on its copyright by copying its APIs and Google counters that no one owns them.

The APIs in question were created by Sun Microsystems in the Java programming language in 2006. Oracle acquired Sun in 2009 and says it owns that code, which Google “copied” when creating its Android mobile operating system. Oracle wants nearly $9 billion in damages for the alleged infringement.

Google, however, says APIs can’t be copyrighted because they aren’t original expressions protected by intellectual property law. It argues that Oracle is trying to control and own standard open source functions that all developers rely on to create software compatible with an established platform, like Java. Dozens of legal scholars and technologists have signed on to amicus briefs agreeing with the company’s position.

Mark Lemley, director of the Stanford University law school’s Law, Science, and Technology program, represented Google in other cases but isn’t involved in this matter. He tells Quartz that, technically, Google actually didn’t copy the APIs themselves; it wrote its own code to implement the existing functions. But Google had to use the standard Java structure for those interfaces or Java wouldn’t run on Android.

Nonetheless, last year, the Federal Circuit Court of Appeals disagreed with Google and ruled that APIs can be copyrighted. The decision was widely viewed as “disastrous.”

“No court until this one has held that it’s illegal to copy those components. If the [Supreme] Court upholds Oracle’s win, it will be much harder for companies to make software products that work with other programs,” Lemley predicted.

Chilling effect

Tech industry and legal luminaries filed amicus briefs urging the high court to take this case. A filing on behalf of Google by “78 computer scientists, engineers, and professors who are pioneering and influential figures in the computer industry” argued that the matter is “exceptionally important” for its wide-ranging potential consequences.

They said the lower court’s ruling misunderstands the issue and will chill innovation altogether, ultimately harming consumers as well as “the Progress of Science and useful Arts.”

Open APIs allow programmers to develop software that works across platforms or to update programs even after they are “orphaned” by their developers. If developers have to license these, as Oracle claims, the cost of creating new programs will rise, the motivation to learn new programming languages will fall, entering the software market will become more difficult, users will be locked into outdated systems or forced into costly upgrades, and ultimately consumers will have fewer, more expensive choices made by a highly limited number of innovators, the brief predicts. Meanwhile, copyright trolls will squeeze developers in frivolous lawsuits for implementing functions they rightly thought belonged to everyone.

“As computer scientists, amici have relied on reimplementing interfaces to create fundamental software. They join this brief because they believe, based on their extensive experience with and knowledge of computer software and programming, that the decisions below threaten to upend decades of settled expectations across the computer industry and chill continued innovation in the field,” they write.

The technologists explain that programmers have for decades freely reimplemented software interfaces. These standard operations ensure they don’t have to continually reinvent the wheel, as it were, coming up with alternate functions to perform an operation that’s already been figured out and made efficient.

“By creating standard specifications for computer programs to communicate with each other, uncopyrightable software interfaces have promoted competition in personal computing and led to the rise of popular operating systems, programming languages, the Internet, and cloud computing,” the computer scientists argue. ”Treating software interfaces as copyrightable would be like requiring car manufacturers to invent a substitute for the steering wheel.”

In other words, these APIs have, until now, been viewed as purely practical rather than proprietary expressions of originality deserving protection.

But Oracle in its own brief argues that Google “copied 11,500 lines of Oracle’s original, human-readable computer source code, as well as the intricate structure and organization of 37 large packages of computer programs, into a competing software platform.” The company says this was original work subject to copyright based on the Copyright Act’s plain language, which states that code is copyrightable if it’s “used directly or indirectly in a computer in order to bring about a certain result.”

Original expression

Copyright law protects an author’s original expressions. It doesn’t protect “useful arts,” however. Those who believe APIs can’t be copyrighted say they are standard elements of a “useful art,” like forms in a bookkeeping system, say.

In 1880, the high court decided Baker v. Selden, a case about copyright and bookkeeping forms. Selden invented a bookkeeping system, which he claimed Baker infringed upon by copying the arrangement of columns in his forms. The Baker and Selden bookkeeping forms were substantially similar, though not identical.

The court noted that to implement the Selden system, Baker—or anyone else—had to select and arrange columns and headings more or less the same way Selden did in his book’s forms. The first system, Selden’s, dictated the implementation of the second innovation, Baker’s forms made for the Selden system.

Since copyright does not protect useful arts such as bookkeeping systems, but only authorial expression, the court held that the forms in Selden’s book were uncopyrightable and that Baker was free to publish his forms because there were few workable alternatives for implementing Selden’s system.

This came to be known as “the merger doctrine.” In an amicus brief by dozens of intellectual property law scholars in the Google and Oracle case the academics explain that APIs are like the forms at issue in the bookkeeping system dispute. In order for Java to work on Android, it had to use existing, standard functions.  

They argue that the lower court misunderstood Java and took too narrow a view of this “merger doctrine” when it found Google could theoretically have used alternative functions. “Copyright law should not force second comers to adopt less efficient structures to accomplish program functions,” the scholars write.

Oracle strongly disagrees with this assessment and claims Google is inventing categories of copyright exemptions that have never been recognized. It argues that its own most skilled coders created the APIs Google copied and that these prewritten programs are “interconnected through an elaborate structure, sequence, and organization.”

Basically, it’s saying the APIs at issue here are much more complex than the arrangement of forms in the 19th century bookkeeping case. The merger doctrine only applies when an idea and its expression are inextricably intertwined. If there is only one way to express an idea, “copying the expression will not be barred, since protecting the expression in such circumstances would confer a monopoly of the idea,” Oracle explains.

But that is not what happened here, the company says. “The work here is a set of 37 intricate packages of thousands of computer programs comprising one of the most creative and popular computer platforms ever written …The question is whether that work is totally devoid of copyright protection,” Oracle writes.

In the alternative

Google has also argued that if APIs are ultimately found copyrightable, its implementation falls under the “fair use” exception. Fair use is a limited exception to the copyright holder’s exclusive rights for purposes such as criticism, comment, news reporting, teaching, scholarship, or research.

Oracle, however, says that Google’s use wasn’t fair at all because Google wasn’t a researcher or teacher using its code for some recognized public purpose. It’s a competing company that created a competing platform using Oracle’s proprietary code.

Google’s dire predictions about the future of innovation all rely on ignoring a critical distinction that Oracle’s licensing scheme makes, Oracle says. Oracle does give free licenses to app developers who make “fun” and “quirky” tools for use on its platform. But it doesn’t give free licenses to competitors who want to build a platform that might lure away Oracle’s own customers, as Google did with Android.

Oracle didn’t want the Supreme Court to take this case at all and it certainly doesn’t want it to consider Google’s use fair. In this respect then, all parties agree on one thing. Everyone seems to hope the high court will not reach the fair use question.

“It’s here that there might be consequences for non-software works,” Lemley told Quartz. “Depending on how the Supreme Court formulates the test for fair use, it could either endorse or reject what the lower courts have been doing in the 25 years since the Court last had a fair use case.”

What Google wants, and what many in the tech industry are hoping for, too, is that the justices will simply rule that APIs can’t be copyrighted. They believe continued rapid innovation depends on such a finding and that Oracle’s position threatens much more than Google. As the amicus brief by 78 tech luminaries puts it, “Oracle’s attempt to assert copyright in the Java API is historically anomalous and jeopardizes the unparalleled innovation and competition that continue to flourish across the computer industry.” 

The Supreme Court will hear arguments some time between January and May. And it’s expected to make a final decision in June.

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