Tag: Google v. Oracle

Google v. Oracle: Copyright Thought Leaders Dismantle Pro-Google Arguments (Guest Post)

Editor’s Note:

Thirty-two amicus briefs were filed with the Supreme Court in support of Oracle in Google v. Oracle. Among these was one written by Steven Tepp, whose credentials include former Senior Counsel at the Copyright Office, and whose brief was signed by several other copyright experts from both the public and private sectors.

On February 21, Jonathan Band, on behalf of the Computer Communication Industry Association (CCIA), wrote a blog response under the thesis that many of Oracle’s amici have no “connection to the technology industry or any understanding of the interoperability issues at play in this case.”  Notwithstanding the fact that of the list of amici includes SAS Institute, Synopsis, Dolby Labs, MathWorks, former Sun CEO Scott McNealy, and former EMC CEO Joe Tucci, among others, Band seems to imply that the other amici—all experts in copyright law—are wrong on the copyright matters because they are independent from the software industry. Given that Band devoted extra attention to Tepp’s brief, and Tepp does not have a blogging platform (like Band’s well-funded Project DISCO), I am happy to publish his response here as a guest post.

– DN –

I had the honor and privilege of authoring an amicus brief to the Supreme Court in support of Oracle in the pending copyright infringement suit against Google. It is a strong brief that makes a firm case on the law, as well as on policy grounds, that Google’s copying of over 11,000 lines of computer code for use in competition with the copyright owner violates the U.S. Copyright Act. I am proud that prominent attorneys who have worked in academia, senior positions in federal administrative agencies and Congress, and private practice, supported my brief as co-signers.

One of the sections of my brief pointed out to the Court how the arguments of the pro-Google brief filed by CCIA and the Internet Association had incorrectly relied on the Ninth Circuit decision in Sega v. Accolade as precedent for why Google’s copying was “fair use” under the Copyright Act. The author of the CCIA brief, Jonathan Band, has since written a blog in which he summarizes and critiques the thirty-two pro-Oracle briefs, including mine. In it, he doubles down on his reliance on Sega, so I wanted to set the record straight.

“Interoperability”

The main thrust of Band’s arguments is that the Sega decision stands for the proposition that copying code for the purposes of achieving “interoperability” is fair use under the Copyright Act. And he then also cites to instances where the Sega policy was followed by Congress, the Copyright Office, and in some foreign laws. There are two fatal flaws with this argument.

First, as a matter of law the Sega decision did not endorse a broad, vague, or general notion of “interoperability.” That court was very clear that Accolade’s copying of Sega’s operating code was only to study it to learn how to make applications that would work on Sega’s platform. Accolade’s software did not include any of Sega’s code in its final product, did not compete with Sega’s platform, and did not avoid any customary licensing fees. In the case now before the Supreme Court, Google admits it copied Oracle’s code into its competing product and refused to pay the usual licensing fees.

Second, as a matter of the undisputed facts in this case, the Android platform is NOT interoperable with other Java-based platforms. As the brief of the United States Government points out, Google “designed its Android platform in a manner that made it incompatible with [Oracle’s] Java platform.” (emphasis in original).

Both on the facts and the law, Google is not entitled to rely on Sega or similarly circumscribed rules as precedent or justification for its appropriation of Oracle’s code.

Nonetheless, Band tries to garner support from a Copyright Office report passage that “in many cases, copying of appropriately limited amounts of code from one software-enabled product into a competitive one for purposes of compatibility and interoperability should also be fair use.” It is curious that Band looks to the Copyright Office for support in this particular case. The names of three of the top lawyers at the Copyright Office appear on the U.S. Government brief in support of Oracle, including one of the people who worked on the report from which Band quotes.

The U.S. Government brief responds to the exact line Band quotes, “Contrary to petitioner’s [Google’s] contention, the Copyright Office has never endorsed the kind of copying in which petitioner engaged…enabling developers for Android to draw on their preexisting knowledge of commands used on the Java platform does not constitute ‘interoperability’ as that term is defined in the Copyright Act or discussed in any judicial decision or Copyright Office publication.”

International Considerations

I argued to the Supreme Court that a ruling of fair use in this case would violate sixteen international agreements to which the United States is a party. Specifically, such a ruling would be inconsistent with the globally accepted “three-step test” for allowable exceptions to copyright, which appears in all those agreements and treaties. Band’s blog goes beyond his brief to attack this analysis, claiming that only legislative enactments are subject to scrutiny under the three-step test. He is wrong.

Nothing in the text of the three-step test, or anywhere else, indicates it does not apply to exceptions that arise or are implemented through administrative or judicial action. To be fair, a lower court ruling that may not be precedential even within its relatively small geographical jurisdiction would be a weaker case to apply the three-step test.

