One of the more humorous filings is Oracle's motion to preclude Google from disputing the ownership of the copyrights in Java on which it is basing its infringement claims. (1098 [PDF; Text]) Oracle protests that Google is raising this issue to late in the trial, that Google has stipulated to Oracle's ownership of the copyrights, and that Google has known all along that the registered works included some third-party works.

What is fascinating about all of this is how, in Oracle's view, this is Google playing fast and loose. Who filed the copyright registrations? It wasn't Google. Who, when filing those registrations failed to denote the works as either compilations or collective works? Bingo, that would be Oracle. So what Oracle did was file an application for registration with the U.S. Copyright Office that appears to have claimed ownership only of the work in its entirety because they clearly didn't own the copyright in all of the component parts. How is that Google's fault?

Well, says Oracle, Google should have raised this issue earlier in the proceedings! Why, one would ask, should Google have done that? Would it have been so Oracle could once again, for the umpteenth time, change its theory of infringement and paper over the fact that they had a problem with their copyright registrations? Google had no obligation to raise that issue until Oracle put on its evidence by submitting the copyright registrations. Oracle already knew at that point that the supporting documentation for those registrations (the DVD supposedly containing a full copy of what was claimed in the statement) was missing.

Oracle says Google is trying to raise a new defense. If it is a new defense, it is one that says, "Hey, Oracle, how about producing evidence to support your claims." As Google says (1107 [PDF; Text]):

Oracle confuses “ownership” of the copyrights at issue with the legal question of the scope of Oracle’s rights.

...

Oracle’s theory of copyright infringement has changed multiple times during this litigation. At different times, Oracle has characterized the works in which it claims copyrights as “collective works,” as “compilations,” as “derivative works,” or as free-standing works that are part of the larger wholes that are the subject of its registrations. Oracle has also characterized its claims based on the API packages as being claims of infringement of the “selection, arrangement and structure” of the packages (Oracle Statement of Copyright Issues, Dkt. 899) and the “structure, sequence and organization” of the packages (Oracle Proposed Findings and Conclusions, Dkt. 902)—and neither of those articulations was advanced in the proposed pretrial order. See Joint Proposed Pretrial Order, Dkt. 525.

Each of these characterizations has different consequences under the Copyright Act, and each imposes on Oracle different burdens with respect to what it needed to prove at trial. Selection, coordination, and arrangement are relevant to a copyright claim in a compilation, as defined in 17 USC § 101. That section sets forth the statutory basis for protection. Structure, sequence and organization, on the other hand, is a judicially created theory of infringement of computer programs. Regardless of the theory Oracle is advancing, however, Oracle needed to prove the contents of the complete works that are the subject of its registrations and its ownership of any individual portions of those works on which it chose to base its infringement allegations.

Google has made plain multiple times that Google does not contest Oracle’s ownership of the copyrights on which Oracle is suing. E.g., RT 1665:3-8; RT 1884:10-13; RT 1887:6-8. That acknowledgement, however, does not dispose of the issue of the scope of those copyrights, nor does it relieve Oracle of the need to prove (1) that it has ownership rights over the individual portions of the works it singled out for purposes of trying to prove its infringement claims, and (2) that Google’s copying of those portions (if proved) resulted in a material copying of the work as registered. These two issues are very different.

[t]he Court instructed the parties to provide numbered findings of fact, double-spaced, followed by single-spaced trial record cites supporting the proposed finding. Both parties followed this format. The Court also instructed each party to file a response to the other party’s proposed findings and conclusions. The Court ordered that the responses “should reproduce each original finding and conclusion, and then, immediately after each, supply the responsive information. It may not exceed twice the overall number of pages used by the submission to which it responds.”

... deleted all of Google’s record citations, excerpts, and case authority and converted Google’s proposed findings and conclusions to single-spaced type. This reduced Google’s 35 pages of proposed findings and conclusions to 12 pages.

The parties continue to fire back and forth on their respective post-verdict motions with Oracle responding to Google's second motion for judgment as a matter of law (1093 [PDF; Text]) and Google responding to Oracle's Rule 50(A) motion (1092 [PDF; Text]). Needless to say, don't look for a lot of agreement between the parties in those filings.

Finally, we have Oracle's response to some of the questions the Court has been asking (we have not, yet, seen Google's response), in particular on how to proceed in light of the inability of the jury to reach a verdict on the issue of fair use. (1106 [PDF; Text]) Basically, Oracle is willing to keep on going with the judge deciding the fair use issue. To try and incentivize Google to accept this approach, Oracle agrees to abandon its claim for "infringer's profits" on rangeCheck and accept statutory damages. Why make that offer? Because Oracle is not certain it will, in fact, convince the court to grant "infringer's profits," so Oracle really isn't giving up that much.

Of course, to strengthen its position Oracle then spends the remainder of the filing talking about how clearly valuable and critical rangeCheck is to Android and why the burden for limiting an "infringer's profits" award is on Google. Lipstick on a pig.

***********

Docket

05/07/2012 - 1086 - STIPULATION AND ORDER REGARDING 104 PATENT by Hon. William Alsup granting 1075 Stipulation.(whalc1, COURT STAFF) (Filed on 5/7/2012) (Entered: 05/07/2012)

05/07/2012 - 1087 - REMINDER TO BRING COPIES OF COLOR HANDOUTS. Signed by Judge Alsup on May 7, 2012. (whalc1, COURT STAFF) (Filed on 5/7/2012) (Entered: 05/07/2012)

05/07/2012 - 1088 - FURTHER ITEM FOR TWENTY-PAGE BRIEFS DUE MAY 10 [re 1062 Order, 1057 Order]. Signed by Judge William Alsup on 5/7/2012. (whasec, COURT STAFF) (Filed on 5/7/2012) (Entered: 05/07/2012)

05/07/2012 - 1089 - JURY VERDICT - Phase One. (dt, COURT STAFF) (Filed on 5/7/2012) (Entered: 05/07/2012)

05/07/2012 - 1090 - Minute Entry: Jury Trial held on 5/7/2012 before William Alsup (Date Filed: 5/7/2012). Jury Deliberations Continued. Verdict read. Phase II - Plaintiff's Opening Statement. Further Jury Trial set for 5/8/2012 7:30 AM. (Court Reporter Kathy Sullivan; Debra Pas.) (dt, COURT STAFF) (Date Filed: 5/7/2012) (Entered: 05/07/2012)

05/07/2012 - 1091 - Witness List by Oracle America, Inc. ORACLE AMERICA, INC.'S ROLLING LIST OF NEXT TEN WITNESSES. (Muino, Daniel) (Filed on 5/7/2012) (Entered: 05/07/2012)

05/07/2012 - 1092 - RESPONSE (re 1045 MOTION for Judgment as a Matter of Law Oracle's Corrected Rule 50(A) Motion at the Close of Evidence (WITH TABLES) ) GOOGLE'S OPPOSITION TO ORACLE'S RULE 50(A) MOTION AT THE CLOSE OF PHASE ONE EVIDENCE filed byGoogle Inc.. (Van Nest, Robert) (Filed on 5/7/2012) (Entered: 05/07/2012)

05/07/2012 - 1093 - RESPONSE (re 1007 Second 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 5/7/2012) (Entered: 05/07/2012)

05/07/2012 - 1094 - DECLARATION of ROMAN A. SWOOPES in Opposition to 1093 Opposition/Response to Motion filed byOracle America, Inc.. (Related document(s) 1093 ) (Jacobs, Michael) (Filed on 5/7/2012) (Entered: 05/07/2012)

05/07/2012 - 1095 - AFFIDAVIT Declaration of Christopher C. Carnaval Regarding Google's Production of Android Financial Data in This Litigation by Google Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D)(Van Nest, Robert) (Filed on 5/7/2012) (Entered: 05/07/2012)

05/07/2012 - 1096 - AFFIDAVIT Declaration of Rachel Claflin Regarding Google's Production of Android Financial Data in This Litigation by Google Inc.. (Van Nest, Robert) (Filed on 5/7/2012) (Entered: 05/07/2012)

05/07/2012 - 1097 - OBJECTIONS to re 1081 Response ( Non Motion ) GOOGLE'S OBJECTION TO ORACLE'S RESPONSES TO GOOGLE'S PROPOSED FINDINGS OF FACT AND CONCLUSIONS OF LAW by Google Inc.. (Van Nest, Robert) (Filed on 5/7/2012) (Entered: 05/07/2012)

05/08/2012 - 1098 - MOTION Motion to Preclude Google From Disputing Ownership filed by Oracle America, Inc.. Responses due by 5/8/2012. (Jacobs, Michael) (Filed on 5/8/2012) (Entered: 05/08/2012)

05/08/2012 - 1099 - DOCUMENT E-FILED UNDER SEAL re 1056 Order on Administrative Motion to File Under Seal Google Inc.'s Opposition to Oracle America, Inc.'s Renewed Motion to Strike Portions of Dr. James Kearl's Expert Report by Google Inc.. (Attachments: # 1 Exhibit A)(Van Nest, Robert) (Filed on 5/8/2012) (Entered: 05/08/2012)

05/08/2012 - 1100 - Minute Entry: Jury Trial held on 5/8/2012 before Willliam Alsup (Date Filed: 5/8/2012). Defendant's Opening Statement made. Witnesses called. Further Jury Trial set for 5/9/2012 7:30 AM. Rule 50 Motion Hearing set for 5/9/2012 01:45 PM in Courtroom 8, 19th Floor, San Francisco before Hon. William Alsup. (Court Reporter Kathy Sullivan; Debra Pas.) (dt, COURT STAFF) (Date Filed: 5/8/2012) (Entered: 05/08/2012)

05/08/2012 - 1101 - Witness List by Oracle America, Inc. Rolling List of Next Ten Witnesses. (Muino, Daniel) (Filed on 5/8/2012) (Entered: 05/08/2012)

05/08/2012 - 1102 - Witness List by Google Inc. Rolling List of Next Ten Witnesses. (Van Nest, Robert) (Filed on 5/8/2012) (Entered: 05/08/2012)

05/08/2012 - 1103 - ORDER FOR COPIES OF EXPERT REPORTS. Signed by Judge Alsup on May 8, 2012. (whalc1, COURT STAFF) (Filed on 5/8/2012) (Entered: 05/08/2012)

05/08/2012 - 1104 - Declaration of DAVID ZIMMER in Support of 1036 Administrative Motion to File Under Seal Oracle's Motion to Exclude Portions of Kearl Report filed byGoogle Inc.. (Related document(s) 1036 ) (Van Nest, Robert) (Filed on 5/8/2012) (Entered: 05/08/2012)

05/08/2012 - 1105 - MOTION for New Trial ON ORACLE'S CLAIM THAT GOOGLE IS LIABLE FOR INFRINGEMENT OF ORACLE'S COPYRIGHT ON THE STRUCTURE, SEQUENCE AND ORGANIZATION OF THE COMPILABLE CODE FOR THE 37 JAVA API PACKAGES filed by Google Inc.. Responses due by 5/22/2012. Replies due by 5/29/2012. (Van Nest, Robert) (Filed on 5/8/2012) (Entered: 05/08/2012)

05/08/2012 - 1106 - RESPONSE to COURTS QUESTIONS by Oracle America, Inc.. (Holtzman, Steven) (Filed on 5/8/2012) (Entered: 05/08/2012)

05/08/2012 - 1107 - RESPONSE (re 1098 MOTION Motion to Preclude Google From Disputing Ownership ) filed byGoogle Inc.. (Van Nest, Robert) (Filed on 5/8/2012) (Entered: 05/08/2012)

***********

Documents

1086

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

Plaintiff,
v.
GOOGLE INC.
Defendant.

CASE NO. CV 10-03561 WHA

STIPULATION AND
ORDER REGARDING ’104 PATENT

Judge: Honorable William H. Alsup

---

STIPULATION

WHEREAS, the parties have continued to meet and confer regarding proposals for streamlining the trial, and have reached agreement regarding the ’104 patent;

NOW THEREFORE THE PARTIES HEREBY STIPULATE AND AGREE as follows:

1. Google has agreed to withdraw its invalidity defense to the ’104 patent.

2. The parties have agreed to the conditional stipulations regarding Oracle and Sun products practicing the ’104 patent set forth in the Supplemental Joint Statement of February 21, 2012 (Dkt. 721). Specifically, if Oracle proves in Phase 2 that Google infringes the ’104 patent, Google conditionally stipulates for purposes of Phase 3 (the damages phase) that the Oracle products identified in the 2/21/2012 Joint Statement practiced the asserted claims of the ’104 patent during the relevant time period. In turn, Oracle conditionally stipulates for purposes of Phase 3 that Oracle and Sun did not mark the practicing products with the ’104 patent during the relevant time period. The parties agree that these conditional stipulations relate only to Phase 3 and are triggered by a finding of patent infringement; the stipulations shall not be used as evidence or referred to in attorney argument in Phase 2 regarding patent liability.

ORDER

The foregoing stipulation is approved, and IT IS SO ORDERED.

Date: May 7, 2012

/s/William Alsup
Honorable William H. Alsup
Judge of the United States District Court

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Dated: May 6, 2012

MORRISON & FOERSTER LLP

By: /s/ Marc David Peters

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

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

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

Attorneys for Plaintiff
ORACLE AMERICA, INC.

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Dated: May 6, 2012

KEKER & VAN NEST LLP

By: /s/ Matthias A. Kamber

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

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

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

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

Attorneys for Defendant
GOOGLE INC.

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1088

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

FURTHER ITEM FOR TWENTY-PAGE
BRIEFS DUE MAY 10

16. Assuming that a copyright protection does not extend to names, including fully qualified names, and assuming that copyright protection does not bar others from using identical input-output (argument-return) designations, such that Google was free to use the identical names and identical input-output designations, what more did Google allegedly copy from the 37 packages that is allegedly covered by copyright? Put differently, assuming Google was free to do the foregoing, to what extent was Android’s SSO dictated by the rules of the basic programming language?

IT IS SO ORDERED.

Dated: May 7, 2012.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

1089

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

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

No. C 10-03561 WHA

SPECIAL VERDICT FORM

YOUR ANSWER MUST BE UNANIMOUS.

1. As to 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 _X____ 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 __________

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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 _X_____

(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:

		Yes (Infringing)	No (Not Infringing)
A.	The rangeCheck method in TimSort.java and ComparableTimSort.Java	_X___	_______
B.	Source code in seven “Impl.java” files and the one “ACL” file	_______	_X____
C.	The English-language comments in CodeSourceTest.java and CollectionCertStoreParameters Test.java	_______	_X____

2

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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 _X______ 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 _X_______

Your answers to Questions 4A and 4B will be used by the judge with issues he must decide. Questions 4A and 4B do not bear on the issues you must decide on Questions 1 to 3.

Dated: May 7, 2012

Greg Thorpe
FOREPERSON

3

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1092

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

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

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

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

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. 3:10-cv-03561 WHA

GOOGLE’S OPPOSITION TO ORACLE’S
RULE 50(A) MOTION AT THE CLOSE
OF PHASE ONE EVIDENCE

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

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TABLE OF CONTENTS

Page
I.	INTRODUCTION	1
II.	ARGUMENT	1
	A.	Oracle is not entitled to judgment as a matter of law of infringement.		1
		1.	Oracle has not demonstrated ownership of the materials allegedly copied by Google.	1
		2.	The evidence does not compel a finding of direct copying.	2
		3.	The evidence does not compel a finding that, by virtue of the SSO of the 37 API packages, Google’s implementation of the 37 API packages is substantially similar to compilable code for the 166 API packages in J2SE	2
		4.	Oracle is not entitled to judgment as a matter of law that the allegedly infringing portions of the 12 Android files are more than de minimis.	3
	B.	Google, not Oracle, is entitled to judgment as a matter of law on Oracle’s specifications claim, because Android’s specifications for the 37 API packages do not infringe Oracle’s API specifications.		4
	C.	Oracle failed to establish that no reasonable jury could find fair use		5
		1.	A reasonable jury could find that the purpose and character of Google’s use of the SSO of the 37 API packages favors a finding of fair use	5
		2.	A reasonable jury could find that the nature of the SSO of the 37 API packages is highly functional, and that this favors a finding of fair use	9
		3.	A reasonable jury could find that Google took only so much of the J2SE API packages as is necessary for compatibility, and that this either favors fair use, or is at least neutral.	9
		4.	A reasonable jury could find that there has been no adverse impact on the actual or potential market for Oracle’s work, and that the fourth factor thus favors fair use	10
	D.	Google is entitled to judgment as a matter of law that the SSO of the 37 API packages is not copyrightable		12
	E.	Google is entitled to judgment as a matter of law on Oracle’s SSO derivative work claim.		13
	F.	Google is entitled to judgment in its favor on its equitable defenses.		14
III.	CONCLUSION			15

i

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TABLE OF AUTHORITIES

Page(s)
Federal Cases
A.C. Aukerman Co. v. R.L. Chaides Const. Co. 960 F.2d 1020 (Fed. Cir. 1992)	15
Baker v. Selden 101 U.S. 99 (1879)	9, 13, 14
Bateman v. Mnemonics, Inc. 79 F.3d 1532 (11th Cir. 1996)	8
Boisson v. Banian. Ltd. 273 F.3d 262 (2d Cir. 2001)	1
Campbell v. Acuff-Rose Music, Inc. 510 U.S. 569 (1994)	5, 6, 7, 10
Carmichael Lodge No. 2103 v. Leonard CIV S-07-2665, 2009 WL 2985476 (E.D. Cal. Sept. 16, 2009)	15
Collegenet, Inc. v. XAP Corp. 483 F. Supp. 2d 1058 (D. Or. 2007)	14
Corp. of Am. v. Universal City Studios, Inc. 464 U.S. 417 (1984)	10
Danjaq LLC v. Sony Corp. 263 F.3d 942 (9th Cir. 2001)	14
Effects Associates, Inc. v. Cohen 908 F.2d 555 (9th Cir. 1990)	15
Haas v. Leo Feist, Inc. 234 F. 105 (S.D.N.Y. 1916)	14
Hampton v. Paramount Pictures Corp. 279 F.2d 100 (9th Cir. 1960)	15
Harper & Row, Publishers, Inc. v. Nation Enters. 471 U.S. 539 (1985)	5
Hynix Semiconductor Inc. v. Rambus Inc. 609 F. Supp. 2d 988 (N.D. Cal. 2009) aff’d, 645 F.3d 1336 (Fed. Cir. 2011)	15
Hynix Semiconductor Inc. v. Rambus Inc. 645 F.3d 1336 (Fed. Cir. 2011), cert. denied, 132 S. Ct. 1540 (2012)	15
Kelly v. Arriba Soft Corp. 336 F.3d 811 (9th Cir. 2003)	10

ii

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Knickerbocker Toy Co. v. Azrak-Hamway Int’l, Inc. 668 F.2d 699 (2d Cir. 1982)	4
Lotus Dev. Corp. v. Borland Int’l, Inc. 49 F.3d 807 (1995), aff’d by an equally divided court, 516 U.S. 233 (1996) (Boudin, J., concurring)	8
Lulirama Ltd., Inc. v. Axcess Broad. Services, Inc. 128 F.3d 872 (5th Cir. 1997)	15
Mazer v. Stein 347 U.S. 201 (1954)	14
McCoy v. Mitsuboshi Cutlery, Inc. 67 F.3d 917 (Fed. Cir. 1995)	15
Newton v. Diamond 388 F.3d 1189 (9th Cir. 2004)	3
Qualcomm Inc. v. Broadcom Corp. 548 F.3d 1004 (Fed. Cir. 2008)	15
Ringgold v. Black Enter. Tele., Inc. 126 F.3d 70 (2d Cir. 1997)	3
Sega Enters. Ltd. v. Accolade, Inc. 977 F.2d 1510 (9th Cir. 1992)	9, 10, 11, 13, 14
Sony Computer Enter. v. Connectix Corp. 203 F.3d 596 (9th Cir. 2000)	passim
Ty, Inc. v. GMA Accessories, Inc. 132 F.3d 1167 (7th Cir. 1997) (Posner, J.)	2
United States v. King Features Ent., Inc. 843 F.2d 394 (9th Cir. 1988)	15
Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc. 103 F.3d 1571 (Fed. Cir. 1997)	15
Federal Statutes
17 U.S.C. § 101	13
17 U.S.C. § 102(b)	8, 9, 13
17 U.S.C. § 410(c)	1
Other Authorities
Pierre N. Leval, Toward a Fair Use Standard, 103 HARV. L. REV. 1105, 1111 (1990)	6

iii

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I. INTRODUCTION

The Court should deny Oracle’s motion for judgment as a matter of law. In large measure, its motion merely cites disputed evidence. It does not establish that no reasonable jury could find for Google. Indeed, on many of the issues raised by Oracle’s motion, Google, not Oracle, is entitled to judgment as a matter of law.

