`================================================================
`
`In The
`Supreme Court of the United States
`
`--------------------------------- ---------------------------------
`
`GOOGLE INC.,
`
`v.
`
`ORACLE AMERICA, INC.,
`
`Petitioner,
`
`Respondent.
`
`--------------------------------- ---------------------------------
`
`On Petition For A Writ Of Certiorari
`To The United States Court Of Appeals
`For The Federal Circuit
`
`--------------------------------- ---------------------------------
`
`BRIEF AMICUS CURIAE OF THE
`COMPUTER & COMMUNICATIONS INDUSTRY
`ASSOCIATION IN SUPPORT OF PETITIONER
`
`--------------------------------- ---------------------------------
`
`MATT SCHRUERS
`ALI STERNBURG
`COMPUTER & COMMUNICATIONS
` INDUSTRY ASSOCIATION
`900 17th Street NW, Suite 1100
`Washington, D.C. 20006
`(202) 783-0070
`mschruers@ccianet.org
`
`JONATHAN BAND
` Counsel of Record
`JONATHAN BAND PLLC
`21 Dupont Circle NW,
` Suite 800
`Washington, D.C. 20036
`(202) 296-5675
`jband@policybandwidth.com
`
`Counsel for Amicus Curiae
`
`November 7, 2014
`
`================================================================
`COCKLE LEGAL BRIEFS (800) 225-6964
`WWW.COCKLELEGALBRIEFS.COM
`
`
`
`i
`
`TABLE OF CONTENTS
`
`8
`
`Page
`TABLE OF CONTENTS ......................................
`i
`TABLE OF AUTHORITIES .................................
`iii
`INTEREST OF AMICUS CURIAE ......................
`1
`SUMMARY OF ARGUMENT ..............................
`2
`ARGUMENT ........................................................
`8
`
`I. THE FEDERAL CIRCUIT’S DECISION
`UPSETS AN INTERNATIONAL CON-
`SENSUS THAT COPYRIGHT MUST
`NOT INTERFERE WITH COMPATIBIL-
`ITY .............................................................
`A. Modern Copyright Law Encourages
`Software Compatibility .......................
`B. The Consensus About Software Com-
`patibility Has Developed into an In-
`ternational Norm Over Time ............... 13
`1. Pro-Compatibility Advocacy in the
`United States .................................. 14
`2. Free Trade Agreements Mandate
`Protections for Compatibility ......... 16
`C. Copyright Laws Around the World
`Protect Compatibility .......................... 17
`1. European Union Law Mirrors the
`U.S. Pro-Compatibility Approach ... 18
`2. Copyright Policies Around the Pa-
`cific and Across the World Align
`with U.S. and European Pro-
`Compatibility Law .......................... 20
`
`8
`
`
`
`ii
`
`TABLE OF CONTENTS – Continued
`
`Page
` II. THE FEDERAL CIRCUIT OVERPRO-
`TECTS COMPUTER PROGRAMS, TO
`THE DETRIMENT OF CONSUMERS,
`PROGRAMMERS, AND THE COMPUT-
`ER INDUSTRY .......................................... 24
`CONCLUSION ..................................................... 28
`
`
`
`iii
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`Alcatel U.S.A. v. DGI Techs., 166 F.3d 772 (5th
`Cir. 1999) ................................................................. 11
`Apple Computer v. Franklin Computer, 714
`F.2d 1240 (3d Cir. 1983) .................................. passim
`Atari Games Corp. v. Nintendo of America, 975
`F.2d 832 (Fed. Cir. 1992) ..................................... 9, 11
`Bateman v. Mnemonics, Inc., 79 F.3d 1532
`(11th Cir. 1996) ........................................................ 11
`Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,
`489 U.S. 141 (1989) ................................................. 10
`Computer Assocs. Int’l v. Altai, Inc., 982 F.2d
`693 (2d Cir. 1992) ................................................ 9, 15
`DSC Comms. Corp. v. DGI Techs., 898 F. Supp.
