Jury instructions, as we will see, can be critical in "guiding" the jury toward an approach to a verdict favoring one party or the other. That is why, although the filing is denominated a joint filing on jury instructions, it is really a filing that evidences all of the disagreements the parties have with the approach suggested by the other.

Let's take a look at some of the examples (these are presented as images because of all of the redlining which we cannot readily replicate in html) [note update at end of article - chart in HTML]:

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Oracle's Proposed Instruction No.1

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Google's Proposed Instruction No.1

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Let's take a look at these different approaches to the first instruction on copyright. Take the second sentence of the instruction. Oracle wants to characterize Google's defense as:

The defendant denies infringing the copyrights, contends that parts of the copyrights are invalid, and asserts an affirmative defense, e.g., that it made a fair use of the work.

Google denies infringing the copyright, contends that the material copied, if any, is not protectable by copyright, and asserts affirmative defenses, e.g., that it made a fair use of the work, and that its use of the work was justified given Oracle's past statements and actions.

Similarly, in the fourth paragraph under Definition of Copyright Oracle wants to add two sentences:

The level of originality required to grant copyright protection is minimal, however. In copyright law, the “original element” of a work need not be new or novel. Copyright law will protect an original element of a work as long as it does not utterly lack creativity.

Again, under the heading 'How Copyright Is Obtained', Oracle adds a third paragraph that it favors because it will (improperly, in my view) tilt the jury in its favor:

Oracle’s Java-related works at issue in this case are registered with the Copyright Office. Because the works have been registered, the defendant, Google, has the burden to demonstrate why the copyrights are not valid. You may presume, for example, that the Java-related works at issue are original because they have a valid copyright registration. It is Google’s burden to rebut that presumption.

We see these same differences showing up in the patent instructions as well. In proposed instruction No. 2 regarding what a patent is and how it is obtained (Oracle's proposed instruction running from pages 9-11 and Google's from pages 12-14), Oracle makes no reference to reexamination, sticking with the text of the pattern jury instructions for the Northern District of California (see, Model Patent Jury Instructions for the Northern District of California) Google, on the other hand, wants to draw the jury's attention to the reexaminations and the fact that patents, as issued, may still be invalid, when it inserts:

Under some circumstances, a patent might undergo a process know as “reexamination.” A reexamination is a procedure that allows the PTO to reopen its examination of a patent to verify whether the claims were properly issued. Anyone can ask for the PTO to reexamine a patent, and can use materials that either were or were not previously before the PTO to support that request, but must provide documents that raise a “substantial new question of patentability.” The documents supporting a request for reexamination are frequently documents that the PTO has not yet reviewed in the context of the patent being reexamined.

How Judge Alsup finally elects to instruct could make a significant difference in how this trial is decided.

Update: Here's a chart, showing each section side by side, which someone contributed, which makes it easier to compare. Also, in both Oracle's Memorandum In Support of Its Disputed Jury Instructions [PDF] and Google's Pretrial Memorandum In Support of Its Disputed Jury Instructions [PDF], each explains its version:

