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Oracle v. Google - More Weekend Filings - The Most Recent Briefs on Copyright Liability - UPDATED ~mw
Monday, April 23 2012 @ 11:50 AM EDT

There were a lot of documents filed in the case over the weekend. First, Judge Alsup issued the formal order covering the briefs due on Sunday and clarified what he was looking for (951 [PDF; Text]):

1. Do any of the Sun compiled lines in the 37 APIs call upon part or all of another API as a step?

2. If so, do the accused APIs likewise call upon the same other API? That is, even though the implementations are different from the Sun implementation, do the accused APIs borrow from other APIs in the same pattern?

3. If the answer to question 1 is yes, do any of the compiled lines in the 37 Sun APIs call upon part or all of another API outside the 37? Put differently, is all of the cross referencing done within the 37?

Call upon, as used herein, means a line of code that invokes the name of the other API, including the arguments, and the using the return in the follow-on compiled lines. This would be done to save reinventing the same code already resident in another API.

He then supplemented this order (953 [PDF; Text]) asking for further clarification:

What efficiencies, if any, are obtained by grouping methods or fields together under a single class? Put differently, what would be lost if a method that returned the cosine of an angle was grouped under a class other than Math? This discussion should get the pros and cons of the particular interrelationships (e.g., inheritance) within the 37 API packages.
Quite frankly, the original order is not quite clear with regard to what he is looking for. Is he looking for relationships in the "specifications" or in the "implementation." This distinction (specification vs. implementation) will likely continue to plague this trial.

The supplemental request seems to make far greater sense in that he is going to the heart of originality in the grouping of methods (functions) or fields into classes. Is there really any originality here, or is it simply common sense to group things logically with methods and fields of a similar character or nature?

The parties then responded with their respective briefs. (Oracle - 956 [PDF; Text]; Google - 955 [PDF; Text]) Note the contrast in their responses (here we use the form of the questions as provided by Oracle in its brief):

Could you get a patent on the structure, sequence, and organization of the APIs? Is that the proper subject matter of a patent?

Oracle - No

Google - Possibly, if "[t]he structure, sequence and organization of a set of APIs could be part of a patentable machine." Google then goes on to explain that what Oracle is seeking to protect under copyright (and exclude Google from using) is "'the exclusive right to the art or manufacture described' in its specifications," i.e., the idea, not simply the expression.

When software is registered with the Copyright Office, is the structure, sequence, and organization investigated by the Copyright Office?

Oracle - It is uncertain whether the Copyright Office conducts such an investigation.

Google - No, the Copyright Office only looks to determine whether the "work as a whole" for which registration is sought falls within the statutory scope of copyrightable material. The Copyright Office makes no evaluation of whether every component of the incorporated material in the "work as a whole" is protected by copyright.

Oracle's response is disingenuous. I would have to believe they know better.

For a derivative work, does the plaintiff have to prove that the defendant actually possessed and derived their own work from the copyrighted work?

Oracle - No. Oracle is required to prove that Google copied in order to prevail on a claim concerning a derivative work, but Oracle is aware of no case that affirmatively requires the plaintiff to show that an infringer actually had in its possession the work from which the derivative work is based. Even access (as opposed to possession) is not a necessary condition of an infringement case; proof of access lowers Oracle’s burden on similarity. Besides, Google has admitted copying.

Google - Oracle bears the same burden of proof with respect to infringement by derivative that it does for direct infringement, i.e., “[a] derivative work must incorporate a protected work in some concrete or permanent form.”

Are there subsidiary questions of fact that the jury should decide that would tie into the judge’s determination on copyrightability?

The parties actually agree on this, both replying no.

Oracle provides clarification around the issue of what, in their opinion, constitutes a "class library," i.e. it is only the compiled code, not any source code. The only way to properly refer to the source code would be as "class library source code" or "source code for the class libraries." Oracle admits that it has not always observed this distinction in its arguments.

The major disagreement has to do with what is the "copyrighted work" that Oracle is asserting in the infringement. Oracle says it is only the37 API packages, their associated class libraries (in both object and source form), and the handful of directly copied source code files. Oracle maintains it has always been clear on this point.

Google, in turn, argues that Oracle must assert the work as registered, i.e., the complete Java platform as it was submitted for registration, not select components therein, for it is only the "work as a whole" in which Oracle is claiming a copyright. The individual components may not even be (and, of course, Google argues they are not) eligible for copyright protection. In support of this proposition Google points out that Oracle did not identify its registrations as collective works, i.e., that the works contained components that were, in and of themselves, protectable by copyright. Needless to say, Oracle vigorously disagrees on this issue, and it will be up to the Court to determine which position is supported by the law.

This same difference is also manifest in what the parties claim is the infringing work. Google maintains that it can only be Android, as a whole, since the asserted work is Java, as a whole. Oracle, for its part, sticks with the line that it is only the specific component parts that are at issue.

While I believe Oracle must still establish that the APIs are protected by copyright, my sense is that its argument with respect to the "work" may be closer to the interpretations provided by other courts.

Do the 37 APIs call upon APIs outside that group of 37?

Oracle - Yes. And No. "Oracle’s implementation of the 37 API packages calls upon and invokes methods, fields, and classes outside the 37, although they do not inherit from or incorporate from outside the 37."

Google - Yes. "The implementations of the Sun compiled lines in the 37 APIs are not self-contained. Instead, each of the 37 APIs calls upon methods and classes in other API packages. This is done for the same reasons third-party programs call on the APIs—to efficiently reuse pre-written code.
Indeed, as but one example, every single package in the Java 2 SE platform requires java.lang, because every single class in every single package in the Java APIs directly or indirectly inherits the characteristics of the Object class, which is part of the java.lang package. Put another way, the compiled versions of every single package in the Java 2 SE platform are inoperable unless the compiled version of the java.lang package is present.
As another example, Sun’s implementation of the URL class in the java.net API package needs to keep a “table” of certain information. Having a separate implementation of this functionality would be inefficient and unnecessary, and so the java.net API calls on the HashTable class in the java.util API package to provide it."

Google goes on to point out that the Android APIs also "borrow" from other APIs, but not in the same manner as the Oracle APIs.

These aren't all of the issues addressed, but they are certainly some of the more interesting.

The parties have also updated their witness lists for today. (Oracle - 952 [PDF]; Google - 957 [PDF]) New to the Oracle list are Richard Miner, Alan Purdy, Eric Schmidt, and Marc Visnick. The fact that the Oracle list is down to eight individuals may be an indication they are approaching the end of their witnesses. For its part Google has modified its initial list, adding Larry Ellison and Param Singh and delaying or dropping Vineet Gupta and Mark Reinhold. Obviously, Google enjoyed Larry Ellison's performance so much the first time they want to get him back for a reprise.

In an important development favoring Oracle, the USPTO has agreed the claims of U.S. patent no. 5,966,702 are valid, including all seven of the claims asserted in this action (1, 6, 7, 12, 13, 15, 16). (961 [PDF]) The USPTO had previously rejected all of these claims, and Oracle had agreed that if those claims remained rejected at the time of trial it would withdraw its contentions with respect to infringement of the '702 patent. Oracle having responded adequately to the earlier non-final rejection by the USPTO, the claims are now allowed, and Oracle will undoubtedly pursue these claims as well during the patent infringement phase of the trial. That raises the bar a bit (and perhaps a good bit) on patent infringement.

Finally, Oracle has advanced two motions for the Court's consideration, and Google has responded to each. The first motion asks the Court to admit document TX 1026, the license agreement entered between Sun and Danger, Inc., the original developer of Android. (958 [PDF; Text]) Oracle argues this document is relevant on several different levels, including establishing that Mr. Rubin knew the API specifications had to be licensed, the context it provides with respect to the Sun/Google negotiations, the separate claim of copyright protection just for the API specifications (despite the fact that the only copyright that was filed was for all of Java), and Java was used smartphones before Google released Android. Google counters (963 [PDF; Text]) that the document is prejudicial for reasons that Oracle has attempted to ignore. For one, Oracle said the license didn't include source code for the APIs, but Google insists that it did and provides evidence that Oracle (Sun) acknowledged this fact in the license. Further, Google asserts the license was not, in fact, limited to the API specifications and that the license was tied to a trademark license to Danger for the use of the Java mark, something that Google has not sought. Finally, Google argues that the agreement, standing alone, proves nothing about the actual development and marketing of a Java-based smartphone, i.e., Oracle has never independently established that any such phone has existed.

In the second motion (959 [PDF; Text]) Oracle seeks a clarifying instruction to the jury regarding Apache Harmony. Specifically, Oracle asks that the jury be instructed that: (a) Apache never obtained a license from Sun permitting the use of the Java specifications; and (b) as a consequence, Apache had no rights to convey to Google. However, it is the TCK license that Apache never entered. That's the license with the field restriction regarding mobile. The API specification license standing alone has no such restriction, and, of course, that specification license presumes their is something that is protected by copyright. For its part, Google argues (962 [PDF; Text]) that Oracle is trying to preempt this issue instead of providing evidence and arguing the significance of that evidence to prove its point.

I would venture that the Court will reject both of these motions.


Jump To Comments


***************

Documents

04/21/2012 – 951 - ORDER RE BRIEF DUE SUNDAY. Signed by Judge Alsup on April 21, 2012. (whalc2, COURT STAFF) (Filed on 4/21/2012) (Entered: 04/21/2012)

04/21/2012 – 952 - Witness List by Oracle America, Inc. Oracle America, Inc.'s Rolling List of Next Ten Witnesses. (Muino, Daniel) (Filed on 4/21/2012) (Entered: 04/21/2012)

04/21/2012 – 953 - SUPPLEMENTAL ORDER RE BRIEF DUE SUNDAY re 951 Order. Signed by Judge Alsup on April 21, 2012. (whalc1, COURT STAFF) (Filed on 4/21/2012) (Entered: 04/21/2012)

04/22/2012 – 954 - STIPULATION WITH PROPOSED ORDER re 953 Order, 948 Order REGARDING BRIEFING ON COPYRIGHT ISSUES filed by Oracle America, Inc.. (Muino, Daniel) (Filed on 4/22/2012) (Entered: 04/22/2012)

04/22/2012 – 955 - TRIAL BRIEF Google's April 22, 2012 Copyright Liability Trial Brief by Google Inc.. (Van Nest, Robert) (Filed on 4/22/2012) (Entered: 04/22/2012)

04/22/2012 – 956 - Brief re 953 Order, 948 Order Oracle's Brief Addressing Court's Copyright Questions filed by Oracle America, Inc. (Attachments: # 1 Exhibit A)(Related document(s) 953 , 948 ) (Jacobs, Michael) (Filed on 4/22/2012) (Entered: 04/22/2012)

04/22/2012 – 957 - Witness List by Google Inc. Google Inc.'s Rolling List of Next Ten Witnesses. (Van Nest, Robert) (Filed on 4/22/2012) (Entered: 04/22/2012)

04/22/2012 – 958 - MOTION ORACLE AMERICA, INC.S MOTION TO ADMIT TRIAL EXHIBIT 1026 filed by Oracle America, Inc.. Responses due by 5/7/2012. Replies due by 5/14/2012. (Holtzman, Steven) (Filed on 4/22/2012) (Entered: 04/22/2012)

04/22/2012 – 959 - MOTION ORACLE AMERICA, INC.S MOTION SEEKING A CLARIFYING INSTRUCTION AND PROFFER REGARDING APACHE HARMONY filed by Oracle America, Inc.. Responses due by 5/7/2012. Replies due by 5/14/2012. (Holtzman, Steven) (Filed on 4/22/2012) (Entered: 04/22/2012)

04/22/2012 – 960 - Statement Google's Statement re Order re Proposed Findings of Fact and Conclusions of Law re All Issues of Fact and Law that Must be Resolved by the Judge, Including Scope of Protection of the Copyrights by Google Inc.. (Van Nest, Robert) (Filed on 4/22/2012) (Entered: 04/22/2012)

04/22/2012 – 961 - NOTICE by Oracle America, Inc. Update on Reexamination of '702 Patent (Jacobs, Michael) (Filed on 4/22/2012) (Entered: 04/22/2012)

04/22/2012 – 962 - RESPONSE (re 959 MOTION ORACLE AMERICA, INC.S MOTION SEEKING A CLARIFYING INSTRUCTION AND PROFFER REGARDING APACHE HARMONY ) filed byGoogle Inc.. (Van Nest, Robert) (Filed on 4/22/2012) (Entered: 04/22/2012)

04/22/2012 – 963 - RESPONSE (re 958 MOTION ORACLE AMERICA, INC.S MOTION TO ADMIT TRIAL EXHIBIT 1026 ) filed byGoogle Inc.. (Van Nest, Robert) (Filed on 4/22/2012) (Entered: 04/22/2012)


***************

Documents

951

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

ORDER RE BRIEF DUE SUNDAY

The judge would like counsel to answer the following in the briefs due Sunday:

1. Do any of the Sun compiled lines in the 37 APIs call upon part or all of another API as a step?

2. If so, do the accused APIs likewise call upon the same other API? That is, even though the implementations are different from the Sun implementation, do the accused APIs borrow from other APIs in the same pattern?

3. If the answer to question 1 is yes, do any of the compiled lines in the 37 Sun APIs call upon part or all of another API outside the 37? Put differently, is all of the cross referencing done within the 37?

Call upon, as used herein, means a line of code that invokes the name of the other API,


including the arguments, and the using the return in the follow-on compiled lines. This would be done to save reinventing the same code already resident in another API.

IT IS SO ORDERED.

Dated: April 21, 2012.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

2



953

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

SUPPLEMENTAL ORDER
RE BRIEF DUE SUNDAY

What efficiencies, if any, are obtained by grouping methods or fields together under a single class? Put differently, what would be lost if a method that returned the cosine of an angle was grouped under a class other than Math? This discussion should get the pros and cons of the particular interrelationships (e.g., inheritance) within the 37 API packages.

IT IS SO ORDERED.

Dated: April 21, 2012.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


955

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

Attorneys for Defendant
GOOGLE INC.

NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. 3:10-cv-03651 WHA

GOOGLE’S APRIL 22, 2012 COPYRIGHT
LIABILITY TRIAL BRIEF

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

1


I. INTRODUCTION

Google responds to the questions the Court has asked regarding copyright issues and the 37 API packages.

