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Oracle v. Google - More Filings Leading Up to Closing on Copyright - UPDATED with document text ~mw
Monday, April 30 2012 @ 10:20 AM EDT

The parties and the Court have been quite busy over the weekend. This shouldn't be surprising given that the copyright case is approaching its close, and it will soon go to the jury. Exactly how the jury will be instructed is important to each side because those instructions may lead the jury in the direction favored by one party over the other.

The Court issued its jury instructions over the weekend (1012 [PDF; Text]), and each side has posed objections to those instructions.

The first fight is over the various equitable defenses Google has asserted (waiver, estoppel, implied license, and laches) and whether and how those should be presented to the jury. According to Oracle (1004 [PDF; Text]), Google proposed the following instruction:

“Has Google proven that Sun or Oracle led it to believe through its affirmative actions that it did not need a license for what it was doing?”
Oracle asked that this be changed to:

“Has Google proven that, as a result of the affirmative acts of Sun or Oracle, Google actually and reasonably believed that it did not need a license for what it was doing?”

Given the sequence of the filings, it appears the Court considered this and decided to place a modified version of both of these instructions in its final instructions to the jury (Draft Special Verdict Form [PDF; Text]):

4. Answer the following special interrogatories only if you answer “yes” to Question 1A.

A. Has Google proven that Sun and/or Oracle engaged in conduct Sun and/or Oracle knew or should have known would reasonably lead Google to believe that it would not need a license to use the structure, sequence, and organization of the copyrighted compilable code?

Yes __________ No __________

B. If so, has Google proven that it in fact reasonably relied on such conduct by Sun and/or Oracle in deciding to use the structure, sequence, and organization of the copyrighted compilable code without obtaining a license?

Yes __________ No __________

Oracle also objected to the instruction pertaining to the fair use defense asserted by Google. (1005 [PDF; Text]). Specifically, Oracle objected to "(1) a statement that “You may consider any additional factors you believe are appropriate to assist in your determination of whether Google’s use was fair use” (Proposed Jury Instruction No. 28); (2) a proposed insert to the instruction regarding transformative use; and (3) a proposed insert to the instruction regarding the “functional” nature of a work."

It appears that the Court has taken at least some of these objections to heart. The "additional factors" element appears to have been dropped, but the Court has retained the instructions relating to transformative use and funcationl nature. The instruction now reads:

26.

Now, I will explain the law governing Google’s defense based on the statutory right of anyone to make “fair use” of copyrighted works. The public may use any copyrighted work in a reasonable way under the circumstances without the consent of the copyright owner if it would advance the public interest. Such use of a copyrighted work is called a “fair use.” The owner of a copyright cannot prevent others from making a fair use of the owner’s copyrighted work. For example, fair use may include use for criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.

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

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

1. The purpose and character of the use, including whether such use is of a commercial nature, for nonprofit educational purposes, and whether such work is transformative (meaning whether Google’s use added something new, with a further purpose or different character, altering the copied work with new expression, meaning, or message). Commercial use cuts against fair use while transformative use supports fair use;

2. The nature of the copyrighted work, including whether the work is creative (which cuts against fair use), functional (which supports fair use), or factual (which also supports fair use);

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole. The greater the quantity and quality of the work taken, the less that fair use applies; and

4. The effect of the use upon the potential market for or value of the copyrighted work. Impairment of the copyrighted work cuts against fair use.

All the factors should be weighed together to decide whether Google’s use was fair use or not. It is up to you to decide how much weight to give each factor but you must consider all factors. If you find that Google proved by a preponderance of the evidence that Google made a fair use of Oracle’s work, your verdict should be for Google on that question in the Special Verdict Form.
In its third objection (1010 [PDF; Text]) Oracle objected to the following instruction proposed by Google:

To determine whether the copyrighted work and the accused work are substantially similar, or if appropriate, virtually identical, you must compare the works as a whole. However, in comparing the works as a whole, you cannot consider similarity to unprotectable elements of Oracle’s works.

I have instructed you about the protectable and unprotectable elements of Oracle's works in instructions 17, 19 and 20.

Oracle's objection in this instance was directed at: (a) the implication that the jury should consider the works at issue with the entirety of Android versus only those portions of Android that Oracle asserts are infringing (this is especially relevant to the issue of de minimis copying); (b) direct of evidence of copying negates the requirement to show substantial similarity (this is potentially misleading because the alleged direct copying is so limited); and (c) the last sentence of Google's instruction is confusing because it is only secondarily related to the issue at hand.

Again, it appears the Court has accepted at least some of these arguments. However, the reminder about protected and unprotected elements remains. The instruction regarding the work as a whole now reads:

25.

To determine whether the copyrighted work and the accused work are substantially similar, or where appropriate, virtual identity, you must compare to the works as whole. I will define the works as a whole in a moment.

However, in comparing to the works as a whole, you cannot consider similarities to unprotectable elements of Oracle’s works. I have instructed you about the protectable and unprotectable elements of Oracle’s work.

...

29.

In your deliberations, you will need to make certain comparisons to the “work as a whole.” It is my job to isolate and identify for you the “work as a whole.” You must take my identification as controlling if and when this comes up in your deliberations. This issue arises when (1) comparing Oracle’s work and Android’s work for similarity under both substantial similarity and virtual identity standards, (2) deciding whether Google copied only a de minimis amount of Oracle’s work, and (3) evaluating the third factor of fair use: the amount and substantiality of the portion used in relation to the copyrighted work as a whole.

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

For purposes of this case, I have determined that the “work as a whole” means the following: For purposes of Question No. 1 in the Special Verdict Form, the “work as a whole” constitutes all of the compilable code associated with all of the 166 API packages (not just the 37) in the registered work. This excludes the virtual machine. Similarly, for the purposes of Question No. 2 in the Special Verdict Form, the “work as a whole” means the contents (including name, declaration and English-language comments) of the documentation for all of the 166 API packages (not just the 37) in the registered work. For purposes of Question No. 3, the “work as a whole” is the compilable code for the individual file except for the last two files listed in Question No. 3, in which case the “work as a whole” is the compilable code and all the English-language comments in the same file.

The Court appears to be quite settled on this approach, but if this is the final word on the work as a whole, it should have some bearing on the damages determination later on since the expert reports appeared to be looking at all of Java, not just the 166 API packages. Moreover, this instruction appears to ignore the fact that Oracle does not own the copyright in at least some of those 166 API packages (the 14 API packages that were dropped from the original infringement contention because it was established that those had been placed in the public domain), nor, in our opinion, has Oracle established that it has a right to assert infringement of those 166 API packages alone since Oracle's copyright registration for Java includes works it does not own. Although Oracle dropped its "collective work" contention, that does not mean the Court should ignore the fact that the work, as registered by Oracle, contains elements to which Oracle has no right to claim copyright. It is surprising that the instructions to the jury simply ignores this.

Whereas the Oracle concerns appear to have been considered by the Court, Google's expressed concerns (1015 [PDF; Text] all appear to relate to the instructions as they are presently stand in Document 1012. Some of Google's concerns are directed at typos or small grammatical changes. Google's big concerns are:

  • Instruction 17 - Google objects to the instruction to the jury that “the copyrights in question do cover the structure, sequence and organization of the compilable code,” because the jury should be instructed that the structure, sequence and organization of the elements of the 37 API packages is not copyrightable, for the reasons stated in Google’s prior filings on this subject.
  • Instruction 26 - Google objects to the lack of a fifth factor in the fair use instructions and the failure to indicate that the four specified factors are not exhaustive, for the reasons given in Google’s comments on the Court’s prior proposed charge to the jury, and at the charging conference.
  • Instruction 30 - "Because the verdict form now does include a question regarding Google’s equitable defenses, see Dkt. 1012-1 at 3 (Question 4), there now is a jury issue regarding public dedication. Namely, because Sun dedicated the Java language, including the APIs, to the public, Sun engaged in conduct that it knew or should have known would reasonably lead Google to believe that it would not need a license to use the structure, sequence and organization of the APIs at issue. Google therefore objects to the two clauses on lines 18-20 of Instruction 30 in the final charge that state, 'but the parties agree that there is no such issue for you to decide. Again, Google makes no such contention in this trial . . . .' Dkt. 1012:18-20. Google requests that these two clauses be deleted. The first is incorrect, because the jury is now being asked to decide, on an advisory basis, an equitable question that relates to the issue of public dedication. The second is incorrect because Google does make such a contention in this trial, although Google’s contention relates to issues that are for the Court to decide."

I have to admit that I am a bit troubled by this last Google contention. Is Google suggesting that Sun's commitment and action to make the Java language (and purported similar action with respect to the APIs) available under an open source license the same as placing those items in the public domain. If that is Google's suggestion, it is simply wrong as a matter of law. An open source license maintains the copyright but grants broad rights under copyright; placing a copyright-eligible work in the public domain is the act of disclaiming any and all copyright in the work. Sun did the former; it did not do the latter.

In a separate filing Google has set forth a second motion for judgment as a matter of law. (1007 [PDF; Text]) This second motion argues:

  1. 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. 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.
  3. Google is entitled to judgment as a matter of law that the alleged literal copying is de minimis and thus non-actionable.
  4. Google is entitled to judgment as a matter of law that its specifications for the 37 API packages do not infringe Oracle’s specifications.
  5. Google is entitled to judgment as a matter of law on Oracle’s claims based on “direct code copying” relating to the rangeCheck code, the eight “Impl/ACL” test files and the allegedly copied comments, as a result of Oracle’s failure to prove that either of the two copyright registrations on which Oracle relies provides protection for or covers the individual files on which those claims are based.
  6. Google is entitled to judgment as a matter of law on Oracle’s copyright claim as a result of Oracle’s failure to prove the contents of the works that are the subject of the two copyright registrations on which Oracle relies.
  7. [T]o the extent Oracle has not already withdrawn with prejudice its “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.

Back to my concerns expressed above, I am not certain why this seventh point is conditional. Regardless of whether Oracle claims or does not claim to have registered a collective work, the work they did register includes elements to which Oracle does not hold copyright.

Google will not file its brief in support of this second motion until tomorrow. In the meantime, Oracle has responded with its objections to this second motion (1013 [PDF; Text]) (Note: Document 1009 appears to be an earlier draft of this same document.] There are no particular surprises here. Oracle still contends that a code implementation of a narrative specification is a derivative work of that narrative specification, at least to the extent the code implementation utilizes the same structure, sequence and organization. This is one of the critical issues of this case, and I happen to believe Oracle is simply wrong on this point.

On another point Oracle argues "Google bears the burden of showing that the code it copied was de minimis as compared to the “work as a whole.” This argument appears in direct contradiction to the Court's present jury instructions which state: "Oracle must also prove that Google copied all or a protected part of a copyrighted work owned by Oracle and that the amount of copying was not de minimis." Either Oracle is wrong or the Court is wrong on this point.

For its part Oracle reasserts its ownership of the copyright in all of Java, presumably including the 37 APIs at issue here, and that the work covered by its registration is not a collective work.

Meanwhile, Oracle appears to be asserting its own motion for judgment as a matter of law (1008 [PDF; Text], although the filed document only includes an outline, not the supporting text. Just reading the outline Oracle appears to be arguing that Google has failed to provide any evidence supporting any of the theories and, therefore, the issues in this case do not even need to go to the jury. Good luck with that.


