It is worth reviewing what Judge Alsup asked the parties to address in these briefs. Here are the original questions Judge Alsup asked the parties to address at the March 28 hearing:

• Illustrate the interdependencies and relationships between and among the 37 APIs in suit and other packages. [Both]
• How many APIs does Java contain beyond the 37 asserted APIs? [Both, although principally Oracle]
• How many APIs does Android contain beyond the 37 asserted APIs? [Both, although principally Google]
• Can the "structure, arrangement, and selection" of APIs be protected by patent law? [Both]
• If the "structure, arrangement, and selection" of APIs was not copyrightable under Section 102(b) [of the Copyright Act], what is left for the jury to decide at trial regarding the API claims (specifications and implementation)? [Both]
• Are the 37 APIs necessary (theoretically or practically) for using the Java programming language? [Both]
• Are the 11 copied code files part of the 37 accused APIs? [Both]
• Is Oracle asserting that Google copied the source code implementing the APIs? [Oracle]
• Is Oracle claiming that Google's source code implementation of the Android APIs is a derivative work of the Java API specifications? [Oracle]
• What is Oracle's answer to Google's point in reply that the copyright registrations do not create a presumption as to the copyrightability of the APIs? [Oracle]
• Are there any aspects of the APIs that Oracle concedes are unprotectable by copyright? [Oracle]
• Does Google admit to copying the structure, arrangement, and selection of the Java APIs? [Google]
• Are the 11 copied source code files now removed from Android? [Google]

(1) Under the law, does “selection, arrangement, and structure” arise as an issue only in the context of originality and more specifically, as a way to allow protectability for otherwise noncopyrightable elements in a compilation?

(2) Is “selection, arrangement, and structure” also an exception to the rule that a system or method cannot be copyrighted? That is, if something is a system or method can it still be copyrighted so long as the system or method is the result of selection, arrangement and structure?

(3) If a method or system is copyrightable if the result of selection, arrangement, and structure, won’t that be true for all original methods and systems which by definition involve a structure, arrangement, and selection steps?

(4) For the merger doctrine, at what level of abstraction should we consider the idea/system? At a high level of abstraction (for instance, the concept of APIs generally), there are many ways to express “selection, arrangement, and structure” in creating a particular API. But for the idea/system of the 37 Java APIs, there may be only one way to express the “selection, arrangement, and structure.”

(5) Is it true that the APIs are an integral part of Java? That is, programmers write their own programs using the APIs? If the answer depends on the particular API, please specific which of the 37 asserted are integral.

(6) To what extent are computer languages (not programs, but languages) copyrightable? Patentable?

(7) From Google’s presentation at the hearing, it seems as though Sun/Oracle attempted to claim the structure/hierarchy/arrangement of APIs in the ’855 patent and ’093 patent. Would it be possible to claim the selection of classes for APIs under patent law?

(8) By claiming that Google infringes the API implementation, is Oracle alleging that Google copied something other than the “selection, arrangement, and structure” of APIs, as fixed in the specifications?

In the submissions due on Tuesday please include your analysis of the CONTU report, which the Judge has now read with interest. Please also quote from any relevant passages in the committee reports following up on the CONTU report, that is, to what extent did Congress intend to adopt the report?

In addition, please include a critique of Professor Pamela Samuelson’s article in 85 Texas Law Review 1921 (2007). If there are one or two other treatises or articles you recommend, please cite them and give a sentence as to their importance.

Let's take, for example, how the respective parties answered these three questions:

(1) Under the law, does “selection, arrangement, and structure” arise as an issue only in the context of originality and more specifically, as a way to allow protectability for otherwise noncopyrightable elements in a compilation?

(2) Is “selection, arrangement, and structure” also an exception to the rule that a system or method cannot be copyrighted? That is, if something is a system or method can it still be copyrighted so long as the system or method is the result of selection, arrangement and structure?

(3) If a method or system is copyrightable if the result of selection, arrangement, and structure, won’t that be true for all original methods and systems which by definition involve a structure, arrangement, and selection steps?

Oracle's response is that the APIs aren't compilations, so the question is moot. Well, thank you, Oracle, for clarifying that point, but that wasn't the question, either. But, wait a second, Oracle takes another pass at the real questions, and it states that, while "selection, arrangement and structure" may be necessary for the protection of a compilation, these concepts are not limited to compilations. Oracle further agrees with Google that the concepts of "selection, arrangement and structure" do not trump the exclusion of copyright protection with respect to systems or methods of operation.

What Oracle does not appear to address is the question of whether the APIs are systems or methods of operation. Oracle does contend that the API specifications are not methods of operations, and Oracle maintains the Court has agreed on that point, but Oracle does not address the actual source/object code implementation of the specifications, the actual APIs in use. Although not necessarily germane to the Court's question, Oracle does repeat its contention that an implementation of a specification is a derivative work, an argument I still don't buy.

Another point worth noting is the Oracle hangs much of its position on Johnson Controls, Inc. v. Phoenix Control Sys., Inc stating that "Johnson Controls remains the law of this Circuit." However, as Google points out, in Johnson Controls the court was only reviewing the trial court's decision for clear error and the decision never addressed on what basis the trial court made its determination that the structure, sequence and organization was expression rather than idea. Moreover, Johnson Controls predates and is superseded by Feist. Judge Alsup is going to have his hands full sorting all of this out.

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Docket

04/03/2012 - 852 - TRIAL BRIEF Google's 4/3/12 Copyright Liability Trial Brief by Google Inc.. (Van Nest, Robert) (Filed on 4/3/2012) (Entered: 04/03/2012)

04/03/2012 - 853 - Brief re 835 Pretrial Conference - Interim, 837 Order, 838 Order, 843 Order Oracle's April 3, 2012 Supplemental Brief Regarding Copyright Issues filed byOracle America, Inc.. (Related document(s) 835 , 837 , 838 , 843 ) (Jacobs, Michael) (Filed on 4/3/2012) (Entered: 04/03/2012)

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Documents

852

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

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

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

IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #172148
[email]
GREENBERG TRAURIG, LLP
[address telephone 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-03651 WHA

GOOGLE’S 4/3/12 COPYRIGHT
LIABILITY TRIAL BRIEF

Dept.: Courtroom 8, 19th Floor
Judge: Hon. William Alsup

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TABLE OF CONTENTS

					Page
I.	INTRODUCTION				1
II.	ARGUMENT				1
	A.			There is no compilation exception to the prohibition against copyrighting ideas, systems and methods of operation	1
	B.			The CONTU Report does not directly address the applicability of Section 102(b), but leaves that determination to development through court decisions	3
	C.			The accused aspects of the API specifications are an uncopyrightable system or method of operation	4
	D.			The merger doctrine is not limited to high levels of abstraction, and bars copyright protection for any arguable expression in the selection, arrangement and structure of the APIs	8
	E.			The Java language APIs at issue are deeply intertwined with and integral to the Java programming language.	11
		1.		More than half of the accused API packages are described by Sun as “fundamental” to the Java programming language.	11
		2.		The other 18 accused API packages relate to features that are standard in modern applications.	12
		3.		The 37 Java language API packages are all integral to the Java programming language.	13
	F.			Computer languages are neither copyrightable nor patentable	14
		1.		Computer languages are not copyrightable	14
		2.		Computer languages are not patentable	16
	G.			Subject to the requirements of the Patent Act, it may be possible to try to claim the selection of classes for APIs under patent law	18
	H.			Aside from its “selection, arrangement and structure” argument, Oracle’s only argument that Google’s implementation of the APIs infringes is based on nine lines of mundane code from Arrays.java.	19
III.				CONCLUSION	20

i

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TABLE OF AUTHORITIES

	Pages(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)	3
ATC Distribution Group, Inc. v. Whatever It Takes Transmissions & Parts, Inc. 402 F.3d 700 (6th Cir. 2005)	2
Baker v. Selden 101 U.S. 99 (1879)	18, 19
Bilski v. Kappos 130 S. Ct. 3218 (2010)	16
Engineering Dynamics, Inc. v. Structural Software, Inc. (“EDI I”) 26 F.3d 1335 (5th Cir. 1994)	9
Engineering Dynamics, Inc. v. Structural Software, Inc. (“EDI II”) 46 F.3d 408 (5th Cir. 1995)	9, 10
Feist Publications, Inc. v. Rural Telephone Service Co., Inc. 499 U.S. 340 (1991)	2, 7
Gates Rubber Co. v. Bando Chem. Indus., Ltd. 9 F.3d 823 (10th Cir. 1993)	2
In re Alappat 33 F.3d 1526 (Fed. Cir. 1994) (en banc)	17
In re Comiskey 554 F.3d 967 (Fed. Cir. 2009)	17
In re Ferguson 558 F.3d 1359 (Fed. Cir. 2009)	17
Johnson Controls, Inc. v. Phoenix Control Sys., Inc. 886 F.2d 1173 (9th Cir. 1989)	7
Lotus Dev. Corp. v. Borland Int’l, Inc. 49 F.3d 807 (1st Cir. 1995)	8
Matthew Bender & Co., Inc. v. West Pub. Co. 158 F.3d 674 (2d Cir. 1998)	2
Nichols v. Universal Pictures Corp. 45 F.2d 119 (2d Cir. 1930)	2

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Sega Enters. Ltd. v. Accolade, Inc. 977 F.2d 1510 (9th Cir. 1992)	10
Other Cases
Advocate General’s Opinion, SAS Institute Inc. v. World Programming Ltd. Case C-406/10 (Nov. 29, 2011)	16
SAS Institute, Inc. v. World Programming Ltd. [2010] EWHC (Ch) 1829 (Eng.)	14, 15
Federal Statutes
17 U.S.C. § 101	passim
17 U.S.C. § 102(a)	1
17 U.S.C. § 102(b)	passim
35 U.S.C. § 102	18
35 U.S.C. § 103	18
Other Authorities
Guy L. Steele, Growing a Language (Sun Microsystems, Oct. 1998)	13
JONATHAN BAND & MASANOBU KATOH, INTERFACES ON TRIAL 2.0 (MIT Press 2011)	3
Pamela Samuelson, Why Copyright Law Excludes Systems and Processes from the Scope of Protection, 85 TEX. L.R. 1921 (2007)	3, 5, 7
Richard H. Stern, Copyright in Computer Programming Languages, 17 RUTGERS COMPUTER &TECH L.J. 321 (1991)	16
Sebastian Zimmeck, Patent Eligibility of Programming Languages and Tools, 13 TUL. J. TECH. & INTELL. PROP. 133 (2010)	17

iii

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I. INTRODUCTION

Based on the copyright liability trial briefs filed by the parties to date, and in light of the answers given below to the questions posed by the Court in its March 29, 2012 Order, the selection, arrangement and structure of the 37 APIs are not copyrightable.

First, the selection, arrangement and structure of the APIs are part of a medium for expression, not the expression itself, and as such are an uncopyrightable system or method of operation. Second, the merger doctrine bars copyright protection for any arguable expression in the selection, arrangement and structure of the APIs. Third, Oracle has repeatedly conceded that it is not asserting copyright over the Java programming language itself, and yet the APIs at issue are integral to that language. Finally, allowing copyright protection for the selection, arrangement and structure of the APIs would be no different than allowing Oracle to copyright a programming language, which is barred by 17 U.S.C. § 102(b).

II. ARGUMENT

A. There is no compilation exception to the prohibition against copyrighting
ideas, systems and methods of operation.

The Court has asked three questions addressing the role of selection, arrangement and structure in copyright law. See 3/29/12 Order, Questions 1-3. Selection, arrangement and structure allows for the possibility of copyright protection for non-literal elements of a work. Such possible protection, however, is always subject to Section 102(b) of the Copyright Act. There is no compilation exception to the prohibition against copyrighting ideas, systems and methods of operation.

Copyright protects “original works of authorship.” 17 U.S.C. § 102(a).¹ However, “[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” Id. § 102(b) (emphases added). Thus, in answer to Question 2 from the Court’s March 29, 2012 Order [Dkt.

______________________________________

¹ There are other requirements as well. For example, the work must be fixed, see id., and the copyright owner’s rights are expressly limited by numerous sections of the Copyright Act, including fair use, see id. § 106 (exclusive rights are “[s]ubject to sections 107 through 122” of the Copyright Act).

