SAVING SOFTWARE'S FAIR USE FUTURE.

Author:Samuelson, Pamela
Position:Special Issue: Software Interface Copyright

TABLE OF CONTENTS I. INTRODUCTION 536 II. BAD OR GOOD FAITH HAS LITTLE RELEVANCE IN FAIR use CASES 539 A. Subjective Mental States Should Be Given Little, If Any, 540 Weight in Fair Use Cases B. Seeking, but not Getting, a License Is not Evidence of 542 Bad Faith C. Good Faith Can Cut in Favor of Fair Use 543 III. UNLICENSED REUSES OF APIs MAY BE DONE IN GOOD FAITH 544 A. A Common Understanding Exists in the Software Industry 545 That APIs Do Not Need to Be Licensed B. Numerous Precedents Have Rejected Expansive Copyright 547 Claims in Software APIs C. As Members of ACIS, Sun and Oracle Have Supported the 551 Uncopyrightability of APIs IV. REUSES OF SOFTWARE APIs CAN BE TRANSFORMATIVE 553 A. Reimplementing an API in Independently Written Code Has 553 Been Held to Be Transformative for Fair use Purposes B. Other Technology-Related Fair Use Rulings Have Affirmed 555 Transformativeness Even When Whole Works Have Been Copied Without Alteration C. Follow-On Innovators Are Justified in Using Significant 557 Portions of Copyrighted Works if the Amount Taken Is Reasonable in Light of a Defendant's Transformative Purpose V. COMPUTER PROGRAM APIS ARE FUNCTIONAL CREATIONS THAT ENJOY 558 BROADER FAIR USE RIGHTS THAN ARTISTIC OR OTHER HIGHLY EXPRESSIVE WORKS A. Software Is Copyrightable, but Enjoys a Thin Scope of 558 Protection Because of Its Functionality B. The Nature-of-the-Work Factor Generally Favors Fair 560 Use in Software Cases VI. CONCLUSION 562 I. INTRODUCTION

The freedom to reimplement application program interfaces (APIS) in independently written software is the key issue at stake in Oracle America, Inc. v. Google Inc. (1) Properly resolving this issue is crucial because APIS play such an important role in modern software innovation. For instance, reuse of APIS is vital to enabling interoperability among distinct software programs. (2) Reuse of APIS also allows software programmers to more rapidly build upon the work of others in developing innovative new software. (3) The issue at the heart of the Oracle v. Google case, then, could not be more important for the modern software industry.

Although most cases testing the legality of unlicensed reimplementations of APIS have been decided on copyrightability grounds, (4) the Oracle case tests the viability of fair use as a defense to claims of copyright infringement for API reuses. How the Federal Circuit decides Oracle's appeal of a jury verdict in favor of Google's fair use defense will have significant implications for future software copyright fair use cases because Oracle, in effect, calls into question the viability of fair use defenses in all API reuse cases (and perhaps in software cases more generally). Fair use in the digital age has come to play an important role in balancing the interests of first- and second-generation creators in software as well as other creative fields. So, it would be not just unfortunate, but possibly devastating to competition and ongoing innovation in the software industry if fair use defenses were precluded in API reuse cases. This Article challenges Oracle's arguments that as a matter of law, no reasonable jury could have upheld Google's fair use defense, while also highlighting important considerations for future courts in the software fair use context.

Before delving into the legal issues, we offer a brief summary of the case. Oracle sued Google in 2010, claiming that the Java API is protectable by copyright law and that Google's use of 37 of the 166 packages of that API in its Android platform without a license was copyright infringement. The District Court initially ruled that the elements of Java replicated by Google were not subject to copyright protection because they were too utilitarian to qualify as copyrightable expression. (5) On appeal in 2014, the Federal Circuit reversed this ruling on the copyrightability issue, (6) and the U.S. Supreme Court denied Google's petition to review that decision. (7) Yet, the Federal Circuit agreed with Google that there were triable issues of fact about whether Google had made fair use of the Java API. (8) On remand, a jury in May 2016 found Google's use of the Java API elements was a fair use. (9) After the District Court declined to vacate the jury verdict, (10) oracle once again appealed to the Federal Circuit, claiming that it is entitled to a judgment in its favor on the fair use issue as a matter of law. (11)

