Author:Gratz, Joseph


Copyright exists to promote creativity. As a result, the copyright laws strike a series of delicate balances in order to protect different groups of creators. Too much protection for one group thwarts the creative innovation of others. Achieving the right balance is particularly important when it comes to software because software's interactive nature makes the risks of overprotecting existing software particularly great.

Oracle v. Google presents a useful lens to see how this balance is struck. As Peter Menell has documented in detail, (1) the case concerns the extent and limits of interoperability between platforms. In particular, the ultimate outcome of the case will help decide whether the future of phone platforms is open or closed. That in turn has significant implications for innovations written for those platforms.

The Ninth Circuit, like others, has emphasized the importance of interoperability in computer software copyright cases. It has repeatedly held that parties are free to copy the elements of a computer interface necessary to write new and different programs that work with the plaintiff's existing program. (2) The Federal Circuit will nominally apply Ninth Circuit law in Oracle v. Google. How it does so will affect the future of software innovation not just on the Android platform but in "walled gardens" throughout the Internet. (3)

Software companies, and startups in particular, rely on interoperability to build new and innovative products. Without it, developers would be at the mercy of proprietary platforms written in specific, rapidly obsolete computer languages and without the ability to create new and innovative products that are broadly accessible to consumers. (4) The result of such a balkanized regime would be significantly less creativity--the very opposite of what copyright law is designed to achieve. The freedom to interoperate is particularly important in software copyright because copyright in software is more likely than other copyrights to confer control over a market.


    Debates over interoperability have a long history in software copyright law. The basic contours of that law were established a quarter century ago. At that time, both Oracle and its predecessor Sun lauded the benefits of interoperability. In a brief filed by the American Committee for Interoperable Systems, a trade association that claimed both Sun and Oracle as members in the 1990s, both companies argued that copyrights over application program interfaces (APIs) should not be used to prevent the creation of interoperable programs. They wrote:

    If the developer of one part of the environment can use copyright law to prevent other developers from writing programs that conform to the system of rules governing interaction with the environment--interface specifications, in computer parlance--the first developer could gain a patent-like monopoly over the system without ever subjecting it to the rigorous scrutiny of a patent examination. (5) Things have changed, as one of the authors worried they might. (6) Oracle's effort to prevent interoperability in Oracle v. Google is particularly ironic because Java was itself developed as a way of creating interoperability across platforms. But because Java was not released as open source software, Lemley & McGowan worried in 1998 about the possibility that Sun would try to close the Java standard to others to reap the benefits of widespread adoption. (7) And indeed that is what happened after oracle bought Sun.

    Whether Oracle can close the standard is another matter--a legal one. To some extent those issues are a function of the history of Java, which might create contract or estoppel rights to continued access to Java APIs on behalf of existing users or perhaps even the public. A failure to honor those rights might even run afoul of the anti-antitrust laws, though courts have properly made proof of such an antitrust violation difficult. Those issues are discussed elsewhere, and we shall not focus on them here. (8)

    Rather, our focus is on the role of interoperability in copyright law. If oracle has no power under copyright to restrict the writing of interoperable programs, either applications programs or platforms, its desire to close off Java to competition will not matter much. Companies that want to write interoperable programs will be able to reverse engineer the Java code or copy publicly exposed APIs in order to do so.

    Software copyright law has long favored interoperability. In many cases it has done so by denying protection altogether to elements of computer programs that exist only for purposes of interoperability, like APIs. (9) The Federal Circuit's prior decision in Oracle v. Google foreclosed that approach here. (10) It has (justly) been criticized for that. (11)

    But even if the Java APIs are copyrightable, that does not mean that their use is copyright infringement. As described below, the Ninth Circuit has repeatedly interpreted the Copyright Act's fair use doctrine to protect the right of third parties to copy APIs when necessary to make their products work with products made by the copyright owner or others. That is true even when the use of the API requires copying the computer code itself, not just the higher-level functional aspects of the API. And it is true even if the defendant copies the API in order to compete directly with the plaintiff by producing a compatible system. (12)

    In Sega Enterprises Ltd. v. Accolade, Inc., (13) for example, Accolade wanted to make video games compatible with Sega's game console over Sega's objection. To make its games run on Sega's platform, Accolade copied the entirety of Sega's computer code in order to "reverse engineer" the code and extract only the APIs--the portions necessary to ensure compatibility. The Ninth Circuit held that was a fair use even though it involved copying of the entirety of the code, because making that copy was necessary to get access to the interface components--which the Ninth Circuit found to be "unprotectable." (14) The Court emphasized that "because Accolade has a legitimate interest in gaining such access (in order to determine how to make its cartridges compatible with the Genesis console)," its copying of the code to replicate the interface components was a fair use. (15)

    The fact that Accolade sought to write its own original programs, not to copy Sega's programs, loomed large in the Ninth Circuit's analysis:

    Accolade copied Sega's software solely in order to discover the functional requirements for compatibility with the Genesis console--aspects of Sega's programs that are not protected by copyright. With respect to the video game programs contained in Accolade's game cartridges, there is no evidence in the record that Accolade sought to avoid performing its own creative work. Indeed, most of the games that Accolade released for use with the Genesis console were originally developed for other hardware systems... [A]lthough Accolade's ultimate purpose was the release of Genesis-compatible games for sale, its direct purpose in copying Sega's code, and thus its direct use of the copyrighted material, was simply to study the functional requirements for Genesis compatibility so...

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