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Oracle v. Google - Day 8 Filings; Google (Potentially) Blows the Door Off Oracle's Copyright Claims - Updated: As Text ~mw
Thursday, April 26 2012 @ 09:05 AM EDT

Just about the time you think the filings will settle down in this case, we see a ton of them, none more important than Oracle's attempt to resurrect the '702 patent after agreeing to dismiss it from the case with prejudice and Google's motion for judgment as a matter of law. (970 [PDF; Text] and 984 [PDF; Text]).

Understandably, Google was not too thrilled about this attempt (971 [PDF; Text]), but as pointed out in yesterday's update from the courtroom, Judge Alsup wasted no time in slamming the door on this attempt by Oracle to go back on its promise. (978 [PDF; Text]) Interestingly, the judge was able to come to this easy conclusion despite the insistence of self-described patent expert, Florian Mueller, that the court would certainly allow Oracle to break its word.

As much fun as it was to see the '702 patent shoved back in the box, the bigger, bolder move was Google's assertion that Oracle is claiming that which they cannot (and must) claim, registration of the individual copyrights in the 37 individual API's. The point goes something like this:

Google: Oracle, you can only assert the work (all of Java) as a whole because that's what you registered.

Oracle: No, the registration was of a collective work, meaning the individual components are protected, as well.

Google: Are you sure about that?

Oracle: Absolutely certain.

Google: Well, why didn't you identify it as a collective work in the registration filing?

Oracle: Uhhhh.

Google: Of course, you know that the law says that to be a collective work all of the individual components must be separately copyrighted. Where are the registrations for those individual works?

Oracle: Uhhhh.

[See point F in Document 984 [PDF; Text] and document 982 [PDF; Text]

F. If the Court accepts Oracle’s “collective work” argument, Google is entitled
to judgment as a matter of law of non-infringement of each of the component
parts of the registered works, because Oracle has not proved authorship of
the constituent elements.

For the reasons given in Google’s supplemental brief filed earlier this evening, the Court should reject Oracle’s “collective work” argument, because Oracle did not register the Java 2 SE platform as a collective work. Google’s April 25 Copyright Brief, Dkt. No. 982, at 6-7. If, however, the Court accepts Oracle’s “collective work” argument, then Google is entitled to judgment as a matter of law of non-infringement of each of the component parts of the registered works, because Oracle has not proved authorship of the constituent elements. See id. at 7-9.

Thus, even assuming the Court accepts Oracle’s “collective work” argument, the failure to prove authorship of any constituent elements precludes Oracle from seeking relief except regarding the selection, coordination and arrangement of the individual component parts of the Java platform works.

In sum, if the Court accepts Oracle’s “collective work” argument, then Google is entitled to a judgment as a matter of law of non-infringement of each of the component parts of the registered works, because Oracle has not proved authorship of the constituent elements. First, Oracle could not argue infringement with respect to any literal copying of code. Second, Oracle could argue that the structure, sequence and organization of the 37 API packages is infringed, but only to the extent that its argument did not rely on anything “inside” any of those API packages.

Google's argument seemed to catch the Court off guard, and Judge Alsup then invited this motion by Google. Of course, Oracle disagrees (986 [PDF; Text]) (See Part II of Oracle's filing). But Google's point is Oracle can't have it both ways. Oracle can't argue that the 37 APIs "taken individually and as a unit" are covered by a copyright registration (a requirement for Oracle to bring a copyright infringement suit on them, not a requirement for copyright protection), but by insisting that the Java copyright registration is a collective work, Oracle seems to have stepped on themselves. Nowhere are those 37 APIs, either individually or as a unit, subject to a unique copyright registration; the only thing Oracle registered was the copyright in Java as a whole.

The determination of this issue in favor of Google will either (a) result in the dismissal of the copyright claims or (b) provide the support for Google's de minimis and fair use copying defenses.

Will the Court be prepared to deal with this issue today? Stand by.


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

Docket

04/24/2012 - 970 - MOTION Oracle Motion for Clarification Regarding 702 Patent filed by Oracle America, Inc.. Responses due by 4/24/2012. (Jacobs, Michael) (Filed on 4/24/2012)

04/24/2012 - 971 - RESPONSE (re [970] MOTION Oracle Motion for Clarification Regarding 702 Patent ) Google's Opposition to Oracle's Motion for Clarification re '702 Patent filed by Google Inc.. (Van Nest, Robert) (Filed on 4/24/2012)

04/25/2012 - 972 - ORDER TO PAY ADDITIONAL ATTENDANCE FEE. Signed by Judge William Alsup on 4/24/12. (dt, COURT STAFF) (Filed on 4/25/2012) (Entered: 04/25/2012)

04/25/2012 - 973 - ORDER GRANTING MOTION TO EXTEND DEADLINE FOR FILING UNDER SEAL AND GRANTING GOOGLE LEAVE TO FILE REVISED DECLARATION IN SUPPORT OF ORACLE'S MOTION TO SEAL by Judge William Alsup [granting 966 Motion for Extension of Time to File]. (whasec, COURT STAFF) (Filed on 4/25/2012) (Entered: 04/25/2012)

04/25/2012 - 974 - ORDER RE DEPOSITION DESIGNATIONS OF LARRY ELLISON (RE GOOGLE'S FINAL PACKET OF DEPOSITION DESIGNATIONS FOR LARRY ELLISON -- DATED 4/25/2012 BUT NOT FILED). Signed by Judge William Alsup on 4/25/2012. (whasec, COURT STAFF) (Filed on 4/25/2012) (Entered: 04/25/2012)

975 – No document

04/24/2012 - 976 - Minute Entry: Jury Trial held on 4/24/2012 before Judge William Alsup (Date Filed: 4/24/2012). Witness called. Plaintiff REST - Phase One. Further Jury Trial set for 4/25/2012 7:30 AM. (Court Reporter Kathy Sullivan; Debra Pas.) (dt, COURT STAFF) (Date Filed: 4/24/2012) (Entered: 04/25/2012)

04/25/2012 - 977 - Minute Entry: Jury Trial held on 4/25/2012 before Judge William Alsup (Date Filed: 4/25/2012). Witnesses called. Further Jury Trial set for 4/26/2012 7:30 AM. (Court Reporter Kathy Sullivan; Debra Pas.) (dt, COURT STAFF) (Date Filed: 4/25/2012) (Entered: 04/25/2012)

04/25/2012 - 978 - Order on Motion for Miscellaneous Relief Docket Text: ORDER REGARDING THE 702 PATENT by Hon. William Alsup denying [970] Motion.(whalc1, COURT STAFF) (Filed on 4/25/2012)

04/25/2012 - 979 - Witness List Docket Text: Witness List by Oracle America, Inc. Rolling Witness List. (Muino, Daniel) (Filed on 4/25/2012)

04/25/2012 - 980 - Order Docket Text: NOTICE OF FILING OF DRAFT SPECIAL VERDICT FORM GIVEN TO PARTIES ON APRIL 19 AND COMMENTS. Signed by Judge Alsup on April 25, 2012. (Attachments: # (1) April 19 Draft Verdict Form, # (2) April 20 Parties Comments)(whalc1, COURT STAFF) (Filed on 4/25/2012)

04/25/2012 - 981 - Witness List Docket Text: Witness List by Oracle America, Inc. Amended Rolling List of Next Ten Witnesses. (Muino, Daniel) (Filed on 4/25/2012)

04/25/2012 - 982 - TRIAL BRIEF Google's April 25 Copyright Brief by Google Inc. (Attachments: # 1 Exhibit A)(Van Nest, Robert) (Filed on 4/25/2012) (Entered: 04/25/2012)

04/25/2012 - 983 - Statement Oracle's Comments Regarding the Court's Draft Special Verdict Form by Oracle America, Inc.. (Attachments: # 1 Exhibit)(Jacobs, Michael) (Filed on 4/25/2012) (Entered: 04/25/2012)

04/25/2012 - 984 - MOTION for Judgment as a Matter of Law Google's Motion for Judgment as a Matter of Law on Sections of Count VIII of Oracle's Amended Complaint filed by Google Inc.. Responses due by 5/9/2012. Replies due by 5/16/2012. (Van Nest, Robert) (Filed on 4/25/2012) (Entered: 04/25/2012)

04/25/2012 - 985 - Statement Google's Comments on the Court's April 25 Draft Special Verdict Form by Google Inc. (Van Nest, Robert) (Filed on 4/25/2012) (Entered: 04/25/2012)

04/26/2012 - 986 - Brief Oracle's Copyright Brief Regarding Work as a Whole filed by Oracle America, Inc. (Jacobs, Michael) (Filed on 4/26/2012) (Entered: 04/26/2012)


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

Documents

970

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

BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[email]
[address, phone fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email]
[address, phone fax]

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email]
[address, phone, 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 MOTION FOR
CLARIFICATION REGARDING
'702 PATENT

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

Oracle America, Inc. ("Oracle") requests guidance from the Court regarding the inclusion of the '702 patent in the patent infringement phase of the trial. In response to the Court's request for "a candid discussion of the impact these [reexamination] rejections will have on the shape of trial," Oracle made the following commitment:
Accordingly, if the case goes to trial this spring, Oracle will withdraw from the litigation with prejudice each claim of the '720, '205, and '702 patents asserted against Google that remains rejected at the time of trial, and proceed with the copyright case, the '520 patent, the '104 patent, and any asserted claims of the other three patents that are confirmed by the PTO.
(ECF No. 777 at 2.) Oracle also stated that it had "substantial arguments supporting reconsideration, raising a credible prospect that one or more of the rejections will be reversed by the examiners." (Id.) It was for this rason that Oracle made its withdrawal conditional.

That prospect has come to pass. As the Court and the parties now know, on April 19 the PTO reversed its earlier decisions and confirmed the patentability of all the claims of the '702 patent in re-examination, which include all the claims that Oracle accuses Google of infringing. Google?s prediction that Oracle would be "unlikely to overcome the examiners? rejections" (ECF 16 No. 779 at 2) was wrong. Google's invalidity contentions have been weighed and found wanting, on a standard much more favorable to Google than what Google faces at trial. A reexamination certificate confirming the asserted claims will issue in due course?Google is not permitted to appeal the PTO's decision in the ex parte reexamination.

