Florian Mueller of FOSSpatents has done an article about the Oracle reply brief in the appeal and cross appeal in Oracle v. Google that is so one-sided, I thought I should address it here, so you are not misled. Here's
Oracle's reply brief [PDF; Text].
I've had to correct FOSSpatents before. For example, in this article in April of 2012, "Google's Unmerited Damage From Oracle v. Google -- The
FOSSPatents Factor," I showed in detail that his predictions and analysis of the trial segment of this case were off-base, and unfair, and did not come true, as the jury and court rulings demonstrated clearly. I hope his hedge fund clients didn't lose their shirts relying on his analysis. For that matter, I hope they didn't make money from his flawed analysis either, now that I think about it. He calls himself an analyst. So does Rob Enderle. Enderle has stated that he takes money from clients, like Microsoft, and then he writes, independently he claims, articles that coincidentally would warm a client's heart. I would say, then, that Mueller is an analyst in that same limited sense.
Oracle is another client of Mueller's.
Oracle hired him to "advise" the company, so I suppose we shouldn't be surprised that he generally mirrors the Oracle point of view in an endless stream of anti-Google articles. And if that is what you want, X marks the spot. Read whatever you enjoy.
But if what you want is an analysis that includes both sides in litigation, not to mention predictions that actually come true, I fear you will not find it there. So let's take a look at what he wrote about Oracle's brief, and I'll try to give you a better understanding of the issues in this appeal by adding some accurate information about Google's position.
Jump To Comments
Oracle is no more fair than FOSSpatents when it characterizes Google's arguments, so it's not all FOSSpatents' fault. He is, after all, describing an Oracle brief. For example, let me show you, on the left, how Oracle opens its brief describing, allegedly, what Google wrote in its brief, and on the right, what Google actually wrote:
| What Oracle Claims Google Says||What Google Really Said|
|Google does not dispute that it copied Oracle’s work as wantonly
as our hypothetical Ann Droid copied Harry Potter. It does not dispute that the work it copied was, in its realm, as creative as a novel: Without a hint of dissent, Google parrots Oracle’s demonstration that the copied work was “‘original,’ ... ‘intuitive,’ ‘attractive,’ ‘appealing,’ ‘intricate,’ ‘efficient,’ and ‘user-friendly.’” GB 5 (OB citations omitted). Nor does it dispute that its defenses are equivalent to Ann’s defenses, “But I wrote most of the words from scratch,” and “I copied only the portions necessary to tap into the Harry Potter fan base.” And it agrees that Ann could never get away with those defenses. But Google should get away with those same defenses, it insists, for one simple reason: Oracle’s work—“[h]owever creative and useful”—is not a “work of imaginative fiction like Harry Potter,” but a computer program that “is fundamentally a functional, utilitarian work.” GB 1. |
Google concedes that § 102 of the Copyright Act, which defines copyrightability, codifies the traditional dichotomy between ideas and
expression. But it avoids the consequence of that concession: an original work—even one that has a function—is entitled to copyright protection so long as the author had multiple possible ways to express an idea. Instead, Google asserts that if a computer program—or any other literary work—is functional, it loses protection no matter how creative it is. Google never explains how any software can be protected under its view, since all computer programs are “fundamentally a functional, utilitarian work.” GB 1.
The Java Application Programming Interface ("API") is not a work of
imaginative fiction. It is a command structure that programmers writing
Java Programming Language must use to access the functionality of
software in the Java class libraries. The Java API enables programmers to
incorporate commonly used functionality into their programs without
own "implementations" — the source code that makes that
functionality work on
the computer. The API's commands are arranged hierarchically into packages,
classes, and methods to make them convenient for programmers to find and
However creative and useful the Java API may be, it is fundamentally a
functional, utilitarian work. It exists for the practical convenience of
A work of imaginative fiction like Harry Potter serves no such
Its chapter headings and topic sentences exist entirely for
aesthetic purposes — not to "bring about a certain result" when
used in a computer.1
No court accepts Oracle's premise that functional works like the Java API
obtain the same level of copyright protection as works of imaginative
"fundamental purpose of the Copyright Act" is to "encourage the
original works by protecting the expressive elements of those works
the ideas, facts, and functional concepts in the public domain for
others to build
on." Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1527
(9th Cir. 1993).
Therefore, if a work is "largely functional," like software, "it
receives only weak
protection. This result is neither unfair nor unfortunate. It is the
means by which
copyright advances the progress of science and art." Id.
(citation and quotation
Copyright protection of functional works is said to be "thin" because
102(b) of the Copyright Act filters out and denies protection to the
elements within those works. The more functional the work is, the more
there is to
filter out. Section 102(b) provides that "[i]n no case does copyright
an original work of authorship extend to any idea, procedure, process,
method of operation, concept, principle, or discovery, regardless of the
which it is described, explained, illustrated, or embodied in such
explained that one reason for enacting section 102(b) was to "make
clear" that "the
'writing' expressing [a programmer's] ideas" — his code — is
element in a computer program," while "the actual processes or methods
in the program are not within the scope of the copyright law."2
1 § 101 (defining “computer program”). All statutory references are to 17 U.S.C.
2 H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. at 56-57 (1976), reprinted in 1976 U.S.C.C.A.N 5659, 5670.
Isn't that bizarre? Does Oracle think we can't read what Google wrote or that we won't bother to check? Google never said that functional code in software never has copyright protection. It said explicitly that it can, but that "functional works like the Java API" do not "obtain the same level of copyright protection as works of imaginative fiction". There is a filtration process the courts follow, to filter out certain elements that are not copyrightable. It's a matter of degree, in part: "The more functional the work is, the more
there is to
filter out," Google wrote. Functional code has, it continued, what Congress called "thin" protection, meaning that you have to filter out "the actual processes or methods embodied in the program" that are not, Congress stated, within the scope of copyright law.
That isn't how Oracle described Google's position at all, is it? Google didn't concede anything that Oracle says it conceded in that introduction. Here's a section from a case Oracle repeatedly references, the Atari Games Corp. v. Nintendo of America, Inc. case, because it explains the process in the 9th Circuit:
Judge Learned Hand devised an abstraction test to separate the idea from expression in written or dramatic works:
Are you going to argue that Oracle's lawyers don't already know all these cases? That they are so unfamiliar with the concepts that they sincerely believe Google is making this process of filtration up? Here's Computer Associates [PDF], if you would like to follow the thread, and a relevant extract:
Upon any work ... a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out.... [T]here is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his "ideas," to which, apart from their expression, his property is never extended.
Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930), cert. denied, 282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931). Our sister circuit recently applied this test in a computer program copyright case. Computer Assocs. Int'l v. Altai, Inc., 1992 WL 139364, 23 USPQ2d 1241, 1252-53 (2d Cir.1992); cf., Whelan Assocs. v. Jaslow Dental Lab., 797 F.2d 1222 (3d Cir.1986), cert. denied, 479 U.S. 1031, 107 S.Ct. 877, 93 L.Ed.2d 831 (1987). Judge Hand's abstraction analysis forces differentiation of the unprotectable idea and protectable expression. The abstraction method also properly recognizes that a computer program contains many distinct ideas. Computer Assocs. Int'l, 23 USPQ2d at 1253. The Ninth Circuit as well endorses dissection of a copyrighted work. Brown Bag, 960 F.2d at 1475-76. By separating the program into manageable components, this method eases the court's task of discerning the boundaries of protectable expression.
After separating the program into manageable components, the court must next filter the unprotectable components of the program from the protectable expression. See Computer Assocs. Int'l, 23 USPQ2d at 1253. The court must filter out as unprotectable the ideas, expression necessarily incident to the idea, expression already in the public domain, expression dictated by external factors (like the computer's mechanical specifications, compatibility with other programs, and demands of the industry served by the program), and expression not original to the programmer or author. Id., 23 USPQ2d at 1253, 1255, 1256; see also Harper & Row, 471 U.S. at 548, 105 S.Ct. at 2224; Plains Cotton Coop. Ass'n v. Goodpasture Computer Serv., 807 F.2d 1256 (5th Cir.), cert. denied, 484 U.S. 821, 108 S.Ct. 80, 98 L.Ed.2d 42 (1987).