`1183 (N.D. Tex. 1995), aff ’d, 81 F.3d 597 (5th
`Cir. 1996) ................................................................. 11
`DSC Comms. Corp. v. Pulse Comms. Inc., 976
`F. Supp. 359 (E.D. Va. 1997), aff ’d in part,
`rev’d in part, and vacated in part, 170 F.3d
`1354 (Fed. Cir. 1999) ............................................... 11
`Dun & Bradstreet Software Servs. v. Grace
`Consulting, Inc., 307 F.3d 197 (3d Cir. 2002) ......... 10
`eBay v. MercExchange, 547 U.S. 388 (2006) ................ 6
`Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499
`U.S. 340 (1991) ................................................ 2, 9, 24
`Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470
`(1974) ....................................................................... 10
`
`
`
`iv
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`Lexmark Int’l v. Static Control Components,
`Inc., 387 F.3d 522 (6th Cir. 2004) ........................... 10
`Lotus Dev. Corp. v. Borland Int’l, 49 F.3d 807
`(1st Cir. 1995) ...................................................... 4, 27
`Lotus Dev. Corp. v. Borland Int’l, 516 U.S. 233
`(1996) ......................................................... 1, 4, 13, 14
`Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366 (10th
`Cir. 1997) ............................................................. 9, 15
`Oracle America, Inc. v. Google Inc., 750 F.3d
`1339 (Fed. Cir. 2014) ......................................... 24, 26
`Sega Enters. v. Accolade, Inc., 977 F.2d 1510
`(9th Cir. 1992) ......................................... 9, 11, 12, 15
`Sony Computer Entm’t v. Connectix Corp., 203
`F.3d 596 (9th Cir. 2000) .................................... 11, 12
`Twentieth Century Music Corp. v. Aiken, 422
`U.S. 151 (1975) ........................................................ 26
`Whelan Assocs., Inc. v. Jaslow Dental Lab.,
`Inc., 797 F.2d 1222 (3d Cir. 1986) ......... 6, 7, 9, 10, 13
`
`
`STATUTES
`17 U.S.C. § 102(b) ............................................... 5, 9, 12
`17 U.S.C. § 107 ........................................................... 11
`17 U.S.C. § 1201(f) ...................................................... 16
`
`
`
`
`
`
`v
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`INTERNATIONAL SOURCES
`Canada Copyright Modernization Act (Bill C-
`11), S.C. 2012, c. 20, s. 30.61 .................................. 22
`Copyright Law of the Republic of China, art.
`65, Intellectual Property Office (2007) (Tai-
`wan) ......................................................................... 22
`Copyright Act, No. 14 of 1957; India Code
`(1999), § 52(1)(ab) ................................................... 22
`Israel Copyright Act, 5767-2007, LSI 2199
`(2007), § 24(c)(3) ...................................................... 23
`Kenya Copyright Act, (2009) Cap. 130 § 26(5) .......... 22
`Copyright (Amendment) Act 2012, Laws of
`Malaysia, Act A1420, § 36A(2)(a) ........................... 21
`New Zealand Copyright (New Technologies)
`Amendment Act 2008, § 43 (amending Copy-
`right Act 1994, § 80A(2)) (2008) .............................. 21
`Council of Ministers Directive 91/250/EEC of
`14 May 1991 on the Legal Protection of
`Computer Programs, 1991 O.J. (L 122) ................. 18
`SAS Institute, Inc. v. World Programming Ltd.,
`Case C-406/10, [2012] 3 CMLR 4 ..................... 19, 20
`
`
`TRADE AGREEMENTS
`U.S.-Australia Free Trade Agreement, May 18,
`2004, 43 I.L.M. 1248 ............................................... 17
`U.S.-Bahrain Free Trade Agreement, Sept. 14,
`2004, 44 I.L.M. 544 ................................................. 17
`
`
`
`vi
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`U.S.-Chile Free Trade Agreement, June 6,
`2003, 42 I.L.M. 1026 ............................................... 17
`U.S.-Colombia Trade Promotion Agreement,
`Nov. 22, 2006, http://www.ustr.gov/trade-
`agreements/free-trade-agreements/colombia-
`fta/final-text ............................................................ 17
`U.S.-Dominican Republic-Central America
`Free Trade Agreement, May 28, 2004, 43
`I.L.M. 514 ................................................................ 17
`U.S.-Korea Free Trade Agreement, June 30,
`2007, 46 I.L.M. 642 ................................................. 16
`U.S.-Morocco Free Trade Agreement, June 15,
`2004, 44 I.L.M. 544 ................................................. 17
`U.S.-Oman Free Trade Agreement, Jan. 1,
`2009, http://www.ustr.gov/trade-agreements/
`free-trade-agreements/oman-fta/final-text ............ 17
`U.S.-Panama Trade Promotion Agreement,
`June
`28,
`2007,
`http://www.ustr.
