The parties shall appear for a further settlement conference. The participants shall include at least Ms. Katz and Mr. Rubin. Without delay, outside counsel shall propose to the undersigned's courtroom deputy available dates so that the conference will take place no later than April 9, 2012. March 30 is not available. Counsel are warned to demonstrate maximum flexibility in tendering dates. IT IS SO ORDERED.

Dated: 3/23/2012

_________________________________
PAUL S. GREWAL
United States Magistrate Judge

Ah. But he doesn't know with whom he is dealing.

Anyway, the trial is set for April 16. Unless the heavens part and love descends from above, settling on Oracle's Safra Catz and Google's Andy Rubin. If any of you can help cover the trial, in the event it goes forward as scheduled, please let us know. There's also on the docket some more wrangling about copyright issues, and the judge has some new trial guidelines, but I haven't read them yet myself. So let's read it all together.

03/21/2012 - 822 - NOTICE RE GUIDELINES FOR JURY TRIAL. Signed by Judge William Alsup on 3/21/2012. (whasec, COURT STAFF) (Filed on 3/21/2012) (Entered: 03/21/2012)

03/23/2012 - 823 - TRIAL BRIEF Reply Re Copyright Liability by Google Inc.. (Van Nest, Robert) (Filed on 3/23/2012) (Entered: 03/23/2012)

03/23/2012 - 824 - Brief re 793 Order, 708 Order, 754 Order Oracle's March 23, 2012 Brief Regarding Copyright Issues filed byOracle America, Inc.. (Related document(s) 793 , 708 , 754 ) (Jacobs, Michael) (Filed on 3/23/2012) (Entered: 03/23/2012)

03/23/2012 - 825 - ORDER RE SCHEDULING FURTHER SETTLEMENT CONFERENCE. Signed by Judge Paul S. Grewal on March 23, 2012. (psglc1, COURT STAFF) (Filed on 3/23/2012)

API Specifications vs. API Developer Documentation

A common question we get is: Why aren't the Java^TM 2 platform API specifications written as more complete developer documentation? Why don't they include full working code examples, definitions of common programming terms, conceptual overviews, metaphors, illustrations, descriptions of implementation bugs and workarounds? We have chosen to put this information in the books listed below, and restrict the specifications to "assertions" necessary for conforming implementations.

Update 2: Here's Google's brief, as text, followed by Oracle's:

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - #84065
[email]
CHRISTA M. ANDERSON - #184325
[email]
MICHAEL S. KWUN - #198945
[email]
[address]
[phone]
[fax]

KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[email]
CHERYL A. SABNIS - #224323
[email]
[address]
[phone]
[fax]

KING & SPALDING LLP
SCOTT T. WEINGAERTNER
(Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
[address]
[phone]
[fax]

IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #172148
[email]
GREENBERG TRAURIG, LLP
[address]
[phone]
[fax]

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.

Case No. 3: 10-CV-03561-WHA

GOOGLE'S REPLY COPYRIGHT
LIABILITY TRIAL BRIEF

Judge: Hon. William Alsup

---

TABLE OF CONTENTS
Page
I.	Languages and APIs provide the tools for expression, but their vocabularies are not copyrightable expression		1
	A.	The Java API specifications are analogous to a dictionary, not to an outline of a multi — volume history	1
	B.	The APIs are free for anyone to use, just as the Java programming language is free for anyone to use	4
II.	Oracle, not Google, has the burden of persuasion on the issue of copyrightability		5
	A.	Oracle's registrations do not entitle it to a presumption that the selection, arrangement and structure of its APIs are copyrightable	6
	B.	Oracle has the burden of persuasion at all times; any presumption of validity places only a burden of production on Google, not a burden of persuasion	7
	C.	Functionality, scenes a faire, and merger are all part of the copyrightability inquiry, and thus issues for which Oracle bears the burden of persuasion	8
III.	Originality and copying are, at least in part, not disputed issues		9
	A.	The API packages as a whole meet the "extremely low" threshold for originality, but they are not copyrightable for reasons of originality	9
	B.	The parties agree that Android implements 37 API packages from J2SE, but disagree whether that constitutes actionable copying	9
IV.	To prove indirect infringement, Oracle must prove that a third party infringed		10

i

---

TABLE OF AUTHORITIES
Page(s)
Federal Cases
Allen v. Academic Games League of America, Inc. 89 F.3d 614 (9th Cir. 1996)	9
Apple Computer, Inc. v. Microsoft Corp. 35 F.3d 1435 (9th Cir. 1994)	10
Baker v. Selden 101 U.S. 99 (1879)	3
Entertainment Research v. Genesis Creative Group 122 F.3d 1211 (9th Cir. 1997)	7, 8
Feist Pubs., Inc. v. Rural Tele. Serv. Co. 499 U.S. 340 (1991)	9
Jada Toys, Inc. v. Mattel, Inc. 518 F.3d 628 (9th Cir. 2008)	10
Lanard Toys Ltd v. Novelty, Inc. 375 Fed. Appx. 705 (9th Cir. 2010)	5, 7, 8
Sega Enters. Ltd v. Accolade, Inc. 977 F.2d 1510 (9th Cir. 1992)	8, 9
Federal Statutes
17 U.S.C. § 102(b)	2,3,5,8
17 U.S.C. § 410(c)	6
Federal Rules
Fed. R. Evid. 301	7, 8
Federal Regulations
37 C.F.R. § 202.1(a)	2
Miscellaneous
Guy Steele, Growing a Language (Oct. 1998)	1, 2, 5

ii

---

I. Languages and APIs provide the tools for expression, but their vocabularies are not
copyrightable expression.

A. The Java API specifications are analogous to a dictionary, not to an outline
of a multi-volume history.

Oracle seeks to analogize its API implementations (i.e., its Java API libraries) to "a multi-volume history, such as the Durants' eleven-volume The Story of Civilization" and its specifications to "the author's [sic] meticulously detailed outline of those works." Oracle Br. [Dkt. 780] at 2. This analogy is inapposite. Oracle's Java API libraries (which implement the Java API specifications) do not tell a story, and do not have any narrative structure at all. The libraries are a collection of source code snippets, each of which performs a discrete task. There is no beginning, middle or end to a narrative in the Java API libraries.

