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Google Files Reply Brief in the Oracle v. Google Appeal - There Is Too a De Minimis Defense and Oracle Knows It ~pj Updated
Thursday, July 25 2013 @ 01:25 PM EDT

Google has now filed its Reply Brief [PDF] in the appeal in Oracle v. Google. This cross appeal is about alleged copyright infringement for copying by mistake 9 lines of rangeCheck code (out of millions of lines of code) and eight decompiled test files that never made it onto any Android device and were done by a contractor in violation of Google's instructions.

What's the big deal, you ask? Exactly. "Google’s copying was de minimis—too insubstantial in relation to the “work as a whole” to be actionable," Google writes.

If you recall, Oracle in the brief Google is here replying to, said that there is no de minimis defense in the Ninth Circuit, only fair use. Oracle also admitted this was the first time it brought this up. It also argued that the materials copied were important.

Google says there is too a de minimis defense in the Ninth Circuit, and Oracle knows it. Oracle now claims the cases establishing that defense were "wrongly decided", but earlier in the litigation "Oracle actually proposed jury instructions embodying the de minimis-copying doctrine whose existence it now denies." That bars Oracle from making the opposite argument now in the appeal, Google states.

In short, Oracle is making a big fuss over trivialities. Normally, nobody sues over this kind of trivial copying. But since Oracle has, Google says it was supposed to demonstrate why such copying was *not* de minimis, which it has failed to do. Like, who could? It's stupidly teensy weensy stuff. Why Oracle can't see that it's making itself look petty and small is the only mystery.

Here's the introduction, to get you started, while I work on the full text:

I. INTRODUCTION

Google’s cross-appeal required Oracle to address several matters of substance—e.g., whether it made sense for the district court to define individual program files as entire works when there was no evidence that they could function independently; whether the district court was free to override a jury verdict that copying eight test files that never made it onto an Android device1 was de minimis and thus non-actionable; and how a jury reasonably could find that copying a mere nine lines of rangeCheck code was not de minimis. Oracle also needed to reconcile its contention that the rangeCheck copying was “substantial” with the district court’s finding that Google’s copying of those nine lines was “innocent and inconsequential”2 as well as “innocuous and overblown by Oracle.”3 Instead of providing compelling answers to those questions, Oracle’s cross- appeal brief reprises some of the most troubling aspects of Oracle’s main appeal from the adverse judgment on its SSO claim.4 As in its main appeal, Oracle brushes aside the controlling Ninth Circuit case law while ignoring the fact that it waived its main argument by failing to object to relevant jury instructions.

Specifically, Oracle now asks this Court to disregard (as “wrongly decided”) binding Ninth Circuit precedent expressly holding that de minimis copying is non-actionable “even where the fact of copying is conceded.” Newton v. Diamond, 388 F.3d 1189, 1193 (9th Cir. 2004). And Oracle ignores the fact that its failure to object to the district court’s jury instructions on de minimis copying bars it from arguing (erroneously) that there is no de minimis-copying doctrine in the Ninth Circuit. Indeed, Oracle actually proposed jury instructions embodying the de minimis-copying doctrine whose existence it now denies.

For all the reasons stated below and in Google’s cross-appellant’s brief, the court should grant Google’s cross-appeal, grant JMOL as to the rangeCheck code, and reverse the district court’s grant of JMOL as to the eight test files.

_________
1 A143; see A21492.

2 A143.

3 A142; see also A22044:24-A22045:7 (district court characterizing the literal-copying claims as “a tiny thing” that served Oracle’s purposes as “coloration” at trial).

4 “SSO” refers to “structure, sequence, and organization.”

This is saying, in polite prose, that Oracle is making an exaggerated fuss over a little bit of nothing, something so insignificant the district court called it "tiny" and the Ninth Circuit says is too small to sue over:
The maxim “de minimis non curat lex” means “the law does not concern itself with trifles.” See Newton v. Diamond, 388 F.3d at 1193. The doctrine’s purpose is “to avoid flooding the courts with trivial infringement cases.”...

Oracle’s principal response to Google’s cross-appeal is to argue that, in the Ninth Circuit—contrary to the “de minimis” maxim—the law does concern itself with trifles. Indeed, Ninth Circuit law is so thoroughly obsessed with trifles, according to Oracle, that it would impose copyright-infringement liability for the literal copying of just nine of the millions of lines in the Java platform—even when the district court found that copying to be “innocent and inconsequential”7 as well as “innocuous and overblown by Oracle.”8 According to Oracle, Ninth Circuit law also imposes liability for copying eight files out of the tens of thousands of files in the Java platform—files of such trifling significance that the district court found that they “were merely used as test files and never found their way into Android or any handset.”9

_______
7 A143.

8 A142.

9 A143.

The only reason this trifling stuff is even in the appeal is because the district judge, Google says, gave erroneous jury instructions, so the jury goofed. That is what Google is asking the court to fix:
Google’s cross-appeal argues that the district court erred in instructing the jury that, for purposes of applying the de minimis doctrine to copying of the rangeCheck code, “‘the work as a whole’ is the compilable code for the individual file,” not the entire registered work.20 Under that erroneous standard, the jury found that copying nine lines of rangeCheck code was not de minimis, and the district court granted JMOL overriding the jury’s verdict that copying the eight test files was de minimis. Neither result should stand.

Oracle’s sole defense of the “work as a whole” instruction is that “Google does not show the trial court erred in determining that the copied code files were stand-alone works.” Reply at 70 (citing A33). That response has two flaws.