`gov/trade-agreements/free-trade-agreements/
`panama-tpa/final-text ............................................. 17
`U.S.-Peru Trade Promotion Agreement, Apr. 12,
`2006, http://www.ustr.gov/trade-agreements/
`free-trade-agreements/peru-tpa/final-text ............. 17
`U.S.-Singapore Free Trade Agreement, May 6,
`2003, 42 I.L.M. 1026 ............................................... 17
`
`
`
`
`
`
`
`vii
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`TREATISES
`PAUL GOLDSTEIN, GOLDSTEIN ON COPYRIGHT (2d
`ed. 2005) ................................................................ 3, 9
`DAVID NIMMER & MELVILLE B. NIMMER, NIMMER
`ON COPYRIGHT (2005) ............................................... 27
`
`
`MISCELLANEOUS
`American Committee for Interoperable Sys-
`tems, Statement of Principles (1991) ..................... 14
`Brief for ACIS & CCIA as Amici Curiae Sup-
`porting Respondent, Lotus v. Borland, 516
`U.S. 233 (1995) (No. 94-2003) ................................. 14
`JONATHAN BAND & MASANOBU KATOH, INTERFAC-
`ES ON TRIAL: INTELLECTUAL PROPERTY AND
`INTEROPERABILITY IN THE GLOBAL SOFTWARE
`INDUSTRY (1995) ............................................... passim
`JONATHAN BAND & MASANOBU KATOH, INTERFAC-
`ES ON TRIAL 2.0 (2011) ..................................... passim
`Karen Gullo & Cornelius Rahn, SAP to Pay
`Oracle $306 Million for Copyright Breach,
`Bloomberg.com, Aug. 3, 2012 .................................. 25
`Josh Lerner, The Impact of Copyright Policy
`Changes on Venture Capital Investment in
`Cloud Computing Companies (2011) ........................ 5
`
`
`
`
`
`
`viii
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`Pamela Samuelson, The Past, Present, and
`Future of Software Copyright Interoperability
`Rules in the European Union and United
`States, 34(3) EUR. INTELL. PROP. REV. 229
`(2010) ................................................................. 18, 23
`Press Release, Sun Microsystems, House IP
`Subcommittee Action Threatens Internet
`Competition (Mar. 1, 1998) ..................................... 16
`Response of the United States to Microsoft’s
`Motion for Summary Judgment, U.S. v. Mi-
`crosoft, 1998 U.S. Dist. LEXIS 14231 (D.D.C.
`Sept. 14, 1998) ......................................................... 15
`
`
`
`1
`
`INTEREST OF AMICUS CURIAE1
`The Computer & Communications Industry
`
`Association (“CCIA”) represents over twenty compa-
`nies of all sizes providing high technology products
`and services, including computer hardware and
`software, electronic commerce, telecommunications,
`and Internet products and services – companies that
`collectively generate more than $465 billion in annual
`revenues.2 CCIA members have a large stake in the
`rules of software copyright being properly designed:
`effective intellectual property protection encourages
`developers to create new applications, but the im-
`proper extension of copyright law to functional ele-
`ments will discourage
`innovation and
`inhibit
`competition in the industry.
`
`For more than twenty-five years, CCIA has
`
`supported interpreting the intellectual property laws
`to permit the development of compatible products.
`For example, CCIA filed an amicus brief with this
`Court in Lotus Dev. Corp. v. Borland Int’l, 516 U.S.
