Google LLC v. Oracle America, Inc.—Fairness or Injustice?

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Video

About The Speaker

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Cay Horstmann
Author of Core Java (11 editions since 1996, 12th edition to appear with JDK 17), Java/JavaScript/Scala for the Impatient, etc.
Not an attorney

Intellectual Property

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Categories
- Trademark
- Trade secret
- Copyright
- Patent
Convey legal entitlements
Contract between society and creator

Trademarks

Distinctive sign that marks a product or service
Must be registered to be protected
Must have “distinctive character” (E.g. Windows is not a Ⓡ)
Must be used
Must not become generic (e.g. Aspirin in U.S.)

Trademarks in Software

Open source software enforces their marks: Mozilla | Ubuntu
Some open source products get rebranded to avoid conflict: IceWeasel/IceCat
Use of Java trademark requires license from Oracle
That's why JavaEE is now JakartaEE
- And all the packages have to be renamed
- And AdoptOpenJDK is becoming Eclipse Adoptium

Trade Secret

Secret known to the creator of a technology and protected by confidentiality agreements
Can extend indefinitely (e.g. Coca Cola)
If it is no longer a secret, the protection is gone
No protection against independent discovery
Legal to reverse engineer
Exception: DCMA | http://www.cs.cmu.edu/~dst/DeCSS/Gallery/

Patents

Exclusive right to an inventor in exchange for the disclosure of the invention
Term: Currently, 20 years from filing date
Requirements:
- Novel
- Non-obvious to one of “ordinary skill in the art”
- Useful
Fun fact: From 1790 to 1880, models were required with all patent applications
- To cut down on the examiners' workload in denying perpetual motion machines
Historically, computer software was not patentable
+ processes, machines, articles of manufacture, and compositions of matter

- scientific truths or mathematical expressions
1983: The first software patent, RSA
Are patents necessary for innovation? Maybe not

Examples of Patents

No. 6,469: A device to lift boats over shoals, A. Lincoln
No. 223,898: Electric Lamp, A. Edison
No. 4,405,829: Cryptographic Communications System and Method, R. Rivest, A. Shamir, L. Adleman
No. 4,197,590: The “XOR” patent. Actually, only claims 10 and 11 refer to XOR
No. 4,558,302: The “LZW” patent that enabled Unisys to collect royalties on GIF
No. 6,334,214: A typical junk patent
No. 5,367,685: Method and apparatus for resolving data references in generated code

Patenting Rounded Corners

Apple and Samsung sued each other in many courts around the world
In a lawsuit filed in San Jose, Apple asserts a design patent on rounded corners, as well as patents describing a “bounce back effect” (later invalidated by the USPTO), “tap to zoom”, and “on-screen icons”
In August 2012, a jury of twelve citizens awards Apple $1.049 billion dollars in damages

Copyright

Protects the expression of an idea, not an idea
Automatic (in the U.S.) once the expression has been created through “mental labor” and fixed in a “tangible medium”
Duration: life of author + 70 years (or 120 years from date of creation for work for hire)
Fair use exemptions

History

Statue of Anne (1710), US Copyright Act (1790): 14 years + 14 years renewal
Article I, Section 8, Clause 8 of the United States Constitution: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
1831: 28 years + 14 years renewal
1909: 28 years + 28 years renewal
1970: life of author + 50 years
1998 (Sonny Bono Copyright Term Extension Act): life of author + 70 years
2003: Supreme Court upholds CTEA
- It's still a limited time

Compaq Computer

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1981: IBM releases the IBM PC
Publishes spec for ISA bus, source code for BIOS
1982: Compaq releases the Compaq Portable clone
Compaq engineers realized that they were tainted when they saw the BIOS code
Two engineering teams: “clean” and “dirty”
- Dirty team read the BIOS source, told system call API to clean team
- Clean team implemented calls, never seeing the source
- Dirty team tested against IBM BIOS
IBM sued other companies that directly copied the BIOS, but not Compaq

Lotus vs. Borland

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“Keyboard” macros of the Lotus 1-2-3 spreadsheet were based on the menu structure
The Borland Quattro spreadsheet copied the menu structure to ease migration
1990: Lotus sued, and the district court agreed that the menu structure was protected by copyright
- Alternate expressions were possible: “Exit” instead of “Quit”
The appeals court reversed:
- The menu structure is a method of operation
- 1879 Baker vs. Selden: Cannot copyright accounting system
- Relearning menus would be an “absurd” burden for users