II. ARGUMENT

A. Structure, sequence and organization can be patented.
Structure, sequence and organization can be patented, assuming it is part of a “process, machine, manufacture, or composition of matter . . . .” 35 U.S.C. § 101. As with any patent claim, the scope of any such claim would be limited to embodiments that fall within the claim language. The patent claims would also need to satisfy the other requirements of the Patent Act.

Patentable subject matter is defined by Section 101 of the Patent Act:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. § 101; see also Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (discussing 35 U.S.C. § 101). The structure, sequence and organization of a set of APIs could be part of a patentable machine. See 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”).

In explaining Section 102(b) of the Copyright Act, the Federal Circuit has noted that “patent and copyright laws protect distinct aspects of a computer program.” Atari Games Corp. v. Nintendo of Am. Inc., 975 F.2d 832, 839 (Fed. Cir. 1992) (citing Baker v. Selden, 101 U.S. 99, 103 (1879)). “Title 35 [i.e., the Patent Act] protects the process or method performed by a computer program; title 17 [i.e., the Copyright Act] protects the expression of that process or method.” Id. As the Supreme Court has explained:

There is no doubt that a work on the subject of book-keeping, though only explanatory of well-known systems, may be the subject of a copyright; but, then, it is claimed only as a book. Such a book may be explanatory either of old systems, or of an entirely new system; and, considered as a book, as the work of an author, conveying information on the subject of book-keeping, and containing detailed explanations of the art, it may be a very valuable acquisition to the practical knowledge of the community. But there is a clear distinction between the book,

1


as such, and the art which it is intended to illustrate. The mere statement of the proposition is so evident, that it requires hardly any argument to support it. The same distinction may be predicated of every other art as well as that of book-keeping. A treatise on the composition and use of medicines, be they old or new; on the construction and use of ploughs, or watches, or churns; or on the mixture and application of colors for painting or dyeing; or on the mode of drawing lines to produce the effect of perspective, — would be the subject of copyright; but ,b>no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein. 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. The novelty of the art or thing described or explained has nothing to do with the validity of the copyright. To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. 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.
Baker, 101 U.S. at 101-02 (emphases added).1

The core of Oracle’s copyright claims—everything except its documentation claims and its claims about portions of 12 files—is barred by Atari and Baker. Oracle claims that “the selection and arrangement” of the elements of the 37 APIs is copyrightable. See Oracle 4/5/12 Br. [Dkt. 859] at 10. But the selection and arrangement of APIs elements cannot, standing alone, support a copyright infringement verdict. If, for the 37 APIs at issue, Google had substituted APIs that had exactly the same structure, selection and organization as the Oracle APIs, but that did different things, the resulting work as a whole would not be substantially similar. For example, if every method always returned the same result, regardless of what inputs were provided (e.g., a zero for methods with numerical results, an “a” for those that return strings, “true” for those that return true or false, and so on), the resulting APIs would not be substantially similar, notwithstanding having precisely the same structure, selection and organization as Oracle’s APIs. The true premise of Oracle’s claim is that the Google APIs do the same thing that

___________________________________________

1 In Mazer v. Stein, 347 U.S. 201 (1954), the Supreme Court stated that “[n]either the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted. We should not so hold.” Id. at 217. In the footnote immediately following that statement, however, the Court cited an article about the overlap between copyrights and design patents. Id. at 217 n.38 (citing Richard W. Pogue, Borderland—Where Copyright and Design Patent Meet, 6 Copyright L. Symp. 3 (1955)). The Court held that a statuette can qualify both as “art for the copyright” and an “invention of original and ornamental design for design patents.” Mazer, 347 U.S. at 218. Section 102(b) of the Copyright Act does not preclude “designs” from copyright protection, but does exclude procedures, processes, systems and methods of operation. See 17 U.S.C. § 102(b).

2


the Oracle APIs do—that the Google APIs perform the same functions as the Oracle APIs. In short, in contradiction to Supreme Court precedent, Oracle is claiming that it owns the “the exclusive right to the art or manufacture described” in its specifications. See Baker, 101 U.S. at 102.

B. The Copyright Office did not consider whether the structure, sequence and
organization of the 37 APIs is copyrightable subject matter.
Counsel for Oracle has admitted, “I don’t think there’s any—I don’t think there’s any imprimatur on the theory of copyrightability. I think there is an imprimatur on the registerability of the underlying material.” RT 884:10-13. Here, the “underlying material” was the J2SE 5.0 platform as a whole. Nothing in the registration application offered any hint to the Copyright Office that copyright protection was sought specifically for the 166 API packages that were a part of that platform, let alone for the 37 API packages specifically at issue in this case—and certainly no notice was given that Sun sought protection for the structure, sequence and organization of those 37 API packages. See TX 475, 476; see also RT 884:3-7 (registration application did not give the Copyright Office a “heads up” that Sun was “seeking copyright protection on the structure, sequence, and organization” of the 37 API packages).

Any contrary assertion would border on the absurd. If, for example, an author seeks to register copyright in a biography of John F. Kennedy, the Copyright Office does not examine the book to determine whether the book includes quotations of President Kennedy’s speeches over which the biographer cannot claim copyright. The Copyright Office does not note that the copyright does not extend to the individual words in the book. The Copyright Office does not add a disclaimer that the registration does not preclude others from “copying” the idea of writing a biography of our thirty-fifth president. The Copyright Office does not consider whether the structure, sequence and organization of the biography is copyrightable. Instead, the registration for that biography means only that the Copyright Office has concluded that the biography as a whole contains copyrightable subject matter. See 3-12 Nimmer § 12.11[B][3] (other than examining the work as a whole to determine copyrightability, “unlike a patent claim, a claim to copyright is not examined for basic validity before a certificate is issued”).

3


C. The plaintiff must prove that an alleged derivative work infringes the
plaintiff’s work.
Oracle concedes that for its derivative work claim, it must prove the same elements as it must for any infringement claim. See RT 885:17-21, 886:8-9 (counsel for Oracle); id. at 886:13-15 (counsel for Google: “the Ninth Circuit requires that a derivative work, to be an infringement, has to include protectable elements, copyrightable elements of the first work”); id. 886:20-21 (counsel for Oracle: “I don’t think we disagree with that, Your Honor.”); see also Mirage Editions v. Albuquerque A.R.T. Co., 856 F.2d 1341, 1343 (9th Cir. 1988) (“a work will be considered a derivative work only if it would be considered an infringing work if the material which it has derived from a preexisting work had been taken without the consent of a copyright proprietor of such preexisting work”) (quotation marks and citation omitted). Applying these concepts in the context of computer video games, the Ninth Circuit has held that “[a] derivative work must incorporate a protected work in some concrete or permanent form.” Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., 964 F.2d 965, 969 (9th Cir. 1992) (emphasis added).

D. There are no subsidiary fact questions for the jury.
The Court must resolve any factual issues relevant to copyrightability; there are no subsidiary fact issues for the jury. Lotus Dev. Corp. v. Borland Int’l, Inc., 788 F. Supp. 78, 96 (D. Mass. 1992) (“issues of copyrightability, including any fact questions bearing upon them, must be determined by the court, not the jury.”) (emphasis added). As Judge Easterbrook has explained, “[a] jury has nothing to do with” the copyrightability determination. Pivot Point, Int’l, Inc. v. Charlene Prods., Inc., 932 F. Supp. 220, 225 (N.D. Ill. 1996).

As the Supreme Court has noted in the patent context, “functional considerations” play a role in deciding whether a judge or jury should make various determinations. See Markman v. Westview Instrs., 517 U.S. 370, 388 (1996). Thus, in the patent context, the Supreme Court held that “there is sufficient reason to treat construction of terms of art like many other responsibilities that we cede to a judge in the normal course of trial, notwithstanding its evidentiary underpinnings.” Id. at 390. In the context of a copyrightability determination, the Lotus court considered these issues at length, and correctly concluded any subsidiary fact questions should be

4


decided by the court, not the jury. See Lotus, 788 F. Supp. at 95-96.2

E. What are the relevant “works” for copyright purposes?

1. Oracle’s “work” (i.e., the work allegedly infringed) is the work it
registered—the Java platform as a whole.
In any copyright case, the work of the plaintiff that is at issue is – and can only be – the specific “work” that is the subject of any copyright registration pleaded and relied on by the plaintiff. That work, as a whole, is the work to which the defendant’s accused work, as a whole, must be compared for purposes of determining: (1) substantial similarity (or virtual identity) and therefore infringement; (2) whether the de minimis doctrine applies; and (3) defendant’s fair use defense under 17 U.S.C. § 107. This conclusion is the only one consistent with the overall Copyright Act read in its entirety and is compelled by the unambiguous statutory language of the fair use section, 17 U.S.C. § 107. Any other result would defeat the purpose of the statutory requirement under 17 U.S.C. § 411 that a plaintiff’s claim of copyright in the asserted works be registered as a prerequisite to filing suit,3 would improperly allow a plaintiff in a copyright case to assert claims of infringement for “works” in which no claim of copyright has been registered, and would turn a carefully-constructed statutory framework into a guessing game, with the plaintiff free to define and re-define its “work” at its whim. See RT 922:2-5 (“It seems strange that I would have to go through an entire trial and only then would it—would the scales fall from my eyes and I would see clearly what the work as a whole is.”).

The Copyright Act pervasively refers to the concept of a “work” as the “thing” that is subject to copyright protection. Section 408 of the Act provides for the registration, by the owner of copyright in a work, of the owner’s “copyright claim” in the work. See 17 U.S.C. § 408. While such registration is not “a condition for copyright protection,” see id., no infringement

_________________________________________

2 Although subsidiary fact questions about what is copyrightable are for the Court, the Ninth Circuit has suggested that the Court may define what is copyrightable by category rather than by specific item. See infra Part II.E.3.a.

3 Section 411’s requirement that the work be registered prior to suit applies only to “United States” works. See 17 U.S.C. § 411. This exception reflects the fact that the Berne Convention, to which the United States is a signatory, prohibits the United States from imposing formalities such as registration as a pre-condition to suit on works originating in non-United States Berne Convention countries. There is no dispute that Oracle’s work is a United States work, to which section 411 applies.

5


action may be instituted until registration of the owner’s copyright claim has been made in accordance with the Act. Id. § 411(a). Registration, in turn, requires compliance with the Act’s deposit requirement, set forth in section 411(b). Section 411(b) requires that two complete copies of the best edition of a published work (or other identifying or other material acceptable to the Copyright Office) be submitted to the Copyright Office, and section 411(a) requires that those copies be submitted together with the application for registration.

Because of the registration requirement, only “copyrighted works”—i.e., works in which the owner’s copyright claim has been registered—can be the subject of a claim of infringement. The Act uses the phrase “copyrighted works” throughout section 106—which defines the exclusive rights of the owner of a “copyrighted work”—and in other sections, including section 107, which provides that the fair use of a copyrighted work is not an infringement. 17 U.S.C. §§ 106, 107.

In the three copyright registrations identified in Oracle’s Amended Complaint, Sun Microsystems registered with the Copyright Office two separate “works”:

1. a work entitled “Java Standard Edition 1.4,” see Am. Complaint, Ex. H [Dkt. 36-1];4 and

2. a work entitled “Java 2 Standard Edition, Version 5.0,” see id.5

In accordance with normal Copyright Office practice, the registration forms do not provide a description or more specific identification of the works. As part of indicating the “nature of authorship” for Sun and the other authors whose materials were included in the works and the material that was added to prior versions of the works, Sun stated that the works included both “computer code” and “accompanying documentation and manuals.” See TX 464, 475, 476. The registrations do not suggest that the “work” being registered was just the APIs (however defined),

_____________________________________

4 The registration for this work, No. TX 6-196-514, states that the work is also known as “J2SE 1.4,” “Java 2 Platform, Standard Edition, v 1.4,” “Java 2 Standard Edition Software Development Kit 1.4” and “SDK 1.4.”

5 The original and supplementary registrations for this work, Nos. TX 6-066-538 and TX 6-143-306, state that the work is also known as “J2SE 5.0,” “Java 2 Platform, Standard Edition, Version 5.0,” “Java 2 Standard Edition 5.0 Development Kit,” “Java 2 Platform Standard Edition 5.0 Development Kit,” “J2SE Development Kit” and “JDK 5.0.”

6


just the Java class libraries (the source code implementing those APIs, separate and apart from the source code implementing the rest of the relevant Java platform), just the documentation, or just the “selection, arrangement and structure” or “selection, structure and organization” of any parts of the entire work or any portion thereof.

It is part of the plaintiff’s burden in a copyright t case to both plead and prove that it owns the copyright rights in a work that is the subject of a copyright registration. See Miller v. Facebook, Inc., No. C 10-00264 WHA, 2010 U.S. Dist. LEXIS 31534 at *6-*7 (N.D. Cal. 2010); see also Gee v. CBS, Inc., 471 F. Supp. 600, 634 (E.D. Pa. 1979) (“To be sufficient under Rule 8 a claim of infringement must state, inter alia, which specific original work is the subject of the copyright claim, that plaintiff owns the copyright, that the work in question has been registered in compliance with the statute and by what acts and during what time defendant has infringed the copyright.”). In this case, Oracle has argued that it met that pleading burden by pleading “the pertinent copyright registrations”; in Oracle’s words, “[i]dentification of the copyright registrations issued is sufficient to establish ownership of the protected materials.” Oracle Opp. To Google Mot. To Dismiss [Dkt. 40] at 3. In the parties’ Joint Case Management Statement filed on November 11, 2010 [Dkt. 53], Oracle confirmed that its complaint alleged that components of Android infringe seven Oracle patents and “two of Oracle America’s Java-related copyrights.” Dkt. 53 at 2 (emphasis added).

Once a copyright plaintiff has identified the work and registration on which it bases its complaint, it is that work, as submitted with the registration, that defines the scope of the plaintiff’s claim. Courts have, for example, “assumed” that a plaintiff’s claim of infringement “may be maintained only to vindicate infringement of its work deposited with the registration.” E. Mishan & Sons, Inc. v. Marycana, Inc., 662 F.Supp. 1399, 1346 (S.D.N.Y. 1987); see also Tradescape.com v. Shivaram, 77 F. Supp.2d 408, 414 (S.D.N.Y. 1999) (“The burden of course is on the plaintiff to show that allegedly infringed code is covered by a valid registration.”). Courts have also recognized that one of the purposes of the deposit requirement is to provide “sufficient material to identify the work in which the registrant claims a copyright.” Nicholls v. Tufenkian Import/Export Ventures, 367 F. Supp. 2d 514, 520 (S.D.N.Y. 2005) (emphasis added). As the

7


First Circuit has recognized, “a key purpose of the Section 408(b) deposit requirement is to prevent confusion about which work the author is attempting to register” and protect under the registration. Data General Corp. v. Grumman Systems Support Corp., 36 F.3d 1147, 1162 (1st Cir. 1994) (emphases added).