It is a fundamental principle of copyright law that a copyright does not protect an idea, but only
the expression of the idea. See Baker v. Selden, 101 U.S. 99, 25 L. Ed. 841 (1879); Mazer v. Stein,
347 U.S. 201, 217, 98 L. Ed. 630, 74 S. Ct. 460 (1954). This axiom of common law has been incorporated into the governing statute. Section 102(b) of the Act provides: What? Oracle's lawyers don't know all this? Of course, they do, but they claim Google failed to respond to what they wrote about the Atari case:
In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form
in which it is described, explained, illustrated, or embodied in such work.
17 U.S.C. § 102(b). See also House Report, at 5670 ("Copyright does not preclude others from using ideas or information revealed by the author's work.").
Congress made no special exception for computer programs. To the contrary, the legislative history explicitly states that copyright protects computer programs only "to the extent that they incorporate authorship in programmer's expression of original ideas, as distinguished from the ideas
themselves." Id. at 5667; see also id. at 5670 ("Section 102(b) is intended . . . to make clear that the
expression adopted by the programmer is the copyrightable element in a computer program, and
that the actual processes or methods embodied in the program are not within the scope of copyright
Similarly, the National Commission on New Technological Uses of Copyrighted Works
("CONTU") established by Congress to survey the issues generated by the interrelationship of advancing technology and copyright law, see Pub.L. No. 93-573, § 201, 88 Stat. 1873 (1974), recommended, inter alia, that the 1976 Copyright Act "be amended . . . to make it explicit that computer
programs, to the extent that they embody the author's original creation, are proper subject matter for
copyright." See National Commission on New Technological Uses of Copyrighted Works, Final
Report 1 (1979) (hereinafter "CONTU Report"). To that end, Congress adopted CONTU's suggestions and amended the Copyright Act by adding, among other things, a provision to 17 U.S.C. § 101 which defined the term "computer program." See Pub.L. No. 96-517, § 10(a), 94 Stat. 3028 (1980).
CONTU also "concluded that the idea-expression distinction should be used to determine which
aspects of computer programs are copyrightable." Lotus Dev. Corp., 740 F. Supp. at 54 (citing
CONTU Report, at 44).
Drawing the line between idea and expression is a tricky business. Judge Learned Hand noted
that "nobody has ever been able to fix that boundary, and nobody ever can." Nichols, 45 F.2d at
121. Thirty years later his convictions remained firm. "Obviously, no principle can be stated as to
when an imitator has gone beyond copying the 'idea,' and has borrowed its 'expression,'" Judge
Hand concluded. "Decisions must therefore inevitably be ad hoc." Peter Pan Fabrics, Inc. v. Martin
Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960).
The essentially utilitarian nature of a computer program further complicates the task of distilling
its idea from its expression. See SAS Inst., 605 F. Supp. at 829; cf. Englund, at 893. In order to describe both computational processes and abstract ideas, its content "combines creative and technical
expression." See Spivack, at 755. The variations of expression found in purely creative compositions, as opposed to those contained in utilitarian works, are not directed towards practical application. For example, a narration of Humpty Dumpty's demise, which would clearly be a creative composition, does not serve the same ends as, say, a recipe for scrambled eggs--which is a more process
oriented text. Thus, compared to aesthetic works, computer programs hover even more closely to
the elusive boundary line described in § 102(b).
The doctrinal starting point in analyses of utilitarian works, is the seminal case of Baker v. Selden, 101 U.S. 99, 25 L. Ed. 841 (1879). In Baker, the Supreme Court faced the question of "whether
the exclusive property in a system of bookkeeping can be claimed, under the law of copyright, by
means of a book in which that system is explained?" Id. at 101. Selden had copyrighted a book that
expounded a particular method of bookkeeping. The book contained lined pages with headings
intended to illustrate the manner in which the system operated. Baker's accounting publication included ledger sheets that employed "substantially the same ruled lines and headings. . . ." Id. Selden's testator sued Baker for copyright infringement on the theory that the ledger sheets were protected by Selden's copyright.
The Supreme Court found nothing copyrightable in Selden's bookkeeping system, and rejected
his infringement claim regarding the ledger sheets. The Court held that:
The fact that the art described in the book by illustrations of lines and figures which are reproduced in practice in the application of the art, makes no difference. Those illustrations are the mere
language employed by the author to convey his ideas more clearly. Had he used words of description instead of diagrams (which merely stand in the place of words), there could not be the slightest
doubt that others, applying the art to practical use, might lawfully draw the lines and diagrams
which were in the author's mind, and which he thus described by words in his book.
Id. at 103.
The copyright of a work on mathematical science cannot give to the author an exclusive right to
the methods of operation which he propounds, or to the diagrams which he employs to explain
them, so as to prevent an engineer from using them whenever occasion requires.
To the extent that an accounting text and a computer program are both "a set of statements or instructions . . . to bring about a certain result," 17 U.S.C. § 101, they are roughly analogous.
Google does not respond to other Ninth Circuit authority discussed in our opening brief (at 73) finding software to be sufficiently creative to warrant broad copyright protection, where, as here, it is creative, intuitive, and attractive. Nor does Google grapple with Atari, where this Court reasoned that the software was necessarily “creative” and “original,” thus “protectable,” because there were “a multitude of expressions” available. 975 F.2d at 840.
But Google very much did grapple with Atari, as Oracle puts it. Here's what they wrote:
Whether a particular program element gets filtered out depends on the “factual nuances” of the technology. See Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1548 & n.33 (11th Cir. 1996). In Atari, for example, this Court (applying Ninth Circuit law) held that the district court did not clearly err in finding that the particular programming code used to unlock a game console was non-functional and thus protectable, because the plaintiff “chose arbitrary programming
instructions and arranged them in a unique sequence to create a purely arbitrary data stream” so that there were “a multitude of different ways to generate a data stream which unlock[ed]” the console. 975 F.2d at 840.
Atari was about non-functional code. This case is about functional code. Duh.
By contrast, Sega applied the same rules to a seemingly similar situation concerning the codes required for game-platform compatibility—yet reached a different conclusion due to differences in the technology. Sega noted that Atari is “consistent both with our analysis and the result we reach,” but distinguished Atari’s facts because “Sega’s key appears to be functional” and there was “no showing that there is a multitude of different ways to unlock [Sega’s] Genesis III console.” Sega, 977 F.2d at 1514n.1, 1524 n.7. Accordingly, the TMSS initialization code in Sega fell into the category of “unprotected ideas and functional concepts.” Id. at 1520, 1522. Likewise, the Ninth Circuit found in Sony that, “to develop a PlayStation emulator, Connectix needed to emulate both the PlayStation hardware and the firmware (the Sony BIOS).” 203 F.3d at 601 (emphasis added). As in Sega, there was no showing of multiple ways to achieve compatibility. The PlayStation’s “system interface procedures” therefore were unprotected ideas and functional concepts filtered out by section 102(b). Id. at 600, 605.
Following these precedents, Judge Alsup examined the Java technology in detail and found, as a fact, that the SSO was not copyrightable, because it was
essential for invoking the functions of the 37 packages and for achieving interoperability. Oracle demonstrates no clear error in those findings.
Exempting the Java API from the normal section 102(b) filtration process as Oracle requests would upset the careful balance that copyright law strikes between “providing exclusive rights to expression” and “‘encourag[ing] others to build freely upon the ideas and information conveyed by a work.’” Atari, 975 F.2d at 842 (citation omitted). Like other utilitarian works, software constantly is being refined by incremental, functional improvements. Granting monopolies on such improvements imperils progress by denying “those skilled in the relevant art” the chance to “try their hands at incremental improvement of functional works.” Dennis S. Karjala, Distinguishing Patent and Copyright Subject Matter, 35 CONN. L. REV. 439, 454 (2003) [hereinafter Distinguishing]. The Court should reject Oracle’s bid for special treatment.
So Oracle's feigned shock that Google relies on what all these other courts have already ruled when making the same winning arguments in those cases is a little bit much. Maybe when you are running out of winning arguments, you stay silent or yell about something else entirely. And to claim that Google failed to respond to Oracle's Atari argument is simply not true.
The FOSSpatents article suffers from the same lack of care as Oracle's brief, if that is what it is. If it's cynical propaganda, that, of course, is even worse. But whatever it is, it's not the whole picture, and it's not a fair picture.
So, let's go through the FOSSpatents article with more care than it gave Google, and I'll add in the facts you need to complete the picture more accurately.
