The judge presiding over Oracle v. Google, the Hon. William Alsup, has told the parties they can respond to a list of questions he has, now that he's read yesterday's decision by the EU Court of Justice that found APIs not copyrightable expression. They are to respond by noon on May 10 if they wish to add to their previous briefs on the topic. Then they have until May 14 to respond to the other side's brief.
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Update 2, Update 3]
Here are the questions:
05/03/2012 - 1056 - ORDER
GRANTING MOTION TO SEAL (Dkt. No. 1039) by Hon. William Alsup
[granting 1039 Administrative Motion to File Under Seal].(whasec,
COURT STAFF) (Filed on 5/3/2012) (Entered: 05/03/2012)
05/03/2012 - 1057 -
REQUEST FOR FURTHER PHASE ONE BRIEFING RE COPYRIGHTABILITY OF SSO
(briefing due noon 5/10/2012; replies due noon 5/14/2012). Signed by
Judge William Alsup on 5/3/2012. (whasec, COURT STAFF) (Filed on
5/3/2012) (Entered: 05/03/2012)
1. If the Copyright Act is meant to protect expression but not
vocabulary, should the vocabulary and grammar of a computer language be copyrightable, as distinct from programs written in the language? In this regard, please comment on the May 2, 2012, decision of the High Court of the European Union. Of course both sides will supplement, given this opportunity. Litigators like to argue.
2. If each API method is a program — pre-packaged but nonetheless a program — did Google copy anything more than the name and the declaration (substituting its own implementation)?
3. If the format of the name is dictated by the Java programming rules, then is the form of “java.package.class.method” required by the syntax of the language itself?
4. Could Google have come up with different names and SSO yet still have provided the same functionality as in Android? Android users would have had to learn a new vocabulary and a new outline but the methods would all still have been resident in such a modified Android. True? Is this what the UK company Spring did?
5. Is the input-output (i.e., argument and return) scheme of a method copyrightable? For example, can someone copyright the function of inputting an angle and outputting the cosine of that angle? If someone has a copyright on a particular program to find cosines, does that copyright cover all other implementations that perform the identical function (input = angle, output = cosine)?
6. Is it agreed that the following is true, at least as of 1996?
The following were the core Java Application Programming Interface: java.lang, java.util and java.io.
7. Does the Java programming language refer to or require any method, class or package outside the above three?
8. To what extent do subparts of the above three Java packages refer to any other Java packages or subpart of other packages (meaning outside the three)? To the extent this occurs, should those outside subparts be deemed to be “core” to the programming language?
9. What cross-method, cross-class interdependencies exist at the implementation level in Java? Were any of these duplicated in the Android implementations? (The judge remembers no evidence on this point.)
10. In Java, what interdependencies exist at the name/declaration level other than the inherited characteristics from the super class, interfaces, same class, etc.? Please explain.
11. With respect to the Seventh Circuit decision in American Dental Association:
(A) To what extent has it been adopted in the Ninth Circuit?
12. With respect to the Ninth Circuit’s decision in Kapes:
(B) If the taxonomy in that decision was protectable, why shouldn’t Sun’s hierarchical outline of packages, classes, methods for the 37 API packages be protectable (other than perhaps the three core packages?
(C) Did ADA hold that the numbering system alone (apart from the description) was copyrightable?
(A) Kapes stated “Whether CDN’s selection and arrangement of the price lists is sufficiently original to merit protection is not at issue.” 197 F.3d at 1256. If that was not issue, what, if anything, did Kapes expressly say about SSO?
13. When discussing use of the SSO in the 37 API packages in
Android to achieve “compatibility,” what exactly are the parties referring to? Is it “compatibility” with programmers who write in the Java programming language? Or compatibility with pre-existing programs? If so, approximately what percent of pre-existing programs written for the Java platform are compatible with Android? Is it compatibility with the TCK? Or Java virtual machine? Or java compiler?
(B) In what sense were the “prices CDN creates” in Kapes a “compilation” within the meaning of the Copyright Act (see 197 F.3d at 1260, second col.).
(C) Didn’t Kapes treat the coin prices as “compilations”? Please explain how this was done. Has Oracle abandoned the compilation argument herein?
(D) Was originality the only issue decided in Kapes?
I have a question for you Java guys. What would you answer to questions 6 through 8 particularly? I don't know about 1996, the year he asked about in question 6, but take a look at Oracle's OpenJDK page, about the Java core libraries, where I see the three APIs the judge mentioned, but are there more listed there? And does anyone have a definitive list of core Java APIs?
Feel free to answer any of the judge's questions, by the way, in your comments. Both the judge and I seem to be sharing the same struggle, trying to make sure we understand.
Update 2: After reading your comments, I think the partial answer to question 4 would be: if you don't speak French, and the waiters in a French restaurant don't speak English, will you still be able to order? You can try, but you might not get what you expected. Also, is there a company called Spring in the UK? Can anybody find it to confirm what Ellison said? Can anybody find such a company? If so, post a url for us, will you? Note this comment by Groklaw member bugstomper, which prompts my question. And also
note this one by Jimbob0i0 on the day Ellison was on the stand. Also an anonymous
comment provided a link to an example from the official SpringSource github repository that shows Java APIs being used. So the answer to the judge's question, if we have found the right company, would be, No, that is not what "Spring" did. And Ellison himself said you need the Sun APIs to run the Java language, according to our reporter's notes.