The Court has twice commented on Oracle's conditional withdrawal in written orders. On 21 March 13, 2012, the Court wrote:

In reliance on Oracle's withdrawal with prejudice of the '720, '205, and '702 patents, given the final rejections by the PTO examiner, and having twice admonished counsel to reserve mid-April to mid-June 2012 for the trial of this case, this order now sets April 16 as the first day of trial, which will be devoted to jury selection and opening statements. The trial shall continue day to day on the trifurcated plan previously set and on the daily 7:30 a.m. to one p.m. schedule previously set, with the trial expected to run about eight weeks.
(ECF No. 786 at 1.) Two days later, the Court wrote:
Another three [patents] rejected by the PTO examiner were withdrawn if the trial is held before the administrative appeals are completed, a withdrawal whose effect will be considered below. Therefore, there is a strong possibility that only the

1

'104 and '520 patents will be asserted at trial, and this order will only address issues pertaining to these two patents, without prejudice to revisiting objections specific to the withdrawn patents if they later arise.
(ECF No. 796 at 1.)

The Court trifurcated the trial in its January 4, 2012 Final Pretrial Order (ECF No. 675). Phase Two, which has not yet begun, "will be directed to all patent liability and defense issues, including any generalized defenses." (Id. at 3.) Phase One, which is underway, "will be directed to all liability and defenses for all copyright claims but not for any other issues." (Id. at 2.)

Because the patent infringement phase of the trial has not begun, Oracle does not regard the '702 patent as yet withdrawn and intends to assert the '702 patent in Phase Two. The evidence shows that Google has significantly benefited from its use of the '702 patent. Testing shows that Android application files are between 1.45 and 3.33 times smaller than they would be if the patented technology were not used, which results in a variety of additional performance benefits. (See Summary and Report of Noel Poore (TX669) at 13.) An injunction against Google?s continued infringement is warranted, particularly because the '702 patent does not expire until October 2017.

Not to allow the '702 patent to go forward would deprive Oracle of a significant intellectual property right. Google would not be unfairly prejudiced by including it, because the parties have prepared for and anticipated this moment. Both Oracle and Google kept their '702- related exhibits on the trial exhibit list. (When considering whether and what exhibits could be dropped, Google asked if Oracle had indeed dropped the '702 patent with prejudice. Oracle said "no.") No additional experts will need to appear. Oracle?s experts Profs. Mitchell and Goldberg are appearing for other patents, as is Google's '702 noninfringement expert Prof. Parr. (We assume Google will withdraw its failed '702 invalidity theories as it did for the '520 patent.)

Oracle brings this motion for clarification because the Court has characterized Oracle's conditional withdrawal differently at different times. Accordingly, Oracle respectfully requests that the Court confirm that Oracle may proceed to try infringement of the '702 patent in Phase Two in light of the PTO?s recent confirmation of all asserted claims.

2

Dated: April 24, 2011

MICHAEL A. JACOBS
MARC DAVID PETERS
DANIEL P. MUINO
MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs

Attorneys for Plaintiff
ORACLE AMERICA, INC.

3


971

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - #84065
[email]
CHRISTA M. ANDERSON - #184325
[email]
DANIEL PURCELL
[email]
[address, phone, fax]

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

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

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

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

_________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

___________________

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

GOOGLE INC'S OBJECTIONS TO
ORDER CLARIFYING ORDER
REGARDING JURY SELECTION

Judge: Hon. William H. Alsup

Date Comp. Filed: October 27, 2010

Trial Date: October 31, 2011

GOOGLE'S OPPOSITION TO ORACLE?S
MOTION FOR CLARIFICATION
REGARDING '702 PATENT

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

Google opposes Oracle's motion to undo its withdrawal with prejudice of the '702 patent, which it agreed irrevocably to dismiss no later than the day that trial commenced in this case.

On March 1, the Court asked Oracle to provide ?a clear answer? as to whether it was willing to "irrevocably withdraw with prejudice patents '720, '702, and '205" in light of the situation then existing in the PTO, and Oracle's repeated demands for a spring trial date. March 1 Order (ECF No. 757) (emphasis added). In response, Oracle made just such an unequivocal commitment:

Accordingly, if the case goes to trial this spring, Oracle will withdraw from the litigation with prejudice each claim of the '720, '205, and '702 patents asserted against Google that remains rejected at the time of trial, and proceed with the copyright case, the '520 patent, the '104 patent, and any asserted claims of the other three patents that are confirmed by the PTO.
Oracle's Statement Regarding Patent Reexaminations (ECF No. 777) at 2 (emphasis added). It repeated this commitment a page later:
Nevertheless, to achieve Oracle?s goal of bringing this case to trial in the Court's suggested timeframe (mid-April to mid-June, 2012), Oracle will agree to withdraw with prejudice any of the '720, '205, and '702 patent claims asserted against Google in this litigation that remain rejected at that time.
Id. at 3 (emphasis added). Unsurprisingly, Oracle does not claim in its motion that anything it said was open to interpretation; instead, it claims that what the Court said in response to the commitment it made was not clear. Yet there is nothing ambiguous about what the Court said and did: the following Tuesday, it set April 16 as the first day for trial in this case, expressly doing so "[i]n reliance on Oracle's withdrawal with prejudice of the '720, '205, and '702 patents." March 13 Order (ECF No. 786) (emphasis added).

Google has been preparing for trial with the understanding that this was a two patent case ever since. This is evident from Google's further proposals on streamlining the case, in which it noted "[t]here are now two patents with ten claims at issue." Joint Statement of Trial Streamlining Proposals (ECF No. 834) at 4. The Court also structured trial with that understanding. Following the narrowing of the patent trial, the Court re-allocated trial time from the patent phase to the copyright phase. Even Oracle acknowledged that the case was now down to two patents. See id. at 2 ("Although a trial on two software patents is still complex, Oracle is

1

willing to consider such a proposal."). And there is no dispute that as of April 16, 2012, all asserted claims of the '702 patent stood rejected in the reexamination proceedings.

Now Oracle asks the Court to "clarify" that Oracle's "clear answer" was not so clear -- at least not to Oracle. In an effort to bring the '702 patent back to life, Oracle strains to find some ambiguity in what the Court has said about the withdrawal. There is no ambiguity. The Court set the trial date based on Oracle's written commitment to withdraw "each claim . . . that remains rejected at the time of trial." Google spent its efforts preparing to try a two patent case from the date of the March 13 Order forward. If Oracle truly thought that the Order issued by the Court two days later injected any ambiguity into the situation, the time to request clarification was then, in March, not now, after the parties have been in trial for more than a week.

Though Oracle does not directly say so, it appears to take the position that when it said "at the time of trial," it did not mean the date on which the trial commenced, but rather the first day of the second phase of this trial. Mot. at 2:8-9 ("Because the patent infringement phase of the trial has not begun, Oracle does not regard the '702 patent as yet withdrawn and intends to assert the '702 patent in Phase Two.?). But, as Oracle correctly notes, this case was trifurcated into three phases in an Order of January 4, 2012 -- more than two months prior to Oracle?s providing its "clear answer" to the Court's question. So if Oracle intended to reserve the right to assert any rejected claims up until the day the second phase of trial began, it could have said so. It did not say that. Instead, it committed to withdraw those patents no later than the day on which trial commenced. No doubt Oracle recognized the unfairness and inefficiency that would accompany any uncertainty about what patents would actually be tried in a case until that case was well underway, and anticipated that the Court would have rejected such an illusory offer.1

Not only have the Court and Google relied upon Oracle's representation that it had dismissed with prejudice these three patents, other persons connected with the case have done so

2

as well. In reliance on Oracle?s statements, the Court-appointed independent damages expert, Dr. James Kearl, based his report, in a section entitled "Foundational Issues," on the premise that "Oracle asserts that the Google Android operating system infringes two Oracle patents (patents '104 and '520) and certain Oracle copyrights." Kearl Report at 7. Accordingly, allowing Oracle to inject back into the case a patent that it has withdrawn with prejudice would require a revised report from Dr. Kearl and potentially further expert discovery.

The prejudice to Google, which has been preparing for a trial on the two remaining patents since the Court issued its Order accepting Oracle's offer to drop the other three patents in return for a spring trial date, is obvious. Now that trial is well underway, revising the very premises of what is at issue in the case is prejudicial. But leaving aside the prejudice to Google in upending what has been the established scope of the case, there are other concerns with the proof that Google could present in the imminent patent phase of this trial:

First, in reliance on the fact that the '702 patent was no longer in the case, Google did not subpoena Nedim Fresko, the named inventor of the '702 patent, and has no idea whether he would be available to testify at trial. Mr. Fresko is a former Sun employee, and not under the control of either party to the case.

Second, Google's invalidity expert on the ?702 patent relied on Oracle?s withdrawal in setting his own schedule for the coming weeks. That expert, Dr. John Levine, is in a deposition in Washington, DC, at the end of this week (April 26-27); at a sentencing hearing in Philadelphia the following week; and then in trial before Judge Wilken from May 7 to May 11, in Case No. 06- CV-07093 CW. During that same time period, he has a reply expert report to prepare in another case. With all of that work filling his schedule, Google would not be able to prepare Dr. Levine for trial testimony in this case. Oracle's breezy assumption that Google would withdraw its invalidity defense to the '702 patent in light of the PTO's decision to change its mind as to the validity of the '702 patent is incorrect. Accused infringers often present invalidity defenses to patents that have emerged from re-examination, and the prior art that Google has asserted here -- one of Sun's own patents -- is extremely strong. Google has the right to a jury determination of whether the '702 patent, which stood rejected until late last week, is in fact valid. But, as a

3

practical matter, Oracle's decision to withdraw and then attempt at the eleventh hour to bring the patent back into this case threatens to prevent Google from being able to mount any invalidity challenge at trial. As such, injecting the '702 patent back into the case now would greatly prejudice Google.

Third, the fact that the PTO has now changed its mind regarding validity is not the only information from the reexamination that is relevant to this case. Oracle has made statements during prosecution of the reexamination, and the Examiner has responded with a Statement of Reasons for Patentability. This additional information, now part of the intrinsic record of the patent prosecution, will be relevant to the interpretation of the claims and affect how, if at all, it can claim infringement of those claims. It would not be fair to require Google to analyze the statements made in prosecution and, in the middle of trial, adjust its case as to a patent that was previously dismissed with prejudice.

In contrast, any arguable prejudice to Oracle is of its own making. It knew when it pressed for and received a spring trial date that it would come at the cost of dismissing with prejudice any patents that remained rejected at that time. Indeed, Oracle proposed that it be allowed to dismiss those patents without prejudice in order to avoid such a result. ECF No. 700 at 1:9-10 (requesting that the Court "stay[] the patent claims or dismiss[] the patent claims without prejudice"). However, the Court expressly rejected that proposal. January 20 Order (ECF No. 702) at 1 ("The piecemeal approach suggested by Oracle as a trial alternative will not be adopted."). Oracle made its commitment, and in return gained the benefit of the early trial it sought. It did so knowing -- even predicting -- that the PTO might ultimately allow the then- rejected claims. This was an informed choice of an early trial date over completion of proceedings before the PTO. It should not now, in the middle of trial, be permitted to renege on that choice.

