Over 75% of Americans use a smartphone today according to the Pew Research Center. As a result of the large number of people utilizing smartphones, smartphone operating systems and applications are being developed at an ever-increasing pace. For software developers, one question that is not often considered until it is too late, is what can I do to protect my developments?
One way software can be protected is through copyright. Even the largest of companies, Google Inc., could not avoid a copyright infringement suit by Oracle. While the case is ongoing, it has the potential to change the direction of copyright caselaw for software related cases.
Oracle America, Inc. (“Oracle”) is the copyright owner of the JAVA operating system and development platform. Oracle sued Google, LLC, after Google copied portions of the JAVA application programming interface (“JAVA API”). More specifically, the lawsuit has resulted in a long and drawn out case that has been heard by two different juries, been appealed twice, and is currently being appealed for a third time. The two decided appeals have focused on whether API’s, and more particularly the declaration code, and structure, sequence and organization (“SSO”) is copyrightable, and the question of fair use of copyrighted works. In the first appeal, the Federal Circuit held that API’s, declaration code, and SSO are copyrightable, remanding the case back to the district court for a determination on Google’s fair use defense. Fair use is a defense to copyright infringement that allows for the use of a copyrighted work often when the work is transformed into a parody, commented on, or critiqued. While Google won on its fair use defense at the district court level, the decision was reversed upon Oracle’s second appeal to the Federal Circuit.
Both Oracle and Google stipulated to the fact that Google had copied the declaration code and SSO for 37 JAVA APIs, amounting to 11,500 lines of code that was copied. The main focus was whether Google was entitled to the statutory defense of fair use. A fair use determination requires a balancing of four factors: 1) the purpose and character of the use; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used; and 4) the effect upon the potential market.
The first, third, and fourth factors are often the focus of most, with some discussing the second factor at length. The purpose and character of the use is considered in light of the commerciality and transformative nature of the use. Because Google admitted it copied the JAVA API code in order to speed up and incentivize the development of Android, there was no question the copying was for a commercial purpose, which weighs against a finding of fair use.
If use of a copyrighted work adds something new, changes the meaning or message, or gives the copyrighted work a new purpose, then the new work may be sufficiently transformative to weigh in favor of a finding of fair use. However, in the context of code development, if the code is used for the same purpose without changing the expression or meaning the fact that the code is implemented on a different platform is of little consequence. As one court has noted, switching from computers to smartphones is not necessarily a contextual change of the original code. This does not prevent a company from reverse engineering the copyrighted work or code. If a licensed work is reversed engineered and the code is then transformed for a new purpose then it would likely be considered a fair use. Bottom line, if someone copies your code without a license and then modifies it substantially to create a new work, the use is more likely to be considered fair use. However, if the work does not give a new expression, purpose or meaning to the copied code then it is likely not a fair use of your work.
The fourth factor, the effect upon the potential market, is highly probative in a consideration of the fair use defense. If the analysis of the first factor leads to a finding of commercial use, then market harm or potential market harm can be presumed. If a non-commercial use is found in the analysis of the first factor, then an analysis must be performed to determine the damage to licensing, and market expansion of the copyrighted work. A court may also consider if customers have switched from the copyrighted work to the new work. If these types of damages have occurred, then a finding of fair use is doubtful.
Copyright infringement can be challenging to prove at times, but it is one of the most effective forms of intellectual property protection. Software can also be protected through other forms of intellectual property. For example, the branding and logos for software can be protected through trademarks. The graphical interface can be protected through design patents, and if the method, and/or operations performed are novel and unique, a utility patent may be an option as well.
If you believe that someone has copied your software or are concerned that you or your company may be infringing another’s work, please feel free to reach out to us. We can provide you with an analysis of your options and provide you with recommendation on other steps that can be taken to protect the fruits of your labors.
 https://www.statista.com/statistics/276703/android-app-releases-worldwide/ Over 6000 apps released per day on average for the android operating system.
 Note, giving something for free that would normally be bought can be considered a commercial use. Pg. 29 of slip opinion.
By Andrew Reed