An intellectual property dispute between Oracle and Google that began over a decade ago, has finally reached its conclusion, in a Supreme Court decision rendered on April 5, 2021. The Supreme Court had requested briefs relating to two questions: (a) was the subject matter that was the subject of this lawsuit copyright-eligible; and (b) was the subject matter that was the subject of this lawsuit covered by a “fair use” defense? The Supreme Court opted to provide a decision on the latter, without ruling on the former, and ruled in favor of Google, that Google’s use of software components owned by Oracle constituted fair use. The result, as well as the lack of a ruling on the former question, are what make this decision so interesting.
By way of background, this case arose from failed negotiations between Sun Microsystems, Inc. (“Sun;” which was subsequently acquired by Oracle) and Google regarding Google’s desire to license Java Platform, Standard Edition (JavaSE) for use in developing Google’s Android® mobile device platform (“Android”). Following the failed negotiations, Google decided to use Sun’s open-source Java development kit (OpenJDK), a less complete version of Java, and decided to create a “clean-room” version of the JavaSE libraries. However, in developing the application programming interface (“API”) for Android, Google, in order to make its new device platform familiar to programmers who already understood the Java programming language, used 37 API “packages” that were identical to API packages used in Java, also using approximately 11,500 lines of code from JavaSE.
In the initial district court trial, which began on August 13, 2010, Oracle sued Google for both patent infringement and copyright infringement. The district court trial resulted in rulings that there was no patent infringement, that the APIs were not copyright-eligible, but that other portions of Android included infringing code. The verdict was appealed to the Court of Appeals for the Federal Circuit (“the Federal Circuit”). The Federal Circuit upheld the lower court verdict regarding non-infringement of the patents and the fact that Google had engaged in copying copyrighted material (including ruling that the SSO of an API is copyright-eligible), and remanded the case back to the trial court for determination of whether or not Google’s use of the copied code constituted fair use.,
In the second district court trial, the jury found that Google’s re-implementation of the Java APIs constituted fair use., This decision was appealed to the Federal Circuit, which overturned the holding of fair use and remanding the case back to the trial court for damages.
To summarize, the Federal Circuit decided two issues. The first is that the declaring code and the SSO of APIs are copyright-eligible. In particular, the U.S. Court of Appeals for the Federal Circuit (“the Federal Circuit”) ruled that declaring code, and the structure, sequence, and organization (again, referred to by the Court as “SSO”) of Oracle’s Java API packages are entitled to copyright protection. This first ruling, of copyright-eligibility, set the stage for the second significant ruling, namely that Google’s use of the copied portions of the Java APIs did not constitute fair use. This decision states, among other things, “We do not conclude that a fair use defense could never be sustained in an action involving the copying of computer code….We hold that the facts relating to the copying at issue here…was not fair as a matter of law.” Following the second of these two decisions, Google petitioned for a writ of certiorari, asking the Supreme Court to consider both Federal Circuit holdings. This petition was granted, and the present Supreme Court case ensued.
After months of briefings, including a multitude of amicus curiae briefs, followed by oral arguments, the Supreme Court rendered the present decision. And how curious a decision it is!
The majority opinion, authored by Justice Stephen Breyer, states in part:
A holding for Google on either question presented would dispense with Oracle’s copyright claims. Given the rapidly changing technological, economic, and business-related circumstances, we believe we should not answer more than is necessary to resolve the parties’ dispute. We shall assume, but purely for argument’s sake, that the entire Sun Java API falls within the definition of that which can by copyrighted. We shall ask instead whether Google’s use of part of that API was a “fair use.” Unlike the Federal Circuit, we conclude that it was.
Hence, this majority opinion declines to answer the question of copyright-eligibility and yet rules in favor of Google based on copyright law. That is, the Court is ruling that if the software at issue is not copyright-eligible, there would be no issue with Google’s use of the portions used, but if it is copyright-eligible, Google would have a valid fair use defense. On the positive side, the Court has thus resolved questions about the fair use defense. However, they have done so in a case in which they have not even established the applicability of copyright law. This is, indeed, an odd result.
One interesting thing to consider is how the court could have reached such a result. This case was heard by only eight justices (Justice Barrett did not hear this case). Six justices joined Justice Breyer on the majority opinion (Chief Justice Roberts and Justices Kagan, Sotomayor, Kavanaugh, and Gorsuch), while two justices dissented (Justices Thomas and Alito). In the dissent, written by Justice Thomas, it is clear that Justices Thomas and Alito held that the software code at issue is copyright-eligible (and they also held that Google did not have a valid fair use defense). Therefore, we know that at least two justices held that the software was subject to copyright protection and that Google’s fair use defense was not valid. We also know for certain that the other six justices held that Google’s fair use defense was valid. However, we do not know how each of these six justices held on the question of copyright-eligibility.