As Guy Steele, an early member of the Java team and now an Oracle Software Architect, has explained, "[a] library is a vocabulary designed to be added to a programming language to make the vocabulary of the programming language larger." Guy Steele, Growing a Language (Oct. 1998) at 7 ("Steele").¹ Thus, the API specifications are analogous to a dictionary, not a history. The specifications provide an alphabetical list of the methods, fields and interfaces in the API packages — the "vocabulary" to which Steele refers — just as a dictionary has an alphabetical list of words. The specifications also include explanations for the methods, fields and interfaces, just as a dictionary has a definition for each word. And just as copyright law does not prevent Webster from publishing a dictionary that defines the same words, in the same alphabetical order, that Oxford does, copyright law does not prevent Google from implementing the same APIs, in the same alphabetical order, that Sun did. Oxford's copyright in the Concise Oxford English Dictionary covers its definitions, not its "selection" of words, or the "arrangement" or "structure" of its dictionary.

Nor it is it true that the API specifications are an "outline" for the implementations. The implementations (i.e., the libraries) represent merely another version of the dictionary — this one, for the computer rather than for the developer. The libraries repeat the "declarations" from the specifications, but also include source code that implements the APIs. The declarations are,

1

---

from the computer's perspective, the list of words in the dictionary. The implementing code, in A 2 turn, provides the "definitions" of those words — the code tells the computer what the API elements are or do. The implementations are the dictionary that the computer uses for the "vocabulary," Steele at 7, that the libraries add to the Java programming language.

It is no better to argue, as Oracle might, that the structure and interrelationships among the API elements distinguish the APIs from a dictionary's list of words. In human languages, words fall within a grammatical structure (e.g., "cat" is a noun), and have interrelationships (e.g., "learning" is the gerund form of the verb "to learn"). Those functional characteristics are parts of the ideas represented by the words. Not only are words and short phrases not subject to copyright,² the ideas embodied in them are uncopyrightable. 17 U.S.C. § 102(b) ("In no case does copyright protection for an original work of authorship extend to any idea .... ").

The APIs embodied in the specifications and implementations are an uncopyrightable system, id., not creative expression. The purpose of the words defined in a dictionary is not to express, but to provide a set of tools that an author can use for expression. Similarly, the purpose of the APIs is not to express, but to provide a set of tools — a system — for Java language developers. The stories told by authors using the words defined in dictionaries may be expressive; the list of words in a dictionary is not. The programs Java language developers write may be expressive; the building blocks provided by the APIs are not. The code implementing the APIs and the explanations³ of the APIs in the specifications may be expressive⁴ (subject to governing copyright limiting doctrines); the APIs themselves (including the selection, arrangement and structure of their elements) are functional and not copyrightable.

Oracle's claim that copyright protects the system described by its API specifications is

2

---

foreclosed by Baker v. Selden, 101 U.S. 99 (1879), the seminal case on what has come to be called the idea-expression dichotomy, now codified at 17 U.S.C. § 102(b). Selden created a system for double-entry bookkeeping, which he described in a series of books. 101 U.S. at 100. Selden's particular system was new, consisting of his own "peculiar arrangement of columns and headings." Id. Baker wrote a book that described essentially the same system, such that if Selden's system were protected by copyright, "it would be difficult to contend that the defendant does not infringe it .... " Id. But, even though Selden had described his particular method in great detail, including illustrations of the ruled lines and headings he created, the Supreme Court denied copyright protection to the system he described:

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.

Id. at 103. The same principle applies here. Sun created a new computer programming language, with a diverse set of APIs. It described the APIs in the API specifications. Copyright does not protect the system documented by the specifications, and it is that system that Google is alleged to have infringed. See id.; 17 U.S.C. § 102(b). As the Supreme Court held:

Charles Selden, by his books, explained and described a peculiar system of book-keeping, and illustrated his method by means of ruled lines and blank columns, with proper headings on a page, or on successive pages. Now, whilst no one has a right to print or publish his book, or any material part thereof, as a book intended to convey instruction in the art, any person may practise and use the art itself which he has described and illustrated therein. The use of the art is a totally different thing from a publication of the book explaining it. 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 book. Whether the art might or might not have been patented, is a question which is not before us. It was not patented, and is open and free to the use of the public. And, of course, in using the art, the ruled lines and headings of accounts must necessarily be used as incident to it.

Baker, 101 U.S. at 104. Sun described the Java language APIs through its specifications. While copyright may protect the descriptions in the specifications, "any person may practise and use the art itself," see id. — any person may implement the APIs. Oracle did not assert a patent covering its APIs, and the APIs are "open and free to the use of the public." See id. And, of course, in using the APIs, the selection, arrangement and structure of the APIs "must necessarily be used as incident to it." See id.

3

---

B. The APIs are free for anyone to use, just as the Java programming language
is free for anyone to use.

The Court has asked for an explanation of "the mechanism by which the Java programming language is free and open for anyone to use but the APIs are not," and has asked, "If the Android platform does not infringe Oracle's copyrights by using the Java programming language, how has Google infringed Oracle's copyrights by using by using the Java APIs?" Request [Dkt. 793] at 1. The answers are that the APIs are also free for anyone to use, and Google has not infringed Oracle's copyrights by implementing the Java APIs.

Oracle has repeatedly conceded that anyone can use the Java programming language.⁵ In light of Oracle's concessions, the Court has twice stated that the language is free and open for all to use, including Google. See Order Striking First Cockburn Report [Dkt. 230] at 2 ("it is undisputed that the Java programming language is in the public domain and anyone was free to use it without charge, as Android does"); Copyright MSJ Order [Dkt. 433] at 3 ("The Java programming language has been made freely available for use by anyone without charge. Both sides agree on this."). At the Copyright MSJ hearing, Oracle confirmed to the Court that it stood by its prior concessions:

THE COURT: I think you've said in the past that anyone can use the Java progressing [sic] language.

