Oracle has yet to establish that it actually owns the copyright in the 37 APIs it is asserting. Oracle points to the copyright registration covering the entire Java platform for its proof. The problem is, evidence has already established that not everything in that filing is the exclusive copyright property of Oracle (remember the 14 APIs that they had to drop because those APIs were written by a person other than a Sun employee, and that author had donated those APIs to the public domain). So how can anyone be certain that Oracle actually owns the remaining 37 APIs. Moreover, evidence has also been produced showing the records of the U.S. Copyright Office do not support Oracle's claims in part because some of the submitted materials appear to be missing.

This lingering issue of ownership, and therefore what constitutes the "work as a whole" that is at issue is manifest in Google's response to the proposed jury instructions. (996 [PDF; Text]) As Google points out in its response, Oracle keeps shifting what constitutes the "work as a whole" depending on which issue they are addressing. There can only be one "work as a whole," and it is hard to see how it can be anything other than the entire Java platform as submitted in the only copyright registration that Oracle made. The determination of the what constitutes the "work as a whole" is critical to Google's defense.

For its part, Oracle raises three issues: (a) consideration of the structure, sequence and organization of the documentation apart from that of the code; (b) the naming issue (they simply will not let go of this); and (c) further guidance on Google's fair use defense. (997 [PDF; Text]) There is merit in at least the first and last points Oracle raises, but each of these points is far secondary to the importance of determining what, exactly, is the work that has been infringed and whether Oracle actually has established with evidence that it owns that work. We should expect to see more on that in today's court session.

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Docket

04/26/2012 – 987 - Transcript of Proceedings held on 4/23/12, before Judge William H. Alsup. Court Reporter/Transcriber Katherine Powell Sullivan and Debra L. Pas, Official Reporters, Telephone number 415-794-6659 Katherine_Sullivan@cand.uscourts.gov. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Redaction Request due 5/17/2012. Redacted Transcript Deadline set for 5/29/2012. Release of Transcript Restriction set for 7/25/2012. (Sullivan, Katherine) (Filed on 4/26/2012) (Entered: 04/26/2012)

04/26/2012 – 988 - Transcript of Proceedings held on 4/24/12, before Judge William H. Alsup. Court Reporter/Transcriber Katherine Powell Sullivan and Debra L. Pas, Official Reporters, Telephone number 415-794-6659/ Katherine_Sullivan@cand.uscourts.gov. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Redaction Request due 5/17/2012. Redacted Transcript Deadline set for 5/29/2012. Release of Transcript Restriction set for 7/25/2012. (Sullivan, Katherine) (Filed on 4/26/2012) (Entered: 04/26/2012)

04/26/2012 – 989 - Transcript of Proceedings held on 4/25/12, before Judge William H. Alsup. Court Reporter/Transcriber Katherine Powell Sullivan and Debra L. Pas, Official Reporters,, Telephone number 415-794-6659/ Katherine_Sullivan@cand.uscourts.gov. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Redaction Request due 5/17/2012. Redacted Transcript Deadline set for 5/29/2012. Release of Transcript Restriction set for 7/25/2012. (Sullivan, Katherine) (Filed on 4/26/2012) (Entered: 04/26/2012)

04/26/2012 - 990 - Declaration of David Zimmer in Support of Oracle America, Inc.'s Administrative Motion to File Under Seal Portions of Oracle's Motion to Exclude Portions of the Rule 706 Expert Report of Dr. James Kearl (Dkt. No. 849) (revised per Docket No. 973) filed byGoogle Inc.. (Van Nest, Robert) (Filed on 4/26/2012) (Entered: 04/26/2012)

04/26/2012 - 991 - ORDER DENYING MOTION TO SEAL (DKT. NO. 906) by Hon. William Alsup [denying 906 Administrative Motion to File Under Seal].(whasec, COURT STAFF) (Filed on 4/26/2012) (Entered: 04/26/2012)

04/26/2012 – 992 - Minute Entry: Jury Trial held on 4/26/2012 before William Alsup (Date Filed: 4/26/2012). Further Jury Trial set for 4/27/2012 7:30 AM. Charging Conference set for 4/27/2012 02:15 PM in Courtroom 8, 19th Floor, San Francisco before Hon. William Alsup. (Court Reporter Kathy Sullivan; Debra Pas.) (dt, COURT STAFF) (Date Filed: 4/26/2012) (Entered: 04/26/2012)

04/26/2012 - 993 - TRIAL BRIEF Google's Corrected April 25 Copyright Brief by Google Inc.. (Attachments: # 1 Exhibit A)(Van Nest, Robert) (Filed on 4/26/2012) (Entered: 04/26/2012)

04/26/2012 - 994 - PROPOSED CHARGE TO THE JURY AND SPECIAL VERDICT FORM. Signed by Judge Alsup on April 26, 2012. (Attachments: # 1 Draft Special Verdict Form)(whalc1, COURT STAFF) (Filed on 4/26/2012) (Entered: 04/26/2012)

04/26/2012 - 995 - Witness List by Oracle America, Inc. Rolling List of Next Ten Witnesses. (Muino, Daniel) (Filed on 4/26/2012) (Entered: 04/26/2012)

04/26/2012 - 996 - Statement Google Inc.'s Comments on the Court's Proposed Charge to the Jury by Google Inc.. (Van Nest, Robert) (Filed on 4/26/2012) (Entered: 04/26/2012)

04/27/2012 - 997 - Statement Oracle's Comments Regarding the Court's Proposed Jury Instructions (Phase One) by Oracle America, Inc.. (Jacobs, Michael) (Filed on 4/27/2012) (Entered: 04/27/2012)

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Documents

994

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
No. C 10-03561 WHA

COURT’S PROPOSED CHARGE TO THE JURY
AND SPECIAL VERDICT FORM

Appended hereto are copies of the draft charge to the jury and special verdict form given to both sides on April 26, 2012, for discussion with the Court at the charging conference on April 27, 2012, at 2:15 p.m. Although counsel have filed numerous waves of overlapping and even contradictory proposed instructions in the past, the proposed charge is based on the way the trial has actually developed, taking into account issues that have emerged and receded and concessions by counsel. Subject to the upcoming charging conference, the Court believes the proposed charge adequately and fairly covers all issues actually still in play. Therefore, in order to give the district judge a fair opportunity to correct any error as matters now stand, counsel must, at the charging conference, bring to the judge’s attention any addition, subtraction or modification or other objections or proposal for the jury instructions. Otherwise, all such points shall be deemed waived and it will not be sufficient merely to argue after the verdict that a proposed instruction filed earlier in the proceedings somehow was not adopted. Rather, any such proposal that counsel still cares about must be raised anew at the charging conference.

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The charging conference shall be conducted so as to give full and fair opportunity for counsel to raise any and all objections and proposals.