First, the district court made no factual finding that the copied code files could function as stand-alone works. Oracle cites only to an order denying Google’s motion for summary judgment on Oracle’s claims for copying of the rangeCheck code and the eight test files.21 “[A]t the summary judgment stage the judge’s function is not himself to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). At trial, Oracle submitted no evidence that these files could function on a stand-alone basis. Indeed, the evidence suggested the contrary.22

Second, Oracle’s only basis for claiming that the copied code files were stand-alone works is that they were contained in separate files. But that is not the standard. The standard is whether the copied portion is “copyrighted separately” or “stored separately” and can “stand totally alone” from the rest of the copyright work.23

Oracle failed to (and cannot) satisfy that standard here. Oracle introduced no evidence to suggest that these files can “stand totally alone” or that they are “stored separately” from the rest of the Java platform. Indeed, if one were to try to “use” the Arrays.java file or one of the decompiled test files independently from all other parts of the platform, they would not perform any useful function or do anything at all.24 Moreover, Oracle introduced no evidence that these files are “stored” differently than the rest of the code that makes up the Java platform. Rather, the code for these files is interwoven among millions of other lines of code, and Oracle did not even recognize any similarities in the files until it ran a forensic search of Google’s source code.25

Moreover, holding that the mere placement of code in a separate file creates a stand-alone work would effectively nullify the de minimis doctrine in software-copying cases. It may be possible to carve up a program arbitrarily into multiple files. Unlike the division of a magazine into articles, the division of a program into files may have no effect on the program’s function.26

Thus, there was no legal basis for the district court’s instruction that each of these individual files within the J2SE platform constituted a “work as a whole.” Rather, they were entitled to copyright protection only as part of the Java platform, “just as a paragraph in a book may be entitled to copyright protection as part of the book.” Triangle Pubs. v. Knight-Ridder Newspapers, Inc., 626 F.2d 1171, 1177 n.15 (5th Cir. 1980).27

Accordingly, the district court’s “work as a whole” instruction was erroneous and Google’s cross-appeal should be granted. ________
20 A989-93,22779.

21 A33

22 See A3673-83,3705-20 (establishing that programmers need files other than the ones at issue in this cross-appeal—e.g., the java.lang package—to do anything with Java).

23 The fact that the files bore legends stating, for example, “Copyright 2004 Sun Microsystems, Inc.” (A2877), does not indicate that they were copyrighted separately or could stand alone, as Oracle intimates. See Reply at 70.

24 See A3673-83,3705-20.

25 A21480-85.

26 Cf. NXIVM Corp. v. Ross Inst., 364 F.3d 471, 480-81 (2d Cir. 2004) (rejecting, in fair-use context, plaintiff’s attempt to “narrow the denominator” in a quantitative-significance inquiry by conceptualizing a single, unitary work as separate “modules”).

27 While individual parts of collective works can receive separate copyright protection, see 17 U.S.C. § 201(c), Oracle did not register the Java platform as a collective work and, at trial, disclaimed reliance on collective-work protection. See A22310.

Did you notice footnote 27? Remember all that about Oracle's failure to register Java as a collective work? I told you at the time how impressed I was at Google's law firm noticing that and using it. And here it is, the payoff. Lawyers plan far in advance of the hoped-for check mate. As I've often told you, litigation is like chess, but with people. And in chess, you don't announce to the other side that you've moved your knight to a certain position because you have a plan for 20 moves later. They find out 20 moves later, or they may begin to suspect, maybe when it's too late to block.

Some of you are maybe wondering why Google gets to reply again. Isn't it ABA style, where one side files an appeal, the other reponds, and then the opening side replies? Yes, it is, but this is a bit more complicated. Let me explain.

We have today's Google Reply brief.

Here's the Oracle brief that Google is replying to.

Oracle in turn was responding to Google's Appeal and Cross-Appeal brief.

In turn, Google was responding to Oracle's opening brief that started the appeal going.

That's four hops, not the usual three. It's complicated-looking, but that's just because both companies are appealing things, not just one side. So instead of the usual A-B-A style, it goes like this:
A

B+C

A-reply-to-B+C

B-reply-to-C.

In other words, Oracle opened with its appeal (A). Google answered, responding to Oracle's appeal issues but adding its own appeal issues (B+C), after with Oracle responded to both prongs (A-reply-to-B+C). So that's ABA on Oracle's issues, plus Google's cross appeal, which started on the second prong. So Oracle's response to Google's cross appeal needs a Google third prong just on its cross appeal issues. I hope that's clear. It's still ABA, but with the Google cross-appeal, that does its own ABA-style of dance. So there's an ABA on Oracle's appeal, and also an ABA on Google's cross appeal.

Update: As I was transcribing, I noticed one more important detail. You may recall that I mentioned when Oracle filed its response to Google's response to Oracle's final brief on its own appeal issues that you are not supposed to bring up an argument for the first time in such a final briefing, because your opponent has no opportunity to respond. Google noticed that too, I see, and in its reply to Oracle's response to its cross appeal, it points out the impropriety of such behavior:

Here, Oracle cited Newton to the district court and, based on that case and other authorities, proposed an instruction embodying the “freestanding de minimis” doctrine—the very doctrine that it now attacks as non-existent in the Ninth Circuit. Accordingly, Oracle waived this argument.

Indeed, the argument is doubly waived because Oracle again failed to properly raise it in this Court. Cf. Smith v. Marsh, 194 F.3d 1045, 1052 (9th Cir. 1999) (holding that an argument was doubly waived where not raised below and not “fully articulated” until appellants’ reply brief on appeal). Oracle’s cross-appellee’s brief doesn’t even mention the district court’s instructions on the “freestanding de minimis” doctrine, let alone try to carry Oracle’s appellate burden of showing that those instructions contained “plain error” that calls “the integrity or fundamental fairness of the proceedings in the trial court . . . into serious question.” Jerden v. Amstutz, 430 F.3d 1231, 1236 n.4 (9th Cir. 2005); see Fed. R. Civ. P. 51(c)(1), (d)(1)(A), (d)(2). Oracle’s failure to challenge the jury instructions in its cross-appellee’s brief therefore constitutes a double waiver.