ORACLE	GOOGLE
DISPUTED JURY INSTRUCTION NO. 1 PRELIMINARY INSTRUCTION COPYRIGHT INFRINGEMENT OFFERED BY ORACLE	DISPUTED JURY INSTRUCTION NO. 1 PRELIMINARY INSTRUCTION COPYRIGHT INFRINGEMENT OFFERED BY GOOGLE
The plaintiff, [name of plaintiff] Oracle America, Inc. (referred to as “Oracle”), claims ownership of a copyright copyrights and seeks damages against the defendant, [name of defendant] Google Inc. (referred to as “Google”), for copyright infringement of various components of the Java software platform. The defendant denies infringing the copyright [and] [ copyrights, contends that parts of the copyright is copyrights are invalid] [, and asserts an affirmative defense, e.g., that it made a fair use of the work]. To help you understand the evidence in this case, I will explain some of the legal terms you will hear during this trial. At the conclusion of trial, I will provide you with written instructions that explain these legal terms in more detail.	The plaintiff, [name of plaintiff] Oracle America, Inc. (referred to as “Oracle”), claims ownership of a copyright copyrights and seeks damages against the defendant, [name of defendant] Google Inc. (referred to as “Google”), for copyright infringement of the Java 2 Standard Edition versions 1.4 and 5.0 (“Asserted Works”). The defendant Google denies infringing the copyright [and] [, contends that the material copied, if any, is not protectable by copyright is invalid] [, and asserts an affirmative defense defenses, e.g., that it made a fair use of the work]., and that its use of the work was justified given Oracle’s past statements and actions. To help you understand the evidence in this case, I will explain some of the legal terms you will hear during this trial. At the conclusion of trial, I will provide you with written instructions that explain these legal terms in more detail.
DEFINITION OF COPYRIGHT	DEFINITION OF COPYRIGHT
The owner of a copyright has the right to exclude any other person from (1) reproducing, (2) preparing derivative works, (3) distributing, performing, or (4) displaying, or using the work covered by copyright for a specific period of time. Copyrighted work can be a literary work, musical work, dramatic work, pantomime, choreographic work, pictorial work, graphic work, sculptural work, motion picture, audiovisual work, sound recording, architectural work, mask works fixed in semiconductor chip products, or a computer program, computer code, or elements of computer software. Facts, ideas, procedures, processes, systems, methods of operation, concepts, principles or discoveries cannot themselves be copyrighted. The copyrighted work must be original. The level of originality required to grant copyright protection is minimal, however. In copyright law, the “original element” of a work need not be new or novel. Copyright law will protect an original element of a work as long as it does not utterly lack creativity. An original work that closely resembles other works can be copyrighted so long as the similarity between the two works is not the result of copying.	The owner of a copyright has the right to exclude any other person from reproducing, preparing derivative works, or distributing, performing, displaying, or using the work covered by copyright for a specific period of time. Copyrighted A copyrighted work can be a literary work, musical work, dramatic work, pantomime, choreographic work, pictorial work, graphic work, sculptural work, motion picture, audiovisual work, sound recording, architectural work, mask works fixed in semiconductor chip products, or a computer program. Facts, ideas, procedures, processes, systems, methods of operation, concepts, principles or discoveries names and functional requirements cannot themselves be copyrighted. The copyrighted work must be original. An original work that closely resembles other works can be copyrighted so long as the similarity between the two works is not the result of copying.
[COPYRIGHT INTERESTS]	[COPYRIGHT INTERESTS]
[The copyright owner may [transfer] [sell] [convey] to another person all or part of the owner’s property interest in the copyright, that is, the right to exclude others from reproducing, preparing a derivative work from, distributing, performing, or displaying, the copyrighted work. To be valid, the [transfer] [sale] [conveyance] must be in writing. The person to whom a right is transferred is called an assignee. One who owns a copyright may agree to let another reproduce, prepare a derivative work [of], distribute, perform, or display the copyrighted work. [To be valid, the [transfer] [sale] [conveyance] must be in writing.] The person to whom this right is transferred is called an exclusive licensee. The exclusive licensee has the right to exclude others from copying the work [to the extent of the rights granted in the license.]	[The copyright owner may [transfer] [sell] [convey] to another person all or part of the owner’s property interest in the copyright, that is, the right to exclude others from reproducing, preparing a derivative work from, distributing, performing, or displaying, the copyrighted work. To be valid, the [transfer] [sale] [conveyance] must be in writing. The person to whom a right is transferred is called an assignee. One who owns a copyright may agree to let another reproduce, prepare a derivative work [of], distribute, perform, or display the copyrighted work. [To be valid, the [transfer] [sale] [conveyance] must be in writing.] The person to whom this right is transferred is called an exclusive licensee. The exclusive licensee has the right to exclude others from copying the work [to the extent of the rights granted in the license.]
