Google v. Oracle: Fair Use of a Copyrighted API

by Dennis Crouch

Google v. Oracle (Fed. Cir. 2017) (pending software API copyright case)

In its return-trip to the Federal Circuit, the Oracle’s JAVA-Copyright case against Google appears have some chance of once again making interesting precedent.  I previously described the case as follows:

When Google wrote its program-interface (API) for Android, the company made a strategic decision to mimic the method-calls of Java.  Java was already extremely popular and Google determined that free-riding on Java popularity would facilitate its catch-up game in the  third-party app marketplace.  As an example, Google used the Java method header “java.lang.Math.max(a,b)”.  When called, the “max” function returns the greater of the two inputs.  In Android’s API, Google copied a set of 37 different Java “packages” that each contain many classes and method calls (such as “max()”).  Overall, Google copied the header structure for more than six-thousand methods.  Although Java is offered for both open source and commercial licenses, Google refused to comply with either regime.

Java’s originator Sun Microsystems was known for broadly sharing its creations without enforcing its IP rights.  That aura changed when Sun was purchased by Oracle.

Back in 2012, the N.D. Cal. district court ruled that the portions of Java structure that Google copied were not themselves entitled to copyright protection.  On appeal, however, the Federal Circuit reversed and ordered a new trial. In particular, the Federal Circuit panel led by Judge O’Malley held that the Java API taxonomy copyrightable as a whole and rejected the applicability of idea/expression merger doctrine. “Merger cannot bar copyright protection for any lines of declaring source code unless Sun/Oracle had only one way, or a limited number of ways, to write them.”

On remand, the jury sided with Google – finding that the accused use was a “fair use” and therefore not infringement.  On appeal, Oracle asks the court to overturn that verdict – both based upon the evidence presented and the additional evidence excluded.

Oracle has filed its opening brief that is supported by eleven additional amicus briefs. [Oracle Brief: 02-10-17_oracle-opening-brief-second-appeal].  Google’s will be due next month as well as amicus supporting the broader conception of fair use.

Although the briefs provide good arguments for the limited nature of fair use and the ‘creativity’ associated with API development, none of them squarely addressed how partial failings under 17 USC 102(b) should impact the fair use determination under Section 107.

102 (b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

Although the API was found not to violate the limitations of 102(b), I would suggest that this close-call should have a relevant impact on the scope of fair use.  I would also suggest that platform-interoperability and being able to take advantage of a skilled work-force (i.e., Java Programmers) should be included within the fair use debate even if they don’t fully reach the 102(b) threshold.  Prof. Randy Picker works in this area and tries to tease-out what counts as legitimate restrictions on access and those that are illegitimate.

The Fair Use provision is written as follows:

107 [T]he fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above
factors.

In walking through these factors, Oracle argues:

  1. Google’s purpose was purely commercial; not transformative; and not in good faith.
  2. API’s packages should be given strong protections because they are “undisputedly creative.”
  3. The API’s represent the “heart” of Java.
  4. The copying led to significant harms both to current and potential markets.

McNealy and Sutphin are former Sun Microsystems executives who helped develop and promote Java. In their amicus brief, the pair provide a nice overview of how Java works and its purpose.  The key portion of the brief here is the allegation that Google’s copying allowed it to “steal the legions of developers already using the Java platform.” The question for me is whether that is a harm protectable through copyright. [2017-02-17_mcnealy-sutphin_amicus-brief]  Software engineers Spafford, Ding, Porter, and Castleman add that the Java API should be given strong copyright protection because “design and expression of an API reflects the creative choices and decision-making of its author.” [2017-02-17_spafford-ding-porter-castleman_amicus-brief]

A group of 13 law professors have filed their brief in support of the copyright holder Oracle – arguing, inter alia, that (1) fair use is narrow by design; and (2) there is no special fair use test for copyrighted software.  Again here, the scholars do not address the 102(b) bar or the functional nature of the API – other than by noting that Google’s copying “achieve[d] the same functions as Oracle” and therefore was not transformative.   [2017-02-17_ip-scholars_amicus-brief]   Falling in-line, the RIAA suggests that the purpose-focused-transformation-test has no basis in the statute and should not be relied upon for fair use analysis.  [2017-02-17_riaa-amer-assn-of-publishers_amicus-brief]  Likewise, New York’s IP Law Association [2017-02-17_nyipla_amicus-brief] argues that a mere “change in context” cannot be seen as transformative for first amendment analysis.

The old Perfect-10 case almost seems to treat Google as if it is a library providing a major public service.  A number of briefs attempt to counter this pro-Google bias.  CCA (smaller mobile carries), for instance, argues that “Google’s current marketplace dominance with respect to mobile software platforms, online advertising, and online traffic is the result of many strategic decisions, including its decision to flout Oracle’s copyrights in Java – harming competition and CCA members.”  The ask her is simply: Treat Google as you would any other commercial market participant. [2017-02-17_competitive-carriers-assn_amicus-brief]

In perhaps the most moderate brief of this first round, the BSA argues that the equitable origins of the Fair Use analysis suggest favoring broad admissibility of evidence – unlike what happened in this case. [2017-02-17_bsa-the-software-alliance_amicus-brief].  Fair use should be limited to its origins as a “narrow and equitable tool for promoting public benefits like criticism, comment, news reporting, teaching, scholarship, or research.” [2017-02-17_paca-digital-licensing-assn_photographers_amicus-brief]. Former Register of Copyrights Ralph Oman agrees with this approach. “Google’s copying of the Java APIs is inconsistent with the historic goals of the Fair Use Doctrine.” [2017-02-17_ralph-oman_amicus-brief].

The MPAA, Screen Actors Guild and other combined efforts in a short brief arguing simply that the market for a copyrighted work should not be limited to the existing market for the work, but should also include “traditional, reasonable, or likely to be developed markets.” Quoting Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 930 (2d Cir. 1994). [2017-02-17_mpaa-ifta-sag-aftra_amicus-brief]. Here, the district court refused to consider (or allow the jury to consider) potential markets for JAVA including television, automobile, and wearabledevice markets. The Copyright Alliance agrees that the district court’s approach to looking at impact on current market (rather than potential market) in the fair use analysis is “particularly problematic for small businesses and individual creators . . . who may not have the resources to enter all potential or derivative marketes at once.”  [2017-02-17_the-copyright-alliance_amicus-brief]

 

Are Copyright and Patent Overlapping or Mutually Exclusive in Protecting Software Innovations?

Guest Post by Pamela Samuelson, Berkeley Law School.  Professor Samuelson’s newest article Functionality and Expression in Computer Programs: Refining the Tests for Software Copyright Infringement, is forthcoming in the Berkeley Technology Law Journal.

“Neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted. We should not so hold.” So said the Supreme Court in Mazer v. Stein, 347 U.S. 201, 217 (1954).

In Oracle Am. Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014), the Federal Circuit invoked this language in rejecting Google’s “policy” argument that application program interface (API) designs were more appropriately patent, not copyright, subject matter. Id. at 1380-81. The Oracle decision seemingly accepted as unobjectionable the possibility of overlapping utility patent and copyright protections in program interfaces, and perhaps even of copyright as a gap filler for interface designs for which patents had not been obtained.

Because the contours of copyright and patent protections for software innovations remain unclear notwithstanding more than 50 years of experience trying to apply these intellectual property (IP) regimes to these utilitarian writings and virtual machines, the question of whether or to what extent copyright and patent overlap or are mutually exclusive continues to bedevil the field. The Federal Circuit’s Oracle decision is unlikely to be the last word on this subject.

Recently, I rediscovered the 1991 study that the Patent & Trademark Office (PTO) and the Copyright Office wrote about the software IP overlap or exclusivity issue. The Patent-Copyright Laws Overlap Study (May 1991) was prepared at the behest of the House Subcommittee on Intellectual Property and the Administration of Justice. The Study is more than 90 pages in length and has more than 50 pages of appendices.

[1991 Patent-Copyright Overlap Study]

Among the most significant of the Study’s software findings is that there is “no overlap in subject matter: copyright protects the authorship in a set of statements that bring about a certain result in the operation of a computer, and patents cover novel and nonobvious computer processes.” Letter from Ralph Oman and Harry F. Manbeck to the Hon. William J. Hughes, July 17, 1991 (transmitting the Study to the then Chair of the House Subcommittee).

Another finding is that “[p]atent protection is not available for computer programs per se,” which supports the Study’s conclusion that copyright and utility patent for programs are not “coextensive.” Study at iii (emphasis in the original). The Study identifies the doctrinal rationale for this exclusivity: program innovations “consist of mental steps or printed matter.” Id. at vii. Copyright and patent could, however, protect “totally different aspects” of program innovations. Id. at 2. The Study cited to the Supreme Court’s decision in Baker v. Selden, 101 U.S. 99 (1879) as the “bedrock opinion for the view that patent and copyright are mutually exclusive.” Id. at 19.