Avoiding the waiver issue altogether, Oracle instead cites cases holding that an appellate court can affirm the judgment based on any ground supported by the record, even if the district court did not rely on that ground. See Reply at 63 n.12. But the alternative-ground rule merely allows a reviewing court to affirm the judgment based on arguments that the district court ignored or rejected after those arguments were properly presented to it. See Granfinanciera, S.A. v. Nordberg, 492 U.S. 33, 39 (1989). Only in “‘exceptional cases’” will courts overlook a party’s waiver of an alternative ground, id. (citation omitted); and Oracle does not even try to show that this case is “exceptional.” Its alternative-ground cases are therefore inapposite.

There are consequences for cheating, but in the end it's up to the court whether it will care enough to act. But they should.

And there's a very sweet argument made in rebuttal to Oracle's assertion that rangeCheck is vital and that you can see that it is because it is called so often. Google says that just because you do something a lot, or use something a lot, it doesn't make it vital. You might use the word "the" in a novel thousands of times, but that doesn't make it central from a copyright point of view. And if you blink your eyes multiple times in a business meeting, that doesn't make blinking vital to the agenda:

Moreover, Oracle offered no testimony that would allow a reasonable jury to conclude that a method called 2,600 times must be qualitatively significant. Oracle’s expert did not testify, for example, about whether other methods are called tens of thousands of times, hundreds of thousands of times, or even millions of times during startup. Nor did he testify about the qualitative significance of the rangeCheck calls. An otherwise trivial element does not necessarily become significant through frequent use. A typical novel might include the word “the” thousands of times, but that does not render the word “the” qualitatively significant to Moby Dick. During a business meeting, attendees might blink their eyes hundreds or thousands of times, but that does not mean that the act of blinking was qualitatively significant. Standing alone and without any frame of reference, Oracle’s expert testimony about the number of times that rangeCheck is called during the startup of an Android emulator does not support a finding of qualitative significance.
Hilarious. Also true. Oracle should be ashamed at the pretense about rangeCheck. Unfortunately, shame seems to be in short supply at the moment.

Speaking of hilarious, FOSSPatents today comments on this point like this [http://www.fosspatents.com/2013/07/ googles-reply-brief-completes-briefing.html]:

By trying to deprive even those eight Java source files of protection Google really positions itself as a company promoting no-holds-barred IP infringement, and I'm not sure this was the right choice. It certainly would have been poor judgment in a political debate, where you build a majority by taking centrist positions. An appeals court is different from, say, Congress, but policy considerations will play a major role in the adjudication of this appeal....

At the hearing Google may have to explain to the Federal Circuit how its positions can be supported without abolishing software copyright.

Um. No. It won't. It will point to Newton and the other cases that found that trivial infringement should have no consequences. The issue is only whether to look at the 9 lines of code as standing alone or as part of a larger work of millions of lines of code. That is all Google will have to explain and persuade to prevail. Of course, to FOSSPatents, everything Google does is painted as huge crimes and misdemeanors, worthy of a spanking and eventual doom. It's hilarious.

Here it is, Google's filing, as text, in full:

*********

2013-1021, -1022

United States Court of Appeals
for the Federal Circuit

ORACLE AMERICA, INC.,

Plaintiff-Appellant,

v.

GOOGLE INC.,

Defendant-Cross Appellant.

__________________

Appeal from the United States District Court for the Northern District of
California in case no. 10-CV-3561, Judge William H. Alsup.

__________________

REPLY BRIEF OF CROSS-APPELLANT GOOGLE INC.

RENNY HWANG
GOOGLE INC.
[address, phone]

DARYL L. JOSEFFER
BRUCE W. BABER
KING & SPALDING LLP
[address, phone]

ROBERT A. VAN NEST
STEVEN A. HIRSCH
CHRISTA M. ANDERSON
MICHAEL S. KWUN
DAN JACKSON
KEKER & VAN NEST LLP
[address, phone, fax]

IAN C. BALLON
HEATHER MEEKER
GREENBERG TRAURIG, LLP
[address, phone, fax]

Counsel for Defendant/Cross-Appellant Google Inc.

July 22, 2013

TABLE OF CONTENTS

TABLE OF AUTHORITIES ...........................ii

I. INTRODUCTION ............................ 1

II. ARGUMENT................................... 2

A. In the Ninth Circuit, as elsewhere, trivial copying is not actionable,
whether or not the defendant concedes that it occurred.....................2
1. Oracle’s “no freestanding de minimis” argument is meritless...........................................5

2. Oracle waived its “no freestanding de minimis” argument by proposing jury
instructions that contradict that argument.....................................11

B. The district court’s “work as a whole” instruction was
erroneous and prejudicial. ....................14

C. Google’s copying was de minimis—too insubstantial in
relation to the “work as a whole” to be actionable...........17

III. CONCLUSION..................................... 21

CERTIFICATE OF SERVICE ..............................22

CERTIFICATE OF COMPLIANCE...............................27

i

TABLE OF AUTHORITIES

Page(s)

Cases

American Geophysical Union v. Texaco Inc.,
60 F. 3d 913 (2d Cir. 1994)............................15

Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1986).............................. 1, 15

Cordis Corp. v. Medtronic Ave, Inc.,
511 F.3d 1157, supplemented, 275 F. App’x 966 (Fed. Cir. 2008).....................12

Express, LLC v. Fetish Group, Inc.,
424 F. Supp. 2d 1211 (C.D. Cal. 2006) ...............................................3