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IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

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

No. C 10-03561 WHA

[DRAFT]
FINAL CHARGE TO THE JURY (PHASE ONE)
AND SPECIAL VERDICT FORM

FOR CHARGING CONFERENCE ON
APRIL 27, 2012, AT 2:15 P.M.

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1.

Members of the jury, it is now time for me to give you the final instructions, including instructions on the law that governs this case. A copy of these instructions will be available in the jury room for you to consult as necessary.

It is your duty to find the facts from all the evidence and to decide whether the side with the burden of proof has carried that burden, applying the elements of proof required by the law, elements I will provide you in a moment. In following my instructions, you must follow all of them and not single out some and ignore others. You must not read into these instructions or into anything the Court may have said or done as suggesting what verdict you should return — that is a matter entirely up to you.

2.

The evidence from which you are to decide what the facts are consists of:

1. The sworn testimony of witnesses, whether presented in person or by depositions;
2. The exhibits received into evidence; and
3. Any stipulated facts.

3.

Certain things, however, are not evidence, and you may not consider them in deciding what the facts are. I will list them for you:

1. Arguments, statements and objections by lawyers are not evidence. The lawyers are not witnesses. What they have said in their opening statements, closing arguments and at other times is intended to help you interpret the evidence, but it is not evidence itself. If the facts as you remember them differ from the way the lawyers have stated them, your memory of them controls.

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2. A suggestion in a question by counsel or the Court is not evidence unless it is adopted by the answer. A question by itself is not evidence. Consider it only to the extent it is adopted by the answer.

3. Testimony or exhibits that have been excluded or stricken, or that you have been instructed to disregard, are not evidence and must not be considered. In addition, some testimony and exhibits have been received only for a limited purpose; where I have given a limiting instruction, you must follow it.

4. Anything you may have seen or heard when the Court was not in session is not evidence.

4.

Evidence may be direct or circumstantial. Direct evidence is direct proof of a fact, such as testimony by a witness about what that witness personally saw or heard, or did. Circumstantial evidence is proof of one or more facts from which you could find another fact. By way of example, if you wake up in the morning and see that the sidewalk is wet, you may find from that fact that it rained during the night. However, other evidence, such as a turned-on garden hose, may explain the presence of water on the sidewalk. Therefore, before you decide that a fact has been proved by circumstantial evidence, you must consider all the evidence in the light of reason, experience and common sense. You should consider both kinds of evidence. The law makes no distinction between the weight to be given to either direct or circumstantial evidence. It is for you to decide how much weight to give to any evidence.

5.

In deciding the facts in this case, you may have to decide which testimony to believe and which testimony not to believe. You may believe everything a

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witness says, or part of it or none of it. In considering the testimony of any witness, you may take into account:

1. The opportunity and ability of the witness to see or hear or know the things testified to;

2. The witness’ memory;

3. The witness’ manner while testifying;

4. The witness’ interest in the outcome of the case and any bias or prejudice;

5. Whether other evidence contradicted the witness’ testimony;

6. The reasonableness of the witness’ testimony in light of all the evidence; and

7. Any other factors that bear on believability.

6.

You are not required to decide any issue according to the testimony of a number of witnesses, which does not convince you, as against the testimony of a smaller number or other evidence, which is more convincing to you. The testimony of one witness worthy of belief is sufficient to prove any fact. This does not mean that you are free to disregard the testimony of any witness merely from caprice or prejudice, or from a desire to favor either side. It does mean that you must not decide anything by simply counting the number of witnesses who have testified on the opposing sides. The test is not the number of witnesses but the convincing force of the evidence. You should base your decision on all of the evidence regardless of which party presented it.

7.

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A witness may be discredited or impeached by contradictory evidence or by evidence that, at some other time, the witness has said or done something or has failed to say or do something that is inconsistent with the witness’ present testimony. If you believe any witness has been impeached and thus discredited, you may give the testimony of that witness such credibility, if any, you think it deserves.

8.

Discrepancies in a witness’ testimony or between a witness’ testimony and that of other witnesses do not necessarily mean that such witness should be discredited. Inability to recall and innocent misrecollection are common. Two persons witnessing an incident or a transaction sometimes will see or hear it differently. Whether a discrepancy pertains to an important matter or only to something trivial should be considered by you.

However, a witness willfully false in one part of his or her testimony is to be distrusted in others. You may reject the entire testimony of a witness who willfully has testified falsely on a material point, unless, from all the evidence, you believe that the probability of truth favors his or her testimony in other particulars.

9.

In determining what inferences to draw from evidence you may consider, among other things, a party’s failure to explain or deny such evidence.

10.

Certain charts and summaries have been received into evidence. Charts and summaries are only as good as the underlying supporting material. You should, therefore, give them only such weight as you think the underlying material deserves.

11.

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Now I will address the burden of proof. In this case, the preponderance of the evidence standard applies on all sides, so whoever has the burden of proof on an issue must carry that issue by a preponderance of the evidence. When a party has the burden of proof on any claim by a preponderance of the evidence, it means you must be persuaded by the evidence that the claim is more probably true than not true. To put it differently, if you were to put the evidence favoring a plaintiff and the evidence favoring a defendant on opposite sides of a scale, the party with the burden of proof on the issue would have to make the scale tip somewhat toward its side. If the party fails to meet this burden, then the party with the burden of proof loses on the issue. Preponderance of the evidence basically means “more likely than not.”

12.

On any claim, if you find that plaintiff carried its burden of proof as to each element of a particular claim, your verdict should be for plaintiff on that claim. If you find that plaintiff did not carry its burden of proof as to each element, you must find against plaintiff on that claim. This same principle also applies to defendants on claims for which it has the burden of proof.

13.

I will now turn to the law that applies to this case. Oracle seeks damages against Google for alleged copyright infringement. Google denies infringing any such copyright material and asserts that any use by it of copyrighted material was protected, among other things, by a defense called “fair use,” which will be explained below. To the extent that you find liability in this phase, we will consider the extent of damages in the third phase of the trial. Now, I will give you an overview of copyright law in general. Then I will give you a summary of the claims and defenses at issue in this case. After that I will give you a further statement of the copyright law to help you in resolving the claims and defenses.

14.

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By federal statute, copyright is an exclusive right to copy a work, a right that lasts for 95 years from the date of publication. This right to copy includes the exclusive rights to:

1. Make additional copies or otherwise reproduce the copyrighted work or to license others to do so;

2. Recast, transform, adapt the work, that is, prepare derivative works based upon the copyrighted work;

3. Distribute copies of the copyrighted work to the public by sale; and

4. Display publicly a copyrighted work.

It is the owner of a copyright who may exercise these exclusive rights to copy. Even though someone may acquire a copy of the copyrighted work, such as a book from a bookstore, for example, the copyright owner retains rights to control the making of copies of the work. The term “owner” includes the author of the work or someone who has purchased the copyright. An owner may sue for copyright infringement.