***********

Docket

04/29/2012 - 1004 - OBJECTIONS to Oracle's Objection to Jury Instruction on Equitable Defenses by Oracle America, Inc.. (Muino, Daniel) (Filed on 4/29/2012) (Entered: 04/29/2012)

04/29/2012 - 1005 - Brief Oracle's Objections to Proposed New Jury Instruction on Fair Use filed byOracle America, Inc.. (Jacobs, Michael) (Filed on 4/29/2012) (Entered: 04/29/2012)

04/29/2012 - 1006 - Witness List by Oracle America, Inc. Rolling List of Next Ten Witnesses. (Muino, Daniel) (Filed on 4/29/2012) (Entered: 04/29/2012

04/29/2012 - 1007 - Second 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 5/14/2012. Replies due by 5/21/2012. (Van Nest, Robert) (Filed on 4/29/2012) (Entered: 04/29/2012)

04/29/2012 - 1008 - Statement OUTLINE OF ORACLE AMERICA INC.'S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS RULE 50(A) MOTION AT THE CLOSE OF ALL EVIDENCE by Oracle America, Inc.. (Muino, Daniel) (Filed on 4/29/2012) (Entered: 04/29/2012)

04/29/2012 - 1009 - RESPONSE (re 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 byOracle America, Inc.. (Jacobs, Michael) (Filed on 4/29/2012) (Entered: 04/29/2012)

04/29/2012 - 1010 - Brief ORACLE'S OBJECTION TO GOOGLE'S PROPOSED INSTRUCTION ON THE OBJECTIVE-SUBJECTIVE TEST filed byOracle America, Inc.. (Muino, Daniel) (Filed on 4/29/2012) (Entered: 04/29/2012)

04/29/2012 - 1011 - Witness List by Oracle America, Inc. ORACLE AMERICA, INC.'S AMENDED ROLLING LIST OF NEXT TEN WITNESSES. (Muino, Daniel) (Filed on 4/29/2012) (Entered: 04/29/2012)

04/29/2012 - 1012 - NOTICE OF JURY INSTRUCTIONS AND SPECIAL VERDICT FORM. Signed by Judge Alsup on April 29, 2012. (Attachments: # 1 Draft Special Verdict Form)(whalc1, COURT STAFF) (Filed on 4/29/2012) (Entered: 04/29/2012)

04/29/2012 - 1013 - RESPONSE (re 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 ) WITH TABLES filed byOracle America, Inc.. (Jacobs, Michael) (Filed on 4/29/2012) (Entered: 04/29/2012)

04/29/2012 - 1014 - OBJECTIONS to re 1012 Order Google's Objections to Final Charge to the Jury (Phase One) and Special Verdict Form by Google Inc.. (Van Nest, Robert) (Filed on 4/29/2012) (Entered: 04/29/2012)

04/29/2012 - 1015 - OBJECTIONS to re 1012 Order, 1014 Objection Google's Objections to Final Charge to the Jury (Phase One) and Special Verdict Form (corrected version of Dkt. 1014) by Google Inc.. (Van Nest, Robert) (Filed on 4/29/2012) (Entered: 04/29/2012)


***********

1004

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

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

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email address telephone fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. CV 10-03561 WHA

ORACLE’S OBJECTION TO JURY
INSTRUCTION ON EQUITABLE
DEFENSES

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


I. ORACLE OBJECTS TO GOOGLE’S PROPOSED VERDICT FORM QUESTION
ON THE EQUITABLE DEFENSES

Google claims that its copyright infringement is excused under the equitable defenses of waiver, estoppel, implied license, and laches. At the Charging Conference on April 27, 2012, counsel for Google proposed that the jury be asked the following advisory verdict question, absent any instructions on the equitable defenses: “Has Google proven that Sun or Oracle led it to believe through its affirmative actions that it did not need a license for what it was doing?” (RT at 2444:2-6.) Oracle objects to this proposed question because it vastly understates the requirements for proving the equitable defenses, each of which is different. The proposed question may lead the jury to mistakenly conclude that Google’s infringement can be excused if the question can be answered in the affirmative. A significant percentage of Google’s case has been based on arguments about these equitable defenses, and several of these arguments ― like Google’s contentions regarding Apache Harmony ― have been legally incorrect. Oracle is concerned about the prejudice that may result if these equitable defenses now become part of the jury’s deliberation process in the form of a overly simplistic single question.

If the Court chooses to take this streamlined approach rather than asking specific questions and providing instructions for each equitable defense, Oracle requests the following modification to better capture some of the common requirements of Google’s equitable defenses:

“Has Google proven that, as a result of the affirmative acts of Sun or Oracle, Google actually and reasonably believed that it did not need a license for what it was doing?”
An advisory verdict on this single question would not be a true finding on any of the equitable defenses. That work will have to be done by the Court in view of the full law. As explained briefly below, the law on each equitable defense requires a greater showing by Google than is reflected in the single verdict form question, as posed by Google or by Oracle.

(1) The equitable defense of waiver requires Google to prove that Oracle intentionally relinquished its known rights to the 37 API packages in Java. United States v. King Features Entm’t, Inc., 843 F.2d 394, 399 (9th Cir. 1988) (“Waiver is the intentional relinquishment of a known right with knowledge of its existence and the intent to relinquish it”); Adidas-America,

1


Inc. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1074 (D. Or. 2008) (failure to act to enforce a right, without more, is insufficient evidence of intent to waive).

(2) For equitable estoppel, Google must show that (1) Oracle/Sun knew of Google’s infringement; (2) Oracle/Sun intended that Google rely on Mr. Schwartz’s statements regarding Android, or acted in such a way that Google had a right to rely on those statements; (3) Google was ignorant of its infringement of Oracle/Sun’s rights; and (4) Google relied on Oracle/Sun’s conduct or statements to its material harm. Hampton v. Paramount Pictures Corp., 279 F.2d 100, 104 (9th Cir. 1960) (listing four elements of estoppel).

(3) To claim an implied license, Google must prove that Oracle/Sun affirmatively granted permission to Google to use the 37 API packages at issue and that the entire course of conduct between Oracle/Sun and Google over the relevant time period led Google to reasonably infer Oracle/Sun’s consent. Effects Assocs. v. Cohen, 908 F.2d 555, 558-559 (9th Cir. 1990) (finding an implied license where plaintiff created the copyrighted work at defendant’s request and handed it over to him, “intending defendant copy and distribute it”); Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc., 103 F.3d 1571, 1581 (Fed. Cir. 1997) (“The primary difference between the estoppel analysis in implied license cases and the analysis in equitable estoppel cases is that implied license looks for an affirmative grant of consent or permission to make, use, or sell: i.e., a license”) (internal citations omitted; emphasis added).

(4) Lastly, for the equitable defense of laches, Google must prove that (1) Oracle/Sun unreasonably delayed filing the lawsuit; (2) the delay was inexcusable, and (3) Google has suffered material prejudice due to Oracle/Sun’s delay. Danjaq LLC v. Sony Corp., 263 F.3d 942, 952-56 (9th Cir. 2001) (three-part analysis of “delay,” “reasonableness of the delay,” and “prejudice”); Winn v. Opryland Music Group, Inc., 22 Fed. Appx. 728, 729 (9th Cir. 2001) (same). Additionally, “laches is not available in a case of willful infringement, when the infringing conduct occurs ‘with knowledge that the defendant’s conduct constitutes copyright infringement.” Winn, 22 Fed. Appx. at 729; Danjaq, 263 F.3d at 956-57 (willfulness exception to laches “remains the law of this circuit”).

2


The proposed single advisory verdict question, even in the modified form that Oracle proposes, obviously does not capture all elements of the equitable defenses. Omitted from the question, inter alia, are the requirements that (1) Oracle intentionally relinquish its known rights in the 37 API packages (waiver), (2) Oracle/Sun intended that Google rely on Oracle/Sun’s conduct or statements (estoppel), (3) Google actually relied on Oracle/Sun’s conduct or statements to its material detriment (estoppel), (4) Oracle/Sun affirmatively granted Google permission to use the 37 API packages without a license (implied license), (5) any delay in suit was unreasonable and caused Google to suffer prejudice (laches); and (6) that a finding of willful infringement may negate Google's ability to claim laches.

Oracle is concerned that a jury interrogatory in either proposed format may mislead the jury into believing that Google’s infringing conduct could be excused on facts that would fall well short of the actual requirements for the equitable defenses Google asserts. Further, because the interrogatory omits necessary elements of Google’s defenses, it would appear to be of limited value to the Court. That is, if the Court does pose this question to the jury, the answer could provide the jury’s view on the particular question posed, but would not be sufficient to support an advisory verdict in Google’s favor on any specific equitable defense. Hence its usefulness to the Court in making its own decision on each of Google’s equitable defenses seems questionable at best.

CONCLUSION

For these reasons, the Court should not include Google’s proposed advisory verdict question. The Court must decide these equitable defenses, and its decision will be aided by the evidence presented at trial. Giving the jury the proposed, over-simplified question creates a

3


substantial risk of jury confusion, diverting attention from the factual issues the jury must decide. If the question is given, it should be in the modified form set forth above.

Dated: April 29, 2012

MORRISON & FOERSTER LLP

By: /s/ Daniel P. Muino
Daniel P. Muino

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

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

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email address telephone fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

4


1005

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

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

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email address telephone fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. CV 10-03561 WHA

ORACLE’S OBJECTIONS TO
PROPOSED NEW JURY
INSTRUCTION ON FAIR USE

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


Oracle submits this brief to address the new proposed instruction on fair use that was proposed by the Court for the first time at the charging conference on Friday, April 27. The instruction should not be delivered in the current form because it has incorporated additions from Google that have the potential to greatly mislead the jury.

I. THE COURT’S PROPOSED NEW INSTRUCTION ON FAIR USE HAS
ADOPTED SUGGESTIONS FROM GOOGLE THAT HAVE GREAT
POTENTIAL TO MISLEAD THE JURY.

The Court submitted a revised proposed fair use instruction at the charging conference on April 27. That instruction incorporated suggested additions from both parties. It incorporated three requested additions from Google that should not be adopted: (1) a statement that “You may consider any additional factors you believe are appropriate to assist in your determination of whether Google’s use was fair use” (Proposed Jury Instruction No. 28); (2) a proposed insert to the instruction regarding transformative use; and (3) a proposed insert to the instruction regarding the “functional” nature of a work. For the reasons stated below these three additions should not be adopted.

A. The Jury Should Not Be Told That It May Consider Any Additional
Factors It Believes Are Appropriate.
At Google’s prompting, the Court has incorporated language into proposed Instruction No. 28 which provides that “You may consider any additional factors you believe are appropriate to assist in your determination of whether Google’s use was fair use.” Proposed Instruction No. 28. Including this language in the instruction would be legal error and would be extremely prejudicial to Oracle. As worded, it would invite the jury to consider any factor it wishes in reaching its verdict on fair use. Fair use law is not so unbounded, however.

The Copyright Act enumerates four statutory factors that may be considered in conducting a fair use analysis. 17 U.S.C. § 104. Oracle agrees that these four statutory factors are not necessarily an exhaustive list. As Google notes, the Supreme Court has stated that the “factors enumerated in the statute in the section are not meant to be exclusive” and that each case must be decided on its own facts. (ECF No. 996 at 1 (quoting Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985) (citation omitted).) It does not follow, however, that the jury has

1


unbridled discretion to consider whatever factor it wishes as part of fair use. The jury may only consider factors that legitimately relate to the doctrine of fair use and the purpose behind it.

In Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), the Supreme Court explained that the rationale behind the fair use doctrine is to further the underlying purpose of the Copyright Act itself: “From the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright’s very purpose, ‘to promote the Progress of Science and useful Arts . . . .’ U.S. Const., Art. I, § 8, cl. 8.” 510 U.S. at 575. Accordingly, the Court emphasized that the fair use doctrine authorizes consideration of additional factors that go to the issue of stifling creativity: “The fair use doctrine thus ‘permits [and requires] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.’” Id. at 577 (quoting Stewart v. Abend, 495 U.S. 207, 236 (1990) (internal quotation marks and citation omitted in original). While courts endorse the notion that additional factors may be considered in evaluating a fair use defense, in practice, courts have been willing to consider very few additional factors. The jury should not be permitted to consider any additional factors in reaching its verdict that are unrelated to the purpose of the fair use doctrine, that is to avoid “stifling the very creativity which the law is designed to foster.” Campbell, 510 U.S. at 577. Citing Campbell, the Ninth Circuit has emphasized that the fair use analysis needs to be grounded in the purpose of copyright law:

We are mindful that fair use is a tool for adapting copyright law to brisk technological advances and for tempering the over-technical application of copyright law. Nonetheless, in re-weighing the four fair use factors on appeal, “in light of the purposes of copyright,” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994), we conclude that the Sheriff's Department is not entitled to the fair use defense.
Wall Data, Inc. v. L.A. County Sherriff’s Dep’t, 447 F.3d 769, 778 (9th Cir. 2005). See also id. at 777 (“The fair use defense buttresses the basic goal of copyright law: to put copyrighted works to their most beneficial use so that “the public good fully coincides . . . with the claims of individuals.”) (citation omitted) (omission in original).