But this case is before the Supreme Court, the highest court in the land. Its rulings bind all lower courts and may be overturned only by itself or by Congress. So, if the Court rules that verbatim copying for use in direct competition with the copyright owner is fair use, that is the law of the land for the foreseeable future—and this country is accountable for it.

Moreover, current and past practice shows that the governments of the world consider court decisions subject to analysis for treaty compliance. Over the years, the United States Government has been peppered with questions from foreign governments about previous fair use rulings. The United States has done the same, holding other countries accountable for their courts’ decisions.

Band’s second line of attack on my three-step test analysis asserts, “the interpretation of the three-step test advanced by the ‘Thought Leaders’ is so narrow that it would completely undermine the ability of the highly commercial U.S. copyright industries to rely upon fair use.” To be clear, the interpretation I “advance” in the brief is not my own, but the interpretation of a neutral panel of international experts who decided the case brought against the United States by Ireland under the auspices of the World Trade Organization. In that dispute, the panel found an expanded exception in U.S. law concerning the public performance of musical compositions violated the three-step test. My brief merely applies that panel’s standards to the facts of Google’s copying. Band’s assertion that the panel decision (which was written twenty years ago) now suddenly undermines fair use is contradicted by the reality of the past two decades.

My final point on international matters is that if the United States fails to live up to its international commitments, it will undercut our credibility when we insist on adequate copyright protection in other countries, most notably China. Band wraps up his blog’s attention to my brief by asserting that a ruling for Google would “increase the credibility of the U.S. copyright system by showing that it can balance the needs of different stakeholders to advance the public interest.”

It says much about his approach to copyright issues that he considers outright copying of over 11,000 lines of code, for use in direct competition with the rightful copyright owner, to be a “need.” It is also telling that he conflates Google’s business decision to free ride on Oracle’s code with the “public interest.”

In any event, it is only common sense that any country presently criticized by the United States for failure to provide proper protection for copyright would be all too happy to point the finger back at us if the Court were to rule in favor of Google’s appropriation. No doubt China and other economic competitors would welcome the United States lowering its intellectual property protections, particularly for our successful technological innovations. But I don’t think it’s in our interests to be more like China is that regard.

Our trade and copyright negotiators have been hampered for twenty years by our loss in the relatively minor matter in the case brought by Ireland. A ruling in this much more economically significant case would magnify those hurdles by several orders of magnitude.

Google v. Oracle IV: Fair use & the difference between new and transformative.

Although it has been my intention to write about Google v. Oracle serially, addressing the legal questions in more or less in the order they are presented and weighed in a court opinion, it turns out today marks the end of Fair Use Week.  (How I could have missed that in this otherwise sleepy news cycle is a mystery, I know.) But as Fair Use Week is still officially live, I am going to jump ahead in this post to respond to Google’s claim that its use of Oracle’s Java SE code in the development of the Android platform was a fair use.

We will assume for the sake of discussion that Google’s challenge to the copyrightability of Oracle’s code will not succeed because, absent an infringement, there is no reason to consider a fair use defense. On that note, it is worth mentioning that while it may be good legal strategy to present a fair use argument as a Plan B in a litigation, some fair use assertions are more demonstrably hail-Mary plays than others.  And in this case, Google’s argument seems like a pretty wild pass all the way down the gridiron that should be knocked down by the fair use test.

Above all, Google’s fair use assertion under the first factor—arguing that its use of Oracle’s code was transformative—is yet another example of this tech giant in particular seeking to conflate the novelty of a product with the nature and purpose of transformativeness in fair use. 

For quick review, transformativeness, in its earliest application, tilts toward a finding of fair use when a new creative expression is derived from the specific use at issue.  Hence, the seminal case Campbell  v. Acuff-Rose (1994), in which the Supreme Court unanimously held that 2 Live Crew’s use of the heart of the song “Oh, Pretty Woman” produced a new expression—a parody of the original. Campbell upholds the purpose of copyright to promote new forms of expression such that society gains both the original work and the parodic comment upon the original work. 

By contrast, in considering Google Books, a search tool that relies on the use of digitized copies of millions of published works, the courts in 2015  broadened the doctrine to encompass uses that are transformative because they “expand the utility” of the original material. The Google Books interface offers an unprecedented and highly-useful research tool that does not provide a substitute for the works used—namely it does not make full books under copyright available.

Nevertheless, the Second Circuit Court of Appeals cautioned that its holding in Google Books “tested the boundaries of fair use.”  In other words, the “utility” aspect of the transformative test is meant to be scrutinized very carefully, as the same court later affirmed in its (2018) consideration of the service ReDigi, which asserted that an online exchange trading in “used” digital music files was transformative …

“Even if ReDigi is credited with some faint showing of a transformative purpose, that purpose is overwhelmed by the substantial harm ReDigi inflicts on the value of Plaintiff’s copyrights through its direct competition in the rights holders’ legitimate market, offering consumers a substitute for purchasing from the rights holders.”