15.

Copyright automatically exists in a work the moment it is fixed in any tangible medium of expression, such as putting pen to paper. The owner of the copyright may then register the copyright by delivering to the Copyright Office of the Library of Congress a copy of the copyrighted work and applying via a registration form, after which the Copyright Office will either allow or disallow the application. By way of examples, copyrighted works can include

1. Literary works like books, periodicals and, of particular interest here, operating manuals;

2. Musical works;

3. Photographs and drawings;

4. Motion pictures;

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5. Computer programs, also of particular interest here.

Only that part of the works comprised of original works of authorship fixed in any tangible medium of expression from which it can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device can be protected by copyright. To take examples, words can be fixed on paper, and a computer program can be fixed in the memory of a mobile phone.

16.

As stated, the owner of a copyright has the exclusive right to make copies of all of part of the copyrighted work. If someone else does so without consent from the owner, then there is infringement (except in certain circumstances I will describe below).

17.

The copyright confers ownership over particular the expression of ideas in a work but it never confers ownership over ideas themselves. For example, if a book describes a strategy for playing a card game, the copyright prevents anyone (but the owner) from duplicating the book itself but everyone is still free to read the book and to use the strategy, for the idea set forth in the book, that is the strategy, is not protected by copyright. And, everyone is entitled to write their own book about the same game and the same strategy so long as they do not plagiarize the earlier book.

Another statutory limitation on the scope of a copyright is that copyright never protects any procedure, process, system, method of operation, concept, principle, or discovery. Possibly such things can be claimed under the patent system or by trade secret laws but they may not be claimed by copyright. Again, the main point is that the copyright protects the particular expression composed by the author.

18.

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I will now turn to the claims in this case. Oracle claims Google has infringed its copyrights in two registered works, namely, “Java Standard Edition, Version 1.4” (TX 464) and “Java 2 Standard Edition, Version 5.0” (TX 475), and the application leading to those registrations appear at TX 3529 and 3530. The registered copyrights generally cover the compilable code and documentation for the Java API packages. The main issues you must decide concern these two general types of work contained therein, namely “compilable code” and “documentation.” As used in these instructions and the Special Verdict Form, the term API “compilable code” refers to method and class names, declarations, definitions, organization, parameters, and implementation (as well as the resulting object code) implementing the various API functions. In this connection, the source code that implements the function of the API is called the “implementation.” The “compilable code” does not include the English-language comments you have heard about. Even though such comments are embedded in the software program, these English-language comments do not get compiled and are not used by the computer to perform API functions. Instead, the English-language comments are part of what I will call the API “documentation,” a term that encompasses all of the English-language comments. The term “API documentation” includes all content — including English-language comments as well as method and class names, declarations, definitions, organization, and parameters — in the reference document for programmers. Again, please remember that although these English-language comments appear in the software program listing, they can be extracted for handy reference in the guides made available to programmers. So, I will be referring to the “API compilable code” and the “API documentation.”

19.

The copyrighted Java platform has more than 37 API packages and so does the accused Android platform. As for the 37 API packages that overlap,

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Google agrees that it uses the same names and declarations but contends that its line-by-line implementations are different (with the exception of the rangeCheck lines), a contention not disputed by Oracle. Instead, Oracle contends that Google copied the structure, sequence and organization of the compilable code for the 37 API packages, individually as 37 separate packages and collectively as a single group. Google agrees that the structure, sequence and organization of the 37 accused API packages on Android is substantially the same as the structure, sequence and organization of the corresponding 37 API packages in Java. Google states that the elements it has used are either not copyrightable in the first place or its use was protected by a statutory rule permitting the public, including competitors, to make “fair use” of copyrighted works. It is my job to decide whether or not the copyrights on the computer programs do or do not extend to protect the structure, sequence and organization of the code of the programs. I will not be able to decide this question until after your verdict. For purposes of your deliberations, you must assume that the copyrights do cover the structure, sequence and organization of the code.

20.

I have, however, decided that the copyrights do not cover the names given to files or packages because under the law, names cannot be copyrighted. This includes the name “java” as well. Although “Java” has been registered as a trademark, the name java cannot be copyrighted, nor can any other name, whether one or two words or longer in length. Except for the names, you must take for granted that the structure, sequence, and organization of the programs is protected under copyright law.

21.

With respect to the API documentation, Oracle contends Google copied the English-language comments in the copyrighted Java work and moved them over to the documentation for the 37 API packages in Android. Google agrees

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that there are similarities in the language but, pointing to differences as well, denies that its documentation is a copy of the Java documentation. Google further asserts that the similarities are largely the result of the fact that each API carries out the same functions in both systems. Google again asserts the statutory defense of fair use. For the API documentation issue, you do not need to be concerned with structure, sequence, and organization, a concept that applies only to the compilable code part of the case.

22.

The issues just discussed center on the API packages. Apart from the API issues, I will now describe a shorter list of specific items that Oracle contends were copied verbatim by Google. Specifically, Oracle contends that Google copied verbatim certain lines of compilable code, namely the rangeCheck method in two files, other source code as compiled into object code in seven “Impl.Java” files and one other file and, finally, certain English-language comments in two other files. Google responds that any verbatim copying by it was excusable under the law as “de minimis.” For purposes of this group of infringement contentions, the structure, sequence and organization is irrelevant and the comparison must be made to the work as a whole as defined in a moment.

23.

Now, I will turn to the more detailed law. In order to prove infringement, Oracle must prove by a preponderance of the evidence that Oracle’s work is original and that it is the owner of the part of the work allegedly copied.

24.

NOTE: COUNSEL SHALL PROVIDE AN AGREED-ON PARAGRAPH RE OWNERSHIP.

25.

To prove infringement, Oracle must also prove that Google copied all or a protected part of a copyrighted work owned by it. There are two ways to prove

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copying. One is by proof of direct copying, as where the copyrighted work itself is used to duplicate or restate the same words and symbols on a fresh page.

The second way is via circumstantial evidence by showing the accused had access to the copyrighted passages in question and that there are substantial similarities or, in certain instances, virtual identity between copyrighted work and the accused work. The virtual identity test is used when the subject under consideration is a narrow one and we would expect certain terms and phrases to be used. This is in contrast to a literary work in which there will be a broad range of creativity, in which case it is necessary only to prove substantial similarity. In this trial, you should use the substantial similarity test for all such comparison except for those involving the API documentation, in which case you should use the virtual identity test. This is because the documentation for the API packages describe narrow technical functions and it is to be expected that the same words and phrases would be more likely used.

26.

NOTE: COUNSEL SHALL PROVIDE AN AGREED-ON PARAGRAPH RE THE OBJECTIVE-SUBJECTIVE TEST.