For all of these reasons, the Court should deny Oracle's request to add back into this case the '702 patent, which has already been dismissed with prejudice.

4

Dated: April 24, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

_________________
1 Oracle's claim that it previously told Google?s counsel that the '702 patent had not yet been dropped from the case with prejudice omits to mention that the email exchange at issue took place on March 24, less than two weeks after the Court accepted Oracle's offer, and many weeks before trial commenced. Oracle has never previously suggested that "at the time of trial" meant anything other than the date upon which trial commenced.

5


978

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 REGARDING
THE ’702 PATENT

Before the trial date was set, a substantial question was pending whether to wait until the PTO had finished all re-exam proceedings before commencing trial. To remove this consideration from the calculus, Oracle offered to dismiss with prejudice all patents that had been rejected in a final office action subject to reinstatement in the event the PTO reversed itself prior to the start of trial. In express reliance on this (Dkt. No. 786), the Court set the early trial date requested by Oracle. That trial date (April 16) started on time and at that moment the dismissals with prejudice became final.

A few days later, the PTO did reverse itself as to the ’702 patent but the reversal came a few days too late, for the trial had already started and the dismissals with prejudice had already become effective.

Oracle’s argument that the patent “trial” has not yet started is wrong. The was and is one trial with three phases. The trial started on April 16. This is not only the plain meaning of the term but any other interpretation would inject great prejudice given that the parties have relied


on the issues to be tried and that reliance should not be turned on its head in mid-trial. Oracle will be required to stand by its word and live with the dismissal with prejudice.

IT IS SO ORDERED.

Dated: April 25, 2012.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

2


982

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

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

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

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

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. 3:10-cv-03651 WHA

GOOGLE’S APRIL 25 COPYRIGHT
BRIEF

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


TABLE OF CONTENTS

Page
I.The Court should instruct the jury that the SSO is “copyrightable” or
“copyrighted.”
1
II.The Java platform in its entirety, as registered with the Copyright Office, must be
considered to be the “work as a whole” for all purposes.
3
III.Based on Oracle’s newest theories of its copyright claim, Oracle can only rely on
the work as a whole, as registered.
6
A.THE WORKS WERE NOT REGISTERED AS “COLLECTIVE
WORKS.”
6
B.IF THE WORKS ARE TREATED AS COLLECTIVE WORKS,
ORACLE HAS FAILED TO PROVE THAT IT HAS ANY RIGHTS
OTHER THAN IN THE ENTIRE WORK.
7
IV.The Court should not adopt either the “interwoven” or “independent economic
value” test
9

i


TABLE OF AUTHORITIES

Page
Federal Cases
American Geophysical Union v. Texaco, Inc.
60 F.3d 913 (2d Cir. 1994)
4, 9
Bryant v. Media Right Productions, Inc.
603 F.3d 135 (2d Cir. 2010)
11
Express, LLC v. Fetish Group, Inc.
424 F. Supp. 2d 1211 (C.D. Cal. 2006)
5
Hustler Magazine, Inc. v. Moral Majority, Inc.
796 F.2d 1148 (9th Cir. 1986)
9, 10, 11
Morris v. Business Concepts, Inc.
283 F.3d 502 (2d Cir. 2002)
9
NXIVM Corp. v. The Ross Institute
364 F.3d 471 (2d Cir. 2004)
3, 4, 5
Pacific and Southern Co. v. Duncan
744 F.2d 1490 (11th Cir. 1984)
10
Triangle Publications v. Knight-Ridder Newspapers, Inc.
626 F.2d 1171 (5th Cir. 1980)
10
Federal Statutes
17 U.S.C. § 1016, 8
17 U.S.C. § 103(b)5, 7, 8, 9, 10
17 U.S.C. § 107(3)4
1909 Copyright Act, § 310

ii


Google submits this supplemental brief (1) in response to the Court’s statements regarding how the Court may instruct the jury on the copyrightability of the alleged “SSO” of the 37 accused API packages (RT 445:1-445:18, 1145:25-1146:16); (2) in response to the Court’s further questions regarding the “work as a whole” issues (RT 1136:7-1151:23); and (3) regarding additional copyright issues that have arisen based on Oracle’s most recent articulation of its copyright theories and resulting failure of proof during its case.

ARGUMENT

I. The Court should instruct the jury that the SSO is “copyrightable” or
“copyrighted.”

Before calling in the jury on Monday morning, the Court responded to Google’s argument that the structure, sequence, and organization of the 37 API packages at issue here (“SSO”) is not copyrightable by stating:

THE COURT: I’ve already said that I’m going to instruct the jury, subject to a motion under Rule 50 later at the end of the case. I’m going to instruct the jury that the copyrights extend to the Structure, Sequence, and Organization.

Now, I’m reserving on that ultimately. I see both arguments on that point, but we ought to get the verdict on that. If you were to win on fair use, for example, then the judge doesn’t have to decide those hard questions.

RT 1145:25-1146:7; see also RT 445:1-445:18.

Google respectfully objects to an instruction that tells the jury affirmatively that the SSO is either “copyrightable” or “copyrighted.” (See RT 1146:2-3, 9-11 (“I’m going to instruct the jury that the copyrights extend to the Structure, Sequence and Organization.”; “the way it’s going to be presented to the jury is that the “Structure, Sequence and Organization is covered by copyright.”)). The Court directed the parties to present evidence in this phase bearing on the legal question of whether the SSO and other elements of the Java platform merit copyright protection, are unprotectable systems or methods of operation, are functional requirements for compatibility, or are for other reasons uncopyrightable. As a result, both Google and Oracle have offered extensive documents and testimony relating to whether the SSO and other elements are copyrightable. Oracle argued in its opening statement that the SSO deserves copyright

1


protection; Google responded in its opening statement that the SSO does not. Almost certainly, the jury is keenly aware that whether the SSO is copyrightable is a hotly disputed issue in the case. The jury has now also heard testimony from several witnesses (including Mr. Schmidt and Mr. Rubin) regarding their understanding, as computer scientists, regarding whether API specifications are protected by copyright.

As a result, instructing the jury that the SSO is copyrightable, prior to sending them to deliberate on the infringement and fair use issues, and Google’s equitable defenses—and prior to the Court actually resolving the copyrightability issue—would explicitly tell the jury that a fundamental premise of Google’s defense case is wrong (rather than simply undecided). Inevitably, the instruction will leave the jury wondering what Google and its witnesses have been talking about for the past two weeks—even though Google’s presentation of evidence on this point was essential to the Court’s decision of the key legal issue. Most problematic, instructing the jury that the SSO is copyrightable would prejudice the jury against Google on the issues the jury will actually decide.

To more accurately reflect the procedure the Court plans to use here, and to avoid unfairly influencing the jury’s decision on the infringement, fair use, and equitable defense issues, the Court should advise the jury that the copyrightability of the SSO is an issue for the Court that has yet to be decided but will not be decided until after the jury has rendered its decision. The Court should then instruct the jury to assume, for purposes of its deliberations, that the SSO is copyrightable, and to proceed to decide the remaining issues. The Court has already acknowledged the possibility that it may phrase the instruction to the jury as an assumption. See RT 1147:12-1147:15 (“Something like that is the way we’re going to put it to the jury and let them go on the assumption that that’s correct.”). Google agrees that is the appropriate approach. It permits the jury to render its verdict while leaving both parties on equal footing in the jury room.

To present the issues to the jury simply—and in a manner consistent with the parties’ claims and defenses—the Court should limit the instruction about the copyrightability of the SSO

2


to the jury’s consideration of Oracle’s claim of infringement based on the SSO and the documentation. So as not to prejudice Google’s de minimis arguments, the Court should further instruct the jury that it should make the opposite assumption for purposes of Oracle’s claims based on the so-called “copied files.” In other words, for purposes of those claims, the jury should assume that the SSO is not copyrightable. This will preserve Google’s de minimis arguments as to the miniscule amounts of “copied” materials, which Google has advanced in conjunction with its arguments that the SSO is not copyrightable.1

II. The Java platform in its entirety, as registered with the Copyright Office, must be
considered to be the “work as a whole” for all purposes.

The only works as to which Oracle attempted to prove infringement during its case are versions 1.4 and 5.0 of the complete Java 2 SE “platform,” which are the subject of copyright registrations TX 6-196-514 (Trial Exhibit 464) and TX 6-066-538 (Trial Exhibit 475). The applications for registration filed by Sun contain little information regarding the works in which Sun was seeking to register its claim of ownership, other than to state the names of the works (“Java 2 Standard Edition 1.4” and “Java 2 Standard Edition, Version 5.0”) and that the works include both pre-existing elements, identified as “prior works by [Sun] and licensed-in components,” and new material, identified as “new and revised computer code and accompanying documentation and manuals.” TX 464 at 2 (space 6), TX 475 at 2 (space 6).

Based on the authorities previously cited by Google (see Google 4/22 Brief, Dkt. No. 955, at 5-12) and the additional authorities cited below, the “work as a whole” must, as a matter of law, be the complete work in which Sun claimed its copyright rights, namely, the relevant Java platforms as a whole. In addition to the authorities cited in its prior brief, see Dkt. No. 955 at 5-12, Google has identified additional authorities bearing on this issue.

In the fair use context, the Second Circuit has rejected an effort by plaintiffs who, like Oracle, sought to tailor their copyright to their litigation strategy by “selecting” and claiming as a new “work as a whole” only part of the complete work. In NXIVM Corp. v. The Ross Institute,

_________________________________________

1 Google continues to believe that the Court should decide the issue of copyrightability before instructing the jury, rather than reserving the issue.

3


364 F.3d 471 (2d Cir. 2004), the plaintiffs’ work was a “265-page manual” for a seminar training program. 364 F.3d at 475. The defendant published reports critical of the plaintiffs’ program, which included 17 quotes from several sections of the manual. Id. The plaintiffs sued for copyright infringement and moved for a preliminary injunction. The district court denied the motion, finding that the defendant was likely to succeed on its fair use defense. Plaintiffs appealed.

On appeal, plaintiffs argued that the district court should have considered different “modules” of the manual as separate, self-contained “entire” works. The plaintiffs therefore argued that analysis of the third statutory fair use factor—“the amount and substantiality of the portion used in relation to the copyrighted work as a whole,” 17 U.S.C. § 107(3)—should have weighed in their favor because the defendant had “copied some entire works.” 364 F.3d at 481. The plaintiffs based their argument on American Geophysical Union v. Texaco, Inc., 60 F.3d 913 (2d Cir. 1994), on which Oracle relied in its April 22 brief. See Dkt. No. 956, at 5-6.