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838], by the express terms of Section 102(b), there are no exceptions to the rule that systems and methods of operation are not copyrightable. Moreover, Section 102(b) excludes protection for all systems and methods of operation, without regard for whether they are original, creative, elegant, life-changing or difficult to develop.²

The Court and the parties have referenced the “selection, arrangement and structure” of the elements of the APIs. Other courts have used the alternative formulation “structure, sequence and organization.” See, e.g., Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 836 (10th Cir. 1993). The Copyright Act uses similar language to define a “compilation.” Specifically, the Act defines a “compilation” as:

a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.

17 U.S.C. § 101 (emphasis added). Thus, as the Court suggests, even where the elements of a work are noncopyrightable, it is possible that the selection, coordination and arrangement of those elements can be copyrighted. See 3/29/12 Order, Question 1. That said, not every selection, coordination and arrangement of elements can be copyrighted—it is copyrightable only if “the resulting work as a whole constitutes an original work of authorship.” 17 U.S.C. § 101.³

________________________________________

² See Nichols v. Universal Pictures Corp., 45 F.2d 119, 122 (2d Cir. 1930) (Learned Hand, J.) (“Even so, granting that the plaintiff’s play was wholly original, and assuming that novelty is not essential to a copyright, there is no monopoly in such a background. Though the plaintiff discovered the vein, she could not keep it to herself; so defined, the theme was too generalized an abstraction from what she wrote. It was only a part of her ‘ideas.’”); ATC Distribution Group, Inc. v. Whatever It Takes Transmissions & Parts, Inc., 402 F.3d 700, 707 (6th Cir. 2005) (“Original and creative ideas, however, are not copyrightable, because 17 U.S.C. § 102(b) provides that ‘in no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of [its] form.’”).

³ Moreover, to constitute an “original work of authorship” a compilation of otherwise unprotectable elements (such as the API names and elements at issue here) must exhibit creativity in the selection, coordination and arrangement of its elements. See Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991) (rejecting “sweat of the brow” doctrine). As explained by the Second Circuit, “when it comes to the selection or arrangement of information, creativity inheres in making non-obvious choices from among more than a few options.” Matthew Bender & Co., Inc. v. West Pub. Co., 158 F.3d 674, 682 (2d Cir. 1998). To the extent that Oracle claims copyright protection in a compilation, the relevant compilation would be the one that Oracle actually originated—the full compilation of J2SE 5.0, which includes among other things 166 APIs, not merely the accused subset of 37 APIs. Because Oracle has not registered the works as compilations, Oracle bears the burden of proving both that there is sufficient creativity in the selection, arrangement and organization of the entire compilation of J2SE 5.0 to be entitled to protection, and that the accused subset of 37 APIs reflects the creative portion or is virtually identical to the entire compilation. See Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1439 (9th Cir. 1994) (where “the range of protectable and unauthorized expression is narrow, the appropriate standard for illicit copying is virtual identity”).

2

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A compilation, like any original work of authorship, is subject to Section 102(b), because “[i]n no case does copyright protection for an original work of authorship extend to” ideas, systems or methods of operation. Id. § 102(b) (emphasis added). Thus, if a compilation is itself a system or method of operation, copyright cannot protect it. See id. Not only is this compelled by the language of the statute (“[i]n no case”), but as a matter of logic. As the Court noted, “original methods and systems” will, by definition, have a “structure, arrangement and selection,” and thus if having a structure, arrangement and selection served as an exception to the rule against copyrighting methods or systems, that would render much of Section 102(b) a dead letter. See 3/29/12 Order [Dkt. 838], Question 3. In sum, the exclusion in Section 102(b) is absolute, and applies regardless of whether the system or method of operation is an “original” compilation.

B. The CONTU Report does not directly address the applicability of Section
102(b), but leaves that determination to development through court decisions.

The Final Report of the Commission on New Technological Uses of Copyrighted Works (“CONTU Report”) recommended that Congress “make it explicit that computer programs, to the extent that they embody an author’s original creation, are proper subject matter of copyright.” CONTU Report at 1. Congress adopted this recommendation. See Pamela Samuelson, Why Copyright Law Excludes Systems and Processes from the Scope of Protection, 85 TEX. L.R. 1921, 1954 n.212 (2007) (“Samuelson”)⁴ (“Congress followed CONTU’s recommendations by adding a definition of computer programs to the statute and amending § 117”).

The CONTU Report, however, had no clear recommendation about the extent to which non-literal aspects of a computer program might be copyrightable. The Report states that “one is always free to make a machine perform any conceivable process (in the absence of a patent), but

_________________________________________

⁴ In addition to Professor Samuelson’s article, Google recommends that the Court consult JONATHAN BAND &MASANOBU KATOH, INTERFACES ON TRIAL 2.0 (MIT Press 2011), available at http://mitpress.mit.edu/books/full_pdfs/Interfaces_on_Trial_2.0.pdf (free download). This book updates a 1995 book by the same authors, and provides a comprehensive overview of domestic and foreign cases addressing interoperability. Chapters 1 and 2 are particularly relevant to the present case.

3

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one is not free to take another’s program.” CONTU Report at 20. However, “copyright protection for programs does not threaten to block the use of ideas or program language previously developed by others when that use is necessary to achieve a certain result.” Id. Statements such as these in the Report merely restate principles of law that were already well established, instead of proposing a new framework for analysis of computer programs.

Ultimately, the Report offers two uncontroversial propositions. First, photocopying a printed computer program listing is “clearly an infringement.” Id. at 22. At the other end of the spectrum, “anyone is free to make a computer carry out any unpatented process, but not to misappropriate another’s writing to do so.” Id. Beyond these two clear-cut situations, the CONTU Report left the rest to the courts to decide on a case-by-case basis:

Drawing the line between the copyrightable form of a program and the uncopyrightable process which it implements is simple in the first instance described above. But the many ways in which programs are now used and the new applications which advancing technology will supply may make drawing the line of demarcation more and more difficult. To attempt to establish such a line in this report written in 1978 would be futile. Most infringements, at least in the immediate future, are likely to involve simply copying. In the event that future technology permits programs to be stated orally for direct input to a computer through auditory sensing devices or permits future infringers to use an author’s program without copying, difficult questions will arise. Should a line need to be drawn to exclude certain manifestations of programs from copyright, that line should be drawn on a case-by-case basis by the institution designed to make fine distinctions—the federal judiciary.

Id. at 22-23 (emphasis added).

C. The accused aspects of the API specifications are an uncopyrightable system
or method of operation.

The Copyright Act defines a “computer program” as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” 17 U.S.C. § 101. The source code that implements, for example, the max() method that is part of the Math class in the java.lang package meets this definition—it is a set of instructions that is used by a computer to determine which of two numbers provided to it is larger. The source code that implements the getContent() method that is part of the URL class in the java.net package also meets this definition—it is a set of instructions that is used by a computer to retrieve the content at the website hosted at a given URL. But, leaving aside the nine-line rangeCheck() utility

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method that is part of its literal copying claims, ⁵ Oracle doesn’t claim that the source code implementing any of the API elements is copied.

Instead, Oracle relies on alleged copying at a higher level of abstraction—the selection, arrangement and structure of the 37 API subset of the 166 J2SE 5.0 APIs. In many computer programs, the non-literal structure of a program may still fit the statutory definition of a computer program. For example, a developer might create a flow chart for a video game program that describes, at a high level, the logic flow that the computer will follow when executing the video game application. Although not the literal instructions that the computer follows, the flow chart could still be thought of as a set of instructions that indirectly are used by a computer to bring about a certain result. Depending on the facts, this logic flow might be so general that it falls on the idea side of the idea/expression dichotomy. But if it falls on the expression side, it might be protected by copyright. In making that determination, courts must remember that the term “idea” in the phrase “idea/expression dichotomy” is drawn from Section 102(b), and should be understood to refer to all of the statutorily excluded classes listed in Section 102(b). See Samuelson, 85 TEX. L.R. at 1923 (“To be more consistent with § 102(b), courts would be well

________________________________________

⁵ Google has investigated the availability of the files Oracle accuses of literal copying on Google’s website.

As Google indicated at the recent pre-trial conference, the accused portions of the files have all been deleted from the current release (Ice Cream Sandwich) of Android, starting at version 4.0.

The rangeCheck() method is, however, part of versions of Android prior to Ice Cream Sandwich. Google does not believe it has represented otherwise.

Although Oracle’s counsel asserted that the “comments” in two files are still in version 4.0.1, Google believes that claim is in error. These comments have been removed from Android since version 2.3.3r1 of Android, over a dozen version releases ago.

Likewise, the other eight test files were removed from Android since version 2.3.3r1, over a dozen version releases ago. They were, however, part of version 2.2.3r2, which was a subsequent security patch to the “2.2 branch” of the Froyo release of Android. As of March 30, 2012, this has been superseded by version 2.2.3r2.1, in which the eight test files have been deleted.

As explained at the pre-trial conference, due to the way the Android source code repository and revision control system operates, it is possible to request old, out-of-date versions of Android from the Google website, and the revision control software can “recreate” these old releases, which may contain the accused portions of the files.

In any event, Google maintains that any alleged copying in these files is de minimis and thus not actionable. Moreover, aside from rangeCheck(), none of the alleged literal copying affected any code that shipped on any Android phone, because the other files at issue are test files and/or the allegedly copied material was only in comments to code, not code itself.

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advised to speak of the ‘protectable/unprotectable distinction’ in copyright law.”).

The selection, arrangement and structure of the APIs present a different situation. At any level of abstraction above the actual implementation (i.e., the source code), the APIs no longer meet the statutory definition of a computer program. This is because the APIs are a general-purpose collection of classes, interfaces, methods and fields that can be arranged in whatever order a developer chooses, to bring about whatever particular result that developer desires. Nothing in the structure, sequence and organization of the APIs dictates whether the max() method should be run before or after the getContent() method, or any other method. One developer may use the elements to create a video game, while another developer might use the elements in a different manner to create a word processor, and yet another developer might instead create a program for electronic banking.

The classes, interfaces, methods and fields in the APIs at issue are merely tools waiting to be used by a developer who is writing his or her own application. Thus, if viewed at a level of abstraction above the source code level, the APIs are not “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” 17 U.S.C. § 101 (emphasis added). In other words, divorced from implementing code, the APIs are not computer programs. Instead, the APIs are merely the medium through which Java language developers express themselves. Here, with all due respect to Marshall McLuhan, the medium is not the message. It is a system that can be used to express. And a system, by definition, is outside the realm of copyright protection. Id. § 102(b).

This view of Section 102(b) is consistent with the legislative history:

Some concern has been expressed lest copyright in computer programs should extend protection to the methodology or processes adopted by the programmer, rather than merely to the “writing” expressing his ideas. Section 102(b) is intended, among other things, to make clear that the expression adopted by the programmer is the copyrightable element in a computer program, and that the actual processes or methods embodied in the program are not within the scope of the copyright law.

See H.R. Rep. No. 94-1476, at 57 (1976), reprinted in 1976 U.S.C.C.A.N 5659, 5670 (emphasis added). Section 102(b) is intended “to restate, in the context of the new single Federal system of copyright, that the basic dichotomy between expression and idea remains unchanged.” Id. As

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Professor Samuelson has correctly noted, “‘[i]dea,’ as used in this context, should be understood as shorthand for the eight terms of exclusion set forth in § 102(b).” Samuelson, 85 TEX. L.R. at 1952.

Ninth Circuit law is not to the contrary. Whether, at a given level of abstraction, the “structure, sequence and/or organization” of a computer program “is protected by a copyright depends on whether it qualifies as an ‘expression’ of an idea, rather than the idea itself.” Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir. 1989). In Johnson Controls the plaintiff’s work was software for wastewater treatment plants, and the defendants wrote a similar program. See id. at 1174, 1176. The Ninth Circuit held that the district court had not clearly erred in finding that the defendants had copied protectable expression by copying the structure, sequence and organization of the plaintiff’s software. Id. at 1175-76. The decision offers little insight into what structure, sequence and organization were copied, noting only:

We conclude that Johnson met its burden sufficiently to support the preliminary injunction. The special master’s report sets forth, in detailed form, the various similarities between the programs. These similarities, both in idea and expression, would permit a reasonable person to find an unlawful appropriation, a capture by the infringing work of the “total concept and feel” of Johnson’s work.