II. ARGUMENT

A. Oracle is not entitled to judgment as a matter of law of infringement.

1. Oracle has not demonstrated ownership of the materials allegedly
copied by Google.

Oracle correctly states that the registrations for J2SE 1.4 and 5.0 are not contested, but incorrectly claims that this means that it “is entitled to judgment that it is the owner of valid copyrights to J2SE 1.4 and J2SE 5.0, covering all components of those works, including the individual code files and the SSO of the API packages.” Oracle JMOL [Dkt. 1044] at 3:12-14 (emphasis added). Ownership of the copyright registrations does not imply ownership of “all components of those works,” and certainly not of the “individual code files” or the “SSO of the API packages.” As the Second Circuit succinctly held in Boisson v. Banian. Ltd., “[s]imply because a work is copyrighted does not mean every element of that work is protected.” 273 F.3d 262, 268 (2d Cir. 2001).

To the contrary, the certificates of registration in evidence affirmatively state that Oracle does not own “all components” of the works. See TX 464 at 2, 475 at 2 (stating in part 6a that the registered works include “licensed-in components”). The registrations are “prima facie evidence . . . of the facts stated in the certificate[s],” 17 U.S.C. § 410(c), which means that they are evidence that Oracle does not own all of the components of versions 1.4 and 5.0 of J2SE. Because Oracle has not established which components of the registered works it owns, it has not established that it owns the material that it alleges Google copied.

Indeed, for the reasons given in Google’s brief in support of its second motion for judgment as a matter of law, see Dkt. 1043 at 2:23-5:9, Oracle has not established what is included in the complete works that are the subject of the registrations.

1

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2. The evidence does not compel a finding of direct copying.

Oracle claims that the evidence compels a finding that Google directly copied from Oracle’s works. The testimony Oracle cites, however, is not evidence of direct copying, but evidence of access. “Obviously, access does not entail copying. An eyewitness might have seen the defendant buy the copyrighted work; this would be proof of access, but not of copying.” Ty, Inc. v. GMA Accessories, Inc., 132 F.3d 1167, 1170 (7th Cir. 1997) (Posner, J.). Bob Lee testified that he consulted the J2SE API specifications, but not that he copied expression from them. RT 982:25-983:3. He testified that Noser was hired to implement libraries that followed the J2SE API specifications, but not that Noser copied expression from them. RT 985:3-6. Dan Bornstein testified that he and his team looked at the specifications, and used information from them, but not that he or his team copied expression from them. RT 1836:19-1837:2. Oracle argues that Android engineers “effectively” had “access” to the SSO of the source code itself, but even if the inference Oracle asks the Court to draw were correct (and Oracle fails to establish that a reasonable jury would have no choice but to draw this inference), having effective access to the SSO of the source code is very different from directly copying expression from the source code.

None of the evidence cited by Oracle comes close to compelling a finding of direct copying. Ty, 132 F.3d at 1170. Indeed, the only arguable evidence of direct copying is the code and comments that allegedly were literally copied, for which Google relies on Oracle’s failure to prove more than de minimis copying, as explained below.

3. The evidence does not compel a finding that, by virtue of the SSO of
the 37 API packages, Google’s implementation of the 37 API packages
is substantially similar to compilable code for the 166 API packages in
J2SE.

For purposes of determining whether Google’s use of the SSO for the 37 API packages infringes, the Court instructed the jury that Oracle’s work as a whole is “all of the compilable code associated with all of the 166 API packages (not just the 37) in the registered work.” Dkt. 1018, JI 29.¹ Professor Astrachan testified that the Android platform as a whole is not substantially similar to the J2SE platform as a whole. RT 2181:12-2182:12. Professor Astrachan

¹ Google reserves its objections to this jury instruction.

2

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further testified that, for the 37 packages in particular, there are similarities in the method signatures, but the implementing code is completely different. RT 2182:13-2183:1. Professor Astrachan also compared the code in the 166 API packages in J2SE to the 37 accused packages in Android, and opined that they are very different. RT 2185:10-2187:3. Professor Astrachan testified that the SSO of the 37 API packages is represented in approximately 7,000 lines of code out of the approximately 2.8 million lines of code in the 166 API packages in J2SE. See RT 2185:10-14, 2189:22-2191:20. He further testified that this SSO, standing alone, “doesn’t actually do anything.” RT 2191:3-7. Based on this testimony, a reasonable jury could find that the 37 accused API packages in Android are not substantially similar to the 166 J2SE packages.

4. Oracle is not entitled to judgment as a matter of law that the allegedly
infringing portions of the 12 Android files are more than de minimis.

Oracle’s literal copying claims are directed to three groups of files. First, Oracle claims that two Android files include the nine-line rangeCheck method from Oracle’s Arrays.java file—a file that is over 3,000 lines long. Second, Oracle claims that eight Android test files—files that do not contribute even a single byte to the code that ships on Android phones—are decompiled versions of eight Oracle files. Third, Oracle claims that two Android test files include comments that were taken from two Oracle files, while conceding that the comments have no effect whatsoever on the compiled code that ships on Android phones.

De minimis acts of copying are not actionable. Newton v. Diamond, 388 F.3d 1189, 1192-93 (9th Cir. 2004); see also Ringgold v. Black Enter. Tele., Inc., 126 F.3d 70, 74 (2d Cir. 1997) (“de minimis can mean that copying has occurred to such a trivial extent as to fall below the quantitative threshold of substantial similarity, which is always a required element of actionable copying”). A use is de minimis “if the average audience would not recognize the appropriation.” Newton, 388 F.3d at 1193. Oracle presented no evidence that anyone ever noticed any of this allegedly misappropriated code or comments until an extensive forensic analysis of the Android source code was undertaken as part of this litigation. See RT 1308:2-1313:11 (Mitchell) (testifying about forensic analysis). On this basis alone, a reasonable jury could find for Google on all of Oracle’s literal copying claims.

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Moreover, a reasonable jury could only find that the rangeCheck method is both qualitatively and quantitatively insignificant, whether judged against the Arrays.java file alone (as the Court instructed the jury to do) or either of the registered works as a whole (as Google requested the jury be instructed). See Dkt. 1043 at 9:22-11:22 (brief in support of Google’s second motion for judgment as a matter of law). As to the other files, the jury once again could only find that Google’s use—which does not affect any code that ships on an Android device—is de minimis. See Knickerbocker Toy Co. v. Azrak-Hamway Int’l, Inc., 668 F.2d 699, 702-03 (2d Cir. 1982) (use of plaintiff’s work in a mock-up product display that was never used in a production run was de minimis); see also Dkt. 1043 at 11:23-14:6. For these reasons, Google, not Oracle, is entitled to judgment as a matter of law on the issue of whether the alleged literal copying is de minimis. Even if Oracle proved that it owned the eleven individual files that it claims were copied (and it did not), Oracle is not entitled to judgment as a matter of law on its claim that Google’s use of portions of material allegedly from the 11 files was more than de minimis.

B. Google, not Oracle, is entitled to judgment as a matter of law on Oracle’s
specifications claim, because Android’s specifications for the 37 API packages
do not infringe Oracle’s API specifications.

Google, not Oracle, is entitled to judgment as a matter of law on Oracle’s claim that Android’s specifications for the 37 API packages infringe the English-language descriptions in Oracle’s specifications for the 166 API packages in J2SE. Oracle presented only three examples of alleged similarities between the Android and J2SE specifications, and no reasonable jury could conclude that even those examples are virtually identical. RT 1169:25-1170:19, 1171:3-1172:25, 1174:17-1175:9 (Lee). Indeed, the few similarities in those examples are due to the fact that, as to the 37 API packages, the Android and J2SE specifications are describing the same things. See RT 1175:10-24 (Lee). A reasonable jury could only find that the Android specifications for the 37 packages are not virtually identical to the specifications for the 166 J2SE API packages. See also Dkt. 1043 at 14:20-17:8.

Oracle’s other claim—that the Android specifications include the SSO for the 37 API packages—fails because the SSO is not copyrightable. See Part II.D, infra. For these reasons,

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Oracle is not entitled to judgment as a matter of law on its claim that Android’s specifications for the 37 API packages infringe Oracle’s API specifications.

C. Oracle failed to establish that no reasonable jury could find fair use.

For the reasons given below, a reasonable jury could find that all four of the statutory fair use factors favor Google, or at least that three factors favor Google while the other is neutral. Weighing these factors together, a reasonable jury could find that Google is making a fair use of the SSO of the 37 API packages.

1. A reasonable jury could find that the purpose and character of
Google’s use of the SSO of the 37 API packages favors a finding of fair
use.

“The language of the statute makes clear that the commercial or nonprofit educational purpose of a work is only one element of the first factor enquiry into its purpose and character.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 584 (1994). “Congress resisted attempts to narrow the ambit of this traditional enquiry by adopting categories of presumptively fair use, and it urged courts to preserve the breadth of their traditionally ample view of the universe of relevant evidence.” Id. (citing Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 561 (1985)) (emphasis added). “Accordingly, the mere fact that a use is educational and not for profit does not insulate it from a finding of infringement, any more than the commercial character of a use bars a finding of fairness.” Campbell, 510 U.S. at 584 (emphasis added). Indeed, most of the exemplary fair uses listed in the preamble to section 107 are “generally conducted for profit in this country.” Id. (quotation marks and citation omitted). The Ninth Circuit has recognized that, after Campbell, it is improper to apply a presumption against fair use based on a defendant’s commercial purpose. Sony Computer Enter. v. Connectix Corp., 203 F.3d 596, 606 (9th Cir. 2000). Instead, a commercial purpose “is only a ‘separate factor that tends to weigh against a finding of fair use.’” Id. (quoting Campbell, 510 U.S. at 585).

But even a commercial use does not imply that the first factor must weigh against fair use, because the more the purpose and character of the defendant’s use is transformative, “the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” Campbell, 510 U.S. at 579. A use is transformative where it “adds something new, with a

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further purpose or different character, altering the first with new expression, meaning, or message[.]” Id. (citing Pierre N. Leval, Toward a Fair Use Standard, 103 HARV. L. REV. 1105, 1111 (1990)). “[T]he goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works . . . .” Campbell, 510 U.S. at 579.

In Sony v. Connectix, the Ninth Circuit found that Connectix’s Virtual Game Station software (“VGS”) was a product that “creates a new platform, the personal computer, on which consumers can play games designed for the Sony PlayStation.” 203 F.3d at 606. Because VGS was an “innovation” that “affords opportunities for game play in new environments,” the Ninth Circuit found that VGS was “modestly transformative.” Id. The court so found “notwithstanding the similarity of uses and functions between the Sony PlayStation and the Virtual Game Station”—that is, notwithstanding that the very purpose of VGS was to allow users to play the same games that users play using the Sony PlayStation. The Ninth Circuit was “at a loss” to see “how Connectix’s drafting of entirely new object code for its VGS program could not be transformative, despite the similarities in function and screen output.” Id. at 606-07.

When Google created Android, it, too, created a new platform. Sun itself recognized that Android was innovative. See TX 435 (email from Schwartz to Schmidt stating, “Sun is ready embrace Google’s innovation . . . .”). In contrast to J2SE, Android provides a “full stack” solution for mobile computing. RT 1938:10-1939:12 (Rizvi). Android builds on the SSO of the 37 API packages to provide developers with access to a full application framework suitable for smartphone applications. RT 1682:23-1684:1 (Rubin). All of this work required approximately three years of development to complete. RT 1684:20-24 (Rubin). Through these efforts, Android created opportunities to use the APIs in the 37 packages in a new environment, namely the Android smartphone platform. RT 2182:3-7 (Astrachan) (Android is a mobile platform that has a very different purpose than J2SE).

And although there are similarities between Android and the J2SE platforms in the structure, sequence and organization of the API elements in the 37 packages, the structure, sequence and organization of the implementing code is very different in Android, as compared with J2SE. RT 2182:25-2183:1 (Astrachan) (“The implementation code in Android is completely

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different than the implementation code in Java.”); see also RT 2184:8-21, 2185:10-2186:17 (Astrachan) (implementing code “completely different”); RT 2297:7-2299:13 (Mitchell) (agreeing code is different). In fact, the nine-line rangeCheck method is the only evidence of any similarities in the implementing code itself. See RT 1309:8-1313:11 (Mitchell); RT 2182:13-2183:1 (Astrachan). Thus, notwithstanding any similarities between how those APIs are used in Android and the J2SE platforms, a reasonable jury could find that Android is, at a minimum, “modestly transformative.” See Sony v. Connectix, 203 F.3d at 606-07. Oracle’s motion does not address any of this evidence. Based on this evidence, a reasonable jury could find that Android is, like VGS was, at least modestly transformative.

Oracle argues that in order to be transformative, the defendant’s work must have an entirely different purpose than the plaintiff’s work. This ignores the Supreme Court’s definition of “transformative” in Campbell. 510 U.S. at 579 (use is transformative where it “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message”). Indeed, in Campbell, the transformative use was a popular song recording that parodied the plaintiff’s popular song recording. While the original was a rock ballad and the other from the hip hop genre, the two works both were commercial entertainment targeting mainstream audiences. Moreover, although the cases Oracle cites involved situations where the defendant’s work had a very different purpose than the plaintiff’s work, none of those cases hold that a work cannot be transformative if it has a less than entirely different purpose. Thus, none of those cases narrow Campbell—nor could they, given that Campbell is a Supreme Court decision that is binding on the Ninth Circuit.

Here, Android not only provided a further purpose and different character to the 37 API packages at issue, allowing them to be used in a new environment and platform, but also added over one hundred new API packages that interact with and inter-depend on those 37 packages, transforming the SSO of the API packages at issue into something new. RT 1680:24-1682:5, 1682:23-1684:1 (Rubin); TX 51 (list of API packages in Android version 2.1). In addition, the purpose of implementing the API packages was to achieve compatibility with code written to use APIs from those 37 packages. RT 1782:6-17 (Bornstein); RT 2183:6-11 (Astrachan); RT 803:9-

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20 (Bloch).

To reach a final finding on the first factor, the Sony v. Connectix court weighed VGS’s modestly transformative purpose against Connectix’s commercial use of Sony’s copyrighted work. Connectix had reverse engineered Sony’s code in order to determine its functional requirements. 203 F.3d at 601. Because the final VGS product did not incorporate Sony’s copyrighted code, the court found that Connectix’s commercial use was only indirect or derivative. Id. at 607. Moreover, the use was for the purpose of achieving compatibility, a legitimate use under the first factor. Id.; see also Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1547 (11th Cir. 1996) (external factors such as compatibility can negate a finding of infringement “per 17 U.S.C. § 102(b)” or “a finding of fair use, copyright estoppel, or misuse”); Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807, 821 (1995), aff’d by an equally divided court, 516 U.S. 233 (1996) (Boudin, J., concurring) (suggesting Borland’s use of Lotus’s menu hierarchy, in addition to being noninfringing by virtue of 17 U.S.C. § 102(b), might also be a fair use). Weighing these facts together, the Ninth Circuit found that the first factor favored Connectix.

Assuming, for the limited purpose of opposing Oracle’s motion for judgment as a matter of law on Google’s fair use defense, that the SSO is copyrightable,² Android uses copyrighted material. Although the commerciality of Google’s use would not be indirect in exactly the same sense as in Sony v. Connectix, see 203 F.3d at 607, the commerciality of Google’s use would nonetheless still be indirect, because Google does not directly generate revenue by selling or licensing the SSO of the API packages or the APIs themselves. Instead, Google generates revenue from Android indirectly, mostly by way of revenue received on advertisements that appear on Android phones, which is the same way that Google generally generates most of its revenue from any platform, mobile or otherwise. See RT 1458:12-16 (Schmidt). And, as was the case in Sony v. Connectix, Google’s challenged use is for the purpose of achieving compatibility—in this case compatibility with the APIs in the 37 packages at issue. RT 1782:6-17 (Bornstein); RT 2183:6-11 (Astrachan); RT 803:9-20 (Bloch). Weighing these facts together,

__________________________

² The SSO is not copyrightable, see Part II.D, infra, but unless the SSO is copyrightable, there is no need to reach the issue of fair use.

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a reasonable jury could reach the same result that was reached in Sony v. Connectix—that the first factor favors a finding of fair use.

2. A reasonable jury could find that the nature of the SSO of the 37 API
packages is highly functional, and that this favors a finding of fair use.

The second fair use factor, the nature of the copyrighted work, “reflects the fact that not all copyrighted works are entitled to the same level of protection.” Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir. 1992). Of particular note here, the Copyright Act does not protect “functional or factual aspects of the work.” Id. (citing 17 U.S.C. § 102(b)). Works having “strong functional elements” are entitled to less protection than, for example, works of fiction. Id. (citing Baker v. Selden, 101 U.S. 99, 104 (1879)).

The testimony at trial established that the SSO of the 37 API packages is functional. See, e.g., Dkt. 1047, Findings of Fact 8-9, 14-15 (citing RT 772:17-24, 773:14-16 (Bloch), RT 289:8-9, 290:8-12 (Ellison), RT 364:3-10 (Kurian), RT 1959:12-1960:18 (Schwartz), RT 784:9-21 (Bloch), RT 1304:5-20 (Mitchell, TX 3542, Mitchell Depo. at 120:18-24, 121:1-10), RT 746:24-747:9, 747:25-748:6 (Bloch)). A reasonable jury would therefore be entitled to find that the SSO of the 37 API packages is strongly functional, that this fact outweighs any creativity in the process of designing the APIs, and that the functional nature of the SSO of the APIs therefore favors a finding of fair use.