The Second Circuit rejected the NXIVM plaintiffs’ attempt to re-cast their work as multiple smaller works:

If plaintiffs’ argument were accepted by courts — and, not surprisingly, plaintiffs cite no authority to support it — the third factor could depend ultimately on a plaintiff’s cleverness in obtaining copyright protection for the smallest possible unit of what would otherwise be a series of such units intended as a unitary work. The proper analogy in this case is not to separate articles in a magazine, but instead to a book by a single author containing numerous chapters, which are not separately copyrightable. See id. at 925-26 (treating individual articles in a journal as the appropriate level of copyright protection when the author of each article is different). The “modules” in this case were written by the same author and they combine to produce one unitary work.

4


364 F.3d at 481 (emphases added).2

In Express, LLC v. Fetish Group, Inc., 424 F. Supp. 2d 1211 (C.D. Cal. 2006), the court held that “it is the registration that sets the scope for the copyright protection.” 424 F. Supp. 2d at 1218. In beginning its analysis, the court noted that the “registration process may only be a formality, but it does not necessarily follow that its status as a formality means that its particulars should be disregarded.” Id. at 1219. After citing two cases (including the Nicholls case cited by Google in its April 22 brief), the Express court held that “the scope of the registered copyright is relevant to the scope of the presumption of validity, and that the scope of the registered copyright is determined by the actual registration application.” Id.

The Express court then analyzed the scope of the plaintiff’s copyright rights based on the deposit materials—which had been deposited with the Copyright Office as showing the work that was the subject of the application—and the representations made to the Copyright Office regarding what was “new” in the work and therefore the subject of the copyright protection being sought. Id. at 1219-22; see 17 U.S.C. § 103(b). The court held the plaintiff to the representations made to the Copyright Office, limiting the scope of the copyright based on the materials the plaintiff had submitted and what the plaintiff had told the Copyright Office. The end result was that the plaintiff’s copyright was not as broad in scope as the plaintiff contended.

Consistent with the above and the authorities cited by Google in its April 22 brief, the Court must as a matter of law consider the entire work as registered by Sun—and nothing less— to be the “work as a whole” for all liability purposes, and should so instruct the jury. There is no legal or evidentiary basis on which the work as a whole, as registered, could properly be

__________________________________________

2 The NXIVM decision is also instructive for a second reason. The court noted that the district court had in fact “over-counted” the portion of the plaintiffs’ work used by the defendant, because it had counted “as entire pages quotes as short as a single sentence.” Id. at 480. To the extent Oracle’s claim based on the “declarations” or method signatures is not barred in its entirety by the Court’s ruling that “the names of the various items appearing in the disputed API specifications are not protected,” (Summary Judgment Order, Dkt. No. 433, at 7-8), the NXIVM decision suggests that only the number of declaration lines appearing in the Android API libraries’ source code files—which are the only elements that reflect any “structure,” “selection” or “organization” in the code files—should be used as the measure of the “amount” of the copyrighted work “used” for purposes of fair use analysis, and that they should be compared to the total lines of code in Oracle’s copyrighted work.

5


“subdivided” into smaller parts as Oracle requests. Neither the infringement analysis nor the fair use analysis in this case should be manipulated by the “cleverness” of Oracle’s counsel’s attempt to claim protection for isolated parts of Sun’s registered work that were not sold as standalone works and may or may not be separately copyrightable. See NXIVM, 364 F.3d at 481.

III. Based on Oracle’s newest theories of its copyright claim, Oracle can only rely on the
work as a whole, as registered.

In its most recent brief, filed on April 22, Oracle asserted that its two Java platform works at issue were registered as “collective works.” See Oracle April 22 Brief, Dkt. 956, at 4 (“J2SE 5.0 and J2SE 1.4 . . . were registered as collective works”). This theory is disproven by the facts. Even more importantly, however, Oracle has failed to make the showing necessary for it to rely on this theory to argue that its copyrights in the platform works protect any works smaller than the entire platform.

A. The works were not registered as “collective works.”
“Collective works” and “compilations” are both specifically defined in the Copyright Act, and “compilation” is defined to include “collective works.” 17 U.S.C. 101 (definitions).3 Sun registered the Java platform works using Copyright Form TX, which is the typical form used for “nondramatic literary works,” including software. That form requires that specific information be provided for compilations and derivative works, in space 6 of the form. The copyright claimant must identify the “preexisting material” contained in the new work in space 6a and the new “material added to this work” in space 6b. The instructions for Form TX require that “If the work is a compilation, describe both the compilation itself and the material that has been compiled.” See Copyright Office Form TX, attached hereto as Exhibit A, at 2 (Instructions for “SPACE 6: Derivative Work or Compilation”) (emphasis in original). The instructions further state that “A

_______________________________________

3 A “collective work” is “a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.” 17 U.S.C. § 101. A “compilation” is “a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” Id. The definition of “compilation” provides that “The term ‘compilation’ includes collective works.” Id.

6


work may be both a derivative work and compilation, in which case a sample statement might be: ‘Compilation and additional new material.’” Id. If Oracle’s platform works were indeed being registered as “collective works,” they would be both collective works (because they contained multiple elements) and derivative works (because they were based on prior versions).

But the copyright applications filed by Sun say nothing about the works being a collective work of any kind. While they do identify the preexisting work and the new material added, they do not “describe the compilation [which includes collective work] itself,” nor do they identify the works as both derivative works and compilations [or collective works]. In short, Sun did not register versions 1.4 or 5.0 of the Java 2 SE platform as collective works.

Based on the registration certificates, the Court should not permit Oracle to now argue that the works should be treated as “collective works.” They were not registered as such by Sun in 2004 and 2005, and Oracle’s lawyers cannot now try to revise them, eight years later, to pretend that they were. Oracle should also not be permitted in the middle of trial to recharacterize its works or any parts of them as “collective works” or any other form of “compilation.” Indeed, just two weeks ago, in its brief filed on April 3, Oracle argued that “[t]he 37 APIs should not be viewed as a compilation.”4 (Oracle 4/3 Brief, Dkt. No. 853, at 1).

B. If the works are treated as collective works, Oracle has failed to
prove that it has any rights other than in the entire work.
A plaintiff in a copyright must prove that it has a registration that covers the works that are the basis of its infringement claim.5 If Oracle’s eleventh-hour attempt to re-cast its works as

_______________________________________

4 The issues arising from Oracle’s last-minute attempt to argue that the works are “collective works” have been identified as potential issues throughout this case. In the pretrial order (Dkt. No. 525, filed October 13, 2011), for example, the parties jointly identified as issues of law to be decided whether, by virtue of the copyright registrations of the J2SE and JDK materials, Sun registered “its copyrights in the 37 Java API design specifications” and “its copyrights in the twelve Java code files that Oracle has accused Google of copying.” (Dkt. 525 at 10). In addition, Google identified as fact issues to be determined whether Sun registered with the U.S. Copyright Office “the code and documentation from various versions of” J2SE and the JDK and whether Oracle is the owner of rights in the “Java-related works registered with the Copyright Office.” (Dkt. 525 at 15). 5 For reasons relating to the registration procedures applicable to the works and copyright registrations at issue, Google believes that Oracle is not entitled to any presumptions based on the issuance of the registrations for Java 1.4 and 5.0.

7


“collective works” is permitted—and, for the reasons just given, it should not be so permitted— that position has significant legal consequences that impose on Oracle a substantial burden of proof if it wishes to claim that the registrations protect any subset or portions of the entire works covered by the registration. Oracle failed to meet that burden; in fact, it did not even try.

Section 103(b) of the Copyright Act is clear:

(b) The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.
17 U.S.C. § 103(b) (emphasis added). The definitions in section 101 reinforce this section; they make clear that all compilations must be a “resulting work as a whole” that “constitutes an original work of authorship” separate from its individual component parts, and a “collective work” must be “assembled into a collective whole.” 17 U.S.C. § 101 (definitions of “compilation” and “collective work”).

These statutory provisions are significant in light of Oracle’s present claim. As a result of these provisions:

  • Even if Oracle’s claim to have registered the Java platform as a collective work were valid, those resulting copyright would cover only the complete work as a whole unless Oracle has proven that it is the “author” of any individual parts in which it seeks to enforce rights;6 and
  • In the absence of such proof, Oracle’s copyrights would cover only the complete works, and only the contributions that distinguish the works from prior versions, including any “selection, coordination or arrangement” that was part of the compilation process.
_______________________________________

6 Under the Copyright Act, an “author” includes an employer whose employees create works in the scope of their employment. See 17 U.S.C. § 101 (definition of “work made for hire, subsection (1)); 201(b) (employer considered the “author” of a “work made for hire”).

8


that are registered, including any portions of the 166 API packages in Java 5.0.7 The evidence is to the contrary. Several witnesses have testified about how numerous authors outside Sun, through the Java Community Process, contributed to the platform works or parts of them, including the API packages that are at issue. And the certificates of registration confirm that at least some components of the works are “licensed-in components” that Sun—as a licensee— presumably did not own. Based on the record as it now stands, the registrations can cover at most only the “collective work” as a whole. Indeed, the record evidence suggests that Oracle might not be able to cure this evidentiary gap, even were it allowed to reopen its case in chief.

Oracle’s failure to prove ownership of the constituent parts of its registered works provides a separate and independent basis for holding that the “work as a whole” is, in this case, the entire work. Oracle did not prove (or even attempt to prove) that it has any greater rights than that. The state of the record is as if Oracle owned a copyright in an issue of a newspaper, but not a single article, editorial or advertisement in that issue.

This failure of proof on Oracle’s part distinguishes the present case from American Geophysical Union v. Texaco, Inc., 60 F.3d 913 (2d Cir. 1994), where the plaintiff journal owner in fact proved that it owned all the rights in the constituent parts, i.e., the collected articles. See 60 F.3d at 918. Instead, the analogous case is Morris v. Business Concepts, Inc., 283 F.3d 502, 506 (2d Cir. 2002), in which the court held—consistent with the clear language of section 103(b)—that “unless the copyright owner of a collective work also owns all the rights in a constituent part, a collective work registration will not extend to a constituent part.”

IV. The Court should not adopt either the “interwoven” or “independent economic
value” test.

Google is not aware of any “test” the Court or jury could properly use to determine that something less than the entire works should be used for infringement or fair use purposes. Neither the “interwoven” test applied in the Ninth Circuit Hustler fair use decision nor the

_______________________________________

7 Oracle also failed during its case to prove the contents of the works that are the subject of its registrations for the Java platform versions 1.4 and 5.0.

9


“independent economic value” test applied by some courts in the statutory damages context is appropriate in this context.

Hustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148 (9th Cir. 1986), applied a test focusing on “the relationship of the copied parody to the periodical as a whole” and found that the appropriate “work as a whole” for purposes of fair use analysis was a single page advertisement published in a 154-page magazine. 796 F.2d at 1154-55. The Court found significant that the parody represented the “essence” of Hustler Magazine and that the parody was not “an interwoven component of the magazine, but can stand totally alone.” Id. at 1155-56.

The Hustler court, however, relied on two prior cases: Triangle Publications v. Knight- Ridder Newspapers, Inc., 626 F.2d 1171 (5th Cir. 1980), and Pacific and Southern Co. v. Duncan, 744 F.2d 1490 (11th Cir. 1984). Both are distinguishable.

Triangle Publications (the TV Guide cover case) involved a copyright that arose under the 1909 Copyright Act, not the current Act, which did not go into effect until January 1, 1978. Under the 1909 Act, works that are known as “compilations” and “collective works” under the current Copyright Act were called “composite works.” Section 3 of the 1909 Act provided that copyrights under the Act protected “all the copyrightable component parts of the work copyrighted,” and that a copyright on a “composite work” gave the copyright owner “all the rights in respect thereto which he would have if each part were individually copyrighted under this title.” 1909 Copyright Act, § 3 (emphasis added).

The current law is demonstrably different. See 17 U.S.C. § 103(b). Triangle Publications therefore cannot provide meaningful guidance on the issues relating to Oracle’s copyright.

Nor can the Pacific and Southern case (the TV Video Clips case) provide assistance. The individual program segment at issue in Pacific and Southern “was copyrighted separately and was stored separately from the rest of the broadcast” from which it was taken. See Hustler, 796 F.2d at 1154. Oracle has no such separate copyrights for any sub-part of the Java platform.

The Hustler court therefore based its fair use “work as a whole” analysis on precedents that are of limited, if any, current value. See 796 F.2d at 1154 (referring to “each component of a

10


composite work” and “a component of a copyrighted composite work”). The Hustler court’s analysis of “the relationship of the copied component to the composite work” is inconsistent and meaningless under the current Copyright Act, which no longer uses the terminology “composite work” for any post-1978 copyrights.

Moreover, even if the Hustler test applies, the API packages are interwoven together, and with the rest of the Java 2 SE platform. Oracle’s witnesses have testified that Oracle will not license subsetted versions of the platform. They have also testified that the API packages are interdependent on each other. In addition, the libraries are interwoven with other parts of the Java 2 SE platform, with which they were designed to operate. In contrast, the advertisement in Hustler did not cross-reference, cite, or otherwise refer to any other part of the magazine. Thus, if the Hustler test applies, it compels the conclusion that the relevant work is the Java 2 SE platform, not its constituent parts.

Cases applying an “independent economic value” test in the statutory damages context are equally unhelpful to Oracle. The test has been applied in only a limited number of cases and only in the statutory damages context. The test has also recently been severely criticized by the Second Circuit even in the statutory damages context. In Bryant v. Media Right Productions, Inc., 603 F.3d 135 (2d Cir. 2010), a case involving copyrighted music albums containing ten songs each, the Second Circuit held as follows:

This Court has never adopted the independent economic value test, and we decline to do so in this case. The Act specifically states that all parts of a compilation must be treated as one work for the purpose of calculating statutory damages. This language provides no exception for a part of a compilation that has independent economic value, and the Court will not create such an exception. See UMG Recordings, Inc., 109 F.Supp. 2d at 225 (stating that to award statutory damages on a per-song basis would “make a total mockery of Congress' express mandate that all parts of a compilation must be treated as a single `work' for purposes of computing statutory damages”). We cannot disregard the statutory language simply because digital music has made it easier for infringers to make parts of an album available separately. This interpretation of the statute is consistent with the Congressional intent expressed in the Conference Report that accompanied the 1976 Copyright Act, which states that the one-award restriction applies even if the parts of the compilation are “regarded

11


as independent works for other purposes.” H.R.Rep. No. 1476, 94th Cong., 2d Sess. 162, reprinted in 1976 U.S.C.C.A.N. 5659, 5778.
603 F.3d at 142 (emphases added).

The “independent economic value” test is a renegade in copyright law, inconsistent with the plain statutory language, and has never been used to determine what the “copyrighted work as a whole” is for any liability issue. Especially in view of the Second Circuit’s decision in Bryant, this Court should not be the first to extend the “independent economic significance” test beyond the single limited context in which it has been applied—and criticized.

Dated: April 25, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

12



984

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

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

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

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

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. 3:10-cv-03651 WHA

GOOGLE’S MOTION FOR JUDGMENT
AS A MATTER OF LAW ON SECTIONS
OF COUNT VIII OF ORACLE’S
AMENDED COMPLAINT

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


TABLE OF CONTENTS

Page
I.INTRODUCTION1
II.LEGAL STANDARD1
III.ARGUMENT2
A.Google is entitled to judgment as a matter of law that the source code and
object code implementing the 37 API packages are not derivative works of
Oracle’s specifications.
2
B.Google is entitled to judgment as a matter of law that the names and
declarations from the 37 API packages that appear in the Android source
code are not copyrightable.
3
C.The alleged literal copying is de minimis and thus non-actionable.4
1.The relevant work is J2SE 5.05
2.The nine-line rangeCheck method is quantitatively and qualitatively
insignificant
5
3.The comments contained in two source code files are quantitatively
and qualitatively insignificant
5
4.The eight Android test files are quantitatively and qualitatively
insignificant
6
D.Google is entitled to judgment as a matter of law that its specifications for
the 37 API packages do not infringe Oracle’s copyrights.
6
1.The evidence cannot support a finding that Android’s English-
language documentation was copied from the Java API
specifications
7
2.The evidence cannot support a finding that the structure, sequence,
and organization of Android’s English-language documentation
was copied from the Java API specifications.
9
E.Oracle’s copyright claim should be dismissed due to a failure to prove the
actual contents of the works that are the subject of its copyright
registrations
10
F.If the Court accepts Oracle’s “collective work” argument, Google is
entitled to judgment as a matter of law of non-infringement of each of the
component parts of the registered works, because Oracle has not proved
authorship of the constituent elements
11
IV.CONCLUSION12


TABLE OF AUTHORITIES
Page(s)
Federal Cases
Allen v. Academic Games League of Am., Inc.
89 F.3d 614 (9th Cir. 1996)
8
Anderson v. Liberty Lobby, Inc.
477 U.S. 242 (1986)
1
Baker v. Selden
101 U.S. 99 (1879)
2, 3
Computer Assoc. Int’l, Inc. v. Altai, Inc.
982 F.2d 693 (2d Cir. 1992)
4
Incredible Techs., Inc. v. Virtual Techs., Inc.
400 F.3d 1007 (7th Cir. 2005)
8
Johnson v. Gordon
409 F.3d 12 (1st Cir. 2005)
8
Lakeside-Scott v. Multnomah County
556 F. 3d 797 (9th Cir. 2005)
7
MiTek Holdings, Inc. v. ArcE Eng’g Co.
89 F.3d 1548 (11th Cir. 1996)
4
Newton v. Diamond
388 F.3d 1189 (9th Cir. 2004)
4, 5
Weisgram v. Marley Co.
528 U.S. 440 (2000)
1
Federal Statutes
17 U.S.C. § 1012
17 U.S.C. § 1029
17 U.S.C. § 102(b)1, 2, 4
Federal Rules
Fed. R. Civ. P. 501, 2
Fed. R. Civ. P. 50(a)(1)1
Fed. R. Civ. P. 50(a)(2)1
Federal Regulations
37 C.F.R. § 202.1(a)3

ii


I. INTRODUCTION

On April 12, 2012, Oracle filed a summary of its copyright infringement allegations. Dkt. No. 899. During its case-in-chief, Oracle failed to prove the facts necessary to sustain a number of those allegations. Pursuant to Fed. R. Civ. P. 50, Google is therefore entitled to Judgment as a Matter of Law on the following grounds.1 First, Google is entitled to judgment as a matter of law that the source code and object code implementing the 37 API packages are not derivative works of Oracle’s specifications. Second, Google is entitled to judgment as a matter of law that the method signatures are not protected by copyright under both section 102(b) and the short words and phrases doctrine. Third, Google is entitled to judgment as a matter of law that the alleged literal copying is de minimis and thus non-actionable. Fourth, Google is entitled to judgment as a matter of law that its specifications for the 37 API packages do not infringe Oracle’s specifications. Fifth, Google is entitled to judgment as a matter of law on the entire copyright case because Oracle has failed to prove the actual contents of the works that are the subject of its copyright registrations. Sixth, to the extent that the Court accepts Oracle’s newly advanced “collective work” argument, Google is entitled to judgment as a matter of law of non-infringement as to all constituent elements of the registered works, because Oracle has failed to prove authorship of any component parts of the works.

II. LEGAL STANDARD

Judgment as a matter of law is proper when “a party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue.” Fed. R. Civ. P. 50(a)(1). Rule 50 “allows the trial court to remove . . . issues from the jury’s consideration when the facts are sufficiently clear that the law requires a particular result.” Weisgram v. Marley Co., 528 U.S. 440, 448 (2000) (internal quotations omitted). The standard for granting judgment as a matter of law, in practice, mirrors the standard for granting summary judgment, and “the inquiry under each is the same.” Anderson v. Liberty Lobby, Inc., 477 U.S.

______________________________________

1 Google reserves the right under Fed. R. Civ. P. 50(a)(2) to file a further motion for judgment as a matter of law on these or other issues at the close of the evidence. See Fed. R. Civ. P. 50(a)(2) (“A motion for judgment as a matter of law may be made at any time before the case is submitted to the jury.”).

1


242, 250-51 (1986).

III. ARGUMENT

A. Google is entitled to judgment as a matter of law that the source code and
object code implementing the 37 API packages are not derivative works of
Oracle’s specifications.
Oracle claims that Google’s implementing source code is a derivative work of Oracle’s English-language descriptions because Google’s source code does the things that the English descriptions describe. See Dkt. No. 859 at 10 (Oracle is claiming infringement based on “Google’s creation of derivative works from the English-language descriptions of the elements of the API specifications”). That is nothing but an assertion that Google’s expression infringes Oracle’s ideas. Oracle thus stands as an exception to the Supreme Court’s statement that “no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein.” Baker v. Selden, 101 U.S. 99, 102 (1879). Because Oracle’s position is barred by Section 102(b) of the Copyright Act, Google is entitled to judgment as a matter of law that the source code and object code implementing the 37 API packages are not derivative works of Oracle’s specifications. See 17 U.S.C. § 102(b). This issue raises a question of law that does not depend on any disputed issues of fact, and thus is well-suited to resolution on a Rule 50 motion.