MR. JACOBS: We have, because we make no claim that that is a violation of our copyright rights.

THE COURT: That is a — are you trying to reclaim something here?

MR. JACOBS: No.

THE COURT: I'm going to be disturbed if that's true. I heard you say in the past Java programming language is in the public domain and anyone can use it. Now, if you are saying "oh, we're just not making that," that reminds me of an earlier case. So be clear on this. Are you taking back what you said earlier?

MR. JACOBS: I'm not taking back what I said earlier in any way, Your Honor.

THE COURT: All right.

4

---

9/15/11 Tr. at 12-13 (emphasis added).

The Court has also asked whether the "statements that made the Java programming language available for all to use expressly reserve the Java APIs?" Request [Dkt. 793] at 1. The answer is no. Indeed, to the contrary, Oracle has disclaimed any reliance on distinguishing between the Java programming language and the APIs. 9/15/11 Tr. at 13 ("I think what I'm suggesting is that what the analytical move I don't think we have to make is to somehow in some deep technical way distinguish between a programming language and an application programming interface for purposes of argument [sic] we're making.").⁶

The APIs at issue are part of the Java programming language. See Steele at 7. Moreover, regardless of whether Oracle is allowed to argue that APIs are not part of the language that it concedes everyone is free to use, if the Court accepts Oracle's argument that the APIs are "expressive," that type of assertion would allow one to claim copyright over any newly created language, including even human languages, or newly coined words in a language — an improper result.⁷ Designing a new system for expression necessarily requires numerous design choices (for example, whether to make a programming language object oriented). Languages can have complex grammars, with detailed interrelationships between different elements. Some languages have more or fewer words for expressing similar concepts. This cannot and does not change the underlying fact that languages (and the APIs at issue) are not themselves expressive — they are uncopyrightable systems that allow expression. See 17 U.S.C. § 102(b).

II. Oracle, not Google, has the burden of persuasion on the issue of copyrightability.

Oracle relies on a single footnote in Lanard Toys Ltd. v. Novelty, Inc., 375 Fed. Appx. 705, 711 n.4⁸ (9th Cir. 2010), an unpublished and non-precedential case, for the proposition that Google has the burden of proving that the API elements are not copyrightable. Oracle is wrong:

5

---

the presumption of copyrightability does not apply to the APIs and their elements. And even if it did apply, it would shift only a burden of production, not of persuasion.

A. Oracle's registrations do not entitle it to a presumption that the selection,
arrangement and structure of its APIs are copyrightable.

A "certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c). This means, for example, that Oracle's timely registration of J2SE 5.0 is prima facie evidence that (a) the copyright for J2SE 5.0 is valid, and (b) the facts stated in the registration certificate are valid.

As the Court has previously explained, a presumption regarding a registered work is not a presumption regarding "specific elements of a registered work." Copyright MSJ Order [Dkt. 433] at 8. Whether Oracle has a valid copyright for the J2SE platform, however, is irrelevant, and thus so too is a presumption applicable to the registered work. The facts stated in the registration do not support the presumption Oracle seeks either, because they do not refer to the APIs at all, let alone the selection, arrangement and structure of the API elements. For example, the titles listed in the J2SE 5.0 certificate of registration — "Java 2 Standard Edition, Version 5.0," with the alternative titles "J2SE 5 0, Java 2 Platform, Standard Edition, Version 5.0," see Am. Compl. [Dkt. 36], Ex. H — do not suggest a copyright on the APIs or their elements. The only other potentially relevant facts in the certificate state that the registered work is a derivative work of prior versions of the platform, and that the material added by this work "and in which copyright is claimed" are "[n]ew and revised computer code and accompanying documentation and manuals." See id. While that registration language might give notice that Sun sought to copyright its implementations ("computer code") and its documentation ("documentation and manuals"), no reference is made to the APIs themselves, or to the selection, arrangement and structure of the API elements.⁹

6

---

Finally, the basic premise that Oracle relies upon to explain why it is entitled to a presumption of copyright validity is that the Copyright Office has examined the material deposited and concluded that it constitutes copyrightable subject matter. Oracle Br. [Dkt. 780] at 5 (citing Lanard Toys, 375 Fed. Appx. at 711¹⁰). First, as already noted, this at best applies to the entire registered work, and not specifically to the selection, arrangement and structure of the APIs. Second, the Sun source code deposits were only excerpts. For example, the source code deposit for J2SE 5.0 included only 50 pages of source code, see Trial Ex. 607, a mere fraction of the over 11,000 pages Oracle claims the specifications fill in printed form, see Oracle Br. at 2.

B. Oracle has the burden of persuasion at all times; any presumption of validity
places only a burden of production on Google, not a burden of persuasion.

Even if the certificate of registration raises a presumption of validity, this at most shifts to Google a burden of production not of persuasion. Fed. R. Evid. 301 ("In a civil case, unless a federal statute or these rules provide otherwise, the party against whom a presumption is directed has the burden of producing evidence to rebut the presumption. But this rule does not shift the burden of persuasion, which remains on the party who had it originally."). In a published and precedential decision, the Ninth Circuit has explained that to rebut the presumption of copyrightability based on timely registration, "an infringement defendant must simply offer some evidence or proof to dispute or deny the plaintiff's prima facie case of infringement." Entertainment Research v. Genesis Creative Group, 122 F.3d 1211, 1218 (9th Cir. 1997) (citation omitted). If the defendant's evidence raises a "serious question" whether the material in question is copyrightable, then the defendant has "rebutted the statutory presumption," and this "shift[s] the burden of proving validity — the threshold issue for copyright infringement lawsuits — back to" the plaintiff. Id.

