If you are in the business of integrating computer software into new, improved products for your industry, a new opinion by the U.S. Supreme Court might change your world and the ways in which intellectual property (IP) affects your interests. Contrary to popular belief, the new Court opinion is not limited to situations involving Java and Android. Nor is its effect limited to traditional copyright owners like Hollywood studios, music labels, and publishers. Significantly, the new legal holding applies to innovators of a wide variety of computer-controlled devices and systems in many technologies and industries.
Google v. Oracle
The holding in Google v. Oracle, No. 18-956, slip op. (U.S. Apr. 5, 2021), worth a cool $9 billion, is that Google and others are free, under the fair use doctrine of copyright law, to copy Oracle/Sun’s Java API (application program interface) code. They’re also free, under copyright law, to write their own implementing code or to have others do so. Taking these two points together, Google escaped liability for infringement of Oracle’s copyrighted Java code. They can have Java programmers write apps to run on the Android operating system. And they can thumb their noses at Oracle.
Let’s unpack the term API for those of us who are not steeped in interface code. An “app” is like a customer walking into a restaurant. The computer on which the app runs is like the kitchen. An API is like the waiter that goes back and forth between the customer and the kitchen. The Supreme Court has just held in Oracle that the waiter has to serve every customer that enters the restaurant.
Oracle’s predecessor Sun wrote the Java code and made some effort to protect the APIs with patents and copyrights. Google did not want to pay Oracle/Sun for a license to use the Java code in its Android systems. So Google wrote its own code (or at least 99% of it), and it incorporated, that is, copied, the APIs. The Oracle/Sun patents fell by the wayside: A jury found that Google did not infringe Oracle’s patent claims. And now the Supreme Court has held that under copyright law, it was okay for Google to use the APIs without any obligation to Oracle, because (1) Google’s use was held to be new and transformative, (2) the APIs comprised less than 1% of Java’s total code, and (3) the APIs were held to be functional, thus making it “fair use” for Google to copy and use the same.
Oracle’s Lessons for Innovators
How is the Oracle opinion relevant to you? If you’re in the business of providing your industry with better products that include computer control for local or remote devices such as via the Internet of Things (IoT), bear with me, and you’ll see how to profit from this new legal development.
It’s hard to think of a device or a system of any sophistication that is not controlled by or connected to a computer through the use of a software or firmware program, and often a communications schema, too. Thus, the reach of the Oracle holding goes far beyond the computer and smartphone industries. For example, automobiles and other vehicles for use on land, air, or sea are now controlled by computers and software or firmware, and they are or soon will be subject to control under 5G standards for the Internet of Things (IoT). Computers and software are ubiquitous in communications, including various forms of data transmission. The same is true of robotics and other advanced manufacturing systems. Every industry is being transformed through the use of computers and software.
Example: Google Nest and the IoT
Speaking of Google and APIs, here is an example of a real world practical application of computer control and software that goes far beyond Android and smartphones. Google has acquired a company called Nest, known for smart home thermostats used in heating, ventilating and air conditioning (HVAC), and for monitoring and control of other smart appliances. These devices are ripe for the Internet of Things (IoT), a market that overall (not just Nest alone) is estimated to have a $9 trillion current potential. Google also has developed APIs for Nest, and they have published guidelines for developers of apps intended for tracking and control of Nest devices and systems. One of the reasons that Google acquired Nest is that the technologies are covered by hundreds of U.S. patents, now owned by Google.
Be Like Google: Circumvent Your Competitors and Dominate Your Industry with Patents
Now, what does Google v. Oracle have to say to those who design better devices and systems in the above-mentioned and myriad other industries? Especially when the improvements are often centered in new or improved control of what might be traditional or only slightly modernized mechanical and/or electrical components?
Again, the holding is that Google and others are free to copy Oracle’s Java APIs (application program interfaces). They’re also free, under copyright law, to write their own implementing code or to have others do so. They can circumvent Oracle’s copyrighted Java code.
You don’t want your competitors to design around your IP rights pertaining to the computer control systems that you incorporate into products for your industry. What about patents?