3. A reasonable jury could find that Google took only so much of the
J2SE API packages as is necessary for compatibility, and that this
either favors fair use, or is at least neutral.

The third fair use factor considers the amount and substantiality of the portion used in relation to the work as a whole. Oracle’s infringement claim is based on the use of the SSO of only 37 of the 166 API packages in J2SE. RT 597:18-19 (Reinhold) (166 API packages in J2SE 5.0); TX 1072 (37 accused API packages). In addition, the Android implementing code for those API packages is different than the J2SE implementing code. RT 2182:25-2183:1 (Astrachan) (“The implementation code in Android is completely different than the implementation code in Java.”). Based on these facts, a reasonable jury could find that the third factor favors Google.

Moreover, even if the jury found that the portion of the work that Google used is

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significant, “[i]f the secondary user only copies as much as is necessary for his or her intended use, then this factor will not weigh against him or her.” Kelly v. Arriba Soft Corp., 336 F.3d 811, 820-21 (9th Cir. 2003). Here, by using only the SSO and not the implementing code, and by limiting its use of the SSO to the API packages that developers are most likely to expect to be able to use to write programs in the Java language for a smartphone platform, Google used only as much of Oracle’s work as necessary. See RT 2196:7-2202:11 (Astrachan) (all 37 API packages at issue provide basic functionalities needed to make practical use of the Java language and are expected by developers). At a minimum, then, a reasonable jury could find that the third factor weighs neither for nor against fair use. See id. at 821 (copying of entire copyrighted images did not weigh against fair use where “[i]t was necessary for Arriba to copy the entire image to allow users to recognize the image and decide whether to pursue more information about the image or the originating web site”).

4. A reasonable jury could find that there has been no adverse impact on
the actual or potential market for Oracle’s work, and that the fourth
factor thus favors fair use.

“Whereas a work that merely supplants or supersedes another is likely to cause a substantially adverse impact on the potential market of the original, a transformative work is less likely to do so.” Sony v. Connectix, 203 F.3d at 607 (citing Campbell, 510 U.S. at 591) (emphasis added). “No ‘presumption’ or inference of market harm that might find support in Sony [Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984),] is applicable to a case involving something beyond mere duplication for commercial purposes.” Campbell, 510 U.S. at 591. At most, such a presumption applies to “verbatim copying of the original in its entirety for commercial purposes . . . .” Id. But where the defendant’s “use is transformative, market substitution is at least less certain, and market harm may not be so readily inferred.” Id. The Ninth Circuit’s analysis in Sony v. Connectix is instructive:

The district court found that “[t]o the extent that such a substitution [of Connectix’s Virtual Game Station for Sony PlayStation console] occurs, Sony will lose console sales and profits.” Order at 19. We recognize that this may be so. But because the Virtual Game Station is transformative, and does not merely supplant the PlayStation console, the Virtual Game Station is a legitimate competitor in the market for platforms on which Sony and Sony-licensed games can be played. See Sega, 977 F.2d at 1522-23. For this reason, some

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economic loss by Sony as a result of this competition does not compel a finding of no fair use. Sony understandably seeks control over the market for devices that play games Sony produces or licenses. The copyright law, however, does not confer such a monopoly. See id. at 1523-24 (“[A]n attempt to monopolize the market by making it impossible for others to compete runs counter to the statutory purpose of promoting creative expression and cannot constitute a strong equitable basis for resisting the invocation of the fair use doctrine.”). This factor favors Connectix.

203 F.3d at 607-08 (emphasis added). As discussed above, a reasonable jury could conclude that Google’s use is at least modestly transformative, and that Android is a “legitimate competitor” in the market for platforms that implement the 37 API packages, not just the manufacturer of a product that supplants those APIs. The record suggests that Oracle seeks to control the market for software implementing the API packages at issue, just as Sony sought to control the market for devices that play Playstation games. See, e.g., RT 374:21-375:5 (Kurian). However, just as copyright law does not give Sony a monopoly over the market for devices that play games Sony produces or licenses, copyright law does not give Oracle a monopoly over the market for software that implements the 37 API packages. Because Google’s use is transformative, the fourth factor favors Google, just as the fourth factor favored Connectix in Sony v. Connectix.

Moreover, a reasonable jury could reject Oracle’s evidence of market harm based on alleged fragmentation. First, according to a report Oracle Corporation prepared and submitted to the European Community in connection with its acquisition of Sun, in 2009 vendors already had and would continue to “‘fragment’ Java as a programming language and environment for developers.” TX 2237 at 13 (¶ 15); RT 572:6-20 (Screven). Indeed, Oracle maintains numerous different versions and profiles of the Java platform, with different sets of APIs for each, and code written for one version or profile will not necessarily run on a different version or profile of the Java platform. See RT 719:12-725:6 (Reinhold); see also TX 3508 at 2 (“Fragmented between Java SE and Java ME, and between Java ME mobile and TV and within mobile and TV.”). Dr. Reinhold testified, however, that the different sets of APIs available on different versions of the Java platform are not a problem:

Write once, run anywhere was never a promise that if you wrote code for one Java platform that it would automatically/magically work on another.

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The write once, run anywhere promise is relative to a specific one of the Java platforms. If you write an application that uses Java SE 5, then you can run it on Sun’s implementation, on Oracle's implementation, on IBM’s implementation, and on others.

Will that same code run on a particular configuration of Java ME? Well, it depends. It might. It might not. It depends which APIs it uses.

RT 725:10-20 (emphasis added); see also RT 563:10-564:1 (Screven) (different version of Java are not “forks” of each other because they are “each editions of Java specifically designed for a particular purpose”). That is, Oracle witnesses testified that “fragmentation” is harmful only if it occurs within a platform. Indeed, Oracle’s counsel specifically argued to the jury that differences between platforms are not harmful. RT 930:13-19 (summary by Jacobs). A reasonable jury could find that Android could not “fragment” J2SE, because it is a separate platform that was designed for a particular purpose distinct from the purpose for which J2SE was designed.

Finally, the jury is entitled to rely on evidence at trial that supports a finding that Android helped Oracle’s Java business rather than harming it. The evidence shows that Oracle’s Java business continues to grow at a double-digit rate. TX 573 at 5; RT 1925:23-1927:6 (Java platforms business was growing 13% year over year as of 2010); TX 3532 (Rizvi Depo. at 229:13-229:21) (played at RT 1927:14-18) (Java platforms business continues to grow at a rate of approximately 10%). Jonathan Schwartz testified that Android was helping Sun’s Java business. RT 1992:2-19. Had Google taken a different route and not implemented the Java language and APIs, Mr. Schwartz testified that this “would have been horrible for Sun’s business.” RT 1992:16-19.

Thus, on the trial record, a reasonable jury could find that Android is transformative, that Oracle’s evidence of fragmentation harm is contradicted by the testimony of its own witnesses, and that far from harming the market for Oracle’s Java platforms, Android helped that market. Based on the record, a reasonable jury could find, as the Ninth Circuit did in Sony v. Connectix, that the fourth factor favors fair use.

D. Google is entitled to judgment as a matter of law that the SSO of the 37 API
packages is not copyrightable.

Google has addressed the lack of copyrightability of the SSO of the 37 API packages in

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prior briefs at great length. See Dkts. 260, 368, 562, 601, 778, 823, 831, 852, 860, 897, 898, 955, 993. The SSO of the 37 API packages is not copyrightable by virtue of the express terms of 17 U.S.C. § 102(b) (systems and methods of operation not protected), the Ninth Circuit’s interpretation of section 102(b) in Sega, 977 F.2d at 1522 (“functional requirements for compatibility” not protected), and the doctrines of merger and scenes a faire. For these reasons, and based on Google’s proposed findings of fact and conclusions of law, Google is entitled to judgment that the SSO of the 37 API packages is not copyrightable. See Dkt. 1047, Findings of Fact 1-36, Conclusions of Law 1-20. Oracle therefore is not entitled to judgment as a matter of law on that the SSO of the 37 API packages is copyrightable.

E. Google is entitled to judgment as a matter of law on Oracle’s SSO derivative
work claim.

Google, not Oracle, is entitled to judgment as a matter of law on Oracle’s claim that Google’s implementation of the 37 API packages is an unlawful derivative work of the English language descriptions of those packages in Oracle’s specifications. As the Court has recognized, Oracle’s derivative work claim is a “classic case of trying to lay claim to the ownership of an idea.” RT 1869:15-16; see also RT 1368:25-1369:1 (Oracle’s derivative work argument “just seems to me to be invalid under the basic tenets of copyright law”); RT 1375:22-24 (Oracle’s derivative work claim doesn’t “add[] anything, except violating the principle of you can’t get a monopoly and ownership over an idea”).

The Court has already rejected Oracle’s derivative work theory. See RT 2434:13-2435:16. The Court’s conclusion is sound, because Oracle’s derivative work claim is contrary to the idea/expression dichotomy that is codified in section 102(b) of the Copyright Act. It also is contrary to the statutory definition of a derivative work, which is a work based on “one or more preexisting works,” 17 U.S.C. § 101, not a work based on preexisting ideas.

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

To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of copyright. The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right

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therein can be obtained; and it can only be secured by a patent from the government.

101 U.S. 99, 102 (1879). It is also barred by Mazer v. Stein: “Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea—not the idea itself.” 347 U.S. 201, 217 (1954). And it is barred by Sega, under which “functional requirements for compatibility” with a system described by or implemented in a copyrighted work cannot be protected by copyright law. 977 F.2d at 1522.

For these reasons, and those expressed in Google’s brief in support of its second motion for judgment as a matter of law (see Dkt. 1043 at 7:4-8:12), Oracle is not entitled to judgment as a matter of law on its derivative work claim.

F. Google is entitled to judgment in its favor on its equitable defenses.

For the reasons given in Google’s proposed findings of fact and conclusions of law regarding its equitable defenses, Google, not Oracle, is entitled to judgment on those defenses. Sun knew about and approved unlicensed, open source implementations of the Java API packages as long as the implementation did not use the Java brand. See Dkt. 1047, Findings of Fact 37-52. As early as 2005, Sun knew Google intended to implement Java API packages in Android, and Sun never told Google it needed a license to do so. See id., Findings of Fact 53-61. After Google publicly announced Android, Sun congratulated Google and welcomed Google to the Java community. See id., Findings of Fact 62-72 After Google’s announcement of Android and release of the Android SDK, Sun continued to talk with Google and publicly support Android. See id., Findings of Fact 73-81. Google was aware of and relied on Sun’s public statements of approval and acts of support for the Android platform. See id., Findings of Fact 82-87. Oracle initially encouraged Android and tried to partner with Google. See id., Findings of Fact 88-92.

Based on these facts, Oracle’s copyright claims are barred by the doctrine of laches. Danjaq LLC v. Sony Corp., 263 F.3d 942, 951-52, 956 (9th Cir. 2001); Collegenet, Inc. v. XAP Corp., 483 F. Supp. 2d 1058, 1061 (D. Or. 2007); Haas v. Leo Feist, Inc., 234 F. 105, 108 (S.D.N.Y. 1916 (L. Hand, J.); Dkt. 1047, Conclusions of Law 24-26.

These facts also establish that Oracle’s copyright claims are barred by equitable estoppel.

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Hampton v. Paramount Pictures Corp., 279 F.2d 100, 104 (9th Cir. 1960); United States v. King Features Ent., Inc., 843 F.2d 394, 399-400 (9th Cir. 1988); Hynix Semiconductor Inc. v. Rambus Inc., 609 F. Supp. 2d 988, 1025 (N.D. Cal. 2009) aff’d, 645 F.3d 1336 (Fed. Cir. 2011); A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020, 1042 (Fed. Cir. 1992); Carmichael Lodge No. 2103 v. Leonard, CIV S-07-2665 LKK/GGH, 2009 WL 2985476 at *15 (E.D. Cal. Sept. 16, 2009); Dkt. 1047, Conclusions of Law 27-34.

In addition, the equitable doctrine of implied license bars Oracle’s copyright claims. Lulirama Ltd., Inc. v. Axcess Broad. Services, Inc., 128 F.3d 872, 879 (5th Cir. 1997); Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 103 F.3d 1571, 1576, 1580, 1581-82 (Fed. Cir. 1997); Effects Associates, Inc. v. Cohen, 908 F.2d 555, 558-59 (9th Cir. 1990); McCoy v. Mitsuboshi Cutlery, Inc., 67 F.3d 917, 920 (Fed. Cir. 1995); Dkt. 1047, Conclusions of Law 24-25, 29-32, 38-39.

Finally, the doctrine of waiver bars Oracle’s copyright claims. United States v. King Features Entm’t, Inc., 843 F.2d 394, 399 (9th Cir. 1988); Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1348 (Fed. Cir. 2011), cert. denied, 132 S. Ct. 1540 (2012); Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004, 1019-20 (Fed. Cir. 2008); Dkt. 1047, Conclusions of Law 42-44.

Because the record supports each of Google’s equitable defenses, Oracle is not entitled to judgment on those defenses.

III. CONCLUSION

For the foregoing reasons, Google respectfully requests that the Court deny Oracle’s motion.

Dated: May 7, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

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1093

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’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: Honorable William H. Alsup

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TABLE OF CONTENTS

Page
INTRODUCTION			1
ARGUMENT			1
I.	ORACLE, NOT GOOGLE, IS ENTITLED TO JUDGMENT AS A MATTER OF LAW ON ORACLE’S CLAIM FOR COPYRIGHT INFRINGEMENT OF THE SSO OF THE 37 API PACKAGES		1
II.	ORACLE PROVED THE CONTENTS OF THE WORK THAT WAS REGISTERED AND THAT THE COPYRIGHTS COVER THE COMPONENT PARTS AT ISSUE		2
	A.	Oracle Has Proved The Contents Of The Works At Issue	2
	B.	It Is Too Late For Google To Raise A Challenge To Ownership Based On Alleged Contributions From Third Parties	5
	C.	Oracle Is The Author Of The Works At Issue	6
III.	GOOGLE’S IMPLEMENTATION OF THE SSO OF THE 37 JAVA API PACKAGES INTO ANDROID IS A DERIVATIVE WORK OF ORACLE’S SPECIFICATIONS		8
IV.	THE NAMES AND DECLARATIONS ARE PROTECTABLE AS PART OF THE SSO OF THE 37 JAVA API PACKAGES		11
V.	GOOGLE’S LITERAL COPYING IS NOT DE MINIMIS		14
	A.	Google’s Copying Of rangeCheck Was Not De Minimis	15
	B.	Google’s Copying Of Comments Was Not De Minimis	17
	C.	Google’s Copying Of Eight Decompiled Files—the Eight “Iml” and “ACL” Files—Was Not De Minimis	18
VI.	ANDROID’S SPECIFICATIONS INFRINGE ORACLE’S COPYRIGHTS		19
	A.	Google Should Be Held Liable For Its Admitted Copying of The SSO From Java Documentation Into Android Documentation	20
	B.	Android’s English-Language Descriptions Were Copied From The Java API Specifications	23
VII.	THE EVIDENCE SHOWS THE INDIVIDUALLY COPIED CODE FILES WERE OWNED BY ORACLE		24
VIII.	GOOGLE’S COLLECTIVE WORKS OWNERSHIP CHALLENGE IS MOOT		25
IX.	ORACLE’S COPYRIGHT CLAIMS ARE NOT BARRED BY LACHES, EQUITABLE ESTOPPEL, WAIVER OR IMPLIED LICENSE		25
CONCLUSION			25

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TABLE OF AUTHORITIES

Page(s)
CASES
Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. Cal. 2000)	8
Aharonian v. Gonzales, No. C04-5190, 2006 U.S. Dist. LEXIS 13 (N.D. Cal. Jan. 3, 2006)	17
Am. Dental Ass’n v. Delta Dental Plans Ass’n, 126 F.3d at 978 (7th Cir. 1997)	21, 22
Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994)	20
Atari Games Corp. v. Nintendo of Am. Inc., 975 F.2d 832 (Fed. Cir. 1992)	12
Baker v. Selden, 101 U.S. 99 (1879)	20, 21
Baxter v. MCA, Inc., 812 F.2d 421 (9th Cir. 1987)	17
Brocade Commc’ns Sys. v. A10 Networks, Inc., No. 10-CV-03428-LHK, 2011 U.S. Dist. LEXIS 91384 (N.D. Cal. Aug. 16, 2011)	17
Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1883)	8
Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204 (9th Cir. 1988)	4, 5
Dream Games of Ariz., Inc. v. PC Onsite, 561 F.3d 983 (9th Cir. 2009)	6
eScholar LLC v. Otis Educ. Sys., Inc., 2005 U.S. Dist. LEXIS 40727 (S.D.N.Y. Nov. 3, 2005)	9
Fisher v. Dees, 794 F.2d 432 (9th Cir. 1985)	14
Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985)	17
Jacobsen v. Katzer, 2009 U.S. Dist. LEXIS 115204, at *9-10 (N.D. Cal. Dec. 10, 2009)	20

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Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173 (9th Cir. 1989)	13, 21
Key Publ’n v. Chinatown Today Publ’g Enter., 945 F.2d 509 (2d Cir. 1991)	20
Kodadek v. MTV Networks, Inc., 152 F.3d 1209 (9th Cir. 1998)
L.A. Printex Indust., Inc. v.Aeropostale, Inc., 2012 U.S. App. LEXIS 7079 (April 9, 2012)	20
Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140 (9th Cir. 2003)	11
Merch. Transaction Sys. v. Nelcela, Inc., 2009 U.S. Dist. LEXIS 25663 (D. Ariz. Mar. 17, 2009)	11, 14, 17
Micro Star v. Formgen, Inc., 154 F.3d 1107, 1114 (9th Cir. 1998)	9
Mktg. Tech. Solutions, Inc. v. Medizine LLC, No. 09 Civ. 8122 (LMM), 2010 U.S. Dist. LEXIS 50027 (S.D.N.Y. Apr. 23, 2010)	17
Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2004)	14
Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70 (2d Cir. 1997)	14, 23, 24
Roy Export Co. v. CBS, Inc., 503 F.Supp.1137 (S.D.N.Y. 1980)	16
Russell v. Price, 612 F.2d 1123 (9th Cir. 1979)	24
Sandoval v. New Line Cinema Corp., 147 F.3d 215 (2d Cir. 1998), 26 F.3d 70 (2d Cir. 1997)	14
SAS Inst., Inc. v. S&H Computer Sys. Inc., 605 F. Supp. 816 (M.D. Tenn. 1985)	9, 10
Sega Enter., Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1993)	12
Seiler v. Lucasfilm, Ltd., 808 F.2d 1316 (9th Cir. 1987)	4, 5
Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 50-56 (2nd Cir. 1936)	8, 10

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Situation Mgmt. Systems Inc. v. ASP. Consulting LLC, 560 F.3d 53 (1st Cir. 2009)	passim
Twentieth Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327 (9th Cir. 1983)	9
United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255 (9th Cir. 2011)	2, 6
STATUTES
17 U.S.C. § 201(d)	7
17 U.S.C. § 410(c)	2, 6
OTHER AUTHORITIES
2 Nimmer & Nimmer, Nimmer on Copyright, § 8.01[G], at 8-26	15

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INTRODUCTION

Like Google’s first JMOL motion, Google’s Second Motion for Judgment as a Matter of Law fails to establish that Google is entitled to judgment as a matter of law on any of the issues on which it has moved. Google devotes much of its brief to trying to escape a finding of infringement by raising technicalities relating to registration or claimed evidentiary gaps. Google’s arguments are meritless. The copyrighted material was properly registered, Google miscites the relevant law, and all of the evidence Google claims is missing from the record is present. When Google finally does get to the substance, Google ignores record evidence on which the jury could find in Oracle’s favor and misconstrues the law on key points, just as it did in its first JMOL motion. This motion should be denied.