Thus, when the Lanard Toys court stated that the defendant had the burden of "proof," this at most could have been a reference to a burden of production, not of persuasion. The

7

---

defendant in Lanard Toys, however, "did not present any expert testimony or other relevant evidence to prove that any functional elements of these toys were not subject to copyright protection," 375 Fed. Appx. at 711, and thus failed to satisfy even a burden of production.¹¹

Testimony from Google's witnesses, and indeed Oracle's own expert, will show that the APIs and their elements are not copyrightable. Google will therefore discharge any burden of production that it might have, even assuming any presumption of copyrightability applies here. Oracle, however, will retain the burden of persuasion. Entertainment Research, 122 F.3d at 1218; Fed. R. Evid. 301.

C. Functionality, scenes a faire, and merger are all part of the copyrightability
inquiry, and thus issues for which Oracle bears the burden of persuasion.

Whether the elements of the APIs are functional requirements for compatibility is part of the section 102(b) inquiry, and thus should be addressed in deciding copyrightability. When the Ninth Circuit held that "functional requirements for compatibility" are not protected by copyright, it cited section 102(b). Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1522 (9th Cir. 1992) (citing 17 U.S.C. § 102(b)). In Sega, the court held that intermediate copying of implementing code was a fair use when done for the purpose of determining functional requirements for compatibility. That is, the fair use analysis in Sega applied to the implementing code, not to the functional requirements for compatibility. "Copying" functional requirements for compatibility is allowed by virtue of section 102(b), without any need to address fair use.

Scenes a faire and merger similarly are doctrines that should be considered in deciding the issue of copyrightability. Google agrees that it has the burden of coming forward with evidence about the applicability of these doctrines, but Google's burden is again one of production. The ultimate question that the Court must answer is whether the allegedly copied elements of the APIs are protected, and on that issue Oracle retains the burden of persuasion. As Google demonstrated in its opening brief, placing the burden of persuasion on Oracle is consistent with Ninth Circuit cases that have found for the defendant based on a lack of evidence, while relying on the doctrines of scenes a faire or merger. See Sega, 977 F.2d at 1524

8

---

n.7; Allen v. Academic Games League of America, Inc., 89 F.3d 614, 618 (9th Cir. 1996).

III. Originality and copying are, at least in part, not disputed issues.

A. The API packages as a whole meet the "extremely low" threshold for
originality, but they are not copyrightable for reasons of originality.

Google witnesses will offer substantial evidence that the Java APIs were not created out of whole cloth. Instead, the APIs build on previous programming languages and long-accepted conventions. The packages as a whole, however, are not completely lacking in originality. Thus, while reserving the right to present evidence that many aspects of the APIs are unoriginal, Google does not dispute that the APIs as a whole meet the "extremely low" threshold for originality required by the Constitution. Feist Pubs., Inc. v. Rural Tele. Serv. Co., 499 U.S. 340, 345 (1991). The jury therefore need not be asked to address whether the APIs are original.

Originality, however, is of limited significance. First, originality is beside the point where, as here, the material at issue is not copyrightable. Second, even if the elements of the APIs are "original" in the sense required by the Constitution, any copyright to the selection, arrangement and structure of the API elements is, at most, "thin." Among other things, this is relevant to the second fair use factor, which "reflects the fact that not all copyrighted works are entitled to the same level of protection." Sega, 977 F.2d at 1524. Because any copyright protection for the APIs is, at most, thin, the second factor favors a finding of fair use. See id.

B. The parties agree that Android implements 37 API packages from J2SE, but
disagree whether that constitutes actionable copying.

There is no dispute that Android incorporates substantially the same selection, arrangement and structure of API elements as J2SE does for the 37 API packages at issue — as does Apache Harmony, the open source project that served as the starting point for much of the code in the Android libraries at issue. There further is no dispute that, aside from portions of 12 out of over 50,000 Android files, none of which are still part of Android, the Android code implementing the APIs is not copied.¹²

The parties disagree, however, whether the Android APIs use protected elements of

9

---

J2SE. See Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 636 (9th Cir. 2008). "[T]he party claiming infringement may place no reliance upon any similarity in expression resulting from unprotectable elements." Apple Computer, Inc. v. Microsoft Corp., 35 F .3d 1435, 1446 (9th Cir. 1994) (quotation marks and citation omitted). For the reasons given above and in Google's opening brief, Oracle will not be able to prove that any protected elements of J2SE were copied.¹³

IV. To prove indirect infringement, Oracle must prove that a third party infringed.

Oracle correctly notes that to prove contributory infringement it must prove, as one element of its claim, that Google knew or had reason to know of "the infringing activity of others." Oracle Br. [Dkt 780] at 9. To prove vicarious infringement, Oracle must prove, among other things, that Google profited directly from "the infringing activity of others." Id. at 10. For both of Oracle's indirect infringement theories, then, Oracle must prove that third parties infringed. Oracle cannot rest on evidence that Google infringed; that is relevant only to Oracle's direct infringement case. Oracle also cannot rest on evidence that Google allegedly provided the means for infringement, or directed that its partners act in a manner that allegedly infringes. Unless Oracle proves that third parties actually did infringe, any alleged inducement or material contribution by Google is irrelevant.

Moreover, to prove vicarious infringement, Oracle must prove that Google profited directly from the infringing activity of others. Oracle cannot rely on indirect profits, such as revenue Google receives from third party advertisements shown on Android handsets manufactured by other third parties.

Dated: March 23, 2012

KEKER & VAN NEST LLP

By: /s/ Robert A. Van Nest
ROBERT A. VAN NEST

Attorneys for Defendant
GOOGLE INC.