Translation:  not everything “new” is transformative under a fair use analysis. Google’s claim that its use was transformative in its defense against Oracle breaks the boundaries the Second Circuit drew in Google Books because Google did nothing to “expand the utility” of Oracle’s code.  On the contrary, Google used Oracle’s code for the exact purpose for which it had been developed—and for which other mobile developers had licensed the work.

Further, Google’s claim is not markedly distinguishable from the holding in ReDigi; Google’s use of Oracle’s code put the search giant in “direct competition” with the party whose work it appropriated, usurping opportunities in the mobile market that Oracle was already exploiting by licensing its products.

Google and supporting amici assert that the roll-out of Android itself is sufficient to render its use of Oracle’s code transformative. But if mere “newness” of a product (or even a creative work) were the shibboleth required to pass the transformative test, this standard would swallow copyright in its entirety and nullify the purpose of a fair use exception.  “… the more amorphous and unreasonably expansive the analysis and application of the fair use doctrine, the harder it becomes to establish the value of the copyrighted work during licensing negotiations that are the lifeblood of the creative ecosystem,” states the brief filed by songwriters in support of Oracle.

Any use of a prior work will always result in something new; but this novelty alone has never relieved the user of the responsibility to either license the prior work or to demonstrate how the use narrowly qualifies for a fair use exception. In this case, Google makes the familiar (though thankfully still unsuccessful) argument whereby the infringing user asserts that migrating a work from one medium to another is transformative. Not only is this not transformative, but in Google’s case, using Java SE in mobile platforms is not even novel. In the absence of transformativeness the first factor consideration of commercial v. non-commercial use will weigh heavily against Google given that Android is a multi-billion-dollar commercial use.

On the third and fourth fair use factors, Google should also fail, while it may end up a draw on the second.  The second factor considers the nature of the work used, and although neither party denies creativity in the declaring code at issue, the inherent functionality of software may point towards a tie in the analysis of the Court. The third factor considers the amount of the original work used, and although Google emphasizes that it copied only a fraction of Java SE, Oracle states in its brief that, “Google admits it copied the packages most valuable to create a derivative version of Java SE for mobile devices.” Further, fair use is not sustained by showing how much they did not copy.

The fourth factor should be especially prejudicial against Google’s fair use claim, as it addresses the harm, and potential harm, to the creator’s market for the work used.  Here, as in ReDigi, the analysis militates against fair use.  As Oracle states in its brief, describing prior licensees of Java…

“If what Google did was permissible, IBM, Danger, and others would not have licensed Sun’s declaring code or complied with [the interoperability standard] ‘write once, run anywhere.’ If everyone could copy the declaring code without a license, Java SE would lose value, as anyone could ‘reimplement’ a knock-off. This undisputed evidence negates Google’s defense as a matter of law.”

More broadly, if Google’s unprecedented assertion of fair use in this case were the new standard, this would only empower the wealthiest corporations to poach any creative works they choose, as long as whatever they use them for has not already been put on the market. That predicate offends the purpose of copyright and is anathema to the interests of all creators in all media. Google enjoys enough advantages when it comes to squashing competitors and making a business out of infringement, without the courts also rewriting decades of copyright doctrine at their behest. 

Google v. Oracle III – Popularity Does Not Overturn Copyright

Looking at Google v. Oracle as a consumer and citizen, common sense insists upon a measure of skepticism in response to the premise that the “future of all software development” depends on Google prevailing in this case.  Many of those who say so are the same folks who tend to omit the fact that licensing—especially in B2B relationships—spawns innovation all the time.  The underlying bias that copyright makes works inaccessible, rather than licensable, is a connotation that should not be overlooked in this case, particularly when Oracle’s Java licensing agreement is specifically designed to demand interoperability and promote development.   

In Part II, I said would begin to address the core matter of contention in Oracle—the copyrightability of the “declaring code” that Google copied for development of the Android mobile platform.  Google’s main legal arguments boil down to the following:  1) the “declaring code” they copied is a “method” and, therefore, an unprotectable idea under Section 102(b) of the copyright law; but 2) the Court could more narrowly find that copyright is denied under the merger doctrine; and 3) failing all that, Google’s use was a fair use.  

In this post, I want to focus on the second of those assertions, partly because the Section 102(b) argument against copyrightability is largely being made by supporting amici, and although Oracle filed its SCOTUS brief on February 12, supporting parties have not yet filed.  But the other reason I want to focus on the merger claim in this case is that the rationale being applied comes uncomfortably close to asserting that once a work becomes popular or important enough in the market, its copyright protection is somehow diminished.  This is simply wrong as a matter of law and is an issue of no small concern for creators working in any protectable medium.