The article, "Oracle to appeals court: Google concedes away the entire case under established copyright principles", is here:
But I'll show you the FOSSpatents article, with my comments and corrections interspersed in purple-colored text so it's clear who is speaking, with any quotations from briefs in my sections in blue colored text. [Update: I see some, in your comments, are expressing some confusion still. So here's how it goes: Black text is the FOSSpatents article; purple is me; blue is when I quote an outside source.] I hope you find it helpful, because there is a lot to add to give you a fuller understanding of the Oracle brief and to correct some of the statements in it about Google:
Oracle to appeals court: Google concedes away the entire case under
established copyright principles
On Wednesday Oracle filed its reply brief in the Android/Java copyright appeal,
and it became publicly accessible this morning. Oracle's opening brief
PJ: Here it where you can find it on Groklaw.
filed in February, likened Google to a fictitious Harry Potter knockoff author
by the name of "Ann Droid"
[PJ: Google in its first
answering brief responded to the analogy like this:
And that highlights why Google believes that Oracle is trying to stretch copyright law to make it the same for computers and novels. They have never been the same. And there is a very important reason why it should never happen. There are exclusions in coverage, with software, to be certain that the utilitarian nature of software is not hobbled by excessive copyright bonds, an issue that would be odd if arising in the context of novels, in that novels you just read. Software you can read, but it also does things on a computer. Oracle also uses cases about songs, but computer software isn't a song and it serves a very different purpose.
However creative and useful the Java API may be, it is fundamentally a functional, utilitarian work. It exists for the practical convenience of programmers. A work of imaginative fiction like Harry Potter serves no such utilitarian function. Its chapter headings and topic sentences exist entirely for communicative and aesthetic purposes—not to “bring about a certain result” when used in a computer.
No court accepts Oracle’s premise that functional works like the Java API obtain the same level of copyright protection as works of imaginative fiction. The "fundamental purpose of the Copyright Act" is to "encourage the production of original works by protecting the expressive elements of those works while leaving the ideas, facts, and functional concepts in the public domain for others to build on." Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1527 (9th Cir. 1993). Therefore, if a work is “largely functional,” like software, “it receives only weak protection. This result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art.” Id. (citation and quotation marks omitted).
The SCO Group used the same analogy, by the way, from the same law firm that is representing Oracle, trying to make copyright cover what it never has before. SCO's greed wasn't hard to discern as the goal, was it? And was it not clear what the *effect* of SCO prevailing would have been for the software market? SCO, as it turned out, didn't own the copyrights it was bullying the world with, the Linux and UNIX world. But now, here comes another proprietary software company, Oracle, trying for essentially the same thing, using the same analogy. Can we expect the result, should Oracle prevail, to be essentially the same as if SCO had prevailed? If not, why not? And be aware that SCO is *still* trying to sue IBM, so whatever happens in this case could have application to the SCO situation in a worst-case scenario.
Do you remember how SCO smeared IBM's reputation, calling it the worst type of thief, accusing it of encouraging others to violate SCO's copyrights, and at one point accusing IBM of a felony under the Computer Fraud & Abuse Act, for downloading from SCO's website some Linux code that IBM itself had written? IBM was downloading it to use as evidence at trial that SCO in fact was violating the license on IBM's GPL-licensed code it had donated to the Linux kernel by distributing it without the license. You can say things in court documents that you'd get sued for if you said them elsewhere, and sometimes lawyers make use of that to say simply awful things, hoping those of us in the peanut gallery will be influenced by it (and/or that the victim of the strategy will settle for megabucks to avoid the humiliation and the damage to its reputation). By peanut gallery, I mean potential jurors, judges, regulators, and potential business partners. I would caution you, and the results of the SCO saga back me up, that just because a lawyer says terrible things about a competitor in a court filing, it doesn't mean it's true.]
and received support from an impressive and diverse
roster of amici (overview of amici
former U.S. copyright chief's warning against eviscerating protection for
[PJ: Not to be unkind, but Scott McNealy is the one who went to court in this very litigation and provided wrong information in sworn testimony about the Sun corporate blog not being an official blog, when the Sun SEC filing from the same period, which he himself signed, said it was. Extrapolate, as if you were the jury, as to how much weight to give to anything further that he has to say in this case.]
explanatory filing by academics regarding API creativity
filings by organizations representing creatives
[PJ: These were some graphic artists and photographers, who misunderstood the case, I gather, and the law, and viewed it not as a computer software case, which it is, and more as how it imagined it would affect photography. You can read it for yourself. But FOSSpatents forgot to mention another supporter, Microsoft. Here's where you can find it as text, along with the others as PDFs. Yes, Microsoft, the very same company that supported SCO Group, as did Sun Microsystems at the time. Catch my drift? Ask yourself: what was the SCO saga about? It was about destroying Linux and making sure proprietary software companies could stay on top of the world, without that pesky competition they were losing to in the market. And here's Oracle, which bought Sun, and Microsoft allied against Google, which freely provides mobile phone software which runs on Linux. Feel free to extrapolate.]
In May, Google filed its answer, defending District Judge Alsup's ruling all the
except for some minor items (rangeCheck, decompiled programs).
[PJ: They are minor, which is Google's argument in part, but Oracle doesn't at all view them as minor or describe them as minor in its new brief. On the contrary, it writes:
briefs submitted in support of Google's position were largely orchestrated by
Google-funded anti-IP groups (overview,
group of professors led by EFF Vice Chairwoman,
Application Developers Alliance).
"rangeCheck” facilitates an important sorting function, frequently called upon during the operation of Java and Android". In fact, Oracle tried to get infringers' profits from them, meaning conceivably millions of dollars for these two minor items, which you can read about in my original coverage yesterday of this Oracle brief, including how ridiculous the presiding judge found Oracle's arguments. "You're one of the best lawyers in America. How can you even make that argument?" the judge said to David Boies.
"You know, maybe the answer is because you are so good it sounds legit. But it is not legit." And the Oracle brief does not back down one inch. What should that tell you about all the amicus briefs, as well as Oracle's position?]
[PJ: Notice the condescension? That's the hallmark of a smear campaign, I would say, to sneer at honorable, reputable people, the way Boies Schiller sneered at IBM in its court filings. The EFF Vice Chairman, as he puts it, is world-renowned law professor at Berkeley, Pamela Samuelson. He chose to describe her by a connection to EFF, calling it an anti-IP group, because he thought you and the court would think less of her, by painting her as some kind of over-the-top activist, and some corner-of-the-world small potatoes person not to be taken seriously. That is the implication. Here is
The latest Oracle brief responds to Google's brief and the Google-supporting
Pamela Samuelson is recognized as a pioneer in digital copyright law, intellectual property, cyberlaw and information policy. Since 1996, she has held a joint appointment with Boalt Hall and UC Berkeley's School of Information. In addition, Samuelson is director of the internationally-renowned Berkeley Center for Law & Technology. She serves on the board of directors of the Electronic Frontier Foundation (since 2000) and on advisory boards for the Electronic Privacy Information Center, Public Knowledge, and the Berkeley Center for New Media.
FOSSpatents describes her sneeringly as an EFF person. It's dishonorably incomplete, and seems deliberately so. And as you can see, that is the least of her accomplishments. She was asked to testify to the House Judiciary Committee in May, by the way, I assume because she is recognized as an expert in copyright law and in cyberlaw and has won many honors for her work and international recognition. If you wanted to describe her in a brief phrase, would it be "EFF Vice Chairman"? Why not "Contributing Editor to Communications of the ACM"? It's true too, but it minimizes her contributions to copyright law. She is co-director of the Berkeley School of Law and Technology. That's her main job. Why not say so?
Samuelson began her career as an associate with Willkie Farr & Gallagher's New York. She began her career as a legal academic at the University of Pittsburgh School of Law, from which she visited at Columbia Law School, Cornell Law School and Emory Law School. While on the Berkeley faculty, she has been a distinguished visiting professor at University of Toronto Law School as well as a visiting professor at University of Melbourne and Harvard Law School. She was named an honorary professor at the University of Amsterdam in 2002.Samuelson has written and published extensively in the areas of copyright, software protection and cyberlaw. Her recent publications include "Why Copyright Excludes Systems and Processes From the Scope of Its Protection," in the Texas Law Review (2007), "Principles for Resolving Conflicts Between Trade Secrets and the First Amendment," published in Hastings Law Journal (2007), "Questioning Copyright in Standards" in the Boston College Law Review (2007), "Enriching Discourse on Public Domains" in the Duke Law Journal (2006); and"The Generativity of Sony v. Universal: The Intellectual Legacy of Justice Stevens" in the Fordham Law Review (2006).