Accordingly, the jury should not be permitted to base its verdict on additional factors that have nothing to do with fair use law, or its purpose of avoiding stifling creativity, such as whether

2


Google believed it had a license, or whether Sun waited too long to sue. Evidence on these, and other similar issues, has played a prominent role in Google’s defense. This evidence relates to Google’s equitable defenses of laches, waiver, estoppel and implied license, not fair use.

The parties have all agreed that these equitable defenses are an issue for the Court to decide, and Oracle objected to the jury hearing this evidence in the first place. But as drafted, this instruction could lead the jury to conclude that it is entitled to take any of the evidence it has heard relating to the equitable defenses into account in determining fair use. The jury may effectively render a verdict on fair use based on issues that are the province of the Court alone. Moreover the jury would render its verdict without any knowledge of the actual elements of those equitable defenses to apply, since Google has proposed that the jury be provided with an over-simplified instruction on the equitable defense issues that leaves out many of the elements that it must prove. (See ECF No. 1004.)

These are only examples. If the jury is literally told it can take anything into account, it may assume it is free to decide what is “fair” generally, as opposed to what is “fair use.” It is likely that the jury will assume it can base its verdict on other Google arguments that have nothing to do with fair use, such as Google’s legally incorrect argument concerning the Apache Harmony license. There will be no way for the parties to determine whether this legal error occurred and as a result, any finding in favor of Google on fair use would be tainted by error. The proposed instruction will give Google’s counsel free reign to argue that any or all of these issues should be considered as part of fair use.

For all the above reasons, Google’s proposed addition to the instruction regarding consideration of additional factors should be removed. If the Court believes that the jury should consider factors beyond the four statutory ones, the Court should specifically identify them and include them as part of the instruction so that the jury is not misled into believing that it has an unfettered discretion to consider whatever factors it wishes, including those that are legally irrelevant in determining fair use. This would be in line with the Ninth Circuit’s Model Jury Instructions, which suggest that the Court “insert any other factor that bears on the issue of fair

3


use,” rather than deliver an open-ended instruction of the type Google has proposed. See Ninth Circuit Civil Model Jury Instructions (Copyright) § 17.18 (emphasis in original).

B. The Fair Use Instruction Should Not Include Language Regarding
Transformative Use.
The Court’s proposed fair use instruction would also tell the jury, as part of its explanation of the first enumerated factor (“purpose and character of the use”), that the jury should consider “whether such work is transformative (meaning whether the [sic] Google’s use of the copyrighted material was for a purpose distinct from the purpose of Oracle’s original material).” Giving that part of the instruction would be error because (1) Google has presented no evidence to support a conclusion that its use of Java APIs is “transformative” within the meaning of controlling case law, and (2) while much preferable to Google’s proposed definition of “transformative,” the proposed definition—”for a purpose distinct from the purpose of Oracle’s original material”—is unsupported by case law and has potential to mislead the jury in a way unfairly prejudicial to Oracle.

Google relies for this “transformative” addition to the “purpose and character” part of the fair use instruction on Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). Campbell, which involved a claim of fair use for a song parody, held that “parody, like other comment or criticism, may claim fair use under § 107.” 510 U.S. at 579. In so holding, the Court explained the “purpose and character” factor with reference to whether the new work is “transformative”:

The enquiry here may be guided by the examples given in the preamble to § 107, looking to whether the use is for criticism, or comment, or news reporting, and the like, see § 107. The central purpose of this investigation is to see, in Justice Story’s words, whether the new work merely “supersede[s] the objects” of the original creation, (“supplanting” the original), or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.” . . . [T]he more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.
510 U.S. at 578-79 (citations omitted).

Campbell suggests it should be. See 17 U.S.C.

4


§ 107. In Leadsinger, Inc. v. BMG Music Publ’g for example, the Ninth Circuit started its analysis by considering whether the allegedly transformative use of copying song lyrics for karaoke fell within the statutory examples. 512 F.3d 522, 530 (9th Cir. 2008). The Court concluded it did not, and emphasized that “Leadsinger’s basic purpose remains a commercial one ― to sell its karaoke device for a profit. And commercial use of copyrighted material is ‘presumptively an unfair exploitation of the monopoly privilege that belongs to the owner of the copyright.’” Id. at 530 (citation omitted).

Ninth Circuit cases following Campbell have emphasized that “transformative” is intended to refer to a work—like a criticism or a parody—that has a purpose entirely different from the original and is not intended to apply to a competing work with a parallel object or purpose. For example, in Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003), in holding that a search engine operator’s use of “thumbnail” pictures of copyrighted images was “transformative” fair use, the court explained that,

[T]he thumbnails were much smaller, lower-resolution images that served an entirely different function than Kelly’s original images. Kelly’s images are artistic works intended to inform and to engage the viewer in an aesthetic experience . . . . Arriba’s use of Kelly’s images in the thumbnails is unrelated to any aesthetic purpose.
336 F.3d at 818 (emphasis added); id. at 819 (emphasis added) (“Arriba’s use of the images serves a different function than Kelly’s use—improving access to information on the internet versus artistic expression . . . . Because Arriba’s use is not superseding Kelly’s use but, rather has created a different purpose for the images, Arriba’s use is transformative.”).

Similarly, in Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701 (9th Cir. 2007), which followed Kelly and held that Google’s search engine “thumbnail” photographs were “transformative” uses of the plaintiff’s photographs and hence fair use, the Ninth Circuit emphasized that the search engine used the photographs for an entirely different function:

Although an image may have been created originally to serve an entertainment, aesthetic, or informative function, a search engine transforms the image into a pointer directing a user to a source of information . . . . [A] search engine provides social benefit by incorporating an original work into a new work, namely, an electronic reference tool . . . . In other words, a search engine puts images in a different context so that they are transformed into a new creation.

5


487 F.3d at 721 (emphasis added) (internal citations and quotations omitted); id. at 721 (“a search engine provides an entirely new use for the original work”); id. at 722 (“Here, Google uses Perfect 10’s images in a new context to serve a different purpose.”)

In Worldwide Church of God v. Phila. Church, 227 F.3d 1110 (9th Cir. 2000), the Ninth Circuit found no “transformative” use where a non-profit church used for its own religious observances a book copyrighted by another church. The court explained that, far from transformative, “where the ‘use is for the same intrinsic purpose as [the copyright holder’s] . . . such use seriously weakens a claimed fair use.’” 227 F.3d at 1117, quoting Weissmann v. Freeman, 868 F.2d 1313, 1324 (2d Cir. 1989).

Here, Google uses the Java APIs not for “an entirely different function” (Kelly, 336 F.3d at 818) or “in a new context to serve a different purpose” (Perfect 10, 487 F.3d at 722) but for “the same intrinsic purpose” (Worldwide Church of God, 227 F.3d at 1117) in a competing product and to attract Java developers. There is nothing “transformative” about that use. That Google licenses Android under a particular “open source” license (the Apache license, which allows a licensee to get without giving back) while Oracle licenses Java both commercially and under a different open source license (the GPL, which allows a licensee to get in return for giving back) “transforms” nothing. Otherwise, taking someone’s copyrighted material and giving it away under a license of one’s choice would be rendered “transformative” merely by attaching the label “open source.”

Nor can the fact that Android is a smart phone platform and the Java APIs are typically deployed in other computing and mobile phone contexts possibly render Google’s use “transformative.” Google has done nothing more than take technology that was already present in one billion mobile phones, copy it without modification, and place that same technology in several hundred million competing mobile phones. Further, there is nothing “transformative” in the fact that Android is a smartphone platform: there was uncontroverted evidence at trial that the Java APIs are used in the Blackberry smartphones manufactured by RIM, and were used in the Sidekick/Hiptop smartphones manufactured by Andy Rubin’s company Danger, and Nokia’s Series 60 phones. (Tr. 959:20-23 (Swetland); 1585:21-23 (Rubin); 300:18-19 (Ellison); 383:6-9 (Kurian); 1102:3-9 (Cizek); 1922:22-25 (Gering).) If Google’s argument were accepted, the idea

6


of “transformation” would swallow up copyright protection: anyone claiming to have a better business model for distributing the copyrighted work would be able to copy it, sell it, and claim “fair use.” Movie makers would be hard-pressed to enforce their copyrights against infringing distributors where there were no previous distributors; book publishers could not enforce against e-Book publishers if they were not already distributing e-Books; musicians could not enforce against FM or satellite radio stations if their songs were broadcast only on AM stations. This is not the law. As the Ninth Circuit noted in Perfect 10:

In contrast, duplicating a church’s religious book for use by a different church was not transformative. See Worldwide Church of God v. Phila. Church of God, Inc., 227 F.3d 1110, 1117 (9th Cir. 2000). Nor was a broadcaster’s simple retransmission of a radio broadcast over telephone lines transformative, where the original radio shows were given no “new expression, meaning, or message.” Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir.1998).
487 F.3d at 722; see also Leadsinger, Inc. v. BMG Music Publ’g, 512 F.3d 522, 530 (9th Cir. 2008) (applying song lyrics to enable sing-along not transformative).1

Here, Google took 37 Java API packages that are implemented by Oracle, or by others under license, in the Java documentation and computer software and copied them into the Android documentation and computer software. This is not “an entirely different function” (Kelly, 336 F.3d at 818); it is the same function and “the same intrinsic purpose” (Worldwide Church of God, 227 F.3d at 1117). Google’s Android platform may have been highly disruptive to existing markets, as Google intended, but that does not make its use “transformative” within the meaning of fair use law.

___________________________________

1 Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1527-28 (9th Cir. 1993) and Sony Computer Entm’t, Inc v. Connectix Corp., 203 F.3d 596, 603-04 (9th Cir. 2000), which involved reverse engineering in the video game context, are not contrary to these general principles. Those cases involved so-called “intermediate copying” where the final products were not accused of infringement. The issue was whether game console manufacturers could prevent video game developers from reverse engineering a short code that locked the games to the manufacturer’s console (Sony) or prevented the game cartridge maker from developing games that were compatible with the console (Sega). The issue in both was the ability of the console makers to restrict game makers, who made products that were complementary to and not substitutes for the plaintiffs. In neither case was there a nexus between that which was infringing (the intermediate copy) and any impairment of the market for the plaintiffs’ products. These cases present sui generis fact patterns that are inapplicable here, where Google has developed an incompatible substitute for the Java class libraries.

7


Google’s parallel use of the Java APIs is thus not “transformative” as a matter of law. There is, therefore, no basis to instruct the jury on a “transformative” defense, and the reference to “transformative” in the first (“purpose and character of the use”) fair use factor in Instruction No. 28 should be stricken in its entirety.

Even if there were a basis to instruct the jury on whether a work is “transformative” (which there is not), the current definition of “transformative” in Instruction No. 28—”meaning whether the [sic] Google’s use of copyrighted material was for a purpose distinct from the purpose of Oracle’s original material”—is inaccurate. As demonstrated above, the principle of “transformative” does not apply whenever there is any distinction in use but only when the accused infringer’s use is for “an entirely different function” and is “unrelated” to the original use of the copyrighted work. Kelly, 336 F.3d at 818.

The current definition of “transformative” in Instruction No. 28 is unsupported by case law and is likely to mislead the jury. For example, having been told that they must find only “a purpose distinct from the purpose of Oracle’s original material” in order to apply the “transformative” principle, jurors may believe that simply because Google has used the Java API packages to create a different product, “distinct” from prior products using the Java API packages, Google’s use is “transformative.” Such a conclusion would be erroneous under controlling case law.

Therefore, if Instruction No. 28 is to refer to “transformative” at all—which it should not—it should define “transformative,” consistent with Ninth Circuit law, as “meaning whether Google’s use of copyrighted material was for a distinct purpose unrelated to the function and purpose of Oracle’s original material.”