Granfinanciera, S.A. v. Nordberg,
492 U.S. 33 (1989)..........................................13

Hustler Magazine Inc. v. Moral Majority Inc.,
796 F.2d 1148 (9th Cir. 1986) ............... 15, 16

Jerden v. Amstutz,
430 F.3d 1231 (9th Cir. 2005) .................................13

Medtronic, Inc. v. White,
526 F.3d 487 (9th Cir. 2008).....................................12

Newton v. Diamond,
388 F.3d 1189 (9th Cir. 2004) ............................... passim

Nicholls v. Tufenkian Import/Export Ventures,
367 F. Supp. 2d 514 (S.D.N.Y. 2005).............................3

Norse v. Henry Holt & Co.,
991 F.2d 563 (9th Cir. 1993)...................................... 9, 10

NXIVM Corp. v. Ross Inst.,
364 F.3d 471 (2d Cir. 2004).........................................17

Pacific and Southern Co.,
744 F.2d 1490 (11th Cir. 1984) ...................................15

ii

Ringgold v. Black Entm’t Television, Inc.,
126 F.3d 70 (2d Cir.1997)................................ 5, 6, 7, 9, 10

Swirsky v. Carey,
376 F.3d 841 (9th Cir. 2004)................................10

Transmatic, Inc. v. Gulton Indus., Inc.,
53 F.3d 1270 (Fed. Cir. 1995)......................................12

Triangle Pubs. v. Knight-Ridder Newspapers, Inc.,
626 F.2d 1171 (5th Cir. 1980) .......................................17

United States v. Perez,
116 F.3d 840 (9th Cir. 1997) (en banc) ..............................12

Vault Corp. v. Quaid Software Ltd.,
847 F.2d 255 (5th Cir. 1988)..........................................18

Zhang v. Am. Gem Seafoods, Inc.,
339 F.3d 1020 (9th Cir. 2003) ..................................12

Statutes

17 U.S.C. § 201(c) ............................................17

Rules

Fed. R. Civ. P. 51(c)(1), (d)(1)(A), (d)(2) ...........................13

Miscellaneous

Deborah F. Buckman, Application of ‘De Minimis Non Curat Lex’ to Copyright Infringement Claims,
150 A.L.R. FED. 661 (1998).................................7

Mark A. Lemley, Our Bizarre System for Proving Copyright
Infringement
,
57 J. COPYRIGHT SOC’Y U.S.A. 719 (2010) ...........................2 Jeremy Scott Sykes, Copyright—The De Minimis Defense in
Copyright Infringement Actions Involving Music Sampling,
36 U. MEM. L. REV. 749 (2006) .................................7

iii

I. INTRODUCTION

Google’s cross-appeal required Oracle to address several matters of substance— e.g., whether it made sense for the district court to define individual program files as entire works when there was no evidence that they could function independently; whether the district court was free to override a jury verdict that copying eight test files that never made it onto an Android device 1 was de minimis and thus non-actionable; and how a jury reasonably could find that copying a mere nine lines of rangeCheck code was not de minimis. Oracle also needed to reconcile its contention that the rangeCheck copying was “substantial” with the district court’s finding that Google’s copying of those nine lines was “innocent and inconsequential” 2 as well as “innocuous and overblown by Oracle.” 3

Instead of providing compelling answers to those questions, Oracle’s cross- appeal brief reprises some of the most troubling aspects of Oracle’s main appeal from the adverse judgment on its SSO claim. 4 As in its main appeal, Oracle brushes aside the controlling Ninth Circuit case law while ignoring the fact that it waived its main argument by failing to object to relevant jury instructions.

1

Specifically, Oracle now asks this Court to disregard (as “wrongly decided”) binding Ninth Circuit precedent expressly holding that de minimis copying is non- actionable “even where the fact of copying is conceded.” Newton v. Diamond, 388 F.3d 1189, 1193 (9th Cir. 2004). And Oracle ignores the fact that its failure to object to the district court’s jury instructions on de minimis copying bars it from arguing (erroneously) that there is no de minimis-copying doctrine in the Ninth Circuit. Indeed, Oracle actually proposed jury instructions embodying the de minimis-copying doctrine whose existence it now denies.

For all the reasons stated below and in Google’s cross-appellant’s brief, the court should grant Google’s cross-appeal, grant JMOL as to the rangeCheck code, and reverse the district court’s grant of JMOL as to the eight test files.

II. ARGUMENT

A. In the Ninth Circuit, as elsewhere, trivial copying is not actionable,
whether or not the defendant concedes that it occurred.

The maxim “de minimis non curat lex” means “the law does not concern itself with trifles.” See Newton v. Diamond, 388 F.3d at 1193. The doctrine’s purpose is “to avoid flooding the courts with trivial infringement cases.” 5 In this case, the district court gave a defective instruction that permitted the jury to decide whether Google’s literal copying was de minimis by comparing the copied code to

2

the individual files containing that code, rather than comparing the copied code to the entire registered work (the Java 2 Standard Edition, Version 5.0 platform). This was error because a copyright registration is for a specific work and fixes the scope of copyright protection. See Express, LLC v. Fetish Group, Inc., 424 F. Supp. 2d 1211, 1218 (C.D. Cal. 2006); cf. Nicholls v. Tufenkian Import/Export Ventures, 367 F. Supp. 2d 514, 520 (S.D.N.Y. 2005) (noting that one of the purposes of the deposit requirement is to provide “sufficient material to identify the work in which the registrant claims a copyright.”). Nowhere does the registration for the Java 2SE Version 5.0 platform suggest that each of the thousands of files in the Java platform is an independently protected “work.” 6

Due to that instructional error, the jury found that Google had actionably infringed Oracle’s copyright by including in the TimSort.java and ComparableTimSort.java files the nine lines of code comprising the rangeCheck method. And, applying the same erroneous standard, the district court granted Oracle’s JMOL motion, overturning the jury’s finding that Google had not3

actionably infringed Oracle’s copyright on eight decompiled test files and holding that no reasonable jury could have found that copying de minimis.

