Federal Circuit Denies Google's Petition for Rehearing En Banc in Oracle Software Copyright Case

Washington, D.C. ∙ September 4, 2018
The U.S. Court of Appeals for the Federal Circuit on August 28, 2018 issued a one-page order denying Google’s petition for rehearing en banc of the court’s earlier decision in favor of Oracle on the issue of “fair use” in the long-running legal battle between the two tech giants over Google’s copying of extensive Java-related software code owned by Oracle. In its May 29, 2018 petition for rehearing en banc, Google argued (1) that the Java application programming interface (“API”) declarations constitute “methods of operation” that are not entitled to copyright protection; and (2) Google’s use of the Java API declarations, but not implementing code, in a new and different context than the one in which they were created, is protected by the fair-use doctrine.

In its response to Google’s petition, Oracle argued (1) that the issue whether the Java APIs were copyrightable was decided four years ago, in an earlier phase of the litigation, Google failed to ask for rehearing at that time and it cannot do so now; (2) that the Java APIs are copyrightable expression and not simply methods of operation; and (3) Google’s use of the Java APIs was not “fair use” because Google used the APIs for the exact same purpose for which they were created, so that there was no “transformative” aspect of the use.

In a colorful turn, Oracle’s lawyers wrote: “Google’s copying was the equivalent of taking the most recognizable parts of a popular short story and turning them into a blockbuster movie without the author’s permission—something the Supreme Court deemed a “classic” unfair use.” While the court did not discuss its reasons for denying Google’s petition, presumably it agreed with one or more of Oracle’s arguments. The path is now clear for Google to file a petition for a writ of certiorari with the Supreme Court of the United States. It has ninety days from the date rehearing was denied to file such a petition. One of the main criteria the Supreme Court uses to evaluate a “cert petition” is the existence of a split between two or more circuits on an important question of law.

If it files a cert petition, Google likely will argue that a split exists between various circuits on the issue of software copyrightability (whether the Java API declaring code is essentially a “method of operation” which cannot be copyrighted) and/or proper application of the fair use criteria in the software context. In the meantime, the court issued its formal mandate today, signaling the official remand of the case to the U.S. federal district court for the Northern District of California, to determine Oracle’s damages.

Christopher Van de Verg