Other notable publications include: Intellectual Property Arbitrage: How Foreign Rules Can Affect Domestic Protections, 71 Chi. L. Rev. 223 (2004); The Law and Economics of Reverse Engineering, 111 Yale L. J. 1575 (2002); Privacy as Intellectual Property?, 52 Stan. L. Rev. 1125 (2000); The U.S. Digital Agenda at WIPO, 37 Va. J. Int'l L. 369 (1997); Intellectual Property Rights in Data?, 50 Vand. L. Rev. 51 (1997) (co-authored with J.H. Reichman); A Manifesto Concerning the Legal Protection of Computer Programs, 94 Colum. L. Rev. 2308(1994) (co-authored with Randall Davis, Mitchell Kapor, and J.H. Reichman); Benson Revisited: The Case Against Patent Protection for Algorithms and Other Computer Program-Related Inventions, 39 Emory L. J. 1025 (1990); and CONTU Revisited: The Case Against Copyright Protection for Computer Programs in Machine-Readable Form, 1984 Duke L. J. 663 (1984).
Since 1990, Samuelson has been a contributing editor of Communications of the ACM, a computing professionals journal respected for its coverage of existing and emerging technologies. From 1997 through 2002, Samuelson was a fellow of the John D. & Catherine T. MacArthur Foundation. From 2001 to 2006, she held a UC Berkeley Chancellor's Professorship for distinguished research, teaching and service for her contributions to both Boalt Hall and the School of Information. Samuelson is the first Boalt faculty member to hold the Richard M. Sherman '74 Distinguished Professorship which was given to her in 2006. She is also a fellow of the Association of Computing Machinery. The Anita Borg Institute honored Samuelson with its Women of Vision Award for Social Impact in 2005.
See what I mean about FOSSpatents? This is a propaganda technique to make you think less of a person. Less of Google too, which he trashes in a steady stream with just such verbal hijinks. She was awarded honors since 2010, that are not yet included in her bio. Here's a paper [PDF] listing her election as a Fellow into the prestigious American Academy of Arts and Sciences in 2013. FOSSpatents could have described her as they did, "Samuelson, Pamela, Richard M. Sherman Distinguished Professor of Law, Professor of Information,
University of California, Berkeley School of Law."]
[PJ: You may wish to have the amicus briefs handy. Here's the one by the apps developers. Here's EFF's; here's the one by the 39 law professors -- count them, 39 of them -- the one FOSSpatents sneers at because it's signed by Professor Samuelson; and here's CCIA's. And -- oops, FOSSpatents left out one amicus brief submitted on behalf of Google, filed by a group of well-known innovators, start-ups, and those who fund them -- innovators like Ray Ozzie, Tim O'Reilly, Mitch Kapor, Dan Bricklin, and Esther Dyson. He also forgot to mention that what he calls the EFF brief was filed jointly with Jason M. Schultz,
NYU Technology Law and Policy Clinic,
NYU School of Law, and was signed by an amazing collection of the leading computer scientists in the world, none of whom are Google toadies. See what I mean about not getting the full story from FOSSpatents? What he leaves out is exactly what you need to get a balanced picture.] The week after next Google will get to file its reply brief
concerning (only) the aforementioned minor issues. Then there will be a hearing,
followed by a decision.
Due to the narrow focus of the upcoming Google filing, briefing is now already
complete with respect to the number one issue in this appeal (copyrightability
of the asserted Java API sources) and the number two issue (fair use), which
becomes relevant only if Oracle wins a reversal of Judge Alsup's denial of
[PJ: Those are Oracle's two issues. But it's not true to say those are the only two issues or even the number one and two issues. There is the issue of whether there is infringement in the first place, if we leave out the two "minor issues". Here's what Google wrote in its May brief:
Oracle's brief says that "Google concedes away--either explicitly or
tacitly--everything necessary to resolve this case under established copyright
principles". Without the last four words -- "under established copyright
principles" -- it would be an extremely bold claim.
Sensing that its SSO claim may be doomed, Oracle argues that -- SSO aside -- there is an “independent” ground for reversal based on the purported copyrightability of 7,000 lines of non-implementing code that make up the class and method names and declarations of the 37 packages. But any asserted error regarding those 7,000 lines is both harmless and waived, because the district court gave the jurors instructions and a verdict form that barred them from considering whether Google infringed those lines, independent of their SSO. Oracle failed to challenge the instructions or the verdict form at trial, or in its opening brief. Thus, the copyrightability of the 7,000 lines (apart from the SSO) is not an issue in this case, and a reversal based on that theory could not alter the ultimate judgment.
Of course, as is his wont, FOSSpatents doesn't mention that and pretends that Oracle's position is the only one in the case. It is not. Giving only one side of story and mischaraterizing the other side is what bias is.]
[PJ: It's extremely bold anyhow, since Google obviously concedes absolutely nothing. This is FUD. The giveaway is where Oracle says Google has done so "tacitly" -- meaning in Oracle's warped version of copyright law, it would have, if you read between the lines. But Google doesn't accept Oracle's version of copyright law, which is the same as saying that it doesn't concede anything. Here's what it wrote in its May brief: But those four words are
key. The parties' positions are divergent. This is not the kind of case where
they follow the same approach and just disagree on the results. Here, the
disagreement is fundamental, and total. One party wants to go north while the
other wants to head down south. The Federal Circuit now has to determine which
way is consistent with existing case law and, with a view to the future,
represents a workable solution that can be applied to future cases raising
The “fundamental purpose of the Copyright Act,” the Sega court explained, is to “encourage the production of original works by protecting the expressive elements of those works while leaving the ideas, facts, and functional concepts in the public domain for others to build on.” Sega, 977 F.2d at 1526 (citing Atari, 975 F.2d at 842-43). Extending copyright protection to a program’s compatibility elements would violate that purpose by giving the copyright owner “a de facto monopoly over the functional aspects of his work—aspects that were expressly denied copyright protection by Congress” when it enacted section 102(b). Id. at 1527 (citing § 102(b)); see also Sony, 203 F.3d at 607. Those references are citing the same exclusion language that Professor Samuelson wrote about.]
Despite this divergence, the issues have been narrowed significantly. With
hundreds of pages having been filled, it's now pretty clear what this case turns
on. We'll get to the strategic issues in a moment.
Google relies 100% on Judge Alsup. It won the first round in his court. But
other than Judge Alsup having ruled in Google's favor and Google defending Judge
Alsup, who else supports the two?
[PJ: You just saw the astonishing collection of famous computer professionals and legal experts and business entrepreneurs who took the time and put forth the effort to file amicus brief in support of Google. Pretty much the whole world is against Oracle in this case, I'd say. Some proprietary software companies want what they want, and the rest of the world realizes the damage a win for Oracle would bring, and they are pleading with the appeals court not to let them do it. Plus Google's reference to
Sega and Sony show some of the cases that support Google. Google also references
Lotus v. Borland, among others. By that I mean its Table of Authorities in its brief [PDF] lists two and a half pages of case. Just because Boies Schiller et al writes something for Oracle, that doesn't make it necessarily so.]
Oracle's reply brief says "Google only
emphasizes its lack of case support by filling its brief with quotations from
the writings of an academic who has, for decades, argued for /changes/ in the
law on the ground that Congress never should have granted copyright protection
to software". This academic is Berkeley Professor Pamela Samuelson, the
aforementioned EFF Vice Chairwoman. According to Oracle, "Google cribs so much
from this one academic that she should demand royalties".
FOSSpatents fails to correct Oracle, naturally, but if you read Google's brief, you find that it cites this Samuelson work:
Rather than just summarize Oracle's brief, let me show you the document (it's
long, but it's very clear) and further below I'll talk about the key issues.