ARGUMENT

I. ORACLE, NOT GOOGLE, IS ENTITLED TO JUDGMENT AS A
MATTER OF LAW ON ORACLE’S CLAIM FOR COPYRIGHT
INFRINGEMENT OF THE SSO OF THE 37 API PACKAGES

Google cannot establish judgment as a matter of law on Oracle’s copyright claim relating to the SSO of the 37 API packages. Google makes no serious effort to request this relief from the Court. Instead, Google simply refers back to its prior briefs and its proposed findings. They do not support its claim. The only conclusion the Court can reach on the evidence presented at trial is that the SSO is copyrightable and has been infringed. The uncontroverted testimony is that the design of the Java APIs is highly creative and original and is expressed in extensive detail; the Ninth Circuit decided more than 20 years ago that the SSO of computer programs is copyrightable; Google admits it engaged in extensive copying; and Google’s expert testified that the SSO of the APIs for the 37 packages is “virtually identical” in Android and in Java. Oracle’s recent motion for judgment as a matter of law (ECF No. 1044), Oracle’s proposed findings of fact and conclusions of law (ECF No. 1049), and its earlier copyright briefing set forth the arguments and evidence in detail. (See ECF Nos. 339, 611,780, 824, 833, 853, 859, 900, 956, and 986.)

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II. ORACLE PROVED THE CONTENTS OF THE WORK THAT WAS
REGISTERED AND THAT THE COPYRIGHTS COVER THE
COMPONENT PARTS AT ISSUE.

Google asserts technical challenges to Oracle’s copyright registration. The arguments are legally and factually incorrect. In addition, Google sandbagged Oracle by raising a last minute challenge to ownership. The Court should not consider this ownership argument.

A. Oracle Has Proved The Contents Of The Works At Issue

Oracle proved the contents of the registered works at trial. The J2SE 1.4 and J2SE 5.0 copyright registrations were admitted into evidence and claim on their face to cover “Java 2 Standard Edition 1.4” and “Java 2 Standard Edition, Version 5.0.” (TX 464, 475, 476.) The chief architect of the Java platform group at Oracle, Mark Reinhold, authenticated the full contents of both these platform versions. (RT at 689:21-691:23 (Reinhold); TX 622, 623.) Oracle is entitled to a presumption that the facts stated on the front of the copyright registrations are correct. 17 U.S.C. § 410(c) (certificate of registration “shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate”). Google “has the burden of rebutting the facts set forth in the copyright certificate.” United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 2011). It never did.

Because Google insisted on pursing this issue, Oracle submitted additional evidence of the contents of the copyright registrations. To register computer software, the Copyright Office requires the relevant form and 50 pages of source code, which can be submitted in redacted form to protect confidentiality. Copyright Office Circular 61. Oracle introduced the written source code deposit that was submitted with each of the registrations, and Dr. Reinhold testified that these deposits were part of the source code for versions 1.4 and 5.0 respectively. (RT at 2233:18- 2234:19 (Reinhold); TX 3530 (version 1.4); RT at 2234:20-2238:19 (Reinhold); TX 3529 (version 5.0).)

This was all Oracle needed to do to establish the validity of the registration. However, Oracle also submitted into evidence at the trial TX 1076, a copy of a disk submitted to the Copyright Office along with the registration. (See TX 1077-78.) Dr. Reinhold testified that the

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disk contains “the binary distribution of J2SE 5.0, together with documentation and some tools and things like that.” (RT at 2235:10-16 (Reinhold).)

Google challenges Oracle’s proof at trial claiming that Oracle failed to submit source code into evidence for various items. (See ECF No. 1043 at 3-4). All of these challenges are directed to TX 1076. (Swoopes Decl. ¶ 10.) As noted above, however, Dr. Reinhold never stated that Exhibit 1076 contains all of the source code. It contains the binary distribution for version 5.0 and documentation. (RT at 2235:11-16 (Reinhold).) The version 5.0 source code was admitted separately as Exhibit 623. (RT at 689:21-691:23 (Reinhold).)

The parties agree that Exhibit 623 contains all of the items Google claims are “missing.”¹ Exhibit 623 contains the source code for all 37 packages at issue, all of the redacted source code files submitted as the copyright registration deposit, and the source code for all eight files that Google decompiled. (Swoopes Decl. ¶ 1-4.) The fact that Exhibit 1076 does not also contain the source code is irrelevant. Oracle was not even required to submit a disk to the Copyright Office in the first place. That disk is further useful proof of the registered work, and there is no rule that it needed to be in source code form.

Google has not raised any real challenge to registration at all, and certainly a reasonable jury could conclude Oracle proved registration of the copyrighted works and their content. Google never presented any evidence to show that Exhibit 623 is anything else. The best Google could do was point out that there may have been an update created between October 2004 when Sun sent the disk to the Copyright Office and December 17, 2004 when the copyright was registered. (RT at 2236:2-2238:6 (Reinhold).) But Google did not show that there was such a release, that the later release is what was filed with the Copyright Office rather than version 5.0, or that a subsequent release varied in any material way. Dr. Reinhold referred to these periodic updates as “maintenance releases.” (RT at 2236:12-13 (Reinhold).)

________________________

¹ So that the Court would not be confronted with conflicting views of the evidence, Oracle’s counsel contacted Google’s counsel after receiving its brief and the two parties conferred and agreed that Exhibit 623 does in fact contain all of these materials. (Swoopes Decl. ¶ 1.)

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Google is also wrong on the law. A plaintiff can prove the contents of the registration in the same way it proves the content of any other document. Google claims that, “It is a fundamental requirement of a copyright claim that a plaintiff introduce into evidence a complete copy of the work on which it is suing.” (ECF No. 1043 at 2.) But the very first case Google cites for this proposition, Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204 (9th Cir. 1988) proves Google’s claim is wrong. The copyrighted work at issue in Data East was an arcade game. The plaintiff never produced the arcade game or a video of the arcade game at trial but instead relied upon still photographs as evidence of its audiovisual work. Id. at 207. The defendant made the same argument Google does here, claiming the plaintiff needed to put the actual arcade game before the court. Id. The Ninth Circuit disagreed:

The issue here, then, is whether sufficient evidence to support the district court’s findings as to the contents of the arcade game’s audio-visual work was present. Along with the photographs, testimony as to the content of the original was also presented. We find the still photographs, which depict all images and all moves that occur when the game sequences through the various skill levels, along with testimony, to constitute sufficient evidence of the contents of the arcade game’s audio-visual work to make a fair comparison with Epyx’s game.

Id.

Google’s other two cases also do not support its claim. Data East distinguished the second case Google relies upon, Seiler v. Lucasfilm, Ltd., because in that case, when the plaintiff introduced “reconstructions” of the copyrighted works, the defendant objected on “best evidence” grounds and the reconstructions were kept out because there was evidence that the plaintiff had fraudulently destroyed the originals. Id. (citing Seiler v. Lucasfilm, Ltd., 808 F.2d 1316, 1319 (9th Cir. 1987)). Google’s last case, Kodadek v. MTV Networks, Inc., 152 F.3d 1209 (9th Cir. 1998) has no application here either. In Kodadek plaintiff’s original copyright registration was improper because he never submitted his original drawings to the Copyright Office. Id. at 1212. Google makes no such claim here. Oracle complied with Copyright Office procedure by submitting the required application and source code deposits which, as noted above, Dr. Reinhold authenticated.

Google never made a best evidence objection when Exhibits 622 and 623 were introduced into evidence. (See RT at 689:19-691:19 (Reinhold).) There is no claim of fraud here, like there

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was in the Lucasfilm case, and no dispute as to copying.² Even if Google had some basis for saying that a subsequent maintenance update of version 5.0 was in fact what was filed with the Copyright Office Exhibit 623 still would be sufficient evidence of the content of what was filed “to make a fair comparison” with Android. Data East, 862 F.2d at 207. Google has not shown that any of this makes a bit of difference.

B. It Is Too Late For Google To Raise A Challenge To Ownership Based
On Alleged Contributions From Third Parties

On Wednesday, April 25, Google’s counsel argued for the first time that Oracle does not have ownership rights over the 37 API packages at issue because third parties contributed to them. Google’s belated challenge to ownership is classic sandbagging. Google had many opportunities to raise this argument previously, and was obligated to do so, but did not. Moreover, Google represented to Oracle and the Court on the third day of Oracle’s case-in-chief that it was not disputing ownership. Google changed its position literally at the end of trial. It is too late for Google to raise this ownership challenge now.

Google stated it was only going to pursue this as an alternative argument in the event Oracle designated the copyright as a “collective work.” (See ECF No. 1007 at 1-2 (“To 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.”). See also ECF No. 984 at 11 (“If, however, the Court accepts Oracle’s ‘collective work’ argument, then Google is entitled to judgment as a matter of law of noninfringement of each of the component parts of the registered works, because Oracle has not proved authorship of the constituent elements.”).) Oracle withdrew its characterization of the registration as “collective work” in part based on Google’s representation in its April 25 brief.

_______________________

² There is no doubt what Google copied here. Google’s statement of work with its outside contractor, Noser Engineering, required Noser to implement each of the 37 accused packages in Android in accordance with J2SE 1.5 (another name for J2SE 5.0). (TX 30.) Google stipulated that the jury would be told that, “For the 37 accused API packages, Android and Java 2 SE Version 5.0 have substantially the same selection, arrangement and structure of API elements” and this stipulation was read to the jury. (ECF No. 946 at 1, RT at 1337: 21-24.)

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(See RT at 2134:11-17, 2134:7-11.) Because Google has not withdrawn its argument, however, Oracle will take the Court up on its offer to file a motion on this issue and will do so immediately.

C. Oracle Is The Author Of The Works At Issue

In any event, even if Google is permitted to raise its untimely challenge to ownership now, Oracle is the author of the works at issue.

A copyright registration is “prima facie evidence of the validity of the copyright and the facts stated in the certificate.” 17 U.S.C. § 410(c). “A certificate of registration raises the presumption of copyright validity and ownership.” Dream Games of Ariz., Inc. v. PC Onsite, 561 F.3d 983, 987 n.2 (9th Cir. 2009). That presumption applies equally to underlying derivative works. The Ninth Circuit recently considered this issue in a similar context in United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255 (9th Cir. 2011). In United Fabrics, the plaintiff held a copyright on a collection of fabric designs. The defendant, Macy’s, challenged United’s entitlement to pursue a copyright infringement claim on a design that United purchased from an Italian design house and then modified. Id. at 1257. The district court dismissed the action, finding that United had “not clearly established the chain of title giving it rights in the source artwork” because its evidence of transfer did not clearly establish ownership of the underlying design. Id. The Ninth Circuit reversed, holding:

United did not have to produce any evidence. As the copyright claimant, United is presumed to own a valid copyright, 17 U.S.C. § 410(c), and the facts stated therein, including the chain of title in the source artwork, are entitled to the presumption of truth.

Id. at 1258. The Court thus rejected defendant Macy’s challenge to title: “Macy’s argues that United failed to establish the chain of title to the underlying artwork and therefore does not have a valid copyright. But Macy’s skips a step; nowhere does it set forth facts that rebut the presumption of validity to which United’s copyright is entitled….” Id. at 1257.

Like the defendant’s argument in United, Google’s challenge to ownership “skips a step.” Google’s motion does not point to any evidence showing that Oracle is not the owner of these copyrights. It simply argues that Oracle failed to meet its burden. (See ECF No. 1043 at 5-7.) The mere fact that the registration refers to “licensed in components” does not show that Oracle

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does not own the copyrights to the works asserted here. A copyright claimant may acquire ownership through a transfer of rights. 17 U.S.C. § 201(d).

The point of that was to verify that the code we were – that Sun was open sourcing, Sun had all the rights to. There were some bodies of code which Sun had licensed from other companies under terms that didn’t allow Sun to open source it, so we couldn’t open source those segments. So we had to review every single line, every line in every file, to make sure that what we were releasing under the GPL, we were allowed to review.

RT at 2231:10-25. Dr. Reinhold testified that he did a similar review for the 37 API packages at issue and found “that Sun had a copyright notice in every single one of the API class source files.” Id. at 2231:24-2232:4. He identified the one area where part of the APIs were copyrighted jointly between Sun and Taligent or IBM, several classes in java.text, and related classes in java.util. Id. at 2232:5-23. Dr. Reinhold testified that he was personally involved in this project and that Sun “worked closely with an engineer from Taligent to revise [the code], to make it fit into the rest of the Java platform. And that’s why there are joint copyright notices with Sun in those files.” Id. at 2233:2-17.³ Dr. Reinhold testified further that nobody has ever asserted that Sun does not own all right, title and interest to the 37 packages. Id. at 2254:23-2255:1. Google does not cite any evidence contradicting Dr. Reinhold’s testimony. Oracle also introduced into evidence the copyright registrations for the prior versions of the Java platform. See TX 450-455, 460-463, 509-511, 513, 518, 520-526.

________________________

¹ As mentioned above, the source code for J2SE 5.0 is in evidence as exhibit 623. It shows the copyright notices to which Dr. Reinhold referred. (See TX 623, Swoopes Decl. ¶ 5.) During Dr. Reinhold’s examination, the Court asked a question about areas in the source code that do not have an affirmative copyright notice. (RT at 2252:7-2253:7.) There is only one such segment of code in the APIs at issue, a small segment of code written by Josh Bloch. (TX 623, Swoopes Decl. ¶ 5.) Dr. Bloch was employed by Sun. (RT at 732:5-7.)

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Dr. Reinhold also testified that 7 or 8 of the API packages at issue were released before the JCP process was instituted, and that Sun was the specification lead as to all of the JSRs (Java Specification Requests) relating to the 37 API packages (RT at 2239:16-23). Dr. Reinhold described the role of the specification lead in his earlier testimony: “So a specification lead at the end of the day is responsible for all technical aspects of an API design.”(RT at 593:22-594:1). See also RT at 709:3-5 (specification lead is “the person who is in charge, broadly speaking, of developing a particular API”). These facts further confirm that Sun was the author of the 37 API packages at issue. An author is “the person to whom the work owes its origin and who superintended the whole work, the ‘master mind.’” Aalmuhammed v. Lee, 202 F.3d 1227, 1233 (9th Cir. Cal. 2000) (citing Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1883); see also id. at 1232 (“authorship is not the same thing as making a valuable and copyrightable contribution.”).

Google has not shown that it is entitled to judgment as a matter of law on ownership.

III. GOOGLE’S IMPLEMENTATION OF THE SSO OF THE 37 JAVA API
PACKAGES INTO ANDROID IS A DERIVATIVE WORK OF ORACLE’S
SPECIFICATIONS

Oracle’s derivative work claim is that by deliberately basing Android on the structure, sequence, and organization (“SSO”) of the 37 Java API packages as expressed in Oracle’s API documentation, Google created a derivative work. Numerous cases hold copying structure in this way constitutes infringement.

Google claims that Oracle’s derivative work allegation is “nothing but an assertion that Google’s expression infringes Oracle’s ideas.” (ECF Dck. No. 1043 at 7). But the law does not consider the structure of a writing to be unprotectable ideas when they are taken en masse as Google did here. In Sheldon v. Metro-Goldwyn Pictures Corp., Judge Learned Hand found copyright infringement when the defendant created a movie that copied much of the detailed plot outline of the plaintiff’s play, although the movie included none of the dialogue and changed many specifics: “The play is the sequence of the confluents of all these means, bound together in an inseparable unity; it may often be most effectively pirated by leaving out the speech, for which a substitute can be found, which keeps the whole dramatic meaning. That as it appears to us is

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exactly what the defendants have done here; the dramatic significance of the scenes we have recited is the same, almost to the letter.” 81 F.2d 49, 50-56 (2nd Cir. 1936) (emphasis added). See also Twentieth Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327 (9th Cir. 1983) (reversing district court decision as to whether plots of Star Wars and Battlestar Galactica were sufficiently similar to form basis for copyright infringement claim).

Courts have applied the reasoning in Sheldon to cases involving infringement of computer programs. The court in eScholar LLC v. Otis Educ. Sys., Inc., for example, compared the copyright protection of the structure of a computer program to protection afforded the plot elements in Sheldon. 2005 U.S. Dist. LEXIS 40727, at *25 (S.D.N.Y. Nov. 3, 2005). In Micro Star v. Formgen, Inc., the Ninth Circuit applied a similar analysis in reversing the district court and remanding for entry of a preliminary injunction because plaintiff had shown it was likely the defendant created an infringing derivative work of its video game. 154 F.3d 1107, 1114 (9th Cir. 1998). The court rejected defendant’s argument that it had not copied plaintiff’s actual expression because it used different artwork, and held that the preliminary injunction should be entered because the defendant had misappropriated the elements of the plaintiff’s story:

In particular, Micro Star makes much of the fact that the fact that the N/I MAP files reference the source art library, but do not actually contain any art files themselves. Therefore, it claims, nothing of D/N-3D’s is reproduced in the MAP files. In making this argument, Micro Star misconstrues the protected work. The work that Micro Star infringes is the D/N-3D story itself—a beefy commando type named Duke who wanders around post-Apocalypse Los Angeles, shooting Pig Cops with a gun, lobbing hand grenades, searching for medkits and steroids, using a jetpack to leap over obstacles, blowing up gas tanks, avoiding radioactive slime.

Id. at 1112.

Likewise, in SAS Inst., Inc. v. S&H Computer Sys. Inc., 605 F. Supp. 816, 830 (M.D. Tenn. 1985), the court held defendant created an infringing derivative work that was “based on” the SAS statistical analysis software by copying its structure. The defendant tried to downplay its copying by emphasizing there were only 44 examples where it had coped specific lines of code, but the court flatly rejected the argument: “In addition, the copying proven at trial does not affect only the specific lines of code cited by Dr. Peterson in his testimony. Rather, to the extent that it

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represents copying of the organizational and structural details of SAS, such copying pervades the entire S&H product.” Id. (emphasis added).

The reasoning of these cases applies equally to Google’s use of Java’s API structure in Android. As with the plot elements in Sheldon, Twentieth Century-Fox Film and Micro Star, and the structure of the software in eScholar and SAS, even though ideas behind particular individual elements in the documentation for the 37 API packages that Google copied may not be copyrightable, Google chose to copy the protectable selection, structure, sequence and organization of the Java APIs. The copying was much more extensive here, moreover, than in those cases. The uncontroverted evidence showed Google copied thousands of elements expressed in Oracle’s documentation, and the relationships among them, in nearly identical fashion, and effectively gave all of the elements the same “dramatic meaning” within that copied structure. Sheldon, 81 F.2d at 56. As in SAS, Google’s deliberate copying of the SSO “pervades the entire” 37 Android API packages, notwithstanding Google’s claim that, apart from the thousands of lines of source code expressing declarations and the 11 copied files, it wrote most of its source code itself. SAS, 605 F. Supp. at 830.