Oracle’s derivative work claim is a “classic case of trying to lay claim to the ownership of an idea.” RT 1869:15-16 (Court). The specifications “explain in detail what the module is supposed to accomplish,” and writing implementing code that does what the specifications explain is like “creative writing.” RT 1869:18-21 (Court). Oracle’s derivative work claim is contrary to the idea/expression dichotomy that is codified in Section 102(b) of the Copyright Act. It also is contrary to the statutory definition of a derivative work, which is a work based on “one or more preexisting works,” 17 U.S.C. § 101, not a work based on preexisting ideas.

Oracle’s approach is barred by Baker v. Selden:

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

2


therein can be obtained; and it can only be secured by a patent from the government.
101 U.S. at 102. It is also barred by Mazer v. Stein: “Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea—not the idea itself.” 347 U.S. 201, 217 (1954). And it is barred by Sega Enters. Ltd. v. Accolade, Inc., under which “functional requirements for compatibility” with a system described by or implemented in a copyrighted work cannot be protected by copyright law. 977 F.2d 1510, 1522 (9th Cir. 1992).

B. Google is entitled to judgment as a matter of law that the names and
declarations from the 37 API packages that appear in the Android source
code are not copyrightable.
The Court has already held that the names of API elements are not protectable. Copyright MSJ Order [Dkt. 433] at 7:24-8:4. The Court reached this holding in reliance on the “words and short phrases” doctrine. See id.; 37 C.F.R. § 202.1(a).

For the same reason, the declarations (i.e., the method signatures)2 in the 37 API packages are not protectable. A declaration (e.g., “public static int max(int arg1, int arg2)”3) is a short series of words—a short phrase. A short phrase is not protectable, just as a name cannot be protected. 37 C.F.R. § 202.1(a). Indeed, in Sega, the Ninth Circuit held that computer code of a similar length was “probably unprotected under the words and short phrases doctrine.” 977 F.2d at 1524 n.7.

Moreover, the declarations must remain exactly the same in order to ensure compatibility with Java programs calling on those 37 API packages. See RT 520:4-6 (Screven) (if the API packages were redone, “there would be millions of Java programmers out there who are—know how to use the standard APIs as they currently exist, and would have to be reeducated to use these new APIs”); RT 765:6-8 (Bloch) (“If you get anything even a little bit wrong, if you type a capital letter when the method name has lower case letter in Java your program won’t run.”). Functional requirements for compatibility are not protected by copyright. Sega, 977 F.2d at 1522 (citing 17

____________________________________

2 RT 796:2-25 (Bloch) (explaining what a method signature, or declaration, is).

3 RT 796:19:21 (Bloch).

3


U.S.C. § 102(b)).

In sum, the names and declarations from the 37 API packages are unprotectable both by virtue of the words and short phrases doctrine, and Section 102(b) of the Copyright Act. Thus, Google is entitled to judgment as a matter of law that its use of the names and declarations from the 37 APIs is not copyright infringement.

C. The alleged literal copying is de minimis and thus non-actionable.
De minimis acts of copying are not actionable. Newton v. Diamond, 388 F.3d 1189, 1192-93 (9th Cir. 2004). Where the only similarity is as to “nonessential matters,” the copying is de minimis. See id. at 1195 (quoting 4 NIMMER ON COPYRIGHT § 13.03[A][2], at 13-48). Where a defendant copies only “a portion of the plaintiff’s work exactly or nearly exactly . . . the dispositive question is whether the copying goes to trivial or substantial elements.” Id. That substantiality is judged by “considering the qualitative and quantitative significance of the copied portion in relation to the plaintiff’s work as a whole.” Id. (emphasis added); see also Computer Assoc. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 714-15 (2d Cir. 1992). Oracle bears the burden of proving the significance of any copied code. MiTek Holdings, Inc. v. ArcE Eng’g Co., 89 F.3d 1548, 1560 (11th Cir. 1996) (“The burden is on the copyright owner to demonstrate the significance of the copied features, and, in this case, MiTek has failed to meet that burden.”).

Oracle has failed to prove the significance of any of the allegedly copied features. Oracle hired Dr. Marc Visnick to compare the code in the Java JDK to Android 2.2. RT 1309:8-1310:18 (Mitchell). This entailed a comparison of hundreds of thousands, or even millions of lines of code as well as “thousands and thousands” of separate files. RT 1310:19-1311:1 (Mitchell). Despite this “very extensive” search, RT 1310:24-1311:1, Dr. Visnick only identified 12 files that allegedly contained copied code. See RT 1313:1-11 (Mitchell). These files consist of a nine-line function called rangeCheck, two comment files that never appeared on a phone, and ten test files that never appeared on a phone. See RT 1314:2-1320:6 (Mitchell). Oracle presented no evidence that this allegedly copied code has quantitative or qualitative significance. As a matter of law, any copying of these files was therefore de minimis.

4


1. The relevant work is J2SE 5.0
In de minimis analysis, the copied material must be compared to the “work as a whole.” Newton, 388 F.3d at 1195. In this case, for the reasons given in Google’s supplemental brief filed earlier this evening, the “work as a whole” is J2SE, which is the work that Oracle registered with the Copyright Office. See Google’s April 25 Copyright Brief, Dkt. No. 982, at 3-6. Moreover, even if the Court were inclined to consider the possibility of a smaller “work,” Oracle has presented no evidence that any such smaller work would be appropriate, under any test. Finally, even if the relevant work were the individual packages—a position supported by no evidence other than attorney argument (see RT 1633:21-1634:6), the portions of the twelve files that were allegedly copied would still be trivial and insignificant.4

2. The nine-line rangeCheck method is quantitatively and qualitatively
insignificant.
The rangeCheck method consists of nine lines of code within the TimSort and ComparableTimSort files. See RT 1314:15-1315:7 (Mitchell). This is in comparison to hundreds of thousands of lines of code in the larger library. RT 1315:10-13 (Mitchell). According to Josh Bloch, who wrote the code, the rangeCheck function is “[v]ery, very simple”; “[a]ny competent high school programmer could write it.” RT 815:13-16 (Bloch). Even Oracle’s expert Dr. Mitchell conceded that “a good high school programmer” could write rangeCheck. RT 1316:24-25 (Mitchell). In fact, the rangeCheck method is not even a part of the most recent and current versions of Android. See RT 825:8-19 (Bloch). Oracle introduced no evidence that the nine-line rangeCheck function is anything other than trivial and insignificant, whether the work as a whole is Arrays.java or J2SE 5.0.

3. The comments contained in two source code files are quantitatively
and qualitatively insignificant.
Dr. Visnick also identified two source code files, among the thousands of files in J2SE, that included comments that were the same in J2SE and Android. See RT 1317:6-8 (Mitchell).

_____________________________________

4 Further supporting the insignificance of the allegedly copied code is the fact that Dr. Cockburn, Oracle’s damages expert, provided no damages theory based on any of this code. Ruling that the alleged copying of this code is de minimis as a matter of law would thus simplify the case for the jury, while having no impact on Oracle’s recovery, aside from the minimal statutory damages.

5


These comments are completely insignificant compared to J2SE as a whole, and are also insignificant compared to the source code files in which they are found. These comments are not part of the source code that is compiled when the files are run. See RT 1317:12-20 (Mitchell). If these comments were taken out, the code would work in exactly the same way as it does with the comments included. Oracle’s expert, Dr. Mitchell, agreed that these comments “don’t have any impact, whatsoever, in how the program runs once it’s compiled.” RT 1318:1-3 (Mitchell). Again, Oracle introduced no evidence that these comments—which Oracle’s expert could not even identify as having been part of a single handset—are anything other than trivial and insignificant. See RT 1318:4-6 (Mitchell).

4. The eight Android test files are quantitatively and qualitatively
insignificant.
Finally, Dr. Visnick identified eight Android test files that are allegedly copied from files in J2SE. Aside from their existence, there is almost no testimony about these files at all in the record. Oracle’s expert, Dr. Mitchell, testified that he had no reason to believe that these files were ever placed on a handset. See RT 1319:15-20 (Mitchell). There is no other evidence in the record suggesting that these files were ever placed on a handset. There is also no evidence in the record that these files had any significance at all to the functioning of either J2SE or Android.5

D. Google is entitled to judgment as a matter of law that its specifications for the
37 API packages do not infringe Oracle’s copyrights.
Oracle alleges that Google’s documentation for the 37 accused API packages infringes Oracle’s copyrights. Specifically, Oracle alleges that (a) the substance of Android’s English-language documentation infringes; and (b) the selection, structure, and organization of that documentation also infringes. The Court should grant judgment as a matter of law as to at least the first allegation because the evidence cannot support a finding that the content of

_____________________________________

5 Dr. Mitchell did testify that test files generally are an important part of software development. RT 1330:15-24 (Mitchell). However he never testified as to how many test files there were in J2SE or Android, or to the role played by these particular test files. The best Dr. Mitchell could do was to state that “if [these files] helped [Google] test other code they were developing, and speed up and lessen the cost of testing and quality assurance, then that would have a big value to [Google].” RT 1330:25-1331:5 (emphasis added). There is no evidence in the record that these eight files, out of the thousands of files in Android and J2SE, were anything other than trivial and insignificant.

6


documentation describing the 37 accused API packages in Android was copied from the Java specification. The Court should also dismiss the second allegation because it simply collapses into Oracle’s claim that Google copied the structure, sequence, and organization of the 37 accused API packages; the documentation is generated by an automated program, such that the structure, sequence, and organization of the documentation is a natural derivative of the structure, sequence, and organization of the API packages it represents. See RT 1169:3-4 (Lee).

1. The evidence cannot support a finding that Android’s English-
language documentation was copied from the Java API specifications.
Oracle adduced evidence of precisely three examples of alleged substantial similarity between Google’s and Oracle’s specifications for the 37 APIs. A “mere scintilla” of evidence is insufficient to support a jury verdict. See Lakeside-Scott v. Multnomah County, 556 F. 3d 797, 802 (9th Cir. 2005) (quoting Willis v. Marion County Auditor’s Office, 118 F.3d 542, 545 (7th Cir. 1997)). Oracle’s three examples—out of over 11,000 pages of specifications (RT 617:2-7 (Reinhold))6—cannot support a jury verdict.

In its first example, Oracle focused on the descriptions in the J2SE and Android specifications for the CipherInputStream class in the javax.crypto package. Counsel for Oracle asked Bob Lee to compare the following portions of the descriptions of CipherInputStream in the J2SE 5.0 and Android specifications:


J2SE 5.0

Android
A CipherInputStream is composed of an InputStream and a Cipher so that read() methods return data that are read in from the underlying InputStream but have been additionally processed by the Cipher. The Cipher must be fully initialized before being used by a CipherInputStream. This class wraps an InputStream and a cipher so that read() methods return data that are read from the underlying InputStream and processed by the cipher.

