Oracle America Inc.'s claims against Google Inc. are back in the news again.  At one point it appeared that Google would succeed with its fair use defense.  However, Oracle has recently scored a significant victory.

The History

Oracle brought an action against Google in the United States District Court for the Northern District of California, alleging that Google's unauthorized use of 37 packages of Oracle's Java application programming interface ("API packages") in its Android operating system infringed Oracle's copyrights.   At the first trial, the jury found that Google infringed Oracle's copyrights in the Java Standard Edition platform, but deadlocked on the question of whether Google's copying was a fair use.  After the verdict, the district court found that the API packages were not copyrightable as a matter of law and entered judgment for Google.

Oracle appealed that determination to the United States Court of Appeals for the Federal Circuit which, reversed the District Court, finding that declaring code and the structure, sequence, and organization ("SSO") of the Java API packages were entitled to copyright protection. The case was sent back to the District Court with instructions to reinstate the jury's infringement verdict and for further proceedings on Google's fair use defense and, if appropriate, on damages.

Google subsequently filed a petition for certiorari on the copyrightability determination.  The Supreme Court of the United States denied the petition.

At the second jury trial, Google prevailed on its fair use defense. This decision was again appealed to the United States Court of Appeals for the Federal Circuit.

The Software

Oracle's predecessor, Sun Microsystems, Inc. ("Sun"), developed the Java platform for computer programming in the 1990s, and Oracle purchased Sun in 2010.  The Java platform is software used to write and run programs in the Java programming language. It allows programmers to write programs that "run on different types of computer hardware without having to rewrite them for each different type".

The Java 2 Standard Edition ("Java SE") of the platform includes, among other things, the Java Virtual Machine and the Java Application Programming Interface ("API").  The Java API is a collection of "pre-written Java source code programs for common and more advanced computer functions".

These API packages "allow programmers to use the prewritten code to build certain functions into their own programs rather than write their own code to perform those functions from scratch.  They are shortcuts".

In 2005, Google acquired Android, Inc. as part of a plan to develop a software platform for mobile devices.  That same year, Google and Sun began discussing the possibility of Google taking a license to use and adapt the Java platform for mobile devices. The parties were unable to reach an agreement, in part because Google wanted device manufacturers to be able to use Oracle's APIs in Android for free with no limits on modifying the code.

Google wanted to move quickly to develop a platform that would attract Java developers to build apps for Android.  The Android team had been working on creating its own APIs, but was unable to do so successfully.  After negotiations between the parties reached an impasse, Google elected to use Java code anyway.

It was undisputed that Google copied Oracle's declaring code and SSO for the 37 API packages verbatim.  The question United States Court of Appeals for the Federal Circuit was whether that copying was fair.

Fair Use

In the U.S. the fair use defense began as a judge-made doctrine and was codified in Section 107 of the 1976 Copyright Act. It operates as a limited exception to the copyright holder's exclusive rights and permits use of copyrighted work if it is "for purposes such as criticism, comment, news reporting, teaching, scholarship, or research".

Section 107 requires a case-by-case determination whether a particular use is fair, and the statute notes four nonexclusive factors to be considered. Those factors include: (1) "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;" (2) "the nature of the copyrighted work;" (3) "the amount and substantiality of the portion used in relation to the copyrighted work as a whole;" and (4) "the effect of the use upon the potential market for or value of the copyrighted work. The nature of this defence is very broad.

Court of Appeals concluded that given the facts relating to the copying at issue Google's copying and use of this particular code was not fair as a matter of law.

The Canadian Position

There are significant differences between the U.S. legislation and the Canadian Act. The provisions of the U.S. legislation dealing with "fair dealing" leave a broad equitable jurisdiction to the court to apply a defence to infringement as the presiding judge may see fit. The U.S. legislation refers to "fair use of a copyright work, for purposes such as criticism, comment, news reporting, teaching, scholarship or research". The exceptions in the Canadian Act are generally more narrowly drafted and exhaustively listed. They refer to fair dealing for the specifically listed purposes. In addition, sections 29.1 and 29.2 contain specific requirements to mention source and author. As a result, care should be taken in referring to American cases.

It seems relatively unlikely any of the exceptions in the Canadian Act would apply since the actions of Google would not come within any of the specifically listed allowable purposes.

Comment

The case is significant since it may have a potential impact on the Android platform. In addition since APIs are widely used, software developers are closely following the case.

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