27.

Copying that is considered “de minimis” is not actionable. A copying is “de minimis” only if it is so meager and fragmentary that compared to the work as a whole the average audience would not recognize the appropriation. You must consider the qualitative and quantitative significance of the copied portions in relation to the work as a whole. The burden is on Oracle to prove that the copied material was not de minimis.

28.

Now, I will explain the law governing Google’s defense based on the statutory right of the public to make “fair use” of copyrighted works. The public may use any copyrighted work in a reasonable way under the circumstances

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without the consent of the copyright owner if it would advance the public interest. Such use of a copyrighted work is called a “fair use.” The owner of a copyright cannot prevent others from making a fair use of the owner’s copyrighted work.

Google has the burden of proving this defense by a preponderance of the evidence.

In determining whether the use made of the work was fair, you should consider the following factors:

1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

2. The nature of the copyrighted work;

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

4. The effect of the use upon the potential market for or value of the copyrighted work.

If you find that Google proved by a preponderance of the evidence that Google made a fair use of Oracle’s work, your verdict should be for Google on that question in the Special Verdict Form.

29.

With respect to the infringement issues concerning the rangeCheck and other similar files, Google admits that the accused lines of code and comments came from the copyrighted material but contends that the amounts involved were so negligible as to be de minimis and thus should be excused.

30.

In your deliberations, you will need to make certain comparisons to the “work as a whole.” It is my job to isolate and identify for you the “work as a whole.” You must take my identification as controlling if and when this comes up in your deliberations. This issue arises when (1) comparing Oracle’s work and

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Android’s work for similarity under both substantial similarity and virtual identity standards, (2) deciding whether Google copied only a de minimis amount of Oracle’s work, and (3) evaluating the third factor of fair use: the amount and substantiality of the portion used in relation to the copyrighted work as a whole.

Although you have seen that the copyright registrations cover a large volume of work, the entire registered work is not the work as a whole for these purposes. This may seem odd to you, so let me give an example. An entire magazine issue may be copyrighted but a specific article advertisement or photograph may be the relevant work as a whole depending on what was allegedly copied.

For purposes of this case, I have determined that the “work as a whole” means the following: For purposes of Question No. 1 in the Special Verdict Form, the “work as a whole” constitutes all of the compilable code associated with all of the API packages (not just the 37) in the registered work. This excludes the virtual machine. For purposes of the first two subquestions of Question No. 2 in the Special Verdict Form, the “work as a whole” is, for each API package, the compilable code for that individual API package. For purposes of the last two subquestions of Question No. 2 in the Special Verdict Form, the “work as a whole” means the contents (including name, declaration and English-language comments) for that individual API package. For purposes of Question No. 3, the “work as a whole” is the compilable code for the individual file except for the last two files listed in Question No. 3, in which case the “work as a whole” is the compilable code and all the English-language comments in the same file.

31.

Google had no right to copy any elements of the Java platform protected by copyright unless it had a written license to do so from Sun or Oracle or had a written sub-license to do so from a third party who had a license from Sun or

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Oracle conferring the right to grant such sub-licenses. The burden is on Google to prove it had any such license or sublicense rights. Put differently, if Google claims a license from a third party, Google has the burden to prove that the third party itself had the proper right and authority from Sun or Oracle as to any of the copyrights owned by Sun or Oracle and used by Google, for Google could acquire from the third party no greater right than the third party had in the first place. Similarly, if Google contends that Oracle or Sun had dedicated elements protected by copyright to the public domain for free and open use, the burden is on Google to prove such a public dedication.

32.

If you find Google liable on any copyright claim, then Oracle further contends that Google should be found liable for vicarious liability. If you find that any third-party mobile device manufacturers or end-users infringed Oracle’s copyright in the works at issue, you may consider the Oracle’s claim that Google vicariously infringed that copyright. Oracle has the burden of proving each of the following by a preponderance of the evidence:

1. Google profited directly from the infringing activity of third-party mobile device manufacturers or end-users;

2. Google had the right and ability to supervise the infringing activity of third-party mobile device manufacturers or endusers

If you find that Oracle proved each of these elements, your verdict should be for Oracle if you also find that third-party mobile device manufacturers or end-users infringed Oracle’s copyright. If, on the other hand, Oracle has failed to prove any of these elements, your verdict should be for Google.

33.

If you find Google liable on any copyright claim, then Oracle also further contends that Oracle should be found liable for contributing liability. A

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defendant may be liable for copyright infringement engaged in by another if it knew or had reason to know of the infringing activity and intentionally induces that infringing activity.

If you find that third-party mobile device manufacturers or end-users infringed Oracle’s copyright in the works at issue, you may proceed to consider Oracle’s claim that Google contributorily infringed that copyright. To prove copyright infringement, Oracle must prove both of the following elements by a preponderance of the evidence:

1. Google knew or had reason to known of the infringing activity of third-party mobile device manufacturers or endusers ; and

2. Google intentionally induced third-party mobile device manufacturers’ or end-users’ infringing activity.

If you find that third-party mobile device manufacturers or end-users infringed Oracle’s copyright and you also find that Oracle has proved both of these elements, your verdict should be for Oracle. If, on the other hand, Oracle has failed to prove either or both of these elements, your verdict should be for Google.

34.

When you begin your deliberations, you should elect one member of the jury as your foreperson. That person will preside over the deliberations and speak for you here in court. I recommend that you select a foreperson who will be good at leading a fair and balanced discussion of the evidence and the issues.

You will then discuss the case with your fellow jurors to reach agreement if you can do so. Your verdict as to each claim and as to damages, if any, must be unanimous. Each of you must decide the case for yourself, but you should do so only after you have considered all of the evidence, discussed it fully with the other jurors, and listened to the views of your fellow jurors.

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Do not be afraid to change your opinion if the discussion persuades you that you should. Do not come to a decision simply because other jurors think it is right. It is important that you attempt to reach a unanimous verdict but, of course, only if each of you can do so after having made your own conscientious decision. Do not change an honest belief about the weight and effect of the evidence simply to reach a verdict.

I will give you a special verdict form to guide your deliberations.

35.

Some of you have taken notes during the trial. Whether or not you took notes, you should rely on your own memory of what was said. Notes are only to assist your memory. You should not be overly influenced by the notes. When you go into the jury room, the Clerk will bring in to you the trial exhibits received into evidence to be available for your deliberations. The Clerk will also provide you with an index to them.

36.

As I noted before the trial began, when you retire to the jury room to deliberate, you will have with you the following things:

1. All of the exhibits received into evidence;

2. An index of the exhibits if the lawyers are able to stipulate as to its form;

3. A work copy of these jury instructions for each of you;

4. A work copy of the verdict form for each of you; and

5. An official verdict form.

When you recess at the end of a day, please place your work materials in the brown envelope provided and cover up any easels with your work notes so that if my staff needs to go into the jury room, they will not even inadvertently see any of your work in progress.

