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(Almost) Live from the Federal Circuit, it's…

Java vs. Android A Blow-by-Blow Account of a Major Battle in the

Smartphone Wars – Do APIs Have Copyright Protection?

Presented by Lance Koonce, Davis Wright Tremaine LLP

Twitter: @LHKoonce Email: [email protected]

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The Backstory – Sun Creates Java

Java platform developed by James Gosling at Sun Microsystems in early 1990s

Released in 1996, now one of most popular programming languages in use (as of 2012, 9 million developers using Java)

Java’s “write once, run anywhere” premise: once coded in Java, a program need not be recompiled for different platforms

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The Backstory – Java’s Components

Java is a programming language, but platform also includes packages of regularly-used programs, organized in libraries

These packages are APIs -- Application Programming Interfaces

APIs consist of (1) declaring code; and (2) implementing code

APIs are like short cuts: programmer does not have to use them to write code in Java, but makes coding more efficient

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The Backstory – Google Acquires Android

Android Inc. founded in 2003 by Andy Rubin, Rich Miner et al.

Google purchased Android in 2005

Beginning in late 2005, Google discussed partnership with Sun that would allow Google to use Java in developing Android

Parties tell differing stories about what occurred, but they reached an impasse and Google went its own direction

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The Backstory -- Google Develops Android Using Aspects of Java

Google used Java in its development of Android, and some of the Android libraries incorporate Java APIs

Google launched Android in 2007, now has 80% of smartphone market

Believed it was free to use the Java APIs because they were noncopyrightable subject matter

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The Backstory – Copyright Basics

Copyright extends to original works of authorship

Congress has specifically mandated that software is protected under the Copyright Act

– Software is protected as a “literary work”

– Numerous cases hold that copyright protects source and object code

Protection covers not just the literal text of a literary work, but also the structural and organizational elements of the work

– For a novel, this might include a detailed plot outline

– But even can cover the organizational elements of a phone book, if sufficiently expressive

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Copyright does not protect ideas or concepts, only the expression of such ideas/concepts:

– Example: Cannot protect the idea of someone waking up in a hospital to find there’s been a zombie apocalypse while they were in a coma

– But, you can protect a particular expression of that idea:

This idea/expression dichotomy is one of the fundamental pillars of copyright law

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Section 102(b) of Copyright Act also says copyright will not extend to functions, processes or methods of operation

Codifies Baker v. Selden case (1879) that copyright in a book on accounting did not extend to method described in book – Can’t copy exact words, but anyone can use the same method

– Method would be protected, if at all, by patent law

Does not mean if there is an idea, concept, method or functionality embodied in work, entire work not protectable by copyright – All works contain ideas/functionality at some “level of abstraction”

– Question is whether the idea and expression (or function and expression) are so intermingled (merged) that they can’t be separated

– Courts ask whether there are multiple ways to express idea/function

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Copyright also does not cover elements of a work that are dictated by external constraints – For example, if a software developer is required to include a particular

line(s) of code in order for the software to interact with other software already in the market, this might be deemed nonprotectable

One work has been determined to be protected by copyright, question turns to whether it has been copied (infringed)

Even if use is otherwise infringing, may be a “fair use”: – Is the new use one that the law treats as in the public interest, such as

news reporting, scholarship

– Four factor test to determine fair use

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The Battle is Joined

Oracle purchased Sun in 2010, sued Google in US District Court in California for patent and copyright infringement of Java

Sued over 37 API packages that Oracle argues make up the most important packages in Java

Argued that Google copied the structure, sequence and organization (SSO) of the API packages

Also argues that Google copied 7000 lines of code that make up the package declarations (Google now argues this was waived)

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The First Skirmish – Federal District Court

Case was tried to a jury on patent infringement

– Jury found no patent infringement by Google

On copyright claims, jury was told to assume the APIs were copyrightable, and to decide infringement and fair use

