Copyright Corner Q&A Series: Pam Samuelson, UC Berkeley Center for Law & Technology

Last April, the U.S. Supreme Court issued a decisive victory for fair use in its 6-2 ruling in the Google v Oracle case. In his majority opinion, Justice Stephen Breyer highlighted the importance of fair use to benefit the public, which is the key purpose of copyright law. Re:Create asked Pam Samuelson, Director of the Berkeley Center for Law & Technology and renowned copyright expert, about the impact of the historic decision one year later. Samuelson addressed how the case helps software developers and computer scientists, and its considerable influence in future copyright lawsuits, like the Warhol v Goldsmith case recently taken up by the Supreme Court.

Re:Create’s Copyright Corner Q&A series features conversations with leading policymakers, academics and thought leaders to break down complex copyright issues and examine how copyright interacts with American jobs, creativity and innovation. Read below for the full discussion.

Q: It’s been a year since the Supreme Court’s landmark Google v Oracle decision in favor of fair use. How do you think software developers are approaching their work today compared to a year ago when the outcome was unclear?

A: The large number of software industry amicus curiae (friend of the court) briefs filed with the Supreme Court in the Google v. Oracle case is evidence of the considerable awareness within the industry of the high stakes this case posed for this sector. IBM, Microsoft, and the Developers Alliance were among the numerous entities that filed briefs in support of Google’s position that allowing developers to reimplement Application Program Interfaces (APIs) in independently written code should not be copyright infringement. Small, medium, and open source developers, as well as some industry associations and 83 computer scientists, also supported Google’s arguments.

Many software developers and computer scientists were greatly relieved by the Court’s Google decision because it so forcefully repudiated the Federal Circuit’s adverse ruling on fair use. It is much less risky for developers to reimplement interfaces now than before the Court’s ruling.

Q: Copyright law in general, and the 10-year history of this case, is complicated. Can you break down how the Supreme Court decision will ultimately benefit the consumer?

A: Consumers benefit greatly by the vast ecosystem of interoperable technologies of the modern era. Interoperability is the reason you can read a website regardless of which browser you use, why you can read a document on your PC that was written on a Mac, and why you can use search engines to find relevant data, among other things. Technologies become interoperable when software developers are able to reimplement APIs in independently written code. The Supreme Court’s Google ruling confirms that reimplementing these interfaces is fair use as a matter of law.

Q: What are the next big Supreme Court cases on your radar that will impact copyright and fair use?

A: The Supreme Court just recently granted the Warhol Foundation’s petition for certiorari in the Goldsmith case to consider whether Andy Warhol’s use of a photo that photographer Lynn Goldsmith took of Prince as an artist reference with which to create a series of colorful prints is fair use or infringement. A Second Circuit panel held that Warhol’s use was unfair as a matter of law. The Court’s decision to hear this case suggests that the Justices found some merit in the Foundation’s argument that the Second Circuit panel decision was inconsistent with the Google decision’s analysis of fair use, particularly its conclusion that the Warhol prints did not have a transformative purpose.

Q: How important is it that copyright law be limited in protecting functional things?

A: Until Congress added computer programs to copyright’s subject matter, this law had never before protected a technology or any other functional creation. Copyright law had long focused its protection on original expressive works such as those that convey information (such as books), display an appearance (such as paintings), or render audible performances (such as sound recordings of music).

Functional creations have generally been legally protectable, if at all, only through the patent system, which requires inventors to apply to the Patent Office to obtain exclusive rights, to meet a higher creativity standard than copyright requires, to specify exactly what they invented, and to subject their patent applications to rigorous examination. Even when granted, patent rights are much shorter in duration than copyrights. Functional creations for which patents have not been sought or have been denied are generally in the public domain.

While Congress decided in 1980 that the original expression embodied in programs should be copyright-protectable, it also tried to make sure that functional design elements, such as algorithms and methods of operation, were not protectable by copyright law, although they might be protectable through patenting. Most software copyright decisions recognize that there are many aspects of programs that copyright does not protect. It would thwart the public policies of both the copyright and patent regimes to construe copyright as providing exclusive rights in functional design elements of software through copyright law.

Q: How do you think the Google decision will guide other fair use decisions before the courts?

A: The Google decision will almost certainly have considerable influence in future software copyright cases. One early indicator will likely be the Eleventh Circuit’s eventual decision in the Apple v. Corellium case, which will consider whether Corellium’s use of the Apple iOS to create a virtualized version of the iOS to enable security research was fair use. Under the Google decision, Corellium’s software should be considered to have a transformative purpose in using the Apple iOS. Because Apple gives away the iOS without charge or license restrictions on open Internet sites, it’s hard to imagine that there’s any meaningful likelihood of harm to the market for the iOS.

Because the Court in Google reaffirmed a broad interpretation of its 1994 Campbell v. Acuff-Rose decision, which found a rap parody of a popular song to be fair use, the Google decision is likely to have significant implications in non-software cases as well.

Q: You have said the Federal Circuit still believes in its original ruling that was not overturned by the Supreme Court’s narrow decision. What opening does this create for future decisions and their potential to expand copyright?

A: While it’s possible that some Federal Circuit judges will realize that the Supreme Court’s Google decision undermines the viability of its 2014 copyrightability ruling, it is more likely that these judges will think that because the Oracle decision said nothing critical about the Federal Circuit’s 2014 decision, it is still good law. (Mark Lemley & I dispute this conclusion in our Texas Law Review article, Interfaces and Interoperability After Google v. Oracle.)

SAS is relying on the 2014 Oracle copyrightability decision in the WPL litigation. It even hired the same lawyer who won the Oracle case before the Federal Circuit in 2014 and 2018, and she’s making the same argument about copyrightability in SAS as she made in the Oracle case. It is easy to guarantee that any appeal will go to the Federal Circuit by adding a patent claim to a software copyright infringement complaint, as SAS did in this latest case against WPL.

Q: Finally, what would a decision in favor of Oracle have meant? How would things look differently today?

A: If the Supreme Court had ruled in Oracle’s favor in the Google case, this would likely have led to many more software copyright litigations, as well as threats of litigation, because the Federal Circuit’s rulings in the Oracle v Google case gave exceptionally narrow interpretations to the most common defenses raised in software copyright cases, and it is so easy for plaintiffs to ensure their appeals will go to the Federal Circuit instead of the regional circuits which have taken a broader view of software copyright defenses.

An Oracle victory would probably have resulted in rising prices for licensing of APIs. What may have kept them relatively low in the past decade or so has been the widespread awareness that courts have generally rejected claims of software copyright infringement based on copying of program interfaces. Incumbent firms with strong customer bases would have incentives not to license APIs if they decided they could maintain or even increase their market power by being the sole provider of compatible products and services.