[HOW COPYRIGHT IS OBTAINED]	[HOW COPYRIGHT IS OBTAINED]
[Copyright automatically exists in a work the moment it is fixed in any tangible or stable medium of expression. In the case of software, this could be expressed in source code or machine-readable code. The owner of the copyright may register the copyright by delivering to the Copyright Office of the Library of Congress (which I shall refer to as the “Copyright Office”) a copy of the copyrighted work. After examination and a determination that the material deposited constitutes copyrightable subject matter and that legal and formal requirements are satisfied, the Register of Copyrights registers the work and issues a certificate of registration to the copyright owner.] The case involves Java-related works created by Sun Microsystems, Inc. (referred to as “Sun”), as part of Sun’s development of the Java computer software platform. Sun changed its name to “Oracle America, Inc.” when it became a subsidiary of Oracle Corporation. Oracle America, Inc. is the same legal entity that was the original owner of the copyrights at issue in this case. It continues to own these copyrights. In this trial, I will refer to Oracle America, Inc. simply as “Oracle.” Oracle’s Java-related works at issue in this case are registered with the Copyright Office. Because the works have been registered, the defendant, Google, has the burden to demonstrate why the copyrights are not valid. You may presume, for example, that the Java-related works at issue are original because they have a valid copyright registration. It is Google’s burden to rebut that presumption.	[Copyright automatically exists in a work the moment it is fixed in any tangible or stable medium of expression. In the case of software, this could be expressed in source code or machine-readable code. The owner of the copyright may register the copyright by delivering to the Copyright Office of the Library of Congress (which I shall refer to as the “Copyright Office”) a copy of the copyrighted work. After examination and a determination that the material deposited constitutes copyrightable subject matter and that legal and formal requirements are satisfied, the Register of Copyrights registers the work and issues and obtaining a certificate of registration to the copyright owner.]. The copyright registrations in this case were obtained by Sun Microsystems, Inc. (referred to as “Sun”). Sun changed its name to “Oracle America, Inc.” when Oracle Corporation purchased Sun, but it is still the same legal entity, such that Oracle is bound by Sun’s actions, inaction and prior statements.
[PLAINTIFF'S BURDEN OF PROOF]	[PLAINTIFF'S BURDEN OF PROOF]
In this case, the plaintiff, [name of plaintiff]Oracle, contends that the defendant, [name of defendant], has infringed the plaintiff’s copyright. Google, has infringed Oracle’s copyrights in the Java software platform by copying 37 design specifications for core library application programming interfaces (known as “APIs”), and by creating derivative works from those designs by implementing them in Android API specifications and core libraries. In addition, Oracle accuses Google of copying software code files. A “derivative work” is a work that is based on one or more pre-existing works. The plaintiff has the burden of proving by a preponderance of the evidence that the plaintiff is the owner of the copyright and that the defendant copied original elements of the copyrighted work. Preponderance of the evidence means that you must be persuaded by the evidence that it is more probably true than not true that the copyrighted work was infringed.	In this case, the plaintiff, [name of plaintiff]Oracle, contends that the defendant, [name of defendant], has infringed the plaintiff’s copyright. Google, has infringed Oracle’s copyrights in its Asserted Works by copying from 11 code files and 37 design specifications for application programming interfaces (known as “APIs”) and creating derivative works based on those API design specifications. A “derivative work” is a work that is based on one or more pre-existing works. The plaintiff has the burden of proving by a preponderance of the evidence that the plaintiff is the owner of the copyright and that the defendant copied original, protectable elements of the copyrighted work. Preponderance of the evidence means that you must be persuaded by the evidence that it is more probably true than not true that the copyrighted work was infringed.
[PROOF OF COPYING ]	[PROOF OF COPYING]
To prove that the defendant Google copied the plaintiffOracle’s work, the plaintiffOracle may show that the defendantGoogle had access to the plaintiffOracle’s copyrighted work and that there are substantial similarities between the defendantGoogle’s work and the plaintiffOracle’s copyrighted work.	To prove that the defendantGoogle copied the plaintiffOracle’s work, the plaintiffOracle may show that the defendantGoogle had access to the plaintiffOracle’s copyrighted work and that there are substantial similarities between the defendantGoogle’s work and the plaintiffOracle’s copyrighted work., or, if the range of protectable and unauthorized expression is narrow, that they are virtually identical.
LIABILITY FOR INFRINGEMENT	LIABILITY FOR INFRINGEMENT
