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
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.
The arguments don’t really go to the nature of what is copyrighted in this case. What’s copyrighted arguably isn’t even software. The Java APIs could be expressed in an infinite number of ways, and the APIs aren’t even functional, at least in the sense that they don’t actually _do_ anything. They are purely expressive labels. The crux of this case is the fair-use factors, and the professors’ arguments above don’t address the Federal Circuit’s well-reasoned fair-use analysis.
The answer to the interoperability is open standards. If Google had just crafted its own APIs and made them open, the problem would have been solved.
Really great points HofPB!
Just an observation from 20,000 feet:
Google (and every academic): “Software isn’t protectable by patent, copyright is more appropriate!”
Google (and every academic), later: “Software isn’t protectable by copyright!”
I’d like to see some disclosures. Are all of those “academics” getting money from large corporations? Probably.
I think a better name for them would be “large corporate advocates with corporate appointments at universities.” This group of “academics” is nothing like an academic when I went to college. They are paid g uns. They have zero interest in scholarship and 100 percent interest in increasing their bank accounts.
Pamela Samuelson does software have structure?
( Pamela Samuelson has long argued for no patent protection for “software”, but from what I have read in her papers she doesn’t seem to even understand the equivalence of software/firmware/hardware. Nor does she recognize that to process information time, space, and energy are required and that the most fundamental law of physics is the conversation of information. )
(She fails to realize that her arguments against software are no different than arguments that could be used to argue that no technology should have patents. She also puts out propaganda that copyright protection is sufficient for software. )
(She is a Benson era person that didn’t think “software” should be eligible for patentability.)
I would classify her as another academic that takes positions that are contrary to science and is only able to hold these positions because she does not have to respond to criticism. She can just say whatever she pleases and get “papers” published in law journals without peer review. So there is no constraints put on what she can say other than the laughable test. So she can play to the lowest common denominator of ignorance of science. Just like Lemley.
“and get “papers” published in law journals without peer review.”
The title here is “Why 65 Intellectual Property Scholars…”
Peer review is NOT the issue.
You may say that the peer group forms a cess pool, but you cannot day that there is no peer group.
Anon, I am talking about how she rose to where she is now. Plus, because 65 got together to file a brief does not amount to peer review. And filing briefs is not what I am talking about as there is at least some ethics that must be followed to file a brief, which is not the case for law journal papers.
“Plus, because 65 got together to file a brief does not amount to peer review.”
You are simply not correct.
Peer review very much is a misnomer.
I “get” that you want something else to come from a review by one’s peers, but part and parcel of the problem WITH academia is that it — as a whole — is a peer system NOT set on meritocracy, but rather, is set on how the fledglings can mirror the beliefs of those in power.
Been there. Managed to avoid doing that and took a different career path.
The problem is NOT that you want “peer review” to mean an objective and ethical stance, the problem is that you refuse to see that such — in academia — is simply not the reality that we have.
…and I would ALSO point out that you yourself have railed against actual briefs filed for those briefs (e.g,. Lemley) that simply tell falsehoods, so your attempt to distinguish here is both odd, and out of touch with the underlying problem.
BOTH “law school papers” AND “amicus briefs” suffer from the SAME problem, a problem that no amount of review from those peers will resolve, BECAUSE all of those peers are from the SAME lack of meritocracy endemic to academia.
In fact her great position at Berkeley is not doubt due to her anti-patent position. I’d like to know how much money big corporations gave to Berkeley to get her the job.
Let’s be real. The anti-patent people are getting great jobs at universities that get lots of money from the big corporations that don’t want patents.
This is not a meritocracy, but this is based on her great success is based on taking anti-patent positions.
big corporations that don’t want patents.
They also don’t seem to want copyrights. Pilfer their “trade secrets,” though, and look out for the long knives!
Yup. Trade secrets is what they want.
Well they technically are the best form of IP, so long as nobody independently discovers or reverse engineers your stuff and you can keep it under wraps. Why would a corp not want that?
You have not yet gleaned the thrust of promoting innovation at the most basic level of purpose yet, have you 6?
I understand very well that trade secrits don’t promote innovation, on the whole anon. But for the corps themselves it is the best form of IP. With a big IF. An if that can’t always be achieved.
And I recognize that the gubmit wants innovation to be promoted, just as most avg people prefer as well.
ah yes, the caveat of “for the corps.”
Which is an extremely important one at that (Citizens United notwithstanding)
“big corporations that don’t want patents.”
I guess that’s why my whole docket is full of corps filing for patents.
A better question than “Does software have structure? is “Are software claims directed to structure?” Implemented software will always have some physical embodiment, but that is beside the point if the corresponding claims aren’t directed to those implementation details.
The equivalence between software, firmware, and hardware is the same as the equivalence between writing in pencil and etching in stone because your equivalence is unidirectional. While all software can be implemented in hardware–not all hardware can be implemented in software. If they are truly equivalent, then this problem can be solved by claiming the hardware implementation and capturing software implementations via DOE. Otherwise, your equivalence argument misses the mark.
What is the point of your assertion that “to process information time, space, and energy are required and that the most fundamental law of physics is the [conservation] of information”? Why does this inevitably lead to information processing claims being patentable subject matter? Mental processes also require time, space, and energy. Are they patentable?
“She fails to realize that her arguments against software are no different than arguments that could be used to argue that no technology should have patents.” I don’t understand how one cannot see the differences in the available arguments. That being said, one can argue over the significance of those differences, but ignoring their existence seems disingenuous.
If they are truly equivalent, then this problem can be solved by claiming the hardware implementation and capturing software implementations via DOE.
It seems to me that this could be the real solution to the current problems (both for the patentee and the alleged infringer) associated with software claims.
The inventor of a new software must disclose the circuitry that would implement that software. Then you claim “a computer comprising a processor and a means for [software functionality].” The claim reads on the circuitry structure that you have disclosed and art-recognized equivalents.
I would like to think that the “equivalents” analysis would be more manageable than our current mess of Alice sequelae. This is not my art field, however, so it is possible that what I am proposing would be an even bigger mess than what we have now. If so, I would be interested to know why, so that I might learn from a mistake not yet made but only discussed.
“The equivalence between software, firmware, and hardware is the same as the equivalence between writing in pencil and etching in stone because your equivalence is unidirectional.”
?
(your analogy reveals your bias) – who really cares whether one is writing in pencil or etching in stone as opposed to an innovation being in hardware, firmware, or software…?
Simple reminder is (apparently) due yet again:
An item may well have more than one aspect to its being.
Those aspects to which expression inures, may be covered under the Intellectual Property regime designed to protect expression: Copyrights
Those aspects to which utility inures, may be covered under the Intellectual Property regime designed to protect utility: Patents
There is nothing that necessarily precludes and item from having BOTH aspects.
Note that this is in FULL accord with each of the supposed arguments that anti-protection-anything Samuelson pines for.
Off topic, but this made me chuckle. Enjoy.
Comments are closed.