The Court should not allow Oracle to claim infringement of a subset of its registered work. In the summary judgment briefing, the sole case Oracle relied upon on this point was Bean v. McDougal Littell, 669 F. Supp. 1031 (D. Ariz. 2008). See Oracle Opp. to MSJ [Dkt. 339] at 23-24. In Bean, the court noted that “[w]hen a claimant registers a collective work, the copyright protection can also extend to each constituent part of that work.” 669 F. Supp. at 1034 (emphasis added). Oracle did not register a collective work, see TX 464, 475, 476,6 and thus Bean is inapplicable.7

There should be no confusion – and no issue – about the Oracle works that are the works at issue. The “works” are the complete Java 2 SE platforms that Oracle chose to register, which include over 160 API packages, a virtual machine, a compiler, documentation, the Java runtime environment, the NetBeans development environment, and all of the other elements of the Java Development Kit. This is, in fact, what Oracle pled in the operative complaint, where it alleged that “Google’s Android infringes Oracle America’s copyrights in the Java platform.” Am. Compl. [Dkt. 36] ¶ 39 (emphasis added). Oracle has not pled any copyright registrations for any lesser works, any portions of the works, or any works other than the entire platform.8

________________________________________

6 Section 6 of the copyright registration form is titled “DERIVATIVE WORK OR COMPILATION,” and directs the copyright claimant to “[i]dentify any preexisting work or works that this work is based on or incorporates.” See TX 464, 475, 476. Sun identified versions 1.4 and 5.0 of the Java 2 SE platform as derivative works of prior versions, but did not identify them as compilations. A collective work is a time of compilation. See 17 U.S.C. § 101 (“The term ‘compilation’ includes collective works.”).

7 For the same reason, the reference in 37 C.F.R. § 202.3(b)(4)(i)(A) to “copyrightable elements that are otherwise recognizable as self-contained works” is inapplicable. The regulation allows a copyright owner to register as a single work a collection of artistically related works that have been published as a single unit of publication. However, if the copyright owner chooses not to register individual elements of that work, it cannot then assert infringement of the individual elements as separate works.

8 Google agrees with Oracle that the issue of which of the Java platform registrations and works Oracle chose to rely on in this action is a separate issue from the “work as a whole” issue. See RT 920-21. For present purposes, the important fact is that all of Oracle’s relevant registrations for its works are for versions of the platform as a whole; none are for APIs, structure, sequence and organization, documentation or any other subset, portion or element of the platform.

8


2. Google’s “work” (i.e., the allegedly infringing work) is the Android
platform as a whole.
It is, in the first instance, the plaintiff’s burden to identify the works of the defendant that it accuses to be infringements. In this case, Oracle made clear in the copyright count of its Amended Complaint that “Google’s Android” is the accused work. Am. Compl. [Dkt. 36] ¶ 39 (“Google’s Android infringes Oracle America’s copyrights in the Java platform”; “Google infringes . . . by distributing Android . . . or the code contained within it.”).

Based on Oracle’s pleadings, the accused work is Android—which Oracle defined to include an operating system software “stack” that included Java applications, an application framework, core libraries, a virtual machine and a software development kit. Id. ¶ 12. In its Amended Complaint, Oracle identified certain portions of Android that Oracle characterized as “infringing” and certain elements of the Java platform that it characterized as “infringed” (id. ¶ 40)—but the pleading in its entirety can only fairly be read to assert a claim that “Android” infringes Oracle’s copyright rights in “the Java platform.”

3. The jury must compare the works as a whole.

a. In determining infringement (including consideration of the de
minimis
doctrine), the jury must compare the works as a whole.
The Ninth Circuit has held that it is improper, in considering a claim of infringement based on a “selection, coordination and arrangement” of elements, to consider only selected excerpts such as individual pages of the parties’ works. In Harper House, Inc. v. Thomas Nelson, Inc., 5 F.3d 536, 1993 WL 346546 (9th Cir. 1993) (“Harper House II”) (unpublished), the plaintiff attempted to prove infringement by relying on comparisons of individual pages from the parties’ works rather than the entire works. The court held that such a comparison is “inappropriate and misleadingly prejudicial,” and held that “[o]nly the unique selection, arrangement and coordination of the works as a whole may be compared.” 1993 WL 346546 at *2 (emphasis added). The court specifically noted that there were sections in the defendant’s works that had “no counterparts” in the plaintiff’s work, and held that those elements had to be taken into account in the comparison of the works. Id.

9


The Ninth Circuit has also held that the court must identify for the jury the unprotectable elements of the plaintiff’s work. In Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197 (9th Cir. 1989) (“Harper House I”), the Ninth Circuit held that the jury instructions must “adequately distinguish between protectable and unprotectable elements.” 889 F.2d at 207-08. Relying on Harper House I, the court in Dream Games of Arizona, Inc. v. PC Onsite, 561 F.3d 983, 989 (9th Cir. 2009), reaffirmed that, under Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994), proper consideration of the works requires that the unprotectable elements are identified. The district court in Dream Games had identified for the jury the specific elements of the plaintiff’s work that were unprotectable. The court therefore affirmed.

Thus, while the Ninth Circuit has made plain – and the parties have agreed – that the issues of copyrightability are questions for the court, Ninth Circuit case law appears to allow the court two ways to discharge that responsibility. The court could make specific findings that elements X, Y and Z of plaintiff’s work are not copyrightable – and then advise the jury that it is not to consider those elements in its comparison of the works. Alternatively, the court could instruct the jury in categorical terms regarding the elements of the plaintiff’s work that are not copyrightable, and then allow the jury to apply those tests – and exclude such elements – before conducting its comparison of the works for infringement purposes. In this case, that would require the court to instruct the jury on at least: (1) the statutory exclusions from copyright under section 102(b), i.e., ideas, systems, methods of operation, etc.; (2) functional requirements for compatibility; (3) the programming equivalents of scenes a faire; (4) the merger doctrine; and (5) any other applicable uncopyrightability doctrines that have evidentiary support. While such a course of action would require additional instructions and place an additional burden on the jury, it would be consistent with the Ninth Circuit’s observation in Harper House I that the jury “was not told that blank forms, common property, or utilitarian aspects of useful items are not protectable.” 889 F.2d at 208.

The same analysis applies to the de minimis doctrine. In deciding whether alleged copying is de minimis, the qualitative and quantitative significance of the taken material must be measured “in relation to the plaintiff’s work as a whole.” Newton v. Diamond, 388 F.3d 1189,

10


1195 (9th Cir. 2004). In this case, that means the jury must consider whether the portions of the 12 files are qualitatively or quantitatively significant when compared to the whole of Oracle’s work, i.e., the Java platform, including all of the J2SE APIs and libraries, the Java Virtual Machine, the compiler and the SDK.

Because the plaintiff’s work for purposes of its claim is, as a matter of law, the work that is the subject of its registration,9 it would be error for the court to leave it to the jury to decide what “works” are at issue. The Court must identify the works as a whole to the jury. For the plaintiff, the “work” is the work that is the subject of the registration—the Java platform. For the defendant, it is the accused work – Android. There is no factual or other standard the jury could apply to determine that some other “works” are at issue or are the “works as a whole” that must be compared. There is also no burden of proof on identifying the “entire work”; the only burden is on the plaintiff to identify the work and registration on which it relies.

Because of these general principles, it is improper and would be error to allow the jury to find infringement based on any comparison other than a comparison of the works in their entireties.

b. Fair Use
For purposes of fair use analysis, the statute—17 U.S.C. § 107—is clear and unambiguous. In assessing fair use, one of the factors that must be included in the analysis is “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” 17 U.S.C. § 107(3) (emphasis added); see also 17 U.S.C. §§ 107(2) (referring to the “nature of the copyrighted work”), 107(4) (referring to the “value of the copyrighted work”). Nothing in section 107 suggests or permits fair use analysis based on a portion of the copyrighted work. The statute

________________________________________

9 Hustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148 (9th Cir. 1986), is not to the contrary. The “work” at issue in Hustler was an issue of a magazine – which is a classic “collective work” under the Copyright Act. See 17 U.S.C. § 101 (definition of “collective work”). A “collective work” is, by definition, a work consisting of a number of contributions that constitute “separate and independent works in themselves.” The “stand alone” test used in Hustler is appropriate for use only with respect to collective works or, as the court called the magazine, a “copyrighted composite work.” 796 F.2d at 1154-55; see 1909 Copyright Act § 3 (providing for copyright in “composite works”). Oracle did not register the Java platform as a collective work.

11


requires that the portions of the plaintiff’s work used by the defendant be analyzed compared to the plaintiff’s copyrighted (i.e., registered) work “as a whole.”

F. The Effect of Factual Copying on Substantial Similarity Analysis
Even if the structure, sequence and organization of the 37 API packages and “declarations” are held to be copyrightable, substantial similarity of the works as a whole is still an issue for the jury.

Courts have reiterated many times that “[n]ot all copying . . . is copyright infringement.” See, e.g., Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); Jackson v. Booker, 2012 U.S. App LEXIS 3024 at *8 (3rd Cir. Feb. 16, 2012) (“even if actual copying is proven, the court must decide, by comparing the allegedly infringing work with the original work, whether the copying was unlawful”; unlawful copying requires substantial similarity with respect to protected expression); Intervest Construction, Inc. v. Canterbury Estate Homes, Inc., 554 F.3d 914, 921 (11th Cir. 2008) (substantial similarity must be shown as to “similarity of expression, i.e., material susceptible of copyright protection”).

The law in the Ninth Circuit is no different:

For an unauthorized use of a copyrighted work to be actionable, the use must be significant enough to constitute infringement. See Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70, 74-75 (2d Cir. 1997). This means that even where the fact of copying is conceded, no legal consequences will follow from that fact unless the copying is substantial. See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir. 1992); 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A], at 13-30.2.
Newton, 388 F.3d at 1192-93 (emphasis added).

Thus, the issues presented by the presence of isolated identical or very similar elements in two works remain the same as in all copyright cases—namely, whether those similarities relate to protectable elements and, if they do, whether they are sufficient to support a finding that the two works are, in their entireties, “substantially similar” or, in cases of thin copyright protection, “virtually identical” as to copyrightable elements.10

______________________________________

10 Indeed, one Seventh Circuit decision in 1990 held to the contrary, and stated that “Establishing substantial similarity is necessary only when direct evidence of copying is unavailable.” Illinois Bell Tel. Co. v. Haines & Co., 905 F.2d 1081, 1086 (7th Cir. 1990). That decision, however, was vacated by the Supreme Court following its decision in Feist, and, on remand, the Seventh Circuit remanded to the district court with instructions to enter judgment in favor of the defendant. See 932 F.2d 610 (7th Cir. 1991).

12


In this case, even if the structure, sequence and organization of the 37 packages is found to be copyrightable, the jury must still decide whether the protected elements of that structure, sequence and organization—excluding the names, the ideas, the scenes a faire, the programming conventions, the functional elements necessary for compatibility and any other uncopyrightable elements—are sufficient to make Android, in its entirety, substantially similar to the Java platform. That analysis must properly take into account all the elements of the two works, including those that are different.

G. The source code in the Sun compiled lines in the 37 APIs calls upon other
APIs.
The implementations of the Sun compiled lines in the 37 APIs are not self-contained. Instead, each of the 37 APIs calls upon methods and classes in other API packages. This is done for the same reasons third-party programs call on the APIs—to efficiently reuse pre-written code.

Indeed, as but one example, every single package in the Java 2 SE platform requires java.lang, because every single class in every single package in the Java APIs directly or indirectly inherits the characteristics of the Object class, which is part of the java.lang package. Put another way, the compiled versions of every single package in the Java 2 SE platform are inoperable unless the compiled version of the java.lang package is present.

As another example, Sun’s implementation of the URL class in the java.net API package needs to keep a “table” of certain information. Having a separate implementation of this functionality would be inefficient and unnecessary, and so the java.net API calls on the HashTable class in the java.util API package to provide it.

H. The implementing code for the Android API packages do not “borrow from
other APIs” in the same pattern as the implementing code for the Oracle API
packages.
Because both the Oracle and Android API implementations implement similar functionality, both implementations often call upon similar APIs in a similar pattern to implement that functionality. For example, Android’s implementation of the URL class in the java.net API package also must track a table of information, and it too calls on the Android’s implementation

13


of the HashTable class to provide that functionality.

However, in many of the classes in the 37 API packages, the Oracle and Android implementations of the class call upon different sets of APIs. For example, both the Oracle and Android implementations of the URL class call upon the java.io API package, but, the Oracle implementation uses the OutputStream class from the java.io package, while the Android implementation uses the ObjectOutputStream class from the java.io package.

I. Source code in both the Oracle and Android implementations of the 37 APIs
call upon APIs outside of the 37 APIs.
The cross-referencing is not all within the 37 API packages at issue. For example, Oracle’s implementations of the 37 API packages at issue call upon at least 29 API packages that are not even present in Android. Similarly, Android’s implementations of the 37 APIs at issue call upon at least 28 packages that are not even present in Java 2 SE.

Both implementations also call APIs in other packages that are present in both platforms, but not at issue in this case, such as org.w3c.dom, org.xml.sax, javax.xml.transform, javax.xml.parsers, and java.util.concurrent. For example, Oracle’s implementations of the 37 API packages often reference APIs in the “sun” namespace that are not present in Android. Similarly, Android’s implementations reference packages in other namespaces that are not present in Oracle’s implementation of Java platform, such as the “ibm” namespace.

J. Efficiency and compatibility would be compromised if the interrelationships
of methods and fields were changed by altering their grouping or inheritance.
While it is technically possible to group all methods and fields into arbitrary classes, the system of APIs is easier for programmers to learn and more efficient for them to use if the APIs are organized in a predictable and practical fashion. The groupings of the methods and fields provide a helpful convention for programmers to follow to access and use the functionality of the underlying implementations.

The testimony of Dr. Mark Reinhold, Oracle’s Chief Java Architect’s, addressed this question directly, when he said that Sun “could have put all of the NIO—all of the new IO APIs into one package.” RT 634:11-12 (Reinhold). However, “[h]umans aren’t good at looking at very long lists of unstructured information,” RT 634:10-11 (Reinhold), and so packages lacking

14


such organization “would be really hard to use from the developer’s, the software developer’s standpoint.” RT 619:20-21 (Reinhold).