As for user interface designs, the Study reports that “[t]he mere display on a screen of commands, menus, questions and answers, forms, or icons is not generally considered patentable subject matter for utility patents” because “it is generally considered to be merely printed matter.” Id. at 45-46. Yet processes to produce user interface displays might be eligible for utility patenting. Id. at 47. (The Study discusses the possibility of design patent protection for icons. Id. at 46-47.)

Insofar as user interface screen displays have original expressive elements (e.g., videogame graphics), they would be eligible for copyright protection. Id. at 60-67. However, many aspects of user interface designs are akin to blank forms and lack originality. Id. at 68-69. Some aspects of user interfaces, such as lists of commands, are uncopyrightable under the doctrines of merger and scenes a faire and the words and short phrases exclusion. Id. at 70-71.

The Study recognized that some commentators had raised concerns about overbroad copyright protection for programs; yet, others, it noted, think that expansive protection is needed. Id. at 86-87. The Study concluded that this debate notwithstanding, it would be “premature” to conclude that the risks of overbroad protections were significant as there is “no overlap in subject matter” between copyright and patent. Id. at 88-90. The Study urged Congress to wait and see how the law evolved. Id. at 89.

“At the bottom of this debate,” said the Study, “it appears is the question of protection of functionality….” Id. at 87. It would be contrary to the statutory exclusions set forth in 17 U.S.C. § 102(b) for copyright to protect program functionality. (“In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, principle, or discovery, regardless of the form in which it is described, explained, illustrated or embodied in such work.”) Study at 87. According to the Study, the protection of functionality “is assigned to patents where a much more rigorous test must be undergone and the barriers to entry in terms of time, cost, and complexity, are higher.” Id. at 88.

It is unfortunate that the Federal Circuit did not have access to this Study when deciding the copyrightability issue in the Oracle case, as its conclusions might have given the court pause about invoking the Mazer overlap-endorsing dicta in response to Google’s mutual exclusivity argument.

In a forthcoming article, Functionality and Expression in Computer Programs: Refining the Tests for Software Copyright Infringement, I challenge the Federal Circuit’s conclusion that copyright and utility patent can provide overlapping IP protections for software innovations. The article notes that the Mazer dicta was made in the context of a real, if partial, overlap in copyright and design patent subject matters. Stein’s statuette qualified as a work of art under U.S. copyright law. However, used as the base of a lamp, the design was also eligible for design patent protection as an ornamental design of an article of manufacture.

The Court in Mazer was unequivocal about copyright and utility patents having separate domains. It cited approvingly to two of Baker’s progeny that had held “that the Mechanical Patent Law and Copyright Laws are mutually exclusive,” Mazer, 201 U.S at 215, n.33 (emphasis added). See Taylor Instrument Co. v. Fawley-Brost Co., 139 F.2d 98 (7th Cir. 1943) (no copyright in temperature recording charts because they were integral parts of previously patented machines) and Brown Instrument Co. v. Warner, 161 F.2d 910 (D.C. Cir. 1947) (accord). Overlaps in design patent and copyright subject matters had, by contrast, long been accepted. Mazer, 201 U.S. at 215, n.33.

The exact contours of utility patent and copyright protections for software innovations may not shimmer with clarity, but the 1991 Study adheres to the Supreme Court’s long-standing pronouncements in Baker and Mazer that copyright and utility patent are and should be mutually exclusive. Now if only the Federal Circuit can be made to understand this.

Guest Post: Are APIs Patent or Copyright Subject Matter?

Guest Post by Pamela Samuelson, Richard M. Sherman Distinguished Professor of Law at Berkeley Law School. I asked Professor Samuelson to provide a discussion of the recent Federal Circuit decision in Oracle v. Google. DC.

Application programming interfaces (APIs) are informational equivalents of the familiar plug and socket design through which appliances, such as lamps, interoperate with the electrical grid. Just as a plug must conform precisely to the contours of the socket in order for electricity to flow to enable the appliance to operate, a computer program designed to be compatible with another program must conform precisely to the API of the first program which establishes rules about how other programs must send and receive information so that the two programs can work together to execute specific tasks.

No matter how much creativity might have gone into the design of the existing program’s interfaces and no matter how many choices the first programmer had when creating this design, once that the API exists, it becomes a constraint on the design of follow-on programs developed to interoperate with it. Anyone who develops an API is, in a very real sense, designing that aspect of the program for itself and for others.

One of the many errors in Judge O’Malley’s decision in the Oracle v. Google case was her insistence that the merger of idea and expression in computer program copyright cases can only be found when the developer of an API had no choice except to design the interface in a particular way. If there is any creativity in the design of the API and if its designer had choices among different ways to accomplish the objective, then copyright’s originality standard has been satisfied and not just the program code in which the API is embodied, but the SSO of the API, becomes copyrightable. Indeed, harkening back to an earlier era, Judge O’Malley repeated the unfortunate dicta from the Apple v. Franklin case about compatibility being a “commercial and competitive objective” which is irrelevant to whether program ideas and expressions have merged.

The Ninth Circuit in the Sega v. Accolade case, as well as the Second Circuit in Computer Associates v. Altai, have rejected this hostility toward achieving software compatibility and toward reuse of the APIs in subsequent programs.

Although purporting to follow Ninth Circuit caselaw, Judge O’Malley in Oracle v. Google ignored some key aspects of the holding in Sega. Accolade reverse-engineered Sega programs in order to discern the SSO of the Sega interface so that it could adapt its videogames to run on the Sega platform. The principal reason that the Ninth Circuit upheld Accolade’s fair use defense as to copies made in the reverse engineering process was because “[i]f disassembly of copyrighted object code is per se an unfair use, the owner of the copyright gains a de facto monopoly over the functional aspects of his work—aspects that were expressly denied copyright protection by Congress,” citing § 102(b). To get the kind of protection Sega was seeking, the Ninth Circuit said it “must satisfy the more stringent standards imposed by the patent laws.”

Judge O’Malley in Oracle also ignored the Ninth Circuit rejection of Sega’s claim that Accolade infringed based on the literal copying of some Sega code insofar as that code was essential to enabling the Accolade program to run on the Sega platform. That Sega code might have been original in the sense of being creative when first written in source code form, but by making that code essential to interoperability, the expression in that program merged with its function, and hence Accolade’s reproduction of it was not an infringement.

The SSO of the Sega interface was almost certainly creative initially as well. Yet, once that interface was developed, it was a constraint on the design choices that Accolade and other software developers faced when trying to make videogames to run on Sega platforms. The Second Circuit similarly rejected Computer Associates’ claim that Altai had infringed the SSO of its program interface and suggested that patents might be a more suitable form of legal protection for many innovations embodied in software.

Under Sega and Altai, the SSO of APIs are not within the scope of copyright protection for computer programs. Subsequent cases—at least until the Federal Circuit decision in Oracle v. Google—have overwhelmingly endorsed this approach to compatibility issues in software cases.

Perhaps Judge O’Malley was worried that if she did not extend copyright protection to the Java APIs in Oracle v. Google, there would be too little intellectual property protection available to computer programs. After all, she was one of the Federal Circuit judges who would have upheld all of the patent claims for computer-implemented inventions in the CLS Bank v. Alice Corp. case that is now pending before the U.S. Supreme Court. She joined an opinion that warned that if courts struck down the claims in CLS Bank, this mean that hundreds of thousands of software and business method patents would be invalidated. Given the Supreme Court’s skepticism about the Federal Circuit’s rulings on patentable subject matter, there is reason to think that at least some software patents may indeed fall when the Court issues its opinion in Alice. Would such invalidations affect the scope of copyright protection for software?

In the most expansive interpretation of software copyright law since Whelan v. Jaslow, Judge O’Malley in Oracle v. Google endorsed dual protection for APIs from both copyright and patent law. This ignored an important statement from that court’s earlier ruling in Atari Games v. Nintendo that “patent and copyright laws protect distinct aspects of a computer program.” The Oracle opinion instead invoked the dicta from Mazer v. Stein that “[n]either the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted.”

While it may have been true that the statuette of a Balinese dancer in Mazer was eligible for both copyright as a sculpture and a design patent for an ornamental design of an article of manufacture (as a lamp base), nothing in that decision or any other has upheld utility patent and copyright protection in the same aspect of the same creation, and it seems unlikely that the Supreme Court would abrogate the longstanding tradition tracing back to Baker v. Selden that copyrights protects expression in works of authorship and patents protect utilitarian designs.

In “The Strange Odyssey of Software Interfaces as Intellectual Property,” http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1323818, I traced the tortuous evolution of the law in relation to the protection of software interfaces. At first, they were not treated as intellectual property at all. Firms published APIs so that others would make programs to run on their computing systems. As firms recognized that they could license interface information to generate revenues, APIs were protected as trade secrets. In the mid- to late 1980s, some argued that the “structure, sequence, and organization” (SSO) of APIs should be protected by copyright law, but by the early 1990s, courts decided they were unprotectable elements of programs, more suited to patent than to copyright protection. And so firms began patenting interface designs, as well as continuing to license them as trade secrets.