Jury found that Google did infringe, but hung on fair use issue

Judge Alsup then decided the issue of whether the APIs were copyrightable in the first instance

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The First Skirmish – Google’s Arguments

Parties agreed that Google had not literally copied the implementing code for the entire 37 packages

Google argued that the API declaring code (which was copied) was functional and non-copyrightable

Google also argued that the SSO was unprotectable because it was functional and a mere “method of operation”

– Cited Lotus v. Borland case where Borland copied command hierarchy of Lotus 1-2-3 to allow users to use Lotus macros in Quattro Pro

– Court in Lotus said command structure was not protectable

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The First Skirmish – Google’s Arguments

Google relied heavily on two Ninth Circuit cases for principle that aspects of a computer program that address interoperability are not protectable

Sega v. Accolade: Reverse engineering case in which Accolade made intermediate copies of Sega’s software in order to understand how Sega’s game console interfaced with Sega’s own game cartridges. In fair use analysis, Court said “interface procedures for compatibility were functional aspects not copyrightable under Section 102(b)”

Sony Entertainment v. Connectix: Another reverse-engineering case in game console context; also discusses protectability of functional aspects in fair use context

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District Court Ruling on Copyrightability of APIs

Judge Alsup held that APIs were not copyrightable

This mooted the jury’s decision on infringement, and its failure to reach a decision on fair use

Controlling principles cited by Judge Alsup:

– Merger

– Names and short phrases not protectable

– Functional elements essential for interoperability not protectable

– No protection for “sweat of the brow” -- should not use “copyrightability merely to reward an investment made in a body of intellectual property.”

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Key Quotes from Judge Alsup:

– “The rules of Java dictate the precise form of certain necessary lines of code called declarations, whose precise and necessary form explains why Android and Java must be identical when it comes to these particular lines of code. That is, since there is only one way to declare a given method functionality, everyone using that function must write that specific line of code in the same way.” (Discussing merger)

– “In order to declare a particular functionality, the [Java] language demands that the method declaration take a particular form.” (Discussing words and short phrases)

– Sega case “expressly held that interface procedures for compatibility were functional aspects not copyrightable under [Section 102(b)]”

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Decision evidences patent-centric view of software protection

Also tends to favor developers of apps and software that interoperate with established platforms over the creators of the original platforms

– At the very least, decision decidedly in favor of open-source

Although nominally limited to the specific Java APIs, it is hard to imagine any APIs protected by copyright under his analysis

Indeed, decision can be read as creating significant doubt regarding the copyrightability of software generally, and certainly regarding copyrightability of the SSO of software

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The Second Skirmish – The Federal Circuit

Federal Circuit typically oversees appeals of patent cases

Here, has jurisdiction over appeal even though the patent claims are no longer in the case

Appeal may give Federal Circuit an opportunity to distinguish between copyrightable software and software patents

Limits of patentable subject matter have been front-and-center in recent years, and CLS Bank v. Alice Corp. in Federal Circuit in May 2013 has generated even more confusion over when software can be patented

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Oracle’s Arguments on Appeal

Big picture arguments:

– There should be no “software exceptionalism” for APIs

• APIs should be treated the same as any software

– Decision undermines the basic copyright bargain:

• Developers rely on copyright to protect value of their extensive efforts to bring new works to the public

• Price for those who follow and don’t have to develop from scratch is license

• Google did not like license terms so just copied the software and piggybacked for free on Sun’s work

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Oracle’s Arguments on Appeal

General principles for copyright protection of software: – Copyright Act sets low bar for protection

– Software protected same as any “literary work”

• Oracle’s brief compares its software to a novel: Google copied chapter titles verbatim, then topic sentences of each paragraph; then paraphrased rest

– Under these precedents, both “declaring code” and SSO are protectable

Copyright protection for Java source code: – District Court misapplied doctrines of merger and “short phrases” when examining

protectability of declaring code

Copyright protection for SSO – Court erred in finding all organizational and structural elements of APIs were merely

“methods of operation”

– Court incorrectly interpreted case law on “interoperability” and misapplied it to facts

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Google’s Arguments on Appeal

Essence of argument: Judge Alsup got everything right

– Made detailed factual findings after 10-day bench trial with 24 witnesses

Big Picture Arguments:

– APIs are different from literary works such as novels

– “However creative and useful the Java API may be, it is fundamentally a functional, utilitarian work”, and only receives “weak” protection

Like Oracle, Google invokes the “fundamental purpose of the Copyright Act” 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.”