Pamela Samuelson, Why Copyright Law Excludes Systems and Processes from the Scope of Its Protection, 85 TEX. L. REV. 1921, 1921 (2007) [hereinafter Why Copyright]. That is not an paper on how copyright should be changed. It's a description of how the law is currently, or was when it was written, and it shows the very exclusions that Oracle wishes to pretend would represent a change in the law. Here [PDF]. Read it for yourself. She has written about reforms she thinks would make copyright better elsewhere, of course. But this paper that Google cites isn't about that. What is surprising is that he smears Professor Samuelson as somehow an anti-IP toady of Google. EFF isn't anti-IP either, actually. It's just nauseating. Also inappropriate. Who is Florian Mueller to be looking *down* on this incredibly accomplished law professor? He isn't even a lawyer. He's not even experienced in US law, and it showed when all his predictions about this case fell to the ground when it didn't end the way he said it would. Anyway, the paper is about the wording of the copyright statute on exclusions:
Section 102 is one of the few elegant and concise provisions of the Copyright Act of 1976 (1976 Act).1 Section 102(a) sets forth the subject matter eligible for copyright protection. “Copyright protection subsists,” it says, “in original works of authorship fixed in any tangible medium of expression....”2 Nicely complementing this provision is its statutory cousin, § 102(b), which provides: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”3 Once a work qualifies for copyright protection under § 102(a), § 102(b) informs its author and the rest of the world about certain aspects of the work that are not within the scope of copyright protection. That's talking about the law as it is written, the precise wording about exclusions that Oracle pretends do not exist, not changes to the law that she might desire. It is, in fact, Oracle that wishes to reform copyright law, to make it more restrictive, to the benefit of Oracle and other proprietary software firms who are on a jihad against Android and Google, because it's based on Linux.]
Surprisingly few cases and very little commentary have probed the meaning of § 102(b), and in particular, of the eight words of exclusion it contains.4
1. Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat. 2541 (1976) (codified as amended in scattered sections of 17 U.S.C.). The inelegance of the 1976 Act, especially as amended, is discussed in JESSICA LITMAN, DIGITAL COPYRIGHT (2000).
2. 17 U.S.C. § 102(a) (2000). Section 102(a) is discussed in Part II.
3. 17 U.S.C. § 102(b). Previous copyright statutes had no counterpart to this provision. The case law origins of the § 102(b) exclusions are discussed in Part I and the legislative history of § 102(b) in Part II.
4. Case law interpreting § 102(b) is discussed in Parts IV and V. The software copyright literature has sometimes explored the implications of § 102(b) for nonliteral elements of programs, such as structure and organization.[AU] E.g., Steven R. Englund, Note, Idea, Process, or Protected Expression?: Determining the Scope of Copyright Protection of the Structure of Computer Programs, 88 MICH. L. REV. 866 (1990). Much of this literature has asserted that the strictures of § 102(b) mean that programs should enjoy only a thin scope of protection from copyright, although the articles rarely analyze the specific words of exclusion. See, e.g., Paul Goldstein, Infringement of Copyright in Computer Programs, 47 U. PITT. L. REV. 1119, 1125 (1986) [hereinafter Goldstein, Infringement] (describing software as receiving “very thin” copyright protection); Dennis S. Karjala, Copyright, Computer Software, and the New Protectionism, 28 JURIMETRICS J. 33, 54 (1987) (observing that although computer programs are “the fruit of intellectual labor,” copyright law does not necessarily protect them); Pamela Samuelson et al., A Manifesto Concerning the Legal Protection of Computer Programs, 94 COLUM. L. REV. 2308, 2351 (1994) (noting that program behavior is not generally protected by copyright law); Lloyd L. Weinreb, Copyright for Functional Expression, 111 HARV. L. REV. 1149, 1250 (1998) (suggesting that “anything less than literal copying [of a program] . . . should not constitute infringement”). Some commentators have been skeptical of the “thin” protection doctrine, although without close analysis of § 102(b). See, e.g., Jane C. Ginsburg, Four Reasons and a Paradox: The Manifest Superiority of Copyright over Sui Generis Protection of Computer Software, 94 COLUM. L. REV. 2559, 2561 (1994) (criticizing “thin scope” decisions); William F. Patry, Copyright and Computer Programs: It’s All in the Definition, 14 CARDOZO ARTS & ENT. L.J. 1, 6–7 (1996) (same).
Beyond the software copyright commentary, § 102(b) has been given little attention, even by authors of major treatises. See 1 PAUL GOLDSTEIN, GOLDSTEIN ON COPYRIGHT § 2.3 (2006) [hereinafter GOLDSTEIN ON COPYRIGHT]; 1 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT §§ 2.03, 2.18 (2006) [hereinafter NIMMER ON COPYRIGHT]. Also not much discussed is whether the exclusions in § 102(b) should be understood as illustrative or exhaustive. Compare Robert L. Bocchino, Jr., Note, Computers, Copyright and Functionality: The First Circuit’s Decision in Lotus Development Corp. v. Borland International, Inc., 9 HARV. J.L. & TECH. 467, 477 (1996) (suggesting that the eight words are illustrative rather than exhaustive and that “courts probably should not attach too much significance to the specific meanings of the individual words”) with Patry, supra, at 36–37 (suggesting that the eight listed words are exhaustive).
Oracle's Reply Brief in Google Copyright Case
Before the parties hit the crossroads I mentioned further above, there's
actually quite some consensus. In particular, Google admitted a long time ago
that it has copied the material in question from Oracle (its Sun Microsystems
subsidiary, to be precise). Google doesn't claim to have written those 7,000
lines independently. Nor does it deny that this is expressive, creative
material, or dispute that Sun's engineers had a whole lot of creative choice
when they wrote all of this declaring code. That's why Oracle's brief says
Google "concedes away the entire case" -- under established copyright principles
the way Oracle sees them.
[PJ: Actually, as Google wrote in its brief, "Judge Alsup found that Java’s class and method names and declarations must be expressed precisely, with no variation, to achieve interoperability with applications using the JPL and the APIs at issue." That's why using them was not found to be a violation of copyright law. So there is no concession that this ever happened. Instead, Google wrote this:
Let's step back for a moment before we talk about these "established copyright
principles", i.e., the relevant statutes and precedential rulings.
Oracle accuses the district court of practicing “software exceptionalism” by denying the 37 packages the copyright protection granted to works of imaginative fiction. But it is Oracle that seeks preferential treatment by asking this Court to exempt the Java API from the normal process of section 102(b) filtration. Did you notice Google offering some cases? Me too. Novels and software are not the same, and the law doesn't treat them exactly the same (which is why the law allows you one backup copy of software, for example, something not allowed with a book), but Oracle doesn't want them to be distinguished by the courts. That is copyright extremism, and if Oracle prevails, it will destroy innovation in software.
Oracle’s plea misapprehends the law. The Ninth Circuit (like all other courts) rejects Oracle’s assertion that the Copyright Act protects computer programs and works of imaginative fiction equally. Rather, courts recognize “that some works are closer to the core of intended copyright protection than others,” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 586 (1994), and that “not all copyrighted works are entitled to the same level of protection.” Sega, 977 F.2d at 1524.
While elements of some computer programs “may be highly creative and idiosyncratic,” they are, “in essence, utilitarian articles—articles that accomplish tasks. As such, they contain many logical, structural, and visual display elements that are dictated by the function to be performed, by considerations of efficiency, or by external factors such as compatibility requirements and industry demands.” Sega, 977 F.2d at 1524. The presence of such unprotected functional elements results in “a lower degree of protection” for computer programs and platforms than for “more traditional literary works.” Id. at 1526; accord Sony, 203 F.3d at 603.
There is nothing unfair or discriminatory about this, because all works are subjected to the same rules of copyrightability. However, applying the same rules evenhandedly to different works naturally produces different levels of protection. “To the extent that a work is functional or factual, it may be copied, as may be those expressive elements of the work that ‘must necessarily be used as incident to’ expression of the underlying ideas, functional concepts, or facts.” Sega, 977 F.2d at 1524 (citations omitted). As a result, “[w]orks of fiction” —- like Harry Potter -— “receive greater protection than works that have strong factual elements, such as historical or biographical works, or works that have strong functional elements, such as accounting textbooks. Works that are merely compilations of fact are copyrightable, but the copyright in such a work is ‘thin.’” Id. (citations omitted). Likewise, if a work is “largely functional,” like software, “it receives only weak protection. This result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art.” Sega, 977 F.2d at 1527 (citation and quotation marks omitted).
As applied to software, “thin” or “weak” protection means that section 102(b) filtration typically leaves behind two elements for copyright protection:
(1) Literal elements (source and object code), except insofar as specific sequences in that code were “dictated by the function to be performed” or must be copied to meet “compatibility requirements” or “industry standards.” Sega, 977 F.2d at 1524.
Whether a particular program element gets filtered out depends on the “factual nuances” of the technology. See Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1548 & n.33 (11th Cir. 1996).
(2) Non-literal elements that are not necessary to the program’s function. See Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 704-05 (2d Cir. 1992). By contrast, courts have identified many different functional aspects of software that “may not be entitled to copyright protection when they are the subject of nonliteral copying.” 1 Ian C. Ballon, E-COMMERCE AND INTERNET LAW § 4.07 (2012-2013 update) (collecting examples).