The cipher must be initialized for the requested operation before being used by a CipherInputStream.

Compare TX 610.2 with TX 767; see also RT 1169:25-1170:19 (Lee). These are sufficiently different that no reasonable jury could find that they are substantially similar. Oracle’s second

_______________________________________

6 The 11,000 page figure is the length of the specifications for just the 37 API packages. The specifications for all 166 API packages of the J2SE 5.0 platform presumably are several-fold longer, and the size of the J2SE 5.0 platform as a whole is larger still.

7


and third examples are no better. See RT 1171:3-1172:25 (Lee) (comparing descriptions in the Android and J2SE specifications for the Cipher class in the javax.crypto package); RT 1174:17-1175:9 (Lee) (comparing descriptions in the Android and J2SE specifications for the Pipe class in the java.nio.channels package).

As Mr. Lee explained, any similarities between the specifications are to be expected, given that the thing being described is the same in both specifications:

Q. Highly similar? Not so similar? What’s your judgment?

A. In this case they contain the same words, certainly, but that’s to be expected when you’re trying to—you’re describing various specific concepts in as few words as possible. You’re trying to provide, like, a very concise explanation.

Like, for example, the first sentence. What is a pipe, in one sentence. Certainly, if you’re trying to do it in that few words, they are going to contain similar words because these are kind of, I guess, the common language or currency of these APIs and simply the technology.

Like, “pipe” isn’t even actually a—it’s not necessarily a Java term. It predates Java.

Q. So you would—

A. Like, it’s a common technical term.

RT 1175:10-24 (Lee). On these facts, any protection in the descriptions in the J2SE 5.0 specifications is, at best, thin, and protected only against virtually identical copying. See Allen v. Academic Games League of Am., Inc., 89 F.3d 614, 619 (9th Cir. 1996) (applying merger doctrine to deny protection to written expression of game rules); Incredible Techs., Inc. v. Virtual Techs., Inc., 400 F.3d 1007, 1013 (7th Cir. 2005) (“utilitarian explanations” of a system “are not sufficiently original or creative to merit copyright protection,” or alternatively are protected “only against virtually identical copying”).7

Professor Mitchell’s testimony does not help Oracle’s case because he did not apply the correct standard. When asked whether the description “Returns a reference to the private key component of this key pair” (J2SE) is substantially similar to the description “Returns the private

______________________________________

7 See also Johnson v. Gordon, 409 F.3d 12, 19 (1st Cir. 2005) (“copyright law protects original expressions of ideas but it does not safeguard either the ideas themselves or banal expressions of them” (emphasis added) (citing Feist Pubs., Inc. v. Rural Tele. Serv. Co., 499 U.S. 340, 345-51 (1991)).

8


key” (Android), Professor Mitchell testified, “I think if you were considering using this method, both would tell you the same information, that you can use this method to get the private key component of the key pair.” RT 1328:2-4 (Mitchell) (emphasis added). When asked again, he testified, “I think in the context of the rest of the description they mean the same thing.” RT 1328:9-10 (Mitchell) (emphasis added). When asked a third time whether the descriptions are substantially similar, and directed by the Court to answer “yes” or “no,” Professor Mitchell responded, “Yes.” RT 1328:24 (Mitchell). The only reasonable conclusion that a jury can draw from this series of responses is that Professor Mitchell is basing his conclusion of substantial similarity on the fact that both descriptions express the same idea. That, however, is not infringement. See 17 U.S.C. § 102. Professor Mitchell’s opinion about alleged substantial similarity between the Android and J2SE specifications must therefore be disregarded entirely.

Given the thin protection for these descriptions, no reasonable jury could conclude that the Android specifications infringe the Oracle copyrights. In the alternative, and only in the event that the Court concludes that the jury should decide the issue of whether Google’s specifications infringe Oracle’s specifications on a class-by-class basis, Google is entitled to judgment as a matter of law that none of its specifications for classes other than CipherInputStream in the javax.crypto package, the Cipher class in the javax.crypto package, and the Pipe class in the java.nio.channels package infringe the Oracle specifications for the corresponding classes. The only evidence in the record relates to these classes; Oracle did not present evidence on any other classes. Oracle could have, but didn’t, present evidence of an automated comparison between the Android and Java documentation as a whole, as it did with the implementing source code. This absence is telling. It is also grounds to dismiss Oracle’s claim that Android’s documentation for anything but the CipherInputStream, Cipher, and Pipe classes infringe Oracle’s specifications for those same classes.

2. The evidence cannot support a finding that the structure, sequence,
and organization of Android’s English-language documentation was
copied from the Java API specifications.
Oracle elicited testimony that the sequence, structure, and organization of the documentation for the 37 accused API packages lines up with that of the corresponding Java

9


documentation. Mr. Lee testified as follows:

Q. And the structure of the documentation is identical; correct, sir? And if you think of it as an outline, the outline would match identically; correct, sir?

A. Yes.

Q. And that’s because on the Android side you're documenting the same application programming interfaces as were documented on the Java side; correct, sir?

A. Yes.

RT 1174:9-16 (Lee). But this is no surprise. As Mr. Lee also testified, the documentation for both Java and Android is created automatically by a tool that reads demarcated portions of the source code for inclusion in a template. See RT 1168:21 – 1169:15 (Lee). In short, the creation of the documentation is mechanized. See RT 607:18-24, 614:1-4 (Reinhold). As such, if based on the same starting point—the names of the 37 API packages at issue—the structure, sequence, and organization of the Android and Java documentation inevitably will be the same.

Given that the documentation is generated automatically, Oracle’s allegation that the structure, sequence, and organization of the Android documentation infringes Oracle’s copyrights on the Java specification collapses into Oracle’s separate, overriding claim that Google’s use of the names of the 37 API packages infringes Oracle’s copyrights on the Java framework, including those packages. Similarities in the structure, sequence, and organization of the documentation are just an inevitable byproduct of using the same names of those API packages; they are not a separate act of infringement. Put another way, the similarities derive from Google’s use of the same names of the 37 API packages at issue, not from a separate act of copying any Oracle documentation for those 37 API packages. Accordingly, Oracle’s separate claim that the structure, sequence, and operation of the documentation infringes should be dismissed as a matter of law, leaving the actual issue—Google’s use of the names of the 37 accused API packages—for the jury to decide.

E. Oracle’s copyright claim should be dismissed due to a failure to prove the
actual contents of the works that are the subject of its copyright registrations.
Oracle has not offered any proof of the actual contents of the works that are the subject of its copyright registrations. More specifically, there is no evidence that either TX 610.2 or TX

10


623, the exhibits that Dr. Reinhold sponsored and identified as “a DVD containing an electronic copy of the Java 5 – the JDK documentation,” including “the API specification for Java 5” and a DVD containing “the source code for Version 5” (4/19 Tr. at 672, 691) is in fact a true, complete and accurate copy of Java version 5.0 as it was when Sun’s application was submitted to the Copyright Office in 2004. Oracle, in short, did not prove that any exhibit in evidence is the actual “work” that is the subject of the registration of the Java platform version 5.0. Dr. Reinhold made no effort to connect either of the DVDs with the registration, and no other Oracle witness did so.

Oracle’s evidence with respect to TX 622—what it has identified as the Java platform version 1.4, the subject of the other copyright registration asserted by Oracle—was no better. RT 691 (Reinhold) (“622 is the DVD and source code for version 1.4 of the platform”; no testimony that the DVD contains the work as it was at the time of the copyright application or that the DVD contains the same work that was submitted to the Copyright Office).

Without evidence from Oracle as to what the “works as a whole” are that are the subject of the registrations, there is no proof that can form the basis of any analysis of any copyright issue. This lack of evidence is fatal to Oracle’s claim.

F. If the Court accepts Oracle’s “collective work” argument, Google is entitled
to judgment as a matter of law of non-infringement of each of the component
parts of the registered works, because Oracle has not proved authorship of
the constituent elements.
For the reasons given in Google’s supplemental brief filed earlier this evening, the Court should reject Oracle’s “collective work” argument, because Oracle did not register the Java 2 SE platform as a collective work. Google’s April 25 Copyright Brief, Dkt. No. 982, at 6-7. If, however, the Court accepts Oracle’s “collective work” argument, then Google is entitled to judgment as a matter of law of non-infringement of each of the component parts of the registered works, because Oracle has not proved authorship of the constituent elements. See id. at 7-9.

Thus, even assuming the Court accepts Oracle’s “collective work” argument, the failure to prove authorship of any constituent elements precludes Oracle from seeking relief except regarding the selection, coordination and arrangement of the individual component parts of the

11


Java platform works.

In sum, if the Court accepts Oracle’s “collective work” argument, then Google is entitled to a judgment as a matter of law of non-infringement of each of the component parts of the registered works, because Oracle has not proved authorship of the constituent elements. First, Oracle could not argue infringement with respect to any literal copying of code. Second, Oracle could argue that the structure, sequence and organization of the 37 API packages is infringed, but only to the extent that its argument did not rely on anything “inside” any of those API packages.

IV. CONCLUSION

For the foregoing reasons, Google respectfully requests that the Court grant Google judgment as a matter of law on the above sections of Count VIII of Oracle’s Amended Complaint.

Dated: April 25, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant GOOGLE INC.

12



986

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[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

COPYRIGHT BRIEF REGARDING
WORK AS A WHOLE

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


I. THE COURT SHOULD DETERMINE THE RELEVANT “WORKS AS A WHOLE.”

After searching further, Oracle has still found no case law that squarely addresses whether determination of what constitutes a “work as whole” for purposes of the defenses of de minimis copying and fair use is properly determined by the court or the jury. However, courts frequently decide disputed issues regarding the scope of the “work as a whole” in the context of motions for summary judgment, strongly suggesting it is a question of law for the court. Moreover, courts also routinely decide the “work as a whole” issue in bench trials, and here both sides have asked the Court to decide that issue.

A. Judges often grant summary judgment on the issue of fair use even
when the scope of the “work as a whole” is contested.
In its April 22, 2012 brief, Oracle identified several cases where courts have determined the scope of the “work as whole” in the context of the third factor of the fair use analysis: “the amount and the substantiality of the portion [of the copyrighted work] used.” Cases in which the parties contested the scope of the “work as a whole” and the court nevertheless resolved the issue on summary judgment are discussed further below.