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Google’s Arguments on Appeal

Binding Ninth Circuit precedents compel affirmance of the judgment dismissing Oracle’s claim that SSO infringed

– Section 102(a) imposes a minimal originality requirement for copyrightability and section 102(b) then filters out and denies protection to functional elements

• Only the “writing” (source code) is protected; the methods (here, API packages) are not

– Section 102(b) ensures that functional elements within a copyrightable work are protected, if at all, only by patent law

– Sega and Sony held that section 102(b) filters out and denies copyright protection to interfaces—functional program elements necessary for compatibility

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Amicus (friend of the court) Briefs

Supporting Oracle/Favoring Reversal: – Microsoft, EMC, and NetApp

– Ralph Oman, Former Register of Copyrights

– The Software Alliance

– The Picture Archive Council of America and Graphic Artists Guild

– Computer Science Professors (3)

– Former executives of Sun Microsystems

Supporting Google/Favoring Affirmance:

– Rackspace US, Application Developers Alliance, TMSoft and Stack Exchange

– Software Innovators, Start-Ups and Investors

– Computer Scientists

– Intellectual Property Law Professors

– Computer & Communications Industry Association

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The Main Event: Oral Argument on Dec. 4, 2013

Federal Circuit Panel Consisted of:

Circuit Judge S. Jay Plager

(Assumed Office in 1989)

Circuit Judge Kathleen M. O’Malley


Circuit Judge Richard G. Taranto


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Overview:

– Crowded courtroom

– Hot bench: neither attorney made much of a presentation before the grilling began by the judges

– Joshua Rosencrantz of Orrick argued for Oracle

– Robert Van Nest of Keker & Van Nest argued for Google

– Toughest questions were asked of Google

– Judge O’Malley in particular very skeptical of several of Google’s primary arguments

– Judge Taranto may have had more sympathy for Google than Judges O’Malley and Plager

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Further Overview:

– Surprisingly few questions about interoperability, BUT judges seem to believe that it was incorrect to define the copyrightability of software based on whether a market for interoperable products later developed

– Harshest criticism was for Google’s reliance on Sony and Sega cases given that they were decided in fair use context

• Judge O’Malley: Those cases “just don’t say what you say they say”

– Judges troubled by how to separate out functional aspects from expressive aspects, and whether case has to be remanded to Judge Alsup to do so

– Judges also troubled by scope of Alsup’s ruling – how any software could be found copyrightable

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Oral Argument: The Details

Oracle’s Argument

– Oracle argued that 7000 lines of declaring code copied, and that waiver argument was a sideshow (waiver argument never gained traction)

– O’Malley pressed Oracle to explain what a “method of operation” in 102(b) is, as opposed to what it is not; Rosencrantz argued that it is a series of steps stated in an abstract way (versus concrete expression)

– Judge Plager suggested the lower court had difficulty separating expression from function, and asked Oracle whether it was true that most computer code performs a function; Oracle said ALL code does

• Plager: So how do we separate from expression?

• Oracle: Points to security functions and argues that Google could recreate the security functionality, but not the actual structure of the Java code

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Taranto asked whether Oracle was saying it could copyright the organization of the method itself

– Oracle said that methods arranged in a particular way can be protected, but in any event the way Google infringed was to copy the code in which the structure inhered

Oracle urged the court to reach and decide fair use without a remand, said underlying facts not in dispute

– Judges troubled by the possibility that there are issues of fact that must be decided by jury before ruling made on ultimate questions (transformativeness, substantiality of portion used, etc.)