If Judge O’Malley’s opinion in the Oracle v. Google case is to be believed, APIs have migrated back into copyright’s realm big time. Unless overturned by the Supreme Court or repudiated or distinguished in subsequent cases, the Oracle decision may well reignite the software copyright wars that so many of us thought had died out after the Sega, Altai, and their progeny.

Copyrighting Software? Google v. Oracle

by Dennis Crouch

When Google wrote its program-interface (API) for Android, the company made a strategic decision to mimic the method call structure of Java.  Java is an extremely popular and powerful programming language and Google determined that free-riding on Java popularity would facilitate its catch-up game in the  third-party app marketplace.  As an example, Google used the Java method header “java.lang.Math.max(a,b)”.  When called, the “max” function returns the greater of the two inputs.  In Android’s API, Google copied a set of 37 different Java “packages” that each contain many classes and method calls (such as “max()”).  Overall, Google copied the header structure for more than six-thousand methods.  Although Java is offered for both open source and commercial licenses, Google refused to comply with either regime.

Java’s originator Sun Microsystems was known for broadly sharing its creations without enforcing its IP rights.  That aura changed when Sun was purchased by Oracle and certainly when Oracle sued Google for copyright infringement, inter alia.

In the Copyright lawsuit, the district court held that the API method headers were not protectable under copyright. However, the Federal Circuit reversed on appeal — finding the Java API taxonomy copyrightable as a whole. In particular, the appellate panel led by Judge O’Malley rejected the idea/expression merger doctrine since there are many other ways that functionally equivalent method-calls could have been constructed besides those found in Java.  “Merger cannot bar copyright protection for any lines of declaring source code unless Sun/Oracle had only one way, or a limited number of ways, to write them.”

Now, Google has petitioned the Supreme Court for a writ of certiorari asking:

Whether copyright protection extends to all elements of an original work of computer software, including a system or method of operation, that an author could have written in more than one way.

Here, Google references 17 U.S.C. 102(b) which bars copyright protection for “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of [its] form [of expression].”  And, Google pushes-back against the notion that the merger doctrine accounts for the limits of 102(b) as suggested by the Federal Circuit.

Google also interestingly notes that the Federal Circuit opinion here “erases a fundamental boundary between patent and copyright law.”  However, rather than supporting software patents, Google argues that copyright protection here would serve as an end-run around the limitations set by Alice Corp.

Just last Term, this Court confirmed that, while some software-related patent claims may be eligible for patent protection under 35 U.S.C. § 101, many are not. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Like Section 102(b) of the Copyright Act, Section 101 of the Patent Act protects future innovation by preventing anyone from “ ‘inhibit[ing] further discovery by improperly tying up the future use of’ the[] building blocks of human ingenuity.”

Extending copyright protection to methods and systems of operation would undermine the limits on patent protection.

The argument is interesting because it turns the usual analysis on its head. Ordinarily folks argue that copyright and patent should be complementary and that overlap should be avoided. Here, however, the petitioner argues that copyright should not cover a particular subject matter area precisely because it is not covered by patent. This also generally suggests that the case will have an impact on software patent eligibility.

The petition was filed by Daryl Joseffer’s team at King & Spalding and I give a more-likely-than-not chance of grant.  In this type of case, the Supreme Court is likely to request input from the Solicitor General and I would expect that the SG/White-House would support grant.  If granted, the Federal Circuit will almost certainly be reversed.  The merger doctrine is a mess and genuinely needs clarity.  The difficult question in my mind is whether the court will be able articulate a reasoned boundary between software that is protectable and that which is not.

In an amicus brief (supporting certiorari) a group of computer scientists (with the Electronic Frontier Foundation) argues that companies should not be able to use copyright to prevent others from interfacing with their systems.

Petition Briefs:

Why 65 Intellectual Property Scholars Filed an Amicus Curiae Brief in Support of Google’s Petition for Cert in the Oracle Case

Guest Post by Pamela Samuelson, Berkeley Law School.  Prof. Samuelson has been involved with digital copyright law for the past 35 years. She recently led an amicus effort pushing against the Federal Circuit’s enforcement of Copyrights on the method call names (API) for Java. – DC

[Read the Amicus Brief]

In January 2018, Google filed a petition to ask the U.S. Supreme Court to review two adverse rulings by the Court of Appeals for the Federal Circuit in the Oracle Am. Inc. v. Google Inc. case. The first was the Federal Circuit’s 2014 decision overturning a district court ruling that several thousand declarations that Google used for its Android platform, which it derived from 37 of 166 Java application program interface (API) packages, were unprotectable by copyright law. Although disagreeing with the lower court’s copyrightability analysis, the Federal Circuit remanded the case, saying that there was a triable issue of fact on Google’s fair use defense. In the spring of 2016, Google’s fair use defense prevailed before a jury. The second adverse ruling was the Federal Circuit’s decision that no reasonable jury could have found fair use. Google’s petition asks the Court to review both the copyrightability and fair use rulings. Oracle will be filing its brief opposing Supreme Court review later this spring. Amicus curiae (friend of the court) briefs, whether in support of Google’s petition or in support of neither party, were filed this week.

One of the amicus curiae briefs supporting Google’s petition on the copyrightability issue was co-authored by me and my Berkeley colleague Catherine Crump, who is the Director of the Samuelson Law, Technology and Public Policy clinic at Berkeley Law School. Although the Supreme Court denied Google’s previous petition seeking review of the Federal Circuit’s copyrightability ruling, our amicus brief on behalf of 65 scholars of intellectual property law has asked the Court to grant the petition because, as the brief explains, we

are alarmed that the Federal Circuit’s copyrightability ruling has deepened splits in circuit court interpretations of several major copyright doctrines as applied to computer programs. That ruling disrupted the relative equilibrium of more than two decades of software copyright precedents and upset settled expectations within the software industry. Th[e] Court’s guidance is urgently needed to address and resolve circuit conflicts affecting this $564 billion industry. [Our] sole interest in the case lies in [our] concern for the proper application of traditional principles of copyright law to computer programs. Because amici have devoted [our] careers to understanding the balancing principles built into copyright and other intellectual property laws, [our] views can aid the Court in resolving the important issues presented by the Petition.

While there is much that IP scholars will have to say on the merits if the Court grants the petition, our brief concentrates on numerous respects in which the Federal Circuit’s ruling is in conflict with Supreme Court and other appellate court rulings.

Before presenting the brief’s summary of our argument, it is worth noting that the district court gave three reasons for holding that the Java API declarations were unprotectable by copyright law: first, because they constituted an unprotectable method or system under 17 U.S.C. § 102(b), second, because the merger doctrine precluded copyright protection for the declarations as there was, in effect, no other way to say them, and third, because the declarations were unprotectable under the words and short phrases doctrine. The Federal Circuit rejected all three rationales in its copyrightability ruling.

While our brief focuses primarily on the merger issue because the Federal Circuit’s interpretation of that doctrine is so clearly contrary to Supreme Court as well as other appellate court precedents, it also identifies the proper application of § 102(b) method/system exclusion in software copyright cases as another cert-worthy question. In addition, the brief touches on the words and short phrases issue, albeit less extensively.

We reprint the Summary of Argument below. The entire brief is available from the Supreme Court’s website [LINK]

= = = =

SUMMARY OF ARGUMENT

The Federal Circuit’s copyrightability ruling in Oracle has deepened splits in circuit court interpretations of several major copyright doctrines as applied to computer programs.

This brief makes three principal points. First, the Federal Circuit’s merger analysis is in conflict with this Court’s ruling in Baker v. Selden, 101 U.S. 99 (1880), and decisions by the First, Second, Fifth, Sixth, and Eleventh Circuits. Second, the Federal Circuit’s interpretation of the scope of copyright protection available to computer programs is at odds with Baker and decisions of the First, Second, Tenth, and Eleventh Circuits. Third, the Federal Circuit’s interpretation of the words and short phrases doctrine cannot be reconciled with holdings of the Third and Sixth Circuits.

The merger doctrine holds that expressions in works of authorship are unprotectable by copyright law when, as a practical matter, there is only a limited number of ways to express an idea, fact, or function. When ideas, facts, or functions, in effect, “merge” with expression, copyright protection will be withheld from the merged elements. The merger doctrine fosters socially beneficial competition and ongoing innovation as well as promoting the ongoing progress of science and useful arts, as the Constitution commands. U.S. Const. art. I, § 8, cl. 8.

The Federal Circuit’s copyrightability ruling conflicts with Baker in three respects: first, because the Federal Circuit concluded that merger can only be found if a first author had no alternative ways to express an idea when creating the work; second, because it held that constraints on a second comer’s design choices are never relevant to merger; and third, because it ruled that merger is only a defense to infringement, and never raises a copyrightability issue.