`233 (1996), arguing that the First Circuit’s conclusion
`that copyright protection did not extend to the Lotus
`
`1 No counsel for any party authored this brief in whole or
`
`part, and no person other than amicus curiae or its counsel
`made a monetary contribution to the preparation or submission
`of this brief. All parties received timely notice of CCIA’s intent to
`file, and consented to the filing of this brief.
`
`2 A list of CCIA members is available at https://www.ccianet.
`org/members. Google is a CCIA member, and Oracle and Sun
`were formerly members of CCIA, but none of these parties took
`any part in the preparation of this brief.
`
`
`
`2
`
`1-2-3 command structure followed this Court’s deci-
`sion in Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499
`U.S. 340 (1991). CCIA also submitted an amicus brief
`in support of Google in the Federal Circuit.
`
`In its Petition, Google asks this Court to review
`
`the Federal Circuit’s disregard of longstanding prin-
`ciples concerning the scope of copyright protection for
`computer programs in favor of a discredited thirty-
`year-old Third Circuit decision, Apple Computer v.
`Franklin Computer, 714 F.2d 1240, 1253 (3d Cir.
`1983) (stating that compatibility is “a commercial and
`competitive objective which does not enter into the
`somewhat metaphysical issue of whether particular
`ideas and expression have merged”). Adopting the
`position that copyright protects the elements of
`computer programs necessary to achieve compatibil-
`ity poses serious anticompetitive consequences for
`CCIA members and the technology industry as a
`whole.
`
`
`SUMMARY OF ARGUMENT
`Before the Federal Circuit, Oracle repeatedly
`
`compared the Java Application Program Interface
`(“API”) to a Harry Potter novel. Brief of Plaintiff-
`Appellant, at 1, 4, 13, 42-44, 52, 58, Oracle America,
`Inc. v. Google Inc., Dkt. No. 43, Nos. 2013-1021, et al.
`(Fed. Cir. Feb. 11, 2013). In siding with this inapt
`comparison, the Federal Circuit departed from a
`point of broad, international consensus. Software
`applications, copyright has long acknowledged, are
`
`
`
`3
`
`different from artistic works. A novel stands by itself;
`a software application can function only in conjunc-
`tion with hardware and other software, including an
`operating system. However, the word processor
`cannot run on every operating system. It can run
`only on an operating system with which it is “com-
`patible,” that is, one which conforms to the same set
`of technical rules.3 These rules, known as “interface
`specifications,” have no analog in the Harry Potter
`scenario.
`
`The specific elements of the Java Application
`
`Program Interface (“API”) at issue in this case are an
`example of interface specifications. In many cases
`such as this, “late-arriving hardware or software
`producers must, to compete, make their products
`compatible with the products sold by entrenched
`industry leaders, an effort that will characteristically
`require them to copy the industry leaders’ interface
`specifications – the key that opens the lock to their
`operating systems.” 2 GOLDSTEIN ON COPYRIGHT § 8.5.1
`(2d ed. 2005). If a company could exercise proprietary
`control over the interface specifications implemented
`by its products, that company could determine which
`products made by other firms – if any – would be
`compatible with its software. And should that compa-
`ny have a dominant position in a particular market, it
`could use its control over compatibility to expand its
`dominant position into adjacent markets. Moreover,
`
`3 In this brief, the term “compatibility” is used interchange-
`
`ably with “interoperability.”
`
`
`
`4
`
`such authority would extend the rights under copy-
`right beyond what is necessary to protect the original
`expressive elements that have traditionally been
`offered protection under American copyright law, and
`it would override limitations on copyright crafted to
`protect the public good.
`
`Such a broad monopoly would have serious
`
`implications for consumer welfare. In the absence of
`competition during the effective lifespan of the prod-
`uct, the first developer would have little incentive to
`develop more innovative and less costly products.
`These negative consequences would be compounded
`by the fact that the personal computer revolution and
`the emergence of the Internet have produced an
`overwhelming need
`for
`interconnection between
`different elements of computer systems. Prohibiting
`competitors from accessing de facto standard inter-
`face specifications would lock users into a particular
`operating system or network software environment,
`and would inhibit the transfer of data between users
`with different computing environments. See Lotus
`Dev. Corp. v. Borland Int’l, 49 F.3d 807, 821 (1st Cir.