Id. at 1176 (footnote and citation omitted). Because this was an appeal of a preliminary injunction, the court reviewed the district court’s decision only for clear error. See id. Similarly, in finding that the district court had not clearly erred in holding that the structure, sequence and organization was expression rather than idea, the court noted,

This issue will no doubt be revisited at trial, but at this stage of the proceedings we cannot say that the district court clearly erred.

Id. (emphasis added). Given the limited discussion of the facts and the preliminary procedural posture of the case, it is impossible to draw from Johnson Controls a general rule governing when a structure, sequence and organization of a computer program (much less the structure, sequence and organization of interfaces used by a computer program) is copyrightable.⁶ Finally, if the allegedly copied structure, sequence and organization is a system or method of operation, it is per

________________________________________

⁶ Moreover, Johnson Controls pre-dates Feist, so any application of Johnson Controls must keep in mind that the structure, sequence and organization of a computer program are copyrightable only if the structure, sequence and organization are creative. See Feist, 499 U.S. at 350.

7

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se barred from copyright protection. See 17 U.S.C. § 102(b).

On the present facts, Oracle’s claim fails. Programmers cannot use the APIs without relying on the structure, sequence and organization of the APIs. Whether this means that the APIs are a system for expression, or that they are a method of operation, see Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807, 815 (1st Cir. 1995), aff’d by an equally divided court, 516 U.S. 233 (1996), the APIs are uncopyrightable.⁷ As Oracle’s own expert has opined, “An API specification does not actually run on a computer; rather, it describes a set of rules that the code implementing the library must follow.” Mitchell Copyright Report [Dkt. 341-1] ¶ 175 (emphasis added). As he further has explained:

An API consists of a set of names that can be used to access features of the library, together with specified conventions about their use. For example, an API allowing a program to determine the time of day might include a function called time, together with the convention that a call to this function returns an integer representing the clock time in a particular format.

Id. ¶ 52 (first emphasis added). What Dr. Mitchell has described is a system or a method of operation.

The structure, sequence and organization at issue here embody concepts too inchoate to qualify as protectable expression. The many design choices Oracle relies upon to show “creativity” all embody ideas about how a programming language should be structured. The accused aspects of the APIs are uncopyrightable. 17 U.S.C. § 102(b).

D. The merger doctrine is not limited to high levels of abstraction, and bars
copyright protection for any arguable expression in the selection,
arrangement and structure of the APIs.

The Court has asked, “[f]or the merger doctrine, at what level of abstraction should we consider the idea/system?” 3/29/12 Order [Dkt. 838], Question 4. At a high level of abstraction, such as “the concept of APIs generally,” the Court suggests that there are many different ways to select, arrange and structure the APIs. Id. At the level of the idea/system of the 37 Java APIs, however, “there may be only one way to express the ‘selection, arrangement and structure.’” Id. The merger doctrine is not limited to high levels of abstraction.

_______________________________________

⁷ There also is no evidence that the particular structure, sequence and organization of the 37 API subset of J2SE 5.0’s 166 APIs is creative.

8

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For example, in Allen v. Academic Games League of America, Inc., 89 F.3d 614 (9th Cir. 1996), the plaintiff Allen owned the copyright to several games, including to the manuals that he wrote and that accompanied those games. Id. at 615-16. The defendant game league (“AGLOA”) organized tournaments for the playing of these games, and created tournament rulebooks. Id. at 616. AGLOA’s tournament rulebooks included some of the rules described in Allen’s game manuals. Id. at 617. The Ninth Circuit noted that “Allen has not shown that it is possible to distinguish the expression of the rules of his game manuals from the idea of the rules themselves.” Id. at 618. The court held that the merger doctrine barred Allen’s claim of infringement:

Thus, the doctrine of merger applies and although Allen may be entitled to copyright protection for the physical form of his games, he is not afforded protection for the premises or ideas underlying those games. To hold otherwise would give Allen a monopoly on such commonplace ideas as a simple rule on how youngsters should play their games.

Id. The Ninth Circuit did not limit the doctrine of merger to deciding whether there is only one way or a limited number of ways to play games. The Ninth Circuit did not even limit its inquiry to the number of ways to play academic games covering the subject matter of Allen’s games. Plainly, had the Ninth Circuit taken either of those approaches, the court would have concluded that AGLOA could have designed its own games, with its own rules, that addressed the same high-level concepts as Allen’s games. Instead, the Ninth Circuit held that the merger doctrine prevented Allen from asserting copyright protection over his expression of his particular rules for his particular games. See id.

In its most recent brief, Oracle cited Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335 (5th Cir. 1994) (“EDI I”), for the proposition that where input/output formats could have been structured in “numerous ways,” an original “selection, sequence and coordination of inputs” can be copyrightable. Oracle’s 3/27/12 Br. [Dkt. 833] at 2 (quoting EDI I, 26 F.3d at 1344-46). Oracle neglected, however, to discuss the subsequent order in which the Fifth Circuit limited the reach of its EDI I holding. See 46 F.3d 408 (5th Cir. 1995) (“EDI II”) (order denying petition for rehearing en banc). In this “supplement to the panel opinion to avoid any confusion as to its scope,” the court explained:

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1. The petition for rehearing and amicus petitions in support of rehearing suggest that our initial opinion held that EDI’s user formats are not only protectable but protected by copyright law because there “are numerous ways the input formats could be organized.” This is an overly simplistic view of the opinion. The panel adheres to its adoption of the abstraction-filtration-comparison test and to its application of the test on the facts before us. See e.g., Computer Assoc’s Int’l Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992). One of those facts, among many, was that EDI created input/output formats to facilitate the engineering and design of offshore structures and in this context, the formats were more than a “blank form.” The panel did not say that in any case involving user interface the fact that the “author” has selected from among possible formats is dispositive.

Id. at 409 (emphases added). To the contrary, the court held that “copyright only protects originality of user interface to the extent that the selection of variable inputs from the universe of potential inputs reflects non-functional judgments.” Id. (citing Gates Rubber Co., 9 F.3d at 838). The court further cautioned that:

2. This opinion cannot properly be read to extend to the manufacturing of computer hardware so as to deter achieving compatibility with other models or to the practice employed by users of programs of analyzing application programs to “read” the file formats of other programs.

EDI II, 46 F.3d. at 410 (emphases added) (citing, among other cases, Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1525-27 (9th Cir. 1992)).

Here, the selection, structure and arrangement of the 37 APIs reflect judgments about what APIs are most useful, what options should be made available to developers, and how best to organize the APIs. These choices were precisely the types of “functional judgments” the Fifth Circuit explained cannot be protected by copyright. See EDI II, 46 F.3d at 409. Oracle cannot seriously claim otherwise. Each of the APIs individually, and all of them collectively, were selected and coordinated to enhance the capabilities and usability of J2SE, not for any aesthetic or stylistic purpose. Moreover, these choices dictate precisely the functional requirements for compatibility that the Ninth Circuit has held cannot be copyrighted in light of Section 102(b). See Sega, 977 F.2d at 1522. Thus, even if the Court were to conclude that some aspects of the selection, arrangement and structure of the APIs are expressive, there is no way to “express” the idea of the 37 APIs without repeating that selection, arrangement and structure. The merger doctrine therefore bars copyright protection for any arguable expression in the selection, arrangement and structure of the APIs.

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E. The Java language APIs at issue are deeply intertwined with and integral to
the Java programming language.

It is undisputed that the Java programming language is not protected by copyright. See Google Reply Trial Br. [Dkt. 823] at 4-5. The Court has asked whether the APIs are an integral part of Java—whether “programmers write their own programs using the APIs.” 3/29/12 Order [Dkt. 838], Question 5. They are integral, and programmers do exactly that.

Sun’s own specification for the Java language repeatedly references the APIs. See The Java Language Specification, Third Edition, Trial Ex. 984 at 6 (“Throughout this book we refer to classes and interfaces drawn from the Java and Java 2 platforms.”). For example, when discussing variable types, the language specification notes that “useful constructors, methods, and constants are predefined in the classes Byte, Short, Integer, Long, and Character,” id. at 36, all of which are classes defined in the java.lang API package.

The language specification further notes that “some classes” from the APIs “have a special relationship with the Java programming language,” including “Object, Class, ClassLoader, String, Thread, and the classes and interfaces in package java.lang.reflect, among others.” Id. at 6. These classes are required to behave in certain ways to conform to the language specification. See id.

In short, there is no way to implement the Java programming language without implementing at least some of the accused APIs. As a purely technical matter, there is no bright line distinction between the Java programming language and the Java language APIs. Beyond this simple technical fact, however, all of the APIs at issue either are fundamental to the language, or so commonly used by developers that they should be treated as part of the language for purposes of Oracle’s copyright claims.

1. More than half of the accused API packages are described by Sun as
“fundamental” to the Java programming language.

Sun’s 1996 two-volume series describing one of the first releases of the Java language APIs call the APIs “a standard set of libraries for writing Java programs.” Trial Ex. 980 at xvii. Sun explained that it believed the APIs were “useful and [that it] hope[d] to make [them] a ubiquitous layer, available to all Internet applications.” Id. (emphasis added). These books were

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part of Sun’s “Java Series,” described by Sun as “the definitive reference documentation for Java programmers and end users.” Id. at xvi. The books do not purport to be a reference only for those who specifically want to use the APIs; they are “reference manuals for Java application and applet programmers,” without qualification. Id. at xviii. “The API[s] documented in this book will remain available to all Java programs through future releases.” Id. (emphasis added).

In this early release, there were only eight API packages. Sun described four of them (java.lang,⁸ java.io, java.util and java.net) as “general-purpose libraries fundamental to every Java program.” Id. (back cover) (emphasis added). As the libraries have grown, those four “fundamental” libraries have expanded to include subpackages, including three accused “lang” subpackages (java.lang.annotation, java.lang.ref and java.lang.reflect⁹), five accused “util” subpackages (java.util.jar, java.util.logging, java.prefs, java.util.regex and java.util.zip), and two extensions to the “net” packages (javax.net and javax.net.ssl). Five of the other accused packages are the “new input/output” (“nio”) package and subpackages (java.nio, java.nio.channels, java.nio.channels.spi, java.nio.charset, and java.nio.charset.spi), which are closely related to the “io” packages. Collectively, these packages that even Sun described as “fundamental” to the language account for 19 of the 37 accused packages.

2. The other 18 accused API packages relate to features that are
standard in modern applications.

Three additional accused packages relate to programming vocabulary that is commonplace in the Java language programming community. First, the java.awt.font package includes basic APIs for fonts (i.e., typefaces). Second, the java.beans package includes APIs necessary for developing components known as “beans,” which have been commonly used by Java language programmers. Third, the java.text package includes APIs that allow applications to be “localized” more easily—that is, adjusting things like the date and time format, or the (human) language used, based on location.

________________________________________

⁸ The java.lang package in particular is described by Oracle’s specification as “[p]rovid[ing] classes that are fundamental to the design of the Java programming language.” Trial Ex. 3425.

⁹ As already noted, the java.lang.reflect package is required to be implemented by the language specification. See Trial Ex. 984 at 6.

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Moreover, many modern applications implement features requiring security (such as secure communications), cryptography (on which the security packages depend) and databases (such as storing data generally). These features are common for smartphone applications as well. The remaining 15 accused Android API packages implement the API specifications in these areas that Java language programmers are likely to expect to be available for a smartphone platform. This includes ten security API packages and subpackages (java.security, java.security.acl, java.security.cert, java.security.interfaces, java.security.spec, javax.security.auth, javax.security.auth.callback, javax.security.auth.login, javax.security.auth.x500, and javax.security.cert), three cryptography API packages and subpackages (javax.crypto, javax.crypo.interfaces, and javax.crypto.spec), and two database API packages (java.sql and javax.sql).

3. The 37 Java language API packages are all integral to the Java
programming language.

Oracle cannot seriously dispute that Java language programmers treat the APIs as part of the language. Indeed, all 37 of the disputed APIs have long been a part of both GNU Classpath and Apache Harmony, open-source implementations offered by the Free Software Foundation and the Apache Foundation to the Java language programming community. Neither of these implementations is licensed by Oracle, and yet Oracle has taken no action to prevent others from using either of them.