Post-Baker cases from the First, Second, Fifth, Sixth, and Eleventh Circuits have conceptualized and applied the merger doctrine more broadly than the Federal Circuit. These idea/expression, fact/expression, and function/expression merger cases have resulted in uncopyrightability rulings, which contradict the Federal Circuit’s holding on merger.

Beyond merger, the Federal Circuit’s interpretation of the scope of copyright protection available to software innovations conflicts with the rulings of other circuits in four respects. First, the Federal Circuit’s interpretation of the exclusion of methods and systems from copyright’s scope under 17 U.S.C. § 102(b) is contrary to the First Circuit’s interpretation in Lotus Development Corp. v. Borland International, Inc., 49 F.3d 807 (1st Cir. 1995), aff’d by an equally divided Court, 516 U.S. 233 (1996). Second, several circuit courts have ruled in favor of compatibility defenses in software copyright cases. Only the Third and Federal Circuits have rejected them. Third, the Federal Circuit’s conception of “structure, sequence, and organization” (SSO) of programs as protectable expression as long as it embodies a modicum of creativity conflicts with the Second Circuit’s landmark decision, Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992). Altai rejected the conception of SSO as determinative of protectable expression. Id. at 706. Fourth, the Federal Circuit’s assertion that copyright and utility patents can provide overlapping protection to program SSO is in conflict with Baker as well as Tenth and Eleventh Circuit decisions.

There is, moreover, conflict among the circuits concerning the protectability of “words and short phrases.” The District Court denied Oracle’s claim in part based on its view that names and short phrases are not copyrightable, but the Federal Circuit held that words and short phrases, such as the names of individual Java declarations, could, if original, be eligible for copyright protection. However, the Third and Sixth Circuits have denied similar claims in cases involving identifiers such as names and numbers. Granting the Petition would enable this Court to resolve this split as well.

Oracle v. Google: The Federal Circuit goes all-in on copyright and software

By Jason Rantanen

Oracle America, Inc. v. Google LLC (Fed. Cir. 2018) Read opinion

Panel: O’Malley (author), Plager and Taranto*

This is a huge decision on multiple levels, and the latest exchange in the long-running battle between Oracle (the copyright owner) and Google (the alleged infringer).  In the first appeal, the Federal Circuit rejected Google’s arguments that the Java “packages” at issue were unprotectable under copyright law.  The court remanded the case for further proceedings on Google’s fair use defense.  (15 U.S.C. § 107)  On remand, the district court held a jury trial on that issue.  The jury found in favor of fair use and the district judge denied Oracle’s motion for JMOL.

Oracle appealed and the Federal Circuit reversed, essentially going all-in on the issue of copyright infringement when it comes to software. First, fair use is a question that is largely addressed de novo by appellate courts, and second, when it comes to software, the court’s analysis all but says (expressly so!) that fair use can never apply.  This opinion comes on the shoulders of the same panel’s previous opinion concluding that Oracle’s API packages meet the requirements for copyright protection.  I see the court as going “all in” here both by its adoption of a nondeferential standard of review (keeping in mind that Ninth Circuit law is controlling), as well as the combination of its conclusions on protectability and inapplicability of fair use in this context.

Standard of Review

In a detailed discussion of the standards of review, the Federal Circuit concluded that, under Ninth Circuit case law:

  • the jury role in determining whether fair use applies “is limited to determining disputed ‘historical facts’ not the inferences or conclusions to be drawn from those facts” (Slip Op. at 24); “[a]ll jury findings relating to fair use other than its implied findings of historical fact must, under governing Supreme Court and Ninth Circuit case law, be viewed as advisory only.” (id. at 26).
  • we must assess all inferences to be drawn from the historical facts found by the jury
    and the ultimate question of fair use de novo, because the Ninth Circuit has explicitly said we must do so.

This framework should be familiar: it’s essentially the same approach that the court takes in reviewing nonobviousness determination, a fact that did not escape the court’s notice.  Slip Op. at 25, n. 4.  Since the meat of the fair use analysis is in the inferences drawn from the historical facts and the balancing of all the factors, the functional result of this standard of review was that the court largely reviewed the fair use determination de novo.

Fair Use Analysis

Much will be written about the court’s fair use analysis; most of it more insightful than anything I can offer.  The court’s analysis draws heavily on Ninth Circuit caselaw.  Here’s the gist:

  • Factor 1 (Purpose and character of the use): The Federal Circuit concluded that Google’s use was (a) Commercial; (b) Non-transformative.  In addressing the “commercial” aspect, the court drew heavily on the reasoning of Harper & Row and Am. Geophysical Union, and barely mentioned Campbell.  On the question of whether Google’s use was transformative, the court applied this requirement: “To be transformative, a secondary work must either alter the original with new expression, meaning, or message or serve a new purpose distinct from that of the original work.”  Slip Op. at 31.  There’s a lot of grist to grind here in the inevitable Supreme Court appeal.  Bad faith didn’t play a role because (1) it’s one-directional, weighing only against a finding of fair use, and (2) there was no basis for disturbing the jury’s implicit finding of no bad faith.
  • Factor 2 (Nature of the copyrighted work): The Federal Circuit concluded that this factor did weigh in favor of Google, but it was the only one that did.  Here, while the Java API may have met the minimum requirements for copyright protection, “reasonable jurors could have concluded that functional considerations were both substantial and important.”
  • Factor 3 (Amount and substantiality of the portion used): The Federal Circuit concluded that Google did not duplicate “the bare minimum of the 37 API packages, just enough to preserve inter-system consistency in usage,” thus copying only “only so much as was reasonably necessary.”  Instead, the court concluded: “We disagree that such a conclusion would have been reasonable or sufficient on this record.”  (Slip Op, at 46).  Furthermore, “(e)ven assuming the jury accepted Google’s argument that it copied only a small portion of Java, no reasonable jury could conclude that what was copied was qualitatively insignificant, particularly when the material copied was important to the creation of the Android platform.” (Slip Op. at 47)  (Is the court really saying that because the copied material was functionally important, therefore its copying was not fair use?)
  • Factor 4 (Effect upon the potential market): Either the most important factor or an equally important factor; maybe we’ll get more clarity on this in a Supreme Court opinion in this case.   This is basically the derivative/licensed market issue, which commentators can go in circles about.  The short of it is that the Federal Circuit reversed the district judge, agreeing with Oracle that the market harm was “overwhelming.”

Balancing: applying its de novo standard, the Federal Circuit concluded that Google’s use was not fair use.  “There is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.”  (Slip Op. at 54).

All that said, the court concludes by refusing to say that fair use can never apply to software–although it’s statement simultaneously declines to cross that line while implying that’s what it’s reasoning leads to:

We do not conclude that a fair use defense could never be sustained in an action involving the copying of computer code. Indeed, the Ninth Circuit has made it clear that some such uses can be fair. See Sony, 203 F.3d at 608; Sega, 977 F.2d at 1527-28. We hold that, given the facts relating to the copying at issue here—which differ mate-rially from those at issue in Sony and Sega—Google’s copying and use of this particular code was not fair as a matter of law.

Stay tuned for the en banc petition–or perhaps direct request for certiorari.

*Note that this is the same panel as decided the earlier appeal in this case.  See 13-1021.Opinion.5-7-2014.1

Prior posts:

 

Copyrightability of Software: The Next Big Case

by Dennis Crouch

The next big software copyright case is before the Federal Circuit in the form of SAS Institute, Inc. v. World Programming Limited, Docket No. 21-1542.  The litigation has substantial parallels to Google v. Oracle, but might end up with a different outcome. In Google, the Supreme Court found fair-use but did not decide the issue of copyrightability. That issue is front-and-center in this case.

WPL is a UK based software company who obtained several copies of SAS statistical software and made a clone version. SAS sued in E.D.Tex for both copyright infringement and patent infringement.  The district court dismissed the copyright claims — holding that the software was unprotectable.

Plaintiff SAS showed that it holds a registered copyright, amply argued that its asserted works are creative, and presented repeated evidence of factual copying. … Defendant WPL then came forward with evidence showing that material within the copyrighted work was unprotectable. … SAS thereafter failed to show any remaining protectability, either by affirmatively showing some elements of the work to be protectable or by combatting Defendant’s showing of unprotectability.

Dismissal Memorandum.  SAS also stopped pursuing the patent allegations and they were dismissed with prejudice. Their inclusion in the case appears to have been enough to give the Federal Circuit jurisdiction rather than the Fifth Circuit, even though only copyright issues are on appeal.  I’ll note that a parallel copyright claim was rejected by the U.K. courts who determined that WPS had “reproduced only aspects of the program that are not protected by U.K. copyright law.”  Separately, SAS also previously litigated this copyright case in North Carolina federal court.  That court also granted summary judgment to the accused infringer on the copyright claim.  However, 4th Circuit vacated the copyright holding as moot and that claim was dismissed without prejudice.  Thus, as WPL writes in its brief: “This is the third time SAS Institute Inc. (“SASII”) has sued World Programming Limited (“WPL”) for copyright infringement. It is also the third time courts have rejected SASII’s copyright claims.”