10

---

1	Available at http://labs.oracle.com/features/tenyears/volcd/papers/14Steele.pdf.
2	Copyright MSJ Order [Dkt. 433] at 7; see also 37 C.F.R. § 202.1(a) ("[w]ords and short phrases such as names, titles, and slogans" are "not subject to copyright").
3	Oracle claims that the explanations in Google's specifications infringe. First, Google believes it will be entitled to judgment as a matter of law on this point. Second, Oracle has no damages theory tied to this alleged form of infringement.
4	When Oracle cites the "more than 11,000 pages" of "expression" in Oracle's API specifications, see Oracle Br. [Dkt. 780] at 2, the majority of this is its explanations. The fact that a dictionary, including its definitions, is thousands of pages long does not make the list of words defined copyrightable.
5	2/9/11 Tr. at 8 ("the Java programming language, we're not asserting that we own that programming language for purposes of this case"); 7/21/11 Tr. at 50 ("THE COURT: But you admit that the Java programming language is open to anybody. MR. JACOBS: Yes."); 9/15/11 Tr. at 12 ("we are making no claim for the protect[a]b[i]lity under copyright of the Java programming language, in and of itself").
6	Oracle may point out that it placed copyright notices on its specifications. The specifications, however, are not the APIs themselves, and thus the copyright notices on the specification did not "expressly reserve" copyright to the Java APIs. See Copyright MSJ Order [Dkt. 433] at 10 (distinguishing between APIs and API specifications).
7	A newly coined word is uncopyrightable under the words and short phrases doctrine. See 37 C.F.R. § 202.1(a).
8	Oracle's brief cites page 711, but the material it quotes appears in footnote 4 on that page.
9	Oracle notes that it also obtained other copyright registrations, including for an "early version" of the API specifications. See Oracle Br. [Dkt. 780] at 1 n.1. First, none of these registrations were pled in Oracle's Amended Complaint. See Am. Compl. [Dkt. 36], Ex. H. Second, even the narrowest of these registrations is for API specifications, which include explanations of the APIs in addition to the APIs themselves. See Copyright MSJ Order [Dkt. 433] at 11 ("API specifications are written documentation.") None of the registrations are limited to the APIs or the selection, arrangement and structure of their elements, and none of the registrations state that Sun was seeking to copyright the APIs or the selection, arrangement and structure of their elements. Thus, none of those registrations can give rise to a presumption regarding the APIs or their elements.
10	As noted above, the correct citation is to footnote 4. See 375 Fed. Appx. at 711 n.4.
11	All of the cases Oracle cites are consistent with this view — that is, that the statutory presumption shifts a burden of production to the defendant, but not a burden of persuasion.
12	Google does dispute that the descriptions in its specifications are virtually identical or substantially similar to the descriptions in Oracle's specifications. And as to the portions of the 12 Android files, Google contends any similarities are de minimis and thus non-actionable.
13	To the extent that the Court concludes that any of the material at issue is protected by copyright, Google further contends that its use is a fair use, and that its equitable defenses bar Oracle s claims, as Google explained in its opening brief.

ORACLE’S MARCH 23, 2012 BRIEF
REGARDING COPYRIGHT ISSUES

INTRODUCTION

Google finally admits what everyone has known all along: “the Android specifications for the 37 API packages at issue have substantially the same selection, arrangement and structure of API elements as the J2SE specifications.” (ECF No. 778 (“Google Br.”) at 3 (emphasis added).) This was no accident. Google intentionally copied Oracle’s copyrighted Java API specifications.

Google tries to excuse its copying by claiming that no API can be copyrighted, regardless of its level of creative expression. But no court has ever so held, nor that a structure as rich, complex, and creative as the 37 Java API packages at issue in this case is ineligible for copyright protection. Much of Google’s submission re-hashes its summary judgment briefing, repeating arguments the Court has already rejected, at the expense of the questions it was asked to brief.

Google also tries to justify its copying on “compatibility” grounds. But Google did not have to copy the Java APIs to be compatible with the Java programming language. And Android is not compatible with Java. Google took only what it wanted from the Java specifications and left out the rest. As a result, many Java-compliant programs will not run on Android, and programs written for Android will not run on the Java platform. Compatibility is a misnomer.

Notwithstanding the above, the parties agree on many of the procedural issues the Court identified. Oracle identifies and discusses the points of agreement and disagreement below.

I. COPYRIGHTS IN SUIT

The parties appear to agree on the asserted Oracle Java works from which Google copied: (a) 37 Java API design specifications and implementations and (b) 11 Java software code files. (Google Br. at 1.) However, Oracle’s allegations are not limited only to versions 1.4 and 5.0 of the Java 2 Standard Edition, as Google implies. (See id.) The registrations at issue were identified in response to interrogatories and are listed in Oracle’s opening brief. They are also incorporated and listed in the registration for J2SE 5.0. (See ECF No. 780 (“Oracle Br.”) at 1, 4.)

A. Google Copied The 37 Java API specifications

Google concedes that “[t]here is no dispute that the Android specifications for the 37 API packages at issue have substantially the same selection, arrangement and structure of API elements as the J2SE specifications.” (Google Br. at 3.) It follows that Android’s selection,

1

arrangement and structure of the names of the elements is similar as well. As a result, Google would be liable for infringement even if it could prove these individual API elements and names are unprotectable, “if those elements are numerous enough, and their selection and arrangement original enough that their combination constitutes an original work of authorship.” (See ECF No. 5 433 at 8 (quoting Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1147 (9th Cir. 2003).) Google cannot possibly prove that the selection and arrangement of the thousands of elements in the specifications was the result of something other than original creative effort.

B. Google copied source code, object code and comments from 11 Java code
files into Android

Google does not dispute that it copied from the 11 Oracle source code files. Google argues that the infringement claim is moot because it removed the copied code after it was caught.

Not so. Oracle’s counsel confirmed after Google filed its brief that Google still makes copied code available for download from its website. But even if Google had in fact deleted the code, Oracle’s claim for injunctive relief would still not be moot. Oracle does not have to take Google’s word that it will not start using the code it copied again once this suit is over. See Walling v. Helmerich & Payne, Inc., 323 U.S. 37, 43 (1944) (“Voluntary discontinuance of an alleged illegal activity does not operate to remove a case from the ambit of judicial power.”).