Once methods and fields are grouped, changes to that grouping would also lead to another type of inefficiency: the loss of compatibility. When learning an API, programmers learn how methods and fields are grouped into classes. They then in turn write software that relies on that grouping—e.g., that assumes that the “cos” method is in the Math class. As Dr. Josh Bloch testified, once the developers (and their software) rely on that structure, changes to the name (which includes information about the grouping into packages and classes) would cause incompatibility in existing software:

Q. On any of the occasions while you were at Sun when you worked on reimplementing an existing API, did you ever change any of the elements of the method declaration for an existing method?

A. No. We couldn’t.

Q. Why couldn’t you?

A. Because it wouldn’t work any more, because programs that had been written to use that API would no longer work. You would compile them and there would be a mismatch. You would call a method name, the method name better be the same. If you change the name, the program won’t work any more. It would be an incompatible change.

RT 803:9-20 (Bloch). As a result, any alternative implementations of these methods and fields (and packages) must replicate that specific grouping in order to be compatible with the original implementation.

Inheritance (and the related concept of Interfaces) is another way to organize API elements in order to improve efficiency, in this case by removing redundancy. See, e.g., RT 590-92 (Reinhold). Instead of having the equivalent of “dogs have hair and feed their young milk,” “cats have hair and feed their young milk,” and “humans have hair and feed their young milk,” an API can define “mammals” as a class, and state that mammals all have hair and feed their young milk. Dogs, cats and humans could then be defined as subclasses of the mammal class, and “inherit” the characteristics of having hair and feeding their young milk. The definitions of the dog, cat, and human subclasses could then focus on defining characteristics unique to each of those subclasses.

15


The grouping of methods and fields through the use of inheritance is the same as other groupings or organizations of methods and fields. First, as with other groupings, organization through inheritance is part of a functional method of operation. Programmers must know about and use parts of an API’s inheritance structure in order to operate the underlying software libraries. Second, as with other groupings, organization through inheritance must be efficient, such that it will be easy and practical for programmers to learn and use. Finally, the organization and structure reflected by inheritance must be followed in all implementations to maintain compatibility with code written relying upon it.

Dated: April 22, 201

KEKER & VAN NEST LLP

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

Attorneys for Defendant GOOGLE INC.

16



956

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 BRIEF ADDRESSING
COURT’S COPYRIGHT QUESTIONS

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


TABLE OF CONTENTS

Page
I.COURT’S QUESTIONS FROM APRIL 19, 2012 (RT AT 882-892)1
A.Could you get a patent on the structure, sequence, and organization of the
APIs? Is that the proper subject matter of a patent?
1
B.When software is registered with the Copyright Office, is the structure,
sequence, and organization investigated by the Copyright Office?
1
C.For a derivative work, does the plaintiff have to prove that the defendant
actually possessed and derived their own work from the copyrighted work?
2
D.Will the evidence show that the Google engineers who worked on Android
source code possessed the Oracle Java API documentation?
2
E.Are there subsidiary questions of fact that the jury should decide that
would tie into the judge’s determination on copyrightability?
3
II.COURT’S QUESTIONS FROM APRIL 20, 2012 (RT AT 915-22)3
A.Does the term “class libraries” refer only to the compiled object code or to
the object code and the source code?
3
B.What are the copyrighted works? Did Oracle identify the copyrighted
works in discovery responses?
4
1.Oracle Identified The Copyrighted Works In The Amended
Complaint And In Discovery Responses
4
2.Registration Of The Different Versions Of The Java Platform Also
Registered The Individual Works Within It
5
C.What will we tell the jury they should be comparing for copyright
infringement purposes?
7
III.COURT’S QUESTIONS FROM ECF 9488
A.What case law or other authority is there that states the judge must identify
the “work as a whole” (for similarity, fair use, and de minimis) for the
jury? Which party has the burden to identify the “entire work”?
8
B.With respect to what segment of the “work” can stand alone within the
meaning of Hustler v. Moral, 796 F.2d 1148, 1155 (9th Cir. 1986), the
Court wishes to know whether the implementation of the 37 API packages
inherit, call upon, invoke, or incorporate any method, field, or class outside
the 37
10
C.Why shouldn’t we let the jury decide what the “work as a whole” is?10
D.Is the “work as a whole” the same for purposes of “substantial similarity
(or virtually identical),” “fair use,” and “de minimis” copying? If not, how
are the “works as a whole” to be found for these purposes?
10
E.For purposes of identifying the “work as a whole,” should Oracle be held
to the copyrighted work identified in the operative complaint?
11
F.If the SSO and declarations are held to be protected elements, then why are
there still issues of access and similarity for purposes of infringement
(excluding de minimis and fair use)? Put another way, isn’t substantial
similarity only an issue if there isn’t an admission of factual copying of
protectable elements?
13

i


TABLE OF CONTENTS
(continued)

Page
IV.COURT’S QUESTIONS FROM ECF 95113
A.Do any of the Sun compiled lines in the 37 APIs call upon part or all of
another API as a step?
13
B.If so, do the accused APIs likewise call upon the same other API? That is,
even though the implementations are different from the Sun
implementation, do the accused APIs borrow from other APIs in the same
pattern?
14
C.If the answer to question A is yes, do any of the compiled lines in the 37
Sun APIs call upon part or all of another API outside the 37? Put
differently, is all of the cross referencing done within the 37?
14
V.COURT’S QUESTIONS FROM ECF 95314
A.What efficiencies, if any, are obtained by grouping methods or fields
together under a single class? Put differently, what would be lost if a
method that returned the cosine of an angle was grouped under a class
other than Math? This discussion should get the pros and cons of the
particular interrelationships (e.g., inheritance) within the 37 API packages
14

ii


TABLE OF AUTHORITIES

Page(s)
CASES
AFL Telecomms. LLC v. SurplusEQ.com, Inc.,
2012 U.S. Dist. LEXIS 49239 (D. Ariz. Apr. 9, 2012)
12
Am. Geophysical Union v. Texaco, Inc.5, 6
Apple Computer, Inc. v. Microsoft Corp.,
35 F.3d 1435 (9th Cir. 1994)
9
Atari Games Corp. v. Oman1
Baxter v. MCA, Inc.,
812 F.2d 421 (9th Cir. 1987)
8
Bean v. Littell,
669 F. Supp. 2d 1031 (D. Ariz. 2008)
6
Bilski v. Kappos,
130 S. Ct. 3218 (2010)
1
Dr. Seuss Enters., L.P. v. Penguin Book USA, Inc.,
924 F. Supp. 1559
11
Fred Fisher, Inc. v. Dillingham,
298 F. 145 (S.D.N.Y.1924) (L. Hand, J.)
8
Home & Nature, Inc. v. Sherman Specialty Co.,
322 F. Supp. 2d 260 (E.D.N.Y. 2004)
11
Hustler Magazine, Inc. v. Moral Majority, Inc.,
796 F.2d 1148 (9th Cir. 1986)
6, 8, 10
L.A. Printex Indus., Inc. v. Aeorpostale, Inc.,
No. 10-56187, 2012 U.S. App. LEXIS 7079 (9th Cir. Apr. 9, 2012)
8
L.A. Times v. Free Republic,
1999 WL 33644483 (C.D. Cal. Nov. 8, 1999)
6, 7
Merch. Transaction Sys., Inc. v. Nelcela, Inc.,
2009 U.S. Dist. LEXIS 25663 (D. Ariz. Mar. 17, 2009)
9
Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146 (9th Cir. 2007)
9, 11

iii


Perfect 10 v. Cybernet Ventures11, 12
Range Road Music, Inc. v. East Coast Food, Inc.,
2012 U.S. App. LEXIS 3173 (9th Cir. Feb. 16, 2012)
9, 13
Reader’s Digest Ass’n v. Conservative Digest, Inc.1
Religious Tech. Ctr. v. Lerma,
1996 U.S. Dist. LEXIS 15454 (E.D.Va. Oct. 4, 1996)
6
Salestraq Am., LLC v. Zyskowski,
635 F. Supp. 2d 1178 (D. Nev. 2009)
12
Shaw v. Lindheim,
919 F.2d 1353 (9th Cir 1990)
7
Sheldon v. MGM,
81 F.2d 49 (2d Cir. 1936)
7
Smith v. Jackson,
84 F.3d 1213 (9th Cir. 1996)
2
Streetwise Maps v. VanDam, Inc.,
159 F.3d 739 (2d Cir. 1998)
12
Super Future Equities, Inc. v. Wells Fargo Bank Minn.8, 9
STATUTES
35 U.S.C. § 1011
OTHER AUTHORITIES
37 C.F.R. 202.3(b)(4)(i)(A)5
37 C.F.R. § 202.3(b)(4)(i)(A)5
Nimmer on Copyright § 13.03[F][5]11

iv


Oracle responds as follows to the Court’s questions at trial (RT at 882-92, 915-22) and in recent orders (ECF Nos. 948, 951, 953) regarding copyright issues.

I. COURT’S QUESTIONS FROM APRIL 19, 2012 (RT at 882-892)

A. Could you get a patent on the structure, sequence, and organization of the
APIs? Is that the proper subject matter of a patent?
No. The Patent Act specifies four categories of patent-eligible subject matter: processes, machines, manufactures, and matter compositions. See 35 U.S.C. § 101, Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010). Structure, sequence, and organization are none of these. Oracle’s 4/3/11 Brief notes that patent-eligible subject matter may embody API elements. (ECF No. 853 at 6-7.)

B. When software is registered with the Copyright Office, is the structure,
sequence, and organization investigated by the Copyright Office?
Whether the Copyright Office conducts such an investigation in any particular case is uncertain, and Oracle makes no claim here that such an investigation was conducted.

Decisional law relating to registration, however, indicates that the Copyright Office sometimes conducts such an examination and also provides useful guideposts in this case. In Atari Games Corp. v. Oman, the D.C. Circuit reversed the Copyright Office when it applied the wrong standard for copyrightability to the computer game BREAKOUT. 888 F.2d 878 (D.C. Cir. 1989). The defendant in Atari was the Register of Copyrights. The Register had determined that the simple shapes that made up the game’s different elements did not themselves qualify for copyright protection and denied registration. Id. at 879–80. The D.C. Circuit reversed. The Register had improperly “subjected BREAKOUT to a component-by-component analysis,” when its focus “ultimately should be” on the “total sequence of images displayed as the game is played.” Id. at 883. Because “simple shapes, when selected or combined in a distinctive manner indicating some ingenuity, have been accorded copyright protection both by the Register and in court,” the Register was bound to consider the arrangement of video game elements as a whole when determining whether or not to issue a certificate of copyright. Id. at 882–883.

Similarly, in Reader’s Digest Ass’n v. Conservative Digest, Inc., the D.C. Circuit held that the “distinctive arrangement and layout of” the ordinary lines, typefaces, and colors of the magazine meant that it should be “entitled to protection as a graphic work,” because “Reader’s

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Digest has combined and arranged common forms to create a unique graphic design and layout.” 821 F.2d 800, 806 (D.C. Cir. 1987). The court in Atari admonished the Register to “take careful account” of Reader’s Digest in delivering its reconsidered opinion. Atari, 888 F.2d at 883.

These decisions warn against analyzing the API elements here on too granular a basis. As to names, for example, even if an individual name might not be protectable, the selection, arrangement, and structure of the names as embodied in API declarations, viewed as a whole, is copyrightable subject matter.

C. For a derivative work, does the plaintiff have to prove that the defendant
actually possessed and derived their own work from the copyrighted work?
No. Oracle is required to prove that Google copied in order to prevail on a claim concerning a derivative work, but Oracle is aware of no case that affirmatively requires the plaintiff to show that an infringer actually had in its possession the work from which the derivative work is based. Even access (as opposed to possession) is not a necessary condition of an infringement case; proof of access lowers Oracle’s burden on similarity. See Smith v. Jackson, 84 F.3d 1213, 1220 (9th Cir. 1996) (“access eliminates the need for a plaintiff to establish a ‘striking similarity’ between plaintiff's and defendant's work”).

Here, however, Google has admitted copying. See section I.D, infra. If Oracle did not have this direct evidence of copying, it also would have been permitted to create an inference of copying by proving substantial similarity and access. Google, of course, has admitted both of these facts as well. (See ECF No 946 (“For the 37 accused API packages, Android and Java 2 SE Version 5.0 have substantially the same selection, arrangement and structure of API elements.”); Google’s Responses to Oracles RFAs (“Google admits that Android developers employed by Google had access to publicly available . . . documentation for Java 2 Standard Edition Version 5.0 before November 5, 2007.”).)

D. Will the evidence show that the Google engineers who worked on Android
source code possessed the Oracle Java API documentation?
Yes. Google has admitted such possession. Bob Lee, formerly the core libraries lead for Android, testified on Friday, April 20, that he consulted the Java API specifications while working on the core libraries:

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Q. You consulted the Java API specifications to make sure that the Android code for the corresponding core libraries would be consistent with those specifications, correct?

A. Yes.

Q. The Java API specifications that you consulted were available on Sun's website, correct?

A. Yes.

Q. And you consulted those Java API specifications while you were doing work for Google on Android, correct?

A. Yes.

Q. You saw that there were copyright notices on the Java API specifications when you consulted them, correct?

A. Yes.

(RT at 982:25–983:12 (Lee).)

Counsel for Google also has admitted in open court that the Android engineers not only had access in the theoretical sense; they affirmatively looked at the Java API specifications while they were writing code for Android. (See RT at 910:23 –912:10 (“what Google used were the API specifications”); RT at 886:22–887:6 (“There was . . . in discovery, Your Honor, that at least some of the engineers who worked on the libraries did have access to, did look at, some of the English language prose descriptions of the APIs.”).)

E. Are there subsidiary questions of fact that the jury should decide that would
tie into the judge’s determination on copyrightability?
No. There are no subsidiary questions of fact that the jury needs to decide relating to the judge’s determination on copyrightability.

II. COURT’S QUESTIONS FROM APRIL 20, 2012 (RT at 915-22)1

A. Does the term “class libraries” refer only to the compiled object code or to the
object code and the source code?
Used properly, “class library” refers only to the compiled object code. Mark Reinhold, Oracle’s Chief Architect of the Java Platform Group, testified that a “library is the compiled form of the code that can be used directly.” (RT at 592:17-593:3 (Reinhold).) One should use the

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1 To the extent the Court’s questions of April 20, 2012, were subsumed within the questions posed in ECF No. 948, they have been omitted in this section.