SAS is hoping to change that outcome and has taken its appeal to the Federal Circuit with Dale Cendali (Kirkland & Ellis) leading the charge.  We shall see, but the Federal Circuit is likely one of the most pro-copyright courts in the country.  SAS’s primary arguments on appeal:

  1. Copyrightability: The SAS Material should be deemed copyrightable as a matter of law because (1) of the plethora of creative choices; and (2) even if individual elements in formatting and design are unprotectable, the overall selection and arrangement is protectable.
  2. Filtration Analysis Procedure: It is the defendant’s burden to show what aspects of a copyrighted work are not protectable; the district court flipped that around by requiring the plaintiff to show what is protectable.
  3. Filtration Analysis Procedure: The district court appears to have held a bench trial on this issue, but called it a “copyrightability hearing.” Normally this is an issue for a jury (although the copyright holder does not raise a 7th Amendment challenge).
  4. Filtration Analysis Procedure: The district court excluded SAS’s fact and expert witnesses in an improper manner.

WPL’s responsive brief was recently filed by Jeffrey Lamken (MoloLamken). The appellee restates the key copyrightability issue as follows: “Whether copyrights over a computer program protect (a) the functionality of executing programs written by users in a free-to-use computer language or (b) outputs dictated by user-written programs.”

A number of amicus briefs have already been filed in the case supporting the copyright holder.  The the deadline for briefs in support of WPL has not yet passed.

  • Brief of Ralph Oman (former Register of Copyrights): Computer programs are literary works entitled to full copyright protection. Once registered, the copyrights are entitled to a presumption of validity.
  • Author’s Guild (et al): Upsetting the burdens undermines copyright.  Although this is a software case, it has major spillover potential in other areas such as photography, writing, and music.
  • Copyright Alliance: Software is protectable by copyright.
  • Mathworks and Oracle: The court “flubbed its application of an otherwise sensible burden shifting approach.”

My favorite part of the appellee brief is that the redaction was done in MadLib format: 

Briefs filed so far:

Big Big Big Case: Oracle v. Google

by Dennis Crouch

Odds are good that the biggest patent case of the year will be a copyright case. The Supreme Court recently granted certiorari in Google v. Oracle — a case focusing on copyright protections for the JAVA programming interface.  The innovations at issue in the case sit near the fuzzy ‘borders’ of copyright and patent law and a number of members of the court will be looking to define those dividing lines.

What is perhaps the key case on-point well known but quite old: Baker v. Selden, 101 U.S. (11 Otto) 99 (1880).  Selden had invented a new set of “condensed ledger” forms that improved the practice of bookkeeping.  Baker apparently copied the forms and sold them at a good profit. Selden’s Widow then sued for copyright infringement and won in the district and circuit courts.  However, the Supreme Court reversed — holding that copyright does not extend to the “art itself:”

The copyright of a book on book-keeping cannot secure the exclusive right to make, sell, and use account books prepared upon the plan set forth in such a book.

Instead of copyright, the Supreme Court suggested that Selden should have pursued patent rights. Here is a long quote from the case:

To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of copyright. The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained; and it can only be secured by a patent from the government.

The difference between the two things, letters-patent and copyright, may be illustrated by reference to the subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great value in the healing art. If the discoverer writes and publishes a book on the subject (as regular physicians generally do), he gains no exclusive right to the manufacture and sale of the medicine; he gives that to the public. If he desires to acquire such exclusive right, he must obtain a patent for the mixture as a new art, manufacture, or composition of matter. He may copyright his book, if he pleases; but that only secures to him the exclusive right of printing and publishing his book. So of all other inventions or discoveries.

The copyright of a book on perspective, no matter how many drawings and illustrations it may contain, gives no exclusive right to the modes of drawing described, though they may never have been known or used before. By publishing the book, without getting a patent for the art, the latter is given to the public. The fact that the art described in the book by illustrations of lines and figures which are reproduced in practice in the application of the art, makes no difference. Those illustrations are the mere language employed by the author to convey his ideas more clearly. Had he used words of description instead of diagrams (which merely stand in the place of words), there could not be the slightest doubt that others, applying the art to practical use, might lawfully draw the lines and diagrams which were in the author’s mind, and which he thus described by words in his book.

Even if the Supreme Court was serious at the time that Seldon should have gone after patent protection, today we know that such an attempt would be seen as improperly claiming an abstract idea under Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).  In its petition, Google explains that – as in Seldon, a “monopoly over those
methods and diagrams could be secured only by patent law, not copyright.”

 So too here: the Federal Circuit’s decision to extend copyright protection to the Java API declarations effectively grants Oracle a patent-like monopoly over the Java language. . . . The Federal Circuit’s approach wreak havoc on copyright law, but it also risks disturbing the balance between copyright law and patent law, the two principal bodies of law that govern innovation. The Federal Circuit has effectively provided blanket copyright protection to an entire class of computer code. . . . .

[I]f the creator of computer code “wishes to obtain a lawful monopoly on the functional concepts in its software, it must satisfy the more stringent standards of the patent laws,” including novelty and nonobviousness. Quoting Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596, 603 (9th Cir.),
cert. denied, 531 U.S. 871 (2000).

Google Petition.  Google does not point out that these “functional concepts in its software” also lack patent eligibility under the new Supreme Court decisions.

Google v. Oracle: Use of Oracle’s API is a Fair Use

Google LLC v. Oracle America, Inc. (Supreme Court 2021)

In a 6-2 decision authored by Justice Breyer, the Supreme Court has held that Google’s copying of the JAVA API naming convention was a fair use as a matter of law.  The court did not decide the question of whether the API was copyrightable in the first place.

In his dissent, Justice Thomas (joined by Justice Alito) argues that the majority opinion “disregards half the relevant statutory text and distorts its fair-use analysis. . . . Oracle’s code at issue here is copyrightable, and Google’s use of that copyrighted code was anything but fair.”

The key lines from the case for patent attorneys:

Majority: [U]nlike patents, which protect novel and useful ideas, copyrights protect “expression” but not the “ideas” that lie behind it.

Dissent: Computer code occupies a unique space in intellectual property. Copyright law generally protects works of authorship. Patent law generally protects inventions or discoveries. A library of code straddles these two categories. It is highly functional like an invention; yet as a writing, it is also a work of authorship. Faced with something that could fit in either space, Congress chose copyright, and it included declaring code in that protection.

= = =

The case involves the software interface or Application Program Interface (API) for Oracle’s Java programming language.   What we’re really talking about here are the names of the various functions that a programmer might memorize such as “Math.max(a,b)” which returns the greater of two inputs.  Java is divided up into “packages” of function calls such as max.

Java is a popular language with many millions of skilled programmers.  As Google developed its Android platform, it wanted to simplify the adoption process for app developers. As such, it chose a language that the programmers know – Java.  The one problem is that Oracle wanted a substantial royalty and so Google instead recreated the entire language, including the functionality of thousands of function-calls.

What did Google copy?: It copied the naming convention of the functions (Math.max(a,b)) and their organization.  This is thousands of function names organized into 37 Packages.  Oracle claimed copyright to these names and their organization.  The Federal Circuit agreed with Oracle that (1) the API is protectable under copyright and (2) that Google’s use was not a fair use.

In its fair use analysis, the court placed substantial weight on the fact that the value of Java’s API is based upon the fact that “those who do not hold copyrights, namely, computer programmers, invest of their own time and effort to learn the API’s system” rather than in the inherent creativity of the expression.  Thus, the “‘nature of the copyrighted work’ points in the direction of fair use.”  Although the Supreme Court found Google “precisely” copied the JAVA API, it still found the use transformative — because it was being used on a handheld rather than a laptop.  For substantiality, Google only copied 11,000 lines of code.  The court found that insubstantial since it was less than 1% of Java as a whole.  Finally, regarding market impact, the court found that Sun was unlikely to be able to compete in the Android marketplace and that the copying by Google created a lots more market opportunity for others.

Obviously, there is lots more to this opinion.  Read it via the link above.

Copyrighting Software: Case Likely Heading to Supreme Court

by Dennis Crouch

Google v. Oracle (Fed. Cir. 2018)

Google has now filed an en banc rehearing petition in its dispute with Oracle over copyrightability of the naming system for an application programming interface — namely Oracle’s Java API that Google copied.  [Oracle Am. v. Google LLC Rehearing Petition]

The basic issue here stems from Google’s program interface for Android App development.  Rather than creating its own set of functions and methods, Google decided to mimic the method-calls of Java.  At the time, Google’s third-party app marketplace was lagging far behind Apple’s, and the Java-API mimic was seen as a strategy to facilitate more rapid development of apps since the programming language was already so popular.  I previously explained:

As an example, Google used the Java method header “java.lang.Math.max(a,b).”  When called, the “max” function returns the greater of the two inputs.  In Android’s API, Google copied a set of 37 different Java “packages” (such as Math) that each contain many classes and method calls (such as “max()”).  Overall, Google copied the header structure for more than six-thousand methods.