Sun Microsystems v. Microsoft

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1996: Microsoft licenses Java from Sun Microsystems
License agreement required conformance to test suites, implementation of new Java features within 6 months
Microsoft practiced “embrace, extend, extinguish”
- Added delegates, Win32 API
- Refused to implement JNI, RMI
1997: Sun sues Microsoft for breach of contract, usage of trademarked logo
2001: The parties settle, Microsoft pays $20M and discontinues J++

Android

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2003: Android Inc. founded
2005: Google buys Android
2008: Android 1.0
Programmed in Java
For programmer convenience, used Java SE API
“Dalvik” virtual machine
Didn't make sense to use all of Java SE
Didn't make sense to use Java ME
Sun offered a licensing deal (rumored at $30-50M), but parties couldn't agree over WORA
Google used the cleanroom Apache Harmony implementation instead
But not the Java logo
Sun decided not to do anything
2009: Oracle buys Sun

Google vs. Oracle

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2010: Oracle sues Google for its use of Java in Android
Patents:
- Circuit judge makes Oracle pick their two best shots
- 6061520 (Method and system for performing static initialization), RE38104 (Method and apparatus for resolving data references in generated code)
- Jury finds that Android doesn't infringe
Copyright:
- APIs—see next slide
- Nine lines of range check code by Josh Bloch
- Eight decompiled test files
- Infringement found, parties settle for $0

The 37 APIs

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Android uses these 37 APIs: java.awt.font java.beans java.io java.lang java.lang.annotation java.lang.ref java.lang.reflect java.net java.nio java.nio.channels java.nio.channels.spi java.nio.charset java.nio.charset.spi java.security java.security.acl java.security.cert java.security.interfaces java.security.spec java.sql java.text java.util java.util.jar java.util.logging java.util.prefs java.util.regex java.util.zip javax.crypto javax.crypto.interfaces javax.crypto.spec javax.net javax.net.ssl javax.security.auth javax.security.auth.callback javax.security.auth.login javax.security.auth.x500 javax.security.cert javax.sql
See them here
About 11,000 LOC for class names, method signatures
Javadoc was reworded
Cleanroom implementation (2.86M LOC)

API Rulings

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2012: Circuit judge Alsup (“the judge who can code”) finds that anyone is free to reimplement an API.
It does not matter that the declaration or method header lines are identical.
2014: Appellate court disagrees—structure, sequence, and organization of API is copyrightable
2016: Second trial, jury finds that reimplementation is fair use
2017: Appeals court finds that the jury didn't have a clue about the law—it couldn't possibly have been fair use
2021: Supreme court decides it is fair use
Minority opinion: It was anything but fair

The Fair Use Doctrine

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Section 107 of the US Copyright Act
Permits unlicensed use of copyrighted materials under certain circumstances
Four factors:
1. Purpose and character of the use (commercial vs. nonprofit, transformative)
2. Nature of the copyrighted work (imaginative vs. factual)
3. Amount and substantiality of the portion used in relation to the copyrighted work as a whole
4. Effect of the use upon the potential market for or value of the copyrighted work
Transformative: Add something new, don't replace original
Example: Campbell vs. Acuff-Rose Music
- 2 Live Crew's parody of Roy Orbison's "Pretty Woman" was fair use

The Majority Opinion

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Authored by Breyer
Doesn't want to decide whether APIs are copyrightable
But even if they are, in this case, it's fair use
Transformative: New market (smartphones)
Nature of the work: organizational, not imaginative
Amount copied: Just 0.4%
Effect on market: If it was for Sun/Oracle, there still might be no Java on smartphones. Upholding monopoly would “not further copyright's basic creativity objectives.”

The Minority Opinion

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Authored by Thomas
The majority doesn't want to bother figuring out whether the code is copyrighted
Google copied 11,500 LOC—that's a lot
Google made a lot of money as a result
There was nothing transformative here—no criticism, comment, reporting, teaching, scholarship, research
Google deprived Oracle of any possibility of license revenue in the mobile space
- Like, from Savaje

And Now For Something Completely Different

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Any Warhol created images of the musician (formerly know as) Prince
Using a photograph by Lynn Goldsmith
Who sued his estate
And won
Now the Warhol estate is appealing
Citing Campbell v. Acuff-Rose Music
And Google LLC v. Oracle America, Inc., all of two weeks old
“If line-for-line copying of software code can be deemed transformative by the Supreme Court, so too can Warhol's silkscreens of a Prince photo.”
Link

What Did We Learn Today?

Is it fair if APIs are not copyrightable?
- Developing a good API can be a lot of work
- Not everything that's hard leads to a monopoly right
Do the courts know what is going on?
- There was a lot of talk about Math.max(x, y)
- And how it wouldn't have been a problem if that was Math.larger
- Except by the judge who can code
The law is not a deterministic API
- The same rules can lead learned judges come to opposite conclusions