Instead of disputing that Java language programmers treat the APIs as part of the language, Oracle argues that technically one could write programs in the Java language without using the APIs (or at least without using some of the APIs). This is like saying one can write a novel in English without the letter ‘e.’ See Ernest Vincent Wright, Gadsby: A Story of Over 50,000 Words Without Using the Letter “E” (Wetzel Publ. Co. 1939). It technically could be done, but that doesn’t mean the letter ‘e’ isn’t integral to the English language. Cf. Guy L. Steele, Growing a Language (Sun Microsystems, Oct. 1998) (using no multisyllabic words without first defining them). By seeking copyright protection over common, everyday vocabulary used by millions of Java language programmers, Oracle ignores the common import of its concession that

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it does not assert copyright over the Java programming language.

F. Computer languages are neither copyrightable nor patentable.

The Court has asked “[t]o what extent are computer languages (not programs, but languages) copyrightable? Patentable?” 3/29/12 Order [Dkt. 838], Question 6. Computer languages are neither copyrightable nor patentable, for the reasons given below.

1. Computer languages are not copyrightable.

As explained above, the APIs are an uncopyrightable system or method of operation. A computer programing language is equally uncopyrightable, for the same reasons. See supra, Part II.C; 17 U.S.C. § 102(b). While there is no case under the Copyright Act that is directly on point, the High Court of Justice of England and Wales recently concluded that computer programming languages are not copyrightable. SAS Institute, Inc. v. World Programming Ltd., [2010] EWHC (Ch) 1829 (Eng.).¹⁰

Although this decision applied English law rather than the Copyright Act, the underlying principles are identical. The High Court began its analysis by considering several international intellectual property treaties, including the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs”) and the World Intellectual Property Organization Copyright Treaty (“WIPO Copyright Treaty”). Id. ¶¶ 150-152.¹¹ The High Court recognized that both the TRIPs agreement and the WIPO Copyright Treaty state that copyright protection extends to expressions, but not to “ideas, procedures, methods of operation or mathematical concepts as such.” See id. ¶¶ 151-152 (quoting TRIPs, Article 9 and WIPO Copyright Treaty, Article 2). It also noted that these two treaties specify that both computer programs and compilations of data or other material can be covered by copyright. Id. (quoting TRIPs Article 10, WIPO Copyright Treaty Articles 4, 5). The High Court devoted significant attention to discussing the distinction between ideas and expression, mainly discussing EU and English law, but also citing 17 U.S.C. § 102(b). See id. ¶¶ 199-207.

________________________________________

¹⁰ Available at http://www.bailii.org/ew/cases/EWHC/Ch/2010/1829.html.

¹¹ The United States is also a signatory to both the TRIPs agreement and the WIPO Copyright Treaty.

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The plaintiff in the case, SAS, produces analytical software known as the SAS System that enables users to carry out a wide range of data processing and statistical analysis tasks. Id. ¶ 1. The core component of the SAS System is Base SAS. Base SAS allows users to run application programs written in the SAS Language. Id. The SAS language consists primarily of DATA steps and PROC steps. Id. ¶ 36. DATA steps are the primary methods for creating or manipulating data. Id. A PROC is a software tool written by SAS Institute to perform a wide variety of particular types of data analysis and reporting, such as producing statistics, tables, reports, and charts. Id. ¶ 38. For example, two PROC sets are called LOGISTIC and UNIVARIATE. Id. ¶ 39. In this sense the PROCs are similar to the APIs at issue in this case.

World Programming recognized that there might be a market for alternative platforms that could read applications written in the SAS language. Id. ¶ 3. It therefore developed the World Programming System, or WPS. With some exceptions, WPS was written so that it could execute programs written in the SAS language. Id. ¶¶ 3, 68, 73. In developing WPS, World Programming did not copy any of the SAS source code. Id. ¶¶ 3, 69. Thus just as Google followed the selection, arrangement and structure of 37 of the Java language API specifications in Android but wrote its own source code, World Programming used the PROC names and structure from SAS, but wrote its own source code. SAS brought a series of copyright claims against World Programming alleging, among other things, that World Programming violated its copyrights by implementing the SAS Language. Id. ¶ 211.

The High Court concluded that the SAS Language constitutes an idea, not expression, and thus is not subject to copyright protection. Referencing a decision in a prior case, the High Court wrote:

I think that the distinction which Pumfrey J drew between a computer program and the language it is written in is, despite his hesitancy on the point, perfectly consistent with the distinction between expressions and ideas, procedures, methods of operation and mathematical formulae.

Id. ¶ 217. Thus the High Court concluded that World Programming’s reproduction of the SAS Language did not violate SAS’s copyrights. Id. ¶ 247.

The High Court also referred the question to the European Court of Justice. Id. ¶ 227.

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While the ECJ has not yet ruled, an ECJ Advocate General recently agreed with the High Court. ¹² Advocate General Bot concluded that under EU law, a computer programming language is not protected by copyright. Advocate General’s Opinion, SAS Institute Inc. v. World Programming Ltd., Case C-406/10 (Nov. 29, 2011), ¶ 75.¹³ Also focusing on the distinction between ideas and expression, the Advocate General concluded:

It seems to me, therefore, that programming language is a functional element which allows instructions to be given to the computer. As we have seen with SAS language, programming language is made up of words and characters known to everyone and lacking any originality. In my opinion, programming language must be regarded as comparable to the language used by the author of a novel. It is therefore the means which permits expression to be given, not the expression itself.

Id. ¶ 71 (emphasis added).

The decision from the English High Court and the recommendation from the ECJ Advocate General fully support Google’s position. These opinions, while not binding precedent, analyze a set of facts and legal principles that for all intents and purposes are identical to those presented in the case at bar. See also Richard H. Stern, Copyright in Computer Programming Languages, 17 RUTGERS COMPUTER &TECH L.J. 321 (1991) (concluding that computer programming languages are not copyrightable).

2. Computer languages are not patentable.

An entire programming language also is not patentable. The Patent Act “specifies four independent categories of inventions or discoveries that are eligible for protection: processes, machines, manufactures, and compositions of matter.” Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (discussing 35 U.S.C. § 101). A programming language is none of these things.

A programming language is not a process. Although the set of steps constituting a program written in that language could arguably be a process, the language itself, from which the steps would be constructed, is not itself a process. It could at most be a tool by which to create a process.¹⁴

_______________________________________

¹² The Advocate General is similar to a special master before the Supreme Court in that he hears argument from the parties and gives a legal opinion to the ECJ.

¹³ Available at http://curia.europa.eu/juris/celex.jsf?celex=62010CC0406&lang1=en&type=NOT.

¹⁴ Moreover, for purposes of patent law, even a program written in a programming language may not be a process: “Since a computer program is merely a set of instructions capable of being executed by a computer, the computer program itself is not a process and USPTO personnel should treat a claim for a computer program, without the computer-readable medium needed to realize the computer program's functionality, as nonstatutory functional descriptive material.” Manual of Patent Examining Procedure § 2106.01.

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A programming language is not a machine. Although a program written in a programming language and installed on a general purpose computer could create a patentable machine,¹⁵ this is only applicable to a specific program that is installed on a given machine, not an entire programming language, which by itself is not designed to perform any particular functions.

Finally, a programming language is neither a manufacture nor a composition of matter. In re Ferguson, 558 F.3d 1359, 1366 (Fed. Cir. 2009) (manufacture is an “‘article’ resulting from the process of manufacture.” (quoting In re Nuijten, 500 F.3d 1346, 1356 (Fed. Cir. 2007)); In re Comiskey, 554 F.3d 967, 977 n.10 (Fed. Cir. 2009) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)) (composition of matter includes “all compositions of two or more substances and all composite articles, whether they be results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.”).

Given that a programming language fails even the threshold test for patent eligibility under Section 101, it cannot be patentable. See also Sebastian Zimmeck, Patent Eligibility of Programming Languages and Tools, 13 TUL. J. TECH. & INTELL. PROP. 133, 152 (2010) (“As grammars are the defining elements of programming languages, it follows that programming languages are not patent-eligible.”). Notably, the reason a computer programming language fails to qualify as patentable subject matter is, in essence, that it lacks the type of determinate steps that are a threshold requirement to qualify it as a process or a machine implementing a particular process. The fact that a programming language is not patentable subject matter thus further supports the conclusion that it is on the “idea” side of the idea/expression dichotomy.

_________________________________________

¹⁵ In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc) (“such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software”).

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G. Subject to the requirements of the Patent Act, it may be possible to try to
claim the selection of classes for APIs under patent law.

The Court has asked whether it would “be possible to claim the selection of classes for APIs under patent law.” 3/29/12 Order [Dkt. 838], Question 7. As the Court notes, Sun and Oracle have tried to claim the structure, hierarchy and arrangement of certain APIs in claim 1 of U.S. Patent No. 6,598,093 B1 (the “’093 patent”).

It may be possible to try to claim the selection of classes for APIs as part of a patent-eligible claim. Presuming that the claim as a whole satisfies 35 U.S.C. § 101 (and the other requirements of the Patent Act), if it relates to a system, method, or computer-readable medium that includes one or more claim elements directed to the selection of classes for APIs, those elements may be protected by patent law. Sun appears to claim a selection of classes for APIs in claims 4, 5 and 6 of the ’093 patent. In the ’093 patent, independent claim 1 relates to a class structure in a computer system, with three sets of classes arranged in three API sets. Dependent claims 4, 5, and 6 claim, then list, particular classes for inclusion in each API set, respectively.

4. A class structure as recited in claim 3 wherein the at least one abstract class includes a BaseEntry class, and the at least one concrete class includes a SystemDatabase class, a Query class, and a PropertyQuery class.

5. A class structure as recited in claim 4 wherein the second set of classes includes a SystemEntry class, the SystemEntry class being a concrete class.

6. A class structure as recited in claim 5 wherein the third set of classes includes a SystemAliasEntry class and a PersistentSystemEntry class, wherein the SystemAliasEntry class and the PersistentSystemEntry class are concrete classes.

’093 Patent at col. 12, ll. 19-30 (emphases added).

These claims are, of course, subject to challenge in the same manner as are all patent claims. And the rules applicable to patents are, in many respects, more stringent than those applicable to copyright. Compare, e.g., 35 U.S.C. §§ 102-103 with Baker v. Selden, 101 U.S. 99, 102 (1879) (“The copyright of the book, if not pirated from other works, would be valid without regard to the novelty, or want of novelty, of its subject-matter.”).

That is, however, precisely the point. Allowing copyright protection for a system such as the selection, arrangement and structure of the APIs at issue would allow “exclusive property in

18

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the art described therein, when no examination of its novelty has ever been officially made,” which “would be a surprise and a fraud upon the public.” Baker, 101 U.S. at 102. “That is the province of letters-patent, not of copyright. The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained; and it can only be secured by a patent from the government.” Id.

H. Aside from its “selection, arrangement and structure” argument, Oracle’s
only argument that Google’s implementation of the APIs infringes is based on
nine lines of mundane code from Arrays.java.

The Court asks, with respect to Google’s implementation of the APIs, whether “Oracle is alleging that Google copied something other than the ‘selection, arrangement, and structure’ of APIs, as fixed in the specification.” 3/29/12 Order [Dkt. 878], Question 8.

Aside from the nine-line rangeCheck() method in Arrays.java, the answer is “no.” At the recent pre-trial conference, the Court asked:

Except for rangeCheck, the APIs that you have, the 37 APIs in Android compared to the 37 analogs in Java have different source code. True?

3/28/12 Tr. at 38-39. This was quickly followed up with the following exchange:

THE COURT: All right. So once you get past the declarations, is your source code different than the Java source code?

MR. KWUN: Yes.

THE COURT: Is that part agreed to?

MR. JACOBS: Yes, Your Honor.

Id. at 41 (emphasis added).

Moreover, there is no dispute that the rangeCheck() method is merely nine lines out of over three thousand lines of code in Oracle’s Arrays.java file.¹⁶ Qualitatively, the method is trivial. See id. at 21 (Court’s statement that “even I know enough to know that the concept of rangeCheck is—that’s like the first grade, isn’t it?”).

______________________________________

¹⁶ The nine lines are an equally small part of the Android files in which they appear. Measured against the work as a whole, whether that work is J2SE 5.0 or the Android platform, the nine lines are almost vanishingly small.

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III. CONCLUSION

For the foregoing reasons, Google respectfully requests that the Court hold that the selection, arrangement and structure of the APIs are uncopyrightable.