Although Java was available for licensing, Google refused. Although Java’s originator Sun Microsystems was known for its lack of IP enforcement, that all changed when Oracle acquired the company.

In the most recent iteration of the case, the jury found that Google’s use was a “fair use” and thus not an infringement.  On appeal, however, the Federal Circuit reversed — finding the API the proper subject of copyright protection and not subject to a fair use defense in this case.  As Jason Rantanan wrote: “the court’s analysis all but says (expressly so!) that fair use can never apply.”

In its petition, Google raises both the underlying copyright challenge and the fair use question. Questions:

  1. Whether application programming interface (“API”) declarations—which are designed to invoke pre-written functions and methods of software—are systems or methods of operation and thus not entitled to copyright protection.
  2. Whether use of API declarations, but not implementing code, in a new and different context is protected by the fair-use doctrine.

The petition walks through a handful of copyright cases – explaining its position that the Federal Circuit’s position is “contrary to.”

  • Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994) (on fair use, the transformation question is whether the work as a whole has been transformed — not just a focus on the copied portions);
  • Harper & Row Publishers v. Nation Enters., 471 U.S. 539 (1985) (fair use is a mixed question of fact and law – not simply a question of law);
  • Sony Computer Entm’t v. Connectix Corp., 203 F.3d 596 (9th Cir. 2000) (functional requirements for comparability are not protected by copyright; protection is also limited by fair use);
  • Lotus Dev. Corp. v. Borland Int’l, 49 F.3d 807 (1st Cir. 1995), aff’d by an equally divided court, 516 U.S. 233 (1996) (menu hierarchy not entitled to copyright protection);
  • Sega Enters. v. Accolade, 977 F.2d 1510 (9th Cir. 1992) (See Sony).

The issues here are fundamental and I expect are likely to rise up to the Supreme Court.

Google v. Oracle: Amici Weigh in on Why the Supreme Court Should Reverse the Federal Circuit’s Rulings

Guest post by Professor Pamela Samuelson, Berkeley Law School

In the past week 28 amicus curiae briefs were filed in the Google v. Oracle case, including one written by me and Catherine Crump (of which more below). All but two support reversal of one or both of the Federal Circuit’s copyrightability and fair use rulings.[1]

Especially significant are IBM’s brief with Red Hat arguing against the copyrightability of computer interfaces and Microsoft’s brief criticizing the Federal Circuit’s unduly rigid fair use analysis and indifference to the need for flexible rules that promote interoperability in today’s highly connected world. The briefs are substantively excellent, and significant because these firms are such prominent developers of software.

For those interested in the case who are not computing professionals, I recommend the amicus briefs submitted by 83 computer scientists and by the Developers Alliance which explain the Java API technology and why reuse of Java declarations and interfaces generally is so important to enabling compatibility. Several other briefs, including one for the Center for Democracy and Technology et al., and another for R Street and Public Knowledge, offer numerous examples of compatible software systems that benefit consumers as well as software developers

By my count, more than half of the 28 amicus briefs focus only on the copyrightability issue and another 9 address both the copyrightability and fair use issues. Only 4—the Microsoft, Tushnet, Snow, and Rauschenberg Foundation briefs–address only fair use. This was a something of a surprise given that the fair use decision seems quite vulnerable to challenge. After all, a jury rendered a verdict in favor of Google’s fair use defense, and appellate courts are supposed to defer to jury verdicts. Several amicus briefs take the Federal Circuit to task for substituting its judgment on the merits for the jury’s as to issues about which there was conflicting evidence in the record. Also much criticized are the Federal Circuit’s analysis of the four fair use factors and the manner in which it weighed the factors together.

One very pragmatic reason why some amici would prefer that the Court rule on the copyrightability issue over the fair use issue is that fair use is a fact-intensive, complex, and much debated limitation on copyright. Google may be able to litigate software interface copyright cases for a decade or more, as it has done in this case, but startups and other small and medium-size companies as well as open source developers would prefer the certainty of a no-copyright-in-interfaces rule, as several amicus briefs pointed out. If the Court rules that interfaces are not protectable by copyright law, litigation over reuses of interfaces is much less likely. And if some developer does bring suit, chances are good that the case can be won on a motion to dismiss or for summary judgment

Software developer and industry association amici point to a longstanding consensus on the distinction between interfaces and implementations: interfaces should be free for reuse as long as developers reimplement the interfaces in independently created code. The Federal Circuit’s Oracle decisions have upset settled expectations in the industry, and if the Court upholds them, it would have, as Microsoft asserts, “potentially disastrous consequences for innovation.”

The American Antitrust Institute was among the amici that emphasized the potential for copyright in program interfaces to have anti-competitive effects by entrenching dominant firms and creating barriers for new entrants in the software business. This is particularly of concern in view of network effects which, even without interface copyright monopolies, make it difficult for users and developers to switch to new systems.

The Computer & Communications Industry Association and the Internet Association amicus brief provides a historical review of the evolution of software copyright caselaw. Although a few early decisions construed copyright as providing broad protection to program structures such as interfaces, landmark decisions by the Second and Ninth Circuits recognized that interfaces which constitute the functional requirements for achieving compatibility among programs should not be protectable by copyright law. Other courts followed these rulings. The Oracle decision deviates from this body of caselaw. Some amici regard interfaces as patent, not copyright, subject matter.

The amicus brief Catherine Crump and I co-authored and submitted on behalf of 72 intellectual property scholars positioned the pro-compatibility decisions within the framework of the Supreme Court’s 19th-century rulings in Perris v. Hexamer and Baker v. Selden, which originated the exclusion of methods and systems and their constituent elements from the scope of copyright; dozens of decisions applying these exclusions; their codification in 17 U.S.C. § 102(b); and caselaw applying these exclusions to software interfaces that enable compatibility. Our brief also explains why the District Court’s alternative ruling in favor of Google’s merger defense was consistent with Baker and its progeny and that merger provides a sound basis for finding that program interfaces that enable compatibility, such as the Java SE declarations, are unprotectable by copyright law.

Oracle will obviously have a different take on these issues when it files its brief due February 12. Amici in support of its position must submit their briefs within the following week.

Google will have an opportunity to file a reply brief in mid-March. Oral argument before the Court may be scheduled in late March.

= = = = =

[1] Although the American Intellectual Property Law Association is one of the briefs in support of neither party, the substance of its arguments on both the copyrightability and fair use arguments are quite close to the positions of Google and pro-interoperability amici.  The other “neutral” amici were the Robert Rauschenberg and Andy Warhol Foundations which expressed concern about a possible interpretation of fair use that would undermine artistic freedom to engage in creative reuses by artists.

Copyright on Computer Programs: Solicitor General Argues that APIs are Unquestionably Copyright Eligible

by Dennis Crouch

In recent years, much attention has focused on whether the output of computer software engineers is properly the subject of patent rights. Now, however, an important case is pending before the U.S. Supreme Court regarding whether computer programs are protectable under copyright.  Here, the particular issues involve copyright protection over program interface (API) function calls that allow programs to communicate with one another.

Google v. Oracle (awaiting writ of certiorari).

When Google developed the API-toolkit for Android, it wanted to use Java-like functionality, but didn’t want to pay the license fee. So, rather than copying the Java code, the company had its engineers re-code the functionality.  Because copyright doesn’t cover functionality, this approach works to avoid copyright infringement. The one caveat was that Google did not want to force developers learn a whole new toolkit of functional calls and so the company copied the set of more than 6,000 function calls.  This approach allows Google to free-ride off of the popularity of Java.  As I wrote earlier:

As an example, Google used the Java method header “java.lang.Math.max(a,b)”.  When called, the “max” function returns the greater of the two inputs.

In considering the case, the Federal Circuit ruled that the Java API taxonomy was copyrightable — rejecting the idea/expression merger doctrine since there are many other ways that functionally equivalent method-calls could have been constructed besides those found in Java.  The court wrote: “merger cannot bar copyright protection for any lines of declaring source code unless Sun/Oracle had only one way, or a limited number of ways, to write them.”

The petition for writ of certiori to the Supreme Court asks the following question:

Whether Section 102(b) [of the Copyright Act] precludes copyright protection for original software code that defines and organizes a set of functions that are useful in writing computer programs.

In the most recent filing in the case, the Solicitor General has suggested that the court not take the case – because it was correctly decided by the Federal Circuit.  For the SG, computer programs are unquestionably copyrightable, including the API function calls at issue here.  Rather than being a question of copyrightability, the SG suggest that Google’s best argument is fair use — although the SG does not offer an opinion of whether that is a winning argument.