One who [reproduces] [ a copyrighted work, prepares derivative works from] [ a copyrighted work, distributes] [performs] [ a copyrighted work or displays] a copyrighted work without authority from the copyright owner during the term of the copyright, infringes the copyright. [Copyright may also be infringed by [vicariously infringing] [ and] [ contributorily infringing].] the copyright.	One who [reproduces] [ original, protectable elements of a copyrighted work, prepares derivative works from] [distributes] [performs] [displays] original, protectable elements of a copyrighted work, or distributes original, protectable elements of a copyrighted work without authority from the copyright owner during the term of the copyright, infringes the copyright. [ Copyright may also be infringed by [ vicariously infringing] [ and] [ contributorily infringing].] the copyright.
[VICARIOUS INFRINGEMENT ]	[VICARIOUS INFRINGEMENT]
[A person is liable for copyright infringement by another if thethat person has profited directly from the infringing activity and if that person had the right and ability to supervise the infringing activity, whether or not thethat person knew of the infringement.] In this case, Oracle claims that Google has vicariously infringed the Java-related works by profiting from its failure to use its ability to supervise or control the infringement of the Java-related works by mobile device manufacturers, mobile service providers, and developers.	[A person is liable for copyright infringement by another if thethat person has profited directly from the infringing activity and if that person had the right and ability to supervise the infringing activity, whether or not thethat person knew of the infringement.]
[CONTRIBUTORY INFRINGEMENT ]	[CONTRIBUTORY INFRINGEMENT]
[A person is liable for copyright infringement by another if thethat person knows or should have known of the infringing activity and [if that person induces] [, causes] [, or] [ materially contributes to] the activity.] the infringing activity. In this case, Oracle claims that Google has contributorily infringed the Java-related works by inducing or materially contributing to the infringement of the Java-related works by mobile device manufacturers, mobile service providers, and developers.	[A person is liable for copyright infringement by another if thethat person knows or should have known of the infringing activity and [if that person intentionally induces] [causes] [ or] [ materially contributes to] the infringing activity.]
[DEFENSES TO INFRINGEMENT ]	[DEFENSES TO INFRINGEMENT]
[The defendantGoogle contends that there is no copyright infringement. There is no copyright infringement where [the defendant independently created the challenged work] [, or the defendant made fair use of a copyrighted work by reproducing copies for criticism, comment, news reporting, teaching, scholarship, or research] [[the plaintiff has abandoned ownership of the copyrighted work].].	[The defendantGoogle contends that there is no copyright infringement. There is no copyright infringement where [the defendant independently created the challenged work] [the defendant, for example, if Google copied unprotected or unoriginal elements of the copyrighted work, or if Google made a fair use of a copyrighted work by reproducing copies for criticism, comment, news reporting, teaching, scholarship, or research] [[the plaintiff has abandoned ownership of the copyrighted work].].
AUTHORITY	SOURCES
NINTH CIRCUIT MANUAL OF MODEL JURY INSTRUCTIONS – CIVIL No. 17.0 (2007) (modified) (citing 17 U.S.C. §101 et seq.); 17 U.S.C. § 101; Merch. Transaction Sys., Inc. v. Nelcela, Inc. No. CV 02-1954-PHX-MHM, 2009 U.S. Dist. LEXIS 25663, at *29 (D. Ariz. Mar. 17, 2009) (“copyright protection extends not only to the ‘literal’ elements of computer software – the source code and object code – but also to a program’s nonliteral elements, including its structure, sequence, organization, user interface, screen displays and menu structures.”); Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir. 1989), 2011 U.S. App. LEXIS 15913 (9th Cir. Cal. Apr. 11, 2011) (“The standard of originality required for a copyright is minimal.”); Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 359 (1991); Bibbero Sys., Inc. v. Colwell Sys., Inc., 893 F.2d 1104, 1106 (9th Cir. 1990) (“In judicial proceedings, a certificate of copyright registration constitutes prima facie evidence of copyrightability and shifts the burden to the defendant to demonstrate why the copyright is not valid.”); Swirsky v. Carey, 376 F.3d 841, 851 (9th Cir. 2004) (“Because [the work] has a valid certificate of registration with the copyright office... [plaintiff] is entitled to a presumption of originality.”); Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005); NINTH CIRCUIT MANUAL OF MODEL JURY INSTRUCTIONS – CIVIL No. 17.6 Comment, 17.13 (2007).	NINTH CIRCUIT MANUAL OF MODEL JURY INSTRUCTIONS – CIVIL No. 17.0 (2007) (modified) (citing 17 U.S.C. §101 et seq.); Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1439 (9th Cir. 1994), cert. denied, 513 U.S. 1184 (1995); Order Partially Granting and Partially Denying Defendant’s Motion for Summary Judgment on Copyright Claim (“Copyright MSJ Order”), at 7-8 (September 15, 2011) (Dkt. No. 433); Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1522 (9th Cir. 1992); Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 931 (2005); Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 636 (9th Cir. 2008).