Here's another snip from Atari:
Under the Act, society is free to exploit facts, ideas, processes, or methods of operation in a copyrighted work. To protect processes or methods of operation, a creator must look to patent laws. What Oracle is trying to get is patent-like protection for software, without applying for patents. In its brief, it has the nerve to cite Atari, like this:
The court saw this software as just different. It believed that each line of source code Google copied is an unprotectable “method of operation,” 17 U.S.C. § 102(b), because it is just a command to carry out a pre-assigned function. Sigh. Congress chose to include 8 little words about exceptions to copyright law. And Oracle mischaracterizes Atari by pretending that software code, the code that runs, and APIs are the same kind of code. They are not, and Oracle is a tech company, so they have to know better than to approve such drivel. I call it that, because here's the full paragraphs from Atari on what Congress did:
This notion of software exceptionalism for any code is wrong. Congress chose to protect computer programs under copyright law. As this Court recognized in Atari Games Corp. v. Nintendo of America, Inc., 975 F.2d 832 (1992), software code is protectable expression because authors select and arrange lines of source code in an original way. Id. at 838. Under Atari, copyright law recognizes no difference between original expression embodied in the topic sentences or organization of Harry Potter and original expression embodied in like features in software. This Court should reverse the district court’s basic legal error.
The 1976 Act, however, sets limits on the scope of copyright protection. In the words of the Supreme Court, "[t]he mere fact that a work is copyrighted does not mean that every element of the work may be protected." Feist, --- U.S. at ----, 111 S.Ct. at 1289; accord Harper & Row, Publishers v. Nation Enter., 471 U.S. 539, 547-48, 105 S.Ct. 2218, 2224, 85 L.Ed.2d 588 (1985). Does that match what Oracle wrote? Why not? Seriously. Why not? What is the point of going to court and misleadingly characterising a case? Congress did not write the law to treat novels and software the same way, as you can see with your own eyes. Now I have another question. Why didn't FOSSpatents call them out on this misleading characterization? Isn't that an analyst's job? What good is analysis if it consistently rubber stamps a client's position?
Section 102(b) of title 17 states:
In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
17 U.S.C. § 102(b). The 1976 House Report on section 102(b) applies this limitation directly to computer programs.
Some concern has been expressed lest copyright in computer programs should extend protection to the methodology or processes adopted by the programmer, rather than merely to the "writing" expressing his ideas. Section 102(b) is intended, among other things, to make clear that the expression adopted by the programmer is the copyrightable element in a computer program, and that the actual processes or methods embodied in the program are not within the scope of the copyright law.
H.R.Rep. No. 1476, 94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670.
Let me stress that what Judge Alsup ruled wasn't that *all* APIs are not worthy of copyright protection. Some may be. But what he found was that these particular Java APIs were not.]
[PJ: That would be refreshing. But in any case, I just did it for you.]
reply brief raises a key issue, which I'm going to call "line drawing": what
would be the wider impact of Google's proposed approach on the copyrightability
of software? What software would and would not be copyrightable? Line drawing is
key to any court, and especially to an appeals court. Judge Alsup said toward
the end of his non-copyrightability decision that he didn't mean to deny
copyright protection to all APIs under all circumstances. He said his ruling was
specific to the facts of this case -- but the amici curiae who urged reversal
warned against its (even if maybe unintended) consequences. Line drawing means
that you need a set of rules (including tests) to say that A falls within the
scope of something while B doesn't. Judge Alsup said B doesn't, but there might
be an A -- and in ruling on one particular case, he didn't indicate what
API-related code he would deem copyrightable. He didn't have to. But the appeals
court will think about this a lot.
Line drawing is pretty easy if you're Professor Samuelson and wrote, back in
1984, a paper entitled "CONTU Revisited: The Case Against Copyright Protection
for Computer Programs in Machine-Readable Form". Oracle's brief portrays her
position as follows: "The professor 'firmly believes' that Congress was wrong to
grant copyright protection to computer programs and should have created 'a new
form of intellectual property law.'" (As an aside, I for my part think a /sui
generis/ IPR for software would be very interesting and, depending on its
specific manifestation, could be a really great thing, but let's not digress
into this in this context, which is all about the law as it stands and not the
law someone would like to see made in the future.)
Oracle criticizes Google for failing to explain how software is still
protectable if its broad (and, in Oracle's view, incorrect) understanding of an
exclusion from copyrightability of functional, utilitarian works applies:
"[A]n original work--even one that has a function--is entitled to copyright
protection so long as the author had multiple possible ways to express an
idea. Instead, Google asserts that if a computer program--or any other
literary work--is functional, it loses protection no matter how creative it
is. Google never explains how any software can be protected under its view,
since all computer programs are 'fundamentally a functional, utilitarian work.'"
[PJ: This is FUD from Oracle too, endorsed by FOSSpatents. Google and Judge Alsup each addressed how you can tell at length, as does the paper on the exclusion language that Congress wrote. What Oracle fails to explain is how that language about exclusions got into Copyright Law if the Congress didn't intend to have exclusions?]
I guess this passage is going to get a lot of attention from the Federal
Circuit judges (maybe more than anything else in the document), who have taken
great care in connection with patent-eligibility cases not to create broad
exclusions through case law that U.S. Congress never intended and that only
Congress could enact (Oracle's reply brief dismisses certain parts of Google's
appellate argument as "policy arguments that are best addressed to Congress").
[PJ: They are not policy arguments if Congress wrote the law the way it wanted to write it. It's about what Congress intended, and Oracle is claiming Congress didn't mean what it wrote. Now *that's* a policy argument.]
In its efforts to defend Judge Alsup's reasoning, it never crossed Google's mind
that it would have to be reasonably specific as to what kinds, elements and
aspects of software fall within the scope of copyrightability if the appeals
court affirmed the district court's ruling. Some of Google's argument is
interoperability-centric, and interoperability is what I'll discuss in the final
part of this post.
[PJ: This isn't true either. He just throws out these allegations without proving a thing, as if we all know they must be so. But if you read Google's brief, they spend entire sections on this topic. For starters, Google lays out, from Judge Alsup's order, why he found these JAVA APIs not copyright-protected:
The way Google defines interoperability also doesn't have
much of a boundary.
There is a great deal more on it, and I encourage you to read the Judge's order [PDF; text], as well as the Google brief, to clear your palate, so to speak, from this misleading description by FOSSpatents and Oracle.]
2. The Order.
Based on extensive factual findings,123 the district court concluded that the reimplemented SSO elements received no copyright protection. Three established rules compelled that result:
- Under Ninth Circuit precedents, the functional elements necessary to
achieve compatibility with an existing computer program or platform are excluded from copyright protection by section 102(b) of the Copyright Act. The district court found that the Java API method names, class names, and declarations that Google used in its Android mobile-computing platform were functional elements necessary to achieve compatibility with a vast
body of existing programs written in the JPL. To achieve interoperability with those programs, Google had to provide the same java.package.Class.method() command system in Android, using the same names, the same “taxonomy,” and the same functional specifications.124 But Google only replicated what was necessary to achieve a degree of interoperability with existing Java programs, taking care to provide its own implementation of the Java methods and packages.125 Thus, the API elements that Google used were functional compatibility elements excluded from copyright protection by section 102(b).
- Names and short phrases are likewise excluded from protection. The district court found that the method names, class names, and declarations that Google used in Android were too short to qualify for copyright protection by themselves.126
Command structures that users employ to operate a computer program are excluded from copyright protection as “method[s] of operation” under section 102(b). The district court found that the Java API’s overall scheme of file-name organization is a command structure for a system or method of operation of the API—a long hierarchy of over six thousand commands to carry out pre-assigned functions.127 Thus, the API elements that Google used were a system or method of operation excluded from copyright protection by section 102(b).
The court cautioned that its Order was limited to “the specific facts of this
case” and “the particular elements replicated by Google.”128
IV. SUMMARY OF ARGUMENT
The district court committed no clear error in finding that the command structure of 37 Java API packages is functionally necessary (1) to achieve compatibility with programs written in the Java Programming Language and (2) to access, control, and use the Java class libraries. The district court also correctly found that the command structure is composed of short names and phrases. Those findings, viewed in light of the Ninth Circuit’s Sega and Sony decisions and the First Circuit’s Lotus decision, compelled the conclusion that section 102(b) excludes the command structure from copyright protection. The judgment should be affirmed.
