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).

30 thoughts on “Overlapping Copyright and Patent Rights

  1. 30

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  2. 29


    I hope that you are not waiting for Perry to join you in a conversation. He tends to have his say and split. Just ask Inviting Body Punches.

  3. 28

    Anon’s single post above has more meat than all of Malcom’s posts combined over the past five years.

    Critizing the form of criticism and neglecting content – what’s the phrase? “Ewwwww, Malcolmy

  4. 27

    Interesting to note that “s_ockie” has been added to the list of banned words.

    Not a bad idea. It’s too bad that Dennis cannot force the certain vocal minority to include substance in their posts.

  5. 26

    Thank you Malcolm for the compliment of calling me NAL. I guess you have to leave out your typical “s_ockie” comment as you are wearing one yourself, evidently not wishing to address me directly and suffer (yet another) beatdown.

    The tone of “condescending” is in direct proportion to the Perry article. Had you read the article, you would not need to ask that question.

    Further, there is nothing “personal” about my response, other than I am responding to a person and that person’s views.

    Your ability to vacuously reply has been noted and is evident once again. Next time, please feel free to add comments to the substance of the thread. Of course, that may take some effort to read and understand the subject of the thread, but lacking that effort has not stopped you in the past.

  6. 25

    You probably should have taken another day or two to let your response sink in before posting it, NAL. Why so condescending and personal? Your criticism of Perry’s “style of writing” is particularly ironic.

  7. 24


    I wanted to let your article sink in a day or two before responding.

    Basically, I am very unimpressed with your writing.

    You meet but do not address or give full and good credit to the Lanham Act, continually giving credit to Supreme Court cases that cannot stand in light of that act and you fail to recognize that in general terms, any trademark that is not completely arbitrary takes something out of the public domain for an indefinite period of time.

    You fail to un-conflate the concepts, which you must do, as the Lanham Act places – at least on par – a different legal nature of protection. Your answert above is a mischaracterization (no conflict), as I do not say that there is no conflict, but the path to resolving the conflict is just not the path you wish to take through the garden of federal protections.

    All of your calls to have the patent act ascendant are based on your subjectivity. The plain truth of the matter is that design patents are different than utility patents and you cannot escape that. Trade dress is a form of trademark and has federal protection that does exist separate from – even though possibly overlapping or consuming – protection generating from a different federal law. The Supreme Court cannot, absent Constitutional grounds, nullify the Lanham Act, and as mentioned, to reach your position, each and every non-completely arbitrary or inherently distinct mark would have to be deemed unconstitutional. You simply do not make a case that the conflict is grounded on constitutional merits because the Court has expressly found that the Lanham Act is based on a different portion of the constitution. Had the early argument been accepted – that trademark derived from the IP clause – then, and in truth only then, would your “conflct” been more than a trumped up excuse to limit federal rights.

    As it is, the law, the federal law, is clear and unequivocal.

    Even if you manage to make your position more objective, even if you mamange to deal with the different legal natures involved, the recent case of Golan v. Holder, which addresses the federal power to take things out of the public domain, is fatal to your position.

    Further, your style of writing with slanted and obviously biased word choices, glorifying the decisions you like and not fully addressing those that counter your view are distasteful and throw out red flags as to whatever meritous positions you may make. Quite the opposite of “bereft of supporting logic and any in-depth reasoning,” the cases are grounded in an understanding that simply eludes you.

  8. 22

    It is very easy to assert that because the the nature of the rights are different, there is no conflict. The cases that rely on this, such as the Mogen David cases, are bereft of supporting logic and any in-depth reasoning of why this should be so. On the other hand, I have cited in my article many cases that support the argument that there is a conflict, and that it is grounded in the U.S. Constitution. However, since there is really no modern Supreme Court case on direct point, i guess we will have to wait to see if my idea is “incorrect”.

  9. 21

    This is a nuanced subject, so please pardon me if I was not perfectly clear in my previous post.

    I wish to draw a distinction between the legal nature of protections and the scope of protections.

    It’s an important distinction. It is the legal nature being different that I should have emphasized in my 1:07 PM post.

    While the scope may overlap or even be the same, the legal nature being different makes all the difference. Recall an early trademark case (I cannot at the moment), wherein it was attempted to draw on the power of the IP constitutional clause. That argument failed decisively. But in that failure, a phoneix of great power arose. Because the legal natures are separate and legally distinct, when the coverage of one lapses is fully independent of when the (similar/overlapping/even same) coverage of the other remains in effect. There is a second case (again, I cannot recall the case name), that held that since the Lanham Act speaks of multiple coverage under various federal statutes (including as distinct the patent statutes), that rights garnered under one are not locked into rights garnered under another.

    In other words, your idea that the lapse of one will trump the other is incorrect. One must not focus overly on the “smell of protection.” One must focus on the “thorns of distinction.”

    A rose by any other name may in fact not be a rose.