Update 2:

Here's Oracle's explanation, from its Memorandum, on Jury Instruction 1 the way it wants it:

II. COPYRIGHT OBJECTIONS TO SPECIFIC INSTRUCTIONS

A. Disputed Jury Instruction No. 1 re Preliminary Instruction Copyright

The parties agree that the Court should give the jury a preliminary instruction on copyright. The parties also agree that this preliminary instruction should be based on Model Instruction 17.0 Preliminary Instruction -- Copyright. The parties' disputes on this instruction are below.

1. Introductory Paragraph

The competing proposals for the introductory paragraph are not far apart. Both track the Model Instruction. The parties dispute how the copyrighted work should be identified and Google's insertion of language on its equitable defenses.

Oracle generally identifies the work as the "Java software platform." Google identifies the work as "Java 2 Standard Edition versions 1.4 and 5.0 (`Asserted Works')." This is too narrow, as Oracle identified more than these two works as being infringed through discovery.

Oracle submits that its identification will better assist the jury in understanding what is at issue in this case. Google's shorthand of "Asserted Works" to mean "Java 2 Standard Edition versions" is unhelpful in this regard. It does not adequately frame the copyright dispute. Indeed, the historical, documentary evidence from both sides refer to the copyrighted work as "Java."

Accordingly, the jury instructions should be tailored to the evidence the jury will hear.

Oracle objects to Google's language flagging all of its equitable defenses, "that its use of the work was justified given Oracle's past statements and actions." As discussed above and below, equitable defenses are for the Court to decide. See supra Equitable Defenses Are For The Court To Decide and infra discussion on disputed instructions for Equitable Estoppel, Laches, Waiver, and Implied License.

2. Google Improperly Omits "Display" As Exclusive Rights of Copyright

Under the "Definition of Copyright" section, Oracle objects to Google's deletion of "display" as an exclusive right held by the copyright owner. See 17 U.S.C. § 106(5) (stating public display of literary work is an exclusive right in copyrighted works). Moreover, "display" is in the Model Instruction, which Oracle's proposed instruction closely tracks. NINTH CIRCUIT MANUAL OF MODEL JURY INSTRUCTIONS CIVIL No. 17.0 (2007) ("The owner of a copyright has the right to exclude any other person from reproducing, preparing derivative works, distributing, performing, displaying, or using the work covered by copyright for a specific period of time.") (emphasis added). Oracle submits that Google's omission is material and that the jury would be best advised as to "display," which is at issue in this case. Google displays infringing copied material on a website it controls.

3. Oracle's Additions To the "Definition of Copyright" Are Proper,
Whereas Google's Additions Are Not

Oracle's two material additions to the "Definition of Copyright" section are proper. First, Oracle adds "computer code, or elements of computer software" to the second sentence of the model language. This will help the jury. It is tailored to the issues in this case, as well as an accurate statement of the law. See Merch. Transaction Sys., Inc. v. Nelcela, Inc., No. CV 02- 1954-PHX-MHM, 2009 U.S. Dist. LEXIS 25663, at *29 (D. Ariz. Mar. 17, 2009) ("[Copyright] protection extends not only to the `literal' elements of computer software -- the source code and object code -- but also to a program's nonliteral elements, including its structure, sequence, organization, user interface, screen displays and menu structures.").

Second, Oracle adds to the last paragraph of the "Definition of Copyright" section:

The level of originality required to grant copyright protection is minimal, however. In copyright law, the "original element" of a work need not be new or novel. Copyright law will protect an original element of a work as long as it does not utterly lack creativity.

Because originality for copyright protection is a hotly contested issue, this short explanation on originality will assist the jury as it sifts through the evidence the parties will present. Moreover, Oracle's proposed explanation tracks Model Instruction 17.12 on originality and controlling precedent. NINTH CIRCUIT MANUAL OF MODEL JURY INSTRUCTIONS CIVIL No. 17.12 (2007) (stating "the `original element' of a work need not be new or novel" and second factor for originality requires "at least some minimal creativity."); Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 359 (1991) (holding that copyright protection is unavailable to "a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent").

In the third paragraph of the "Definition of Copyright" section, Oracle objects to Google's language of "names and functional requirements." This addition is not part of the Model Instruction's list of statutory factors on not copyrightable subject matter. See NINTH CIRCUIT MANUAL OF MODEL JURY INSTRUCTIONS CIVIL No. 17.0 (2007); 17 U.S.C. § 102(b). Moreover, the Court has previously stated that, even if something is not subject to copyright, it is not automatically and totally exempt from copyrightability.

Second, Google's blanket message that "functional requirements" are not copyrightable is incorrect. Google invites to jury to conclude that most or all computer programs are not protectable simply because of their utilitarian features. Google's categorical approach is legal error. See infra Disputed Jury Instruction No. 9 re Copyright Subject Matter Functional Requirements.

Third, whether names are subject to copyright is addressed in its own separate jury instruction. See infra Disputed Jury Instruction No. 13 re Copyright Subject Matter Selection, Arrangement of Names. The Court has already held that the selection and arrangement of the names in the Java API specifications may be copyrightable, and there is an instruction that describes when that is the case. See ECF No. 433 at 8, Order Partially Granting and Partially Denying Defendant's Motion for Summary Judgment on Copyright Claim (September 15, 2011).