The Court should enter JMOL in Oracle’s favor, not Google’s, on the derivative work claim, because the evidence of copying was undisputed at trial and no reasonable jury could find Google coincidentally wound up with 7000 identically named and organized API elements. Google engineers Bob Lee and Dan Bornstein both confessed that they were looking at the specifications on the Sun website while implementing the APIs. (RT at 982:25-983:18 (Lee); 1836:19-1837:2 (Bornstein).) Google expert Owen Astrachan conceded that the structure of the 37 Android APIs is “virtually identical” to the Oracle APIs. (RT at 2214:6-9 (Astrachan) (“Q. And the Structure, Sequence and Organization of the API elements is virtually identical across those 37 packages, correct? A. That’s right.”).) 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?

A. I think that's one analogy that’s reasonable.

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(RT at 2215:2-5 (Astrachan).)

Google thus copied Oracle’s extremely detailed outline into the Android code. If the Court concludes that the Java class library SSO is protectable, the conclusion that Google created an infringing derivative work follows as a matter of law.

IV. THE NAMES AND DECLARATIONS ARE PROTECTABLE AS PART OF
THE SSO OF THE 37 JAVA API PACKAGES

Attempting to bootstrap the Court’s prior ruling that individual names are not protectable under the “words and short phrases” doctrine, Google moves without legal or factual support for judgment that its use of declarations as well as names from the 37 Java API packages is not infringement. 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 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.

As the Court properly instructed the jury:

While individual names are not protectable on a stand-alone basis, names must necessarily be used as part of the structure, sequence, and organization and are to that extent protected by copyright.

(ECF No. 1017 at 10.) This instruction 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

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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”).

Sega Enter., Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1993), the only case Google cites in support of its argument, is not to the contrary. Google relies on Sega’s footnote statement in dicta that “Sega’s security code is of such de minimis length that it is probably unprotected under the words and short phrases doctrine.” 977 F.2d at 1524. But in the same footnote, the court distinguished protection of security code in Atari Games Corp. v. Nintendo of Am. Inc., 975 F.2d 832 (Fed. Cir. 1992) on the basis that “creativity and originality went into the design of that program.” Id. Unrebutted evidence here established that the choice of names and declarations in the 37 Java APIs was highly creative and original and an essential part of the SSO of the APIs. The API designers thoughtfully selected thousands of names for aesthetic purposes and consistency. (RT at 628:2-21 (Reinhold); TX 624 (Bloch presentation) at 17 (“Code should read like prose.”); RT at 746:20-748:13 (Bloch); RT at 1248:14-20 (Mitchell).) The names and declarations are organized within the same complex and creative structure as the API elements they label, and Oracle’s selection and arrangement of those names and declarations is copyrightable.

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 otherwise.”).)

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. Two examples of longer declarations from the source code include:

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

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

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SignatureException;
• In java.nio.channels (class declaration):

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

TX 623.

These declarations are in source code, and are long enough that they may be protectable on their 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”). But of course, Oracle is not asserting infringement based on Google’s copying of these declarations alone, but based on copying of the SSO of the 37 Java API packages, which includes thousands of these declarations.

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 Android. (RT at 1783:23-1785:4 (Bornstein).) Google did not have to copy the 37 packages. Google’s own expert admitted that Google could have designed its own APIs. (RT at 2212:25-2213:10 (Astrachan).) Every other witness at the trial confirmed the same thing. (See, e.g., RT at 684:16-685:24 (Reinhold) (no need to use Oracle APIs); RT at 1335:9-24 (Mitchell) (no need for Google to use Oracle APIs); RT at 290:15-291:9 (Ellison) (same).) Google chose not to take the time and incur the expense of doing so.

Moreover, the evidence at trial showed Google chose only a subset of the full group of Java API packages, and that Android is incompatible with Java, damaging Java’s “write once / run anywhere” promise. (RT at 1007:6-11 (Morrill); RT at 1331:16-1332:2, 2287:23-2288:5 (Mitchell); 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?

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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).)

Google took what it wanted and left the rest. By doing so, it disrupted many years of effort by members of the Java community at maintaining Java compatibility. Google cannot hide behind compatibility to try to justify its conduct here.

V. GOOGLE’S LITERAL COPYING IS NOT DE MINIMIS

Google admits that it copied protected Java code into twelve Android code files but argues that the copying was de minimis.⁴ 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.” ECF No. 1018, JI 28; Fisher v. Dees, 794 F.2d 432, 434 n.2 (9th Cir. 1985).

A de minimis defense is closely related to the requirement of substantial similarity. Situation Mgmt. Systems Inc. v. ASP. Consulting LLC, 560 F.3d 53, 58-59 (1st Cir. 2009). “Substantiality is measured by considering the qualitative and quantitative significance of the copied portion in relation to the plaintiff’s work as a whole.” Newton v. Diamond, 388 F.3d 1189, 1195 (9th Cir. 2004); see also Merch. Transaction Sys., 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.”). “Where substantial similarity exists and the fair use doctrine, as here is inapplicable, ‘the overwhelming thrust of authority upholds liability even under circumstances in

_______________________

⁴ The Court’s instructions provide that Oracle has the burden of proving that “the part copied was more than de minimis when compared to the work as a whole.” ECF 1017, JI 24. As previously briefed, it is Oracle’s position that this is error and Google has the burden of proof on its de minimis defense. See, e.g., Sandoval v. New Line Cinema Corp., 147 F.3d 215, 217 (2d Cir. 1998), 26 F.3d 70, 74 (2d Cir. 1997), quoting Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70, 74 (2d Cir. 1997) (“To establish that the infringement of a copyright is de minimis, and therefore not actionable, the alleged infringer must demonstrate that the copying of the protected material is so trivial ‘as to fall below the qualitative threshold of substantial similarity, which is always a required element of actionable copying.’”)

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which the use of the copyrighted work is of minimal consequence.’” Situation Mgmt. Sys., 560 F.3d at 59, quoting 2 Nimmer & Nimmer, Nimmer on Copyright, § 8.01[G], at 8-26.

Here, Oracle presented evidence that Google literally copied either the entirety of the accused files or a quantitatively or qualitatively significant portion. That evidence was more than sufficient for a reasonable juror to conclude that the copied code was not “so meager and fragmentary” as to be unrecognizable as an appropriation.

A. Google’s Copying Of rangeCheck Was Not De Minimis.

The evidence established the qualitative significance of the copied rangeCheck method. rangeCheck is included in one of the 37 API packages primarily at issue. (RT 1254:19-1255:2 (Mitchell).) The rangeCheck method operates on Android mobile devices, and the rangeCheck “code appears in the source code archive of Samsung,” indicating that it “very likely appears on the Samsung phones.” (RT at 1255:22-25, 1264:19-23 (Mitchell).) Professor Mitchell testified that the rangeCheck method is qualitatively significant and “useful” to Android as part of the API libraries. (RT at 1316:17-19 (Mitchell).) He testified that he analyzed the significance of rangeCheck to other code in the same class file and found “a number of other source code [sic] in other files” that called upon it. (RT at 1329:9-14 (Mitchell).)

In addition, to further determine the significance of the rangeCheck method, Professor Mitchell also 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?

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 at 1329:9-21 (Mitchell).)

Google presented no evidence rebutting any of this testimony. Google argues that Professor Mitchell did not “offer any testimony about the qualitative significance of the calls to

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rangeCheck” (ECF 143, at 11), but in fact Professor Mitchell did indicate that this was a large number, stating that “2600 seems like a pretty big number for the number of calls to this function.” (RT at 1329:20-21 (Mitchell).)

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 (Mitchell) (emphasis added).) In fact, 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 (Mitchell).) 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 writing the method so simple. (RT at 815:13-16 (Bloch); see also id. at 755:6-8 (Bloch).)

More importantly, the ease or difficulty of creating this code is not relevant to whether Google’s copying was de minimis. Professor Mitchell’s unrebutted testimony supports that the copied rangeCheck method was qualitatively significant—that is, not “so meager and fragmentary that compared to the work as a whole the average audience would not recognize the appropriation.” (ECF 1017, JI 28.)

Google argues that copying of rangeCheck was not quantitatively significant because it represented only 13 of the 3,179 lines in the Arrays.java file or “less than three-tenths of one percent of the work as a whole.” (ECF 1043, at 11.) Courts have found in the fair use context, however, that copied segments of similar comparable length to the work as a whole were quantitatively substantial. In Roy Export Co. v. CBS, Inc., 503 F.Supp.1137, 11145 (S.D.N.Y. 1980), for example, the court held that the jury could reasonably have found use of film excerpts, including a fifty-five second excerpt from a one hour and twenty-nine minute film—less than two percent—was “quantitatively substantial.”

In any event, “[e]ven if a copied portion be relatively small in proportion to the entire work, if qualitatively important, the finder of fact may properly find substantial similarity.”

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Baxter v. MCA, Inc., 812 F.2d 421, 425 (9th Cir. 1987); see also 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) (even if 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.”). In Baxter, the Ninth Circuit upheld denial of summary judgment for the defendant even assuming the similarity between the two musical works could be reduced to six-note sequence and cited a long line of cases finding substantial similarity even where the copied portion was a very small fraction of the work as a whole. 812 F.2d at 425; see also Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 565-66, 579 (1985) (holding in fair use context that copying of 300 words from 200,000 word manuscript of presidential memoir was substantial).

B. 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 at 1262:13-1263:4 (Mitchell).) 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 at 1263:9-10 (Mitchell).)

Google argues that the comments are not qualitatively significant because “they have absolutely no effect on any compiled code.” (ECF 1043, at 12.) But Google cannot just freely copy comments to code written by others because they are not compiled. Comments in computer programs warrant protection from copying under copyright law because they represent an expressive element of a computer program. See, e.g., Merch. Transaction Sys., 2009 U.S. Dist. LEXIS 25663, at *52 (noting “commenting” as among the discretionary, creative and therefore protectable aspects of programming); 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”); see also Aharonian v.

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Gonzales, No. C04-5190, 2006 U.S. Dist. LEXIS 13, 14-15 (N.D. Cal. Jan. 3, 2006) (noting that programmer has “great discretion . . . how to comment the code”).

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

C. Google’s Copying Of Eight Decompiled Files—the Eight “Iml” and
“ACL” Files—Was Not De Minimis.

The evidence showed that Google decompiled eight Java files and copied them each in their entirety. By definition, the copied code was qualitatively and quantitatively significant to each file. No reasonable jury could find otherwise.

Google’s response is to raise yet another technical argument, complaining that adequate evidence of copying was not presented. But the source code for the copied files was admitted (TX 623; 623.2-623.8)⁵, decompiled versions of the Java code files were admitted, and corresponding decompiled Android code files were admitted (TX 1031-1040). Professor Mitchell testified at length about the decompilation process, how he determined that the eight files were decompiled and how, in a side-by-side comparison he found “that the actual code matches completely. (RT at 1259:16- 1260:18 (Mitchell).) Dr. Mitchell showed the jury a side-by-side comparison of 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, PermissionImpl.class, PrincipalImpl.class, AclEnumeratorImpl.class. (RT at 1259:16-25; 1260:5-18 (Mitchell).) And Dr. Mitchell walked the jury through another side by side comparison of OwnerImpl.java from both Java and Android

________________________

⁵ Google again mistakenly states that only 7 files were admitted. All 8 files are contained in these exhibits, but two of the copied files are contained in a single exhibit. (Swoopes Decl. ¶ 2; see TX 623.4.)

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(TX 623.6). (RT at 1261:14-1262:2 (Mitchell).) The copied Android files were also identified in Exhibit TX 1072. (See RT 1334:18-1335:7 (Mitchell).) Dr. Reinhold also authenticated the copied Oracle source code files. (See RT at 693:2-694:14.)

Despite all of this, Google seems to be complaining now that Dr. Mitchell did not further identify the names of the copied files he examined. (ECF No. 1043 at 13.) But if Google had some issue with the foundation for Dr. Mitchell’s testimony it needed to object. It never did. There was more than ample evidence for the jury to conclude that Google engaged in this copying, particularly since Google chose not to have its own expert—or any other witness— refute it.

In addition, though no further proof was necessary, the evidence showed that the decompiled code is also qualitatively significant to more than the files from which they were taken. The eight Oracle files concern the security governing access to files in a network. Dr. Mitchell testified that “[t]hey 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 at 1329:22-1330:5 (Mitchell).) 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 at 1319:1-3 (Mitchell).) Dr. Mitchell testified that they are not test files as used by Oracle. (RT at 1330:6-11 (Mitchell).) 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 at 1330:6-1331:5 (Mitchell).)

VI. ANDROID’S SPECIFICATIONS INFRINGE ORACLE’S COPYRIGHTS

Google copied the Java API specifications for the 37 packages into Android’s specifications. It did so in three ways: it copied the selection, structure, organization and sequence of the Java APIs; it copied the selection and arrangement of the names; and it copied the English language definitions by paraphrasing them. Google wants the Court to view each of these elements in isolation. As a result there is a striking similarity between the documentation

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for these 37 packages for the two platforms. For roughly 11,000 pages, Android’s packages are laid out in the same organization, with thousands of the same names, nearly all the same packages, classes and methods and a paraphrased English definition next to each.

The Court should consider Google’s extensive copying of these three elements together when evaluating Google’s documentation copying. See, e.g., Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1447 (9th Cir. 1994) (works should be “considered as a whole” under intrinsic test, including protectable elements and selection and arrangement of unprotectable elements). See also L.A. Printex Indust., Inc. v.Aeropostale, Inc., 2012 U.S. App. LEXIS 7079 (April 9, 2012) (holding plaintiff’s original selection, coordination, and arrangement of fabric design was protectable and remanding for jury determination of substantial similarity) Collectively, and individually, they establish copyright infringement.

A. Google Should Be Held Liable For Its Admitted Copying of The SSO
From Java Documentation Into Android Documentation

The SSO of documentation is protectable. In Jacobsen v. Katzer, for example, the court followed the Supreme Court’s decision in Feist to hold that the “selection, ordering and arrangement” of text files reflecting decoder information from model railroad manufacturers was protected by copyright. 2009 U.S. Dist. LEXIS 115204, at *9-10 (N.D. Cal. Dec. 10, 2009). See also Key Publ’n v. Chinatown Today Publ’g Enter., 945 F.2d 509 (2d Cir. 1991) (holding business directory copyrightable because of selection of businesses and arrangement of businesses into categories).

Baker v. Selden stands for the proposition that the description in a document may be copyrightable even when the underlying system it describes is not. Baker v. Selden, 101 U.S. 99 (1879). In Situation Mgmt. Sys., the First Circuit applied this principle in reversing the district court and extending copyright protection to the plaintiff’s training materials for teaching effective techniques of communication and negotiation within the workplace. Situation Mgmt. Sys., 560 F.3d at 61 (1st Cir. 2009). As the court explained, “[t]he fact that SMS’s works describe processes or systems does not make their expression noncopyrightable. . . SMS’s creative choices in describing those processes and systems, including the works’ overall arrangement and

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structure, are subject to copyright protection.” Id. (emphasis in original). Though “others may freely describe that process or system by using their own original expression,” they “may not appropriate SMS’s expression when describing that process or system.” Id.

As the Seventh Circuit explained in Am. Dental Ass’n v. Delta Dental Plans Ass’n, in affording copyright protection to American Dental Association code on dental procedures and nomenclature:

Section 102(b) permits Delta Dental to disseminate forms inviting dentists to use the ADA’s code when submitting bills to insurers. But it does not permit Delta to copy the Code itself, or make and distribute a derivative work based on the Code, any more than Baker could copy Selden’s book.

126 F.3d 977, 980-81 (7th Cir. 1997). The court stated 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).

Unlike Baker v. Selden and Situation Mgmt, in this case the structure that is described by the Java API documentation is itself copyrightable because it is the structure of a computer program. Johnson Controls, 886 F.2d at 1175 (9th Cir. 1989). The parties agree here that the structure expressed in the documentation is the same as the structure expressed in the source code. (See RT at 606:14-608:3 (Reinhold) (code is run through Java Documentation Extractor to pull out structure and English language comments); ECF No. 1043 at 14 (“the documentation is generated by an automated program, such that the SSO of the documentation is a natural derivative of the SSO of the API packages it represents.”).) The structure is no less protectable in documentation than it is in the code.

Google did not dispute copying the SSO in the documentation was not disputed by Google at trial and does not do so here. Dr. Mitchell testified to comparing the documentation side by side on the web:

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

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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).)

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 at 1249:18-25 (Mitchell).)

Google’s expert confirmed the SSO for the 37 packages is virtually identical:

Q. We have the 37, where the API is virtually identical, correct?

A. Correct.

Q. And the Structure, Sequence and Organization of the API elements is virtually identical across those 37 packages, correct?

A. That’s right.

(RT at 2214:3-9 (Astrachan).) Google developer Bob Lee agreed. (RT at 1174:9-12 (Lee) (Q. And the structure of the documentation is identical, correct, sir? And if you think of it as an outline, the outline would match identically, correct, sir? A. Yes.).)

Google does not claim in this motion that the SSO for documentation is generally unprotectable or that it did not copy. Rather it argues that the Java APIs generally is not copyrightable, whether expressed in code or in documentation. That, of course, is the larger issue being decided by the Court. Google’s only other argument is that because the documentation is generated automatically, Oracle’s claim for infringement of the documentation “collapses” into its claim for infringement of the SSO of the code. (ECF No. 1043 at 17-18.) This argument makes no sense. Accepting Google’s logic would lead to the perverse and unacceptable result that the Court can find Google infringed by copying the SSO in the source code but that Google somehow remains free to distribute documentation describing the same copyrightable structure.

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Google infringes Oracle’s copyrights in more than one form. Oracle is entitled to relief from that infringement as to all of the forms in which it occurred. In Am. Dental Ass’n v. Delta Dental Plans Ass’n, the structure of the dental code that organized various dental procedures into a hierarchy was represented in three formats—numerically, by short description, and by long description. 126 F.3d at 980-981. The court found each format was protectable. (“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.”) Google cites no case law to support “collapsing” Oracle’s claims by dismissing one in Google’s favor.

B. Android’s English-Language Descriptions Were Copied From The
Java API Specifications.

The evidence at trial also showed that Google engineers copied Oracle’s English language descriptions into Android. Google claims that Oracle failed to introduce sufficient evidence at trial to support a finding of infringement because it limited its proof to three examples. This misrepresents the record at trial.

Google’s copying was so extensive that Oracle could not possible have displayed all of it to the jury. While Android developer Bob Lee did testify regarding three examples that were shown to him, he acknowledged that these examples were representative of the copying that occurred:

Q. So you would expect the same level of similarity that the jury has seen in these examples so far across the documentation for the 37 package, sir?

A. Generally, yes.

(RT at 1175:25-1176:3 (Lee).) One of the examples is shown below:

J2SE 5.0	Android
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.

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Mr. Lee also admitted that the English-descriptions in Android were paraphrased from Sun’s documentation and were therefore “substantially similar.” (RT at 1191:4-13 (Lee).) 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.