[PJ: The boundary was set by Congress that way, leaving it to the courts to rule based on the specific facts of each case. Fair use, by the way, is written essentially the same way, with no specific boundary, but principles instead to apply to the facts of the case, case by case. However, in both cases, over time, people get a fairly good idea of where the boundaries are.]
But in connection with the merger doctrine (where there's
only one way to express a certain function, function and expression merge),
Google advocates a broad exclusion that goes beyond interoperability and
includes anything functional. This proposed exclusion is so very broad that the
startups, investors and app developers who supported its position would be very
unhappy about the further effects of affirmance, just that they haven't realized
[PJ: You can see, above, enough of Google's brief in the quotations to see that this is nonsense. Note also that the merger doctrine isn't the same thing as the exceptions in the law. FOSSpatents isn't written by a US person, and he gets things wrong sometimes, because US law isn't his native tongue, so to speak. Here's an article by Groklaw's own Mark Webbink, also Visiting Professor of Law, New York Law School, written along with two of his students there, Omar Johnny and Marc Miller, "Copyright in Open Source Software - Understanding the Boundaries", which explains a number of aspects of US copyright law, including a section on the merger doctrine:
By contrast, it's pretty clear now where Oracle says the law draws the line:
expressive software code, whether declaring or not, is protectable. Expression
means creativity, which in turn requires choice -- choice on the part of who
writes the original code, not the one deciding to copy some or all of it later.
If Oracle wrote program code that is completely dictated by technical
circumstances without any expressive choice, it wouldn't claim copyright in such
code (regardless of how much effort, "sweat of the brow", goes into it). But if
a copyist restricts himself, he can't count on Oracle's support.
Idea/Expression Merger Exception to Copyright Protection
Under the Act, in no case does copyright protection extend to any idea regardless of the form in which it is described, explained, illustrated, or embodied in such work.89 "It is a fundamental precept of copyright that only the expression of ideas, and not the ideas themselves, are copyrightable."90 "Merely stating the rule, however, does not make any easier the task of drawing the line between where idea ends and expression begins."91
The line between idea and expression may be drawn with reference to the end sought to be achieved by the work in question. In other words, the purpose or function of a utilitarian work would be the work's idea, and everything that is not necessary to that purpose or function would be part of the expression of the idea ... Where there are various means of achieving the desired purpose, then the particular means chosen is not necessary to the purpose; hence, there is expression, not idea.92
The characteristics of computer software, a utilitarian work, make the determination of idea and expression more complicated. Competitive forces that exist in the software marketplace lead to the problem that multiple programmers may design identical or highly similar works.93
Efficiency is an industry-wide goal. Since, as we have already noted, there may be only a limited number of efficient implementations for any given program task, it is quite possible that multiple programmers, working independently, will design the identical method employed in the allegedly infringed work. Of course, if this is the case, there is no copyright infringement.94
The merger doctrine is as an exception to the idea-expression dichotomy which holds that, when there are so few ways of expressing an idea, not even the expression is protected by copyright.95 When idea and expression merge such that a given idea is inseparably tied to a particular expression, rigorously protecting the expression would confer a monopoly over the idea itself, in contravention of the statutory command. To prevent such an occurrence, courts have invoked the merger doctrine.96
In the realm of computer programs, merger issues may arise in unusual ways. Although, there may be many ways to implement a particular idea, efficiency concerns can make one or two choices as to virtually eliminate any other form of expression.97
Computer searching and sorting algorithms provide good examples of this phenomenon. Any computer system that deals with significant quantities of data will spend much of its operating time engaged in sorting and searching through that data. Because the amount of time spent on sorting and searching operations can significantly influence a program's operating speed, efficient methods of sorting are
highly desirable. A great deal of computer science research has been devoted to developing methods of sorting or searching through data, and to analyzing the relative efficiency of various methods. As a result of such research, it is now recognized that some methods of sorting or searching are significantly more efficient than others in handling particular types of data, even though any of numerous methods will work. In such cases, the merger doctrine should be applied to deny protection to those elements of a program dictated purely by efficiency concerns.98
While the merger doctrine and the functionality exception to copyright protection are similar, there is a slight difference which distinguishes the two. "Under the merger doctrine, when an idea can be expressed in only one fashion, that expression is not protected by copyright."99 Here the focus is on the limitations of the expression of an idea which results in the merger of that idea and its expression. In contrast, elements are functional if they are necessary to the program and do not exhibit any creativity.100 In reference to the functionality exception, the focus is not on the limitations on expression of an idea resulting in merger of the two, but on aspects of a program's structure which are dictated by the nature of other programs with which they were designed to interact.101
Computer Assoc., 982 F.2d at 708.
Oracle's position doesn't mean that copyright becomes similarly broad as
patents. This case is about (undisputed) literal copying of 7,000 lines of code.
It doesn't mean that a single, simple line of declaring code is necessarily
copyrightable. Nor does it mean that a broad concept, such as that of
Write-Once-Run-Anywhere, would be owned exclusively by one company that
describes it in a document. So Oracle divides software into copyrightable and
non-copyrightable categories. Google doesn't.
[PJ: I'm sure you don't need me to point out that this isn't true. Google does, as you can see from all the above. It's actually Oracle that would like to move the line from where it now is, so that its functional code gets protection. However I would like to draw your attention, since FOSSpatents mirrors Oracle's language, that Google doesn't think the phrase "declaring code" is appropriate, as it explains in its footnote 165:
Oracle says that "[o]f course, Google is free to advocate for changes in
copyright law, and is doing so vigorously", pointing to a section in the Picture
Archive Council of America's amicus brief "discussing Google's anti-copyright
165 We avoid Oracle’s phrase “declaring code” because it obscures the fact that Java names and declarations are not implementing code. A22362,22390- 91,134n.4. While implementing code may be copyrightable, it is undisputed that Google implemented the packages independently by writing its own implementing code or acquiring it from open source.
[PJ: Nothing like throwing in one more slur against Google. This is a case where Google was found innocent of any real infringement of Oracle's copyrighted work. Rather, the judge found that Oracle was seeking copyright infringement rulings on works that were not copyrightable. But you don't see Google writing insults about that in its briefs. They are classier than Oracle, and I personally believe it's one reason why they prevailed at trial. That and having the law on their side.]
I'll do more posts on this case, so I won't go into full detail on Oracle's
summary of the case law right here and now. But there's one more key issue to
discuss in light of Oracle's reply brief: interoperability.
Interoperability is key to the four terms contained in a section of Oracle's
reply brief described as a "Google-English dictionary", providing "translations"
of certain terms used by Google because "Google twists the meaning of ordinary
words to obfuscate their true import". This "dictionary" is fun to read
(citations omitted in quote below):
"*/'Industry standard':/* Google calls the declaring code 'a de facto
industry standard,' --and then subtly drops the hedge, calling it 'an
industry standard'. But Google does not mean that there is some
standard-setting organization that sets out voluntary disclosure standards
(there isn't) or that Oracle promised to let Google or any other commercial
enterprise use its work without a license (it didn't). Google just means
that the software packages became wildly popular.
[PJ: That is, in fact, what a de facto industry standard is. I recall, for example, when Microsoft was trying to get its OOXML used by folks requiring standards, it argued that de facto standards should count. In any case, the JCP says it is the body that sets the industry standard for Java. " The JCP is the mechanism for developing standard technical specifications for Java technology." So there is such.]
*/'Necessary':/* When Google says that everything it copied was 'necessary
for compatibility,' it does not actually mean 'necessary.' The most Google
can assert is that '[t]hree of the  accused packages'--more precisely,
750 methods in 61 classes in those three packages--'were 'fundamental to …
the Java language.'' But embedded in that assertion is the concession that
it was not necessary to copy a thing from the other 34
packages--specifically, 6088 methods in 616 classes and interfaces across
all 37 packages.
[PJ: Actually, it was Judge Alsup, who ruled that Google took only what was necessary and nothing more, and Google quoted him in its brief:
A jury could find—as the district court did—that “[c]omparing the 37 Java and Android packages side by side, only three percent of the lines of code are the same.”... These “must be identical” because “there is only one way to declare a given method”; and the “same is true for the ‘calls,’ the commands that invoke the
methods.”... And “Google replicated what was necessary to achieve a degree of interoperability—but no more, taking care, as said before, to provide its own implementations.” Is that not clear? There was no Google concession. This is just Oracle spin.]