Google’s damages argument is also incorrect. The Court ruled only that “the jury will be instructed that if Google is found not liable for infringing the selection, arrangement, and structure of the API packages, then Dr. Cockburn’s copyright damages analysis is inapplicable.” (ECF No. 685 at 2.) The Court did not hold Oracle was not entitled to any damages. And Oracle may elect statutory damages “at any time before final judgment is rendered,” 17 U.S.C. § 504(c)(1), although the Supreme Court suggests the election may not be made after a jury awards actual damages. See Feltner v. Columbia Pictures Television, 523 U.S. 340, 347 n.5 (1998). Costs and attorneys’ fees can also be awarded to the prevailing party. 17 U.S.C. § 505.

Google’s code copying is also relevant because it proves Google’s access to Oracle’s copyrighted materials, puts the lie to Google’s “clean room” claim and proves Google’s copying was knowing and willful. Google cannot hide its line-for-line copying from the jury.

2

II. ORACLE’S COPYRIGHT LIABILITY CLAIMS

A. Direct Infringement

1. Google Must Demonstrate the Works Are Not Copyrightable

The parties disagree over who has the burden on copyrightability. Google’s brief does not challenge ownership or registration. Oracle’s copyright registration entitles it to a presumption of validity, shifting the burden to Google to demonstrate that the works are not copyrightable. (See Oracle Br. at 4-6 (citing cases).) See also Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1019 (9th Cir. 1985) overruled on other grounds in Bellevue Manor Assoc. v. United States, 165 F.3d 1259, 1256 (9th Cir. 1999) (“This presumption shifts the burden of proof to the challenging party to demonstrate why the item in question is not copyrightable.”). Google, citing Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 636-37, n.6 (9th Cir. 2008)—where copyrightability was “tangentially” disputed and the presumption was not addressed—ignores the presumption.

Google is required to overcome the presumption of copyrightability as to each element it is challenging. In Swirsky v. Carey, the court held the defendant bore the burden of overcoming the presumption of originality as to the first measure of the chorus of a copyrighted song. 376 F.3d 841, 851 (9th Cir. 2004) (“Carey can overcome this presumption only by demonstrating that Swirsky’s chorus is not original.”). Swirsky was recently followed in Straughter v. Raymond:

As an initial matter, defendants misapprehend the burden of proof based on their faulty argument that plaintiff is not entitled to a presumption of copyright validity. See, e.g., Songwriters’ Supp. Mem. at 6 (“Plaintiff does not enjoy a presumption of copyright validity or originality, and therefore, must demonstrate that the 18 elements at issue are original to him.”). As discussed above, it is defendants’ burden to rebut the statutory presumption of validity.

2011 U.S. Dist. LEXIS 93068, at *22-24 (C.D. Cal. Aug. 19, 2011) (applying Swirsky to find defendants failed to carry burden). (See also Oracle Br. at 5-6 (citing cases).)

2. Google Cannot Demonstrate That The Java APIs Do Not
Contain Copyrightable Expression

Google’s challenge to the copyrightability of the Java APIs relies on the same cases and arguments it made in its failed summary judgment motion and other briefing. Google does not challenge the copyrightability of the source code it copied.

Google’s argument that the APIs are unprotectable “methods of operation” again relies on

3

the First Circuit’s decision in Lotus v. Borland. But Lotus is not the law in the Ninth Circuit: “Whether the non-literal components of a program, including the structure, sequence and organization and user interface, are protected depends on whether, on the particular facts of each case, the component in question qualifies as the expression of an idea, or an idea itself.” Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir. 1989).

Further, Lotus is inapposite. The consumer menu command hierarchy at issue in Lotus was far simpler than that of the Java APIs, which are comprised of thousands of elements, layers of complex interdepencies, and data structures. Google’s expert and employees concede the creativity and skill required to design them. (See Oracle Br. at 9, 12-13.)

In the 17 years since Lotus was decided, no other circuit court has adopted its reasoning, and several have rejected it. The Tenth Circuit, for example, has expressly disagreed with Lotus:

We conclude that although an element of a work may be characterized as a method of operation, that element may nevertheless contain expression that is eligible for copyright protection. Section 102(b) does not extinguish the protection accorded a particular expression of an idea merely because that expression is embodied in a method of operation at a higher level of abstraction.

Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1372 (10th Cir. 1997). (See also ECF No. 339 at 9-11.)

Additionally, Google continues to distort Sega. The Ninth Circuit held:

We conclude that where disassembly is the only way to gain access to the ideas and functional elements embodied in a copyrighted computer program and where there is a legitimate reason for seeking such access, disassembly is a fair use of the copyrighted work, as a matter of law. Our conclusion does not, of course, insulate Accolade from a claim of copyright infringement with respect to its finished products.

Sega Enters Ltd. v. Accolade, Inc., 977 F.2d 1510, 1527-28 (9th Cir. 1993).

This case could hardly be more different. Unlike Sega, Oracle accuses Google’s finished product of infringement. Unlike Sega, Google had no need to copy to gain access to any ideas and functional elements expressed in the Java APIs because they were published on Sun’s website, subject to copyright. And, whereas the Sega defendant copied a four letter code (S-E-G-A) consisting of only 20 to 25 bytes of data mandatory for its program to function with the Sega console, id. at 1515-16, Google copied API elements spanning 11,000 printed pages, and even its own expert concedes it would have been “technically possible” for Google to write its own APIs

4

for the 37 packages at issue. (Astrachan Dep. 251:21-252:2; 253:2-4.)

Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832 (Fed. Cir. 1992) is much more on point. The Federal Circuit applied Ninth Circuit law to find the key to Nintendo’s console was entitled to copyright protection because it contained a “unique sequence” of code, and “[e]xternal factors did not dictate the design.” Id. at 840. Atari could reverse engineer the code to learn its unprotected features, but could not replicate it without infringing the copyrights. Id. at 844.

Indeed, Google’s entire compatibility argument is a fallacy. Its copying was not required for compatibility. Android is not compatible with Java. Google copied the specifications to tap into the developer community Sun had created through years of work and investment. Google took only those parts of the Java APIs it wanted and left out the rest, creating its own APIs in some instances and modifying others. The result is incompatibility and fragmentation.