37.

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A United States Marshal will be outside the jury-room door during your deliberations. If it becomes necessary during your deliberations to communicate with me, you may send a note through the marshal, signed by your foreperson or by one or more members of the jury. No member of the jury should ever attempt to communicate with me except by a signed writing, and I will respond to the jury concerning the case only in writing or here in open court. If you send out a question, I will consult with the lawyers before answering it, which may take some time. You may continue your deliberations while waiting for the answer to any question. Remember that you are not to tell anyone — including me — how the jury stands, numerically or otherwise, until after you have reached a unanimous verdict or have been discharged. Do not disclose any vote count in any note to the Court.

38.

Now that you are going to begin your deliberations, however, you must stay until 4:00 P.M. You may, of course, take a reasonable lunch break. The Court recommends that you continue to start your deliberations by 8:00 A.M. If you do not reach a verdict by the end of today, then you will resume your deliberations tomorrow and thereafter.

It is very important that you let the Clerk know in advance what hours you will be deliberating so that the lawyers may be present in the courthouse at any time the jury is deliberating.

39.

You may only deliberate when all of you are together. This means, for instance, that in the mornings before everyone has arrived or when someone steps out of the jury room to go to the restroom, you may not discuss the case. As well, the admonition that you are not to speak to anyone outside the jury room about this case still applies during your deliberation.

40.

20

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After you have reached a unanimous agreement on a verdict, your foreperson will fill in, date and sign the verdict form and advise the Court that you have reached a verdict. The foreperson should hold onto the filled-in verdict form and bring it into the courtroom when the jury returns the verdict. Thank you for your careful attention. The case is now in your hands. You may now retire to the jury room and begin your deliberations.

Dated: [ONLY SIGN AND DATE AFTER
INSTRUCTION READ TO THE JURY]

_____________________________
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

21

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994-1

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

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

No. C 10-03561 WHA

SPECIAL VERDICT FORM

YOUR ANSWER MUST BE UNANIMOUS.

1. As to all the compilable code for the 37 Java API packages in question taken as a group:

A. Has Oracle proven that Google has infringed the overall structure, sequence and organization of a copyrighted work owned by Oracle?

Yes __________ No __________

(IF YOU ANSWER “NO” TO QUESTION 1A, THEN SKIP TO QUESTION NO. 2.)

B. If so, has Google proven that its use of the overall structure, sequence and organization constituted “fair use”?

Yes __________ No __________

NOTE: THE 37 API PACKAGES IN QUESTION ARE LISTED IN QUESTION NO. 2.

---

2. As to each of the 37 Java API packages listed below, considered individually:

A. Has Oracle proven that Google has infringed the structure, sequence and organization of the compilable code for each individual API package? Please indicate your answer to each in the first column below.

B. If, in column 1 your answer is “yes,” then state in the second column whether or not Google has proven that its use constituted “fair use” (as defined in the instructions). If you answered “no” in column 1, you should leave the second column blank or enter “NA” for “not applicable.”

C. Has Oracle proven that Google copied the documentation for the individual API package? Please indicate your answer as to each in the third column below.

D. If, in column 3, your answer is “yes,” then state in the fourth column whether or not Google has proven that its use constituted “fair use” (as defined in the instructions). If you answered “no” in column 3, you should leave the fourth column blank or enter “NA” for “not applicable.”

(IN ANSWERING THE FOUR ABOVE SUB-QUESTIONS, PLEASE REMEMBER THE
DISTINCTION BETWEEN “COMPILABLE CODE” AND “DOCUMENTATION,” AS DEFINED IN THE
INSTRUCTIONS, AS WELL AS THE “WORK AS A WHOLE” ALSO DEFINED IN THE INSTRUCTIONS.)

	API PACKAGE COMPILALE CODE		API PACKAGE DOCUMENTATION
	Copying Proven? (Yes or No)	Fair Use Proven? (Yes, No or NA)	Copying Proven? (Yes or No)	Fair Use Proven? Yes, No or NA)
java.awt.font	__________	__________	__________	__________
java.beans	__________	__________	__________	__________
java.io	__________	__________	__________	__________
java.lang	__________	__________	__________	__________
java.lang.annotation	__________	__________	__________	__________
java.lang.ref	__________	__________	__________	__________

2

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	API PACKAGE COMPILALE CODE		API PACKAGE DOCUMENTATION
	Copying Proven? (Yes or No)	Fair Use Proven? (Yes, No or NA)	Copying Proven? (Yes or No)	Fair Use Proven? Yes, No or NA)
java.lang.reflect	__________	__________	__________	__________
java.net	__________	__________	__________	__________
java.nio	__________	__________	__________	__________
java.nio.channels	__________	__________	__________	__________
java.nio.channels.spi	__________	__________	__________	__________
java.nio.charset	__________	__________	__________	__________
java.nio.charset.spi	__________	__________	__________	__________
java.security	__________	__________	__________	__________
java.security.acl	__________	__________	__________	__________
java.security.cert	__________	__________	__________	__________
java.security.interfaces	__________	__________	__________	__________
java.security.spec	__________	__________	__________	__________
java.security.sql	__________	__________	__________	__________
java.text	__________	__________	__________	__________
java.util	__________	__________	__________	__________
java.util.jar	__________	__________	__________	__________
java.util.logging	__________	__________	__________	__________
java.util.prefs	__________	__________	__________	__________
java.util.regex	__________	__________	__________	__________
java.util.zip	__________	__________	__________	__________
javax.crypto	__________	__________	__________	__________
javax.crypto.interfaces	__________	__________	__________	__________
javax.crypto.spec	__________	__________	__________	__________
javax.net	__________	__________	__________	__________
javax.net.ssl	__________	__________	__________	__________
javax.security.auth	__________	__________	__________	__________
javax.security.auth.callback	__________	__________	__________	__________
javax.security.auth.login	__________	__________	__________	__________

3

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	API PACKAGE COMPILALE CODE		API PACKAGE DOCUMENTATION
	Copying Proven? (Yes or No)	Fair Use Proven? (Yes, No or NA)	Copying Proven? (Yes or No)	Fair Use Proven? Yes, No or NA)
javax.security.auth.x500	__________	__________	__________	__________
javax.security.cert	__________	__________	__________	__________
javax.sql	__________	__________	__________	__________

3. Has Google proven that its conceded use in Android of the following items was de minimis:

		Yes	No
A.	The rangeCheck method in TimSort.java and ComparableTimSort.Java	_______	_______
B.	Source code in eight “Impl.java files	_______	_______
C.	The English-language comments in CodeSourceTest.java and CollectionCertStoreParametriums Test.java	_______	_______

4. If you found in Questions 1, 2 or 3 that Google copied Oracle’s works and that the copying was not excused by fair use or de minimis, then answer the following questions:

A. Has Oracle proven that third-party mobile device manufacturers namely, _______________, _______________, _______________, _______________, _______________ infringed Oracle’s copyrights by copying or using Android software?