`1995) (Boudin, J., concurring), aff ’d by an equally
`divided court, 516 U.S. 233 (1996). The Petition
`shows a host of real-world problems and economic
`harms that would result if API copyright could fore-
`close compatibility, including the cost of rewriting
`interface code formerly understood to be unprotected,
`and lock-in costs resulting from consumers’ inability
`to switch operating systems or cloud computing
`providers. Brief of Petitioner at 33-36. Lock-in would
`
`
`
`5
`
`deter competition, investment, and innovation in the
`burgeoning cloud computing industry, which is known
`to be sensitive to policy changes in copyright.4
`
`In short, in the computer industry, overly broad
`
`intellectual property protection directly restricts
`competition and innovation. This was the status quo
`in the computing environment in the 1970s. Once a
`buyer purchased a computer system, the buyer was
`essentially locked-in to that system: the system was
`incompatible with products manufactured by other
`companies, and conversion costs were high. Although
`“locking in” was extremely profitable for dominant
`vendors such as IBM, competitors and users suffered
`from high prices, indifferent service, limited choice,
`and slow innovation. JONATHAN BAND & MASANOBU
`KATOH, INTERFACES ON TRIAL 2.0 at 1 (2011).
`
`Google is correct that the courts of appeals are in
`
`disarray about the application of Section 102(b) to
`software. But until the Federal Circuit embraced
`what had been sidelined as a minority, discredited
`view, there was consensus outside of the Third Circuit
`on the narrower question of the protectability of
`program elements necessary for compatibility. As the
`district court explained in detail, courts outside the
`Third Circuit consistently rejected the dicta in Franklin
`
`4 Josh Lerner, The Impact of Copyright Policy Changes on
`
`Venture Capital Investment in Cloud Computing Companies
`(2011), available at http://www.analysisgroup.com/uploaded
`Files/Publishing/Articles/Lerner_Fall2011_Copyright_Policy_VC_
`Investments.pdf.
`
`
`
`6
`
`and holding in Whelan Assocs., Inc. v. Jaslow Dental
`Lab., Inc., 797 F.2d 1222 (3d Cir. 1986), and found
`instead that interface specifications fall on the idea
`(or unprotected) side of copyright’s idea/expression
`dichotomy. These more recent rulings have enabled
`the transition from the locked-in computer environ-
`ments of the 1970s to today’s interoperable Internet.
`The Federal Circuit, by adopting the Third Circuit’s
`approach to compatibility, threatens this dynamic and
`innovative ecosystem.
`
`This brief will not repeat Google’s substantive
`
`arguments. Instead, given that “a page of history is
`worth a volume of logic,” eBay v. MercExchange, 547
`U.S. 388, 394 (2006) (Roberts, J., concurring) (citation
`omitted), this brief discusses how U.S. courts, Con-
`gress, and jurisdictions worldwide had arrived at a
`consensus interpretation of the copyright question of
`compatibility over the past 25 years, a consensus that
`the Federal Circuit’s decision has disrupted.5 This
`pro-compatibility
`interpretation of copyright
`law
`consists of two independent, but related principles.
`The first principle is that copyright protection does not
`extend to program elements necessary for compatibility,
`
`5 This history is discussed in detail in two books co-
`
`authored by counsel of record on this brief. JONATHAN BAND &
`MASANOBU KATOH, INTERFACES ON TRIAL: INTELLECTUAL PROPERTY
`AND INTEROPERABILITY IN THE GLOBAL SOFTWARE INDUSTRY (1995),
`available at http://tinyurl.com/InterfacesonTrial
`(hereinafter
`“INTERFACES 1.0”); and BAND & KATOH, INTERFACES ON TRIAL 2.0
`(2011), available at http://mitpress.mit.edu/books/interfaces-
`trial-20 (hereinafter “INTERFACES 2.0”).
`
`
`
`7
`
`such as interface specifications. The second principle,
`not directly contested in this litigation, is that the
`copying incidental to the reverse engineering neces-
`sary to identify these interface specifications does not
`infringe copyright.