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phrases “class library source code” or “source code for the class libraries” to refer to the source code. Oracle’s counsel has sometimes not observed the distinction between source code and object code. (See, e.g., ECF No. 859 at 3 (“The specifications are documents, the class libraries are source code programs.”); but see ECF No. 645 at 2 (“Class libraries are collections of alreadycompiled classes.”).)

B. What are the copyrighted works? Did Oracle identify the copyrighted works
in discovery responses?

1. Oracle Identified The Copyrighted Works In The Amended
Complaint And In Discovery Responses
The copyrighted works at issue are the APIs for the 37 packages and their associated class libraries (and their associated source code) and the 11 individual computer program code files. These were encompassed within the copyright registration for J2SE 5.0 and J2SE 1.4, which were registered as collective works, and also in various earlier registrations identified in the registrations for J2SE 5.0 and J2SE 1.4.

Oracle identified these copyrighted works in the Amended Complaint and in discovery. The Amended Complaint states:

Android includes infringing class libraries and documentation. Approximately one third of Android’s Application Programmer Interface (API) packages (available at http://developer.android.com/reference/packages.html) are derivative of Oracle America’s copyrighted Java API packages (available at http://downloadllnw. oracle.com/javase/1.5.0/docs/api/ and http://downloadllnw. oracle.com/javase/1.4.2/docs/api/) and corresponding documents. The infringed elements of Oracle America’s copyrighted work include Java method and class names, definitions, organization, and parameters; the structure, organization and content of Java class libraries; and the content and organization of Java’s documentation. Examples of this copying are illustrated in Exhibit I to this complaint.
(ECF No. 36 ¶ 40.) The referenced Exhibit I includes the API specification documentation with which the Court is now familiar for both Java and Android for the Security class, located within the package java.security, one of the 37 API packages accused in this case. (ECF No. 36-9.)

This paragraph continues: “In at least several instances, Android computer code also was directly copied from copyrighted Oracle America code.” (ECF No. 36 ¶ 40.) It specifically identifies “PolicyNodeImpl.java”, one of the 11 copied files, and attaches it as Exhibit J. (ECF No. 36-10.) At that time, Oracle had not identified all of the literally copied files.

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Oracle then identified the infringed packages in interrogatory responses served in January 2011. In its response to Interrogatory No. 2, Oracle identified 51 packages, attaching further sideby- side comparisons of the Java and Android APIs for several packages. (Ex. A at 7-9 (Oracle Resp. to Interrogatory No. 2).) That same response identified the 12 accused Android files. (See id.) The number of infringed packages was later reduced to 37 in supplemental interrogatory responses served in July 2011.

2. Registration Of The Different Versions Of The Java Platform
Also Registered The Individual Works Within It
Google misstated the law regarding copyright registration and the Court’s prior ruling on this issue. The Court correctly recalled that it resolved this issue against Google. (See RT 912:25-913:7.) Oracle registered the versions of the Java platform as collective works under a single copyright registration. This is permitted under the plain language of 37 C.F.R. § 202.3(b)(4)(i)(A).2 The Court held that Google’s proposed interpretation of the regulation was incorrect:

The plain meaning of this provision is that when a single published unit contains multiple elements “that are otherwise recognizable as self-contained works,” the unit is considered a single work for the limited purpose of registration while its elements may be recognized as separate works for other purposes.
(ECF No. 433 at 6 (emphasis in original).)

This principle is well supported by case law. In Am. Geophysical Union v. Texaco, Inc., the court held that each article within a journal was protected by copyright even though the publisher chose to register only each journal with the Copyright Office. 802 F. Supp 1, 17 (S.D.N.Y. 1992). The court rejected the defendant’s argument that the work as a whole should be the journal that was registered:

This argument constitutes imaginative lawyering, but it does not prevail. Each article, note or letter published in Catalysis is a separately authored work, protected by a copyright, which the authors have assigned to Academic Press. Because it would
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2 That provision states: “For the purpose of registration on a single application and upon payment of a single registration fee, the following shall be considered a single work: (A) In the case of published works: all copyrightable elements that are otherwise recognizable as self-contained works, that are included in a single unit of publication, and in which the copyright claimant is the same.” 37 C.F.R. 202.3(b)(4)(i)(A).

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involve gigantic expense and inconvenience to register separately each of the 20 odd items that appear in an individual issue, Academic Press registers each issue with the Copyright Office. It does not follow from the manner of registration with the Copyright Office that the “copyrighted work” for the purposes of fair use analysis consists of the entire issue rather than the separate creations of the separate authors.
Id. at *17.

The Ninth Circuit reached a similar conclusion in Hustler, finding that the “entire work” there consisted of a one-page advertisement parody in a 154-page magazine. Hustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148, 1154 (9th Cir. 1986) (“the parody is not an interwoven component of the magazine, but can stand totally alone. A creative work does not deserve less copyright protection just because it is part of a composite work.”); see also Religious Tech. Ctr. v. Lerma, 1996 U.S. Dist. LEXIS 15454, at *27 (E.D.Va. Oct. 4, 1996) (“Although Lerma did not post the entirety of [the materials registered with the Copyright Office], he did post the entirety of certain discrete subparts of these series. Under the Code of Federal Regulations and under case law, these subparts constitute single works and are the benchmark against which to compare Lerma's actions.”); Bean v. Littell, 669 F. Supp. 2d 1031, 1034 (D. Ariz. 2008) (“When a claimant registers a collective work, the copyright protection can also extend to each constituent part of that work.”); L.A. Times v. Free Republic, 1999 WL 33644483, at *19 (C.D. Cal. Nov. 8, 1999) (rejecting defendants’ contention that “plaintiffs’ ‘work’ is the entire daily newspaper because their copyright registration covers the paper as a whole rather than any particular article”).

The cases cited above show courts follow a practical, case-by-case approach in determining what should be considered a separate work. Here, the API packages can be considered separate works. Dr. Reinhold described the process by which API packages are developed and added to J2SE through the Java Community Process. He testified, for example, that he submitted a Java Specification Request (JSR) for the java.nio package to the JCP, formed an expert group, and went through 30 drafts over the course of two years before finalizing the java.nio API specification for formal approval. (RT at 624:3-627:17 (Reinhold).) Individual API packages have been separately authored, developed and added by this process for many years, and the number of API packages in Java has increased dramatically over time. Dr. Reinhold

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testified that Java 1.0 had seven API packages, Java SE 5 had 166, and Java 7 has 209. (Id. at 631:19-25.) He also testified that others created individual API packages that compete with the Java API packages, and used java.util.logging as an example. (Id. at 630:11-631:18.) Accordingly, the specifications for the API packages are recognizable works, as are the files for the implementations of the API packages. As in Texaco, it was unnecessary for Sun to register separately each part of the APIs, class library source code, class libraries, and compiler and other tools for a given version of the Java platform. Texaco, 802 F. Supp at 17. The Copyright Office does not want this either, and its rules do not require it. The separate creations in J2SE are the copyrighted works at issue, not the entire platform. That Google copied from only a subset of the API packages and did not need to copy the remainder is further evidence that the packages are separable works.

C. What will we tell the jury they should be comparing for copyright
infringement purposes?
For infringement purposes, the jury should be told they should compare the 37 API packages in Java SE to the corresponding 37 API packages in Android, at the documentation and code levels. Because Google has stipulated, however, that “Android and Java 2 SE Version 5.0 have substantially the same selection, arrangement and structure of API elements,” (ECF No. 946), this issue should not have to go the jury.

Similarly, the jury should be told to compare the 12 code files in Android to their corresponding code files in Java SE because the Java SE files are each independent, original computer programs.

Google argues that the portions of Java it copied for Android comprise a relatively small portion of Android as a whole. But it is of no moment that Google added its own work to the 37 APIs copied from Oracle, and the jury should be instructed accordingly. “No plagiarist can excuse the wrong by showing how much of his work he did not pirate.” Shaw v. Lindheim, 919 F.2d 1353, 1362 (9th Cir 1990) (quoting 4 Nimmer on Copyright § 13.03[B][1][a])); Sheldon v. MGM, 81 F.2d 49, 56 (2d Cir. 1936)(J. Hand)(stating the same). Further the Ninth Circuit has consistently held that “a copyright defendant need not copy a plaintiff’s work in its entirety to

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infringe the work. It is enough that the defendant appropriated a substantial portion of the plaintiff’s work. L.A. Printex Indus., Inc. v. Aeorpostale, Inc., No. 10-56187, 2012 U.S. App. LEXIS 7079, at *22-23 (9th Cir. Apr. 9, 2012).

Google’s argument that the portion of Java it stole was a relatively small portion of the overall platform is also contrary to Supreme Court law, which emphasizes the need to look at the “qualitative” aspect of what was used. Harper, 471 U.S. at 545 (copying of 300 words of quotation from unauthorized manuscript of Gerald Ford memoir was not fair use). In fact, courts have repeatedly held that very small snippets of larger works taken from larger copyrighted works can constitute copyright infringement. See e.g., Baxter v. MCA, Inc., 812 F.2d 421, 425 (9th Cir. 1987) (stating that a six-note sequence taken from a copyrighted song could constitute result in copyright infringement of the larger work); Fred Fisher, Inc. v. Dillingham, 298 F. 145 (S.D.N.Y.1924) (L. Hand, J.) (eight note “ostinato” held to infringe copyright in song).

III. COURT’S QUESTIONS FROM ECF 948

A. What case law or other authority is there that states the judge must identify
the “work as a whole” (for similarity, fair use, and de minimis) for the jury?
Which party has the burden to identify the “entire work”?
Oracle has not found any case law or other authority directly analyzing whether the judge or the jury should make the “work as a whole” determination. Several decisions support that the “work as a whole” determination is a question of law for the Court.

Summary judgment rulings on fair use defenses are the most relevant authority. Fair use is a “mixed question of fact and law.” See, e.g., Hustler, 796 F.2d at 1150-51. Yet, summary judgment is frequently granted even in the presence of a dispute about the scope of the “work as a whole.” In Super Future Equities, Inc. v. Wells Fargo Bank Minn., the court granted summary judgment of copyright infringement, holding that the one copied page from a website was the “whole of the copyrighted work. . . not the entire website.” 553 F. Supp. 2d 680, 699-700 (N.D. Tex. 2008) (citing L.A. Times, 1999 WL 33644483). Likewise, in Hustler, the Ninth Circuit affirmed the lower court’s grant of summary judgment of fair use. In reaching its determination, the Ninth Circuit held that the “entire work” was the advertisement that had been copied and not

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the whole magazine, even though it made up less than one percent of the 154 page-long magazine. Id.

Asking the Court to identify the work as a whole is consistent with the law requiring the court to determine copyrightability and thereby to identify the scope of copyright protection and the relevant standard for comparison for the jury. See, e.g., Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994). The court sets the framework for the analysis, and the jury conducts the comparison.

It is particularly appropriate for the Court to decide the issue of the work as a whole here, because Google is claiming that the work as a whole should be the entire J2SE 5.0 platform based on Oracle’s pleading and the fact that the platform was the subject of the copyright registration. Both arguments are incorrect, but raise legal issues for resolution by the Court.

With respect to which party bears the burden of identifying the “entire work” in the context of substantial similarity, fair use, or the de minimis defense, Oracle has located no case that directly addresses the issue. Logically, the burden should be borne by the party who raises the issue in the course of proving its claims or defenses. As discussed in section III F. below, because of the evidence of Google’s direct copying, Oracle need not prove substantial similarity. Range Road Music, Inc. v. East Coast Food, Inc., 2012 U.S. App. LEXIS 3173, at *10 (9th Cir. Feb. 16, 2012). In this case, therefore, Google should bear the burden of identifying the “entire work” because it arises solely in the context of its affirmative defenses. Google bears the burden of proof on fair use. See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1158 (9th Cir. 2007). And Google bears the burden of showing that its copying was de minimis. See Merch. Transaction Sys., Inc. v. Nelcela, Inc., 2009 U.S. Dist. LEXIS 25663, at *61 (D. Ariz. Mar. 17, 2009) (“Thus, Nelcela will not escape liability unless it can show that the protectable elements in the Lexcel software constitute an insignificant (quantitatively and qualitatively) portion or aspect of the Lexcel software.”).

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B. With respect to what segment of the “work” can stand alone within the
meaning of Hustler v. Moral, 796 F.2d 1148, 1155 (9th Cir. 1986), the Court
wishes to know whether the implementation of the 37 API packages inherit,
call upon, invoke, or incorporate any method, field, or class outside the 37.
Yes. Oracle’s implementation of the 37 API packages calls upon and invokes methods, fields, and classes outside the 37, although they do not inherit from or incorporate from outside the 37. The declarations in Oracle’s implementation contain relatively few cross-references to API elements outside the 37 packages, and those cross-references are limited to only a few packages, as explained below in Section IV.C.

That there are calls to packages outside the 37, however, should not affect the “work” determination. By analogy, a volume of Deering’s California Code Annotated may crossreference and point the reader to other volumes, but that volume alone could still be considered a “work.” Similarly, a web page might provide hyperlinks to other web pages, but that should not affect whether the web page could serve as a “work” for infringement purposes.

C. Why shouldn’t we let the jury decide what the “work as a whole” is?
As discussed in Section III.A above, the jury should not be permitted to decide what the “work as a whole” is. Google is raising challenges based on legal grounds that are for the Court to decide. In addition, Oracle believes the Court is in a much better position to apply copyright law to determine the appropriate work. The Court should set the framework for the analysis and the jury can then apply it in making a comparison.

D. Is the “work as a whole” the same for purposes of “substantial similarity (or
virtually identical),” “fair use,” and “de minimis” copying? If not, how are
the “works as a whole” to be found for these purposes?
Yes. Oracle is aware of no authority and no reason to apply different definitions of the “work as a whole” when analyzing infringement, fair use, or de minimis copying.