Oracle’s principal response to Google’s cross-appeal is to argue that, in the Ninth Circuit—contrary to the “de minimis” maxim—the law does concern itself with trifles. Indeed, Ninth Circuit law is so thoroughly obsessed with trifles, according to Oracle, that it would impose copyright-infringement liability for the literal copying of just nine of the millions of lines in the Java platform—even when the district court found that copying to be “innocent and inconsequential”7 as well as “innocuous and overblown by Oracle.” 8 According to Oracle, Ninth Circuit law also imposes liability for copying eight files out of the tens of thousands of files in the Java platform—files of such trifling significance that the district court found that they “were merely used as test files and never found their way into Android or any handset.” 9

The theory behind Oracle’s arguments is that the Ninth Circuit “does not recognize a freestanding de minimis” doctrine—in other words, that Ninth Circuit law only excuses trivial copying as part of a larger substantial-similarity or fair-use analysis that becomes superfluous if the defendant admits copying or invokes no

4

fair-use defense. Reply at 64. 10 Based on this erroneous premise, Oracle argues that, because Google conceded that it copied the rangeCheck code and the test files, there was no need to analyze substantial similarity and thus no occasion to apply the de minimis doctrine.

As explained below, this argument is both meritless and waived.

1. Oracle’s “no freestanding de minimis” argument is meritless.

Oracle’s “no freestanding de minimis” argument attempts to rewrite Ninth Circuit law. The Ninth Circuit unquestionably recognizes a “freestanding de minimis” doctrine under which insubstantial copying is non-actionable “even where the fact of copying is conceded.” Newton v. Diamond, 388 F.3d at 1193. The Newton decision explains the lineage of this rule:
For an unauthorized use of a copyrighted work to be actionable, the use must be significant enough to constitute infringement. See Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70, 74-75 (2d Cir.1997). This means that even where the fact of copying is conceded, no legal consequences will follow from that fact unless the copying is substantial. . . . The principle that trivial copying does not constitute actionable infringement has long been a part of copyright law. Indeed, as Judge Learned Hand observed over 80 years ago: “Even where there is some copying, that fact is not conclusive of infringement. Some copying is permitted. In addition to copying, it must be shown that this has been done to an unfair extent.” . . . This principle reflects the legal

5

maxim, de minimis non curat lex (often rendered as, “the law does not concern itself with trifles”). See Ringgold, 126 F.3d at 74-75.
Newton, 388 F.3d at 1192-93 (emphasis added). Newton cited and relied in part on the Second Circuit’s decision in Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70, 74-76 (2d Cir. 1997). Ringgold explained that, in copyright law, “the concept of de minimis has significance in three respects, which, though related, should be considered separately.” Id. at 74.

  • “First, de minimis in the copyright context can mean what it means in most legal contexts: a technical violation of a right so trivial that the law will not impose legal consequences.” Id. (emphasis added). This first aspect of de minimis jurisprudence is the “freestanding de minimis” doctrine invoked by Google’s cross-appeal. It is unaffected by a defendant’s admission of copying or by a defendant’s failure to assert a fair-use defense. See Newton, 388 F.3d at 1193.

  • “Second, 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. . . .” Ringgold, 126 F.3d at 74 (emphasis added). This second aspect of de minimis jurisprudence is the only one that could be obviated by a defendant’s admission of copying. It is not at issue

6

    here (although, as Newton acknowledges, 11 the standard for applying it is similar to the standard for applying “freestanding de minimis”).

  • Third, de minimis might be considered relevant to the defense of fair use . . . [but] the concept is an inappropriate one to be enlisted in fair use analysis.” Id. at 75-76. Appropriate or not, this third aspect of de minimis jurisprudence is irrelevant here because Google interposed no fair-use defense to Oracle’s claim for the literal copying of the rangeCheck code or the eight test files. 12

Although the district court’s “work as a whole” instruction was erroneous (see Part II.B., below), its other instructions on the de minimis doctrine tracked Newton and Ringgold precisely, explaining to the jury that the de minimis doctrine is not confined narrowly to the substantial-similarity and fair-use inquiries, but

7

also extends to the question whether an insubstantial amount of copying is actionable at all:
Google agrees that the accused lines of code and comments came from the copyrighted material, but contends that the amounts involved were so negligible as to be de minim[i]s and thus should be excused. . . . Copying that is considered “de minim[i]s” is not infringing. Copying is “de minim[i]s” only if it is so meager and fragmentary that compared to the work as a whole the average audience would not recognize the appropriation. 13

...

The [“work as a whole”] issue arises when (1) comparing Oracle’s work and Google’s work for similarity under both a substantial similarity and virtual identity standards, (2) deciding where [sic: whether] Google copied only a de minimis amount of Oracle’s work, and (3) evaluating the third factor of fair use: the amount and . . . substantiality of the portion used in relation to the copyrighted work as a whole. 14

Oracle never once mentions these instructions, but tacitly admits—as it must—that its “no freestanding de minimis” argument is doomed if Newton represents the state of the law in the Ninth Circuit. See Reply at 64-66. Oracle therefore asserts that Newton was “wrongly decided” (Reply at 65)—even though Oracle itself repeatedly cited Newton to the district court as authority for Oracle’s

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proposed instructions on the de minimis doctrine. 15 See Part II.B., below. Now, however, Oracle claims that the Newton panel improperly ignored an earlier case— Norse v. Henry Holt & Co., 991 F.2d 563 (9th Cir. 1993)—supposedly establishing that there is no “freestanding de minimis” doctrine in the Ninth Circuit.