1. Hustler Magazine, Inc. v. Moral Majority, Inc.,
796 F.2d 1148 (9th Cir. 1986).
The defendants copied a one-page parody from a 154-page Hustler magazine and used the parody in mailers and in connection with their fundraising activities. The “Defendants argue[d] that they did not copy an entire work, but only one page from a 154-page magazine.” 796 F.2d at 1154. The district court granted summary judgment in the defendants’ favor based on fair use, and the Ninth Circuit affirmed. Both the district court and the Ninth Circuit determined the scope of the “entire work” in the context of the third factor of the fair use analysis, with the Ninth Circuit determining that the defendants had “copied an entire work” when it copied the one-page parody. Hustler Magazine, Inc., 796 F.2d at 1154-1155.

1


2. Super Future Equities v. Wells Fargo Bank Minnesota,
553 F. Supp. 2d 680 (N.D. Tex. 2008).
The plaintiff in Super Future Equities copied a webpage from one of the defendant’s websites and posted the page on its own website to criticize the defendant. The defendant counterclaimed for copyright infringement. When the plaintiff moved for summary judgment on the copyright claim, the defendant argued that the work as a whole for fair use should be the page that was copied, while the plaintiff argued that it should be the entire website. Super Future Equities, 553 F. Supp. 2d at 699-700. On summary judgment the district court determined that the “work as the whole” for purposes of the fair use defense was the one page that was copied, not the entire website, but nonetheless found fair use. Id.

3. Los Angeles Times v. Free Republic,
1999 WL 33644483 (C.D. Cal. Nov. 8, 1999).
The defendant operated an online bulletin board that allowed its members to post news articles and add commentary. The plaintiffs, the Los Angeles Times and the Washington Post, sued for unauthorized reposting of their copyrighted news articles. The plaintiffs filed a motion for summary judgment, arguing that the defendants could not rely on fair use. The parties contested the scope of the “work as a whole” for purposes of the third prong of the fair use analysis. Defendants contended that plaintiffs’ “work” was the entire daily newspaper because the copyright registration covered the paper as a whole rather than any particular article. The court rejected this argument and held that the individual articles were the “works as a whole.” Los Angeles Times, 1999 WL 33644483, at *18-20.

4. Religious Tech. Ctr. v. Arnaldo Pagliarina Lerma,
1996 U.S. Dist. LEXIS 15454 (E.D.Va. Oct. 4, 1996).
The defendant posted on the Internet portions of documents that were copyrighted by the Church of Scientology. The plaintiff moved for summary judgment of copyright infringement, and the court granted the motion. In the fair use analysis the parties disputed the scope of the “work as the whole” for purposes of the third prong of the analysis. The plaintiff argued that it should be each of the documents contained in the collection that was copyrighted, whereas the

2


defendant argued it should be the entire collection of documents. The court held that the plaintiff’s approach was correct and was supported by the Code of Federal Regulations regarding copyrighted collections. 37 C.F.R. §202.3(b)(3)(B).

B. Courts often conduct bench trials on the issue of fair use and, in the
course of those bench trials, rule on the scope of the “work as a
whole.”
Google and Oracle agree that the “work as a whole” should be determined by the Court. Submitting this question to the Court is appropriate, just as if the parties had agreed to a bench trial, as in the cases discussed below.

1. Pacific and Southern Co., Inc. v. Duncan, 744 F.2d 1490 (11th Cir. 1984).
Plaintiff was a news station that broadcast programming on television. Plaintiff alleged that defendant infringed its copyrights by videotaping the news broadcasts, and selling clips to individuals shown in the different segments of the news broadcasts. The district court held after a bench trial that the defendant had infringed plaintiff’s copyrighted material and that defendant’s use did not qualify as “fair use.” In conducting the fair use analysis, the district court considered the entire work to be the segments of the broadcast that were copied, and not the entire newscast. The Second Circuit affirmed both the district court’s determination that the segments were works as a whole, and the finding of copyright infringement. Pac. & S. Co., Inc., 744 F.2d at 1496-97.

2. American Geophysical Union v. Texaco Inc.,
60 F.3d 913 (2d Cir. 1994).
The plaintiff, American Geophysical Union, along with 82 other publishers of scientific and technical journals brought a class action claiming that Texaco’s unauthorized photocopying of articles from their journals was copyright infringement. Am. Geophysical Union v. Texaco Inc., 60 F.3d at 914. The parties agreed to try fair use in a bench trial.

American Geophysical Union published a periodical entitled the Journal of Catalysis. Each issue of the journal contained between 20 and 25 articles. The district court ruled that “the photocopying of eight articles from the Journal of Catalysis for use by one of Texaco's researchers was not fair use.” Id.

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On appeal the defendant argued that the copyrighted journal should be considered the work as a whole for the purpose of the third factor of the fair use analysis. The Second Circuit rejected that argument, holding that “Texaco copied [] entire works” by copying individual articles within the journal. 60 F.3d at 926. On that basis, the Second Circuit agreed with the district court that defendants could not carry their burden in proving fair use.

II. THE 37 API PACKAGES, TAKEN INDIVIDUALLY AND AS A UNIT,
COMPRISE THE WORKS AS A WHOLE FOR PURPOSES OF
COMPARISON TO THE INFRINGING PRODUCT.

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. Those works were encompassed within the copyright registration for J2SE 5.0 and J2SE 1.4, and also in various earlier registrations identified in the registrations for J2SE 5.0 and J2SE 1.4.

Google argues that the entire Java platform is necessarily the “work as a whole” because that is what was registered with the Copyright Office. Courts have soundly rejected that argument.. As explained in Los Angeles Times v. Free Republic, supra:

Defendants contend that plaintiffs' “work” is the entire daily newspaper because their copyright registration covers the paper as a whole rather than any particular article. Thus, they assert, copying an individual article constitutes reproduction of only a small portion of the entire work. This proposition is not supported by the case law. See Texaco, supra, 60 F.3d at 925-26 (copying an entire article from a journal where the copyright registration covered the journal as a whole constituted a copying of the entire work); Hustler Magazine, supra, 796 F.2d at 1155 (finding that “[a] creative work does not deserve less copyright protection just because it is part of a composite work” and holding that the copying of a one-page parody from a 154-page magazine constituted a copying of the entire work); Netcom On-Line II, supra, 923 F.Supp. at 1247 (“although many of Hubbard's lectures, policy statements, and course packets are collected into larger volumes, and registered as a whole, they may still constitute separate works for the purposes of this factor”); Lerma, supra, 1996 WL 633131 at *9 (“we find that the Works at issue in this case are combined in ‘collections' and that each subpart must be considered a ‘single work’ for the purposes of fair use analysis”).
1999 WL 33644483, at *19; see also 37 C.F.R. 202.3(b)(4)(i)(A); Am. Geophysical Union v. Texaco Inc., 802 F. Supp. at 17 (holding that each article within a journal was protected by a copyright even though the publisher chose to register only each issue of the journal with the Copyright Office); Religious Tech. Ctr., 1996 U.S. Dist. LEXIS 15454, at *27 (E.D.Va. Oct. 4, 1996) (“[a]lthough Lerma did not post the entirety of [the materials registered with the Copyright

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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.”) Thus each of the 37 API packages stands as a “work as a whole” entitled to copyright protection.

Each individual API package can be considered a work as a whole. The evidence at trial established that they have been individually developed over a long period of time through a formal process. (RT at 624:3-627:17 (Reinhold).) The 37 API packages as a unit also constitute a work as a whole for purposes of copyright protection. Google has argued that the 37 API packages it copied form a natural subset of the total number of Java API packages, and Google’s testimony supports grouping the 37 API packages together as a “work as a whole” for the purposes of the fair use analysis. Specifically, Google has introduced evidence that these 37 API packages are the core API packages to running Java on a smartphone platform. As Google’s engineer Dan Bornstein testified on April 25, 2012:

Q. Did Android implement all the API packages present in any particular Java Platform?

A. No.

Q. All right. And why not?

A. That wasn't a goal of the project. The goal of the project was to provide something that was familiar to developers. It wasn't to provide any particular preexisting set of packages.

Q. Did you make any judgments in deciding what packages would be implemented in the core library based on whether or not certain APIs are even appropriate for a mobile platform?

A. Yeah, absolutely.

Q. And, please, explain what you mean by that?

A. Well, if you look at the -- say, the universe of packages that have been made for the Java language in general, some of them just don't really apply in -- or, you know, didn't apply in the case of what we were doing with Android. And you can remember that, again, the point was to be a good mobile platform and there are certain constraints that that makes. You know, you can assume that the thing that you're running on is running on a battery, and that's -- that's a particular limitation.

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You can know that there's going to be less memory available than, say, on a desktop or a server. You'll know that, say, the typical CPU speed is going to be slower than you would find on a -- you know, on a desktop or server. And you'll also know that -- just the sorts of things that you would do as a mobile application are going to be different than the things that you would do if you're, say, sitting in a data center running a web server, for example. It's just -- there's different -- there are different needs. And so to the extent that some of those needs are represented in potential Java packages, those are Java packages that we wouldn't necessarily -- you know, or, we wouldn't really want to -- to have an implementation for, especially in that it takes -- implementation takes up space and, you know, storage space on a mobile device an also limited.

Q. So did you, in fact, exclude from the API packages in the core library certain Java language APIs because you believed they were not appropriate for the mobile platform?

A. That's right.

(RT at 1783:15-1785:4 (April 25, 2012).)

Regardless of how the Court ultimately defines the “work as a whole,” in determining whether Google’s use of the 37 Java API packages constitutes “fair use,” the jury must consider the amount and substantiality of the portion used in relation to the copyrighted work as a whole. Harper & Row, 471 U.S. 539, 564 (1984). Thus, in addition to instructing the jury about the appropriate scope of the “work as a whole,” the Court should also instruct the jury that in determining whether or not the portion used was substantial (the quantitative analysis), the jury should conduct a qualitative analysis. Whether or not a use of the work is quantitatively substantial, it may nonetheless be qualitatively substantial if the infringer takes the parts of the work that are among the best or most important, as Google admits it has done here. See e.g., Harper & Row, 471 U.S. at 610 (300 words out of a book was not insubstantial when they were “among the most powerful” in the book.); Roy Export Co. Establishment etc. v. CBS, 503 F. Supp. 1137, 1144 (S.D.N.Y. 1980) (holding that snippets of Charlie Chaplin films, even as small as fifty-five seconds out of an one hour and twenty-nine minute film, could nonetheless be considered qualitatively substantial, when the material was chosen because it was among the best in the film.) Google’s testimony establishes that its copying of the 37 Java API packages cannot be fair use, regardless of its quantitative significance in relation to the work as a whole

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Dated: April 25, 2012

MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs
Michael A. Jacobs

Attorneys for Plaintiff
ORACLE AMERICA, INC.

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