`
`Courts in four circuits (including the Federal
`
`Circuit) have concluded that reverse engineering is
`permissible when done to discover interface specifica-
`tions necessary for compatibility. Yet Oracle now
`contends that interoperating with such specifications
`is itself infringement. If this is so, then these numer-
`ous appellate court decisions blessing reverse engi-
`neering when done in pursuit of compatibility become
`meaningless rulings. These cases were predicated
`upon the universally agreed-upon notion that copy-
`right protection did not extend to interface specifica-
`tions necessary for compatibility – a principle to
`which Oracle and Sun Microsystems, which created
`Java, both subscribed.
`
`Following Franklin and Whelan, Sun and Oracle,
`
`along with a large swath of the computer industry,
`encouraged a pro-compatibility
`interpretation of
`copyright law.6 This perspective was embodied in
`political advocacy and in amicus briefs in at least 16
`
`6 CCIA, the American Committee for Interoperable Systems
`
`(“ACIS”), and leading members of both organizations, ranging
`from Amdahl to Zenith, and including Oracle and Sun Microsys-
`tems, were active in promoting pro-compatibility rules. Sun’s
`Deputy General Counsel Peter Choy chaired ACIS for much of
`its existence.
`
`
`
`8
`
`different cases. This coalition also advocated in favor
`of pro-compatibility principles in the Digital Millen-
`nium Copyright Act (“DMCA”), which are now man-
`dated by eleven U.S. free trade agreements. The issue
`was so foundational to software development that
`industry advocacy for compatibility reached Europe,
`the Pacific Rim, and the Middle East. Thus, the
`Federal Circuit’s decision not only rekindles a split
`between circuits by embracing a long discredited
`holding; it also puts a minority of U.S. courts at odds
`with an established international consensus.
`
`Accordingly, the Petition should be granted to
`
`prevent the Federal Circuit from turning back the
`clock on a quarter century of established domestic
`and international software copyright jurisprudence.
`
`
`ARGUMENT
`I. THE FEDERAL CIRCUIT’S DECISION
`UPSETS AN INTERNATIONAL CONSEN-
`SUS THAT COPYRIGHT MUST NOT IN-
`TERFERE WITH COMPATIBILITY.
`A. Modern Copyright Law Encourages
`Software Compatibility.
`Over the past 25 years, U.S. courts, the Con-
`
`gress, and foreign
`jurisdictions have repeatedly
`applied copyright law in a manner that supports
`compatibility. Decision-makers around the world have
`adopted two related principles to this end. First, they
`have determined that copyright does not protect
`interface specifications and other program elements
`
`
`
`9
`
`necessary for compatibility. Second, they have refused
`to treat as copyright infringement any reproductions
`performed in the course of the reverse engineering
`necessary to discern these interface specifications.
`
`The first principle – the non-protectability of
`
`interface specifications – was directly addressed by
`the district court and Google’s Petition. The critical
`turning point in the development of this principle
`occurred in 1992 when the Second Circuit in Comput-
`er Assocs. Int’l v. Altai, Inc., 982 F.2d 693 (2d Cir.
`1992), followed this Court’s 1991 decision in Feist to
`reject the Third Circuit’s 1986 Whelan decision and
`1983 Franklin decision.
`
`Informed by this Court’s holdings in Feist that
`
`the scope of copyright protection in utilitarian works
`is “thin,” Feist, 499 U.S. at 350, and that substantial
`effort
`cannot
`confer
`copyright protection
`on
`unprotectable elements, id. at 349, the Second Circuit
`found that “Feist implicitly undercuts the Whelan
`[incentive based] rationale,” Altai, 982 F.2d at 711,
`and ruled that under Section 102(b), copyright did not
`extend to program elements necessary for compatibil-
`ity. By the end of the millennium, “most courts of
`appeal that ha[d] subsequently addressed the ques-
`tion of scope of copyright protection for computer
`programs ha[d], like Computer Associates, effectively
`rejected the Whelan approach.” 1 GOLDSTEIN ON
`COPYRIGHT § 2.15.1 (2d ed. 2005) (citing Sega Enters.