Dated: April 3, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

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853

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email]
KENNETH A. KUWAYTI (Bar No. 145384)
[email
MARC DAVID PETERS (Bar No. 211725)
[email]
DANIEL P. MUINO (Bar No. 209624)
[email address telephone fax]

BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[email address telephone fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email address telephone fax]
ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email address telephone fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. CV 10-03561 WHA

ORACLE’S APRIL 3, 2012 BRIEF
REGARDING COPYRIGHT ISSUES

Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

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TABLE OF CONTENTS

					Page
I.	ORACLE’S ANSWERS TO THE COURT’S QUESTIONS				1
	A.	To what extent does Oracle contend that the 37 APIs as a group constitute a “compilation” within the meaning of Section 101, and/or contend that the individual APIs individually constitute a “compilation.” Is there any other theory of protectability beyond “compilation” for the APIs?			1
	B.	(1) Under the law, does “selection, arrangement, and structure” arise as an issue only in the context of originality and more specifically, as a way to allow protectability for otherwise noncopyrightable elements in a compilation?			2
	C.	(2) Is “selection, arrangement, and structure” also an exception to the rule that a system or method cannot be copyrighted? That is, if something is a system or method can it still be copyrighted so long as the system or method is the result of selection, arrangement and structure?			2
	D.	(3) If a method or system is copyrightable if the result of selection, arrangement, and structure, won’t that be true for all original methods and systems which by definition involve a structure, arrangement, and selection steps?			3
	E.	(4) For the merger doctrine, at what level of abstraction should we consider the idea/system? At a high level of abstraction (for instance, the concept of APIs generally), there are many ways to express “selection, arrangement, and structure” in creating a particular API			3
	F.	(5) Is it true that the APIs are an integral part of Java? That is, programmers write their own programs using the APIs? If the answer depends on the particular API, please specify which of the 37 asserted are integral			5
	G.	(6) To what extent are computer languages (not programs, but languages) copyrightable? Patentable?			6
	H.	(7) From Google’s presentation at the hearing, it seems as though Sun/Oracle attempted to claim the structure/hierarchy/arrangement of APIs in the ’855 patent and ’093 patent. Would it be possible to claim the selection of classes for APIs under patent law?			7
	I.	(8) By claiming that Google infringes the API implementation, is Oracle alleging that Google copied something other than the “selection, arrangement, and structure” of APIs, as fixed in the specifications?			8
	J.	(9) Discussion of CONTU			8
	K.	(10) Critique of Prof. Samuelson’s Article and Identification of Other Articles			8
II.	JOHNSON CONTROLS IS NINTH CIRCUIT CONTROLLING AUTHORITY				10

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TABLE OF CONTENTS
(continued)

					Page
	A.	The Copyrightability of Non-Literal Components of Computer Programs Is Governed By Johnson Controls			10
	B.	The Lotus Approach Is Incorrect And Does Not Apply Here			11
III.	GOOGLE’S “COMPATIBILITY” CLAIM DOES NOT JUSTIFY COPYING EXPRESSION				15
IV.	GOOGLE’S CLAIM THAT THE SUN-APACHE DISPUTE WAS JUST ABOUT BRANDING IS FALSE				16
V.	GOOGLE CANNOT ESTABLISH THE RELIANCE ELEMENT OF ITS EQUITABLE ESTOPPEL AND IMPLIED LICENSE DEFENSES				18
VI.	GOOGLE HAS NO LICENSE DEFENSE				19
VII.	GOOGLE'S JAVA API DOCUMENTATION IS SUBSTANTIALLY SIMILAR TO ORACLE’S CORRESPONDING DOCUMENTATION				20

ii

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TABLE OF AUTHORITIES

	Pages(s)
Cases
A.C. Aukerman Co. v. R. L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc)	18
American Dental Ass’n. v. Delta Dental Plans Ass’n., 126 F.3d 977 (7th Cir. 1997)	1
Apple Computer, Inc. v. Formula Int’l, Inc., 725 F.2d 521 (9th Cir. 1984)	12
Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994)	9
Atari, Inc. v. N. Am. Philips Consumer Elecs. Corp., 672 F.2d 607 (7th Cir. 1982)	9
Atari Games Corp. v. Nintendo of Am., Inc. 975 F.2d 832 (Fed Cir. 1992)	7, 11, 16
Autoskill Inc. v. National Educ. Support Sys., Inc., 994 F.2d 1476 (10th Cir. 1993)	9
Cable/Home Commc’n Corp. v. Network Prods., Inc., 902 F.2d 829 (11th Cir. 1990)	9
CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc., 44 F.3d 61 (2d Cir. 1994)	8
Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990)	18
eScholar, LLC v. Otis Educ. Sys., 76 U.S.P.Q. 2D (BNA) 1880 (S.D.N.Y. 2005)	14
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991)	12
Gen. Universal Sys., Inc. v. Lee, 379 F.3d 131 (5th Cir. 2004)	14
Goodman v. Staples the Office Superstore, LLC, 644 F.3d 817 (9th Cir. 2011)	19
Hartfield v. Peterson, 91 F.2d 998 (2d Cir. 1937)	6

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Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173 (9th Cir. 1989)	2, 10, 13
Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527 (5th Cir. 1994)	9, 20
Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807 (1st Cir. 1995), aff’d by an evenly divided court, 516 U.S. 233 (1996)	11, 14, 15
M. Kramer Mfg. Co., Inc. v. Andrews, 783 F.2d 421 (4th Cir. 1986)	9
Merchant Transaction Sys., Inc. v. Nelcela, Inc., 2009 U.S. Dist. LEXIS 25663 (D. Ariz. Mar. 17, 2009)	11
Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366 (10th Cir. 1997)	14
O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1853)	6
Practice Mgmt. Info. Corp. v. Am. Med. Ass’n, 121 F.3d 516 (9th Cir. 1997)	9
Recording Indus. Ass’n of Am. v. Diamond Multimedia Sys., Inc., 180 F.3d 1072 (9th Cir. 1999)	1, 2
Reiss v. Nat'l Quotation Bureau, Inc., 276 F. 717 (S.D.N.Y. 1921) (Hand, J.)	6
Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1993)	12
Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157 (9th Cir. 1977)	20
Sony Computer Entm’t, Inc. v. Connectix, 203 F.3d 596 (9th Cir. 2000)	15, 16
Toro Co. v. R & R Prods. Co., 787 F.2d 1208 (8th Cir. 1986)	3, 9, 14
Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222 (3d Cir. 1986)	8

iv

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STATUTES
17 U.S.C.
§§ 101, 102(a)(1)	1
§ 102(b)	passim
101 of the Copyright Act.
§ 101	passim
OTHER AUTHORITIES
37 C.F.R. § 1.71(e)	8
1-2 Nimmer on Copyright § 2.03[D]	14
Exec. Comm. Mtg. Minutes for 13-14 January, 2009, available at: http://jcp.org/aboutJava/communityprocess/summaries/2009/January09-public- minutes. html	18
Exec. Comm. Mtg. Minutes for 24 June, 2008, available at: http://jcp.org/aboutJava/communityprocess/summaries/2008/June-08.summary.html	18
FAQ, available at http://www.apache.org/jcp/sunopenletterfaq.html	17, 18
FRCP 37(c)(1)	19
Ginsberg, Four Reasons And A Paradox, 94 Colum. L. Rev. 2559, 2569-70 (1994)	9
Gosling et al., THE JAVA LANGUAGE SPECIFICATION § 4.3.2 (3d ed. 2005), available at http://docs.oracle.com/javase/specs/	5
http://developer.android.com/reference/javax/crypto/CipherInputStream.html	21
http://docs.oracle.com/javase/1.5.0/docs/api/javax/crypto/CipherInputStream.html	21
http://en.wikipedia.org/wiki/Java.nio	4, 5
http://www.oracle.com/technetwork/java/javase/terms/license/index.html	6
Java 2 Platform SE Development Kit 5.0 Specification, available at: http://docs.oracle.com/javase/1.5.0/docs/relnotes/license.html	19
Miller, Copyright Protection For Computer Programs, Databases, And Computer- Generated Works: Is Anything New Since CONTU?, 106 Harv. L. Rev. 977, 1034 (1993)	10
Open Letter to Sun Microsystems, available at http://www.apache.org/jcp/sunopenletter.html	17
Patry, Copyright and Computer Programs, 14 Cardozo Arts & Ent. L.J. 1 (1996)	10

v

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Samuelson, Why Copyright Law Excludes Systems and Processes from the Scope of Its Protection, 85 Tex. L. Rev. 1921, 1923 (2007)

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Pursuant to the Court’s recent orders (ECF Nos. 835, 837, 838, and 843), Oracle responds to the Court’s questions and addresses issues discussed at the March 28 hearing.

I. ORACLE’S ANSWERS TO THE COURT’S QUESTIONS

A. To what extent does Oracle contend that the 37 APIs as a group
constitute a “compilation” within the meaning of Section 101, and/or
contend that the individual APIs individually constitute a
“compilation.” Is there any other theory of protectability beyond
“compilation” for the APIs?

The 37 APIs should not be viewed as a compilation under section 101 of the Copyright Act. Section 101 defines “compilation” as “a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” The APIs are original and not a collection of preexisting materials or data. In American Dental Ass’n. v. Delta Dental Plans Ass’n., 126 F.3d 977, 980 (7th Cir. 1997), for example, the Court held the ADA code of dental procedures is not a compilation:

Note that we do not conclude that the Code is a compilation covered by 17 U.S.C. § 103. It could be a compilation only if its elements existed independently and the ADA merely put them in order. A taxonomy is a way of describing items in a body of knowledge or practice; it is not a collection or compilation of bits and pieces of “reality.”

Id. at 980.

The 37 APIs are original works of authorship. The specifications, as written documentation, and the class libraries (source or object code implementations of those specifications), as computer programs, are both protected as literary works. See 17 U.S.C. §§ 101, 102(a)(1); Recording Indus. Ass’n of Am. v. Diamond Multimedia Sys., Inc., 180 F.3d 1072, 1077 (9th Cir. 1999) (“a computer program is not a material object, but rather, a literary work.”). And even if individual API elements were not protectable, the combination of these elements would be. In Satava v. Lowry, for example, the Ninth Circuit found the individual elements of the plaintiff’s jellyfish sculptures were unprotectable scenes a faire, but nonetheless went on to assess whether the combination was copyrightable. 323 F.3d 805, 811 (9th Cir. 2003). The court stated:

Our case law suggests, and we hold today, that a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their

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combination constitutes an original work of authorship. See Metcalf, 294 F.3d at 1074; Apple Computer, Inc., 35 F.3d at 1446. See also Feist, 499 U.S. at 358, 111 S.Ct. 1282 (“[T]he principal focus should be on whether the selection, coordination, and arrangement are sufficiently original to merit protection.”).

Id. (emphasis added).

Google’s recent admission gives it little room to argue. Google concedes originality:

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.

(ECF No. 823 at 9). There can be no question of “numerosity.” The 37 API packages encompass thousands of elements and the many relationships among them. Both of the elements under Satava are therefore satisfied. Google’s admission establishes copyrightability.

B. (1) Under the law, does “selection, arrangement, and structure” arise
as an issue only in the context of originality and more specifically, as a
way to allow protectability for otherwise noncopyrightable elements in
a compilation?

No. It is true that, under section 101 of the Copyright Act, to qualify for copyright protection a compilation must be “selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” 17 U.S.C. § 101 (emphasis added). Satisfying any one of these requirements is sufficient. However, these concepts are not limited to compilations or to “otherwise noncopyrightable elements” and they do not arise “only in the context of originality.” Selection, arrangement, and structure collectively and individually also relate to expression, not just originality. A unique and detailed structure, like that of the 37 APIs, qualifies as expression. See, e.g., Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1176 (9th Cir. 1989) (finding structure of computer program was “expression”).

C. (2) Is “selection, arrangement, and structure” also an exception to the
rule that a system or method cannot be copyrighted? That is, if
something is a system or method can it still be copyrighted so long as
the system or method is the result of selection, arrangement and
structure?

No. To the extent a system or method of operation is an idea, it cannot be copyrighted. But the decisional law establishes that proper copyright analysis must move beyond labels. Original expression in a work can be copyrighted, even if the work also describes or embodies an

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idea. That includes selection, arrangement or structure. See id. at 1175. (“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 an expression of an idea, or an idea itself.”)

The rule that the Court refers to here is the idea/expression dichotomy codified in Section 102(b), which is discussed in section II.B below. Oracle’s selection, arrangement, and structure of API elements as fixed in the API specifications and class libraries are original expression, and are protected by copyright. The underlying ideas are not.

