In Part I of this two-part post, I introduced the SCOTUS’ judgment, the concept of API and summarised the majority’s finding. In this Part II, I summarise the minority opinion and share my critique of the judgment.
The minority’s opinion
The minority agrees with the majority insofar as “fair use” being a mixed question of fact and law. The minority disagrees with everything else. The minority criticises the Courts approach of determining the application of an exception/defence without issuing a finding on the existence of the right, i.e., copyrightability. On this point, the minority endorses that the “declaratory code” is copyrightable subject matter since it fulfils the “minimal degree of creativity” test from the earlier ruling in Feist publications. Among other reasons, Google had conceded that Oracle could have created the lines of “declaring code” in many ways, i.e., the doctrine of merger did not apply in this case. The minority holds that the “declaring code” incorporates “implementing code” – both are inextricably bound, and one cannot function without the other. Therefore, if the “implementing code” is copyrightable (a point considered by Google), the minority held that the “declaring code” could not have a different conclusion (Sl. Op. at pages 4 – 7).
On the 1st factor of the “fair use” doctrine, the minority criticises the majority’s position to relegate “declaring code” to lower strata of copyright protected subject matter. The statute considers all computer programs as one group and does not differentiate in the threshold/level of protection. Further, the minority ventured, even if the actual value of “declaring code” is contingent on programmers/developers investing in learning it, familiarising and popularising the same, this cannot result in a lower threshold of protection. The minority alludes to examples of other types of copyrighted works where such logic would fail. E.g., a Broadway musical script contingent on the theatre, the actors and singers investing time and popularising it.
On the 4th factor, the minority notes the majority’s failure to account for the damage caused to Oracle. For instance, evidence suggested that as a direct result of Google’s act, Amazon renegotiated a license fee with Oracle with a 97.5% reduction in royalty rate. Similarly, evidence of Samsung reducing its royalties to Oracle from $ 40 million to $ 1 million was also recorded. Merely because Oracle, by itself, was facing difficulties in the smartphone market, did not preclude Oracle from gaining in that market through licensing arrangements. The alleged possible hold-up situation that Oracle could create was considered by the minority as speculative because other players like Apple and Microsoft created mobile operating systems without using Oracle’s declaring code. Per contra, the minority notes, Google had already been found to have used the Android operating system to violate anti-trust laws. Therefore, alleged potential abuses by Oracle carried little weight as compared to the actual abuse by Google.
On the 2nd factor, the minority criticises the majority for redefining what is understood by “transformative” in copyright law. The mere fact of making new physical products carrying the verbatim code is not “transformative”. “Transformative” is a term used to refer to adding creativity to the underlying work; not adapting a verbatim copy in another platform. The minority notes the undisputed finding of fact that Google’s use of Oracle’s code was not to reverse engineer a system to ensure compatibility or interoperability. Instead, Google’s copying was a simple case of verbatim copying of the “declaring code” and using it for the same purpose/function but in a competing platform.
On the 3rd factor, the minority observes that neither Google nor the majority disputed the Federal Circuits conclusion that Google copied the heart or focal points of Oracle’s work. According to the minority, in such a circumstance, especially where Google contribution was not “transformative” of the copied work and was intended to result in a product that competed with Oracle’s potential revenue, the copying was indeed qualitatively and quantitatively substantial.
The SCOTUS was confronted with the issue for the first time, and it is fair for the Court, especially the highest court of a country, to consider the contemporaneous situation and technological evolution when laying down the law. But I feel that the majority’s opinion is intellectually dishonest.
The fact remains that Google took the easy way out – copying the “declaration code” from Oracle – whereas other competitors such as Apple and Microsoft did not. This copying was admittedly for a commercial purpose, albeit indirectly achieved – Android OS was made freely available, but Google gained tremendous revenue through ad sales. Much of the revenue volume from ad sales was thanks to Android’s popularity and attributable, in part, to the using of Oracle’s “declaring code” that attracted program developers to build for Android platforms.
This undisputed finding of fact settles this point:
“…While Google repeatedly cites to the district court’s finding that Google had to copy the packages so that an app written in Java could run on Android, it cites to no evidence in the record that any such app exists and points to no Java apps that either pre-dated or post-dated Android that could run on the Android platform. The compatibility Google sought to foster was not with Oracle’s Java platform or with the JVM central to that platform. Instead, Google wanted to capitalise on the fact that software developers were already trained and experienced in using the Java API packages at issue…” 750 F.3d 1339 at 1371.
It is precisely at this juncture of reasoning that the majority contradicts itself. The majority recognises that the creative element in the “declaring code” lies in making it intuitively appealing and easy-to-use so that it becomes popular with the programmers. The popularity with the programmers was the intended effect. However, the majority considers this effect of being an independent factor for which Oracle/the creator gets no credit. Instead, the Court uses this fact against Oracle!
If Google used entirely new “declaring code”, programmers would have had to invest time to learn it and familiarise themselves with it. There was every chance for this to have failed, and Android may not have been successful as successful. This tremendous commercial gain made by Google was established at trial to be at Oracle’s cost – the loss of revenue from licensing deals and thwarting Oracle’s effort to enter the market through 3rd parties.
Consider yet another undisputed fact:
“…[Google and Oracle] negotiated for months but were unable to reach an agreement. The point of contention between the parties was Google’s refusal to make the implementation of its programs compatible with the Java virtual machine or interoperable with other Java programs. Because Sun/Oracle found that position to be anathema to the “write once, run anywhere” philosophy, it did not grant Google a license to use the Java API packages” 750 F.3d 1339 at 1350.
Given this finding of fact, for the SCOTUS to have used a potential/speculative hold-up by Oracle as a factor against Oracle is a non-sequitur.
Finally, the minority’s criticism of the majority is an approach to redefine what is “transformative” hit the nail on its head. It is an excessive twist to the principle – the copied work was not transformed in any way – it was simply copied verbatim and applied to a new platform.
Relevance to India
The Supreme Court assumed copyrightability of the “declaring code” of Sun Java API. But it chose not to interfere with the Federal Circuit’s finding that this was, indeed, copyrightable. To that extent, this litigation journey in Oracle v. Google has significant persuasive value in India on the issue of copyrightability of APIs even under Indian law.
On the “fair use” point, most readers will now be aware that the “fair use” doctrine is distinct from the “fair dealing” doctrine under Section 52(1)(a) of India’s Copyright Act, 1957. This fair dealing exception in the Indian law would not be attracted to the facts in Oracle v. Google because the provision is expressly not applicable to computer programs. Section 52(1)(ab) provides a separate exception relating to interoperability, but given the finding of fact that the copying by Google was not for interoperability, even this exception will not apply. On facts, it does not appear that even sub-clause (aa) would apply. On the face of it, none of the other exceptions contained in Section 52(1) of the Indian Act seems to apply. To this extent, the SCOTUS’ judgment in Google v. Oracle has limited value to the Indian legal setting.
Nevertheless, it does show that the SCOTUS can (and often does) engage in some incredible sophistry to reach a particular conclusion, though it may veer far away from its precedents (or even common sense). The conclusion reached by the SCOTUS on the “equitable” doctrine of “fair use” was anything but equitable! Perhaps, someday in the future, this dissent may trigger an overturning. At the very least, for other jurisdictions that attach persuasive value to US jurisprudence, the dissent provides a reasonable alternative view to be considered.
Note: I represent/have represented clients on related and unrelated issues. Views expressed here are personal.