“Functional” Language
Finally, the Court has proposed to adopt Google’s language, under the second fair use factor, as to whether a work is “functional” or “factual”. The authority Google relies upon for this proposed addition to the instruction is Sega, 977 F.2d at 1524. (See ECF No. 996 at 2.) But Google’s excerpt omits much of the important context for the Court’s discussion. The opinion goes

8


on to state that computer programs cannot be so easily slotted into the functional/creative dichotomy:

Computer programs pose unique problems for the application of the “idea/expression distinction” that determines the extent of copyright protection. To the extent that there are many possible ways of accomplishing a given task or fulfilling a particular market demand, the programmer’s choice of program structure and design may be highly creative and idiosyncratic. However, computer programs are, in essence, utilitarian articles - articles that accomplish tasks. As such, they contain many logical, structural, and visual display elements that are dictated by the function to be performed, by considerations of efficiency, or by external factors such as compatibility requirements and industry demands.
Sega, 977 F.2d at 1524 (citation omitted). The court continues:

Because of the hybrid nature of computer programs, there is no settled standard for identifying what is protected expression and what is unprotected idea in a case involving the alleged infringement of a copyright in computer software. We are in wholehearted agreement with the Second Circuit’s recent observation that ‘[t]hus far, many of the decisions in this area reflect the courts’ attempt to fit the proverbial square peg in a round hole.’
Id. (citation omitted). Ultimately, the court concluded in Sega that the second factor weighed in favor of fair use because it was a reverse engineering case and “disassembly of the object code in Sega's video game cartridges was necessary in order to understand the functional requirements for Genesis compatibility.” Id. at 1526. The facts here are completely different.

Google’s proposed insert to the instruction completely ignores these complexities, and invites the jury to slot a square peg into a round hole. Every computer program is functional, but as the Ninth Circuit has recognized, aspects of computer programs may be highly creative. Oracle accordingly requests that this portion of the proposed instruction be omitted as well.

CONCLUSION

For all the above reasons, the three proposed additions to the Court’s fair use instruction should not be adopted.

9


Dated: April 29, 2012

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

By: /s/ Michael A. Jacobs
Michael A. Jacobs
Attorneys for Plaintiff ORACLE AMERICA, INC.

10



1007

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[email]
CHRISTA M. ANDERSON - # 184325
[email]
DANIEL PURCELL - # 191424
[email address telephone fax]

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

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

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

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. 3:10-cv-03561 WHA

GOOGLE’S SECOND 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


I. INTRODUCTION

Pursuant to Fed. R. Civ. P. 50, Google hereby moves for Judgment as a Matter of Law on sections of Count VIII of Oracle’s Amended Complaint. Pursuant to the Court’s request, Google will file supplemental briefing in support of its motion on Tuesday, May 1.

II. ARGUMENT

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. As explained in Google’s April 25, 2012 Motion for Judgment as a Matter of Law [Dkt. No. 984] (“Apr. 25 JMOL”) at 2-3, Oracle’s derivative work claim is foreclosed by 17 U.S.C. § 102(b) and Baker v. Selden, 101 U.S. 99 (1879).

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. See Apr. 25 JMOL at 3-4; Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 n.7 (9th Cir. 1992).

Third Google is entitled to judgment as a matter of law that the alleged literal copying is de minimis and thus non-actionable. See Apr. 25 JMOL at 4-6.

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. See Apr. 25 JMOL at 6-10.

Fifth, Google is entitled to judgment as a matter of law on Oracle’s claims based on “direct code copying” relating to the rangeCheck code, the eight “Impl/ACL” test files and the allegedly copied comments, as a result of Oracle’s failure to prove that either of the two copyright registrations on which Oracle relies provides protection for or covers the individual files on which those claims are based.

Sixth, Google is entitled to judgment as a matter of law on Oracle’s copyright claim as a result of Oracle’s failure to prove the contents of the works that are the subject of the two copyright registrations on which Oracle relies. See Apr. 25 JMOL at 10-11.

Seventh, to the extent Oracle has not already withdrawn with prejudice its “collective

1


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. See Apr. 25 JMOL at 11-12.

Google’s Rule 50 motion is based on this Motion, Google’s April 25th motion for judgment as a matter of law and the evidence and authorities cited therein, the brief in support and the evidence and authorities cited therein that the Court has directed Google to file in support of this Motion, the entire trial record, and such argument as the Court allows on this Motion.

Rule 50 of the Federal Rules of Civil Procedure applies only to issues on which the jury is being asked to render a verdict. See Fed. R. Civ. P. 50(a)(1) (rule applies where “a party has been fully heard on an issue during a jury trial and the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue”). Google’s Rule 50 motion therefore does not address copyrightability or its equitable defenses—issues which are reserved for the Court. To the extent that the Court concludes Rule 50 motions can be directed to issues reserved to the Court (or such issues in combination with issues left for the jury), Google further moves for judgment as a matter of law on Count VIII in its entirety on the grounds that (a) the structure, sequence, and organization of the Java APIs is not protectable by copyright, and Oracle has not carried its burden of proof as to the remaining parts of its claim, namely the specifications and allegedly copied items (as referenced in the paragraphs beginning with “Third” and “Fourth” above); and (b) Count VIII of the Oracle’s Amended Complaint is barred by Google’s equitable defenses of laches, equitable estoppel, waiver, and implied license. Such further motion is based on this Motion, the proposed findings of fact and conclusions of law and the evidence and authorities cited therein that the Court has directed Google to file on issues reserved for the Court, the entire trial record, and such argument as the Court allows on this Motion.

Dated: April 29, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

2



1008

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

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

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email address telephone fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. CV 10-03561 WHA

OUTLINE OF ORACLE AMERICA,
INC.’S MEMORANDUM OF
POINTS AND AUTHORITIES IN
SUPPORT OF ITS RULE 50(A)
MOTION AT THE CLOSE OF ALL
EVIDENCE

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


I.INTRODUCTION
II.STATEMENT OF FACTS
III.LEGAL STANDARD FOR JUDGMENT AS A MATTER OF LAW
IV.NO REASONABLE JURY COULD FIND THAT GOOGLE DID NOT
INFRINGE ORACLE’S JAVA-RELATED COPYRIGHTS
A.Google Infringes Oracle’s Copyrights by Copying the Structure,
Sequence, and Organization of the 37 Java API Packages
1.Google admitted that it directly copied the structure, sequence,
and organization of the 37 Java API packages
2.Google admitted that it had access to the structure, sequence,
and organization of the 37 Java API packages
3. Google admitted that the structure, sequence, and organization
of the 37 Java API packages and that of the Google Android
API packages are substantially similar
B.Google’s Copying Is Not Fair Use
1.Google commercially uses the copyrighted work
2.The copyrighted work is creative in nature
3.Google uses key, valuable portions of the copyrighted work
4.Google’s use harms the potential market for and value of the
copyrighted work
5.Google’s copying does not serve a transformative purpose
C.Google’s Copying of the Structure, Sequence, and Organization of the
37 Java API Packages Was Not De Minimis
D.Google’s Literal Copying of Code and Comments Was Not De Minimis
V.OTHER ISSUES THAT ARE NOT BEING PRESENTED TO THE JURY
A.Oracle Owns Valid Copyrights in Java-Related Works
B.Google Copied Original Elements of Java-Related Works
C.Google Infringes Oracle’s Copyrights by Copying the Structure,
Sequence, and Organization of the Documentation for 37 Java API
Packages into the Documentation for the 37 Google Android API
Packages
D.Google Infringes Oracle’s Copyrights by Deriving Its Implementations
of the 37 Google Android API Packages from the Documentation for
the 37 Java API Packages

1


VI.GOOGLE’S EQUITABLE DEFENSES FAIL
A.Google Has Not Shown that Equitable Estoppel Bars Oracle’s
Copyright Infringement Claims
B.Google Has Not Shown that the Doctrine of Laches Applies to Oracle’s
Copyright Infringement Claims
C.Google Has Not Shown that Oracle or Sun Waived Its Right to Assert
Copyright Infringement Claims
D.Google Has Not Shown that Oracle or Sun Gave It an Implied License
to Use Oracle’s Copyrights
VII.ALTERNATIVE GOOGLE DEFENSES THAT GOOGLE PLED BUT DID
NOT PRESENT TO THE JURY FAIL
A.Google Has Not Shown that Merger Doctrine Applies
B.Google Has Not Shown that Scenes A Faire Doctrine Applies
C.Google Has Not Shown that Oracle or Sun Gave It a License to Use
Oracle’s Copyrights
D.Google Has Not Shown that It Independently Created the Accused
Works
E.Google Has Not Shown that a Third Party Is Liable for Google’s
Infringing Conduct
F.Google Has Not Shown that Oracle’s Copyright Infringement Claims
Are Subject to the Doctrine of Unclean Hands
VIII.CONCLUSION

Dated: April 29, 2012

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

By: /s/ Daniel P. Muino

Attorneys for Plaintiff
ORACLE AMERICA, INC.

2



1011

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

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

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email address telephone fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. CV 10-03561 WHA

ORACLE AMERICA, INC.’S AMENDED ROLLING LIST OF NEXT TEN WITNESSES

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


Pursuant to the Court’s Order regarding rolling lists of witnesses (Dkt. 851) and the parties’ agreement to increase the number of witnesses on the list to ten (Dkt. 884), Oracle America, Inc. hereby files and serves its current list of its anticipated next trial witnesses:

1. Bornstein, Dan
2. Brady, Patrick
3. Goldberg, Ben
4. Kessler, Peter
5. Lindholm, Tim
6. McFadden, Andy
7. Mitchell, John
8. Morrill, Dan
9. Poore, Noel
10. Vandette, Bob
Dated: April 29, 2012

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

By: /s/ Daniel P. Muino

Attorneys for Plaintiff
ORACLE AMERICA, INC.



1012

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

NOTICE OF FINAL CHARGE TO THE JURY (PHASE ONE)
AND SPECIAL VERDICT FORM


1.

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

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

2.

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

1. The sworn testimony of witnesses, whether presented in person or by depositions;

2. The exhibits received into evidence; and

3. Any stipulated facts or facts I told you were deemed to be evidence.

3.

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

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

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

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

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

4.

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

5.

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


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

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

2. The witness’ memory;

3. The witness’ manner while testifying;

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

5. Whether other evidence contradicted the witness’ testimony;

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

7. Any other factors that bear on believability.

6.

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

7.

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


you may give the testimony of that witness such credibility, if any, you think it deserves.

8.

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

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

9.

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

10.

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

11.

Now I will address the burden of proof. In this case, the preponderance of the evidence standard applies on all sides, so whoever has the burden of proof on an issue must carry that issue by a preponderance of the evidence. When a party has the burden of proof on any claim by a preponderance of the evidence, it means you must be persuaded by the evidence that the claim is more probably true than not true. To put it differently, if you were to put the evidence favoring a


plaintiff and the evidence favoring a defendant on opposite sides of a scale, the party with the burden of proof on the issue would have to make the scale tip somewhat toward its side. If the party fails to meet this burden, then the party with the burden of proof loses on the issue. Preponderance of the evidence basically means “more likely than not.”

12.

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

13.

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

14.

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

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

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


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

4. Display publicly a copyrighted work.

It is the owner of a copyright who may exercise these exclusive rights to copy. Even though someone may acquire a copy of the copyrighted work, such as a book from a bookstore, for example, the copyright owner retains rights to control the making of copies of the work.

15.

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

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

2. Musical works;

3. Photographs and drawings;

4. Motion pictures;

5. Computer programs, also of particular interest here.

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

16.

As stated, the owner of a copyright has the exclusive right to make copies of all or more than a de minimis part of the copyrighted work, subject only to the


right of anyone to make fair use of all or a part of any copyrighted material, all as will be explained below.

17.

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

Another statutory limitation on the scope of a copyright is that copyright never protects any procedure, process, system, method of operation, concept, principle, or discovery. Possibly such things can be claimed under the patent system or by trade secret laws but they may not be claimed by copyright. For purposes of your deliberations, I instruct that the copyrights in question do cover the structure, sequence and organization of the compilable code.