Thus, it is misleading to have a preliminary instruction that simply says "names" are not copyrightable without including this context. In sum, Google's language of "names and functional requirements" within the third paragraph should be denied.

4. The Jury Should Be Informed of Oracle's Registered Copyrights and
the Presumption of Validity

Under the "How Copyright is Obtained" section, Oracle objects to Google's deletion of the third sentence of the Model Instruction, which begins with "After examination and a determination that the material deposited constitutes copyrightable subject matter . . . ." NINTH CIRCUIT MANUAL OF MODEL JURY INSTRUCTIONS CIVIL No. 17.0 will aid the jury in understanding the process for obtaining a copyright registration. It provides helpful background that is neither misleading nor unnecessary.

Oracle also objects to Google's language again flagging all of its equitable defenses, "Oracle is bound by Sun's actions, inaction and prior statements." As discussed above and below, equitable defenses are for the Court to decide. See supra Equitable Defenses Are For The Court To Decide and infra discussion on disputed instructions for Equitable Estoppel, Laches, Waiver, and Implied License.

Due to the model language on copyright registration, the "How Copyright is Obtained" section is the best place to introduce the jury to Oracle's federal registration of the Java-related copyrights and the presumption of validity that results from such registration. Inclusion of Oracle's additional paragraph on both points properly frames the parties' respective burdens on the disputed originality issue. Bibbero Sys., Inc. v. Colwell Sys. Inc., 893 F.2d 1104, 1106 (9th Cir. 1990) ("In judicial proceedings, a certificate of copyright registration constitutes prima facie evidence of copyrightability and shifts the burden to the defendant to demonstrate why the copyright is not valid."); Swirsky v. Carey, 376 F.3d 841, 851 (9th Cir. 2004) ("Because One has a valid certificate of registration with the copyright office, however, Swirsky is entitled to a presumption of originality."). The jury will benefit from a preliminary instruction on the presumption of validity and how it operates on Oracle's copyright claims. This is especially true where the case also involves patents and a presumption of patent validity from that intellectual

5. Google's Inclusion Of Language That Oracle Is Bound By Sun's
Actions And Conduct Is Improper.

The parties agree that the Court's instructions should provide a background on how Sun Microsystems, Inc. became Oracle America, Inc. through a merger and acquisition. The parties also agree that these two companies are the same legal entity. However, Oracle opposes Google's proposal to add language instructing the jury that Oracle is bound by Sun's actions, inactions, and prior statements to the liability instructions, as this principle is only relevant to the Court's consideration of Google's equitable defenses.

The Court should deny Google's proposed language because it is irrelevant to the issues the jury will be tasked to resolve in this case. An entity's actions, inactions, and prior statements are most applicable to an affirmative defense of equitable estoppel. See e.g., A.C. Aukerman Co. v. R. L. Chaides Constr. Co., 960 F.2d 1020, 1028 (Fed. Cir. 1992) (en banc) (considering patentee's "specific statements, action, inaction, or silence where there was an obligation to speak" in equitable estoppel inquiry). Also, an entity's inaction could be applicable to an affirmative defense of laches.See id. (considering "patentee's delay in bringing suit" in laches inquiry). As discussed, equitable estoppel and laches are equitable defenses "committed to the sound discretion of the trial judge." Id. Therefore, there is no reason the jury must consider Sun's actions, inactions, and prior statements as part of the case.

Nevertheless, if the court finds that the jury should offer advisory opinions on Google's affirmative defenses of equitable estoppel and laches, Oracle requests that the Court instruct the jury that Oracle is "bound" by Sun's statements and conduct only to the extent Google satisfies the elements of those defenses. Specifically, Oracle proposes the following language: "Oracle is bound by the prior actions, inactions, and prior statements of Sun only to the extent that Google proves by a preponderance of the evidence the defenses of laches or estoppel." Without this clarification, the jury is likely to improperly overemphasize the significance of Sun's conduct in determining the factual issues in this case. Oracle would be prejudiced if the Court allowed facts regarding Sun's conduct to influence the jury's determination on these factual issues.

Accordingly, the Court should deny Google's proposal to add language regarding how Sun's previous conducts should bind Oracle.