B. If you answered “yes” to 4(A), has Oracle proven that Google intentionally induced or materially contributed to the third-party infringement you found in Question No. 4(A)?

4

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C. If you answered “yes” to 4(A), has Oracle proven that Google vicariously infringed Oracle’s copyrights as a result of the third-party infringement you found in Question No. 4(A)?

Dated:

____________________________________
FOREPERSON

5

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996

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]
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-03561 WHA

GOOGLE INC.’S COMMENTS ON THE
COURT’S PROPOSED CHARGE TO THE
JURY

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

---

I. INTRODUCTION

Pursuant to the Court’s request, Google Inc. (“Google”) hereby identifies its three most pressing concerns with the Court’s Proposed Charge to the Jury [Dkt. No. 994]. First, instruction 28, which concerns fair use, inadequately explains the factors in the fair use test. Second, instruction 19, which concerns alleged infringement of the structure, sequence, and organization of the compilable code for the 37 API packages, does not instruct the jury to determine substantial similarity. Third, instruction 30, concerning the work as a whole, is incorrect both in that it identifies a different work as a whole for different questions, and in that it fails to identify the registered work, the J2SE platform, as the work as a whole. Google further objects to the extent that the Court did not adopt Google’s proposed jury instructions.

II. ARGUMENT

A. Instruction 28 – Fair Use

Google objects to the Court’s instruction 28 concerning fair use because it does not give the jury sufficient background to understand the fair use factors. In addition to some smaller changes that Google will raise at the charging conference, Google has four specific objections:

First, the jury should be instructed that the statutory factors are non-exclusive. Specifically, Google requests that, after listing the four factors, the Court add this further sentence: “You may consider whatever additional factors you believe are appropriate, on the facts of this case, to assist in your determination of whether Google’s use is a fair use.” Section 107 of the Copyright Act states that the factors to be considered “include” the four statutory factors. 17 US.C. § 107. But the “factors enumerated in the statute in the section are not meant to be exclusive: ‘[S]ince the doctrine is an equitable rule of reason, no generally applicable definition is possible, and each case raising the question must be decided on its own facts.’” Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 560 (1985) (quoting H.R. Rep. No. 94-1476, at 65 (1976)). Instead, “Section 107 requires a case-by-case determination whether a particular use is fair . . . .” Id.; see also 17 U.S.C. § 101 (“The terms ‘including’ and ‘such as’ are illustrative and not limitative.”).

Second, the jury should be instructed that the fair use factors must be weighed together,

1

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with no single factor being treated as dispositive. Specifically, Google requests that after the “additional factors” sentence discussed above, the Court add these further sentences: “All of the fair use factors must be weighed together. No single factor compels a conclusion of fair use or no fair use.” The Supreme Court has held that the factors cannot “be treated in isolation, one from another.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994). “All are to be explored, and the results weighed together, in light of the purposes of copyright.” Id. (citing Pierre N. Leval, Toward a Fair Use Standard, 103 HARV. L. REV. 1105, 1110-11 (1990)).

Third, the Court should instruct the jury that the first factor is “The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes, and including whether such work is transformative (meaning that it adds something new, with a further purpose or different character, altering the original with new expression, meaning, or message).” This is based on the Supreme Court’s explanation in Campbell:

The central purpose of this investigation [i.e. the first factor investigation] is to see, in Justice Story’s words, whether the new work merely “supersede[s] the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.”

510 U.S. at 579 (citations omitted).

Fourth, as to the second fair use factor, the Court should instruct the jury that it should consider the “nature of the copyrighted work, including whether the work is fictional or mostly functional or factual.” This explanation is drawn from the Ninth Circuit’s discussion of this factor in Sega Enters. Ltd. v. Accolade, Inc.:

The second statutory factor, the nature of the copyrighted work, reflects the fact that not all copyrighted works are entitled to the same level of protection. The protection established by the Copyright Act for original works of authorship does not extend to the ideas underlying a work or to the functional or factual aspects of the work. To the extent that a work is functional or factual, it may be copied, as may those expressive elements of the work that “must necessarily be used as incident to” expression of the underlying ideas, functional concepts, or facts.

977 F.2d 1510, 1524 (9th Cir. 1992) (citing 17 U.S.C. § 102(b) and Baker v. Selden, 101 U.S. 99 (1879)).

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B. Instruction 19 -- Infringement

Instruction 19, which concerns infringement of the structure, sequence, and organization of the compilable code for the 37 API packages, does not instruct the jury to determine substantial similarity. Google requests that after instructing the jury that “Google states that the elements it has used are either not copyrightable in the first place,” that the Court insert a clause stating Google’s position “that Google’s work and Oracle’s work are not substantially similar when compared as a whole”. Google has additional, smaller changes to this instruction, which it will raise at the charging conference.

C. Instruction 30 – Work as a Whole

The Court has identified four different works as a whole for different parts of the case. Google objects to this formulation for several reasons. The Court should instead instruct the jury that “the work as a whole for all purposes is the entire J2SE platform.”

First, there is no basis for using different works-as-a-whole for different questions. Across the three questions that involve the “work as a whole” concept, the Court asks the jury to apply four different works as a whole. This can only lead to confusion.

Second, as Google has argued previously, the work as a whole for all purposes is the entire J2SE platform, the work that Sun registered with the copyright office. See Google’s April 22, 2012 Copyright Liability Trial Brief, Dkt. No. 955, at 5-12; Google’s April 25 Copyright Brief, Dkt. No. 993, at 3-6. Indeed, not only is J2SE the sole work registered with the Copyright Office, it is the sole work that was pled in Oracle’s Complaint in this case. Am. Compl., Dkt. No. 36, ¶ 39 (“Google’s Android infringes Oracle America’s copyrights in the Java platform” (emphasis added)). As Google argued in its previous briefs, no case law exception applies to the ordinary rule that the registered work is the “work as a whole” for all purposes—substantial similarity, fair use, and de minimis.

Third, even assuming something smaller than J2SE could be considered the “work as a whole,” the trial record does not support a smaller work (or multiple smaller works) on the facts of this case. Oracle claims that it does not allow subsetting of the API libraries. RT 373:18-374:9 (Kurian). Moreover, the APIs depend on each other and are interwoven. See RT 779:13-

3

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780:18 (Bloch). There is no evidence in support of any work smaller than the work as a whole.