18.

I will now turn to the claims in this case. Oracle claims Google has infringed its copyrights in two registered works, namely, “Java 2 Standard Edition, Version 1.4” (TX 464) and “Java 2 Standard Edition, Version 5.0” (TX 475), and the applications leading to those registrations appear at TX 3529 and 3530. Among other things, the registered copyrights generally include the compilable code and documentation for the Java API packages. The main issues you must decide concern these two general types of material contained therein, namely “compilable code” and “documentation.” As used in these instructions and the Special Verdict Form, the term API “compilable code” refers to method names and class names, declarations, definitions, parameters, organization, and


implementation (whether in the form of source code or object code) implementing the various API functions. The “compilable code” does not include the Englishlanguage comments you have heard about. Even though such comments are embedded in the software program, these English-language comments do not get compiled and are not used by the computer to perform API functions. Instead, the English-language comments are part of what I will call the API “documentation,” sometimes referred to as the “specification,” a term that encompasses all of the English-language comments. The term “API documentation” includes all content — including English-language comments as well as method names and class names, declarations, definitions, parameters, and organization — in the reference document for programmers. Again, please remember that although these Englishlanguage comments appear in the software program listing, they can be extracted for handy reference in the guides made available to programmers. So, I will be referring to the “API compilable code” and to the “API documentation.”

19.

The copyrighted Java platform has more than 37 API packages and so does the accused Android platform. As for the 37 API packages that overlap, Google agrees that it uses the same names and declarations but contends that its line-by-line implementations are different (with the exception of the rangeCheck lines), a contention not disputed by Oracle. Instead, Oracle contends that Google copied the structure, sequence and organization of the compilable code for the 37 API packages as a group. Google agrees that the structure, sequence and organization of the 37 accused API packages in Android is substantially the same as the structure, sequence and organization of the corresponding 37 API packages in Java. Google states, however, that the elements it has used are not infringing and, in any event, its use was protected by a statutory rule permitting anyone to make “fair use” of copyrighted works.


20.

Now, let me tell you the law about names. The copyrights do not cover the names, such as those given to files, packages, classes, and methods, because under the law, names cannot be copyrighted. This applies to the name “java” as well. Although “Java” has been registered as a trademark, there is no trademark claim in this lawsuit. The name java cannot be copyrighted, nor can any other name, whether one or two words or longer in length. While individual names are not protectable on a standalone basis, names must necessarily be used as part of the structure, sequence, and organization and are to that extent protectable by copyright.

21.

With respect to the API documentation, Oracle contends Google copied the English-language comments in the registered copyrighted work and moved them over to the documentation for the 37 API packages in Android. Google agrees that there are similarities in the wording but, pointing to differences as well, denies that its documentation is a copy. Google further asserts that the similarities are largely the result of the fact that each API carries out the same functions in both systems. Google again asserts the statutory defense of fair use.

22.

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


23.

Now, I will turn to the more detailed law. In order to prove infringement, Oracle must first prove that Oracle’s work is original and that it is the owner of the part of the work allegedly copied. For your purposes, the parties agree that there are no issues of ownership or originality for you to decide.

24.

Oracle must also prove that Google copied all or a protected part of a copyrighted work owned by Oracle and that the amount of copying was not de minimis. So, there are two elements Oracle must prove to carry its burden on infringement, namely copying of a protected part and the part copied was more than de minimis when compared to the work as a whole. These are issues for you to decide.

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

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


25.

To determine whether the copyrighted work and the accused work are substantially similar, or where appropriate, virtual identity, you must compare to the works as whole. I will define the works as a whole in a moment.

However, in comparing to the works as a whole, you cannot consider similarities to unprotectable elements of Oracle’s works. I have instructed you about the protectable and unprotectable elements of Oracle’s work.

26.

Now, I will explain the law governing Google’s defense based on the statutory right of anyone to make “fair use” of copyrighted works. The public may use any copyrighted work in a reasonable way under the circumstances without the consent of the copyright owner if it would advance the public interest. Such use of a copyrighted work is called a “fair use.” The owner of a copyright cannot prevent others from making a fair use of the owner’s copyrighted work. For example, fair use may include use for criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.

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

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

1. The purpose and character of the use, including whether such use is of a commercial nature, for nonprofit educational purposes, and whether such work is transformative (meaning whether Google’s use added something new, with a further purpose or different character, altering the copied work with new expression, meaning, or message). Commercial use cuts against fair use while transformative use supports fair use;

2. The nature of the copyrighted work, including whether the work is creative (which cuts against fair use), functional (which supports fair use), or factual (which also supports fair use);

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole. The greater the quantity and quality of the work taken, the less that fair use applies; and

4. The effect of the use upon the potential market for or value of the copyrighted work. Impairment of the copyrighted work cuts against fair use.

All the factors should be weighed together to decide whether Google’s use was fair use or not. It is up to you to decide how much weight to give each factor but you must consider all factors. If you find that Google proved by a preponderance of the evidence that Google made a fair use of Oracle’s work, your verdict should be for Google on that question in the Special Verdict Form.

27.

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

28.

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


The relevant comparison is the copied portion contrasted to the work as a whole, as drawn from the copyrighted work, not contrasted to the accused infringer’s work as a whole. For example, if an infringing excerpt is copied from a book, it is not excused from infringement merely because the infringer includes the excerpt in a much larger work of its own.

29.

In your deliberations, you will need to make certain comparisons to the “work as a whole.” It is my job to isolate and identify for you the “work as a whole.” You must take my identification as controlling if and when this comes up in your deliberations. This issue arises when (1) comparing Oracle’s work and Android’s work for similarity under both substantial similarity and virtual identity standards, (2) deciding whether Google copied only a de minimis amount of Oracle’s work, and (3) evaluating the third factor of fair use: the amount and substantiality of the portion used in relation to the copyrighted work as a whole.

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

For purposes of this case, I have determined that the “work as a whole” means the following: For purposes of Question No. 1 in the Special Verdict Form, the “work as a whole” constitutes all of the compilable code associated with all of the 166 API packages (not just the 37) in the registered work. This excludes the virtual machine. Similarly, for the purposes of Question No. 2 in the Special Verdict Form, the “work as a whole” means the contents (including name, declaration and English-language comments) of the documentation for all of the 166 API packages (not just the 37) in the registered work. For purposes of Question No. 3, the “work as a whole” is the compilable code for the individual


file except for the last two files listed in Question No. 3, in which case the “work as a whole” is the compilable code and all the English-language comments in the same file.

30.

Unless you find fair use, de minimis, or non-infringement in Google’s favor, Google had no right to copy any elements of the Java platform protected by copyright unless it had a written license to do so from Sun or Oracle or had a written sub-license to do so from a third party who had a license from Sun or Oracle conferring the right to grant such sub-licenses. The burden would be on Google to prove it had any such express license or sublicense rights. But in this trial it makes no such contention. Put differently, if Google claims a license from a third party, Google has the burden to prove that the third party itself had the proper right and authority from Sun or Oracle as to any of the copyrights owned by Sun or Oracle and used by Google, for Google could acquire from the third party no greater right than the third party had in the first place. Similarly, if Google contends that Oracle or Sun had dedicated elements protected by copyright to the public domain for free and open use, the burden would be on Google to prove such a public dedication but the parties agree that there is no such issue for you to decide. Again, Google makes no such contention in this trial and this statement of the law regarding licenses is simply to put some of the evidence you heard in context.

31.

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

You will then discuss the case with your fellow jurors to reach agreement if you can do so. Your verdict as to each claim and as to damages, if any, must be unanimous. Each of you must decide the case for yourself, but you should do so


only after you have considered all of the evidence, discussed it fully with the other jurors, and listened to the views of your fellow jurors.

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

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

32.

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

33.

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

1. All of the exhibits received into evidence;

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

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

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

5. An official verdict form.

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


34.

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

35.

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

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

36.

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


37.

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

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

_______________________________
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE



1012-1

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

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

No. C 10-03561 WHA

SPECIAL VERDICT FORM

YOUR ANSWER MUST BE UNANIMOUS.

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

A. Has Oracle proven that Google has infringed the overall structure, sequence and organization of copyrighted works?

Yes __________ No __________

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

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

Yes __________ No __________


2. As to the documentation for the 37 Java API packages in question taken as a group:

A. Has Oracle proven that Google has infringed?

Yes __________ No __________

(IF YOU ANSWER “NO” TO QUESTION 2A, THEN SKIP TO QUESTION NO. 3.)

B. Has Google proven that its use of Oracle’s Java documentation constituted “fair use”?

Yes __________ No __________

3. Has Oracle proven that Google’s conceded use of the following was infringing, the only issue being whether such use was de minimis:

YesNo
A.The rangeCheck method in
TimSort.java and
ComparableTimSort.Java
______________
B.Source code in seven “Impl.java”
files and the one “ACL” file
______________
C.The English-language comments in
CodeSourceTest.java and
CollectionCertStoreParameters
Test.java
______________

2


4. Answer the following special interrogatories only if you answer “yes” to Question 1A.

A. Has Google proven that Sun and/or Oracle engaged in conduct Sun and/or Oracle knew or should have known would reasonably lead Google to believe that it would not need a license to use the structure, sequence, and organization of the copyrighted compilable code?

Yes __________ No __________

B. If so, has Google proven that it in fact reasonably relied on such conduct by Sun and/or Oracle in deciding to use the structure, sequence, and organization of the copyrighted compilable code without obtaining a license?

Yes __________ No __________

Your answer will be used by the judge with issues he must decide. These interrogatories do not bear on the issues you must decide on Questions 1 to 3.

Dated:

____________________________________
FOREPERSON

3



1013

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

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

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email address telephone fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. CV 10-03561 WHA

ORACLE AMERICA, INC.’S
OPPOSITION TO GOOGLE INC.’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: Honorable William H. Alsup


TABLE OF CONTENTS


Page
I.INTRODUCTION1
II.ARGUMENT1
A.Google’s Implementation Of The 37 Java API Packages In Android Is A
Derivative Work Of Oracle’s Specifications
1
B.The Names And Declarations Are Protectable As Part Of The Structure,
Sequence, And Organization Of The 37 Java API Packages
3
C.Google’s Literal Copying Is Not De Minimis7
1.The “Work As A Whole” Is The Individual File From Which The
Code Was Copied, Not The Entire J2SE Platform
8
2.Google’s Copying Of Eight Decompiled Files Was Not De Minimis8
3.Google’s Copying Of The RangeCheck Method Was Not
De Minimis
9
4.Google’s Copying Of Comments Was Not De Minimis10
D.The Android Documentation Infringes Oracle’s Copyrights11
1.The Evidence Shows That Android’s English-Language
Descriptions Were Copied From The Java API Specifications
11
2.Evidence Also Shows That Google Copied The SSO Of The Java
API Packages From Java Documentation Into Android
Documentation
14
E.Google Incorrectly Claims That Oracle Failed To Prove The Contents Of
The Copyrighted Works
15
F.Google’s Challenge To Authorship Was Predicated On The Court’s
Acceptance Of The Copyrighted Works As “Collective Works” And Is
Now Moot
16
III.CONCLUSION17