`v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992); Mitel,
`Inc. v. Iqtel, Inc., 124 F.3d 1366 (10th Cir. 1997); and
`Atari Games Corp. v. Nintendo of America, 975 F.2d
`
`
`
`10
`
`832 (Fed. Cir. 1992)); see also Lexmark Int’l v. Static
`Control Components, Inc., 387 F.3d 522, 534 (6th Cir.
`2004).7
`
`The second principle – the permissibility of
`
`reverse engineering – is not directly at issue in this
`case, but its treatment reflects on the importance
`that U.S. copyright law attributes to compatibility.
`Because a program’s interface specifications usually
`are not readily apparent, developers seeking to in-
`teroperate often must research the interface specifi-
`cations of the original program. This research, known
`as reverse engineering, is a basic tool of software
`product development. Without it, compatibility can be
`difficult or impossible to achieve.8
`
`Copyright law, however, could impede software
`
`reverse engineering, because reverse engineering
`
`7 The Third Circuit, in contrast, continued the wayward
`
`trend of Franklin and Whelan in Dun & Bradstreet Software
`Servs. v. Grace Consulting, Inc., 307 F.3d 197, 216 (3d Cir. 2002).
`
`8 This Court has long recognized that there is nothing
`inherently wrong with studying a competitor’s product to
`understand how it works and to figure out how to make a better
`product. Thus, in Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470,
`476 (1974), the Court stated that “trade secret law . . . does not
`offer protection against discovery by fair and honest means,
`such as . . . by so-called reverse engineering, that is by starting
`with a known product and working backward to divine the
`process which aided in its development or manufacture.” The
`Court has also recognized the benefits of reverse engineering:
`“Reverse engineering . . . often leads to significant advances in
`technology.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489
`U.S. 141, 160 (1989).
`
`
`
`11
`
`almost always requires making a reproduction or
`derivative work. At least six U.S. courts have held
`that reproduction that occurs while reverse engineer-
`ing in order to learn interface specifications is permit-
`ted fair use. See, e.g., Atari; Sega (citing 17 U.S.C.
`§ 107).9 Other courts have prevented enforcement
`under a copyright misuse theory. See, e.g., Alcatel
`U.S.A. v. DGI Techs., 166 F.3d 772 (5th Cir. 1999).
`Why would decades of copyright law permit reverse
`engineering if using the information learned by doing
`so – interface specifications – infringed copyright?
`The widely accepted principle that reverse engineer-
`ing to learn essential interface specifications is not
`infringement only makes sense in a copyright system
`where utilizing those same interface specifications to
`interoperate is similarly non-infringing conduct.
`
`In Sega, for example, the Ninth Circuit excused
`
`the copying incidental to Accolade’s reverse engineering
`of Sega’s products because the purpose of the reverse
`engineering was to uncover the unprotectable inter-
`faces specifications necessary to achieve compatibil-
`ity. Unfortunately, the Federal Circuit misunderstood
`Sega’s teaching. Because Sega was a fair use case, the
`Federal Circuit concluded that compatibility was
`
`9 See also DSC Comms. Corp. v. DGI Techs., 898 F. Supp.
`
`1183 (N.D. Tex. 1995), aff ’d, 81 F.3d 597 (5th Cir. 1996); Bate-
`man v. Mnemonics, Inc., 79 F.3d 1532 (11th Cir. 1996); DSC
`Comms. Corp. v. Pulse Comms. Inc., 976 F. Supp. 359 (E.D. Va.
`1997), aff ’d in part, rev’d in part, and vacated in part, 170 F.3d
`1354 (Fed. Cir. 1999); Sony Computer Entm’t v. Connectix Corp.,
`203 F.3d 596 (9th Cir. 2000).
`
`
`
`12
`
`relevant only to the question of the applicability of
`the fair use defense.
`
`To the contrary, the Sega court found that Acco-
`
`lade reverse engineered “Sega’s software solely to
`discover the functional requirements for compatibility
`with the Genesis console – aspects of Sega’s programs
`that are not protected by copyright. 17 U.S.C.
`§ 102(b).” Sega, 977 F.2d at 1522. The Ninth Circuit
`explained that if reverse engineering were not per-
`mitted,
`
`the owner of the copyright gains a de facto
`monopoly over the functional aspects of his
`work – aspects that were expressly denied
`copyright protection by Congress. 17 U.S.C.