Update 3: “To hold that an idea, plan, method or art described in a copyright[ed work] is open to the public but that it can be used only by the employment of different words and phrases which mean the same thing, borders on the preposterous." - Crume v. Pac. Mut. Life Ins.Co., 140 F.2d 182, 184–85 (7th Cir. 1944), taken from footnote 127, page 19 Why Copyright Law Excludes Systems and Processes from the Scope of Its Protection [PDF] by Pamela Samuelson.
Kapes is referring to CDN Inc. v. Kapes. American Dental Association is a reference to this case, American Dental Association v. Delta Dental Plans.
What stands out to me in Kapes is the rest of the paragraph he quotes, and I'll highlight the part that seems to me to matter most:
 Appellant's attempt to equate the phone number listings in Feist with CDN's price lists does not withstand close scrutiny. First, Kapes conflates two separate arguments: (1) that the listing, selection, and inclusion of prices is not original enough to merit protection; and (2) that the prices themselves are not original creations. Whether CDN's selection and arrangement of the price lists is sufficiently original to merit protection is not at issue here. CDN does not allege that Kapes copied the entire lists, as the alleged infringer had in Feist. Rather, the issue in this case is whether the prices themselves are sufficiently original as compilations to sustain a copyright. Thus Kapes' argument that the selection is obvious or dictated by industry standards is irrelevant. Oracle, in contrast, is arguing that the structure, sequence and arrangement of the APIs is copyrightable. So Kapes doesn't seem to me to be about SSO. The only issue I see in Kapes was whether it took a lot of creativity to come up with prices. The judge said it was enough creativity to be copyrighted. It has nothing to do with the SSO, not that I can see, but I'm not a lawyer. We'll see what they lawyers say in their briefs.
As for the ADA case, it seems to indicate that the judge still doesn't understand that while you can copyright and protect items in a book or a manual without destroying an entire field, if you do identical protection with computers, you can disrupt and destroy software development as it's normally practiced. That's why the copyright rules for software are not identical to the rules for books. They really can't be, if you want it to work. Here's a paragraph from ADA to show you what I mean:
So too with a taxonomy-of butterflies, legal citations, or dental procedures. Facts do not supply their own principles of organization. Classification is a creative endeavor. Butterflies may be grouped by their color, or the shape of their wings, or their feeding or breeding habits, or their habitats, or the attributes of their caterpillars, or the sequence of their dna; each scheme of classification could be expressed in multiple ways. Dental procedures could be classified by complexity, or by the tools necessary to perform them, or by the parts of the mouth involved, or by the anesthesia employed, or in any of a dozen different ways. The Code's descriptions don't “merge with the facts” any more than a scientific description of butterfly attributes is part of a butterfly. Cf. Nash v. CBS, Inc., 899 F.2d 1537 (7th Cir.1990) (discussing the fact-expression dichotomy). There can be multiple, and equally original, biographies of the same person's life, and multiple original taxonomies of a field of knowledge. Creativity marks the expression even after the fundamental scheme has been devised. This is clear enough for the long description of each procedure in the ada's Code. 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. But that sentence, "Facts do not supply their own principles of organization" isn't so true of software. It has to run. It's not like a book that you merely read with your eyes. The computer has to *do* something with the APIs, not just sit in an easy chair and read them. You can't separate that unique quality of software out. It's core. And that's where this part of ADA seems to come in:
Descriptions of how to build or do something do not facilitate monopoly of the subject-matter being described, so the concern of Baker is not activated. Again consider blueprints: other architects can imitate the style of the completed building; they just can't copy the plans. What is more, a form that contains instructions for its completion is copyrightable in part (the instructions) and in the public domain in part (the lines and boxes). Edwin K. Williams & Co. v. Edwin K. Williams & Co. East, 542 F.2d 1053, 1061 (9th Cir.1976); Goldstein at § 2.15.1.b. So far as the ada is concerned, any dentist, any insurer, anyone at all, may devise and use forms into which the Code's descriptions may be entered. The ada encourages this use; standardization of language promotes interchange among professionals. (The fact that Delta used most of the Code but made modifications is the reason ada objects, for variations salted through a convention impede communication.) Section 102(b) precludes the ada from suing, for copyright infringement, a dentist whose office files record treatments using the Code's nomenclature. No field of practice has been or can be monopolized, given this constraint. But that is precisely what copyrighting APIs will achieve, a monopoly on computer languages, because without the APIs, as one witness told the court in Oracle v. Google, Java is blind and deaf. It can't be used for much, if anything. Even "Hello World" requires APIs. The EU Opinion
recognized this very real danger:
57. To accept that a functionality of a computer program can be protected as such would amount to making it possible to monopolise ideas, to the detriment of technological progress and industrial development.
Update: The jury, according to the tweeting journalists in the courthouse, have been sent home for the day, without reaching a verdict, and with one juror, not the foreperson, sending a note to the judge with a what-if question -- what if they can't reach an unanimous decision? But note this tweet from Caleb Garling:
Mike Jacobs of Oracle just had a nice long talk with the press
Hmm. Equal time? More details on the day from AFP,
Bryan Bishop at Verge, Wired's Caleb Garling, and Timothy B. Lee at ars technica.
Since everyone is discussing what to do if the jury can't reach a unanimous decision, here's my suggestion: have the judge decide whether or not APIs and their arrangement can be copyrighted. If not, that would clear the decks wonderfully for the poor jury. Keep in mind that even without adopting my suggestion,
the copyright *liability* issues are settled when the jury returns its
determinations. The judge still has to sift through and rule on the
issues of law, and those may yet be the deciding factor. My suggestion is just to reverse the order in which those things are done.