Oracle is wrong. Norse held no such thing. Norse reversed a district court’s grant of summary judgment to defendants who had quoted phrases from a poet’s unpublished letters in a literary biography of William S. Burroughs. The district court had analyzed the case under the second aspect of the de minimis doctrine identified in Ringgold (namely, whether “copying has occurred to such a trivial extent as to fall below the quantitative threshold of substantial similarity . . . .” Ringgold, 126 F.3d at 74). But the Ninth Circuit held in Norse—unsurprisingly— that the substantial-similarity inquiry was “inapposite” because the defendants had admitted copying. Norse, 991 F.2d at 566. The court further held that, given the context of the case—involving the scholarly use of short excerpts in a nonfiction work—the question of substantial copying might be “best resolved” as part of a fair-use inquiry (the third aspect of the de minimis doctrine identified in Ringgold). Norse, 991 F.2d at 566. This, too, was unsurprising. The court therefore remanded the case for the district court to evaluate fair use. Id. at 566-67.

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But Norse never mentioned (let alone disapproved, as Oracle contends) the first aspect of the de minimis doctrine identified in Ringgold—namely, the concept, applicable in copyright as in “most legal contexts,” that “a technical violation of a right” can be “so trivial that the law will not impose legal consequences.” Ringgold, 123 F.3d at 74. Again, that is the aspect of the de minimis doctrine at issue in Google’s cross-appeal.Newton recognizes it expressly, and Norse doesn’t discuss it.

Oracle tries to chip away at Newton’s authority by asserting that subsequent music-sampling “cases” (plural) in the Ninth Circuit have not followed Newton— but it cites just one example, Swirsky v. Carey, 376 F.3d 841 (9th Cir. 2004). Reply at 65. Swirsky held that a qualitatively significant seven-note melodic line was not “too short to garner copyright protection” as matter of law. Id. at 851-52. Given the instantly recognizable character of a short melodic line, one can easily understand how the court reached that conclusion. But Swirsky made no grand pronouncements about the de minimis doctrine—indeed, never mentioned the doctrine by name—and likewise said nothing negative about Newton, which it cited on two unrelated points of law. See Swirsky, 376 F.3d at 847, 851 (citing Newton, 349 F.3d at 595). Notably, Swirsky cited the original version of the Newton decision, not the amended version cited and relied upon here—which was issued after Swirsky.

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Accordingly, this Court should reject Oracle’s erroneous contention that the Ninth Circuit does not recognize a “freestanding de minimis” doctrine that applies even when copying is admitted.

2. Oracle waived its “no freestanding de minimis” argument by
proposing jury instructions that contradict that argument.

Oracle concedes that it “did not argue” its “no freestanding de minimis” theory “throughout the proceedings below.” Reply at 63 n.12. The truth is that Oracle actually proposed jury instructions reflecting the de minimis doctrine whose existence it now denies. 16 Oracle informed the district court that “[b]oth sides adopt the general principle that copying is only de minimis where it is qualitatively and quantitatively insignificant.” 17 And while Oracle now attacks the Ninth Circuit’s Newton decision as “wrongly decided,” it repeatedly cited Newton to the district court as authority for the instructions that it proposed on de minimis copying. 18 Oracle likewise failed to object to the instructions that the district court ultimately gave, insofar as they, too, adopted the “freestanding de minimis” doctrine.

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Under Federal Rule of Civil Procedure 51 and Ninth Circuit law, 19 instructional errors are waived if not raised in a timely fashion at trial. The Ninth Circuit “‘has enjoyed a reputation as the strictest enforcer of Rule 51,’” Medtronic, Inc. v. White, 526 F.3d 487, 495 (9th Cir. 2008) (citation omitted), believing as it does that “[t]o excuse [the appellants] from the well-established rules of waiver would permit the sort of ‘sandbagging’ that the rules are designed to prevent, while undermining the ideal of judicial economy that the rules are meant to serve.” Zhang v. Am. Gem Seafoods, Inc., 339 F.3d 1020, 1037 (9th Cir. 2003). Thus, the Ninth Circuit will not review jury instructions at the behest of a party that “invited error” by knowingly and voluntarily proposing those instructions. See United States v. Perez, 116 F.3d 840, 844-45 (9th Cir. 1997) (en banc); see also Cordis Corp. v. Medtronic Ave, Inc., 511 F.3d 1157, 1172, supplemented, 275 F. App’x 966 (Fed. Cir. 2008).

Here, Oracle cited Newton to the district court and, based on that case and other authorities, proposed an instruction embodying the “freestanding de minimis” doctrine—the very doctrine that it now attacks as non-existent in the Ninth Circuit. Accordingly, Oracle waived this argument.

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Indeed, the argument is doubly waived because Oracle again failed to properly raise it in this Court. Cf. Smith v. Marsh, 194 F.3d 1045, 1052 (9th Cir. 1999) (holding that an argument was doubly waived where not raised below and not “fully articulated” until appellants’ reply brief on appeal). Oracle’s cross-appellee’s brief doesn’t even mention the district court’s instructions on the “freestanding de minimis” doctrine, let alone try to carry Oracle’s appellate burden of showing that those instructions contained “plain error” that calls “the integrity or fundamental fairness of the proceedings in the trial court . . . into serious question.” Jerden v. Amstutz, 430 F.3d 1231, 1236 n.4 (9th Cir. 2005); see Fed. R. Civ. P. 51(c)(1), (d)(1)(A), (d)(2). Oracle’s failure to challenge the jury instructions in its cross-appellee’s brief therefore constitutes a double waiver.