3. The Court Can Refer Threshold Issues Of Fact To The Jury

Both parties agree it is unlikely the Court will need to refer threshold issues of fact to the jury. The parties dispute only whether the Court can do so. (See Google Br. at 3-4, n.3.) Cases in this Circuit have recognized that fact issues relating to copyrightability—in particular to originality—may be submitted to the jury. See Kikker 5150 v. Kikker 5150 USA, LLC, 2004 U.S. Dist. LEXIS 16859, at *27 (N.D. Cal. Aug. 13, 2004) (“Here the Court cannot say, as a matter of law—although a jury may well say, as a matter of fact—that the originality required by the copyright rules is lacking.”). One case has held disputed fact issues relating to originality must be submitted to the jury. See N. Coast Indus. v. Jason Maxwell, Inc., 972 F.2d 1031, 1034 (9th Cir.1992) (district court erred by not allowing issue of whether fashion design was sufficiently similar to preexisting work to lack originality to go to jury). See also Comment to Ninth Circuit Model Civil Trial Jury Instruction 17.2 (“Generally, whether a subject matter is copyrightable is a question of law to be determined by the court.”) (emphasis added). Here, the Court could refer a fact issue to the jury through properly structured jury instructions or verdict forms.

4. Copying

Google intentionally modeled the selection, arrangement and structure of the elements in the 37 Android APIs at issue on their Java counterparts, and does not dispute copying the

5

source code files. (See, e.g., Google Br. at 3.) There is accordingly no need for the Court to determine whether the standard of substantial similarity or virtual identity applies, as Google contends. (See id. at 10.) “‘Substantial similarity’ is not an element of [] copyright infringement.” Range Road Music, Inc. v. East Coast Foods, Inc., 2012 U.S. App. LEXIS 3173, 5 at *10 (9th Cir. Feb. 16, 2012). It is irrelevant where, as here, there is direct evidence of copying:

A showing of “substantial similarity” is irrelevant in a case like this one, in which the Music Companies produced evidence that the public performances entailed direct copying of copyrighted works. See id. (noting that a demonstration of substantial similarity is only necessary to prove infringement “[a]bsent evidence of direct copying”).

Id. (quoting Funky Films, Inc. v. Time Warner Entm’t Co., 462 F.3d 1072, 1076 (9th Cir. 2006).)

Further, Google is wrong that Oracle would need to show “virtual identity.” The Court previously rejected Google’s attempt to apply a “virtual identity” standard on summary judgment. (See ECF No. 433 at 11.) This case is nothing like Ets-Hokin v. Skyy Spirits Inc., where there was a narrow range of protectable expression because there are “not very many” ways of shooting an advertising photograph of a blue vodka bottle. 323 F.3d 763, 764, 766 (9th Cir. 2003). The range of creative expression reflected in the APIs is exponentially more complex, with many different possible structures and design choices extending across thousands of elements.

5. Originality

Google’s brief does not challenge originality, nor could it prevail on such a challenge.

B. Indirect Infringement

Google’s brief also does not address indirect infringement.

III. GOOGLE’S AFFIRMATIVE DEFENSES

A. Merger and scenes a faire

The parties disagree on burden. In the Ninth Circuit, merger and scenes a faire are treated as defenses to infringement, and Google has the burden of proof. (See Oracle Br. at 10.) See also Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003) (“The Ninth Circuit treats scenes a faire as a defense to infringement rather than as a barrier to copyrightability.”) (citing Ets-Hokin).

Google cites no authority to the contrary. Instead it contends certain cases “implicitly” placed the burden on the plaintiff. (See Google Br. at 9-10.) Google is incorrect. Google infers

6

the Ninth Circuit placed the burden on plaintiff in Sega because it “held there was no infringement by relying on the absence of evidence showing alternatives to the defendant’s copying.” (Id. at 9.) This is not true. Sega discusses the evidence in detail and concludes: “In summary, the record clearly establishes that disassembly of the object code in Sega's video game cartridges was necessary in order to understand the functional requirements for Genesis compatibility.” Sega, 977 F.2d at 1525-26. Defendant simply satisfied its burden of proof.

Google also argues that under merger and scenes a faire, the APIs as a whole are uncopyrightable. The Court rejected this sweeping approach in its order denying summary judgment. (ECF No. 433 at 9.) Google must make a showing as to individual elements. (See id.)

To prove merger, Google must show “the idea underlying the copyrighted work can be expressed in only one way, lest there be a monopoly on the underlying idea.” (Id. (quoting Satava, 323 F.3d at 812 n.5).) Google cannot possibly meet this burden as to the APIs as a whole, or entire categories or packages. Oracle is not claiming “a monopoly” on the idea of an API or an API package. It had innumerable design choices for the complex array of packages at issue and is claiming copyright protection for the particular choices it made as to the selection, arrangement, and structure of elements in them. This case is nothing like Allen v. Academic Games League of Am., Inc., where the court found the rules of a game were not copyrightable because, “[t]o hold otherwise would give Allen a monopoly on such commonplace ideas as a simple rule on how youngsters should play their games.” 89 F.3d 614, 618 (9th Cir. 1996).

Similarly, for scenes a faire, Google must prove individual elements are “commonplace expressions [that] are indispensable and naturally associated with the treatment of a given idea.” (ECF No. 433 at 8 (quoting Swirsky, 376 F.3d at 850).) Google does not even try to show this. It cannot. The APIs express an elaborate set of interdepencies and relationships within and across different packages, that are neither commonplace nor preordained. (Oracle Br. at 2.)

Google turns scenes a faire on its head, arguing that because the Java APIs are widely used by developers, and developers wish to have them available, they have become unprotectable scenes a faire. (See Google Br. at 7-8.) Google miscites Computer Associates. Google’s citation refers to external constraints faced by the plaintiff in developing its copyrighted work. See

7

Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 710 (2d Cir. 1992) (court must “examine the structural content of an allegedly infringed program for elements that might have been dictated by external factors.”) (emphasis added). Google’s argument was rejected by the Tenth Circuit in Mitel. See Mitel, 124 F.3d at 1375 (“The court’s analytical focus should have remained upon the external factors that dictated Mitel's selection of registers, descriptions, and values.”).