D. (3) If a method or system is copyrightable if the result of selection,
arrangement, and structure, won’t that be true for all original
methods and systems which by definition involve a structure,
arrangement, and selection steps?

No. The idea of a system or method of operation is not protectable. A work that expresses or embodies a system or method will be copyrightable to the extent it contains original expression, which may or may not relate to selection, arrangement, or structure. Thus the premise of this question is not correct. Nor is it quite correct that all methods and systems “by definition” involve structure, arrangement, and selection steps.

The copyrightability of works that embody systems depends on the facts. Some works do not pass muster, but not necessarily because they are “systems.” In Toro Co. v. R & R Prods. Co., for example, the court found the plaintiff’s parts numbering system was unprotectible because it was unoriginal, not because it was a system under § 102(b). 787 F.2d 1208, 1212 (8th Cir. 1986) (“the district court’s literal application of the section’s language - that appellant’s parts numbering system is not copyrightable because it is a ‘system’ - cannot stand.”).

E. (4) For the merger doctrine, at what level of abstraction should we
consider the idea/system? At a high level of abstraction (for instance,
the concept of APIs generally), there are many ways to express
“selection, arrangement, and structure” in creating a particular API.
But for the idea/system of the 37 Java APIs, there may be only one way
to express the “selection, arrangement, and structure.”

Oracle is not claiming copyright protection for the idea of APIs generally, or for the idea of creating APIs that provide particular capabilities, e.g., input/output or security. It claims protection for the particular expression contained in the 37 API packages: the many elements it

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chose to include in its design, the arrangement of these elements, and all of the relationships among them. While it can sometimes be difficult to separate idea from expression, that is not the case here, where Google copied 11,000 pages of API specifications. No case has held that a structure this detailed and complex is an “idea” rather than the expression of an idea.

As has been discussed in more detail elsewhere, even at the package level, the authors of the APIs made choices that could have been very different. The packages java.util and java.nio reflect different design choices and illustrate the originality and creativity of the Java APIs. When Sun chose to create an improved input/output API (“New I/O”) to supplement the existing java.io package, it chose to arrange the new related input/output elements into six different API packages instead of one. See http://en.wikipedia.org/wiki/Java.nio. (See ECF No. 611 at 2-3.) In contrast, the java.util package specification is a single “grab bag” of 49 classes and 16 interfaces that perform unrelated functions and did not all have to be placed in one package. The APIs are replete with design choices, large and small, that reflect the expressiveness of their designers.

The Ninth Circuit articulated how the line between idea and expression should be drawn in protecting the collectable coin pricing guide in CDN Inc. v. Kapes:

As Judge Hand noted, the difference between idea and expression is one of degree. This circuit has held that “[t]he guiding consideration in drawing the line is the preservation of the balance between competition and protection reflected in the patent and copyright laws.” Rosenthal, 446 F.2d at 742. In this case, the prices fall on the expression side of the line. CDN does not, nor could it, claim protection for its idea of creating a wholesale price guide, but it can use the copyright laws to protect its idea of what those prices are. See id. at 742 (denying protection to the idea of creating a jeweled bee pin where there was no indication that the alleged infringer had copied the pin in question). Drawing this line preserves the balance between competition and protection: it allows CDN’s competitors to create their own price guides and thus furthers competition, but protects CDN’s creation, thus giving it an incentive to create such a guide. 197 F.3d 1256, 1262 (9th Cir. 1999) (emphasis added). The 37 APIs are far more expressive than CDN’s coin pricing guide, but the same principle applies. The 37 APIs have been developed and refined over the course of many years. While Oracle cannot claim protection for the idea of an API or a type of API package, it can for the detailed structure it created. This preserves the incentive for companies to invest in developing APIs, but allows competitors to create their own. Google has proven that it could when it wishes to—Android includes more than 100 new APIs.

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F. (5) Is it true that the APIs are an integral part of Java? That is,
programmers write their own programs using the APIs? If the answer
depends on the particular API, please specify which of the 37 asserted
are integral.

The 37 asserted APIs are an integral part of the Java Platform, but are not an integral part of the Java programming language. The Java programming language requires only a very small number of API elements, as Oracle has discussed previously. (ECF No. 780 at 15.)As Google alleged in its pleadings, the Java programming language is distinct from the Java Platform, which includes the APIs (the class libraries): “While they are distinct elements, the term “Java” is commonly used to refer to the programming language, the runtime environment, as well as the platform.” (Google Amended Counterclaims ¶ 1, ECF No. 51 at 13 (emphasis added).) Google defines a Java runtime environment as “consisting of Java virtual machines written to operate on a number of different computer platforms and a set of standard class libraries that can be accessed and reused by Java platform applications to perform common software functions, such as writing to files or sorting data.” (Id. ¶ 3 at 14 (emphasis added).).

Programmers do write their own programs using the APIs. What this means is that application programmers typically write only a portion of their programs themselves, and choose to call upon the pre-written class libraries described by Oracle’s APIs in their application to provide the remainder. An application written this way will be incomplete: it will not itself contain all of the code needed to carry out the functions of the application. Only someone who also has an executable copy of the API-associated class libraries that the application can call upon can run such an application. Thus, while an application programmer does not need a license to the APIs from Oracle to author and distribute a program in the Java programming language (even if it includes calls to the APIs), whoever runs a program that includes API calls will need a license from Oracle, because that person needs an executable implementation of the APIs.

In practice, the way most programmers and users obtain an executable implementation of the APIs is by downloading it from Oracle in the form of the Java Development Kit (for programmers) and the Java Runtime Environment (for users). Both the JDK and JRE are subject to a “non-exclusive, non-transferable, limited license without license fees” that permits use and

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redistribution for desktop and server computers only, and that prohibits modification and reverse engineering. See http://www.oracle.com/technetwork/java/javase/terms/license/index.html. These aspects of Oracle’s licensing model are the main reason people think “Java” is “free.”

As discussed in section IV below, Oracle also licenses its API specifications for cleanroom, complete, and fully compatible reimplementations that pass the TCK test suite (which has its own license that must be separately accepted). Oracle does not license the Java APIs for mobile telephones and other embedded applications except under the royalty-free GPL or a royalty-bearing commercial license.

G. (6) To what extent are computer languages (not programs, but languages)
copyrightable? Patentable?

Oracle is not aware of any federal judicial decision holding that an artificial language is not copyrightable. Code books are copyrightable, and can be considered an artificial vocabulary:

These words have a prospective meaning, but as yet they have not received, it, like an empty pitcher. Suppose some one devised a set of words or symbols to form a new abstract speech, with inflections, but as yet with no meaning, a kind of blank Esperanto. The case would be approaching the plaintiff’s, though not there, because the words would, indeed, express relationship.

Reiss v. Nat’l Quotation Bureau, Inc., 276 F. 717, 718 (S.D.N.Y. 1921) (Hand, J.); see also Hartfield v. Peterson, 91 F.2d 998, 999 (2d Cir. 1937) (“Both the phrases, so far as they were his, and the arrangement were proper subjects of copyright.”). A computer language should not be treated differently.

Nor is Oracle aware of any federal judicial decision holding that an artificial language is not patentable. Morse Code was held to be patentable in O’Reilly v. Morse, 56 U.S. (15 How.) 62, 86, 112 (1853) (upholding claim 5 of the 1948 reissue patent, which claims the “system of signs”). But Morse Code may not be a language, as it lacks a vocabulary and grammar.

H. (7) From Google’s presentation at the hearing, it seems as though
Sun/Oracle attempted to claim the structure/hierarchy/arrangement of
APIs in the ’855 patent and ’093 patent. Would it be possible to claim
the selection of classes for APIs under patent law?

It may in some case be possible to claim a selection of classes, so long as it was part of a “new and useful process, machine, manufacture, or composition of matter” under 35 U.S.C. § 101. Computer software is eligible for both patent and copyright protection. The Federal Circuit,

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applying Ninth Circuit copyright law, so held in Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 839-40 (Fed Cir. 1992) (“Title 35 protects the process or method performed by a computer program; title 17 protects the expression of that process or method. While title 35 protects any novel, nonobvious, and useful process, title 17 can protect a multitude of expressions that implement that process.”).

The ’855 and ’093 patents reinforce the distinction, however, between patented processes or methods and the many different ways to express those ideas in API designs through the selection and design of classes. The ’855 and ’093 patents are software inventions that perform particular functions: The ’855 patent is directed to methods and systems for integrating an application with a collaboration server, and the ’093 patent is directed to class structures associated with clients and servers that enable access to a system database. See U.S. Pat. No. 7,996,855, claims 1 and 11; U.S. Pat. No 6,598,093, claims 1, 8 and 11.

These patents illustrate that a particular API may contain both expressive and functional content at the same time, and therefore benefit from both copyright and patent protection. What the patents describe and claim is more general than any specific API, leaving ample room for expressive choices. For example, the ’093 patent states that the invention does not require any particular selection of classes or hierarchical relationships:

The class hierarchy associated with a core API may generally vary. For instance, the class hierarchy may vary for embodiments in which there are either fewer or more classes associated with APIs. Similarly, the classes, as well as the methods, associated with different APIs may vary depending upon the requirements of a particular system without departing from the spirit or the scope of the present invention.

’093 Patent at 11:43-49. There are countless ways to design an API, through the selection, arrangement, and structure of API elements, to perform the patented method.

Notably, the ’855 patent includes a copyright notice per 37 C.F.R. § 1.71(e), putting the public on notice that a portion of the patent document is subject to copyright protection. ’855 Patent at 1:6-14. This is not unusual: Google likewise has issued patents—some including source code as part of the disclosure—over which it also claims copyright protection. See, e.g., U.S. Pat. Nos. 8,111,690 and 7,953,152.

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I. (8) By claiming that Google infringes the API implementation, is
Oracle alleging that Google copied something other than the
“selection, arrangement, and structure” of APIs, as fixed in the
specifications?

Yes. The selection, arrangement, and structure of the Java APIs is not just “fixed in the specifications” but is also fixed in the source and object code implementation of the APIs in the Java class libraries. Similarly, Google copied the Java APIs into Android documentation and source code.

Oracle is also claiming copyright protection for the thousands of elements Google copied from the Java APIs into Android source code and documentation, and for the selection and arrangement of the names of the API elements that Google copied. And it is claiming that Google created derivative works from the English-language descriptions of the elements that are set forth in the API specifications.

J. (9) Discussion of CONTU

See section II.B. below.

K. (10) Critique of Prof. Samuelson’s Article and Identification of Other
Articles

Prof. Samuelson advocates an interpretation of § 102(b) that would reduce or eliminate copyright protection for functional works, however expressive or original. Her argument is that § 102(b) is not limited to a restatement of the idea/expression dichotomy, but rather that “all eight words of exclusion were put into the statute for a sound reason and that those who read the other seven words out of the statute are mistaken.” Samuelson, Why Copyright Law Excludes Systems and Processes from the Scope of Its Protection, 85 Tex. L. Rev. 1921, 1923 (2007).

¹ Prof. Jane Ginsburg has criticized the article’s

________________________________________

¹ See, e.g., CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc., 44 F.3d 61, 69 & n.12 (2d Cir. 1994); Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1234 (3d Cir. 1986); M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 434 (4th Cir. 1986); Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527, 533 & n.8 (5th Cir. 1994); Atari, Inc. v. N. Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 615 (7th Cir. 1982); Toro, 787 F.2d at 1211-12; Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443, n.11 (9th Cir. 1994); Autoskill Inc. v. Nat. Educ. Support Sys., Inc., 994 F.2d 1476, 1491 (10th Cir. 1993); Cable/Home Commc’n Corp. v. Network Prods., Inc., 902 F.2d 829, 842-43, n.26 (11th Cir. 1990).

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approach and concluded § 102(b) cannot be interpreted literally as the article does, because otherwise the definition of a computer program in § 101 would be a process or method under §102(b). Ginsberg, Four Reasons And A Paradox, 94 Colum. L. Rev. 2559, 2569-70 (1994).