Id.

Based on Mr. Lee’s admission that the English-language descriptions in the Android specifications were paraphrased from the Java specifications, that they were substantially similar, and the English language descriptions that were provided, a reasonable jury could find for Oracle on this claim.

VII. THE EVIDENCE SHOWS THE INDIVIDUALLY COPIED CODE FILES
WERE OWNED BY ORACLE

Google also tries to raise a last minute ownership challenge to the 11 individual files that it copied. As discussed in section II.B, it is far too late for Google to make this argument now. The challenge is also baseless. Google does not offer any proof that anyone other than Sun employees wrote the code. Josh Bloch testified that he authored the rangeCheck code while he was working for Sun. (RT at 754:17-755:8 (Bloch).) The source code for each of the eight files that Google decompiled and copied bears a copyright notice for Sun, indicating that Sun had determined in the course of its 2006-07 audit that it owned the rights to the code. (Swoopes Decl. ¶ 5; Ex. 623; RT at 2231:6-2232:4 (Reinhold).)⁶ The source code for the two files from which Google copied comments also bear Sun copyright notices. (Swoopes Decl. ¶ 5; Ex. 623.)

__________________________

⁶ Google’s claim that Oracle’s submission of code from J2SE 5.0u22 as well as version 5.0, excuses its copying is baseless. (See ECF No. 1043 a5 4 n. 5). Copying the same material from a later version of a work infringes the underlying copyright: “The established doctrine prevents unauthorized copying or other infringing use of the underlying work or any part of that work contained in the derivative product so long as the underlying work itself remains copyrighted.” Russell v. Price, 612 F.2d 1123, 1128 (9th Cir. 1979). Google does not claim that the code it decompiled and copied is not present in any sub-release of J2SE 5. Regardless of which sub-release it copied, Google is liable. Further, Oracle introduced the registration for J2SE 6.0 at trial as well. See TX 659.

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VIII. GOOGLE’S COLLECTIVE WORKS OWNERSHIP CHALLENGE IS
MOOT

Google’s challenge to authorship based on Oracle characterizing its copyrighted works as “collective works” is now moot. Oracle withdrew the characterization of the registered works as “collective works,” in part in response to Google’s complaint. (See RT at 2134:11-17, 2134:7- 11). However, as shown in Sections II.B. and VII above, Google has waived any right to challenge ownership and has failed to show that Oracle does not own the copyrighted works in any event.

IX. ORACLE’S COPYRIGHT CLAIMS ARE NOT BARRED BY LACHES,
EQUITABLE ESTOPPEL, WAIVER OR IMPLIED LICENSE

Google does not cite one fact or case supporting its equitable defenses. Oracle’s Proposed Findings of Fact and Conclusions of Law, filed on May 2, 2012 (ECF No. 1049), and its Response to Google’s Proposed Findings of Fact and Conclusions of Law (ECF No. 1081) which Oracle incorporates herein by reference, demonstrate that Google has failed to carry its burden of establishing equitable defenses of laches, equitable estoppel, waiver or implied license.

CONCLUSION

Google has not shown that it is entitled to judgment as a matter of law on any aspect of Oracle’s copyright claims. Google’s motion should be denied in its entirety.

Dated: May 7, 2012

MORRISON & FOERSTER LLP

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

Attorneys for Plaintiff
ORACLE AMERICA, INC.

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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 OBJECTION TO ORACLE’S
RESPONSES TO GOOGLE’S PROPOSED
FINDINGS OF FACT AND
CONCLUSIONS OF LAW

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

---

Defendant Google Inc. (“Google”) hereby objects to Oracle’s Responses to Google’s Proposed Findings of Fact and Conclusions of Law [Dkt. 1081] (“Oracle’s Responses”). The Court should direct Oracle to conform its Responses to the format and page limit required by the Court’s April 24, 2012 Order Regarding Proposed Findings of Fact and Conclusions of Law Re All Issues of Fact and Law That Must be Resolved by the Judge, Including Scope of Protection of the Copyrights (the “Order”) [Dkt. 968].

In the Order, the Court instructed the parties to provide numbered findings of fact, double-spaced, followed by single-spaced trial record cites supporting the proposed finding. Both parties followed this format. The Court also instructed each party to file a response to the other party’s proposed findings and conclusions. The Court ordered that the responses “should reproduce each original finding and conclusion, and then, immediately after each, supply the responsive information. It may not exceed twice the overall number of pages used by the submission to which it responds.” The purpose here is straightforward: to include all relevant information relating to each party’s proposed findings and conclusions in one document. The Court would then have one document with Google’s findings and conclusions (including Google’s supporting evidence and authorities) and Oracle’s responses (including Oracle’s supporting evidence and authorities), with half of the space devoted to Google’s position, and half to Oracle’s position. The Court would have a similar document for Oracle’s findings and conclusions. Google provided such a document in its responses to Oracle’s proposed findings and conclusions. Dkt. 1079.

Instead of simply “reproduc[ing]” Google’s proposed findings and conclusions, together with Google’s evidence and authorities, Oracle deleted all of Google’s record citations, excerpts, and case authority and converted Google’s proposed findings and conclusions to single-spaced type. This reduced Google’s 35 pages of proposed findings and conclusions to 12 pages. Nevertheless, Oracle’s Responses were 70 pages long. Thus, instead of the 35 pages to which it was entitled, Oracle gave itself a 58-page response. In addition to allowing Oracle extra space, Oracle’s strategy allows it to criticize Google for not citing on-point evidence when the very

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quotes omitted by Oracle often provided just that evidence.

For these reasons, Google objects to Oracle’s Responses. The Court should direct Oracle to file revised responses in compliance with the Court’s order.

Dated: May 7, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

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1098

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

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

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

Attorneys for Plaintiff
ORACLE AMERICA, INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. CV 10-03561 WHA

ORACLE AMERICA, INC.’S
MOTION TO PRECLUDE GOOGLE
FROM DISPUTING OWNERSHIP

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

---

Oracle submits this motion pursuant to the Court’s statement at trial on April 27, 2012 inviting Oracle to file a motion regarding whether Google should be precluded from disputing ownership. (See RT at 2130:8-2131:19.)

INTRODUCTION

On Wednesday, April 25, Google argued for the first time that Oracle does not have ownership rights to the copyrighted works at issue because third parties may have contributed to them. Google never identified this issue previously in the numerous pre-trial filings the parties made to the Court. Google did not identify third-party contribution as an issue in the parties Joint Pre-Trial Order, it did not request a jury instruction on ownership, it did not identify this as an issue in its trial brief, and it did not include this in the extensive briefing the parties were ordered to complete in March 2012 setting forth the major liability issues for trial. Google’s newfound position also squarely contradicts the representation it made to Oracle and the Court during the first week of trial, when it stated, consistent with its prior conduct, that Google was “not disputing ownership of the copyrights.” (RT at 713:7-23.)

The Court has a process in place for preventing this type of ambush. Google had many opportunities along the way to identify this as an issue for trial, and was obligated to do so. It is far too late for Google to raise this issue now. Oracle asks that Google be held to its word and that the Court preclude Google from disputing ownership on the basis that any third party may have contributed to the copyrighted works.

ARGUMENT

I. GOOGLE’S “COLLECTIVE WORK” ARGUMENT IS A PRETEXT

Google’s explanation to the Court for raising the third-party ownership issue so late has been inconsistent, and is contradicted by the record. When Google raised the ownership issue on April 25, the reason it gave was that Oracle had supposedly stated in a recent brief for the first time that Java SE 5.0 had been registered as a collective work. (RT at 1661:6-9 (raising “[s]ome very hairy copyright issues that arise because of what they said in their last brief that they just filed this past Monday.”); see also RT at 1670:14-17 (“Mr. Jacobs said this is a surprise. As I

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started when I said, two weeks ago they said it’s not a compilation. This Monday they said it’s a collective work, in their brief this Monday.”).)

By the next morning, however, Google’s position had completely shifted. When Oracle demonstrated to the Court that it had made the collective work assertion previously, Google did an abrupt about face, and stated the issue had been in the case all along. (See RT at 1885:16-20 (“That second issue about whether or not these copyrights give them any protection in the underlying individual code files, that is exactly the 103(b) issue that we discussed yesterday. We’ve known about this issue for a long time. It’s not new.”); 1885:22-1886:4 (“[T]hey have from time to time during the case made noise that, well, they think it’s a collective work. And we’ve said we don't agree. But there’s never been an issue about it.”).)

The collective work argument is a pretext. Partly in response to Google’s complaints, Oracle withdrew its characterization of the registration as a collective work on Friday, April 27. (See RT at 2134:11-17, 2136:7-11.) Yet Google continues to raise the same ownership issue, both in seeking judgment as a matter of law and in opposing it. (See ECF No. 1043 at 5-7; ECF No. 1092 at 1.) As this shows, Google’s decision to raise this issue at the end of trial had nothing to do with whether Oracle was claiming the registration as a collective work. Google tried to use that as an excuse to justify its untimely claim.

In fact, there is no excuse. Google was well aware of these issues from the outset of the case. Oracle attached the registration statements identifying “licensed-in components” to its original and amended complaints. (ECF No. 1 Ex. H; ECF No. 36 Ex. H.) In addition, Google is not only a member of the Java Community Process, it sits on the Executive Committee. Josh Bloch is its current representative. (RT at 827:18-21 (Bloch); 1181:15-20 (Lee).) Google is fully aware of the process by which specifications are developed. Most of the fourteen other Java API packages that Google copied were dropped from this case nearly a year ago because Google claimed it had a license to use them. (See ECF No. 260 at 1 n.3.) Oracle narrowed the issues and the parties proceeded to trial on the 37 API packages whose ownership Oracle understood Google was not disputing.

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II. GOOGLE NEVER RAISED THE THIRD PARTY OWNERSHIP ISSUE IN
ITS PRETRIAL FILINGS

As far as Oracle can recall, Google never identified any third-party ownership issues at any time with respect to the copyrighted works at issue in the trial. Google certainly did not identify any third-party ownership issue in the many pre-trial findings it made to the Court. The parties submitted lengthy briefs in March 2012 in response to an order from the Court, which stated that “To help frame copyright issues, this order requests that the parties each submit briefs regarding the main copyright liability issues at trial.” (ECF No. 708.) In its opening brief on March 9, Oracle listed the elements of its claims, and identified the J2SE 5.0 registration as a collective work as well as the fact that the registration covered “licensed-in components.” Specifically, under the heading “Ownership,” Oracle stated:

Oracle’s copyrights in J2SE 5.0 materials were registered with the U.S. Copyright Office under registration numbers TX 6-066-538 and TX 6-143-306. J2SE 5.0 was registered as a collective work, comprising prior works by Sun, licensed-in components, and new and revised computer code and accompanying documentation and manuals.

(ECF No. 780 at 4.)

In the opening brief Google filed on March 9, Google included a section entitled “BRIEF SUMMARY OF REMAINING COPYRIGHT CLAIMS AND ISSUES.” (ECF No. 778 at 1-2.) But Google did not raise contributions by third parties as a remaining issue in either the summary section or the remainder of its brief. (See id.)

On March 23, 2012, the parties filed simultaneous responsive briefs. In its response, Google addressed the registration issue at length, but again did not assert that it was challenging ownership on the basis that third parties had contributed to the 37 API packages and said nothing about “licensed-in components” even though that phrase had specifically been referenced in Oracle’s opening brief. To the contrary, Google’s argument was focused on a series of technical legal challenges to the registration, such as whether, by registering the whole work, Oracle was entitled to a presumption of copyrightability as to individual elements, whether the APIs were included in the registration, and the effect of the copyright deposit. (ECF No. 823 at 7.)

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These legal challenges are the only ownership attack Google raised heading into trial. Contrary to what Google represented to the Court, the third-party ownership issue Google now asserts was never identified in the pre-trial statement or any of the filings that accompanied it. The Court’s pre-trial order requires the parties to include, among other things: “(i) a brief description of the substance of claims and defenses which remain to be tried” and “(iv) a list of all factual issues which remain to be tried, stating the issue with the same generality/specificity as any contested elements in the relevant jury instructions, all organized by counts.” (Guidelines for Trial and Final Pretrial Conference In Civil Jury (Alsup) at 2.) Google now claims it was aware of this issue at the time the parties filed their Joint Proposed Pre-Trial Order (RT at 1884:19- 1886:4), but it failed to comply with either provision.

Google did not identify the third-party ownership issue in its description of the substance of claims and defenses to be tried. (See ECF No. 525 at 1-2.) It also did not identify ownership by third parties in the 37 API packages as a factual issue in the pre-trial statement. (See id. at 13- 16.) The only factual ownership issue it identified was “Whether Oracle is the current owner of rights, title, and interest in the Java-related works registered by Sun with the U.S. Copyright Office,” not whether third parties had rights because of any contributions that they made. (Id. at 14 ¶ 9.) If Google truly intended this to be an issue, as it now claims was the case all along, Oracle was not required to guess that this was so. The Court’s order required Google to identify the issue with enough specificity to make Oracle aware that this would be an issue for trial.

At a hearing before the Court on April 26, 2012, Google claimed that its third-party ownership claim was identified in a different provision of the Joint Pre-Trial Order included under the heading “Issues of Law Which Remain To Be Resolved.” That provision states “Whether, by virtue of the copyright registrations of the J2SE and JDK materials, Sun registered its copyrights in the 37 Java API design specifications that Oracle has accused Google of copying into Android.” (ECF No. 525 at 10, RT 1885:6-20.) Google claimed, “that is exactly the 103(b) issue that we discussed yesterday.” (RT at 1885:16-19.) This is false. This joint issue of law referred to the same set of technical legal challenges Google raised in its March 23, 2012 brief, such as whether the registration of the J2SE 5.0 platform could be construed to be a registration

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of the 37 API packages. (See ECF No. 823 at 7.) The question of whether third parties have an ownership interest in the copyrighted works is, of course, a question of fact for the jury, not a question of law. Del Madera Props. v. Rhodes and Gardner, Inc., 820 F.2d 973, 979 (9th Cir. 1987) (“authorship of a copyrighted work is a question of fact for the jury”). If Google wanted to place this at issue, it would have listed it under the category of “Factual Issues That Remain To Be Tried” not “Issues of Law Which Remain To Be Resolved.” And it needed to identify it clearly.

The other pre-trial filings confirm that Google is opportunistically trying to re-write the record after the fact. If Google sought to place ownership at issue, it was required to propose an ownership jury instruction. (Guidelines for Trial and Final Pretrial Conference In Civil Jury Cases § 2(b).) There is a Ninth Circuit Model Jury Instruction on the definition of ownership, Model Instruction 17.5. (See Ninth Circuit Civil Model Jury Instruction (Copyright) § 17.5, Copyright Infringement – Ownership of Valid Copyright – Definition.) Neither party included it or any equivalent instruction. (See ECF No. 539.) Instead the parties submitted a standard instruction that refers to the elements of copyright infringement as ownership and copying. (ECF No. 539 Disputed Instruction No. 10.)

Google also failed to identify this as an issue in the parties’ jury instruction briefing. Google objected to Oracle’s proposed instruction, which included a presumption of copyrightability of the individual works at issue based on the registration. (ECF No. 539 Disputed Instruction No. 11.) But in response, Google made no claim that the presumption of copyrightability does not apply because the registration refers to “licensed-in components,” as it does now. Instead Google made the same legal argument it raised in its March 23, 2012 brief, that the presumption of copyrightability applies only to the work as a whole. (See ECF No. 535 at 12-13.)

Another opportunity for Google to raise this ownership issue was its trial brief. But the trial brief also makes no mention of any challenge to ownership based on third-party contributions or licensed-in components. (See ECF 534 at 12-15.)

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Oracle thus entered the trial with the understanding that Google was not challenging ownership based on any alleged third-party contributions.

III. GOOGLE TOLD ORACLE AND THE COURT THAT IT WAS NOT
DISPUTING OWNERSHIP

Oracle’s understanding that Google was not challenging ownership was confirmed during a key exchange at the trial that took place on the third day in Oracle’s case-in-chief, when Google’s counsel was questioning Oracle witness Mark Reinhold about contributions to API packages by others in the Java Community Process. (See RT at 708:19-712:15.) Mr. Jacobs, counsel for Oracle, expressed his concern at the break that this line of questioning was likely to cause confusion for the jury:

Mr. Jacobs: Your Honor, I see a potential for confusion in a complex area about a matter of law. And, so, at some point we may be asking you for an instruction on this.

The Court: What is that?

Mr. Jacobs: Google’s questioning may suggest to the jury a dispute about ownership of the 37 API packages that are in dispute here. The jury confuses the percentage of or the packages or classes or whatever that were developed by third-parties.

There is no ownership dispute here. There is no question that Oracle has the right, as a matter of ownership, to assert the copyrights at issue here.

Mr. Purcell: Your Honor, we’re not disputing ownership of the copyrights. We’re responding to a request from the Court regarding the involvement of other members in the community in the Java Community Process and API development.

(RT at 713:7-23 (emphasis added).)

Oracle was entitled to rely on this unequivocal representation and did. Google is trying to retract the representation now, claiming its statement only acknowledged that Oracle owned the copyrights at issue, but still disputed “whether Oracle has proved what is in those works, and whether Oracle’s copyrights cover particular parts of those works.” (ECF 1043 at 5 n.6.) But that latter point, of course, was precisely the basis for Mr. Jacobs’ concern. Immediately before the break, Google’s counsel had been questioning Dr. Reinhold about “collaboration with other members of the JCP,” whether other companies sometimes acted as the specification lead, and how “for some Java APIs, Sun and Oracle don’t even own the copyrights in the underlying source

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code.” (RT at 709:14-712:9.) It is disingenuous for Google to suggest now, in the context of the questioning that took place, that when it stated it was “not disputing ownership of the copyrights,” it was intending to preserve the right to make this argument. As the Court itself has stated, Google’s counsel’s statement about not disputing ownership “was in the context of a very concrete statement by Mr. Jacobs about finding out whether there was an ownership dispute on the 37 API packages.” (RT at 2130:6-2131: 19.)

Google has continued to mislead Oracle about its intent to pursue this issue even after it raised it, representing in two filings that it only intended to continue its ownership challenge as an alternative argument in the event the registration was deemed to be a collective work. (See ECF No. 1007 at 1-2 (“To 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.”); ECF No. 984 at 11 (stating it was raising dispute if “the Court accepts Oracle’s ‘collective work’ argument.”).) Oracle withdrew its characterization of the registration as “collective work” in part based on the statements made by Google in its April 25 filing (ECF No. 984). (See RT at 2134:11-17, 2136:7-11.)

CONCLUSION

Google’s last minute change in position was highly prejudicial. Oracle was left scrambling at the end of trial, with very limited time left, to defend against an issue Google never identified in its pre-trial filings and stated it did not dispute. Google should be held to its word. The Court should preclude Google from disputing ownership on the basis that any third party may have contributed to the copyrighted works.

Dated: May 7, 2012

MORRISON & FOERSTER LLP

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

Attorneys for Plaintiff
ORACLE AMERICA, INC.