Of critical importance, however, courts evaluating substantial similarity, fair use and de minimis copying require defendants to prove that their copying was both quantitatively and qualitatively insignificant to escape infringement. Google will not be able to meet that standard here as to the APIs for the 37 packages. The evidence shows they were the product of many years of work, (RT at 624:2-626: 15 (Reinhold) (two years for java.nio Package alone)), and

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Google is claiming that they were so important it was necessary for Google to copy them. “[E]ven a quantitatively small amount of copied material may be sufficiently important to the operation of a plaintiff's program to justify a finding of substantial similarity. For instance, a small portion of the structure or code of a program may nonetheless give it distinctive features or may make the program especially creative or desirable. In such a case, a finding of substantial similarity is appropriate.” Nimmer on Copyright § 13.03[F][5] (internal citations omitted). Here Google deliberately engaged in extensive copying of material everyone acknowledges was significant. As the cases cited in section II.C show, Google cannot justify its detailed copying by trying to place it within a larger frame of reference, whether it be under the rubric of substantial similarity, fair use, or de minimis copying.

E. For purposes of identifying the “work as a whole,” should Oracle be held to
the copyrighted work identified in the operative complaint?
No, as a legal matter, but it does not matter because as discussed in section II.B. above, Oracle identified the works in the Amended Complaint. Oracle alleged that Google infringed its copyrights in the API packages, class libraries, and related documentation, and literally copied individual code files, and attached specific examples. (ECF No. 36 ¶ 40 and Ex. I-J). For the API packages, the Amended Complaint specifically referred to “structure and organization” as well as various API elements such as methods and classes that had been copied. (ECF No. 36 ¶ 40).

We have located no decision that requires precise pleading of the “work as a whole” that ultimately will be subject to infringement analysis at trial. As a legal matter, Oracle’s only pleading requirement was to give Google fair notice of the claims against it. See e.g., Home & Nature, Inc. v. Sherman Specialty Co., 322 F. Supp. 2d 260, 266-267 (E.D.N.Y. 2004); Dr. Seuss Enters., L.P. v. Penguin Book USA, Inc., 924 F. Supp. 1559, 1563 note 3 (S.D. Cal. 1996). Indeed, Oracle’s pleading is more detailed than pleadings deemed sufficient in Perfect 10 v. Cybernet Ventures. In Perfect 10, the plaintiff’s complaint broadly identified “copyrights involving their magazines and identifie[d] ownership of the pictures within the magazines.” 167 F. Supp. 2d 1114, 1121 (C.D. Cal. 2001). But the plaintiff did not systematically identify the

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precise copyrighted material defendant infringed. The court nevertheless held that this generalized allegation was “sufficient to notify [the Defendant] as to the type of infringing conduct and the source of the claims.” Id. (denying defendant’s motion to dismiss for lack of subject matter jurisdiction). The court reminded defendants that the details of plaintiff’s copyrights could be “elicited during the discovery stage.” Id.

Google may use this or another of the Court’s questions to raise a different issue: whether Oracle should be limited to the registrations that were attached to the complaint. To date, Google has not specified how this might affect the claims here. No case throws a plaintiff’s copyright claim out because the defendant proves it copied registered Work B while the registration for Work A was the one attached to the complaint.

But even if Oracle were held to the registrations it attached, by referencing copyright registrations that cover works derived from earlier copyrighted works, Oracle properly asserted claims relating to the entire series of copyrighted works. When a copyright owner obtains a registration for a final version in a series of versions of a work, that final registration covers preceding versions of the derivative work. AFL Telecomms. LLC v. SurplusEQ.com, Inc., 2012 U.S. Dist. LEXIS 49239, at *6 (D. Ariz. Apr. 9, 2012). In AFL, the court held that in such a case, “it is reasonable to infer…that each successive version incorporates the preceding versions.” (Id.) Therefore, registration of a derivative work “permits legal actions on preceding versions of the work.” Id., at *6; see also Streetwise Maps v. VanDam, Inc., 159 F.3d 739, 747 (2d Cir. 1998) (“the registration certificate relating to the derivative work . . . will suffice to permit [the plaintiff] to maintain an action for infringement based on defendants' infringement of the preexisting work”); Salestraq Am., LLC v. Zyskowski, 635 F. Supp. 2d 1178, 1181 (D. Nev. 2009).

The copyright registrations identified in Exhibit H to Oracle’s complaint cover works derived from previous versions of Java. Accordingly, by referencing those registrations, Oracle has asserted registration of its copyrights in both the new material in those registered versions of Java and the older material from which it is derived. In addition, all of the registrations were identified and produced in discovery at the outset of the case and have now been admitted into evidence at trial.

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F. If the SSO and declarations are held to be protected elements, then why are
there still issues of access and similarity for purposes of infringement
(excluding de minimis and fair use)? Put another way, isn’t substantial
similarity only an issue if there isn’t an admission of factual copying of
protectable elements?
Substantial similarity is not an issue when there has been an admission of factual copying, as is the case here. The Ninth Circuit recently confirmed this in Range Road:

“Substantial similarity” is not an element of a claim of copyright infringement. Rather, it is a doctrine that helps courts adjudicate whether copying of the “constituent elements of the work that are original” actually occurred when an allegedly infringing work appropriates elements of an original without reproducing it in toto. See Funky Films, 462 F.3d at 1076. A showing of “substantial similarity” is irrelevant in a case like this one, in which the Music Companies introduced evidence that the public performances entailed direct copying of copyrighted works. See id. (noting that a demonstration of substantial similarity is only necessary to prove infringement, “[a]bsent evidence of direct copying”).
Range Road Music, 2012 U.S. App. LEXIS 3173, at *10 (emphasis added). As noted above, Google has admitted copying the 37 API packages and the rangeCheck() file, so a showing of substantial similarity as part of an inferential record of copying is not required.

IV. COURT’S QUESTIONS FROM ECF 951

A. Do any of the Sun compiled lines in the 37 APIs call upon part or all of
another API as a step?
Yes. Sun/Oracle’s class, method, and field declarations in one package often reference classes defined in another package. An example discussed at the pretrial conference was the class SSLPermission, which is defined in the package javax.net.SSL, and which is a subclass of a class called BasicPermission, which is defined in the java.security package. (ECF No. 895, 3/28/11 Hr’g Tr. at 59:22-60:8.) Other illustrative examples include:

1. The class java.awt.font.NumericShaper has a method called “toString(),” which returns a java.lang.String.

2. The class java.net.Socket has a method called “getInputStream(),” which returns a java.io.InputStream and throws a java.io.IOException.

3. The class java.nio.channels.Channels has a method called “newWriter,” which takes a java.lang.String parameter (among others) and returns a java.io.Writer.

These and other cross-package examples appear consistently in both the J2SE API specifications and in the source code for the class libraries, which in turn is reflected in the object code.

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B. If so, do the accused APIs likewise call upon the same other API? That is,
even though the implementations are different from the Sun implementation,
do the accused APIs borrow from other APIs in the same pattern?
Yes. Google has admitted that Android and J2SE Version 5.0 have substantially the same selection, arrangement and structure of API elements for the 37 packages. Testimony established that Google’s overall goal was to copy the pattern and not deviate from it:

Q. And in your work with these APIs that were already in Android where you were working on the code and trying to improve it and fix the bugs, as to any of them, did you ever make any changes to any of the method declarations or the other elements of the APIs that you identified in the chart that you drew this morning?

A. None whatsoever. I couldn’t. It wouldn’t have been possible.

(RT at 810:25-811:6 (Bloch).)

C. If the answer to question A is yes, do any of the compiled lines in the 37 Sun
APIs call upon part or all of another API outside the 37? Put differently, is
all of the cross referencing done within the 37?
Yes, but not very many. Of the classes from the 37 packages copied in Android, only six packages contain declarations that refer to API elements from a package outside the 37. The six packages are java.security.cert, java.security.interfaces, java.security.spec, java.sql, java.util, and javax.sql, and the references outside the 37 are to one package: java.math. The classes in the six packages contain 104 methods or constructors that refer to only two classes in the java.math package: BigDecimal and BigInteger. Other than that, there is no cross-referencing from within the 37 APIs Google copied into Android to outside the 37 APIs. The APIs that Android copied are well-contained.

V. COURT’S QUESTIONS FROM ECF 953

A. What efficiencies, if any, are obtained by grouping methods or fields together
under a single class? Put differently, what would be lost if a method that
returned the cosine of an angle was grouped under a class other than Math?
This discussion should get the pros and cons of the particular
interrelationships (e.g., inheritance) within the 37 API packages.
The efficiencies to be gained from the particular relationships within the 37 API packages are primarily efficiencies of software development—specifically, reduced time-to-market and reduced development cost for both platform developers and application developers. A class library that is well-organized is one that is easier to learn, easier to use, and easier to maintain.

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Good API designs can also result in performance efficiencies. (RT at 513:9, 516:12, 619:24- 621:6, 633:15-634:25, 741:3-742:3, 748:17-22; TX 624 at 20-21.)

Placing methods in specific classes, or classes in specific packages, is important for organizational clarity for users of the library. It is also important for the developers and maintainers of the library. One reason is that the structure and organization provides encapsulation, also called information-hiding or modularity, which is a goal of API design. (TX 624 at 17, 26.)

Class inheritance and Interface implementation is a hierarchical form of organization that provides what is called “subtype polymorphism” and permits code reuse. From the point of view of implementation and maintenance (both improvements and bug fixes), the inheritance hierarchy reduces the number of times an algorithm must appear in the code. A method that is inherited by subclasses need only appear once, in the source code of the parent class. Likewise, a method that operates on objects of a class will also operate on that class’s subclasses, so need only appear once. In these cases, the code implementing the algorithm is easier to maintain by the platform developer, because it avoids multiple versions that need to be checked for consistency. Moreover, it is easier for an application developer—the user of the class libraries—to learn only one version of a method, rather than multiple descriptions in multiple class specifications.

Just as importantly, if the cos() method were grouped in a class other than Math, it would diminish the explanatory power of the organization and the ease of use of the class libraries, which arise from the aesthetics of the design of their APIs:

Q. There are aesthetic matters in API design; correct, sir?

A. Yes, there are.

Q. And it’s -- it’s not being prissy to think about aesthetic matters. The aesthetics of an API design are part of this noble and rewarding craft. Correct?

A. Yes. Generally, an API that displays good aesthetics will be easy to use. It’s like a car’s dashboard. Making it pretty isn’t just about making it nice to look at. The car will be actually easier to drive if you can see the speedometer.

(RT at 752:5-14 (Bloch).)

15


Dated: April 22, 2012

MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs

Attorneys for Plaintiff
ORACLE AMERICA, INC.

16



958

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 AMERICA, INC.’S MOTION TO
ADMIT TRIAL EXHIBIT 1026

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


Danger License

On April 20, 2012, Oracle offered into evidence TX 1026, which is a copy of the license agreement entered into between Sun Microsystems and Danger, Inc. (the “Danger license”). Google objected based on relevance and under Rule 403. (4/20/2012 Tr. at 1061:10-12.) The Court ruled: “[W]e’re not going to show this to the jury and it won’t be admitted just yet until we can have a further conversation out of the presence of the jury. So 1026 will be in limbo for awhile.” (4/20/2012 Tr. at 1061:18-22.)

Oracle submits this brief in further support of its proffer of TX 1026. As explained below, the Danger license is relevant to specific issues in this phase and there is no basis to exclude it under Rule 403.

First, the Danger license establishes Mr. Rubin’s knowledge of Sun’s licensing practices and requirements, and confirms that Mr. Rubin sought and obtained a license for Danger without Danger having used any Sun source code. Paragraph 4 of Attachment F to the Danger license (TX 1026 at p. 31 of 32) is titled “No Original Code” and includes an acknowledgement that Sun had not provided and Danger had not accessed any Sun source code, in effect doing an independent implementation of the specification. Thus, Danger paid for a license to nothing but the Java specifications. (4/20/2012 Trial Tr. at 948:24-950:4 (Swetland); 1062:16-1063:1 (Cizek).) Danger’s interest in Sun’s specifications as opposed to Sun’s source code is confirmed by Danger’s SEC filing identifying the various licenses that Danger obtained, including: “Sun Microsystems, Inc., for the use of its Java specifications.” (TX 3109 at p. 17 of 204 (emphasis added).)

Google has attempted to argue and to elicit evidence that Mr. Rubin and others at Android believed that they needed a license only if Android used Sun source code. (4/17/2012 Tr. at 246:24- 25 (Opening Statement by Google) (Google “didn’t need a license because they didn’t use Sun technology to build Android.”); id. at 276:1-3 (“They didn’t need a license from Sun. Didn’t need a license. They weren’t using Sun technology.”).) The Danger license confirms that Sun required licenses for the use of its Java specifications alone, and that Mr. Rubin knew this long before Android began infringing those specifications. (See also 4/17/2012 Trial Tr. 370:15-382:6 (Kurian); TX 610.1

1


(specification license).) Having argued that a license was required only when a party used Sun source code, and not for independent implementations based on the Java specifications, Google should not be permitted to exclude evidence to the contrary. The fact that Google’s use was not authorized by any license is relevant to Google’s fair use defense. See Atari Games Corp. v. Nintendo of Am. Inc., 975 F.2d 832, 843 (Fed. Cir. 1992) (“Because Atari was not in authorized possession of the Copyright Office copy of 10NES, any copying or derivative copying of 10NES source code from the Copyright Office does not qualify as a fair use”).

Second, the Danger license is relevant because it provides context for other evidence regarding Danger and the negotiations with Sun. For example, on March 24, 2006, Mr. Rubin, then already a Google employee, wrote: “Java.lang apis are copyrighted. And sun gets to say who they license the tck to ….” (TX 18.) When asked about that document during his deposition, Mr. Rubin testified that he understood that the Java.lang APIs were copyrighted based on his experience while at Danger. (Rubin 7/27/2011 Individual Dep. at 149:18-150:13.) Mr. Swetland testified that he also worked at Danger and understood, based on the Danger negotiations, that Sun’s position was that the method signatures contained in the Java APIs were copyrighted. (4/20/2012 Trial Tr. at 951:8-12). Mr. Swetland further testified that Danger took that license, despite having a clean room implementation and no contact with Sun source code, because Danger feared litigation by Sun over Danger’s use of the specifications alone. (4/20/2012 Trial Tr. 948:24-950:15, 973:21-974:2) Given the number of Android engineers who previously worked at Danger (Mr. Rubin, Mr. Swetland, Mr. Bornstein, and Mr. Lockheimer), the Danger license provides an important context to understand their experience, knowledge of Sun’s IP rights and assertions and, consciousness of guilt. All of these facts are to be weighed by the jury when they consider whether Google’s use of the Java specifications was fair. See, e.g. Religious Tech. Ctr. v. Netcom On-Line Commc'n Services, Inc., 923 F. Supp. 1231, 1244 (N.D. Cal. 1995) (defendant’s conduct is “properly a factor to be considered with the first statutory factor regarding the character of the use” for fair use) (citing Nimmer). It also provides a means of further understanding their trial testimony.