i


TABLE OF AUTHORITIES


Page(s)
CASES
Am. Dental Ass’n v. Delta Dental Plans Ass’n
126 F.3d 977 (7th Cir. 1997)
14, 15
Apple Computer v. Microsoft Corp.,
35 F.3d 1435 (9th Cir. Cal. 1994)
12
Brocade Commc’ns Sys. v. A10 Networks, Inc.,
2011 U.S. Dist. LEXIS 91384 (N.D. Cal. Aug. 16, 2011)
10
CDN Inc. v. Kapes,
197 F.3d 1256 (9th Cir. 1999)
15
Dream Games of Ariz., Inc. v. PC Onsite,
561 F.3d 983 (9th Cir. 2009)
2
Jacobsen v. Katzer,
2009 U.S. Dist. LEXIS 115204 (N.D. Cal. Dec. 10, 2009)
15
Johnson Controls, Inc. v. Phoenix Control Sys., Inc.,
886 F.2d 1173 (9th Cir. 1989)
6
Lamps Plus, Inc. v. Seattle Lighting Fixture Co.,
345 F.3d 1140 (9th Cir. 2003)
4
Merch. Transaction Sys. v. Nelcela, Inc.,
2009 U.S. Dist. LEXIS 25663 (D. Ariz. Mar. 17, 2009)
4, 7
Micro Star v. Formgen, Inc.,
154 F.3d 1107 (9th Cir. 1998)
1
Mktg. Tech. Solutions, Inc. v. Medizine LLC,
2010 U.S. Dist. LEXIS 50027 (S.D.N.Y. Apr. 23, 2010)
8
Newton v. Diamond,
388 F.3d 1189 (9th Cir. 2004)
7, 8
Practice Mmgt. Info. Corp. v. Am. Med. Ass’n,
877 F. Supp. 1386 (C.D. Cal. 1994), aff’d in relevant part, 121 F.3d 516 (9th Cir. 1997)
15
Sega Enters. Ltd. v. Accolade, Inc.,
977 F.2d 1510 (9th Cir. 1992)
3
Szen Corp. v. Anderson,
2007 U.S. Dist. LEXIS 42716 (E.D. Wash. June 13, 2007)
10, 12

ii


United Fabrics International, Inc. v. C&J Wear, Inc.,
630 F.3d 1255 (9th Cir. 2011)
16
STATUTES
17 U.S.C.
§ 1012
§ 410(c)16

iii


I. INTRODUCTION

Google’s motion fails to establish that it is entitled to judgment as a matter of law on any of the issues on which it has moved. Google ignores evidence in the record that contradicts its claims, on which the jury can rely to find in Oracle’s favor. Google also misconstrues the law on key points, such as Oracle’s entitlement to copyright protection of a collection of names that are sufficiently numerous and original, like the names of the thousands of Java API elements at issue here.

Oracle addresses each of Google’s arguments below.

II. ARGUMENT

A. Google’s Implementation Of The 37 Java API Packages In Android Is
A Derivative Work Of Oracle’s Specifications
Google’s argument that the implementing source code in Android copies only unprotectable ideas from Oracle’s specifications misconstrues Oracle’s derivative works claim. The Android source code not only implements the functions specified in the English descriptions, it also incorporates the structure, sequence, and organization (“SSO”) of the 37 Java API packages as described in the documentation. By copying the SSO and implementing the prose descriptions of the Java API specifications from English text into Java-language code, Google has created a derivative work.

Oracle’s derivative works claim is well-supported by Ninth Circuit law. In Micro Star v. Formgen, Inc., 154 F.3d 1107, 1112 (9th Cir. 1998), the seller of new levels for a video game claimed it had not copied any protectable expression from the game’s creator because its level files “reference the source art library, but do not actually contain any art files themselves.” Id. at 1112. The Ninth Circuit disagreed, finding that “[i]n making this argument, Micro Star misconstrues the protected work. The work that Micro Star infringes is the D/N-3D story itself.” Id.

Similarly in the present case, Professor Mitchell testified that the narrative in the Oracle API specifications is reflected in the Android source code: “[T]he narrative is reflected in the source code because the source code is a program that in a sense carries out that narrative, does

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what the explanation requires for this method.” (RT at 1253:16-18 (Mitchell).) Google’s expert, Dr. Astrachan, acknowledged that the Android source code was “based on the specification.” (RT at 2219:7-18 (Astrachan).) That admission tracks the very definition of a “derivative work” in the Copyright Act: “A ‘derivative work’ is a work based upon one or more preexisting works . . . .” 17 U.S.C. § 101. By copying both the SSO and implementing the described functions, Google has created a work derived from the 37 Java API package documentation.

Oracle’s position on this claim has been consistent. See, e.g., ECF No. 396, Oracle Opp’n to Opp’n to Google MSJ at 6:

Android’s Source Code Is Derived From The Copied API Specifications. Google also implemented the copied API specifications into Android source code. Google tries to downplay the significance of this, acknowledging only that it copied the “names of packages and methods and definitions.” (Google Mot. at 16:15-17.) In fact, Google copied the entire hierarchical and organizational structure of the APIs into the Android source code.
Even if Google were correct that the steps a single method description requires—like isolated plot elements—are an uncopyrightable idea, Google implemented Oracle’s descriptions thousands of times in the same structure, sequence, and organization in which Oracle wrote them. “[A] claim of copyright infringement can be based on infringement of a combination of unprotected elements.” Dream Games of Ariz., Inc. v. PC Onsite, 561 F.3d 983, 988 (9th Cir. 2009). Oracle has presented substantial evidence that Google derived the structure, sequence, and organization, as well as the meaning, of the code for the Android core libraries from Oracle’s API specifications. Google’s expert Professor Astrachan testified that corresponding elements in Java and Android APIs are structured, sequenced, and organized in the same way:

Q. It has to be in the same position in the application programming interface structure, sequence and organization, correct?

A. That is correct.

(RT at 2215:24-2216:2 (Astrachan).) He further testified that the method declarations in the Android code are like the detailed headings in an outline:

Q. And the method declarations are like the sub-sub-sub-chapter headings in this structure, sequence and organization; correct, sir?

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A. I think that's one analogy that’s reasonable.
(RT at 2215:2-5 (Astrachan).) Google copied Oracle’s detailed outline into the Android code.

Google’s argument regarding functional requirements for compatibility fails for two reasons. First, Google gets the compatibility argument in Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992) wrong. The question there was whether a party needed to copy to achieve compatibility. In Sega, the only way for defendant’s programs to run was to copy the manufacturer’s functional interface. See, e.g., Sega, 977 F.2d at 1515 (need to input four letter initialization code). Here, Google could have used the Java language without copying Oracle’s APIs. (RT at 2212:19-2213:16 (Astrachan).) With the exception of a very few classes, the Java APIs are not required to use Java at all. (RT at 684:16-685:2 (Reinhold).) Google could have written its own APIs that provided similar functionality, as Professor Astrachan testified: “it would be possible to provide an API that performed similar functionality; not maybe exactly the same but similar.” (RT at 2213:8-10 (Astrachan).) Google chose to derive its libraries from Oracle’s API specifications instead.

Second, Android is not, in fact, compatible with Java. (See TX 383 at 8 (“Q49. Is Android Java compatible? / A. No.”). As Google engineer Dan Bornstein testified, Google did not even attempt full compatibility with the Java platform:

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.

(RT at 1783:15-22 (Bornstein).) True compatibility with Java would have required Google to incorporate all of the Java API packages, not just some. (RT at 374:4-24 (Kurian).) Accordingly, Google cannot use compatibility to excuse its copying of a select set of Java API packages into Android.

B. The Names And Declarations Are Protectable As Part Of The
Structure, Sequence, And Organization Of The 37 Java API Packages
Google moves for judgment as a matter of law that its use of both the names and declarations from the 37 Java API packages is not copyright infringement. Based on the Court’s

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prior ruling that individual names are not protectable under the “words and short phrases” doctrine, Google seeks to extend that to declarations as well. Google’s motion should be denied for at least three reasons.

First, as explained in Oracle’s comments regarding the Court’s proposed jury instructions (ECF No. 997 at 4-6) and discussed at the April 27, 2012 charging conference, while individual names and short phrases (including short declarations) are not protectable on a stand-alone basis, they are protectable as part of the structure, sequence, and organization (“SSO”) of the 37 API packages. (RT at 2380:14-2381:25.) Oracle is not claiming that Google infringed its copyrights by copying any single name or declaration, but by copying the SSO of the 37 Java API packages which includes the names and declarations. On this point, the Court indicated that it would give the following jury instruction:

While individual names are not protectable on a stand-alone basis, names must necessarily be used as part of the SSO, and are to that extent protected by copyright.
This instruction accurately tracks Oracle’s copyright infringement claim and properly recites the law on “words and short phrases.” (See ECF No. 433 at 7-8 (Court’s prior ruling that “[c]opyright protection for the selection and arrangement of elements within a work is a separate question from whether the elements themselves are protected by copyright”).) Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1147 (9th Cir. 2003) (“a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship”); Merch. Transaction Sys. v. Nelcela, Inc., No. CV 02-1954-PHXMHM, 2009 U.S. Dist. LEXIS 25663, at *49 (D. Ariz. Mar. 17, 2009) (“the Court cannot conclude that no reasonable juror could not find creativity in the selection and arrangement of the Lexcel software’s field names, let alone the remaining allegedly similar non-literal elements of the Lexcel software, sufficient to render the compilation original enough for protection”).

As the Court recognized at the charging conference, the SSO of the 37 API packages is manifested in a hierarchy of named packages, classes, methods, interfaces, and fields. (RT at 2381:9-12 (“The Court: You’ve got to use symbols in order to have an SSO. It won’t work

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otherwise.”).) The SSO also includes the method and class declarations defining those elements. (RT at 604:16-606:4 (Reinhold).) As illustrated below, the named elements and declarations express the SSO. By asking the Court to rule that the declarations are unprotectable, Google is trying to get an indirect ruling that the SSO is unprotectable as well. Compare the following hierarchy from the “java.nio.channels” package –

java.nio.channels

- Object
- Channels
Method: newInputStream
Declaration: public static InputStream newInputStream (ReadableByteChannel ch)
- FileLock
- Pipe
- SelectionKey
- Selector
- AbstractInterruptibleChannel

- FileChannel
- SelectableChannel
- AbstractSelectableChannel
- DatagramChannel
- ServerSocketChannel
- SocketChannel

– to the same hierarchy with the named elements and declarations removed:
____.___.________
- Object
- ________
Method: ______________
Declaration: __________________________________
_____________________
- ________
- ____
- ____________
- ________
- ____________________________
- ___________
- _________________
- ________________________
- _______________
- ___________________
- _____________

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(RT at 594:2-596:22 (Reinhold); TX 1046 at slides 9, 14, 15 (pp. 11, 16, 17 of 24).)

Second, while short declarations for methods or classes may not be protectable on a standalone basis, not all of the declarations within the 37 API packages are short. Google points to the simple declaration from the “max” method that Dr. Bloch discussed in his testimony (e.g., “public static int max (int arg1, int arg2)”). (RT at 786:1-787:8 (Bloch).) Many other method and class declarations within the 37 API packages are far longer and more complex. Below are some exemplary longer declarations from the source code:

  • In java.security.cert.Certificate (method declaration):

    public abstract void verify(PublicKey key, String sigProvider)
    throws CertificateException, NoSuchAlgorithmException,
    InvalidKeyException, NoSuchProviderException,
    SignatureException;

  • In java.net.Authenticator (method declaration):

    public static PasswordAuthentication requestPasswordAuthentication(

    String host,
    InetAddress addr,
    int port,
    String protocol,
    String prompt,
    String scheme,
    URL url,
    RequestorType reqType) { ...
  • In java.nio.channels (class declaration):

    public abstract class DatagramChannel
    extends AbstractSelectableChannel
    implements ByteChannel, ScatteringByteChannel, GatheringByteChannel {

(TX 623.) Any one of these declarations is long enough that it may be copyrightable on its own. See Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir. 1989) (“Source and object code, the literal components of a program, are consistently held protected by a copyright on the program”). Oracle is not asserting infringement based on Google’s copying of

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these declarations alone, but based on copying of the SSO of the 37 Java API packages, inclusive of these declarations. However, there is no legal basis for finding that declarations in general, some of which are quite long, are not protectable.

Finally, Google’s argument that the declarations “must remain exactly the same in order to ensure compatibility with Java programs calling on those 37 API packages” is a red herring. Google chose to take the 37 Java API packages because it believed they were the most appropriate for the Android mobile platform. (RT at 1783:23-1785:6 (Bornstein).) Google did not have to take all elements of the 37 packages – Google could have designed its own APIs. (RT at 2212:25-2213:10 (Astrachan).) It chose not to take the time and incur the expense of doing so. The fact that the declarations, once incorporated in the Android platform, must remain the same to ensure that Android applications will run does not excuse Google’s decision to take the API packages in the first instance without a license. Moreover, because Google chose to take only a subset of the full group of Java API packages, Android is actually incompatible with Java, damaging Java’s “write once / run anywhere” promise. (RT at 1007:6-11 (Morrill); 1331:16- 1332:2, 2287:23-2288:5 (Mitchell).).