Avoiding the waiver issue altogether, Oracle instead cites cases holding that an appellate court can affirm the judgment based on any ground supported by the record, even if the district court did not rely on that ground. See Reply at 63 n.12. But the alternative-ground rule merely allows a reviewing court to affirm the judgment based on arguments that the district court ignored or rejected after those arguments were properly presented to it. See Granfinanciera, S.A. v. Nordberg, 492 U.S. 33, 39 (1989). Only in “‘exceptional cases’” will courts overlook a party’s waiver of an alternative ground, id. (citation omitted); and Oracle does not

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even try to show that this case is “exceptional.” Its alternative-ground cases are therefore inapposite.

Accordingly, the Court should hold that Oracle waived its “no freestanding de minimis” argument.

B. The district court’s “work as a whole” instruction was erroneous and
prejudicial.

Google’s cross-appeal argues that the district court erred in instructing the jury that, for purposes of applying the de minimis doctrine to copying of the rangeCheck code, “‘the work as a whole’ is the compilable code for the individual file,” not the entire registered work. 20 Under that erroneous standard, the jury found that copying nine lines of rangeCheck code was not de minimis, and the district court granted JMOL overriding the jury’s verdict that copying the eight test files was de minimis. Neither result should stand.

Oracle’s sole defense of the “work as a whole” instruction is that “Google does not show the trial court erred in determining that the copied code files were stand-alone works.” Reply at 70 (citing A33). That response has two flaws.

First, the district court made no factual finding that the copied code files could function as stand-alone works. Oracle cites only to an order denying Google’s motion for summary judgment on Oracle’s claims for copying of the

14

rangeCheck code and the eight test files. 21 “[A]t the summary judgment stage the judge’s function is not himself to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). At trial, Oracle submitted no evidence that these files could function on a stand-alone basis. Indeed, the evidence suggested the contrary. 22

Second, Oracle’s only basis for claiming that the copied code files were stand-alone works is that they were contained in separate files. But that is not the standard. The standard is whether the copied portion is “copyrighted separately” or “stored separately” and can “stand totally alone” from the rest of the copyright work.23 Hustler Magazine Inc. v. Moral Majority Inc., 796 F.2d 1148, 1154-55 (9th Cir. 1986) (citing Pacific and Southern Co., 744 F.2d 1490, 1497 (11th Cir. 1984)); see also American Geophysical Union v. Texaco Inc., 60 F. 3d 913, 926 (2d Cir. 1994) (noting that each article in a journal volume was separately authored, constituted a “discrete original work of authorship,” and enjoyed independent copyright protection). In Hustler Magazine, for example, the Court

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held that a single item from a magazine could constitute the work as a whole for purposes of copyright infringement, because that item “represent[ed] the essence of Hustler Magazine” and was not “an interwoven component of the magazine, but [could] stand totally alone.” 796 F.2d at 1155.

Oracle failed to (and cannot) satisfy that standard here. Oracle introduced no evidence to suggest that these files can “stand totally alone” or that they are “stored separately” from the rest of the Java platform. Indeed, if one were to try to “use” the Arrays.java file or one of the decompiled test files independently from all other parts of the platform, they would not perform any useful function or do anything at all. 24 Moreover, Oracle introduced no evidence that these files are “stored” differently than the rest of the code that makes up the Java platform. Rather, the code for these files is interwoven among millions of other lines of code, and Oracle did not even recognize any similarities in the files until it ran a forensic search of Google’s source code. 25

Moreover, holding that the mere placement of code in a separate file creates a stand-alone work would effectively nullify the de minimis doctrine in software- copying cases. It may be possible to carve up a program arbitrarily into multiple

16

files. Unlike the division of a magazine into articles, the division of a program into files may have no effect on the program’s function. 26

Thus, there was no legal basis for the district court’s instruction that each of these individual files within the J2SE platform constituted a “work as a whole.” Rather, they were entitled to copyright protection only as part of the Java platform, “just as a paragraph in a book may be entitled to copyright protection as part of the book.” Triangle Pubs. v. Knight-Ridder Newspapers, Inc., 626 F.2d 1171, 1177 n.15 (5th Cir. 1980). 27

Accordingly, the district court’s “work as a whole” instruction was erroneous and Google’s cross-appeal should be granted.

C. Google’s copying was de minimis—too insubstantial in relation to the
“work as a whole” to be actionable.

Oracle agrees that, if the Ninth Circuit recognizes a “freestanding de minimis” doctrine (as it does), copying is de minimis and non-actionable if it is qualitatively and quantitatively insignificant. See Reply at 67; Newton, 388 F.3d at 1195.

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Oracle’s only argument on quantitative significance is that there is no “bright line” as to how much copying must occur before it becomes actionable. Reply at 68-69. Well, of course not. But that need not prevent a court—or, as here with respect to the eight test files, a jury—from deciding the issue of quantitative significance in a particular case. Cf. Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 267-68 (5th Cir. 1988) (holding that an allegedly infringed work was not “substantially similar” to an original work where it contained 30 characters from the original work’s 80 pages of source code).

As to the eight test files, Oracle’s argument is that testing can be qualitatively important. Google addressed that vague and unsupported contention at pages 77-78 of its opening brief on cross-appeal, demonstrating that the district court had no adequate basis to override the jury’s verdict of non-infringement on those files.

As to the rangeCheck code, the evidence revealed that it was “[v]ery, very simple” 28 and that (as Oracle’s own expert agreed) it could have been written by a “good high school programmer.”29 Oracle’s claim of qualitative significance rests entirely on testimony by its expert that, in an experiment, an Android device called on the method “at least 2600 times” when powering on. Reply at 67.