Allowing Oracle to argue for a jury verdict based on a work—or multiple works—smaller than the entire J2SE platform as a whole would allow Oracle to improperly shift its definition of the work as a whole in order to suit its individual claims as they have evolved. See NXIVM Corp. v. The Ross Institute, 364 F.3d 471, 481 (2d Cir. 2004) (“If plaintiffs’ argument were accepted by courts — and, not surprisingly, plaintiffs cite no authority to support it — the third factor could depend ultimately on a plaintiff’s cleverness in obtaining copyright protection for the smallest possible unit of what would otherwise be a series of such units intended as a unitary work.”).

If the Court adopts Google’s proposal, this would also require changing instruction 19 at page 12, line 5 to remove the phrase “individually as 37 separate packages.”

III. CONCLUSION

Google respectfully requests that the Court adopt the changes to the proposed jury charge set forth above. Consistent with the Court’s Order [Dkt. No. 994], Google reserves the remainder of its objections to the proposed charge to the jury, and will raise those additional issues at the charging conference.

Dated: April 26, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

4

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997

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.>br> Defendant.

Case No. CV 10-03561 WHA

ORACLE’S COMMENTS
REGARDING THE COURT’S
PROPOSED JURY INSTRUCTIONS
(PHASE ONE)

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

---

At the Court’s request, Oracle America, Inc. (“Oracle”) discusses below the three issues of greatest concern regarding the Court’s proposed jury instructions distributed on April 26, 2012. Oracle may raise additional items regarding the jury instructions and the Court’s special verdict form at the charging conference on Aprl 27, 2012.

I. THE JURY SHOULD BE INSTRUCTED THAT THE STRUCTURE,
SEQUENCE, AND ORGANIZATION OF THE 37 JAVA API PACKAGES
AS EXPRESSED IN THE API DOCUMENTATION IS ALSO AT ISSUE

Oracle objects to the Court’s Instruction No. 21 that “For the API documentation issue, you do not need to be concerned with structure, sequence, and organization, a concept that applies only to the compilable code part of the case.” (ECF No. 994 at 12-13.) The structure, sequence, and organization (“SSO”) of the API packages exists within the API documentation as well and Google should be liable for copying it.¹ It would be error to instruct the jury to disregard it.

Dr. Reinhold, Chief Java Architect at Oracle, explained that the structure expressed in the API documentation is the same as the structure within the compilable code because the code is run through the Java Documentation Extractor (or “Javadoc”) to pull out the structure and English language comments, and produce a webpage that reflects the same SSO of the API that is in the code. (RT at 606:14-608:3 (Reinhold); TX 1046 at p.19 of 24.)

Now, we also run that source file through another tool called the Java Documentation Extractor or JavaDoc for short. That tool processes this file. It pulls out the structure, the names. It ignores the actual instructions in the methods. It also pulls out the English prose, which is in comments in this file, and produces the web page that we have been looking at already.

__________________________________

¹ The Court has acknowledged the importance of the structure, sequence, and organization expressed within the API documentation, explaining:

The specification for a class library—much like the specification for an automobile—is an item of detailed documentation that explains the organization and function of all packages, classes, methods, and data fields in the library. The class library specification for a given software platform, sometimes called the ‘API Specification’ is an important reference item for programmers.”

(ECF No. 433 at 3.)

1

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So in a very real sense this is software that contains its own blueprint. All right. An API is a blueprint, well, the blueprint is in the source file along with all of the instructions that actually wind up in the class library.

(Id.) In response to the Court’s questions, Dr. Reinhold explained that, “In terms of the actual text, the words [in the documentation] are copied over, the API structure is copied over from the source file, and all of the words describing each method or field are also copied over.” (RT at 609:1-9.) (See also RT 1169:8-15 (Lee agreeing that like Java documentation, Android documentation was “created by a tool that actually reads portions of the source code and then places it in a kind of template that’s available on the web as a source of documentation.”)

Regardless of whether the SSO is expressed in the compilable code or the API documentation, it is protectable expression in both cases. In Am. Dental Ass’n v. Delta Dental Plans Ass’n, Judge Easterbrook found that the structure of dental code which organized various dental procedures into a hierarchy represented in three formats – numerically, by short description, and by long description – was equally protectable regardless of which format was copied. 126 F.3d 977, 979, 980-981 (7th Cir. 1997) (“The long description is part of the copyrighted work, and original long descriptions make the work as a whole copyrightable. But we think that even the short description and the number are original works of authorship.”). The infringer copied “most of the numbering system and short descriptions from the ADA’s Code,” and the Court did not distinguish one format from the other. It explained that taxonomies, such as the West Key Number System and the dental code, are not “systems” and are protectable as expression. 126 F.3d at 978 (7th Cir. 1997) (noting that “[b]lueprints for large buildings (more committee work), instruction manuals for repairing automobiles, used car value guides, dictionaries, encyclopedias, maps” are protectable original expression).² Analogously, if the SSO of the 37 Java API packages is protectable as expressed in source code, it is also protectable as

________________________________

² The court explained that “Facts do not supply their own principles of organization. Classification is a creative endeavor. Butterflies may be grouped by their color, or the shape of their wings, or their feeding or breeding habits, or their habitats, or the attributes of their caterpillars, or the sequence of their DNA; each scheme of classification could be expressed in multiple ways.” Id. at 979.

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expressed in the API documentation. Far less creative structures have been found subject to copyright protection in this Circuit. See, e.g., CDN Inc. v. Kapes, 197 F.3d 1256, 1262 (9th Cir. 1999) (prices in guide for collectible coins); Practice Mmgt. Info. Corp. v. Am. Med. Ass’n, 877 F. Supp. 1386, 1390-92 (C.D. Cal. 1994), aff’d in relevant part, 121 F.3d 516 (9th Cir. 1997) (numerical codes for medical procedures); Jacobsen v. Katzer, 2009 U.S. Dist. LEXIS 115204, at *9-10 (N.D. Cal. Dec. 10, 2009) (text files reflecting decoder information from model railroad manufacturers).

The trial evidence shows that Google copied the English language descriptions of API elements within the API documentation into Android. (See RT 1169-1176 (Lee comparing the wording between Java and Android documentation). But Oracle’s claim should not be limited to that form of copying. Oracle is also entitled to submit to the jury that the SSO expressed within the API documentation was copied, in addition to the English language descriptions. (RT 1174:1- 16 (Lee) (“Q. And the structure of the documentation is identical; correct, sir? And if you think of it as an outline, the outline would match identically; correct, sir? A. Yes. Q. And that's because on the Android side you're documenting the same application programming interfaces as were documented on the Java side; correct, sir? 16 A. Yes.”.)

On a related point, in Instruction No. 25, Oracle disagrees that the jury should be instructed to apply the “virtually identical” standard to API documentation “because the documentation for the API packages describe narrow technical functions and it is to be expected that the same words and phrases would be more likely used.” The structure, sequence, and organization of the documentation involves equally as many design choices as the implementation does. Copying the SSO from the API documentation should be subject to the same substantial similarity test used for copying the compilable code. See Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1176 (9th Cir. 1989) (applying substantial similarity standard to copied non-literal elements of computer software).