For these reasons, Google’s request for a judgment that the declarations are uncopyrightable as “short phrases” should be denied.

C. Google’s Literal Copying Is Not De Minimis
Google bears the burden of showing that the code it copied was de minimis as compared to the “work as a whole.” See Merch. Transaction Sys., Inc. v. Nelcela, Inc., 2009 U.S. Dist. LEXIS 25663, at *61 (“Thus, Nelcela will not escape liability unless it can show that the protectable elements in the Lexcel software constitute an insignificant (quantitatively and qualitatively) portion or aspect of the Lexcel software.”). But regardless of who bears the burden, Google is not entitled to judgment as a matter of law because Google’s literal copying of Oracle code and comments was not de minimis.

“[A] use is de minimis only if the average audience would not recognize the appropriation.” Newton v. Diamond, 388 F.3d 1189, 1193 (9th Cir. 2004). The extent of the copying “is measured by considering the qualitative and quantitative significance of the copied

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portion in relation to the plaintiff’s work as a whole.” Id. at 1195. Therefore, even if the copied material is a “quantitatively very small part” of the work as a whole, “[t]he smallness alone is not enough by itself to avoid liability.” Mktg. Tech. Solutions, Inc. v. Medizine LLC, No. 09 Civ. 8122 (LMM), 2010 U.S. Dist. LEXIS 50027, at *9 (S.D.N.Y. Apr. 23, 2010).

Google’s argument depends on comparing the copied contents from each file to the J2SE platform in its entirety. Such a frame of reference would allow plagiarists to copy entire computer files, as Google did here, and escape liability simply by claiming what they copied came from a large body of code. The Court has already rejected this argument and has stated in its proposed instructions that the “work as a whole” is the individual file from which the code was copied. During trial, Professor Mitchell testified that Google literally copied qualitatively and/or quantitatively significant portions of the copyrighted works. Google presented little evidence to rebut this testimony. In fact, Google’s copyright expert, Dr. Astrachan, provided no testimony about the literally copied files. As a result, a reasonable jury could find that Google’s copying was not de minimis.

1. The “Work As A Whole” Is The Individual File From Which
The Code Was Copied, Not The Entire J2SE Platform.
Google argues that its code copying should be compared to the entire Java platform because Oracle registered it as a single work. The Court rejected this argument at the charging conference and stated that it would instruct the jury to compare the compilable code Google literally copied to the compilable code in the computer file from which it was copied. (RT at 2416:10-2418:17.)

2. Google’s Copying Of Eight Decompiled Files Was Not De
Minimis.
Professor Mitchell explained that Google decompiled eight Java files and copied the decompiled source code into certain Android files. (RT at 1258:7-1259:15 (Mitchell).) He presented a side-by-side comparison between a decompiled version of Oracle’s PolicyNodeImpl.class file (TX 896.1) and Android’s PolicyNodeImpl.java file (TX 1031). (RT at 1259:16-25 (Mitchell).) He also confirmed that Android contains decompiled versions of Oracle’s PolicyNodeImpl.class, AclEntryImpl.class, AclImpl.class, GroupImpl.class,

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PermissionImpl.class, PrincipalImpl.class, AclEnumeratorImpl.class. (RT at 1259:16-25; 1260:5- 18.)

Once put into the proper frame of reference for comparison (file-to-file), it is clear that Google’s copying of the eight decompiled files was not de minimis. Google copied each entire file, so by definition, the copied code is both quantitatively and qualitatively significant to the file it came from. No reasonable jury could find otherwise.

Google did not challenge this testimony at the trial. Although Oracle was not required to prove anything further, the decompiled code is also qualitatively significant beyond its significance to the file. The eight Oracle files concern the security governing access to files in a network. Dr. Mitchell testified that “They have to do with access control lists, which are a standard mechanism in computer security to govern access to a file or a network or other resource.” (RT 1329:22-1330:5.) Google did not challenge this testimony. While Google has claimed in the past that these files were simply “test files” for Google, Google did not present evidence at trial that these were test files except to note that the file paths for these files contain the word “test.” (RT 1319:1-3.) Dr. Mitchell testified that they are not test files as used by Oracle. (RT 1330:6-11.) In addition, the possibility that the corresponding Android files might be test files in no way decreases their value. Companies invest significant time and money into testing because it is important to ship their devices bug-free and thus these test files could have had a “big value” for Google as well. (RT 1330:6-1331:5.)

3. Google’s Copying Of The RangeCheck Method Was Not
De Minimis.
Professor Mitchell testified that the rangeCheck method is qualitatively significant and “useful” to Android. (RT at 1316:17-19.) He explained that the rangeCheck method operates on Android devices, including on Samsung phones. (RT at 1255:22-25, 1264:19-23 (Mitchell).) To determine how useful the rangeCheck method is on devices, Professor Mitchell experimented with an Android device and found that it called the rangeCheck method no less than 2,600 times during start up:

Q. Did you conduct an analysis of the significance of rangeCheck to other code in the same class file?

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A. Yes.

Q. What did you conclude?

A. I found a number of other source code in other files that called that function. And, also, I did an experiment with the phone source code instrumented, and counted the number of times that rangeCheck was called in starting up the phone. And I found that it's called 2600 times just in powering on the device or starting the emulator.

(RT 1329:9-21.) Google did not present any testimony to rebut this.

Google selectively quotes from Professor Mitchell’s testimony to try to trivialize the rangeCheck method. (ECF No. 984 at 5 (“Dr. Mitchell conceded that ‘a good high school programmer’ could write rangeCheck.”).) But Professor Mitchell actually testified that “a good high school programmer or graduate student, if told exactly what was needed, could write the code.” (RT at 1316:24-25 (emphasis added).) The “code has some subtlety” and “the interesting part is figuring out exactly what you wanted the function to do, more than realizing that function in Java code once that’s understood.” (RT at 1317:1-5.) The method might seem “[v]ery, very simple” to Dr. Bloch, who originally wrote the code while he was working at Sun, but other programmers might not find the method so simple to write. (RT 815:13-16; see also 755:6-8.)

4. Google’s Copying Of Comments Was Not De Minimis
Professor Mitchell compared Oracle’s CodeSource.java file (TX 623.9) against Android’s CodeSourceTest.java file (TX 1039) and concluded that except for some HTML commands, certain English-language comments are “syntactically . . . identical.” (RT 1262:13-1263:4.) He also testified that Android’s CollectionCertStoreParametersTest.java (TX 1040) contained the “same kind of comment copying” from Oracle’s CollectionCertStoreParameters.java (TX 623.10). (RT 1253:9-10.)

Comments in computer programs are protected from copying under copyright law because they are expressive. See, e.g., Brocade Commc’ns Sys. v. A10 Networks, Inc., No. 10-CV-03428- LHK, 2011 U.S. Dist. LEXIS 91384, at *7-8 (N.D. Cal. Aug. 16, 2011) (because comments are “the equivalent of explanatory asides, they are likely capable of being expressed in many different ways and therefore may be protectable expression”); Szen Corp. v. Anderson, No. CV-06-5073- FVS, 2007 U.S. Dist. LEXIS 42716, at *4 (E.D. Wash. June 13, 2007) (noting “the absence of precedent indicating that names and programmer comments in source code are not protected

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elements”). The literally copied comments are quantitatively significant. They amount to about 25% of Oracle’s CollectionCertStoreParameters.java file (31 lines out of 124 lines in the file). (TX 623.10.) They also amount to about 2.90% of Oracle’s CodeSource.java file (18 lines out of 621 lines in the file). (TX 623.9.) The literally copied comments are also qualitatively significant, because they “give some guidance to programmers reading source code” and help them understand the code. (RT at 1317:21-25).

Google presented no evidence to rebut the showing that the comments are both qualitatively and quantitatively significant in relation to the individual source code files, and is therefore not entitled to judgment as a matter of law.

D. The Android Documentation Infringes Oracle’s Copyrights
Google asks the court to dismiss Oracle’s allegations that the Android documentation copies both the English-language descriptions and the SSO from Oracle’s Java documentation. As Oracle has presented substantial evidence showing both types of copying in Android documentation, judgment as a matter of law is unwarranted.

1. The Evidence Shows That Android’s English-Language
Descriptions Were Copied From The Java API Specifications.
Google suggests that Oracle’s evidence of English-description copying is limited to three examples. Not so. Android developer Bob Lee testified regarding three examples shown to him, but he acknowledged that the same level of similarity shown in those examples exists across the complete documentation for the 37 Java API packages within Android. (RT at 1175:25-1176:3 (Lee).) Mr. Lee admitted that the English-descriptions in Android were re-written from Sun’s documentation and were therefore “substantially similar.” (RT at 1191:4-13.) Indeed, he even expressed regret that such re-writing had occurred:

I actually wasn't even a big fan of including these. I would have preferred that we just point people to Sun’s site for this specific documentation because you shouldn't really be rewriting a contract. And in doing so they are going to be substantially similar.

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(Id.) Mr. Lee’s testimony alone is sufficient evidentiary basis for the jury to conclude that Google had substantially copied the English-descriptions into the Android documentation.

The full Android and Java documentation were admitted into the record, so the jury will be able to compare the two. (TX 610.2, 767.) Dr. Mitchell testified to the process he used to compare the full set of specifications for both the Java and Android APIs:

Because the APIs in both cases are available on the web, it’s fairly straightforward to open two web browsers side by side and navigate through the two APIs and libraries simultaneously in the same way and compare the way one looks on the screen with the other.

By and large, that – they are really identical. They are displayed in different colors and so on. But the content is the same. You see the same classes in the same hierarchy in the same – in packages of the same name supporting the same interfaces and arranged in – in the same way.

(RT at 1244:17-1246:3 (Mitchell).) Contrary to Google’s suggestion, Professor Mitchell did not merely say that the two sets of documents expressed the same idea – he testified that he compared “the way one looks on the screen with the other” and concluded they are largely identical. (Id.) Professor Mitchell further testified: “I don't think there’s any way that a separate team could have come up with so many things that are identical except by copying the original API. There are just thousands of things that match and I don’t see how that could have happened in any other way than by copying.” (RT 1249:18-25 (Mitchell).) This testimony, taken together with Mr. Lee’s testimony, supports Oracle’s position that the English-descriptions were copied.

With respect to the three specific examples used with Mr. Lee, Google argues that no reasonable jury could find these are substantially similar. But this is a factual question ideallysuited for jury determination. See Apple Computer v. Microsoft Corp., 35 F.3d 1435, 1446 (9th Cir. Cal. 1994). It requires no special legal or technical skill to compare the English-descriptions and determine if they are substantially similar. With Mr. Lee’s testimony that the Englishdescriptions in the Android documentation were re-written from the Java documentation, a reasonable jury could conclude that the descriptions were copied. The three specific examples are reproduced below (comparing TX 610.2 with TX 767):

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J2SE 5.0Android
This class provides the functionality of a cryptographic Cipher for encryption and decryption.

In order to create a Cipher object, the application calls the Cipher’s get-instance method, and passes the name of the requested transformation to it.

When requesting a block cipher in stream cipher mode (e.g., DES in CFB or OFB mode), the user may optionally specify the number of bits to be processed at a time, by appending this number to the mode name as shown in the "DES/CFB8/NoPadding" and "DES/OFB32/PKCS5Padding" transformations. If no such number is specified, a provider-specific default is used

This class provides access to implementations of cryptographic ciphers for encryption and decryption. Cipher classes can not be instantiated directly, one has to call the Cipher's getInstance method with the name of a requested transformation, optionally with a provider.

...

When a block cipher is requested in stream cipher mode, the number of bits to be processed at a time can be optionally specified by appending it to the mode name. e.g. "AES/CFB8/NoPadding". If no number is specified, a provider specific default value is used.

J2SE 5.0Android
A pair of channels that implements a unidirectional pipe.