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Even if true, that fact lacks legal significance. When assessing the significance of the copying, courts “focus on the relationship to the plaintiff’s work,” not on “the significance of the copied segment in the defendant’s work.” Newton, 388 F.3d at 1195. Knowing how often an Android emulator calls on the rangeCheck code tells one nothing about the qualitative significance that those nine lines have in relation to the allegedly infringed Java API packages. Even when considered in relation to Android, however, the rangeCheck code was qualitatively insignificant. By the time of trial, the rangeCheck code had been removed from Android for over a year. 30

Moreover, Oracle offered no testimony that would allow a reasonable jury to conclude that a method called 2,600 times must be qualitatively significant. Oracle’s expert did not testify, for example, about whether other methods are called tens of thousands of times, hundreds of thousands of times, or even millions of times during startup. Nor did he testify about the qualitative significance of the rangeCheck calls. An otherwise trivial element does not necessarily become significant through frequent use. A typical novel might include the word “the” thousands of times, but that does not render the word “the” qualitatively significant to Moby Dick. During a business meeting, attendees might blink their eyes hundreds or thousands of times, but that does not mean that the act of blinking was

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qualitatively significant. Standing alone and without any frame of reference, Oracle’s expert testimony about the number of times that rangeCheck is called during the startup of an Android emulator does not support a finding of qualitative significance.

The district court said it best when it noted that the copying of the rangeCheck code was “innocuous and overblown by Oracle.”31 As such, it was de minimis and not actionable.

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III. CONCLUSION

As in its main appeal, Oracle’s cross-appeal brief disregards controlling Ninth Circuit law that is fatal to Oracle’s arguments, while attempting to revive arguments that Oracle waived when it failed to object to relevant jury instructions.

For all the reasons stated above and in Google’s cross-appellant’s brief, the court should reverse the district court’s denial of Google’s JMOL motion concerning the rangeCheck code and reverse the district court’s grant of Oracle’s JMOL motion concerning the eight decompiled test files.

Dated: July 22, 2013

Respectfully submitted,

/s/ Robert A. Van Nest
ROBERT A. VAN NEST
STEVEN A. HIRSCH
KEKER & VAN NEST LLP
[address, phone, Fax]

Attorneys for Defendant, Appellee,
and Cross-Appellant GOOGLE INC.

_____________
1 A143; see A21492. 2 A143.

3 A142; see also A22044:24-A22045:7 (district court characterizing the literal-copying claims as “a tiny thing” that served Oracle’s purposes as “coloration” at trial).

4 “SSO” refers to “structure, sequence, and organization.”

5 Mark A. Lemley, Our Bizarre System for Proving Copyright Infringement, 57 J. COPYRIGHT SOC’Y U.S.A. 719, 720 (2010).

6 Even assuming that it was proper to define the “work as a whole” as the individual files, the rangeCheck copying still was quantitatively de minimis. The Arrays.java file containing the rangeCheck code has 3,179 lines of code. A2877,2937,21426-28. The rangeCheck function comprises less than three tenths of one percent of this file. Even under the erroneous “work as a whole” instructions given by the district court, therefore, no reasonable jury could have concluded that the rangeCheck code was anything but quantitatively de minimis.

7 A143.

8 A142.

9 A143.

10 “Reply” refers to Oracle’s Response and Reply Brief of Plaintiff-Appellant (Doc. 133).

11 See Newton, 388 F.3d at 1193 (noting “the relationship between the de minimis maxim and the general test for substantial similarity”).

12 Although the Ninth Circuit in Newton cited and relied on Ringgold, Oracle argues that any citation to Ringgold is “misguided” because it is somehow unrepresentative of Ninth Circuit law. Reply at 66. But Newton shows that the Ninth Circuit disagrees. Commentators and treatises likewise cite and adopt Ringgold’s tripartite description of the de minimis doctrine. See, e.g., Deborah F. Buckman, Application of ‘De Minimis Non Curat Lex’ to Copyright Infringement Claims, 150 A.L.R. FED. 661, at § 2[a] (1998) (“In the context of copyright law, the [de minimis] concept has significance in three respects . . . .”); Jeremy Scott Sykes, Copyright—The De Minimis Defense in Copyright Infringement Actions Involving Music Sampling, 36 U. MEM. L. REV. 749, 760 (2006) (“Courts discuss and apply the de minimis maxim . . . in three situations . . . .”)

13 A22777:6-16 (emphasis added).

14 A22778:8-14 (emphasis added).

15 See A24692,24696-97.

16 See A24692-94,24696-97.

17 A24692 (emphasis omitted).

18 See A24692,24696-97.

19 This Court decides waiver issues, like other procedural matters not unique to patent law, under the law of the regional circuit—in this case, the Ninth Circuit. See Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1278 (Fed. Cir. 1995) (regarding jury-trial waiver).

20 A989-93,22779.

21 A33

22 See A3673-83,3705-20 (establishing that programmers need files other than the ones at issue in this cross-appeal—e.g., the java.lang package—to do anything with Java).

23 The fact that the files bore legends stating, for example, “Copyright 2004 Sun Microsystems, Inc.” (A2877), does not indicate that they were copyrighted separately or could stand alone, as Oracle intimates. See Reply at 70.

24 See A3673-83,3705-20.

25 A21480-85.

26 Cf. NXIVM Corp. v. Ross Inst., 364 F.3d 471, 480-81 (2d Cir. 2004) (rejecting, in fair-use context, plaintiff’s attempt to “narrow the denominator” in a quantitative-significance inquiry by conceptualizing a single, unitary work as separate “modules”).

27 While individual parts of collective works can receive separate copyright protection, see 17 U.S.C. § 201(c), Oracle did not register the Java platform as a collective work and, at trial, disclaimed reliance on collective-work protection. See A22310.

28 A20905.

29 A20905,21488.

30 A20995.

31 A142.

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