3

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II. THE JURY SHOULD BE INSTRUCTED THAT THE NAMES OF JAVA
API PACKAGE ELEMENTS ARE PROTECTABLE AS PART OF THE
STRUCTURE, SEQUENCE, AND ORGANIZATION OF THOSE
PACKAGES

The Court’s Proposed Instruction No. 20 states that “copyrights do not cover the names given to files or packages because under the law, names cannot be copyrighted.” This sentence tracks the Court’s earlier ruling that individual names are not protectable by copyright. (See ECF No. 433 at 7-8.) Instruction No. 20 does not, however, reflect the issue that the Court left open regarding names – “the possibility that the selection or arrangement of those names is subject to copyright protection.” (Id. at 8.) As currently drafted, the instruction omits the concept that names may be protectable as part of the SSO of the 37 Java API packages. Instruction No. 20 may be misinterpreted by the jury as a directive to disregard the names completely, which would make it difficult or impossible to assess the SSO of the 37 API packages of which the names are an integral part. To clarify this point, Oracle proposes adding at least one sentence to Instruction No. 20: “While individual names are not protectable on a standalone basis, the names are protectable as part of the structure, sequence, and organization of the 37 API packages.”

The Court’s prior ruling that names are not protectable was limited to individual names or short phrases taken on a standalone basis. (ECF No. 433 at 7-8 (citing Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 n.7 (9th Cir. 1992) (“Sega’s security code is of such de minimis length that it is probably unprotected under the words and short phrases doctrine”)).) The Court expressly acknowledged that “[c]opyright protection for the selection and arrangement of elements within a work is a separate question from whether the elements themselves are protected by copyright.” (Id. (citing Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1147 (9th Cir. 2003) (“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 combination constitutes an original work of authorship”)).) The law is clear that elements that are unprotectable on an individual basis may be combined into a protectable whole if their selection and arrangement is sufficiently original. See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 362 (1991) (“[t]he question that remains is whether

4

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Rural selected, coordinated, or arranged these uncopyrightable facts in an original way. As mentioned, originality is not a stringent standard . . .”). See also Merchant Transaction Sys. v. Nelcela, Inc., 2009 U.S. Dist. LEXIS 25663, at *49 (D. Ariz. 2009) (“the Court cannot conclude that no reasonable juror could not find creativity in the selection and arrangement of the Lexcel software’s field names, let alone the remaining allegedly similar non-literal elements of the Lexcel software, sufficient to render the compilation original enough for protection.”).

In this case, the SSO of the 37 API packages is manifested, in part, in a hierarchy of named packages, classes, methods, and other elements such as interfaces and fields. Dr. Reinhold, Chief Java Architect at Oracle, provided the following example showing the hierarchy of some of the classes in the “java.nio.channels” package:

java.nio.channels

- Object

- Channels
- FileLock
- Pipe
- SelectionKey
- Selection
- AbstractInterruptibleChannel

- FileChannel
- SelectableChannel

- AbstractSelectableChannel

- DatagramChannel
- ServerSocketChannel
- SocketChannel

(RT at 594:2-596:22 (Reinhold); TX 1046 at slide 9 (p.11 of 24).) To meaningfully evaluate the SSO of the API packages, the jury will need to consider the named elements as part of the structure. Without the named elements, the upper portions of the hierarchy (everything above the method declarations) would be incomprehensible:

____.___.________

- Object

- ________
- ________
- ____

5

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- ________________
____________________________

- ___________
- _________________

- ________________________

- _______________
- ___________________
- _____________

This cannot be the intended result of the Court’s earlier ruling regarding names. The method declarations themselves consist of words and short phrases that might not be copyrightable in isolation (e.g., “public static int max (int arg1, int arg2)”), yet this does not mean that the declarations are unprotectable. (RT at 786:1-787:8 (Bloch).)³ While the Court ruled that individual names are unprotectable, names in the context of the SSO are part of what is protectable. Instruction No. 20 should reflect that distinction, as suggested by Oracle’s proposed edits.

III. THE JURY SHOULD BE GIVEN MORE GUIDANCE ON THE
ELEMENTS OF GOOGLE’S FAIR USE DEFENSE

The Court’s Instruction No. 28 regarding Google’s fair use defense should be supplemented to provide additional guidance to the jury on how each of the statutory factors is to be applied. Factors 1, 3, and 4 currently provide no indication as to whether those elements weigh for or against fair use, and factor 2 is ambiguous without further explanation. To provide clarity, Oracle proposes a few additions to this instruction:

First, to help orient the jury to the concept of “fair use,” the instruction should include the following preamble language from Section 107:

[F]air use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.

17 U.S.C. § 107. This language provides useful examples of the types of activities that may constitute fair use of a copyrighted work.

_____________________________

³ Dr. Bloch acknowledged that the selection of names for API elements is important. (RT at 744:16-745:20.)

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Second, Oracle proposes the following additions to the fair use factors in Instruction No. 28, drawn from the caselaw cited in the Model Instructions (NINTH CIRCUIT MANUAL OF MODEL JURY INSTRUCTIONS – CIVIL No. 17.18 Comment (2007)):

Factor 1: Oracle proposes adding –“Commercial use weighs against a finding of fair use.” See Elvis Presley Enters., Inc. v Passport Video, 349 F.3d 622, 627 (9th Cir. 2003) (“the fact that a new use is commercial as opposed to non-profit weighs against a finding of fair use”).

Factor 2: Oracle proposes adding – “If the original copyrighted work is creative in nature, this cuts against a finding of fair use.” See A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1015 (9th Cir. 2001) (“[w]orks that are creative in nature are ‘closer to the core of intended copyright protection’ than are more fact-based works”).

Factor 3: Oracle proposes adding – “The greater the quantity and quality of the work taken, the less that fair use applies. Copying may not be excused merely because it is insubstantial with respect to the infringing work.” See Elvis, 349 F.3d at 630 (“[C]opying may not be excused merely because it is insubstantial with respect to the infringing work.”).

Factor 4: Oracle proposes adding – “When the defendant’s use of the copyrighted work competes with the copyrighted work, then it is less likely a fair use.” Triad Sys. Corp. v. Se. Express Co., 64 F.3d 1330, 1337 (9th Cir. 1995) (defendant’s use of plaintiff’s software in providing a competing service was not a fair use).

In sum, Oracle’s neutral and accurate explanations will be helpful to the jury in analyzing the four factors.

Dated: April 26, 2012

MORRISON & FOERSTER LLP

/s/ Michael A. Jacobs

Attorneys for Plaintiff
ORACLE AMERICA, INC.

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