Saving Software's Fair Use Future

Clark D. Asay, BYU Law
Pamela Samuelson, University of California, Berkeley - School of Law


The freedom to reimplement application program interfaces (APIs) in independently written software is the key issue at stake in Oracle America, Inc. v. Google Inc. In May 2016, on remand a jury found Google’s use of the Java API elements was a fair use. After the District Court declined to vacate the jury verdict, Oracle appealed for the second time to the Federal Circuit, claiming that it is entitled to a judgment in its favor on the fair use issue as a matter of law. This Article, which is a derivative work of the amicus curiae brief of 42 Intellectual Property Law Professors submitted in that case, challenges Oracle’s arguments that as a matter of law, no reasonable jury could have upheld Google’s fair use defense. The Article also highlights important considerations for future courts in the software fair use context.

Although most cases testing the legality of unlicensed reimplementations of APIs have been decided on copyrightability grounds, the Oracle case tests the viability of fair use as a defense to claims of copyright infringement for API reuses. Oracle’s attack on the jury’s fair use verdict rests on numerous flawed assertions that, if accepted by the Federal Circuit, could undermine robust software innovation by severely restricting the fair use defense’s applicability in software copyright cases.

How the Federal Circuit decides Oracle’s appeal of a jury verdict in favor of Google’s fair use defense will have significant implications for future software copyright fair use cases because Oracle, in effect, calls into question the viability of fair use defenses in all API reuse cases (and perhaps in software cases more generally). Fair use in the digital age has come to play an important role in balancing the interests of first- and second-generation creators in software as well as other creative fields. So, it would be not just unfortunate, but possibly devastating to competition and ongoing innovation in the software industry if fair use defenses were precluded in API reuse cases.