2


Third, the Danger license is relevant to address Google’s argument that Oracle’s claim that API specifications are independently subject to intellectual property protection was invented for this case. (4/20/2012 Trial Tr. 1114:5-7 (Google counsel arguing: “This API thing is an invented-afterthe- fact deal by Oracle. This is all made up. None of these people were talking about APIs back then.”). In fact, the Danger license shows that Sun has required a license for API specifications for at least a decade.

Fourth, the Danger license is relevant because it rebuts Google’s contention that Java technology was never used for any smartphone, and that Google’s copying was therefore transformative and excusable as fair use. In Google’s opening, Mr. Van Nest stated: “Google transformed Java. They transformed those APIs into something that would work on a smart phone and that means they made fair use of those APIs in Android.” (4/17/2012 Tr. at 247:11-13.) He later stated: “Google transformed these APIs into something that no one else is able to do. No one else was able to build a smart phone platform using Java, but a lot of people tried.” (4/17/2012 Tr. at 270:20-22; see also id. at 277:2-5.) During the 10-minute summary on April 20, Mr. Van Nest stated again that Google “transformed Java from something that wouldn’t work on a smart phone to something that works great on a smart phone.” (4/20/2012 Tr. at 942:25-943:2.)

Google’s claim that Sun’s Java technology was never used for any smartphone is incorrect, and the Danger license will assist the jury in evaluating the accuracy of Google’s claim. In response to questioning by Google’s counsel, Mr. Swetland testified that Danger “was building a next generation smart phone.” (4/20/2012 Tr. at 959:20-22.) That smartphone was based on and incorporated Java technology, and the Java specifications in particular. Mr. Cizek agreed that Danger’s device could be characterized as a smartphone, and also testified that RIM licensed Java technology for the Blackberry, another smartphone. (4/20/2012 Tr. at 1075:11-17; 1102:3-10.) Having asserted to the jury that Java technology was never used for any smartphone, Google should not be permitted to prevent the jury from now considering concrete, documentary evidence that establishes the opposite.

3


Fifth, there is no basis to exclude the Danger license under Rule 403. The jury is aware that Sun granted a license to Danger, and has heard testimony regarding that license. Providing a copy of the Danger license agreement provides a complete and accurate record with respect to those negotiations and the resulting license. There has been no uncertainty in the testimony regarding the fact that Danger and Google are two separate companies, and there is no reason to believe that admitting the Danger license into evidence will confuse or mislead the jury in any way.

Dated: April 22, 2012

BOIES, SCHILLER & FLEXNER LLP

By: Steven C. Holtzman
Steven C. Holtzman

Attorneys for Plaintiff
ORACLE AMERICA, INC.

4



959

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 AMERICA, INC.’S MOTION
SEEKING A CLARIFYING INSTRUCTION
AND PROFFER REGARDING APACHE
HARMONY

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


Oracle requests that the Court give a clarifying instruction to the jury regarding Apache Harmony to minimize jury confusion on the legal significance of Apache Harmony.

Introduction

Google has repeatedly argued to the jury that Apache Harmony had used Sun’s Java APIs and that “Sun said fine.” (E.g., 4/17/2012 Trial Tr. at 251:14-252:3 (Google Opening Statement).) Google has also repeatedly argued, and elicited evidence, that it took the 37 accused APIs from Harmony. Further, Google repeatedly refers to its distribution of Android under an “Apache license,” which does not actually mean any license from Sun to Apache or Apache to Google, but instead confusingly refers to the standard Apache terms that Google imposes on Android licensees. These arguments create a substantial risk of juror confusion and prejudice to Oracle.

Two of the three questions from the jurors have focused on Apache, but the issue is actually very simple: Apache never obtained any license from Sun permitting its use of the Java specifications for Harmony. As made clear by Apache itself, Apache never had a license from Sun or Oracle for Harmony. Apache had no rights to Java technology that it could give to Google. This not even a case in which there is a “cloud over Apache,” to use the Court’s phrase (4/20/2012 Trial Tr. 1114:16-20). Apache simply had no title at all, and has publicly conceded as much: When Apache resigned from the JCP in protest based on its inability to obtain a license, it stated in its resignation that the “Java specifications are proprietary technology that must be licensed directly from the spec lead under whatever terms the spec lead chooses.” (TX 1045 at p. 2.)

Thus, Google’s use of Apache Harmony provides no defense for Google. Oracle seeks an instruction to the jury that will prevent confusion and clarify that Google’s use of Harmony provides no defense to Oracle’s copyright infringement claims.

Background

Before 2007, the Apache Software Foundation (“Apache”) began a project to develop an independent Java SE implementation, which it named Harmony. Apache used the specifications set forth on Sun’s website to implement the Java APIs in Harmony. (4/17/2012 Trial Tr. at 251:15-16 (Google opening).) Use of those specifications for an independent implementation requires a specification license, and if any distribution of the independent implementation is sought, a TCK is

1


license is required. (TX 610.2) Apache sought a TCK license from Sun for Harmony, which Sun refused to grant without a field of use restriction that would prohibit any use in mobile devices. In April 2007, Apache posted on its website a letter to Sun’s Jonathan Schwartz in which Apache criticized Sun for refusing to grant Apache a TCK license for Harmony. (TX 917.) Apache stated that Sun was offering a TCK license for Harmony, but Sun’s insistence that its licenses include “field of use”1 restrictions, prevented Apache from accepting the license. (Id.)

The disagreement and negotiations between Sun and Apache continued for a number of years, and in the end Apache never received any license from Sun for Harmony. (4/17/2012 Trial Tr. at 396:8-9 (Kurian); 4/18/2012 Trial Tr. at 527:18-20 (Screven); 4/19/2012 Trial Tr. at 829:6-10 (Lee).) Apache resigned from the JCP in protest based on its inability to obtain that license, and stated in its resignation that the “Java specifications are proprietary technology that must be licensed directly from the spec lead under whatever terms the spec lead chooses.” (TX 1045 at p. 2.) Apache then later retired the Harmony project. (4/18/2012 Trial Tr. at 530:2-5 (Screven testimony).2)

Oracle’s Concern

Google’s presentation of evidence related to Apache Harmony will confuse and mislead the jury and prejudice Oracle. Consistent with settled copyright law, the parties have agreed that Google “cannot excuse what would otherwise be copyright infringement by claiming that it copied, with or without a license, from a third party, who in turn had copied from Oracle. (Dkt. 539 at 61 (Google’s Proposed Jury Instruction No. 18); compare id. at 60 (Oracle Proposed Jury Instruction No. 18).) Google’s repeated invocation of Apache Harmony and the “Apache license” risks leading the jury into legal error and confusion. Accordingly, clarification from the Court is both necessary and proper.

In its opening, Google featured a May 2007 internet publication that quoted Sun’s Jonathan Schwartz as stating “there is no reason that Apache cannot ship Harmony today.” (TX 2341.) When

_________________________________________

1 Field of use restrictions prevented Harmony from being used on devices other than computers, such as mobile phones. (4/18/2012 Tr. at 524:19-25 (Screven)).

2 See http://harmony.apache.org/subcomponents/drlvm/ (“Apache Harmony is retired at the Apache Software Foundation”).

2


questioned by the Court about that article, Google’s counsel characterized the article as “an excerpt from a press release where Mr. Schwartz said you can ship as long as you don’t call it Java.” (4/20/2012 Tr. at 1123:17-1124:5.) That characterization of the exhibit was inaccurate. The exhibit is not a press release. In the article, there is no mention by Mr. Schwartz or anyone else whether Apache or anyone else would “call it Java.” Indeed, the article repeats much of the licensing dispute between Sun and Apache recounted above. Immediately following the quote cited by Google, the article states, “That is technically true but Apache officials said that to do so with the TCK restrictions in place would actually go against the Apache Software license.” (TX 2341.)

Oracle is also concerned that Google is conflating and confusing three separate issues regarding “Apache” in general: (1) Apache’s use of Sun’s Java specifications for Harmony; (2) Google’s use of code from Apache Harmony; and (3) Google distribution of Android under the Apache license. In its 10-minute presentation to the jury, Google’s counsel stated that:

Third piece of importance evidence, you know now Apache was out there using these APIs, the same Structure, Selection and Organization they are claiming now, and they have been out there for years. …

Apache was out there selling -- now, there’s an Apache license that Apache gives. When Mr. Rubin is here next week, you'll hear that Google is distributing Android under the Apache license, which allows you to use all the APIs, some of the APIs, none of the APIs. The Apache license is what Google has been distributing under.

But the key point of Apache is not its license. The key point is, Sun was fully aware that here is somebody out there making these libraries and APIs available and they didn’t do anything about it.

(4/20/2012 Tr. at 940:16-941:9.) There is no dispute that Google offers Android under an Apachestyle license, and that Apache used the Java specifications for Harmony, and that Google used Harmony code for Android. But those are separate issues, and Google’s presentation risks confusion.3 Indeed, the form of license under which Apache distributed Harmony and under which Google distributes Android is irrelevant to any issue in this case. Google’s repeated reference to

_______________________________________

3 Indeed, the Court previously noted the risk of juror confusion when two different pieces of evidence coincidentally are described the same way. (Mar. 7, 2012 Hearing Tr. at 56:16-57:6 (warning that jurors would be confused by the fact that Java engineers grouped the patents in the Sun Java mobile technology portfolio into 22 categories, and then identified the top 22 patents overall).

3


these irrelevant licenses could foster the misperception that Apache—and by extension Google—had a license from Sun.

Apache acknowledged publicly – and Google has not disputed – that Apache had not obtained any license from Sun for Harmony, and warned that users of Harmony would not have all necessary IP rights from Sun. In connection with the letter that Apache posted to its website in April 2007 (TX 917), Apache also posted a FAQ (TX 1047), which stated in pertinent part that if Apache chose to distribute Harmony, “users wouldn’t be assured that they had all necessary IP rights from the spec’s contributors.” (TX 1047 ).

The webpage containing Apache’s April 10, 2007 letter to Sun recognized that Apache needed a TCK “to demonstrate compatibility with the Java SE 5 specification, as required by the Sun specification license for Java SE 5.” (TX 917.) Sun’s specification license permitted development and distribution of an “Independent Implementation of the Specification” but required that any such implementation pass the TCK and stated: “The foregoing license is expressly conditioned on your not acting outside its scope. No license is granted hereunder for any other purpose.” (TX 610.1). Apache never passed the TCK for Harmony, and Apache had no license.

The statement attributed to Mr. Schwartz in Trial Exhibit 2341 is consistent with Apache’s own statements, which confirm that Apache could comply with Sun’s TCK terms and ship, but until then, Apache had not obtained the necessary IP rights from Sun and any users – such as Google – would be at risk. As recently as December 2010, when Apache resigned from the JCP Executive Committee, Apache recognized that the “Java specifications are proprietary technology that must be licensed directly from the spec lead under whatever terms the spec lead chooses.” (TX 1045 at p. 2.)

Oracle’s Request For Relief

To address the potential confusion and prejudice caused by Google’s arguments regarding Apache Harmony, and also possibly to streamline the next phase of this trial and prevent the introduction of unnecessary and confusing evidence, Oracle believes that a clarifying instruction to the jury regarding the Apache Harmony issues is warranted. Oracle proposes the following:

You have heard testimony regarding a project called Apache Harmony, and you have also heard testimony regarding an Apache license. These are two separate issues, and I will provide some clarification on those two issues now.

4


Harmony was a project by the Apache Software Foundation to develop an independent implementation of Sun’s Java specification. The parties do not dispute that the Apache Software Foundation used Sun’s Java specifications for Harmony. There is also no dispute that the Apache Software Foundation sought a TCK license from Sun for Harmony, but Sun refused to grant one.

There has been evidence that Google used code from Harmony for Android. Because Sun never granted the Apache Software Foundation a TCK license for Harmony, you may not find that Google’s use of Harmony conveyed to Google any rights to use Sun’s Java specifications, or provides Google with any defense to copyright infringement, if you find that such infringement occurred.

You have also heard about the “Apache license.” The Apache license is a type of open source license that Google chose for its distribution of Android. It is not a license under which Sun made Java intellectual property rights available. Google’s distribution of Android under an Apache-type license is separate from the issue of Apache Harmony. The fact that Google distributes Android under an Apache license has nothing to do with Google’s use of code from Harmony, and also does not provide Google with any defense to copyright infringement, if you find that such infringement occurred.

Dated: April 22, 2012

BOIES, SCHILLER & FLEXNER LLP

By: Steven C. Holtzman
Steven C. Holtzman

Attorneys for Plaintiff
ORACLE AMERICA, INC.

5



960

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

Attorneys for Defendant
GOOGLE INC.

NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. 3:10-cv-03651 WHA

GOOGLE’S STATEMENT REGARDING
ORDER REGARDING PROPOSED
FINDINGS OF FACT AND
CONCLUSIONS OF LAW RE: ALL
ISSUES OF FACT AND LAW THAT
MUST BE RESOLVED BY THE JUDGE,
INCLUDING SCOPE OF PROTECTION
OF THE COPYRIGHTS

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


Google respectfully proposes only one modification to the Court’s proposed Order Regarding Proposed Findings of Fact and Conclusions of Law Re: All Issues of Fact and Law That Must Be Resolved by the Judge, Including Scope of Protection of the Copyrights. That proposed modification is that the first filing be due by noon on the second business day following the close of evidence in Phase One (instead of by noon on the first business day following the close of evidence).

Dated: April 22, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

1



962

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
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

Honorable Judge William Alsup

GOOGLE’S RESPONSE IN OPPOSITION
TO ORACLE’S MOTION FOR A
CLARIFYING INSTRUCTION ON THE
RELEVANCE OF APACHE HARMONY


Oracle’s motion for a preemptive jury instruction about Apache Harmony asks the Court to do the job of Oracle’s lawyers. Oracle wants the Court to make factual findings about Apache-related issues and impose them on the jury, rather than allowing the parties to present evidence and then argue the significance of that evidence to the jury, as should be done. Oracle’s obvious goal is to blunt the impact of the undisputed facts that Sun was aware of the Apache Software Foundation’s use and distribution of the same Java API packages at issue here for over five years, Sun was aware of the use of Harmony packages in Android, and Sun never asserted that Apache infringed its intellectual property. Indeed, to this day, Oracle has not made any assertions against Apache, which continues to make the Harmony API packages and class libraries available on its website today (http://harmony.apache.org/download.cgi).