6. Google's Miscellaneous Modifications are Improper

On the "Plaintiff's Burden of Proof" section, Oracle objects to Google's statement that there are "11 code files" at issue. In fact, there are twelve disputed code files. See ECF No. 433 at 5, Order Partially Granting and Partially Denying Defendant's Motion for Summary Judgment on Copyright Claim (September 15, 2011).

On the "Proof of Copying" section, Oracle objects to Google's additional language on virtually identical copying. See infra discussion on Disputed Jury Instruction No. 6 re Copyright -- Definition of Copyright, Virtually Identical Copying Is Not the Standard to Analyze Google's Copying. Instead of Google's language, the Court should use Oracle's proposed instruction, which tracks the Model Instruction.

On the "Liability for Infringement" section, Oracle objects to Google's repeated insertion of "original, protectable elements." None are included in the same section of the Model Instruction. NINTH CIRCUIT MANUAL OF MODEL JURY INSTRUCTIONS CIVIL No. 17.0 (2007).

Moreover, each side's copyright instructions as a whole are adequate to explain what copyright law does and does not protect. There is no need to raise that here. This preliminary instruction is meant to be a general sketch of copyright law.

On the "Defenses to Infringement" section, Oracle objects to Google's language saying in absolute terms that "[t]here is no copyright infringement, for example, if Google copied unprotected or unoriginal elements of the copyrighted work." Oracle objects to this blanket proclamation because it is misleading. The jury may mistakenly believe that Google's copying of unprotected elements absolves it from unlawful copying of protected elements. Thus, Google's language should be modified to state there is no copyright infringement "if Google only copied unprotected or unoriginal elements of the copyrighted work." Oracle also objects to Google's statement that there is no copyright infringement "if Google made a fair use of a copyrighted work." This is legally incorrect. See Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1521 (9th Cir. 1992) ("Section 107 [on fair use], by contrast, establishes a defense to an otherwise valid claim of copyright infringement. It provides that particular instances of copying that otherwise would be actionable are lawful, and sets forth the factors to be considered in determining whether the defense applies.").

I. Disputed Instruction No. 1: Preliminary Instruction--Copyright Law

Both parties' proposed instructions are based on Ninth Circuit Model Instruction 17.0.

They differ in the following respects:

Introduction

First, Google's proposed instruction refers to copyrights that were specifically asserted in this case, i.e., copyrights allegedly covering Java 2 Standard Edition ("J2SE") versions 1.4 and 5.0. Amended Complaint (Dkt. 36), Exh. H. Oracle's proposed instruction, on the other hand, states that Oracle claims ownership of copyrights "of various components of the Java software platform." This imprecise phrase fails to inform the jury what the asserted works are and will only confuse the jury.

Second, Google follows the model instruction by briefly describing its affirmative defenses, including that it made fair use of the work, "and that its use of the work was justified given Oracle's past statements and actions." This is a summary of Google's affirmative defenses, which include waiver, estoppel, laches, and implied license. Oracle has no basis for objecting to the quoted language, which summarizes Google's equitable defenses.

Definition of Copyright

First, Oracle agrees that "[f]acts, ideas, procedures, processes, systems, methods of operation, [and] concepts" cannot themselves be copyrighted. Oracle, however, wants to omit from this list "names and functional requirements." The Court already has ruled that the names of the Java language API files, packages, classes, and methods are not protectable as a matter of law because words and short phrases are not subject to copyright. Order Partially Granting and Partially Denying Defendant's Motion for Summary Judgment on Copyright Claim (Dkt. 433) ("Copyright MSJ Order") at 7-8; 37 C.F.R. 202.1(a). Functional requirements are just as unprotected. See Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1522 (9th Cir. 1992) ("The declarations of Accolade's employees indicate, and the district court found, that Accolade copied Sega's software solely in order to discover the functional requirements for compatibility with the Genesis console--aspects of Sega's programs that are not protected by copyright.") (emphases added). The jury will see the names of many API elements, and will hear testimony about functional requirements for compatibility. The jury should know that these elements are not copyrightable.