Oracle's attack on the jury's fair use verdict rests on numerous flawed assertions that, if accepted by the Federal Circuit, could undermine robust software innovation by severely restricting the fair use defense's applicability in software copyright cases. Part II addresses oracle's erroneous claim that Google's failure to license certain elements of the Java API for its Android platform was evidence of bad faith as a matter of law. (12) This assertion is plainly inconsistent with the Supreme Court's decision in Campbell v. Acuff-Rose Music, Inc., (12) in which the Court not only expressed skepticism about whether subjective "faith"--good or bad--is relevant in fair use cases, but also explicitly stated that seeking, but not obtaining, a license to use another's copyrighted material should not be considered evidence of bad faith. oracle has also mistakenly asserted that courts and juries may consider only evidence of subjective bad faith, and not evidence of good faith, in assessing fair use. (14) However, numerous decisions have considered defendants' good faith in fair use cases. (15)

Part III rebuts Oracle's argument that Google could not have acted in good faith when reusing parts of the Java API. Google witnesses testified to a common industry belief that reimplementing APIS is permissible. (16) Google could reasonably have relied on this belief, as well as on several appellate court decisions that strictly limited the scope of copyright protection for software interfaces. (17) These rulings are, moreover, consistent with the position of the American Committee for Interoperable Systems (ACIS) that historically supported the freedom to reimplement software interfaces. ACIS, of which both Sun Microsystems (the original developer of the Java API) and Oracle were members, filed numerous briefs in support of the proposition that APIS were not and should not be copyrightable expression. (18)

Part IV challenges, on three grounds, Oracle's contention that the jury could not, as a matter of law, have found Google's purpose in reusing elements of the Java API to be transformative because Google used those elements to perform the same computing functions they were designed to perform. (19) First, this contention is inconsistent with the Federal Circuit's previous ruling that there was a triable issue of fact on Google's fair use defense, including on transformativeness. (20) Second, binding Ninth Circuit precedent has treated similar reuses of software interfaces as transformative. (21) Third, other technological fair use decisions lend support to Google's transformativeness argument. (22) Numerous fair use precedents have allowed reuse of copyrighted works, including computer code, to enable technological competition and innovation, including but not limited to reverse engineering, emulation, interoperability, data-mining, image recognition, plagiarism detection, and information location. Accepting Oracle's non-transformative use arguments would, in fact, largely preclude fair use as a defense in the software context more generally, since the utilitarian nature of software means that reusing software, including APIs, will almost always implicate the same computing functions that the software was originally designed to perform.

Part IV shows that Oracle has mischaracterized the second fair use factor by focusing on the creativity it took to develop the Java API. (23) That fair use factor is, however, concerned with the nature of the work at issue, not the degree of creativity required to develop an API. Under binding Ninth Circuit precedent, computer programs are deemed utilitarian works. (24) Such works enjoy a thin scope of copyright protection and are subject to a broad scope of fair use, no matter how much creativity it took to develop them. The jury's fair use verdict in Oracle strongly suggests that the jurors were persuaded that the Java API elements Google used in Android were more functional than expressive. If the Federal Circuit adopts Oracle's viewpoint on the nature-of-the-work factor, that would likely undercut fair use defenses in software copyright cases generally, not just in reuse of API cases.

  1. BAD OR GOOD FAITH HAS LITTLE RELEVANCE IN FAIR USE CASES

    The Federal Circuit has yet to express an opinion on whether showings of good or bad faith should help or hurt fair use defenses. Oracle hopes to persuade the Federal Circuit to adopt its view that bad faith precludes fair use. Its "most emphatic argument" in the District Court, and one of its most aggressive arguments on appeal, was that Google acted in bad faith, as a matter of law, by not taking a license for its use of portions of the Java API in Android. (25) In its appeal brief, Oracle characterized bad faith as "a one-way ratchet: Bad faith weighs against fair use, while a copyist's good faith cannot weigh in favor of fair use." (26) The Federal Circuit should reject Oracle's arguments because these assertions are plainly inconsistent with the Supreme Court's important fair use ruling in Campbell v. Acuff-Rose Music, Inc. (21) If accepted, Oracle's position would threaten the role of fair use in fostering productive competition in the software industry.

    1. Subjective Mental States Should Be Given Little, If Any, Weight in Fair Use Cases

      In Campbell, the Supreme Court expressed some skepticism about whether good or bad faith should be given weight in fair use cases. (28) The Court's caution about this consideration may explain why the Federal Circuit, when remanding the Oracle case for...

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