Will the Supreme Court Review Oracle v. Google? Please?

This extraordinary software copyright case — Oracle v. Google — has been in the courts for eight years, and I’ve blogged about it almost every step of the way. After winning twice in district court and losing two appeals before the Federal Circuit the case is on appeal to the Supreme Court for the second time. In its petition to the Court Google’s “questions presented” are:

1. Whether copyright protection extends to a software interface.
2. Whether, as the jury found, Google’s use of a software interface in the context of creating a new computer program constitutes fair use.

The first question was the focus of the first trial and appeal by Oracle. Google asked the Supreme Court to decide this issue after losing the first appeal, but was rebuffed. The second question was the subject of the second trial, which Google won on a jury verdict and lost on Oracle’s appeal to the Federal Circuit.

To recap, Google need a mobile operating system for its smartphones, and wanted to use Java. After negotiations to license Java from Oracle were unsuccessful Google rewrote the programming language code for Java (the implementing code) to be compatible with Java. It called this Android. It was careful to do this without copying the code for the Java language or infringing Oracle’s copyright in this work.¹

However, Google did copy the Java “declaring code” or naming structure (basically function calls),² in order to make Android more familiar and accessible to Java programmers.³

In the first appeal in this case the Federal Circuit reversed a decision by the trial judge and held that the declaring code was copyright protected, and therefore Google had engaged in copyright infringement. However, this conclusion was subject to Google’s fair use defense, which the jury had hung on at the first trial. It therefore remanded the case to the district court for a second trial on fair use.

At the second trial the jury found that Google’s copying was protected by fair use. However, Oracle appealed to the Federal Circuit again, and the Federal Circuit found that Google’s copy of the declaring code was not protected by fair use. This decision was extremely controversial – it was the first time a federal appeals court has overruled a jury verdict on fair use.

With respect to the first question presented — whether copyright protection extends to a software interface — Google’s current appeal focuses on the First Circuit’s 1995 decision in Lotus v. Borland. In that case the First Circuit held that the menu command hierarchy in the Lotus 1-2-3 spreadsheet program was a “method of operation,” and therefore excluded from copyright protection under Section 102(b) of the Copyright Act.

That decision was the subject of an appeal to the Supreme Court. In 1996 the Court deadlocked 4-4, and as a consequence the First Circuit’s decision was affirmed. However, due to the 4-4 deadlock it became law only in the First Circuit, not nationally. Lotus was an important decision at the time, but it has remained an outlier – no other court has fully adopted the holding in Lotus v. Borland.

In seeking Supreme Court review Google argues that there is a circuit split, as follows:

. . . the courts of appeals are deeply divided on the appropriate standard for determining the circumstances under which a software interface is copyrightable … . At a minimum, the Federal Circuit’s standard directly conflicts with the standard adopted by the First and Sixth Circuits. The Court should grant review to resolve the conflict among the courts of appeals on this exceptionally important issue.⁴

On the second question presented — whether Google’s use of a software interface in the context of creating a new computer program constitutes fair use — Google argues:

Because the jury returned a general verdict on fair use, the Federal Circuit correctly stated that it “must assume that the jury resolved all factual issues relating to the historical facts in favor of the verdict.” . . . But the Federal Circuit said one thing and did another: it reconsidered for itself a number of factual issues presented to the jury and resolved those issues in support of the conclusion that Google’s use was unfair as a matter of law. . . . To permit that approach would condone an unprecedented degree of appellate second guessing of factual determinations in fair-use cases. This Court’s intervention is urgently warranted to rectify the Federal Circuit’s profoundly flawed approach.

I’m going to predict that the Supreme Court will accept review of this case on at least one of the two issues presented by Google. This case is of real importance to the software industry, and there is a good chance the Supreme Court will recognize that, as it did when it accepted review of Lotus v. Borland  24 years ago.

However, there are two issues lurking beneath the surface that could impact the Court’s decision of whether to grant review. T’he first is the unusual procedural posture of the case. It came to the Federal Circuit because there were patent infringement claims at an earlier stage of the case. This required that any appeals — even an appeal of a non-patent issue — be directed to the Federal Circuit rather than to the Ninth Circuit Court of Appeals, where the case was tried. However, Federal Circuit decisions that come to it from other circuits and do not involve patent law do not become the law in those circuits for purposes of legal precedent. This means that courts in the Ninth Circuit are not bound by the Federal Circuit’s ruling in this case. This fact diminishes the impact of the “circuit split.” It’s a circuit split between the First Circuit (Lotus) and the Federal Circuit, which hears very few copyright cases, and a First Circuit/Federal Circuit “split” may be less significant than a First Circuit/Ninth Circuit split would have been.

The second issue is the position of the Solicitor General. When Google appealed the Federal Circuit’s first decision the Supreme Court requested the Solicitor General’s opinion on whether it should take the case. The Solicitor General advised against review at that time, noting that the case involved “substantial and important concerns” that should be addressed through the fair use doctrine. The fair use doctrine was the subject of the second trial, and it’s likely the Supreme Court will ask for the Solicitor General’s views again. The recommendation of the current Solicitor General’s office on the issues in this case will be an important factor in the Court’s decision whether to review the case.

These technicalities aside, this is a hugely important case for the U.S. software industry. We can only hope that that Supreme Court recognizes this, and decides to clarify the issues presented by the case.

Please.

First Update: In September 2019 the Solicitor General (representing the United States) filed a brief opposing a grant of certiorari by the Supreme Court. The Supreme Court has agreed with an SG recommendation to deny cert  over 90% of the time (Comparing Cert Stage OSG Efforts Under Obama and Trump (link)), so things are not looking good for Google at the moment.

Second Update: The Supreme Court granted cert (review). See my resources page here: link

FOOTNOTES