  10. 20

    To the contrary, the protection can be exactly the same. In fact, the trade dress rights can be broader than the expired design patent rights. If the purported trade dress rights cover the same design that was the claimed subject matter of the expired design patent, the trade dress owner cannot only obtain an injunction on an infringing design that looks substantially the same, but all designs that are confusingly similar – an arguably broader test.
    And the fact that the design patent rights emanate from the Patent Clause which mandates “exclusive rights” for “limited times” is the precise reason that, if push comes to shove, they very well might trump perpetual trade dress rights.

  11. 19


    My understanding is that the protection schemes cover “different” albeit overlapping ideals.

    Whereas design patent protection must not be for functional elements, trade dress protection may include some functionality.

    But more to your point, that trade dress that does not cover functionality (thus overlapping) has been legally separated from the patent world due in part to the fact that trademark does not derive from the Patent Clause.

    In theory then, design patents can be used to establish the period of secondary meaning (since the user can prohibit others from using duringthat period) and which can lead to perpetual trade dress rights. One must be clear that the while there may be overlap, conceptually (and thus legally), the protections are not the same.

  12. 18

    The really interesting, and “sleeping dog” issue, is whether one can resort to trade dress protection, with potentially infinite duration, to protect the appearance of a product after the expiration of an expired design patent covering the same product – upon which the subject matter enters the public domain. There are a lot of older cases that suggest the answer is no, but the more modern courts, being very protectionist, have largely not found it to be a problem. The precise issue has not been before the Supreme Court as yet. I collect the cases in my 2000 article (please forgive the title):

    link to designlawgroup.com

  13. 17

    “…Oracle, who purchased Sun Microsystems…?” Why the personification of a corporation? Do you mean “which purchased Sun Microsystems?”

    Remember, Congress is to secure to “inventors,” not corporations the rights to his or her invention. What the human individual does with his or her invention is a matter of contract law. Why are we in this slide to the European franchise system that is obviously a failure in sparking invention?

  14. 16

    You got a point there.  And further we must ask who's in charge Germany, the people spend the money or the people who's money is spent?  I daresay that the government will not be able to give the Greeks, or others in Europe having similar problems, the resources of the German people ad infinitum.

  15. 14

    How’s that working for the Germans, who are being swallowed up by the EP?

  16. 13

    Why not let the big corporations just immolate one another? The bigger they are, the harder they will fall as the old saw goes. Perhaps evolution happening before your very eyes. It seems strangely cordial here these days, for some reason that I don’t care to contemplate.


    PS- Thanks for the link Andrew B. I have a few concepts that might benefit from your suggestions.

  17. 7

    We just spent upteen years and countless dollars lining the pockets of our very “best” representatives and all we got was the AIA.

    And now you want this new type of protection?

    How realistic do you think your idea is?

  18. 6

    One cannot help but notice that the 1976 Copyright Act came shortly on the heels of Gottschalk v. Benson.

    One thinks that we might need in the United States some intermediate form of intellectual property protection that is limited in duration, requires substantially identical copying, is available upon registration, extends to functional aspects, and a sustainable upon proof of some novelty.

  19. 5

    But what happened to all the tech-dirt types who crowed that software doesn’t belong in the patent world because it had a home in copyright?

  20. 2

    “In addition, there is some suggestion from the case that the Supreme Court was talking about design patents rather than utility patents. ”

    Obviously, because anything getting a copyright doesn’t get a utility patent. At least it wouldn’t from the USSC. Ultramercial v Wildtangent. Can’t wait for the lulz to start rollin’ in.

  21. 1

    Overall, there is next to no overlap between the claimed copyright and patent rights in this case, much as it may seem that way at first glance.

    Further, to be fair, the copyright dispute here isn’t about whether Google relied on Java OS code to build Android, and there seems to be some confusion here about what the jury actually decided. The jury found copying of *9 lines* of code for a range-check function (which has some merger problems as a copyright claim) that was actually donated to Sun by a developer and was already taken out of Android. This is 9 lines out of millions of lines of code in Java and Android respectively which makes one consider whether this is the paradigmatic de minimis copying case.

    The more interesting legal copyright question–and it is a legal question, not one for the jury–is whether Google’s use of some 37 Java APIs could be an appropriation of the “selection, structure and organization” of the Java APIs themselves insofar as it brings up a question whether such SSO is even copyrightable. Oracle had some issues in that Java wasn’t registered as a collective work so they had a hard time at trial making the case that the components of Java deserved individual copyright protection as well. There is also the elephant in the room–functionality questions about the APIs themselves naturally lead to idea/expression merger considerations.

    On the question of SSO of the 37 APIs, jury found that Google infringed, but did so under instruction that assumes the SSO of the APIs to be copyrightable–an open legal question. Judge Alsup reserved the underlying legal determination to himself and his ruling on this underlying legal issue may well render moot the jury’s findings of appropriation.

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