Second, Oracle's instruction seeks to introduce more details about the standard for originality. This is inappropriate for a preliminary instruction. The parties have both proposed a later instruction that explains originality in more detail. See Disputed Instruction No. 12

Third, Google's proposed instruction omits the following language from the model instruction because, on the facts of this case, it is inaccurate and misleading: "After examination and a determination that the material deposited constitutes copyrightable subject matter and that legal and formal requirements are satisfied, the Register of Copyrights registers the work and issues [a certificate of registration]." The issue is not whether the registered work as a whole-- J2SE 1.4 or 5.0--is copyrightable. The issue is whether the allegedly copied elements of the work are copyrightable. And the Court has already rejected Oracle's argument that the registration crates a presumption of copyrightability as to those elements. Copyright MSJ Order at 8 ("The decision Oracle cites for this proposition shows only that a certificate of registration may entitle its holder to a presumption of copyright validity as to the registered work. Swirsky v. Carey, 376 F.3d 841, 851 (9th Cir. 2004) (citing 17 U.S.C. 410(c)). Oracle cites no authority requiring a presumption of originality as to specific elements of a registered work."); see also 4 Melville B. Nimmer and David Nimmer, NIMMER ON COPYRIGHT § 13.01 (plaintiff has burden to prove copying of "constituent elements of the work that are original") (emphasis added). Instructing the jury that the Register of Copyrights determined that the registered works are copyrightable subject matter is irrelevant and can only confuse jurors, who may assume this determination applies to the individual elements of the registered works.

Fourth, Oracle wants the Court to instruct the jury that the copyright registrations at issue were obtained by Sun Microsystems, Inc., which changed its name to Oracle America, Inc. when Oracle Corporation purchased Sun "but it is still the same legal entity." Oracle wants to stand in Sun's shoes for purposes of asserting the copyrights but rejects Google's proposed language that "Oracle is bound by Sun's actions, inaction and prior statements." Oracle's position is one-sided, and should be rejected for that reason. For the reasons discussed in more detail with respect to Disputed Instruction No. 4, infra Part III, the jury should be informed that Oracle is bound by Sun's actions, inactions and prior statements. It cannot be assumed that the jury will understand this otherwise.

Fifth, Oracle wants the Court to pre-instruct the jury that Oracle is entitled to a presumption of copyright validity. Because the validity of the copyright for the registered works is not at issue, this is irrelevant. And, as discussed above, because no presumption applies to the elements of the works that are at issue, Oracle's instruction is misleading and would confuse the jury.

Plaintiff's Burden of Proof

First, Oracle's instruction asserts that it "accuses Google of copying 12 software code files." This is wrong. Oracle alleges that code from 11 code files appear in 12 Android files.

The discrepancy between the number of files copied and the number of allegedly infringing Android files arises because Oracle claims that code from its Arrays.java appears in two Android files, TimSort.java and ComparableTimSort.java. Thus, it is inaccurate to say that Google has allegedly copied "12" code files. Google's instruction, which states that Oracle accuses Google of copying "from 11 software code files" is accurate, and the addition of the word "from" eliminates any possible confusion whether the statement refers to the number of Oracle files (as it does) or the number of Google files. Finally, using the phrase "copying from 11 software code files" is preferable to using the phrase "copying to 12 software code files," because copyright infringement is judged by comparing the protectable material that was copied to the copyrighted work as a whole. Thus, the relevant question is what was taken, not where it was taken to.

Second, Google's instruction states that to prove copying, Oracle must prove that Google copied "original, protectable" elements of the copyrighted work. The Court has already so held. Copyright MSJ Order at 8; see also Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 636 (9th Cir. 2008) ("In order to succeed in a copyright infringement claim, `a plaintiff must show that he or she owns the copyright and that defendant copied protected elements of the work.'"); Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1446 (9th Cir. 1994) ("the party claiming infringement may place `no reliance upon any similarity in expression resulting from' unprotectable elements."). A failure to limit the infringement claim to protectable elements risks granting Oracle a broad monopoly over aspects of its software that should be governed by the other legal principles, such as patent law. See Incredible Techs. v. Virtual Techs., 400 F.3d 1007, 1012 (7th Cir. 2005). Google's addition of "protectable" therefore is appropriate in the context of this case.

Proof of Copying

Google's instruction makes clear that to find infringement, the relevant standard may be "virtual identity" rather than "substantial similarity." This is taken from controlling authority. Apple Computer, 35 F.3d at 1439 ("When the range of protectable and unauthorized expression is narrow, the appropriate standard for illicit copying is virtual identity."). Whether the allegedly copied elements are protectable is a key issue in this case, and the Court has already held that at least the names of the elements are not protectable. Copyright MSJ Order at 8, 11. A discussion of the virtual identity standard is not only appropriate, but necessary.

Liability for Infringement

Again, as above, Google requests that the Court instruct that liability requires proof of copying of "original, protectable" elements.

Defenses to Infringement

Google's statement of its defenses to infringement conforms to defenses that it will present. Oracle's statement, in contrast, refers to "independent creation," for which Google is not even seeking a jury instruction.