A pipe consists of a pair of channels: A writable sink channel and a readable source channel. Once some bytes are written to the sink channel they can be read from source channel in exactly the order in which they were written.

A pipe contains two channels, forming a unidirectional pipe. One is the writable sink channel, and the other is the readable source channel. When bytes are written into the writable channel they can be read from the readable channel. Bytes are read in the order in which they were written.

J2SE 5.0Android
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.

Oracle has presented sufficient evidence for the jury to determine that the Englishdescriptions in the Android documentation were copied from the Java documentation. Accordingly, Google cannot be entitled to judgment as a matter of law on this issue.

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2. Evidence Also Shows That Google Copied The SSO Of The
Java API Packages From Java Documentation Into Android
Documentation
Google admits that the SSO of the 37 Java API packages as expressed in the Android documentation is identical to the SSO expressed in the Java documentation. (ECF 984 at 10.) Google argues that Oracle’s claim for SSO copying into the Android documentation should be dismissed because it purportedly overlaps with Oracle’s claim for SSO copying into the Android code. But Google is liable for copying the SSO into the Android documentation as well and Oracle is entitled to a judgment on that claim.

There is no question that Google has copied the SSO of the 37 Java API packages into the Android documentation. As explained by Dr. Reinhold, the structure expressed in the API documentation is the same as the structure within the compilable code because the code is run through the Java Documentation Extractor (or “Javadoc”) to pull out the structure and English language comments, and produce a webpage that reflects the same SSO of the API that is in the code. (RT at 606:14-608:3 (Reinhold); TX 1046 at p.19 of 24.) The Android documentation is created the same way from the Android code. (RT at 1169:8-15 (Lee agreeing that like Java documentation, Android documentation was “created by a tool that actually reads portions of the source code and then places it in a kind of template that’s available on the web as a source of documentation.”)) It is undisputed that the SSO of the 37 Java API packages is found, identically, in both the Java and Android code and documentation. (ECF 984 at 10 (Google’s JMOL motion: “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”).)

Regardless of whether the SSO is expressed in the compilable code or the API documentation, it is protectable expression in both cases. In Am. Dental Ass’n v. Delta Dental Plans Ass’n, Judge Easterbrook found that the structure of dental code which organized various dental procedures into a hierarchy represented in three formats – numerically, by short description, and by long description – was equally protectable regardless of which format was

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copied. 126 F.3d 977, 979, 980-981 (7th Cir. 1997) (“The long description is part of the copyrighted work, and original long descriptions make the work as a whole copyrightable. But we think that even the short description and the number are original works of authorship.”). The infringer copied “most of the numbering system and short descriptions from the ADA’s Code,” and the Court did not distinguish one format from the other. It explained that taxonomies, such as the West Key Number System and the dental code, are not “systems” and are protectable as expression. 126 F.3d at 978 (7th Cir. 1997) (noting that “[b]lueprints for large buildings (more committee work), instruction manuals for repairing automobiles, used car value guides, dictionaries, encyclopedias, maps” are protectable original expression). Analogously, if the SSO of the 37 Java API packages is protectable as expressed in source code, it is also protectable as expressed in the API documentation. Far less creative structures have been found subject to copyright protection in this Circuit. Courts in this Circuit have repeatedly extended copyright protection to structure expressed in written documentation. See, e.g., CDN Inc. v. Kapes, 197 F.3d 1256, 1262 (9th Cir. 1999) (prices in guide for collectible coins); Practice Mmgt. Info. Corp. v. Am. Med. Ass’n, 877 F. Supp. 1386, 1390-92 (C.D. Cal. 1994), aff’d in relevant part, 121 F.3d 516 (9th Cir. 1997) (numerical codes for medical procedures); Jacobsen v. Katzer, 2009 U.S. Dist. LEXIS 115204, at *9-10 (N.D. Cal. Dec. 10, 2009) (text files reflecting decoder information from model railroad manufacturers).

The evidence shows that Google copied the SSO of the 37 Java API packages into both the Android compilable code and documentation. Oracle is entitled to a judgment on both forms of copying. Google’s motion for judgment as a matter of law on this point should be denied.

E. Google Incorrectly Claims That Oracle Failed To Prove The Contents
Of The Copyrighted Works.
Google also raises the hyper-technical challenge that Oracle “has not offered any proof of the actual contents of the works that are the subject of its copyright registrations.” (ECF No. 984 at 10-11). Google’s challenge is baseless.

First, Oracle submitted the copyright registrations, which claim on their face to cover “Java 2 Standard Edition 1.4” and “Java 2 Standard Edition, Version 5.0” (TX 464, 475, 476),

15


and authenticated and submitted into evidence the full contents of both these versions of the platform. (TR 689:21-691:23, TX 622, 623.) Oracle is entitled to a presumption that the facts stated on the front of the copyright registration are correct. Section 410(c) of the Copyright Act provides that the certificate of registration “shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” 17 U.S.C. § 410(c). Google accordingly “has the burden of rebutting the facts set forth in the copyright certificate.” United Fabrics International, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 2011). Google has submitted no evidence whatsoever showing that the registrations cover anything other than what they purport to claim, or that the registered code differs from what was identified at trial.

Second, because Google insisted on pursuing this issue, Oracle submitted additional evidence of the content of the registrations. Chief Java Architect Mark Reinhold testified that the written source code deposit that accompanied the certified copy of the registration for J2 SE version 1.4 ― which he wrote ― does in fact correspond to the source code for J2 SE version 1.4. (TR 2233:18-2234:19, TX 3530). He similarly testified that the written source code deposit included with the certified copy of the registration for J2 SE version 5.0 represented part of the source code for version 5.0, and that the CD-ROM entered into evidence as Exhibit 1076 is a copy of the binary code for version 5.0 along with the documentation and other tools. (TR 2234:20-2238:19, TX 3529). The loop on Exhibit 1076 was closed when Oracle attorney Tiki Dare authenticated the transmittal letter and accompanying documentation that was transmitted to the Copyright Office along with Exhibit 1076 when registering version 5.0. (TR 2257:5-2267:2, TX 1077, 1078, 1081). Again, Google has not submitted any evidence showing that this evidence is incorrect, and certainly is not entitled to judgment as a matter of law.

F. Google’s Challenge To Authorship Was Predicated On The Court’s
Acceptance Of The Copyrighted Works As “Collective Works” And Is
Now Moot
Google’s motion argued that the copyrighted works should not be considered to be collective works and, as an alternative argument, raised a challenge to authorship in the event the works were deemed to be collective works:

16


In sum, if 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.
(ECF No. 984 at 12. See also id. at 11 (“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 constitutent elements.”)

Oracle has withdrawn the characterization of the registered works as “collective works,” in part in response to Google’s complaint. (See TR 2134:11-17, 2134:7-11). Accordingly this argument is now moot.

III. CONCLUSION

Google has not shown that it is entitled to judgment as a matter of law on any of the issues on which it has moved. For all the above reasons, Google’s motion should be denied.

Dated: April 29, 2012

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

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

Attorneys for Plaintiff ORACLE AMERICA, INC.

17


1015

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[email]
CHRISTA M. ANDERSON - # 184325
[email]
DANIEL PURCELL - # 191424
[email address telephone fax]

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

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

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

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. 3:10-cv-03561 WHA

GOOGLE’S OBJECTIONS TO FINAL
CHARGE TO THE JURY (PHASE ONE)
AND SPECIAL VERDICT FORM

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



I. INTRODUCTION

Google offers these further objections and comments on the Court’s Final Charge to the Jury (Phase One) and Special Verdict Form. See Dkts. 1012, 1012-1. Google also preserves all prior objections made to the jury instructions and verdict form, including but not limited to its objection to instructing the jury that Oracle’s works as a whole are anything smaller than the works it registered. See Dkt 996; RT 2332-244 (transcript of charging conference).

II. OBJECTIONS TO THE FINAL CHARGE

A. Instruction 17
Google understands that the Court has reserved the issue of whether the structure, sequence and organization of the elements of the 37 API packages are copyrightable, and that the Court is aware that Google argues that they are not. Google objects to the instruction to the jury that “the copyrights in question do cover the structure, sequence and organization of the compilable code,” because the jury should be instructed that the structure, sequence and organization of the elements of the 37 API packages is not copyrightable, for the reasons stated in Google’s prior filings on this subject. See Dkts. 260, 368, 562, 601, 778, 823, 831, 852, 860, 897, 898, 955, 993.

B. Instruction 25
Google requests that the Court change “virtual identity” in this instruction to “virtually identical,” for reasons of clarity. The Ninth Circuit case law uses the phrase “virtually identical” rather than “virtual identity” where necessary for proper grammar. See Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994) (“we conclude that only ‘thin’ protection, against virtually identical copying, is appropriate”).

Google also requests that the Court change “compare (del)to the works as awhole” to “compare to the works as a whole” (deleting “to” and adding “a”). The Ninth Circuit requires that the defendant’s work as a whole be compared to the plaintiff’s work as a whole. See, e.g., Apple, 35 F.3d at 1439 (Microsoft’s works as a whole had to be compared to Apple’s work as a whole); see also Dkt. 996 at 3:4-7.

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C. Instruction 26
Google objects to the lack of a fifth factor in the fair use instructions and the failure to indicate that the four specified factors are not exhaustive, for the reasons given in Google’s comments on the Court’s prior proposed charge to the jury, and at the charging conference. See Dkt. 996 at 1:16-27; RT 2410:5-8, 2410:21-2411:6, 2412:20-2413:21.

D. Instruction 30
At the charging conference, Google agreed that there was no jury issue regarding public dedication, although there is an issue for the Court on this issue. See RT 2425:9-2426:15. At that time, however, the proposed verdict form did not include a question regarding Google’s equitable defenses. See Dkt. 994-1. The sentence regarding public dedication was also not followed, at the time, by the next sentence in the final charge that refers to Google’s contentions.

Because the verdict form now does include a question regarding Google’s equitable defenses, see Dkt. 1012-1 at 3 (Question 4), there now is a jury issue regarding public dedication. Namely, because Sun dedicated the Java language, including the APIs, to the public, Sun engaged in conduct that it knew or should have known would reasonably lead Google to believe that it would not need a license to use the structure, sequence and organization of the APIs at issue. Google therefore objects to the two clauses on lines 18-20 of Instruction 30 in the final charge that state, “but the parties agree that there is no such issue for you to decide. Again, Google makes no such contention in this trial . . . .” Dkt. 1012:18-20. Google requests that these two clauses be deleted. The first is incorrect, because the jury is now being asked to decide, on an advisory basis, an equitable question that relates to the issue of public dedication. The second is incorrect because Google does make such a contention in this trial, although Google’s contention relates to issues that are for the Court to decide.

Google also renews its objections to this entire instruction. See RT 2418:18-23, 2419:16- 2422:25, 2423:14-2424:7.

2


III. ERRORS IN THE FINAL CHARGE AND VERDICT FORM

A. Instruction 26
At the charging conference, Google requested that “The public” be changed to “Anyone,” and the Court agreed to this change, without any objection from Oracle. See RT 2407:9-12. The final charge does not reflect this change. Google renews its request that “The public” be changed to “Anyone” in Instruction 26.

B. Page numbers in the Final Charge
The final charge does not have page numbers.

C. Introduction to the Verdict Form
The Court may want to change the first line of the verdict form so that it states that the jury’s “answers” must be unanimous.

D. Question 3 in the Verdict Form
The jury could misread Question 3, and conclude that an answer of “Yes” means “yes, the use was de minimis.” Google requests that the Court add a parenthetical, below the “Yes” on this question, stating, “(infringing),” and that a similar parenthetical, stating “(not infringing)” be added below the “No” on this question.

E. Question 4 in the Verdict Form
For clarity, Google requests that on line 15 of Question 4, that the phrase “Your answer will be used . . .” be changed to “Your answers to Questions 4A and 4B” in order to ensure that the jury understands that only Question 4 relates to an issue to be decided by the Court. For the same reason, Google requests that the phrase “These interrogatories” at the start of the second sentence of that same paragraph, starting on line 15, be changed to “Questions 4A and 4B.”

Dated: April 29, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

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