The article relies on the cases that support its position, overlooking others. It argues that “Baker sought to sharpen the distinction between patents and copyrights” (85 Tex. L. Rev. at 1933) and quotes the Seventh Circuit to the effect that Congress provided “two separate and distinct fields of protection, the copyright and the patent . . . . While it may be difficult to determine in which field protection must be sought, it cannot be found in both.” Id. at 1937 (quoting Taylor Instrument Cos. v. Fawley-Brost Co., 139 F.2d 98, 99 (7th Cir. 1943)). But the Article gives short shrift to the directly contrary Supreme Court holding in Mazer v. Stein: “Neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted.” Id. at 1958 (quoting Mazer, 347 U.S. 201, 217 (1954)). The Article observes in a footnote that cases that interpret Baker and 102(b) to find original medical coding systems copyrightable, including the Ninth Circuit’s decision in Practice Mgmt. Info. Corp. v. Am. Med. Ass’n, 121 F.3d 516, 518-19 (9th Cir. 1997), would reach a different result under the article’s interpretation of Baker and 102(b). Id. at 1975 n. 350. The article presents a policy point of view. It does not purport to interpret the law.

Oracle agrees with the article in one respect: “The First Circuit’s discussion of § 102(b) as applied to the Lotus command structure was not particularly well developed or compelling.” Id. at 1971. As discussed below in section II.B, under Google’s interpretation of Lotus, nearly all computer programs would be uncopyrightable, which cannot be correct.

For a thorough analysis of Lotus, Baker, the relationship between Sections 101 and 102, and the central role of originality under Feist, Oracle recommends an article by the treatise author William Patry, currently Google’s Chief Copyright Counsel. William F. Patry, Copyright and Computer Programs, 14 Cardozo Arts & Ent. L.J. 1 (1996). Mr. Patry discusses the erroneous factual and legal premises on which the Lotus court based its decision. Id. at 13. He also provides a useful analysis of Baker, id. at 45-49, and an overview of the history of copyright protection of computer programs. Id. at 22-32. For the views of one CONTU Commissioner, as

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well as a specific discussion of the case against any diminished copyright status for interfaces, Oracle recommends Arthur R. Miller, Copyright Protection For Computer Programs, Databases, And Computer-Generated Works: Is Anything New Since CONTU?, 106 Harv. L. Rev. 977, 1034 (1993) (“Any limitation on the protection of ‘interfaces’ thus would be a limitation on the protection of much of the valuable expression in programs, and would invite plagiarists to label as an ‘interface’ whatever they have chosen to copy without permission.”).

II. JOHNSON CONTROLS IS NINTH CIRCUIT CONTROLLING AUTHORITY

A. The Copyrightability of Non-Literal Components of Computer
Programs Is Governed By Johnson Controls

In Johnson Controls, the Ninth Circuit held that non-literal components of a computer program are copyrightable if they qualify as an expression of an idea, rather than the idea itself. 886 F.2d at 1175. At issue was the copyrightability of the “structure, sequence and organization” of the plaintiff’s JC-5000S computer program. Id. The Ninth Circuit held that:

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 an expression of an idea, or an idea itself.

Id. Pointing to evidence that “some discretion and opportunity for creativity exist in the structure,” the Ninth Circuit upheld the lower court’s finding, on preliminary injunction, that “the structure of the JC-5000S is expression, rather than an idea in itself.” Id. at 1176.

Johnson Controls remains the law of this Circuit. Citing Johnson Controls, the Federal Circuit held that the computer program key to Nintendo’s video console was protected by copyright, stating that “[t]his court, in applying Ninth Circuit law, must determine whether each component of the 10NES program ‘qualifies as an expression of an idea, or an idea itself.’” Atari v. Nintendo, 975 F.2d at 840 (quoting Johnson Controls, 886 F.2d at 1175). See also Merch. Transaction Sys., Inc. v. Nelcela, Inc., 2009 U.S. Dist. LEXIS 25663, at *38 (D. Ariz. Mar. 17, 2009) (following Johnson Controls and finding that “the selection, coordination, and arrangement of the information contained in the Lexcel software's database schema” constituted copyrightable subject matter).

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B. The Lotus Approach Is Incorrect And Does Not Apply Here

Google relies on Lotus to argue that expressive choices do not matter once a court determines that a work is a method of operation: “Accepting the district court’s finding that the Lotus developers made some expressive choices in choosing and arranging the Lotus command terms, we nonetheless hold that that expression is not copyrightable because it is part of Lotus 1- 2-3’s ‘method of operation.’” Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807, 816 (1st Cir. 1995), aff’d by an evenly divided court, 516 U.S. 233 (1996).

Lotus defined “methods of operation” as “the means by which a user operates something.” Id. at 815. This definition is dangerously close to the statutory definition of “computer program”: “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” 17 U.S.C. § 101. Congress adopted this definition from the Final Report of the National Commission on New Technological Uses of Copyrighted Works (1979) (“CONTU Report”). CONTU’s first recommendation was “to make it explicit that computer programs, to the extent that they embody an author’s original creation, are proper subject matter of copyright.” CONTU Report at 1 (emphasis added). “Congress adopted all of the statutory changes recommended by CONTU verbatim. Subsequent Congresses, the courts, and commentators have regarded the CONTU Report as the authoritative guide to congressional intent.” Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1520 n.5 (9th Cir. 1993). All computer programs are a means to bring about a certain result. Because most programs could be considered a means of operating something, Lotus is inconsistent with Congress’s intent to protect software thought [SIC] copyright.

That a developer might make use of a class library associated with an API—or any other software—does not diminish that software’s copyrightability. The Ninth Circuit relied on the CONTU Report in holding operating system programs copyrightable: “The copyright status of the written rules for a game or a system for the operation of a machine is unaffected by the fact that those rules direct the actions of those who play the game or carry out the process.” Apple Computer, Inc. v. Formula Int’l, Inc., 725 F.2d 521, 524 (9th Cir. 1984) (quoting CONTU Report

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at 21). “That the words of a program are used ultimately in the implementation of a process should in no way affect their copyrightability.” CONTU Report at 21.

In framing its definition, CONTU emphasized that expression is copyrightable, while ideas are not: “Section 102(b) is intended, among other things, to make clear that the expression adopted by the programmer is the copyrightable element in a computer program, and that the actual processes or methods embodied in the program are not within the scope of the copyright law.” CONTU Report at 19 (quoting H.R. Rep. No. 94-1476, at 57 (1976); S. Rep. No. 94-473, at 54 (1975)) (emphasis in CONTU Report). “Section 102(b) in no way enlarges or contracts the scope of copyright protection under the present law. Its purpose is to restate . . . that the basic dichotomy between expression and idea remains unchanged.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 356 (1991) (quoting H.R. Rep. No. 94-1476 at 57; S. Rep. No. 94-473at 54). Lotus’s methods of operation, which could encompass most any program, upset this delicate statutory balance.

Lotus’s categorical approach also cannot be squared with the holding in Johnson Controls that the Court must inquire as to whether “the component in question qualifies as an expression of an idea, or an idea itself.” Johnson Controls, 886 F.2d at 1175. Here, both the Java class libraries and their associated API specifications are copyrightable expression.

Looking in isolation at the Java class libraries, it is indisputable that they qualify for copyright protection because they are computer programs written in source code. “Source and object code, the literal components of a program, are consistently held protected by a copyright on the program.” Id. That is true regardless of the purpose to which that program is put.

Similarly, the selection, arrangement and structure of the Java class libraries is protectable under Johnson Controls. See id. at 1174. They follow the detailed hierarchical structure described in the API specifications—the same complex structure that was presented to the Court at the March 28 hearing. Johnson Controls upheld the lower court’s finding of copyrightability of a program structure based on far more modest evidence: that “some discretion and opportunity for creativity exist in the structure.” Id. at 1176.

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The API specifications themselves also clearly qualify for copyright protection. As the Court held, “the API specifications [] are not ‘methods of operation’ under section 17 U.S.C. § 102(b).” (ECF No. 433 at 11.) “API specifications are written documentation. Even if Google could show that APIs are methods of operation, that would not mean that a written work that describes or embodies APIs is automatically exempt from copyright protection.” (Id. at 10-11.) When sufficiently expressive and original, as is the case here, written documentation qualifies for copyright protection. (See, e.g., ECF No. 833 at 3 (citing cases).)

Google copied Oracle’s API specifications nearly verbatim into the Android API specifications. And it created a derivative work when it implemented Oracle’s detailed selection, arrangement, and structure, fixed in both the API specifications and the Java class libraries, into the source code for the Android class libraries. This is copyright infringement.

It cannot be that, when the copyrightable Java API specifications and class libraries are viewed together, they suddenly lose their copyright protection by being labeled a “method of operation” or a “system.” Courts in at least three other circuits disagree with Lotus’s approach, and hold that identifying something as a system or method under § 102(b) does not end the inquiry into copyrightable expression. The Eighth Circuit examined the history of section 102(b) and concluded that the expression of a “system” can qualify for copyright protection:

In light of this history of § 102(b), the district court’s literal application of the section’s language-that appellant’s parts numbering system is not copyrightable because it is a “system”-cannot stand. All that the idea/expression dichotomy embodied in § 102(b) means in the parts numbering system context is that appellant could not copyright the idea of using numbers to designate replacement parts. Section 102(b) does not answer the question of whether appellant’s particular expression of that idea is copyrightable.

Toro, 787 F.2d at 1212 (emphasis added).

Similarly, the Tenth Circuit expressly disagreed with Lotus and found: “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.” Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1370, 1372, 1373-74 (10th Cir. 1997) (reversing district court holding that command codes were method of operation but affirming holding that codes were not original).

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In addition, at least one Southern District of New York case has stated it disagrees with Lotus: “[w]hile the Second Circuit does not appear to have decided the question, we believe that a method of operation may contain expression that it [sic] copyrightable.” eScholar, LLC v. Otis Educ. Sys., 76 U.S.P.Q. 2D (BNA) 1880, 1897 (S.D.N.Y. 2005).

A leading treatise on copyright agrees:

The House Report makes clear that the above provision “in no way enlarges or contracts the scope of copyright protection under the present [1909] law. Its purpose is to restate, in the context of the new single Federal system of copyright, that the basic dichotomy between expression and idea remains unchanged.” It would, then, be a misreading of Section 102(b) to interpret it to deny copyright protection to “the expression” of a work, even if that work happens to consist of an “idea, procedure, process, etc.”

1-2 Nimmer on Copyright § 2.03[D] (internal citations omitted). See also Gen. Universal Sys., Inc. v. Lee, 379 F.3d 131, 142 (5th Cir. 2004) (stating “menu structures” are copyrightable).

The Java APIs also do not fit the Lotus definition of “method of operation” because they are not “a means by which a person operates something.” The Lotus court viewed the Lotus 1-2- 3 menu command hierarchy as a “method of operation” because the commands were the actual keystrokes that a person would type to use the Lotus 1-2-3 program. Lotus, 49 F.3d at 809; see id. at 815 (“The Lotus menu command hierarchy provides the means by which users control and operate Lotus 1-2-3. If users wish to copy material, for example, they use the ‘Copy’ command. If users wish to print material, they use the ‘Print’ command.”).

That is not what we have in this case. On a computer or Android phone, there is no button, or key on a keyboard, or touchscreen menu labeled “HandshakeCompletedEvent,” or “getCipherSuite(),” or anything corresponding to the thousands of other Java API elements. If the class and method names defined in the API specification and implementation are viewed as a means “to tell the computer what to do,” that is true of any part of software. All source code instructs a processor what functions to perform. Under Google’s proposed interpretation of Lotus, nearly all computer programs would be uncopyrightable.

The Java APIs are also factually distinguishable because they are significantly more complex and expressive than the Lotus 1-2-3 menu command hierarchy. The menu structure in Lotus was a comparatively simple consumer user interface. Even the dissenting opinion found

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“[t]he present case is an unattractive one for copyright protection of the menu. The menu commands (e.g., “print,” “quit”) are largely for standard procedures that Lotus did not invent and are common words that Lotus cannot monopolize.” 49 F.3d at 821.

III. GOOGLE’S “COMPATIBILITY” CLAIM DOES NOT JUSTIFY COPYING
EXPRESSION

Google persists in mischaracterizing the Ninth Circuit’s holdings in Sega and Sony. Neither case sheds any light on the issues the Court is facing here. Oracle discussed the Sega case in its March 23 brief. (See ECF No. 824 at 4-5.) Like Sega, Sony is a reverse-engineering case that concerned intermediate copying only, where the final product was not alleged to infringe. See Sony Computer Entm’t, Inc. v. Connectix, 203 F.3d 596, 604 n.7 (9th Cir. 2000). The Sony court described the central premise of its holding by referencing Sega:

Central to our decision today is the rule set forth in Sega:

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.