As Oracle knows, and Google and the evidence has made clear, Sun and Oracle made no objection to Apache’s distribution of Harmony for years—either because they consented to Apache’s independent implementation or because they understood the API structure that Apache used was unprotected by any intellectual-property rights. These facts are some of the key bases of Google’s equitable defenses in this case. Apache did not secretly develop Harmony behind closed doors, but rather did so as a member of the Executive Committee of Sun’s Java Community Process (JCP). Moreover, in recognition of Apache’s achievements for “implementing Java specifications,” the JCP gave Apache its Member of the Year Award not once, but four times—in 2005, 2007, 2008 and 2009—while Apache was distributing Harmony.

Oracle now argues for its proposed instruction on the ground that the jury is not savvy enough to understand the facts regarding Apache, but its real goal is to confuse the jury into believing Apache is irrelevant because Apache never accepted the encumbered license Sun offered for its Technology Compatibility Kit (TCK) and use of the Java trademark. But the key point is that, despite never accepting the restriction Sun sought to place on the Harmony project, Apache made Harmony available to all comers for years without Sun making any claim that this violated Sun’s intellectual-property rights, much less a purported copyright on the selection, structure and organization of the 37 API packages at issue here.

1


The facts have shown, and the jury is more than capable of understanding, the following:

  • Apache has made available the same structure, selection, and organization of the same 37 API packages at issue here (along with over 100 other Sun Java SE API packages) since 2005.
  • Until its resignation from the JCP under protest, Apache never accepted that it needed a license to distribute the Harmony API packages.1
  • The license Sun was offering Apache had nothing to do with Sun’s right to distribute its Harmony API packages; it was a license to a Technology Compatibility Kit (TCK) that would have allowed Apache to prove compatibility with the Java SE specification and market itself using the Java trademark. (See, e.g., RT 829 11-15; 832:17-20 (“Sun had promised Apache a license, a TCK license, which I'm not even going to explain what that is. And Apache -- Sun had refused to deliver on this.”).)
  • Sun offered the TCK license contingent on a field-of-use restriction that Apache refused to accept. In other words, the issue was not that Sun would not grant Apache a TCK license; it was that Apache would not accept a TCK license that restricted its freedom to distribute its Harmony intellectual property. (RT 1121:12-15 (“And Sun says, You can have a TCK, but that TCK is going to have a field of use restriction to desktops and servers. And Apache says, You can't do that.”))
  • Sun’s CEO, Jonathan Schwartz, testified at deposition that Sun did not “look the other way” on Harmony. To the contrary, Sun knew and accepted that it could not stop Apache from building a clean-room implementation of Java class libraries. Sun’s only concern was whether Apache could brand itself as Java-compliant. For that, Sun insisted that Apache buy and pass the TCK. See Schwartz Dep. at 47:9-24 (“It was up to them to put whatever technology they wanted into their devices. If they called it Java, we would be involved. If they didn't call it Java, then they could call it
________________________________________

1 Oracle changes the meaning of Apache’s statement announcing its resignation from the JCP by omitting critical parts of that statement. (Dkt. No. 959 at 4 (quoting TX 1045 at 2.).) Apache’s full statement was as follows:

The Apache Software Foundation concludes that that JCP is not an open specification process—that Java specifications are proprietary technology that must be licensed directly from the spec lead under whatever terms the spec lead chooses; that the commercial concerns of a single entity, Oracle, will continue to seriously interfere with and bias the transparent governance of the ecosystem; that it is impossible to distribute independent implementations of JSRs under open source licenses such that users are protected from IP litigation by expert group members or the spec lead; and finally, the EC is unwilling or unable to assert the basic power of their role in the JCP governance process.
(Emphases added) In other words, after buying Sun in 2010, Oracle changed its position on the JCP’s rules and practices, turning it from an open specification process to something different. Apache’s statement didn’t concede that Java specifications were proprietary; it was bemoaning Oracle’s efforts to restrict those specifications (including by filing this lawsuit) as it resigned from the JCP under protest.

2


    a Linux phone, they could call it a free phone or an open phone, that's up to them.”)

  • For many years now, Apache has distributed the Harmony API packages for commercial use (without claiming Java compatibility) to downstream users like Google and others, pursuant to its Apache 2.0 license.
  • Sun never took any action against Apache to restrict the use or distribution of Harmony API packages, and neither has Oracle. (RT 833:12-17 (“Q. Okay. Now, during all of the discussions that you participated in as a member of the Executive Committee of the Java Community Process about Apache Harmony, did you ever hear anyone from Sun or Oracle ever say that they thought that Apache Harmony had infringed any copyrights of Sun? A. I never heard that.”; Id. at 965:22-966:6 (“There's been some fairly high-profile ones, like the GNU Compiler project, GCJ, which is a GNU compiler for Java, that compiles the Java language to native code, like x86 PC. And the GNU Classpath project, which was a complete implementation of all of these standard Java APIs to enable that, as well as things like the Apache Harmony project, which was another open source, you know, project that provided a Java virtual machine and the standard libraries. None of these projects seemed to fall afoul of, you know, this concern that had been expressed about these APIs.”
  • Although the Harmony project is no longer actively updated, the Harmony API packages and class libraries remain freely available for download from Apache’s website even today. See http://harmony.apache.org/download.cgi.
This is not complicated, and the jury is more than capable of figuring out these facts for itself. Counsel for Oracle are, as always, entitled in closing argument to characterize these facts in Oracle’s favor, by emphasizing that Apache was not itself licensed to use the TCK or Java trademark. But however much they may wish, they are not entitled to have the Court emphasize that single fact to the jury so that it stands out from the factual landscape as the only thing that matters. Plainly it is not the only important fact. Moreover, Oracle’s supposition that the jury might be confused that Apache had a license from Sun is based on nothing. No witness has testified that Apache had a TCK license, and several Oracle witnesses have made clear it did not, just like other witnesses have made the countervailing point that Apache never accepted Sun’s attempt to restrict its distribution of the Harmony APIs and Sun never sued, or even threatened to sue, Apache to stop that distribution.

Worse yet, Oracle appears to be requesting that the Court to make this instruction now, at the close of Oracle’s case, as a sort of request that the jury ignore the case Google has not yet had a chance to present and render a directed verdict for Oracle. But the jury has not yet heard from Google’s witnesses Eric Schmidt, Andy Rubin, and others, who will testify about Google’s

3


use of the Harmony API packages and class libraries, and the fact that Sun not only sat by while Apache distributed Harmony but even welcomed Google into the Java community after Google announced its use of Harmony intellectual property in Android. The jury has not yet heard from Sun’s former CEO Jonathan Schwartz, who spoke with authority for Sun on all things related to Apache and made the decision not to object to Apache’s distribution of Harmony to Google and others for various commercial uses. Oracle seeks to preclude the jury from even hearing Schwartz’s testimony that Sun’s dispute with Apache (to the extent there even was one) was about Apache’s desire to brand Harmony as Java-compatible, and had absolutely nothing to do with the selection, structure and organization of some API packages.2

Of course Oracle does not want the jury to hear any of this, because it would prove what Google has been saying all along—that Oracle’s claims about the “structure, selection, and organization” of its API packages was never raised contemporaneously with Apache. That claim was concocted by lawyers after Oracle tried and failed to compete in the smartphone market. And of course Oracle would love the Court to specifically instruct the jury that Apache was a scofflaw, because that would tend to discredit Google’s equitable defenses—despite the

_______________________________________

2 Just this past Friday, the Court made clear that the right way to present the Apache issue to the jury was to allow counsel to offer evidence, then explain that evidence in their closings:

Oracle has made a lot out of the fact that the word we got to get a license or take a license from Sun was used in various e-mails over the last ten years. And I can understand that and I'm not in any way being critical of Oracle for putting that in. I think good for you, you got that evidence. That helps you. But it is—it's one kettle of fish to say we need a license because we're going to use their source code and their implementation and another when the program is switched to we're not even going to use their implementation, we're going to do our own implementation so we don't have to go and get a license. And I—so I worry some that the jury may get the impression that these statements about needing a license are not taking those important differences into account. The best I can say on that is that there are good lawyers on both sides. Mr. Van Nest, you'll just have to explain that in your closing.
RT 1128:7-25. This is exactly the right way to handle the issue.

4


facts that Sun never asserted any right in the structure, selection, and organization of Java APIs against Apache, and in fact gave Apache free rein to make those API packages available in Harmony for years. Put another way, Apache would have needed a license to the Sun TCK and the Java brand, but it never needed any license to the API structure, because that structure is not protected by copyright, and Sun never contended it was.

In any event, the time for jury instructions is after the close of evidence, not now. This Court has made clear over and over that it disfavors broad, categorical evidentiary motions that are actually summary judgment motions in disguise. This is another such motion, although Oracle has chosen to bring it as a request for a jury instruction rather than as a motion to exclude evidence. The impact on the jury and the prejudice to Google’s defense (prior to Google’s first witness even taking the stand) from an explicit court instruction would be even greater. Google respectfully requests that the Court deny this motion. Oracle should stop looking for short cuts and make its case to the jury through evidence and closing argument.

DATED: April 22, 2012

KEKER & VAN NEST, LLP

By: /s/ Robert A. Van Nest

ROBERT A. VAN NEST - (SBN 84065)
[email]
CHRISTA M. ANDERSON -(SBN 184325)
[email]
DANIEL PURCELL - (SBN 191424)
[email]
Keker & Van Nest LLP
[address telephone fax]

5


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

DONALD F. ZIMMER, JR. - (SBN 112279)
[email]
CHERYL A. SABNIS - (SBN 224323)
[email]
King & Spalding LLP
[address telephone fax]

IAN C. BALLON - (SBN 141819)
[email]
HEATHER MEEKER - (SBN 172148)
[email]
Greenberg Traurig LLP
[address telephone fax]

ATTORNEYS FOR DEFENDANT
GOOGLE INC.

6



963

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
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 INC.’S OPPOSITION TO
ORACLE AMERICA, INC.’S MOTION TO
ADMIT TRIAL EXHIBIT 1026

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


Google opposes Oracle America’s motion seeking to admit Trial Exhibit 1026. This Exhibit, if admitted, would be far more prejudicial than probative of any issue in this case, and certainly of any issue in either of the liability phases of this trial. Oracle’s motion contains several misleading omissions that underscore precisely the concerns about prejudice and confusion that should keep this exhibit out of evidence under Rule 403.

Oracle’s motion begins with a quote from the Court as it sustained Google’s objection at trial, noting that 1026 “will be in limbo for awhile.” (Br. at 1.) But as the Court also stated: “[I]t’s okay for you to say that a license was entered into and move on to something new, but to get into these specific details like this, I’m beginning to see the merit in the 403 objection.” (4/20/2012 Tr. At 1060:24-1062:2.) For good reason. Oracle’s brief confirms that the 403 objection was correctly sustained and that the Court should uphold its exclusion.

Oracle claims that the Danger License “confirms that Mr. Rubin sought and obtained a license for Danger without Danger having used any Sun source code.” (Br. at 1 (emphasis in original).) Specifically, Oracle refers to a paragraph in the License as support for the proposition that “Danger paid for a license to nothing but the Java Specifications.” This selective quote fundamentally mischaracterizes the exhibit. The ellipsis masks the fact that code was actually to be delivered by Sun under the terms of the agreement. (See TX 1026 at 31-32.) As the Danger License states:

The parties acknowledge that, except for the Shared Part delivered to You by Original Contributor [Sun Microsystems], Original Contributor has not provided You under this License, and You assert that You have not accessed any Original Code, Upgraded Code or other Technology.
Id. (emphasis added). The Original Contributor is defined as “Sun Microsystems, Inc.” (id. at 17) and the contract defines the Shared Part as code:

e) “Shared Part” means those Original Code and Upgraded Code files of the Technology which are identified as “shared” (or words of similar meaning) or which are in any “share” directory or subdirectory thereof, except those files specifically designated by Original Contributor as modifiable.
Id. at 18 (emphasis added). Moreover, when deposed on this topic, Mr. Rubin testified that Sun required licensees to take the Shared Part. (TX 18 (emphasis added).) In other words, Oracle’s

1


primary basis for seeking the admission of Trial Exhibit 1026 is based on an incorrect and misleading citation of the Exhibit. For this reason alone, Oracle’s motion should be denied.

Whether or not anyone at Android “thought” or “knew” it “needed” a license has no bearing on the issue of liability in this case, and would be hopelessly confusing even in the damages phase. As the above quotation shows, looking at plaintiff’s brief in the most favorable light, even Oracle is confused. The confusion of the jurors can be expected to be far worse.

Oracle’s argument that the Danger License shows that “Sun has required a license for API specifications for at least a decade” is also misleading. (Br at 3.) Nowhere in the License are APIs broken out for purposes of a separate license, and Oracle does not point to anything in the License in support of its position.1 In any event, Oracle does not deny that APIs have been around for many years before Java was implemented. (4/19/2012 Tr. at 699 at 14-17). That APIs might be mentioned as part of a larger bundle of rights is, therefore, hardly surprising. Oracle’s attempt to mischaracterize the Danger License as recognizing APIs as a discrete, stand-alone form of protectable IP reveals Oracle’s strategy to try to confuse the jury on this issue—and the danger of admitting Trial Exhibit 1026 into evidence.

Oracle also fails to point out that that the Danger License apparently encompasses the conveyance of a trademark license under the Java brand. The Danger License states: “Has Trademark License been executed?: Yes”. (Tr. Ex. 1026, at 8.) This is precisely the opposite of the situation with Android, which never sought to market itself as Java or even Java-compliant, compounding the prejudice and further confusing the jury.

Oracle also argues that the Danger license “is relevant because it rebuts Google’s contention that Java technology was never used for any smartphone, and that Google’s copying was therefore transformative and excusable as fair use.” Even if Oracle could prove that Danger was a successful mobile platform, Oracle should pursue that goal through testimony about the product itself—not through an agreement that has nothing to do with the design of the phone. The License is probative of none of those issues.

__________________________________________

1 To the contrary, the Danger License expressly grants rights “covering the Original Code, Upgraded Code and Specifications.” (TX 1026 at 10.)

2


Dated: April 23, 2012

KEKER & VAN NEST LLP
/s/ Robert A. Van Nest
By: ROBERT A. VAN NEST
Attorneys for Defendant GOOGLE INC.

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