Google continues to rely on Baystate Techs. v. Bentley Sys., 946 F. Supp. 1079 (D. Mass. 7 1996), a case from the First Circuit that is bound by Lotus. Baystate is contrary to Ninth Circuit law on merger and scenes a faire, and is factually distinguishable. (See ECF No. 339 at 17.)

B. Fair Use

The parties agree Google will need to make its fair use case to the jury. (See Google Br. at 11.) Although Google does not mention it, Google bears the burden of proof on fair use. See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1158 (9th Cir. 2007).

C. De Minimis Copying

The parties agree the Court instructs the jury on what “work” to consider as the reference for determining whether Google’s copying was de minimis, but disagree over who has the burden of proof. (See Google Br. at 14.) It is Google. See Merch. Transaction Sys., Inc. v. Nelcela, Inc., 2009 U.S. Dist. LEXIS 25663, at *61 (D. Ariz. Mar. 17, 2009) (“Thus, Nelcela will not escape liability unless it can show that the protectable elements in the Lexcel software constitute an insignificant (quantitatively and qualitatively) portion or aspect of the Lexcel software.”). Google relies only on cases from outside the Ninth Circuit.

D. Equitable Defenses

The parties agree the equitable defenses are for the Court to decide. (See Google Br. at 14.) Google’s brief does not address the burden, but it is on Google. (See Oracle Br. at 14.)

The equitable defenses are baseless and there is insufficient evidence to justify bringing them to the jury even for an advisory verdict. For example, while reasonable reliance is an element of equitable estoppel, laches, and implied license, Google deliberately chose to develop Android knowing it did not possess the required license, deciding to “Do Java anyway and defend our decision, perhaps making enemies along the way.” (ECF No 398-6.)

8

Google argues that Apache Harmony and GNU Classpath “include implementations of all 37 of the API package specifications at issue, and have done so openly for years” and thus it was perfectly acceptable to copy the Harmony APIs. (Google Br. at 8.) But Google was well aware that Sun’s field-of-use restrictions prohibited it from using Harmony’s API specifications in mobile devices. Google knew of Sun and Apache’s highly publicized dispute over this exact issue. Indeed, Google signed a public letter urging Sun to lift the restriction. But Sun never did. Google’s documents show that it knew using Harmony code did not give Android any kind of license from Sun or Oracle. Similarly, GNU Classpath is irrelevant because the GPL open source license has express restrictions that limit commercial use, which Google never followed.

Google’s equitable defenses are lawyer-crafted hindsight ― a patchwork of statements on which Google did not rely, and could not reasonably have relied, such as blog entries or internal statements it learned about later. Google’s documents reflect over and over that it knew the API specifications at issue were copyrighted and it could not simply take them. And during the period Google claims it believed it was free to go forward, the parties continued to negotiate a license. Even as late as August 2010, Mr. Lindholm told Google’s top executives it still needed a license, just as he and others had said five years before. Google’s equitable defenses are a sham.

The evidence relating to the equitable issues significantly overlap with willfulness. Proof of willful infringement can negate Google’s equitable defenses. Haworth, Inc. v. Herman Miller, Inc., 1993 WL 761974, at *3-4 (W.D. Mich. July 20, 1993); see also Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc., 1994 WL 471414, at *2 (C.D. Cal. Mar. 3, 1994), aff’d on other grounds, 103 F.3d 1571 (Fed. Cir. 1997) (willfulness bears on equitable estoppel defense). The jury should not be asked to render any advisory verdict on these defenses, and the Court should defer its ruling on the defenses until after the third phase of trial.

IV. JAVA PROGRAMMING LANGUAGE VERSUS ORACLE’S JAVA API
IMPLEMENTATIONS AND DOCUMENTATION

The Court has asked the parties to “explain the mechanism by which the Java programming language is free and open for anyone to use but the APIs are not,” and “If the Android platform does not infringe Oracle’s copyrights by using the Java programming language,

8

how has Google infringed Oracle’s copyrights by using Java APIs?” (ECF No. 793.) The short answer is that Oracle owns the copyrights to its Java API specifications and source code; those rights are distinct from any rights Oracle has in the Java language, which are not asserted in this case. (Oracle’s statements to the Court on this issue can be found at ECF No. 87 at 8:5-9:8, ECF 5 No. 110 at 17:1-22:18, and ECF No. 445 at 12:9-17:9.)

The Java language and the Java API specifications are two different things. Only a very small number of elements in the Java APIs are required for the Java programming language. Oracle’s Java API specifications and source code implementations are original works of authorship, written partly in Java and partly in English. These works contain the expression of the Java API designers’ ideas. Google copied expression from Oracle’s works into its own API specifications and source code. The English language may be free for anyone to use, but a book or poem written in English is copyrightable, and when others copy from it without permission, they infringe. Works written in the Java programming language are copyrightable as well.

Finally, the Court asks: “Did Sun statements that made the Java programming language available for all to use expressly reserve as to the Java APIs?” The answer is “yes.” Sun expressly and publicly asserted its copyrights and reserved its rights as to the Java APIs. There has never been any uncertainty on this point. The API documentation reserves all rights, and the API specification license only permits use on specified terms. See, e.g., JavaTM 2 Platform Standard Edition 5.0 API Specification, http://docs.oracle.com/ javase/1.5.0/docs/api/index.html (“Copyright © 2004, 2010 Oracle and/or its affiliates. All rights reserved. Use is subject to license terms.”); http://docs.oracle.com/javase/1.5.0/ docs/relnotes/license.html (specification license terms). The API specification license requires complete compatibility, no derivation from Oracle source code or binary materials, and passing Oracle’s compatibility test suites. Android fails on all counts.

Dated: March 23, 2012

MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs

Attorneys for Plaintiff
ORACLE AMERICA, INC.

10