`§102(b). In order to enjoy a lawful monopoly
`over the idea or functional principle underly-
`ing a work, the creator must satisfy the more
`stringent standards imposed by the patent
`laws.
`
`Id. at 1526. Indeed, Sega’s repeated citation to Sec-
`tion 102(b) leaves no doubt that the Ninth Circuit
`believed that elements necessary for compatibility
`were unprotectable under Section 102(b) – not that
`they were protectable but nonetheless could be copied
`as a matter of fair use.10
`
`
`10 The Ninth Circuit’s subsequent decision in Sony v.
`
`Connectix, 203 F.3d at 603, that fair use permitted the reverse
`engineering by Connectix, was likewise predicated on the
`unprotectability of the interface information Connectix was
`seeking.
`
`
`
`13
`
`B. The Consensus About Software Com-
`patibility Has Developed into an In-
`ternational Norm Over Time.
`The current consensus that copyright should not
`
`inhibit compatibility did not arise in a vacuum.
`Franklin and Whelan aroused concerns in the com-
`puter industry that large incumbents might use
`copyright anticompetitively to restrict access to
`interface specifications and impede software compati-
`bility. This led to an extensive debate, which contin-
`ued until courts and policymakers coalesced around
`the principles reflected in Lotus v. Borland.
`
`In December 1991, new entrants in the hardware
`
`and software sectors convened at Sun’s headquarters
`to discuss these concerns. Chaired by Sun’s Deputy
`General Counsel Peter Choy, this group – the Ameri-
`can Committee for Interoperable Systems (“ACIS”) –
`agreed upon a Statement of Principles, chiefly, that
`“[t]he rules or specifications according to which data
`must be organized in order to communicate with
`another program or computer,
`i.e.,
`interfaces
`and access protocols, are not protectable expression
`under copyright law,” and that copyright does not
`“restrict the ability of others to reproduce all or part
`of a lawfully obtained program as a step in the
`
`
`
`14
`
`development of competing products. . . .”11 Similar
`efforts arose in other countries around the world.12
`
`
`
`1. Pro-Compatibility Advocacy in the
`United States
`Amicus CCIA, ACIS, and others in the industry
`
`advocated in support of copyright principles favorable
`to compatibility in numerous cases in the lower
`courts, arguing, as they had in Lotus v. Borland, that
`“extending copyright protection to elements necessary
`for interoperability would inhibit the ability of [indus-
`try] to develop innovative, competitive products.”13
`In addition to cases involving the non-protectability
`of interface specifications, industry leaders also
`
`
`11 ACIS, Statement of Principles (1991), available at
`
`https://www.ccianet.org/interop.
`
`12 Joining CCIA and ACIS in this global effort were the
`European Committee for Interoperable Systems (“ECIS”), the
`Canadian Association for Interoperable Systems (“CAIS”) and
`the Supporters of Interoperable Systems in Australia (“SISA”),
`all of whom subscribed to the position that copyright should not
`extend to interface specifications. See INTERFACES 1.0, supra n.5.
`Both Oracle and Sun were CCIA members at this time, as well
`as members of ACIS, ECIS, and SISA. Id. at 308. Sun joined
`CCIA in 1993 and remained a member until its 2010 acquisition
`by Oracle. Oracle was a member of CCIA from 1993 until 2011.
`joined CCIA
`in 2006, decades after CCIA’s pro-
`compatibility advocacy began.
`
`13 Brief for ACIS & CCIA as Amici Curiae Supporting
`Respondent, Lotus v. Borland, 516 U.S. 233 (1995) (No. 94-2003)
`(submitted by Counsel of Record Peter M.C. Choy, Deputy Gen.
`Counsel, Sun; Chairman, ACIS).
`
`
`
`15
`
`championed the permissibility of software reverse
`engineering, and the interoperability exception of the
`DMCA.
`
`The consensus of U.S. courts outside the Third
`
`Circuit precipitated a change in U.S. domestic and
`foreign policy. The U.S. Government eventually took
`the position that interface specifications should not
`receive copyright protection, including in its antitrust
`case against Microsoft. The Justice Department had
`objected to c