Sony, 203 F.3d at 602-03 (quoting Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1527-28 (9th Cir. 1993) (emphasis added in Sony).) Our case is not one in which copying was required to access any ideas or functional elements: Oracle publishes the API documentation for anyone to read, subject to copyright protection.

More on point is Atari v. Nintendo, where, unlike in Sony and Sega, the final product was alleged to infringe. 975 F.2d at 843. Applying Ninth Circuit law, the Federal Circuit found the key to Nintendo’s console was entitled to copyright protection because of the “unique and creative arrangement of instructions in [its] program” and because “[e]xternal factors did not dictate the design.” Id. at 840. While Atari could reverse engineer Nintendo’s code to learn its unprotected features, it could not replicate this protected expression:

Fair use to discern a work’s ideas, however, does not justify extensive efforts to profit from replicating protected expression. Subparagraphs 1 and 4 of section 107 clarify that the fair use in intermediate copying does not extend to commercial exploitation of protected expression. Sony Corp., 464 U.S. at 451, 104 S. Ct. at 793. The fair use reproductions of a computer program must not exceed what is necessary to understand the unprotected elements of the work.

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Id. at 843.

Another key fact distinguishing this case from Sony and Sega is that copying in those cases was literally required for the software programs to function with the video game consoles. See, e.g., Sony, 203 F.3d at 599. There was no such requirement here. Google’s expert admits it would have been “technically possible” for Google to write its own APIs for the 37 packages at issue. (Astrachan Dep. 251:21-252:2, 253:2-4.) Google wrote most of its own APIs and did not always take the entirety of the 37 APIs it did copy, creating an incompatible product and fragmenting Java. Google copied because it wanted to exploit the developer community Sun had cultivated over more than a decade. It copied for a commercial purpose, not compatibility.

IV. GOOGLE’S CLAIM THAT THE SUN-APACHE DISPUTE WAS JUST ABOUT
BRANDING IS FALSE

In its March 27 brief, Google claimed that “[t]he dispute between Apache was about branding, and the ability to say that Apache Harmony is Java compatible.” (ECF No. 831 at 3). Google is not being candid with the Court.

In 2005, Apache started the Apache Harmony project to create an open-source implementation of Java SE. The specifications for Java SE have always been made available under an openly-published license (the “specification license”) that grants

a perpetual, non-exclusive, worldwide, fully paid-up, royalty free, limited license (without the right to sublicense) under any applicable copyrights or patent rights it may have in the Specification to create and/or distribute an Independent Implementation of the Specification that: (i) fully implements the Spec(s) including all its required interfaces and functionality; (ii) does not modify, subset, superset or otherwise extend the Licensor Name Space, or include any public or protected packages, classes, Java interfaces, fields or methods within the Licensor Name Space other than those required/authorized by the Specification or Specifications being implemented; and (iii) passes the TCK (including satisfying the requirements of the applicable TCK Users Guide) for such Specification. The foregoing license is expressly conditioned on your not acting outside its scope.

Java 2 Platform SE Development Kit 5.0 Specification License, available at:

http://docs.oracle.com/javase/1.5.0/docs/relnotes/license.html. As discussed below (see infra, Section VI), Google has never pointed to any other license under which Apache or Google purportedly was authorized to use the Java SE specifications.

On April 10, 2007, Apache sent an open letter to Sun about its dissatisfaction with Sun’s

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license terms for the Java SE compatibility test kit, without which Apache Harmony would not be licensed under Sun’s specification license:

Since August 2006, the ASF has been attempting to secure an acceptable license from Sun for the test kit for Java SE. This test kit, called the “Java Compatibility Kit” or “JCK”, is needed by the Apache Harmony project to demonstrate its compatibility with the Java SE specification, as required by Sun’s specification license.

Open Letter to Sun Microsystems, available at http://www.apache.org/jcp/sunopenletter.html. Nothing in Apache’s letter described the dispute as relating to access to the “Java” brand or trademarks. Consistent with the specification license, Apache acknowledged on its website that passing the JCK, also known as the TCK, was necessary not just to demonstrate compatibility, but to obtain required intellectual property rights:

Q: Why is the TCK useful?

A: It allows independent implementations to demonstrate that they are compatible with the specification, and as a result, receive all the “necessary IP” from expert group members.

FAQ, available at http://www.apache.org/jcp/sunopenletterfaq.html. Sun’s TCK license included a field-of-use restriction that would have banned running the Apache Harmony code on mobile devices without a separate license from Sun. Apache argued imposing such a restriction was improper and refused to accept the TCK license. Sun disagreed and refused to relax its requirements; Apache never obtained a TCK license; and Apache accordingly never had a license —whether under Sun’s copyrights, patents or trademarks—to implement the Java APIs in the manner it did. Apache shut down the Harmony project on November 15, 2011.

Google, along with Sun and Apache, also sat on the Executive Committee of the Java Community Process (“JCP”), where the issue was hotly debated.² Google engineer Bob Lee, one of Google’s JCP representatives and a participant in those debates, informed Google’s then-CEO

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² See e.g., Exec. Comm. Mtg. Minutes for 13-14 January, 2009, available at: http://jcp.org/aboutJava/communityprocess/summaries/2009/January09-public-minutes.html (“The ECs then went into private session to discuss the status of the Sun-Apache negotiations. During this session members had a lively discussion, and made some proposals that will be brought to the attention of Sun’s management.”); Exec. Comm. Mtg. Minutes for 24 June, 2008, available at: http://jcp.org/aboutJava/communityprocess/summaries/2008/June-08.summary.html (“Sun and Apache have failed to reach agreement on the terms under which the JCK would be licensed to Apache for use in the Harmony project.”).

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Eric Schmidt in May 2008 that Sun prohibited using Apache Harmony code in Android:

Sun puts field-of-use restrictions in the Java SE TCK licenses which prohibit Java SE implementations from running on anything but a desktop or server. These restrictions prevent Apache Harmony from independently implementing Java SE (Harmony can’t put those restrictions on their own users and still Apache license the code) not to mention Android (though that’s water under the bridge at this point).

(GOOGLE-27-00002479.) Schmidt responded, “I’m not surprised by Sun’s position.” (Id.) Nothing in Sun’s position or analysis turned on use of the Java brand.

V. GOOGLE CANNOT ESTABLISH THE RELIANCE ELEMENT OF ITS
EQUITABLE ESTOPPEL AND IMPLIED LICENSE DEFENSES

Equitable estoppel and implied license both require reasonable reliance. See A.C. Aukerman Co. v. R. L. Chaides Constr. Co., 960 F.2d 1020, 1028 (Fed. Cir. 1992) (en banc) (equitable estoppel); Effects Assocs. v. Cohen, 908 F.2d 555, 558 (9th Cir. 1990) (implied license). The Court emphasized Google’s need to establish reliance at the pre-trial conference. (See 3/28/2012 Hr’g Tr. 92:2-6; 95:18-96:22.) Google cannot prove reliance.

Based on Google’s March 27 briefing, it is apparent Google’s defenses turn almost entirely on statements made by former Sun CEO Jonathan Schwartz in a 2011 deposition, rather than on any Sun statement from 2006 when Google decided to copy from Java into Android. Google has never identified any person who supposedly relied on Schwartz’s comments or any other Sun statements when making that decision. Indeed, Google’s counsel stated that Google is still not “certain” if anyone is going to testify as to reliance. (3/28/2012 Hr’g Tr. 92:2-5.)

Google is precluded from putting on any such testimony at trial. Oracle served interrogatories that were squarely directed at the factual and legal bases for Google’s equitable estoppel and implied license defenses. Oracle twice sought relief from the Court for Google’s inadequate responses. (ECF Nos. 77, 98.) As a result, Google represented that it would make its “best efforts in good faith” to supplement its interrogatory responses. (4/6/2011 Hr. Tr. 7:25- 9:22.) The Court warned the parties at the time to make a full disclosure:

I won’t make a ruling on this now, but if I was in your position I would have an exceedingly good answer, because I may encourage somebody to bring a motion to knock out a defense or knock out a claim for insufficient basis. So if you want to protect yourself against that, you should err on the side of more disclosure, and more answer, and not hide the ball. (Id. at 7:14-20.)

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Google last supplementation was April 25, 2011 and it did not include any facts showing Google’s reliance. Therefore, pursuant to FRCP 37(c)(1), Oracle will move the Court to preclude Google from presenting at trial any evidence of reliance, and to strike these affirmative defenses. See Goodman v. Staples the Office Superstore, LLC, 644 F.3d 817, 827 (9th Cir. 2011).

VI. GOOGLE HAS NO LICENSE DEFENSE

Google has no license defense under the GPL or Oracle’s specification license. Google is not licensed under the GPL, because the Android Java API reimplementation is not also GPLlicensed (a requirement of the GPL). Google admits that it is not licensed under Oracle’s specification license, and cannot qualify for it. Under the specification license, as noted above (see supra, Section IV), an implementation cannot superset or subset the API packages defined in the given Java API specifications, which Google admitted at the March 28 hearing it did. (3/28/12 Hr’g Tr. at 94:1-95:6.) Moreover, as Google acknowledged in its answer and counterclaim: “The only way to demonstrate compatibility with the Java specification is by meeting all of the requirements of Sun’s Technology Compatibility Kit (‘TCK’) for a particular edition of Sun’s Java.” (ECF No. 32 at 12-13 (emphasis added).) Google has not tested Android with the TCK.

Oracle’s interrogatory 15 sought the factual and legal bases for Google’s license defense. Google’s last supplemental response did not identify a single license granted by Sun or Oracle that applies to the 37 APIs at issue. And indeed, when questioned by the Court at the recent hearing, Google did not identify any license other than the specification license, which it agreed did not apply to it. (3/28/2012 Hr’g Tr. 95:18-96:22.)

VII. GOOGLE’S JAVA API DOCUMENTATION IS SUBSTANTIALLY SIMILAR TO
ORACLE’S CORRESPONDING DOCUMENTATION

Google does not 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.” (ECF No. 778 at 3.) Google’s documentation reproduces the API elements from Oracle’s documentation, which is enough to establish infringement. Google argues, however, that the English prose descriptions of the elements in the two specifications are sufficiently

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different to avoid infringement. Google is incorrect. Google’s plagiarism and paraphrasing of Oracle’s English-language descriptions also constitutes infringement. Just as Google copied the selection, coordination, and arrangement of the 37 Java APIs into the Android class library code, it copied the APIs into its documentation. Google’s descriptions show that the Android APIs follow the same detailed plot line as the Java APIs. Copyright “cannot be limited literally to the text, else a plagiarist would escape by immaterial variations.” Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1167 (9th Cir. 1977) (quoting Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (Hand, J.)). Other courts have similarly found infringement in cases of paraphrasing:

The language of LSI’s modified MPO program is likewise similar to that of K-T’s materials: their paragraphs are about the same size, their phrases are similar, their ideas are presented in the same order; in short, parts of the modified MPO program are but a transparent, syntactic rearrangement of portions of K-T's copyrighted materials. While no longer identical to those materials, the modified MPO program still bears many telltale signs of its origins. It is still a copy--still a child of infringement.

Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527, 536 (5th Cir. 1994) (emphasis added) (rejecting defendant’s “surgical efforts to remove only the infringing language”).

The Android documentation itself belies Google’s attempts to downplay its similarity to the Java documentation. Space constraints prevent Oracle from providing more than this example of how Google plagiarized its descriptions:

Oracle’s J2SE 5.0 Specification for javax.crypto.CipherInputStream3 (excerpts)	Google’s Android Specification for javax.crypto.CipherInputStream4 (excerpts)
The Cipher must be fully initialized before being used by a CipherInputStream. For example, if the Cipher is initialized for decryption, the CipherInputStream will attempt to read in data and decrypt them, before returning the decrypted data.	The cipher must be initialized for the requested operation before being used by a CipherInputStream. For example, if a cipher initialized for decryption is used with a CipherInputStream, the CipherInputStream tries to read the data an decrypt them before returning.

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³ http://docs.oracle.com/javase/1.5.0/docs/api/javax/crypto/CipherInputStream.html

⁴ http://developer.android.com/reference/javax/crypto/CipherInputStream.html

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Dated: April 3, 2012

MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs

Attorneys for Plaintiff ORACLE AMERICA, INC.

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