Patent Lessons from the Google v. Oracle API Dispute

May 28, 2021
By Paul Horbal and Sunil Rao

The United States Supreme Court (SCOTUS) recently issued a landmark copyright decision in Google LLC v Oracle America, Inc. finding that Google was not liable for copyright infringement when it copied 11,500 lines of code from Oracle’s Java SE computer program. The Court did not specifically rule on the copyrightability of Oracle’s asserted code. Instead, the Court’s decision was based on its finding that Google’s actions were “fair use” of the asserted copyrighted code.

The copied lines of code were part of the so-called “declaring code” of the Java Application Programming Interface (API). The declaring code is pre-written code, from the API’s library, that is used to initiate complex tasks performed via the API. Notably, in developing the Android platform, Google created its own implementing code. However, Google copied the Java API declaring code for 37 packages to facilitate uptake by programmers who were already familiar with the Java programming language, which would then ensure widespread development of programs for Google’s Android systems. The copied 11,500 lines of declaring code amounted to virtually all the declaring code needed to call up hundreds of different tasks. However, the copied 11,500 lines of declaring code amounted to only 0.4 percent of a total 2.86 million lines of the Java API code (including the implementing code).

Our earlier article provides a Canadian viewpoint on this decision from a copyright perspective. Specifically, a Canadian court is unlikely to excuse Google’s copying under the narrower “fair dealing” allowed under Canadian copyright law. Instead, a Canadian court would likely have to decide the issue based on the copyrightability of the asserted code. In its decision, SCOTUS found Oracle's declaring code “inextricably bound” up with its function and purpose as code – i.e., to help divide and organize computing tasks. Function and purpose are not copyrightable generally. This suggests that if the copyrightability of the asserted API declaring code were considered in Canada, the decision still may have gone in Google’s favour, albeit for different reasons.

The SCOTUS decision presents a few challenges to developers hoping to secure intellectual property (IP) protection for their APIs. In the US, courts may find “fair use” of copied declaring code, particularly in cases with fact scenarios similar to the Google LLC v Oracle America, Inc. case. In Canada, copying of the API declaring code may not fall under one of the enumerated “fair dealing” purposes, but there is a risk that the declaring code may not be copyright eligible.

A potential solution to the challenges associated with copyright protection is to obtain patent protection for the API, if available. Fortuitously, patent protection may be available for code that is offered the thinnest scope of copyright protection precisely because of its function and purpose as code. Further, there have been recent positive developments for patent applicants with computer-implemented inventions. In the last few years, inventions involving computer software had often faced challenges regarding patentable subject matter, or, in other words, what can be patented. However, recent developments in both the US and Canada appear to provide greater clarity and guidance regarding this issue.

The Google LLC v Oracle America, Inc. decision suggests that, at least in some instances, copyright protection may not be as robust as patent protection for APIs. Depending on how a competitor is likely to copy and use the API declaring code, patent protection may provide a useful tool in addition to copyright protection.

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