*/'Interoperable' and 'Compatible':/* When Google says that it copied the
Java packages to ensure “interoperability with existing programs written in'
Java, and that any use of the Java packages 'was dictated by … external
factors such as compatibility requirements,' it does not mean that it
developed a product that was in fact 'interoperable' or 'compatible.' Google
admits that Android is not interoperable with Java, in that 'you won’t be
able to write an Android app while also using [Java]-specific classes.'
Rather, Google means that it wanted to harness the popularity of the
declaring code and organization of certain Java packages so that Android
would have a pre-existing community of followers who were accustomed to Java.
*/'Imperfect interoperability':/* When Google invokes the district court's
assertion that Android achieved 'a degree of interoperability' or 'imperfect
interoperability,' it does not mean that there is any significant degree to
which Android apps run on Java and vice versa. There isn't. Instead, Google
means that it took the packages of code that were most valuable to
it--because programmers would expect to find them in a smartphone
development platform--and left behind the packages that were less useful."
[PJ: There could be full interoperability, if Oracle just did in reverse what Google did with Dalvik. I mean, if that is what they want, just do it. Google made the code interoperable for its intended use. If Oracle wants full interoperability, it's there for the taking. This dictionary "translation" isn't accurate or fair, so I don't find it as hilariously fun as FOSSpatents does. Here's what Google wrote about Oracle's interoperability complaints:
The above is indeed important to bear in mind when analyzing Google's
"interoperability" argument. If the Federal Circuit doesn't adopt Google's
extremely broad and almost borderless definition of interoperability, then it's
pretty much game over for Google's non-copyrightability argument as well as its
"fair use" argument. Should the appeals court agree with Google, there are still
d. Oracle’s interoperability arguments are wrong. Say, did FOSSpatents fail to tell us that the BSA, widely viewed as a paid mouthpiece for Microsoft, was one of Oracle's illustrious amicus supporters?
The district court held that “interoperability is at the heart of the command structure” formed by Java’s package-and-class scheme and “sheds further light on the character of the command structure as a system or method of operation.”147 But Oracle insists that interoperability (i.e., compatibility) is irrelevant and had no place in the district court’s analysis.148
Sega and Sony show that Oracle is wrong, as they held that copyright does not protect program elements “dictated by . . . external factors such as compatibility requirements and industry demands.” Sega, 977 F.2d at 1524; accord Sony, 203 F.3d at 603. Indeed, courts have found a wide variety of interoperability issues pertinent to software protection, including “hardware standards and mechanical specifications, software standards and compatibility requirements, computer manufacture design standards, target industry practices and demands, and computer industry programming practices.” Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 838 (10th Cir. 1993) (collecting cases) (citations omitted). Most courts now agree that copyright does not protect interfaces required for interoperability. See Jonathan Band & Masanobu Katoh, INTERFACES ON TRIAL 2.0 at 36 (2011) [hereinafter INTERFACES].
Oracle and its amici also argue that interoperability is “all or nothing”: to achieve it, Google must implement all 166 Java packages and Android must run all existing Java programs. But the district court correctly held that “‘full compatibility’ is not relevant to the Section 102(b) analysis.”149 The court noted that, “in Sony, the accused product implemented only 137 of the Playstation BIOS’s 242 functions because those were the only functions invoked by the games
tested. This parallels Google’s decision to implement some but not all of the Java API packages in Android.”150
Notably, the IEEE defines interoperability as “the ability of two or more systems or elements to exchange information and to use the information that has been exchanged.” THE IEEE STANDARD DICTIONARY OF ELECTRICAL AND ELECTRONICS TERMS 548 (6th ed. 1997). Nothing in that definition requires that the two systems be identical. Moreover, there is no reason to consider the interoperability of non-accused program elements. In Sony, the Ninth Circuit limited its interoperability analysis to the 137 BIOS functions reimplemented by the defendant. Here, too, what matters is the interoperability of the 37 accused Android packages; and those packages meet the IEEE definition of interoperability with respect to existing Java programs that use the same packages. Although amicus BSA asserts that this interoperability is merely “hypothetical,” it cites no facts to support that contention, which is both wrong and contrary to the district court’s many careful findings on interoperability.
Here's something else Google wrote in its brief that may further subtract from the hilarity:
Oracle first tries to distinguish Lotus on the ground that Borland did not use Lotus’s “underlying computer code”; but the same is true here—unless one counts the “7,000 lines of declaring code” (less than 3% of the lines in the 37 packages) that the district court found Google had to use to achieve interoperability.164 As demonstrated at Part V.D., below, there is no claim in this case for the infringement of 7,000 lines of code, considered apart from the packages’ SSO. Moreover, the declarations that Google used are closely analogous to what Borland used: just as the Lotus menus were the means by which users invoked Lotus functions, the Java API is the means by which users invoke Java class-library functions. See? It's just appalling to see things so twisted around. Then again, that's what Groklaw is for. And if they don't get tired, I won't either.]
Oracle also criticizes Lotus for defining “method of operation” so broadly as to render all computer programs uncopyrightable. Not so. Lotus held that the exclusion applies to means that a user must employ to access, control, and use a product. Users operated the Lotus 1-2-3 spreadsheet through its menu command hierarchy, not through the countless other elements that were not captured by
Lotus’s “method of operation” definition. Indeed, the decision states that the screen displays (apart from the command structure) as well as the code implementing the Lotus Emulation Interface and the Key Reader still could receive copyright protection. 49 F.3d at 815-16. Thus, applying the Lotus “method of operation” definition to computer programs will not strip all programs of copyright protection as Oracle predicts—indeed, it didn’t even strip protection from most elements of Lotus 1-2-3.
[PJ: I believe Google's argument on this has whizzed right by him. The point is, the district court judge ruled, that "‘full compatibility’ is not relevant to the Section 102(b) analysis.” If it's not copyrightable, one is free to do whatever one can think of doing with it, including copying it in whatever way you wish, without having to be interoperable with anything.]
Google basically claims that the Sega and Sony rulings, which I discussed
last year, create
an interoperability privilege at the level of copyrightability -- when those are
"fair use" cases that actually held some software copyrightable (as Oracle's
reply brief points out), tiny pieces of code compared to what's at issue in
Oracle v. Google.
Oracle also clarifies the scope of the findings in favor of
fair use in those cases:
"The copies at issue in Sega and Sony were not final, commercial
products, but intermediate copies used to figure out how the software works.
In contrast, Google's copying here was for a final, commercial product:
According to Oracle, "Sega and Sony do not help Google in fair use any more
than they did for copyrightability". There definitely is a difference: at least
those are "fair use" cases that resulted in the finding Google wants in its
(distinguishable) case: fair use. They are not copyrightability cases, and the
software that was found to be used fairly was found copyrightable (which Google
strives to avoid in its case). Fair use applies to copyrightable material. If
something isn't copyrightable, fair use doesn't matter, which is why Google's
"fair use" in this claim still hasn't been ruled on (the jury was hung, which
means that neither party prevailed on this one, and it only matters if and
when the asserted declaring code is found copyrightable).
[PJ: The jury was told that they had to assume that the materials were copyrighted. But after the jury verdict on the other issues, the judge decided that they were not. So fair use, unless the appeals court overrules the judge on this copyrightability ruling, isn't in the picture. And in any case, it's quite typical for briefs to address more than one topic, even topics that are contingent and hence even contradictory *because* they are contingent. "Under Lotus," Google writes, "the Java API SSO is an uncopyrightable method of
operation because it is essential to accessing, controlling, or using
the packages." But just in case the appeals court disagrees, and if the case is remanded, and everything goes back to Go, fair use should be back on the table and be retried, Google argues, and it believes it has four bases on which it should prevail, should that be necessary:
There's more stuff in Oracle's reply brief that's worth discussing. And Google's
final brief will also be very interesting. I'll continue to follow and comment
on this case.
1. A jury could find that Google’s use was
transformative, and thus fair.
Oracle, on the other hand, argues, "No such retrial is necessary. Google’s defense fails as a matter of law." Well, then why did the issue ever go to a jury in the first place? And it's perfectly normal, when a jury hangs on an issue, to retry it if the case is remanded back for retrial.]
2. A jury could find that the “nature” of the work
3. A jury could find that Google only used what was
necessary for interoperability—a small fraction of
the overall code.
4. A jury could find that the market-effect factor favors
[PJ: Well, all right. And I'll continue to point out any egregious mistakes or omissions, because that is the ethical responsibility of a journalist, to correct misinformation (Cf. Society of Professional Journalists' Code of Ethics).]