Let us now theorize that, had all six justices – or even only five justices – on the majority opinion had ruled in favor of copyright-ineligibility, then the majority opinion would have included a ruling of copyright-ineligibility. Furthermore, if even three justices on the majority opinion had ruled in favor of copyright-eligibility, then there would likely have been an opinion that would have been joined, at least in part, by Justices Thomas and Alito, in favor of copyright-eligibility. From this we may conjecture that one of the following scenarios occurred: (a) the Court was evenly split on the question of copyright-eligibility; or (b) an even subset of the Court was evenly split on this question, and the remaining justices were undecided or specifically held, as in the actual decision, that it was not necessary to decide this question. From this one may conjecture that the majority opinion may have been a compromise to reach a ruling that would resolve the case at hand, even if the final decision was awkward.
The lack of a ruling on the copyright-eligibility question leaves standing the Federal Circuit’s 2014 decision that the SSO of APIs is copyright-eligible, given that the Supreme Court denied certiorari with respect to this Federal Circuit decision and declined to decide the issue in the present decision. However, overall, this only establishes that the Supreme Court did not address the question for the Federal Circuit and let lie the Federal Circuit’s decision. This leaves the overall question as yet unresolved, and other circuit courts may reach different conclusions. Should this happen, it may be more likely that the Supreme Court would reach some conclusion on this issue.
Another question that arises relates to the treatment of software, in general, under copyright law. In reaching its fair-use decision, the Court stressed “The Nature of the Copyrighted Work” and “The Purpose and Character of the Use,” two of the four factors listed in 17 C.F.R. § 107., The Court’s discussion and the lack of a decision on copyright-eligibility lead one to speculate on the future of intellectual property protection for software, particularly in view of the limitations on protection of algorithms under patent law in recent years.
Reaching a decision to resolve a dispute that arises through the lower courts is in keeping with the Court’s role as the ultimate arbiter of “cases and controversies” in the United States. The Court has done so here. However, the way in which the Court has done so may leave one somewhat dissatisfied with the incompleteness of the result.
 Google LLC v. Oracle America, Inc., No. 18-956, slip op. (Sup. Ct. 2021).
 Id., slip op. at 1.
 Id. at 1-3.
 In “clean-room” development, the software developers are provided with the purposes and parameters of the software to be developed (to mimic another piece of software) but are isolated from the software being mimicked, in order to create an entirely new piece of software, independent of the software to be mimicked.
 Id. (however, the implementations of the operations were not copied; only the “structure, sequence, and organization” (“SSO”) were identical, as noted in slip op. at 4).
 See, e.g., Oracle America, Inc. v. Google, Inc., https://en.wikipedia.org/wiki/Oracle_America,_Inc._v._Google,_Inc.
 See id.; see, also, Oracle Am., Inc. v. Google Inc.,872 F.Supp.2d 974 (N.D. Cal. 2012).
 It is noted that, while the Federal Circuit does not generally have jurisdiction to hear appeals of copyright cases, the fact that this case also involved patent matters provided the basis for Federal Circuit jurisdiction (using Ninth Circuit copyright law precedent for the copyright issues).
 See id.; see, also, Oracle Am., Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014) (cert. denied).
 Note that Google petitioned to the Supreme Court for reconsideration of the copyright-eligibility of the APIs, which petition was denied. Google Inc. v. Oracle Am., Inc., 135 S.Ct. 2887 (2015).
 Oracle Am., Inc. v. Google Inc., No. C 10-03561, 2016 WL 3181206 (N.D. Cal. June 8, 2016), Final Judgment, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D. Cal. June 8, 2016).
 17 U.S.C. § 107
 Oracle Am., Inc. v. Google Inc., 886 F.3d 1179, 1186 (Fed. Cir. 2018).
 Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1348 (Fed. Cir. 2014) (cert. denied).
 886 F.3d 1179, supra.
 Id. at 1210.
 Google, No. 18-956, slip op. at 15.
 See, e.g., id., dissent at 19.
 One may conjecture from some of the statements made in the majority opinion that Justice Breyer may have been against copyright-eligibility of APIs, although it is not entirely clear. See, e.g., id. slip op. at 22, 24.
 Oracle Am., Inc. v. Google, Inc., 750 F.3d 1339 (Fed. Cir. 2014).
 Google Inc. v. Oracle Am., Inc., 135 S.Ct. 2887 (2015).
 17 U.S.C. § 107.
 Google LLC v. Oracle America, Inc., No. 18-956, slip op. at 21-30 (Sup. Ct. 2021).
 U.S. Const.art. III, § 2, cl. 1.