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Google’s Argument:

– Tried to stick close to Judge Alsup’s decision, until it became clear the judges found several aspects problematic, then pivoted a bit

• Pointed to Alsup findings that program written in Java can interoperate with Android if using the 37 copied packages, and Sun gave away Java code for free

• Judge O’Malley countered that even where made available publicly, Java was subject to license requirements

– Van Nest argued that if Sec. 102(b) has any meaning, must mean that “the thing that runs the program” (APIs) is not copyrightable

– Van Nest made clear that Google is arguing that SSO of software should not be copyrightable

• O’Malley asked how many computer programs do not have SSO; Van Nest replied that he does not know, but all programs have to have a means to operate them (which should not be copyrightable)

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Taranto asked whether Google’s argument relies on a “shift in time”, or whether Google is saying the Java declaring code was unprotectable even at the time it was created

– Google replied that even at that time, the organizational structure to operate something cannot be protected

– Taranto asked whether the 7000 lines of code are not a “set of expressions”; Google argued they were functional and Taranto asked whether this would not be true of all software

O’Malley noted that Alsup found that there were multiple ways to create SSO that would create same function, and asked why that did not determine copyrightability

– Van Nest argued Sega and Sony cases still found no copyrightability for functional aspects, which led to Judge O’Malley’s criticisms of those cases (“you are just putting a square peg in a round hole”)

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O’Malley suggested that Lotus v. Borland case is the strongest one for Google, Google agrees and argues points of that case

Plager pressed Google on Judge Alsup’s “names and short phrases” analysis, saying Alsup was “confused” – Van Nest argued that Alsup’s ruling not really based on that portion of opinion,

which is really irrelevant

O’Malley asked why expectations of the market matters, and whether copyright can be lost because it becomes popular? – Google argued you look at copyrightability at the date of conception, as well as at

date of infringement

– At conception, question is whether it is just a method of operation

– At infringement, question is [interoperability]

On fair use, Google argued (with some success) that there were disputes of fact that were relevant and need to be decided by jury

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To The Victor Goes The Spoils? Possible Outcomes.

District Court decision upheld in full

– Oracle’s claim based on Google’s copying of the API packages, including their structure, sequence and organization, is dismissed

– Fair use question is moot

District Court decision reversed in its entirety

– Finds all aspects of software protectable

– Upholds jury finding that Google copied the APIs

– Federal Circuit decides Google’s use was not fair

– Remand for trial on damages

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District Court reversed on copyrightability, but Federal Circuit finds Google’s use was fair – Case dismissed but precedential value on copyrightability issue shifts

District Court reversed on copyrightability, and Federal Circuit remands to jury on fair use

Federal Circuit finds that some aspects of Oracle’s software is protectable, some are not – Finds declaring code protectable, but not SSO (because functional)

– Finds declaring code unprotectable (because of merger), finds SSO protectable

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Note that Google argues that if case is remanded on fair use, infringement must be retried as well – Did not mention this point at oral argument

Note also that Google cross-appealed on two minor grounds: – District Court should not have overruled the jury’s finding that

Google did not infringe by copying 8 decompiled files

– District Court should have overruled jury’s finding that Google’s use of RangeCheck function was infringing

• Court seemed willing to consider that this copying was essentially irrelevant, and the Oracle might use it to taint jury

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Predictions

Based on the lines of questions at oral argument, Federal Circuit may:

– Reverse on copyrightability and find that the 7000 lines of declaring code are copyrightable, and that the SSO of the APIs is copyrightable but not the method of operation itself (Google free to replicate the functionality; Court may also say that if there are specific lines of declaring code absolutely necesssary for a new program to be able interoperate with Java, those may be copied)

– Uphold jury verdict on infringement

– Remand to a new jury on fair use, possibly with instructions to district court as to how that analysis should be conducted

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