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1105

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

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

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

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

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. 3:10-cv-03561 WHA

GOOGLE INC.’S NOTICE OF MOTION,
MOTION, AND MEMORANDUM OF
POINTS AND AUTHORITIES IN
SUPPORT OF ITS MOTION FOR A NEW
TRIAL ON ORACLE’S CLAIM THAT
GOOGLE IS LIABLE FOR
INFRINGEMENT OF ORACLE’S
COPYRIGHT ON THE STRUCTURE,
SEQUENCE AND ORGANIZATION OF
THE COMPILABLE CODE FOR THE 37
JAVA API PACKAGES

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

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NOTICE OF MOTION AND MOTION_

PLEASE TAKE NOTICE that pursuant to Fed. R. Civ. P. 59¹ Defendant Google Inc. ("Google") will, and hereby does, respectfully move for a new trial on Oracle's claim that Google is liable for infringement of Oracle's copyright on the structure, sequence and organization of the compilable code for the 37 Java API packages. This Motion is based on the attached memorandum of points and authorities as well as the entire record in this matter.

Dated: May 8, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

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MEMORANDUM OF POINTS AND AUTHORITIES

I. INTRODUCTION

Question 1 of the Special Verdict Form provided to the jury in this case included two sub- questions regarding Google's alleged liability for copyright infringement based on the structure, sequence and organization of the compilable code in the 37 Java API packages. First, the jury was asked in question 1A: "Has Oracle proven that Google has infringed the overall structure, sequence and organization of copyrighted works?" Second, the jury was asked in question 1B: "Has Google proven that its use of the overall structure, sequence and organization constituted 'fair use'?" Dkt. No. 1089. Although the jury concluded that Oracle had proven that Google infringed the overall structure, sequence and organization of the copyrighted works, the jury did not reach a unanimous verdict as to whether Google had proven the affirmative defense of fair use. Under settled Supreme Court and Ninth Circuit law, the jury's failure to reach a verdict concerning both halves of this indivisible question requires a new trial concerning both questions. To accept the infringement verdict as binding on the parties and retry only fair use would violate both the unanimity requirement and the Reexamination Clause of the Seventh Amendment.

II. ARGUMENT

The Seventh Amendment requires that, for suits at common law, "the right of trial by jury shall be preserved, and no fact tried by a jury, shall be otherwise re-examined in any Court of the United States, than according to the rules of the common law." U.S. Const. Amend VII. Thus under the Seventh Amendment's Reexamination Clause, a court cannot hold a partial retrial unless the issue to be retried is sufficiently "distinct and separable" from the issues decided by the first jury. Gasoline Products Co. v. Champlin Refining Co., 283 U.S. 494, 500 (1931). Furthermore, the Seventh Amendment requires that jury verdicts in federal court be unanimous. Murray v. Laborers Union Local No. 324, 55 F.3d 1445, 1451 (9th Cir. 1995) ("The Seventh Amendment requires jury verdicts in federal civil cases to be unanimous."); see also Fed. R. Civ. P. 48(b) ("Unless the parties stipulate otherwise, the verdict must be unanimous."). Although this does not mean that the jury must agree to every factual issue that underlies a verdict, it does mean

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that civil juries must be unanimous on all the "ultimate issues of a given case," as well as the "final verdict itself." Jazzabi v. Allstate Insurance Co., 278 F.3d 979, 985 (9th Cir. 2002).

Based on these principles, and consistent with Supreme Court and Ninth and Federal Circuit law, the Court should declare a mistrial on both the infringement and fair use questions relating to Google's alleged liability for copyright infringement based on the structure, sequence, and organization of the compilable code for the 37 Java API packages. Declaring a mistrial only as to the fair use question would violate the Seventh Amendment — both by threatening Google with a non-unanimous verdict on liability, and by having determination of the same factual question, or indivisible factual questions, made by two different juries.

A. The Seventh Amendment's unanimity requirement mandates a new trial for
both infringement and fair use.

Twice in recent years, in Jazzabi and United States v. Southwell, 432 F.3d 1050 (9th Cir. 2005), the Ninth Circuit has clearly held that a defendant has a right to a unanimous verdict on liability. Where liability depends on both acceptance of all elements of a plaintiff's claim and rejection of a defendant's affirmative defense, the jury must decide unanimously both that plaintiff has proven all claim elements and that defendant has failed to make out its affirmative defense. Jazzabi, 278 F.3d at 984. In other words, a hung jury on an affirmative defense is necessarily a hung jury on that entire liability claim because if the claim elements are submitted to a different jury than the affirmative defense, no jury has unanimously decided liability. Under the holdings of these cases, a new trial is necessary on both infringement and fair use.

In Jazzabi, the plaintiff's house burned down, after which his insurer, Allstate, rejected his fire insurance claim. Allstate admitted it had not paid out on the policy, but raised the affirmative defense that Jazzabi had burned down his own house. Jazzabi, 278 F.3d at 980-81. After the jury began deliberations, it asked the court whether it could find Allstate liable even if it did not unanimously reject Allstate's affirmative defense that Jazzabi started the fire. Id. at 981. The court instructed the jury that it should find Allstate liable so long as it did not unanimously agree with Allstate's affirmative defense — in other words, even if the jury did not unanimously reject that defense. Id.

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The Ninth Circuit reversed, holding that a defendant cannot be held liable until the jury both unanimously accepts plaintiff's proof on the claim elements and unanimously rejects the defendant's proof on its affirmative defense. Id. 985. The court held that "elements and affirmative defenses are co-equal components of the jury's liability determination: Liability cannot be established until after the jurors unanimously agree that the elements are satisfied and they unanimously reject the affirmative defenses." Id. at 984 (emphasis in original). Moreover, this result was not just good practice, it was required by the Seventh Amendment's unanimity requirement. The court noted that "civil juries must 'render unanimous verdicts on the ultimate issues of a given case'" as well as the "final verdict itself." Id. at 985 (quoting McKoy v. North Carolina, 494 U.S. 433, 449 (1990) (Blackmun, J., concurring)). To allow a jury split on an affirmative defense to impose liability "defeats the intent and rationale underlying the mandate that jury verdicts be unanimous, because liability might attach even though the jury had not unanimously agreed that a basis for liability exists." Id. (emphasis added). The Ninth Circuit held that the Seventh Amendment's unanimity requirement was implicated and barred a partial verdict even though the elements of Jazzabi's claim for breach of contract and Allstate's defense that Jazzabi had committed arson were factually independent of one another.

When it revisited the issue in Southwell, the Ninth Circuit was even clearer in extending Jazzabi to the criminal context. Southwell was charged with arson and pled the affirmative defense of insanity. Relying on Jazzabi, the Ninth Circuit concluded that in order to convict Southwell, the jury had to unanimously conclude both that Southwell was guilty of the crime, and that he was not insane. "Since a jury verdict must be unanimous, a jury united as to guilt but divided as to an affirmative defense (such as insanity) is necessarily a hung jury." 432 F.3d at 1055 (emphasis added). Again, the Ninth Circuit so held even though the elements of the crime of arson and the affirmative defense of insanity do not overlap.

Under Jazzabi and Southwell, Google has a Seventh Amendment right to be found liable only if a jury unanimously concludes both that Google's conduct was infringing, and that it was not fair use. Conducting a second trial concerning only fair use would deprive Google of that right. This jury did not unanimously reject Google's fair use defense. And, if a subsequent jury

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were given only the question of fair use, there would be no way to know whether that jury would unanimously conclude that Google's conduct was infringing, because the second jury would never have had to consider that question. Thus no jury would have "unanimously agreed that a basis for liability exists" because no jury would have "unanimously agree[d] that the elements are satisfied and . . . unanimously reject[ed] the affirmative defenses." Jazzabi, 278 F.3d at 984-85. The Court must therefore hold a new trial as to both infringement and fair use.

B. The Seventh Amendment's Re-Examination Clause mandates a new trial for
infringement and fair use.

Under the Seventh Amendment's Re-Examination Clause, a partial retrial "may not properly be resorted to unless it clearly appears that the issue to be retried is so distinct and separable from the others that a trial of it alone may be had without injustice." Gasoline Products Co. v. Champlin Refining Co., 283 U.S. 494, 500 (1931); see also Moore's Federal Practice — Civil § 59.14 ("A specific issue may be retried when it clearly appears that (1) the issue is sufficiently distinct and separable from the others and (2) the trial of that issue alone may be held without injustice."). Here, accepting a partial verdict on infringement alone would be error for a separate reason not present in Jazzabi or Southwell — because the issues of infringement and fair use are sufficiently factually intertwined that a retrial of fair use cannot be had without also retrying infringement.

The clearest factual overlap with respect to the claim at issue here is between infringement and the third factor of the fair use analysis. In determining infringement, the jury must determine whether there are "substantial similarities" between the copyrighted work and the accused work. Final Charge to the Jury, Dkt. 1018 at 11-12. The third fair use factor asks the jury to determine an obviously similar question: the "amount and substantiality of the portion [of the copyrighted work] used in relation to the copyrighted work as a whole." Id. at 13. The jury's determination of whether there are "substantial similarities" between the copyrighted work and the accused work necessarily overlaps with the jury's determination as to the "amount and substantiality" of the portion of the copyrighted work used in the accused work in relation to the copyrighted work as a whole. Thus if one jury is asked to decide infringement and a second jury is asked to decide

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fair use, that second jury's fair use analysis would require it to re-examine the factual determinations made as part of the first jury's infringement analysis. This violates the Seventh Amendment. See Allison v. Citgo Petroleum Corp., 151 F.3d 402, 423 n.21 (5th Cir. 1998).

The Federal Circuit reached a similar conclusion in the patent context in Witco Chemical Corp. v. Peachtree Doors, Inc., 787 F.2d 1545 (Fed. Cir. 1986). In Witco, the defendants made non-infringement, invalidity, and unenforceability arguments regarding the allegedly-infringed patents. Id. at 1547. The jury found the patents valid and enforceable, but could not reach a unanimous verdict with regard to infringement. Id. The district court excused the jury for an indefinite period. Three weeks later defendants moved for a mistrial based on the hung jury. The district court recalled the same jury and gave them additional instructions, at which point they quickly found infringement. Id. The Federal Circuit reversed the infringement verdict based on coercion. Id. at 1548.

The Federal Circuit then had to decide whether to remand just the infringement verdict for retrial, or to remand the entire case. Relying on Gasoline Products, the court concluded that "it is inappropriate, in light of the evidence presented and arguments made at this trial, to have one jury return a verdict on the validity, enforceability and contract questions while leaving the infringement questions to a second jury." Id. at 1549. The court reasoned that "the arguments against infringement are indistinguishably woven with the factual underpinnings of the validity and enforceability determinations and the subject matter of the contract." Id. The court therefore vacated the entire judgment and remanded for a new trial. Id.

Other courts have similarly concluded that when two claims depend on common factual determinations, they must be tried together. In Kuehne & Nagel v. Geosource, 874 F.2d 283 (5th Cir. 1989), the court ordered a retrial on all claims even though it only reversed on one specific issue. It concluded that the "overlapping nature of the evidence in SGS' breach of contract claim against Geosource and Geosource's tortious interference claim against SGS makes us wary of retrying only Geosource's breach of contract and fraudulent inducement claims." Id. at 295. Retrial of all claims was necessary because "the new jury should be given the opportunity to view the dispute comprehensively." Id. (internal quotation marks and alterations omitted). In Matter

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of Rhone-Poulenc Rorer, Inc., 51 F.3d 1293 (7th Cir. 1995), the Seventh Circuit struck down a district court's plan to have one jury decide the issue of negligence and then have a subsequent jury decide the issues of comparative negligence and proximate causation because "[b]oth issues overlap the issue of the defendants' negligence." Id. at 1303.

Because the "factual underpinnings" of infringement and fair use are "indistinguishably woven" together, the Court must hold a retrial as to both infringement and fair use. Witco, 787 F.2d at 1549.

III. CONCLUSION

Holding a retrial solely on Google's fair use defense (question 1B) without also retrying Oracle's claim for infringement (question 1A) would violate Google's Seventh Amendment rights under both the unanimity requirement and the Reexamination Clause. Google therefore requests that the Court declare a mistrial, and order a new trial, as to both infringement and fair use as to Oracle's claim that Google is liable for infringement of its copyright on the structure, sequence, and organization of the 37 API packages.

Dated: May 8, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

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¹ Google files this Rule 59 motion, directed to the issue of the effect of the jury's inability to reach a unanimous decision on question 1B, pursuant to the court's direction. RT 2890:1-6. Google reserves the right to file a further Rule 59 motion within the time allowed by the Rule on all grounds supported by the record.

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1106

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

BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[email address telephone fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email address telephone fax]
ALANNA RUTHERFORD (Admitted Pro Hac Vice)
[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 BRIEF IN
RESPONSE TO COURT’S QUESTIONS

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

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Oracle submits this brief to respond to the questions posed by the Court on May 7, 2012, regarding Oracle’s possible claim for infringer’s profits with respect to rangeCheck, and to address damages issues arising from the jury’s verdict in the first phase of the trial relating to copyright liability. We discuss below several possible approaches to simplify and expedite the resolution of this matter, most of which would require the consent of Google or the Court, or both. We also set forth our position with respect to rangeCheck.

A. PROCEDURAL PROPOSALS

The jury’s failure to reach a verdict on Google’s fair use defense means that, without some action by the Court and/or the parties, the trial cannot proceed to a final verdict with this jury. Sometime after the patent phase ends, the Court will need to empanel and instruct another jury, the parties will have to re-try the issue of fair use, and only then can the copyright damages phase of this trial be completed. Presenting the case to a second jury would be expensive, time-consuming, and duplicative, and may impose a substantial additional delay.

Our first, and simplest, proposal is that the parties stipulate, if the Court agrees, that the Court will decide the issue of fair use with respect to Google’s infringement of the Sun API specifications as the trier of fact. Either the Court will hold that Google’s infringement was fair use, in which case the Court will have disposed of Oracle’s claim, or the Court will hold that Google’s infringement was not fair use, in which case we will proceed in Phase 3 to try the issues of Oracle’s damages and Google’s infringer’s profits. This claim has always been by far the most important of Oracle’s copyright claims, and if Google were prepared to stipulate to this approach, Oracle would be prepared to abandon its claim for infringer’s profits with respect to rangeCheck, and to stipulate that the Court could, based on the existing record, set the statutory damages for rangeCheck. This would mean that if the Court decided that Google’s infringement was fair use, there would be no copyright damages for the jury to decide; and if the Court decided that Google’s infringement was not fair use, the jury would have a single set of remedy issues relating to the API specifications.

If Google is not prepared to stipulate to the Court as trier of fact resolving the single issue of fair use, we would propose that the parties waive the jury on all remaining issues (except to whatever extent the Court believed it was appropriate to retain the jury as an advisory jury). This, too, avoids

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the necessity of a substantial trial of any copyright issues, and would also have the advantage of permitting the Court, rather than the jury, to deal with whatever allocation issues arise as the result of Oracle’s damages and infringer’s profits claims.

If Google is not prepared to stipulate to either of these proposals, we would propose to wait until the Court resolves Oracle’s pending JMOL motion with respect to the fair use issue. Whichever way the court decides the JMOL motion, we would be prepared to stipulate that the Court could resolve Oracle’s remedy claims with respect to rangeCheck as a trier of fact.

We set forth below why we believe that, contrary to Google’s argument, and contrary to the Court’s initial views expressed yesterday, Oracle has a valid infringer’s profits claim with respect to rangeCheck.

B. RANGECHECK

RangeCheck is, as the parties have agreed, protected by copyright. Google copied rangeCheck in its entirety. The jury rejected Google’s argument that the copying of rangeCheck was de minimis, and found Google liable for copyright infringement as a result of its copying of rangeCheck. However, because rangeCheck represents only a very small part of Android’s code, Oracle has not been able to quantify under the applicable legal standards its damages caused by Google’s copying of rangeCheck. Google’s argument that rangeCheck therefore should not be the basis for an infringer’s profits claim either (and that Oracle’s remedy should be limited to statutory damages) misses the point in two ways.

First, the Copyright Act, unlike patent law and unlike tort law generally, allows a copyright holder who proves infringement to recover both the plaintiff’s damages and the infringer’s profits. The threshold issue is, therefore, not an issue of how much of Google’s Android profits Oracle should receive as a result of the rangeCheck infringement, but a question of who has the burden of proof with respect to that issue. Once Oracle establishes (a) that Android infringes and (b) what Android’s revenue is, the Copyright Act clearly places the burden of determining how much of the resulting profits are allocable to the infringing material on the infringer. As numerous courts have recognized, this rule has sound public policy underpinnings. Where the defendant combines infringing material with non-infringing material, separating out the profits allocable to the infringing

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material is likely to be (a) difficult and (b) dependent on evidence under the control of the infringer. As between the innocent copyright holder and the guilty infringer, it is sensible that this burden should fall on the infringer. This is more, not less, true when the infringing material is a relatively small part of the work into which it is incorporated. Under those circumstances, separating out profits allocable to the infringing material alone is particularly difficult, and virtually impossible for the plaintiff, compared to the infringer who will control most of the relevant evidence. A rule that places the burden on the copyright holder is tantamount to a rule that enables infringers to infringe with impunity given the limitations of statutory damages.

Second, the issue of how much of Android’s profits are allocable to rangeCheck is not a function of how many lines of code rangeCheck represents. The evidence is that rangeCheck plays a significant role in Android’s functioning. For example, Dr. Mitchell conducted an analysis into the significance of rangeCheck to other code in the same class file. (Mitchell at RT 1329:5–11.) He found that a number of other source code files in other files called on rangeCheck. He also did an experiment in which he counted the number of times that rangeCheck was called in booting up a phone, and found that the function was called 2,600 times just in powering on the device or starting the emulator: “a pretty big number for the number of calls to this function.” (Id. at 1329:5–21.) Although Google has apparently removed rangeCheck from the latest release of Android, Google has admitted that all of the previous releases of Android are still available on Google’s website, and we believe that the evidence in Phase 3 will show that these releases (including the infringing rangeCheck code) continue to be used by Android handset manufacturers. (See March 28, 2012, Hearing Tr. 24:10–25:17; Bornstein at RT 1832:3–10.)

Although whether rangeCheck’s nine lines of code should be compared to 15 million lines or a much smaller number is a matter of dispute, there is no dispute that, unlike the 37 API specifications, rangeCheck is not the heart and soul of Android. However, the fact that it, like a short poem in a large anthology, makes a much smaller contribution does not insulate Google from paying infringer’s profits.

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C. APPLICABLE LAW

1. Under prevailing case law, except in the case of a de minimis finding,
entitlement to infringer’s profits does not depend on how much infringing
material is included in an infringing work.

The Copyright Act provides:

The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer's profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.

17 U.S.C. § 504(b). The statute could not be clearer that the burden of apportionment of infringer’s profits to “factors other than the copyrighted work” is on the defendant. See also Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505, 518 (9th Cir. 1985) (“Frank Music I”) (1909 Act) (“The burden of proving apportionment, (i.e., the contribution to profits of other elements other than the infringed property), is the defendant’s.”). Oracle is not claiming that it is entitled to all Android profits due to Google’s infringement of just rangeCheck. Instead, Oracle can and will meet its burden by showing Android revenues. Google, not Oracle, has the burden to whittle damages down from there.

