The copyright and patent dispute between Oracle and Google continues, however a partial verdict on the copyright side of the debate has been handed down.

The trial jury has decided the Google has infringed on Oracle’s copyright, a copyright dispute previously covered by IP Osgoode last year; however, the court could not decide if the infringement was within the legal definition of fair use.

At issue in the copyright portion of the case is whether or not Google’s unlicensed use of Java, the base language for its Android mobile operating system, infringes on the Java copyright. The dispute has its origins in 2005 when Google and Sun Microsystems signed an agreement to help spread each other’s software, and when Google started to focus on the creation and launch of its new mobile platform, Android. The relationship soured soon after, with Google’s insistence not to adhere to open-source expectations with the Android mobile operating system, but Sun did not take any action at the time. In 2010 Oracle acquired Sun and the Java platform, opted for a more adversarial approach in protecting their newly acquired intellectual property, and filed suit against Google for infringement.

Google’s argument against the copyright charges is that even if the 37 Java application programming interfaces (APIs), the entities at the core of the dispute, were copyrightable, their use of the coding constructs fall under fair use and are free to use. Fair use, as defined in the US by 17 U.S.C. § 107, relies on the purpose and character of the use, the nature of the work, the amount of the work that has been used, and the effect on the value of the work through the use. Google claims that the functional nature of APIs and the transformative manner that Google is using them in supersedes the original work and therefore qualifies as  fair use. Also, the very small percentage of material that the alleged infringed works represent out of the entire Java operating system, and Oracle’s goal for the Java platform is akin to monopolistic use and “runs counter to the statutory purpose of promoting creative expression”, is sufficient to prove that their use of the APIs falls within the fair use domain.

Oracle’s response against the fair use argument centred on the commercial nature of Google’s use of the copyright work and the pre-existence of a license what would cover Google’s use of their IP. The mobile version of Java, Java ME, offers the license raised by Oracle that would avoid the current issue between the two tech giants. This license “was the dominant part of the hundreds of millions of dollars a year Sun took garnered in Java revenue”, a stream of revenue that Oracle undoubtedly wants to protect. Google has not paid for this license and Oracle and, in the event that they lose this dispute or Google is able to avoid damages, may lose a large area of revenue from their existing licensees if Oracle’s other clients choose to follow Google’s approach.

The jury could not decide between the two arguments and the decision now rests with Judge William Alsup. It should be noted that Google’s argument against the second point of the fair use “test”, that only 37 APIs were used out of hundreds of thousands of lines of code comprising the Java operating system, is not as simple as it is stated. The software engineering practice of code reuse can mean that a very small area of code can be exponentially more important and used much more that other areas of code. This is especially true with core APIs that are provided by the language itself, such as those in dispute. Without further evidence on their popularity it would be unjust to base any decision on this argument.

Judge Alsup must ultimately make a decision on the copyrightable nature of APIs and decide first whether APIs are copyrightable, and then whether use of an API is transformative enough to qualify for fair use or whether an existing license encapsulating the use of the APIs is sufficiently commercial to defeat a fair use claim. There is a hint of irony in this argument, as, mentioned in IP Osgoode’s previous blog on this case, it can be argued that APIs are designed solely for transformative use, so the decision places the original wishes of the software designer, Java, with the business priorities of the current owner, Oracle. In a related note, the European Court of Justice has recently ruled that APIs and other functional characteristics of software are not eligible for copyright protection.

The dispute continues, and as we wait for Judge Alsup’s copyright decision the case now moves through the patent and damage phases of Oracle’s complaint.

Mark Bowman is a JD candidate at Osgoode Hall Law School.