“Had To” vs.  Had To

To begin with an analogy, if I ran a design firm that relied on a variety of staff and freelance artists who most commonly know how to use Photoshop, my dependence—even existential survival—on people with those skills using that software does not relieve me of the obligation to obtain a license from Adobe. (In fact, firms like this are Adobe’s bread-and-butter.)  Yet, Google appears to be arguing that its “need” use the Java code was justifiable without a license because the popularity of Java denies copyrightability in the copied lines of code under the merger doctrine.  

To review what I prefaced in Part II, merger denies copyright in works when there are so few ways to express an idea that the expression and idea are said to be “merged.”  With software, merger can seem rather tricky because, unlike other forms of creative expression, software always performs a function, which is not protected by copyright law.  For instance, no software author can protect the concept of having a computer perform the function of regulating the fuel efficiency in your car, but he can protect the code he writes to perform that function—unless there is only one way to write that code, in which case merger denies copyright.  

Google’s merger argument with respect to the Java “declaring code” is founded on the premise that they “had to use it.”  But to read their brief (and others), it is not at all clear that they “had to” in the strict, legal sense of “only one way to do it” so much as they “had to” in the business sense that it was the best way to enable Java-fluent developers to write for Android.  For instance, the Google brief states, “… the declarations can only be written one way to perform their function of responding to the calls already known to Java developers.” (Emphasis added)

That rationale, akin to my Adobe Photoshop analogy, may have been exigent to Google’s ambition to enter the mobile market and quickly attain the dominance in that space that it now enjoys, but it does not read as a correct appeal to merger.  In particular, we have two undisputed facts in this case:  at the time of authorship, Sun engineers could have taken many different creative paths to produce the “declaring code” at issue; and at the time of infringement, Google engineers also had many creative options to achieve the same functions.

Google even admitted as much, stating in its brief that its engineers could have written their own version of the desired “packages” but for the fact that this would have been a barrier to enabling Java-savvy developers to write for Android. But just as with my design firm example, this is grounds for licensing an urgently-needed work, not a rejection of copyright under merger.

Google Up to its Usual Tricks?

Assuming the above is a fair criticism, it is a clever sleight of hand for Google to color the business reason they “had to” copy Oracle’s code by advancing a legal theory that could more broadly weaken copyright for all types of creators.  Hardly novel territory for Google (or indeed many of its supporting amici), it is quite common to encounter anti-copyright rhetoric alleging that the more a work is considered essential (i.e. very popular), it steadily migrates into the commons; and this legal fallacy was a concern raised by the Solicitor General in its brief recommending the Supreme Court deny cert in this case … 

“Petitioner [Google] also argues that the court of appeals erred by focusing on the choices available to respondent ex ante when it created Java, rather than on the choices available to petitioner when it sought to devise a way for programmers familiar with “industry standard Java shorthand commands” to use those same commands in Android. Petitioner’s approach would treat the current popularity of respondent’s work among developers as retroactively divesting the work of copyright protection.  (Emphasis added. Citations omitted.)

Note that the word retroactively underscores the point that Google’s allegedly urgent “need” to copy the Java code in 2005—now that it has been synthesized through various legal defenses over the ensuing 15 years—attempts to reach back and deny copyright circa 1995 by applying a doctrine that would not have denied copyright at the time of authorship.  As stated in Oracle’s brief, filed on February 12, “Google invokes merger—a narrow judge-made doctrine that does not apply unless the original author had very few ways to express the idea.  It does not apply here because, as Google concedes, Java SE’s authors had countless options.”

Consequently, Google’s merger argument begins to read like an attempt to draw attention away from the creative options available to both original author and alleged infringer—a distraction that is perhaps camouflaged by the fact that computer code is generally invisible to most observers and is functional in nature, which makes it appear more susceptible to the merger exception.  

I will admit that while combing through the briefs filed so far in this case, I find myself wondering whether Google engaged in unscrupulous business conduct and is managing to thread the needle of a plausible legal defense—or whether Google engaged in bad-faith conduct and then proceeded to cobble together a Jenga tower of flawed defenses that, if upheld, are more holistically harmful to copyright law than might at first appear. 

Certainly, the latter conclusion would be consistent with the “infringe now, litigate after we own the market” strategy that has come to define Silicon Valley culture;  but this conclusion is also implied by the legal arguments presented when we begin to unpack them one at a time, just as the courts do.  For the sake of copyright principles writ large, creators should hope the Supreme Court takes a very cautious approach when considering the logical foundation of Google’s appeal to merger in this case.  The relative value of a work does not diminish its protection.  On the contrary, we protect works under copyright with the hope that they will become very valuable indeed.