[Read the New SG Brief: SGBriefGoogleOracle]

Petitioner contends, however, that even if the declaring code is an “original work[] of authorship” under Section 102(a), it is not entitled to copyright protection because it constitutes a “method of operation” or “system” within the meaning of Section 102(b). That argument is incorrect. . . . Section 102(b) is not a limitation on what kinds of expressive works may be protected by a copyright. Rather, it is a limitation on how broadly the copyright extends. Although a book on how to build a bicycle may be eligible for copyright protection, that copyright does not include any exclusive right to practice the bicycle-building method that the book explains; nor can the author prevent another person from writing a better book with a clearer explanation of the same process.

In years past, the Supreme Court has often followed the recommendation of the SG in deciding whether to grant petitions for writ of certiorari.  However, this particular brief does not wrestle with the copyright issues in a straight way, but rather appears to argue in favor of a politically chosen conclusion. In my mind, this suggests that the court should give less weight to the brief than may have been expected apriori.

Oracle’s brief: More competing questions

By Jason Rantanen

Yesterday, Dennis wrote about competing questions in a Supreme Court cert petition.  In its merits brief in Google LLC v. Oracle America, Inc., filed on Wednesday, Respondent Oracle also frames the issues a bit differently than Google did.

Google Questions presented

Oracle Questions presented

1. Whether copyright protection extends to a software interface. 1. Under §102(a), computer programs, like all “works of authorship,” have “[c]opyright protection,” as long as they are “original.” The merger doctrine does not make any expression unprotectable except in the rare circumstance where there were very few ways to express the idea. Does the Copyright Act protect the code and organization that Google concedes were original and creative and that Oracle could have written in countless ways to perform the same function?
2. Whether, as the jury found, petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use. 2. Was the Court of Appeals correct in holding that Google’s copying was not fair, where Google conceded it copied for commercial purposes and that the code it copied serves the same purpose and has the same meaning, and Google did not dispute the evidence that Android competes directly with Oracle’s work, harming its actual and potential markets?

Read Google’s brief here: Brief of Petitioner (Google)

Read Oracle’s brief here: Respondent Brief (Oracle)

We’re reading the Google and Oracle briefs in my Introduction to Intellectual Property class this semester as part of the concluding exercise for the unit on copyright.  On Monday we’ll discuss and debate the two positions in small groups then see which is most persuasive to a group of smart law students with a few weeks of copyright law.

Google Looks to Narrow both Copyrights and Patents through Supreme Court Action

by Dennis Crouch

Two pending Supreme Court now have higher profiles with the Supreme Court’s invitation to the Solicitor General to provide views of the administration.  In both cases, the petitioners have set-up the Federal Circuit as a misguided court.

The focus of Google v. Oracle (Sct. Docket No. 14-410) is the extent that software is eligible for copyright protection. The petition asks:

Whether copyright protection extends to all elements of an original work of computer software, including a system or method of operation, that an author could have written in more than one way.

Unlike patent law, the copyright eligibility statute includes a set of express exclusions. In particular, although “original works of authorship” are generally eligible for copyright protection, “[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b).  In its decision the Federal Circuit found Oracle’s Java API taxonomy copyrightable as a whole. In particular, the appellate panel led by Judge O’Malley rejected the idea/expression merger doctrine since there are many other ways that functionally equivalent method-calls could have been constructed besides those found in Java.  “Merger cannot bar copyright protection for any lines of declaring source code unless Sun/Oracle had only one way, or a limited number of ways, to write them.” [Read my prior discussion here and here]

 

The second case – also involving Google – is Google v. Vederi (Sct. Docket No. 14-448).  In that case, the Google raises the following question:

Whether, when an applicant for a patent amends a claim to overcome the PTOs earlier disallowance of the claim, a court should (i) presume that the amendment narrowed the claim and strictly construe the amended claim language against the applicant, as this Court has held; or (ii) presume that the claim scope remained the same and require that any narrowing be clear and unmistakable, as the Federal Circuit has held.

Although the first part of the question is interesting, the second part appears quite misguided as Federal Circuit law does not presume that claims maintain the identical scope following an amendment to overcome a rejection by the PTO.  That said, the Federal Circuit has strayed significantly from Pre-1952 disclaimer law exemplified by cases such as Supply Co. v. Ace Patents Corp., 315 U.S. 126, 137 (1942); Keystone Driller Co. v. Nw. Eng’g Corp., 294 U.S. 42, 48 (1935); Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 789–90 (1931); I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 443–44 (1926); and Hubbell v. United States, 179 U.S. 77, 84 (1900).

 

Google v. Oracle and the Mixed Question of Law and Fact

by Dennis Crouch

In Google LLC v. Oracle Am., Inc., 593 U. S. ____  (2021), the Supreme Court spends a few pages walking through procedural aspects of the fair use defense.

Like many patent law doctrines, fair use is a mixed question of law and fact. The defendant’s use of the asserted copyrighted work and its impact on the plaintiff are typically factual issues that must be proven by evidence as weighed by the factfinder (often a jury). These are questions such as “how much of the copyrighted work was copied” and “whether there was harm to the actual or potential markets for the copyrighted work.” Google at 19.  However, the questions of law emerge when we are categorizing the importance of the factual findings as well as asking the ultimate question of whether the use was a fair use.

The fact-law divide comes up in various ways: Is there a Constitutional right to a jury trial on the issue; lacking that may a jury still decide the issue; does proof require evidence (as defined by the Federal Rules of Evidence) proven to a particular standard; or instead do we simply look for the ‘right’ answer; on appeal, what is the standard of review — deference or not?  Fact/Law also comes up in patent prosecution, but examiners are not charged with making the distinction and the rules of evidence don’t apply.

At the trial court this leads to the very practical question of how easily a judge can dispose of the issue pre-trial.  Questions of law are often easy to determine pre-trial; some mixed questions are also relatively easy to determine pre-trial if there is no right to a jury determination; mixed questions involving substantial factual disputes and a right to a jury trial are hard.  In patent cases, courts are regularly making pre-trial determinations on claim construction and eligibility, both of which are ultimately questions of law but that can involve underlying factual determinations.  Obviousness is another mixed question.  Although  the ultimate determination of obviousness is a question of law, it is treated differently from claim construction and eligibility.  Rather than being decided by a judge, obviousness is typically decided by a jury as fact-finder.  The difference is that obviousness typically requires detailed factual determinations that are hard to separate from the ultimate conclusion of obviousness and that are subject to a Constitutional right to a jury trial.

In deciding an issue, a district court will typically separate its analysis between findings-of-fact and conclusions-of-law. This separation is expressly required in FRCP 52(a)(1) when a judge determines the facts without a jury.  District courts also decide other substantive questions pre- and post-trial.  However, those determinations are typically purely questions-of-law.  (Failure to state a claim; Summary Judgment; Judgment as a Matter of Law).

Back to Google: Oracle sued Google for copyright infringement, and Google raised a defense of Fair Use.  The district court gave the question of fair use to the jury who sided with Google.  On appeal, though the Federal Circuit reversed and found no fair use.  Although the jury had decided the issue, the Federal Circuit gave no deference to the jury’s legal conclusions.  In its subsequent analysis, the Supreme Court agreed with the Federal Circuit’s  procedural approach of de novo review of the legal conclusions but ultimately disagreed on the substance. Rather, the Supreme Court concluded that Google’s use was a fair use as a matter of law.

One typical difficulty in the law-fact divide is that the questions are often not easily separable. In Markman, the Supreme Court called claim construction a “mongrel practice” because it is a mixed question that is hard to separate-out.  Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).   In Google, the court determined that the big questions of fair use should be treated as questions-of-law because they “primarily involves legal work.”

The Google court went on to cite Markman in concluding that there is no 7th Amendment Right to a Jury Trial on the doctrine of fair use. “As far as contemporary fair use is concerned, we have described the doctrine as an ‘equitable,’ not a ‘legal,’ doctrine.” Google at 20.  See U.S. Const. 7th Amd. (“In Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved.”).

The Court’s general approach to mixed questions of law is explained in some detail within its 2018 bankruptcy decision of U. S. Bank N. A. v. Village at Lakeridge, LLC, 583 U. S. ___, 138 S. Ct. 960 (2018). In that case, the mixed-question was whether a creditor qualified as a “non-statutory insider.”  In U.S. Bank, the court explained that “mixed questions are not all alike.”  Some mixed questions are more like questions of law requiring an “amplifying or elaborating on a broad legal standard.”  Those should be treated as questions of law.  Other mixed questions require analysis of narrow facts “that utterly resist generalization.”  Those should be treated as questions of fact.  “In short, the standard of review for a mixed question all depends—on whether answering it entails primarily legal or factual work.”

For the fair use analysis in Google, the court followed the U.S. Bank standard and determined that the fair use questions at issue in the case were primarily legal and thus should be reviewed de novo on appeal.

Bringing all this back to patent law, I don’t see anything in this analysis to disturb our current approaches to obviousness, claim construction and eligibility.  But, both Google and U.S. Bank are clear that they are focusing on the particular issues in the case at hand.  It may well be that the mixed question analysis will come out differently on a different set of facts.