Let’s go back to 2010, when Oracle asserted, ultimately, two patents against Google. In 2012, the jury found both patents not infringed. Those two patents simply did not hold up to the job of protecting the Java APIs from an outright assault by Google.
In the end, under the new Supreme Court holding, Google is permitted to invite app developers to write Java programs to run on the Android operating system. That turned out to be bad for Oracle. They hoped to win $9 billion from Google, and so far, it looks like they’ll get nothing. Maybe the app developers don’t care. They can keep writing apps in Java code for Android and earn compensation of about $90,000 per year. Meanwhile, Google makes billions in revenue.
As for Google’s own IP portfolio, it is heavily weighted in patents, as discussed above in connection with its Nest technologies.
Be like Google in circumventing your competitors’ IP rights and in protecting your own IP rights.
Copyright Protection and Its Limits
In Google v. Oracle, copyright failed Oracle. Copyright is about creative expression—think art, music, creative writing – not about functionality.
Yet copyright, which provides legal protection against copying of published creative expression, has its place in the protection of software. Think of Microsoft Office. If anyone is caught with a bootleg copy of the software, they will be made to pay dearly for the infringement of Microsoft’s copyright.
By the same token, if you copyright your software, and someone copies it “lock, stock, and barrel,” you might have a good case against them for copyright infringement. You’ll have to register the copyright before you file suit, and you’ll have a better case for damages if you register the copyright even sooner, before the infringement begins.
But here’s the thing: Copyright won’t help you when a competitor writes their own code to accomplish all the functions and features provided by your code. It won’t help you if someone copies your APIs – your functional code – and incorporates them into their larger, home-grown, software program.
Patents and Trade Secrets
Here’s one thing that you may wish to do. Patent your new devices and systems, including the computer control that you build into those systems, and the methods by which the computer programs operate the devices and systems. Patents, in contrast to copyrights, are all about functionality.
File your patent application promptly, as soon as your practical, applied technology is “ready for patent,” i.e., when it is developed sufficiently to know that it will work for its intended purpose. For best results, make sure the application is as fully detailed as possible as of the date of filing. For most international purposes, it is essential to file the application in the U.S. Patent and Trademark Office (or, for citizens of other countries, in such patent office as may be appropriate) before the first public disclosure of the new technology. This is because of an international standard known as the “absolute novelty” requirement. In the U.S., there is a limited one-year grace period for the inventor or his company to see if there is a market for their new technology before filing for a U.S. patent, but that generally will not save or rescue foreign patent rights.
Oracle and its predecessor Sun failed in their attempts to protect Java code with patents. The APIs, with their functionality, are fair game to copy under the fair use doctrine of copyright law, but it’s quite possible that Oracle and Sun could have patented the functionality of those APIs. They also might have been able to patent the implementing code that was rewritten by Google to run as Android.
If your novel software has practical, real-world applicability, such as in instructing a computer how to control a device or a system, it might be appropriate subject matter for a patent application. One advantage of a patent over a copyright is that the scope of the former is defined by its claims, which are not necessarily or even usually limited to the specific code used in the device or system.
In addition, or alternatively, if your new technology is secret, it may be protectable under the law of trade secrets. But bear in mind that trade secrets require care, safeguarding, and the use of NDAs when appropriate, and the rights can be lost if the confidential information is publicly disclosed or reverse engineered.
Disclaimer: This article is not intended as legal advice, and it should not be relied on as such. Every situation is different, and the law must be applied to the specific facts of the case. If you desire to obtain legal advice or representation, you may wish to consider engaging an IP lawyer.
The take home lesson of Google v. Oracle for you, the business owner, manager, or innovator engaged in making better devices and systems for your industry, is to protect the IP rights pertaining to your innovative products, including the computer control techniques that make them work better than those that existed before you came onto the scene. A belt-and-suspenders approach, combining copyright, patent and/or trade secret protection, as appropriate, can provide stronger IP rights than any one of those forms of IP protection alone. Protect your IP rights. Call your IP lawyer today.
The author expresses his thanks to his colleague Alex Shtraym for helpful input and insights, including mention of the “waiter” analogy for APIs.