The cases make clear that, if the infringing material is included in a revenue-producing product together with other material, even a very small amount of infringing material supports an infringer’s profits award. In On Davis v. The Gap, Inc., the Second Circuit discussed what would be sufficient to carry the plaintiff’s burden under the Copyright Act:

if a publisher published an anthology of poetry which contained a poem covered by the plaintiff’s copyright, we do not think the plaintiff’s statutory burden would be discharged by submitting the publisher’s gross revenue resulting from its publication of hundreds of titles, including trade books, textbooks, cookbooks, etc. In our view, the owner’s burden would require evidence of the revenues realized from the sale of the anthology containing the infringing poem. The publisher would then bear the burden of proving its costs attributable to the anthology and the extent to which its profits from the sale of the anthology were attributable to factors other than the infringing poem, including particularly the other poems contained in the poem.

246 F.3d 152, 160 (2nd Cir. 2001) (emphasis added). In other words, the plaintiff could carry any

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initial burden by providing evidence of the revenues generated by the overall work containing a small infringing poem.

In On Davis, the court held that even revenues that were not received as a direct result of an infringing work could qualify under § 504(b). In On Davis, an advertisement for The Gap included a photograph of a man wearing copyrighted eyeglasses. The court held that it was not sufficient to shift the burden under § 504(b) to merely prove the corporate revenue of The Gap’s parent corporation. On Davis, 246 F.3d at 160–61. However, the court stated that proof of defendant’s revenues from eyeglasses (of all kinds) and accessories (and perhaps all revenues for Gap stores, as opposed to other stores owned by the parent corporation) would have been sufficient to shift the burden to the defendant to “prove his or her deductible expenses and the elements of proof attributable to factors other than the copyrighted work.” Id. at 159–60.

In Cream Records, Inc. v. Joseph Schlitz Brewing Co., the defendant copied ten notes from a song, “The Theme From Shaft,” and used those ten notes without permission in a beer commercial. The plaintiff provided proof of the total fees that the advertising company, Benton & Bowles, was paid for producing the infringing commercial, and sought those fees as an infringer’s profits award. The Ninth Circuit observed that “Cream met its burden” when it provided that proof; it was then up to the defendant to provide evidence of its deductible expenses and the elements of profit attributable to factors other than the infringement. 864 F.2d 668, 669 (9th Cir. 1989) (“Cream II”). In fact, the appellate court held that it was clear error for the district court to award one percent of the fees figure based only on its opinion that the infringement was minimal. Id. at 669–70.

In Frank Music, the plaintiffs owned the copyrights on a play called Kismet. Twenty years after the play was first copyrighted, the defendant, the Las Vegas MGM Grand Hotel, premiered a musical revue called Hallelujah Hollywood in its theater. Frank Music I, 772 F.2d at 510. Hallelujah Hollywood featured ten acts of singing, dancing, and variety performances; it featured a live tiger, jugglers, and the magicians Siegfried and Roy. One of the ten acts included a “tribute” to Kismet, with six minutes of selected musical numbers. Id. at 510. Notwithstanding the fact that the infringement was just a few minutes out of a much longer and more complicated revue, the plaintiffs were held to be entitled not just to profits on ticket sales, but also to indirect profits amounting to a

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percent of “the hotel’s guest accommodations, restaurants, cocktail lounges, star entertainment in the ‘Celebrity’ room, the movie theater, Jai Alai, the casino itself, convention and banquet facilities, tennis courts, swimming pools, [and the] gym and sauna,” all of which were recoverable because Hallelujah Hollywood had some promotional value for the hotel as a whole. Frank Music Corp. v. Metro-Goldwyn-Mayer Inc., 886 F.2d 1545, 1550 & n.4 (9th Cir. 1989) (“Frank Music II”) (1909 Act).

There were obviously many, many reasons why people ate in the casino’s restaurants, stayed at the hotel’s rooms, used the hotel’s spa services, and gambled in the hotel’s casinos unrelated to the revue at all, let alone the six minutes of musical numbers. That did not, however, mean plaintiff was entitled to zero infringer’s profits or that the tiny influence of the six minutes of musical numbers somehow excused the infringer from its statutory burden.

Moreover, the Ninth Circuit rejected the defendant’s argument that

the relative unimportance of the Kismet music was proved by its omission and the show’s continued success thereafter. Hallelujah Hollywood was a revue, comprised of many different entertainment elements. Each element contributed significantly to the show’s success, but no one element was the sole or overriding reason for that success. Just because one element could be omitted and the show goes on does not prove that the element was not important in the first instance and did not contribute to establishing the show’s initial popularity.

Frank Music I, 772 F.2d at 518.

In Polar Bear Productions, Inc. v. Timex Corp., Timex included Polar Bear’s copyrighted material in a promotional video shown at a trade show and in a joint promotional booklet prepared with Mountain Dew. 384 F.3d 700, 704 (9th Cir. 2004). Timex did not record any revenue from either promotion. Instead, Polar Bear claimed three types of infringer’s profits—profits based on revenues from watches sold at the trade shows, profits based on revenues from watches sold as part of the Mountain Dew promotion, and profits based on revenue from price increases over a four year period on Timex watches, which Polar Bear attributed to the use of the promotional videos at trade shows. Id. at 712–13.

The Polar Bear court held that plaintiff was entitled to receive infringer’s profits based on the first two categories, but not the third, noting: “Actual retail purchasers were never exposed to the

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infringing image from the trade shows, nor did the evidence link retail consumers to the trade show promotion nor was there evidence that vendors at the trade shows somehow transmitted enthusiasm to retail customers.” Id. at 715.

Polar Bear, like Frank Music, upon which the Polar Bear court relied, involved “indirect profits.” Indirect profits are those with an attenuated nexus to the infringement, such as hotel and gaming operations at the Las Vegas hotel where an infringing show was displayed (Frank Music I, 772 F.3d at 517); revenues from sales of watches while an infringing promotion ran (Polar Bear, 384 F.3d at 710); an increase in symphony ticket sales after an infringing direct mailing (Mackie v. Rieser, 296 F.3d 909, 915–16 (9th Cir. 2002)); the parent company’s net revenue during and shortly after an infringing advertisement campaign (On Davis, 246 F.3d at 159–60); or sales of an automobile, the Audi TT Coupe, which were promoted by an infringing ad, (Andreas v. Volkswagen of Am., Inc., 336 F.3d 789, 795–96 (8th Cir. 2003)). What the indirect profits cases establish is that even in this attenuated context, the burden of allocation is on the infringer once it is established that the work including the infringing material has resulted in revenue to the infringer.

Here, Google itself records revenues as a direct result of Android. The infringing code is an “integral part of the product itself.” Garcia v. Coleman, No. C-07-2279-EMC, 2009 WL 799393, at *3–4 (N.D. Cal. Mar. 24, 2009) (finding that use of an infringing photograph on a wine bottle label was “more akin to a direct profit case than an indirect profit case” because “the copyrighted photograph was not separate from the product ultimately sold but rather came as part of that product”). It is contained in the source code for multiple versions of Android; continues to exist in downloadable form on Google’s website; remains integrated into millions of existing phones; and is called upon thousands of times every time one of those phones boots. According to Google’s Chairman and CEO at the time, Eric Schmidt: “the primary reason to have something like Android is that people will do more searches, and then we'll get more money as a result.” (Schmidt at RT 1458:13–16.) In indirect profits cases, by contrast, it is disputed whether the work containing the infringing element results in the revenue claimed. See Mackie, 296 F.3d at 912; see also NINTH CIRCUIT MODEL JURY INSTR. 17.24 (causal nexus instruction given where a copyright holder seeks indirect profits or gross revenue).

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Cases where (as here) an infringer is proven to have received revenue as a direct result of the distribution of a work that includes infringing material consistently hold that the plaintiff has met its burden when it simply shows the revenues derived from distributing that work. Where a plaintiff seeks profits from activity not itself involving infringement (e.g., the sale of Timex watches; sales of the Audi TT Coupe; MGM’s casino and restaurant operations), the plaintiff has the burden of showing a causal nexus between the revenue from such activity and the infringement. However, there is simply no support for Google’s premise that, other than the de minimis threshold, there is any particular quantum or percentage of infringing material that is required to shift the burden pursuant to § 504(b), where the infringing material is included in a larger work from which the defendant admittedly receives revenue.

Oracle will not rely on Google’s gross revenues, or even the total revenues from search, but will instead begin with the fraction of Google’s total revenues that Google itself says are its revenues from Android—direct-to-consumer phone sales of Android devices, advertising revenue from Android phones, and Android Market app sales. These revenues represent a small fraction of Google’s total revenues, and they are directly tied to the infringing software. Oracle needs to make no additional causal showing. Oracle will not simply “offer an overall gross revenue number—like $11.5 billion—and sit back.” Polar Bear, 384 F.3d at 711.

2. Any further apportionment is Google’s burden.

Google may, of course, argue that rangeCheck is too small, or too unimportant, to support a substantial infringer’s profits award. Google is entitled to make this argument, and to introduce evidence to support it. But the cases and the Copyright Act are crystal clear that this is Google’s burden. In Cream II, as noted above, notwithstanding the fact that the infringement was just ten notes long, the plaintiff met its burden in proving infringer’s profits when it showed the full amount that the advertising company was paid to produce the commercial. “[T]he defendant introduced no evidence of either its deductible expenses or the elements of profit attributable to factors other than the infringement. If the infringing defendant does not meet its burden of proving costs, the gross figure stands as the defendant’s profits.” Cream II, 864 F.2d at 669 (citations and internal punctuation omitted). Congress has made the studied choice to put the burden on Google, which is

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where it properly belongs.

Where a work (in this case Android) includes infringing material (in this case rangeCheck), the plaintiff must prove the revenues the infringer received as a result of the work. In some cases this will be easily demonstrated—a publisher will have records for its sales of an anthology; Google has records of its Android’s revenues. In other cases, plaintiff’s burden will be harder—proving, for example, that a promotional video at a wholesaler’s conference increased the retail prices of Timex watches, see Polar Bear, 384 F.3d at 715, or that a show at a hotel’s showroom increased the hotel’s gambling and restaurant revenues, see Frank Music II, 886 F.2d at 1550, or that an advertisement featuring copyrighted eyeglasses increased sales of other eyeglasses and accessories, see On Davis, 246 F.3d at 160, or that an advertisement for Volkswagen that included limited infringing material increased sales of Volkswagens generally, or of a particular model. Andreas, 336 F.3d at 795–800.

Where a plaintiff can meet its burden of showing that the defendant received revenue from an infringing work (i.e. a work that includes infringing material), it has met its burden and the burden shifts to the defendant.

Because the jury has found that the use of rangeCheck in Android infringes Oracle’s copyright, and because certain of Google’s revenues from Android are not a matter of dispute, no further evidence (including no expert testimony) is required until and unless Google carries its burden under § 504(b) to prove Google’s “deductible expenses and the elements of profit attributable to factors other than the copyrighted work.”

Dated: May 8, 2012

BOIES, SCHILLER & FLEXNER LLP

By: /s/ David Boies
David Boies

Attorneys for Plaintiff
ORACLE AMERICA, INC.

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GENERAL ORDER 45 ATTESTATION

I, Steven C. Holtzman, am the ECF User whose ID and password are being used to file ORACLE AMERICA, INC.’S BRIEF IN RESPONSE TO COURT’S QUESTIONS. In compliance with General Order 45, I hereby attest that I have obtained Mr. David Boies’s concurrence to file this document on his behalf.

Dated: May 8, 2012

BOIES, SCHILLER & FLEXNER LLP

By: /s/ Steven C. Holtzman
Steven C. Holtzman

Attorneys for Plaintiff
ORACLE AMERICA, INC.

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1107

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

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

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

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

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. 3:10-cv-03561 WHA

GOOGLE INC.’S BRIEF IN OPPOSITION
TO ORACLE MOTION TO PRECLUDE
OWNERSHIP CHALLENGE

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

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Oracle's "motion to preclude Google from disputing ownership" is an attempt by Oracle to avoid the consequences of its failure to prove basic elements of its case, to blame Google for that failure, and to segregate out for special treatment an issue that has already been joined in the parties' motions for judgment as a matter of law under Rule 50. The motion is not only procedurally improper, it is also misguided as a matter of law. Oracle confuses "ownership" of the copyrights at issue with the legal question of the scope of Oracle's rights.

ARGUMENT AND CITATION OF AUTHORITIES

Oracle's theory of copyright infringement has changed multiple times during this litigation. At different times, Oracle has characterized the works in which it claims copyrights as "collective works," as "compilations," as "derivative works," or as free-standing works that are part of the larger wholes that are the subject of its registrations. Oracle has also characterized its claims based on the API packages as being claims of infringement of the "selection, arrangement and structure" of the packages (Oracle Statement of Copyright Issues, Dkt. 899) and the "structure, sequence and organization" of the packages (Oracle Proposed Findings and Conclusions, Dkt. 902) — and neither of those articulations was advanced in the proposed pretrial order. See Joint Proposed Pretrial Order, Dkt. 525.

Each of these characterizations has different consequences under the Copyright Act, and each imposes on Oracle different burdens with respect to what it needed to prove at trial. Selection, coordination, and arrangement are relevant to a copyright claim in a compilation, as defined in 17 USC § 101. That section sets forth the statutory basis for protection. Structure, sequence and organization, on the other hand, is a judicially created theory of infringement of computer programs. Regardless of the theory Oracle is advancing, however, Oracle needed to prove the contents of the complete works¹ that are the subject of its registrations and its

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ownership of any individual portions of those works on which it chose to base its infringement allegations.

Under the plain language of 17 U.S.C. § 103(b), Oracle's copyrights extend only to the "material contributed by the author of such work, as distinguished from the preexisting material employed in the work." The copyrights therefore only extend to any materials included in the works that were authored by Sun (or Sun employees).² The copyrights do not extend to any preexisting materials created by other authors, and Oracle's copyrights in the complete works do not "imply any exclusive right in the preexisting material." 17 U.S.C. § 103(b).

This issue of the scope of the copyrights owned by Oracle has become important because of the unprecedented way Oracle advanced its infringement claims at trial. Oracle argued — and the Court agreed for purposes of submitting Oracle's claims to the jury — that small portions of the entire works should be treated as individual "works" for purposes of its claims. Google has objected to this approach, and has consistently argued that the "work as a whole" for infringement purposes can and must be the entire work that is the subject of the registrations, and not a subset or individual file contained in the larger work. Oracle's approach is contrary to both Oracle's registrations and to the way infringement claims are generally tried; it is as if Tolstoy argued that his copyright rights in War & Peace were violated by copying a dozen sentences from the novel because those sentences were individual works. Oracle argued, for example, that the individual files from which it claims code or comments were copied should be considered the "work as a whole" for purposes of its claims based on those materials. Oracle also argued that only the API packages were the appropriate "work as a whole" for purposes of its "structure, sequence and organization" claims and its claims based on the documentation or specifications of the API packages. This approach hopelessly confuses ownership with infringement analysis, since "structure, sequence and organization" is relevant, if at all, only at the infringement stage. The "structure, sequence and organization" of a

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work cannot be registered with the Copyright Office; the Copyright Office only registers claims to copyright in a "work."

Google has made plain multiple times that Google does not contest Oracle's ownership of the copyrights on which Oracle is suing. E.g., RT 1665:3-8; RT 1884:10-13; RT 1887:6-8. That acknowledgement, however, does not dispose of the issue of the scope of those copyrights, nor does it relieve Oracle of the need to prove (1) that it has ownership rights over the individual portions of the works it singled out for purposes of trying to prove its infringement claims, and (2) that Google's copying of those portions (if proved) resulted in a material copying of the work as registered. These two issues are very different. The first issue has become significant as a result of the way in which Oracle has pursued its infringement claim — and has been briefed as part of the parties' JMOL motions under Rule 50 (as well as the parties' proposed findings and conclusions) and should be decided as part of those motions, to the extent necessary.

The only additional issues raised in Oracle's motion are Oracle's attempts to preclude Google from challenging Oracle's failure of proof. Oracle's attempts rely on Google's past briefs and the pretrial order, and on a discussion with the Court regarding ownership during trial. Neither provides a basis for excusing Oracle's failure of proof.

Until Oracle put its evidence in at trial, Google did not expect that Oracle would fail to introduce the necessary evidence to prove the extent of its rights under its registrations. Google did not expect there to be a live issue of fact regarding Oracle's rights, and there was no reason for Google to propose either a jury instruction or verdict question relating to those facts or to brief those issues prior to trial. See RT 2392:10-2394:19 (charge conference). These issues are issues of law, for the Court to decide — and the parties so identified them in the pretrial order. See Joint Proposed Pretrial Order, Dkt. 525 at 10 (issues of law 1 and 2). The pretrial order also identified as potential fact issues to be addressed at trial the underlying facts relating to Oracle's ownership of any individual components of the works, in the event there was any dispute over what Oracle's proof established. See Dkt. 525 at 15 (issues 7-9).

Oracle, however, neglected entirely to prove or even attempt to prove that it owns, e.g.,

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the individual files that it claims were copied or any of the individual API packages. As a result, Oracle's copyright rights as a matter of law under 17 U.S.C. § 103(b) extend only to the works as a whole and not any individual portions of the entire work. The pretrial order expressly identified and preserved these issues for trial, and Google has not waived its right to pursue them based on the lack of evidence from Oracle on these issues at trial.

Nor does the Court's colloquy during trial with counsel regarding ownership of the copyright claims preclude Google's arguments. Oracle's brief makes clear that Google's counsel said only that Google is not disputing ownership of the copyrights — which it is not. RT 713:19- 25; see also RT 1884:10-1887:8. Moreover, Google is not raising any ownership issue as to the specific 37 API packages at issue, which was the concern Oracle's counsel raised at the start of the discussion with the Court. RT 713:11-15. During the same colloquy, Google's counsel made clear that Google was not agreeing with Oracle's argument that it had a "separate copyright on an API package," RT 714:13-22, and the Court observed at the conclusion of the discussion that "this is more complicated than what you're [Oracle's counsel] proposing. . . . I think there's an issue." RT 715:3-6.

Google's arguments are not barred, and have arisen as a direct result of Oracle's decision to take scissors to its works in order to manipulate the infringement analysis with respect to the individual files by seeking to have each of them treated as a mini-"work as a whole." Oracle's "motion to preclude" should be addressed as part of the parties' pending motions for judgment as a matter of law, in connection with which these issues have been both clarified and briefed by both parties.

Dated: May 8, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

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¹ Google's JMOL motion challenged the sufficiency of Oracle's proof of the work as a whole, based on Google's assumption that Oracle was relying on TX 1076, the disc that Oracle introduced on the last day of trial, as containing the complete work as a whole. Oracle has since clarified that it does not rely on TX 1076, and relies instead on TX 623 — which does contain, in source code form, all of the files on which Oracle bases its claims. Google therefore does not believe that there is any longer a live issue regarding whether Oracle proved the contents of the version 5.0 work as a whole, and accepts that TX 623 should be treated as the work that is the subject of the registrations for version 5.0.

² Under Ninth Circuit law, this includes portions of the works that were included in earlier versions of the works. See Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1447-48 (9th Cir. 1994).

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