Google v. Oracle – Supreme Court Petition

by Dennis Crouch

Google, LLC v. Oracle America (Supreme Court 2019)

This new petition from Google asks important questions about the role of copyright in protecting software.  Questions presented:

  1. Whether copyright protection extends to a software interface.
  2. Whether, as the jury found, petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

Rather than licensing Java, Google rewrote the programming language for Android App development in a way that mimics Java.  No problem there so long as done without copying.  However, rather than renaming all the function calls, Google decided to copy the names of all the function calls.  I previously explained:

As an example, Google used the Java method header “Math.max(a,b).” . . . In Android’s API, Google copied a set of 37 different Java “packages” (such as Math) that each contain many classes and method calls (such as “max()”).  Overall, Google copied the header structure for more than six-thousand methods.

Google’s reason for copying the naming structure was a form of free-riding.  There were already many thousand Java programmers and Google was looking for a way to get them to develop Apps for Android. In its shortest form, Google explains the case as follows:

As is relevant here, software interfaces are lines of computer code that allow developers to operate prewritten libraries of code used to perform particular tasks. Since the earliest days of software development, developers have used interfaces to access essential tools for building new computer programs. Contravening that longstanding practice, the Federal Circuit in this case held both that a software interface is copyrightable and that petitioner’s use of a software interface in a new computer program cannot constitute fair use as a matter of law.

Petition at I.

Read the petition: Google_v_Oracle_Petition-for-Certiorari_01-24-2019; Read the Wikipedia Page.

After reading the Federal Circuit decision, I wrote that the case is “likely heading to the Supreme Court.”  Although I believe that the case has a very good shot – one difficulty is that it involves a decision by the Federal Circuit applying Ninth Circuit law — it effectively holds no weight and can be simply rejected by the next Ninth Circuit panel addressing the same issues.

Copyrighting Software: Case Likely Heading to Supreme Court

Overlapping Copyright and Patent Rights

by Dennis Crouch

Oracle v. Google (N.D. Cal. 2012)

Oracle and Google are battling over whether Google improperly relied on Java OS code when developing its Android operating system.  The intellectual property rights associated with Java are now owned by Oracle, who purchased Sun Microsystems in 2009. Although there are some factual disputes, a jury recently concluded that Google did indeed copy and use portions the Java code.  However, the jury could not decide whether the use was improper or whether it instead should be considered an appropriate fair use.

In addition to being protected by copyright, the same Java code is also (allegedly) protected by patents owned by Oracle.  Thus, Oracle has argued that Google’s actions constitute both copyright and patent infringement.  

Although pre-software, the Supreme Court has written some about the overlap between various intellectual property rights.  In Mazer v. Stein, 347 U.S. 201 (1954), the Supreme Court stated refused to hold that mere patentability of a lamp structure did not preclude the creator from obtaining copyright protection.  Mazer focused on potential protectability and does not address whether an entity can properly claim and/or assert both copyright and patent rights over the same subject matter as Oracle appears to be doing here. In addition, there is some suggestion from the case that the Supreme Court was talking about design patents rather than utility patents.  In other contexts, the Supreme Court has been hostile to overlapping IP rights. See, most recently, Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) and TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001).

Copyrightability of a Programming Language

by Dennis Crouch

This is a follow-up post on the pending SAS v. WPL appeal before the Federal Circuit.  The focus of the case is copyrightability of the SAS statistical software and  its outputs.  SAS argues that it made a “plethora of creative choices” in developing its material, and that creativity is more than sufficient to satisfy the originality requirements of copyright law.  Thus far, the courts have disagreed with SAS and rejected its copyright assertions.  However, the company has now positioned its case before the intellectual property friendly Court of Appeals for the Federal Circuit.

Copyrightability of Software: The Next Big Case

The software at issue here is most aptly described as a programming language that consists of a set of functions & options that the plaintiff calls “input formats” used to produce formatted reports. In addition, SAS argues that the formatting of the reports is also copyrighted.  There apparently is no claim of copying of any lines of software, but instead it is copying of the functionality and use of the particular  coding language.  My understanding is that WPL designed its software so that its software would execute the same input-procedure used on SAS and produce an equivalent output.  Although these are functional aspects, they also involve creative choices.

In a prior post, I wrote about the SAS appeal including a number of amicus briefs supporting their strong copyright claim.  Now the other-side has had its chance to respond, including substantial amicus support.  The Federal Circuit’s Google v. Oracle decisions are sitting in the background.  Although the Supreme Court eventually sided with Google on fair use grounds, it did not disturb the Federal Circuit’s copyrightability decision that strongly supported copyright protection even for functional software.  WPL’s amicus supporters are concerned that the Federal Circuit will reinvigorate its approach to copyrightability in SAS.

New briefs in support of the accused infringer WPL:

  • Electronic Frontier Foundation (EFF): The law treats copyrightability of software differently than other literary works (as it should).  Patents should be the go-to in this area.  I’ll note that EFF has also repeatedly argued against patentability of software.
  • 44 Intellectual Property Law Scholars: Focusing substantially on application and procedure for the abstraction-filtration-comparison (AFC) test — arguing that the AFC approach should not be rejected for a general “creative choices” test.
  • Computer & Communications Industry Association (CCIA): “A Copyright’s presumption of validity does not create a presumption that the entire work is protected expression.”
  • 54 Computer Scientists: This brief is helpful in understanding the details of how SAS and WPL operate in the context and history of computer programming languages.
  • GitHub, Inc.: “Vague allegations of nonliteral copyright infringement” lead to FUD — fear, uncertainty, and doubt.

Briefs filed so far:

Law Journal Reading List from the Briefs:

  • Paul Goldstein, Infringement of Copyright in Computer Programs, 47 U. Pitt. L. Rev. 1119 (1986) .
  • Richard H. Stern, Copyright in Computer Programming Languages, 17 Rutgers Computer & Tech. L.J. 321 (1991);
  • Ronald L. Johnston & Allen R. Grogan, Copyright Protection for Command Driven Interfaces, 12 COMPUTER L. INST. 1 (1991)
  • William M. Landes & Richard A. Posner, The Economic Structure of Intellectual Property Law (2003)
  • Pamela Samuelson, A Fresh Look at Tests for Nonliteral Copyright Infringement, 107 Nw. U. L. Rev. 1821 (2013)
  • Pamela Samuelson, Three Fundamental Flaws in CAFC’s Oracle v. Google Decision, 37 Eur. Intell. Prop. Rev. 702 (2015)
  • Lydia Pallas Loren & R. Anthony Reese, Proving Infringement: Burdens of Proof in Copyright Infringement Litigation, 23 Lewis & Clark L. Rev. 621 (2019).
  • Christopher Jon Sprigman & Samantha Fink Hedrick, The Filtration Problem in Copyright’s “Substantial Similarity” Infringement Test, 23 Lewis & Clark L. Rev. 571 (2019)

JOLT – Special Issue on API Copyright

Just as the Federal Circuit was releasing its decision in Oracle v. Google, Harvard’s Journal of Law & Technology was also releasing its special issue on the topic: Protecting Software Interfaces with Copyright Law.

Copyright of Software API

This week, the Federal Circuit is hearing oral arguments in an important software copyright case, SAS Institute, Inc. v. World Programming Ltd., Docket No. 21-1542The SAS is an important follow-on to the Supreme Court’s 2021 decision in Google v. Oracle, 141 S. Ct. 1183 (2021).  In Google, the Supreme Court sided with the accused infringer on fair use grounds, but did not decide the broader issue of whether Oracle’s API naming convention was copyrightable.

WPL created a clone version of SAS that allows users to use SAS-style inputs and receive SAS-style outputs.  SAS argues that those input and output formats are protected by copyright. However, the district court (E.D.Tex. Judge Gilstrap) sided with the accused infringer — holding that WPL presented unrebutted evidence that these elements were not protectable by copyright. On appeal, SAS raises four arguments:

  1. Copyrightability: The SAS Material should be deemed copyrightable as a matter of law because (1) of the plethora of creative choices; and (2) even if individual elements in formatting and design are unprotectable, the overall selection and arrangement is protectable.
  2. Filtration Analysis Procedure: It is the defendant’s burden to show what aspects of a copyrighted work are not protectable; the district court flipped that around by requiring the plaintiff to show what is protectable.
  3. Filtration Analysis Procedure: The district court appears to have held a bench trial on this issue, but called it a “copyrightability hearing.” Normally this is an issue for a jury (although the copyright holder does not raise a 7th Amendment challenge).
  4. Filtration Analysis Procedure: The district court excluded SAS’s fact and expert witnesses in an improper manner.

Lots of amicus briefs on both sides:

Supporting SAS: Mathworks & Oracle; Ralph Oman, former Register of Copyrights; Pro-Copyright professors; Copyright Alliance; Computer scientists group; and Creator’s Rights Groups.

Supporting WPL: CCIA; Intellectual Property Law Scholars; another set of Computer Scientists; Github; and EFF.

Arguments set for this Thursday (Jan 13).