No. 14-410
`
`In the
`
`Supreme Court of the United States
`
`GOOGLE, INC.,
`
`v.
`
`ORACLE AMERICA, INC.,
`
`Petitioner,
`
`Respondent.
`
`On Petition for Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`
`Brief of Amicus Curiae Public Knowledge
`in Support of the Petition
`
`Charles Duan
`Counsel of Record
`Sherwin Siy
`Public Knowledge
`1818 N Street NW, Suite 410
`Washington, DC 20036
`(202) 861-0020
`cduan@publicknowledge.org
`
`Counsel for amicus curiae
`
`
`
`In the
`
`Supreme Court of the United States
`
`GOOGLE, INC.,
`
`v.
`
`ORACLE AMERICA, INC.,
`
`Petitioner,
`
`Respondent.
`
`On Petition for Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`
`Brief of Amicus Curiae Public Knowledge
`in Support of the Petition
`
`Charles Duan
`Counsel of Record
`Sherwin Siy
`Public Knowledge
`1818 N Street NW, Suite 410
`Washington, DC 20036
`(202) 861-0020
`cduan@publicknowledge.org
`
`Counsel for amicus curiae
`
`
`
`(i)
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES .
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`INTEREST OF AMICUS CURIAE .
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`SUMMARY OF ARGUMENT .
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`ARGUMENT .
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`. (ii)
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`. 1
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`. 4
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`I. This Case Presents a Question of Importance
`to the Future of Technology .
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`A. Oracle Essentially Claims Copyright in a
`Way of Communicating with a Computer .
`B. To Extend Copyright to Basic Computer
`Communication Methods Would Rapidly
`Decelerate Innovation .
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`. 4
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`. 8
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`II. The Decision Below Misapprehends the Role
`of Functionality in Copyright .
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`A. Oracle’s Copyright Claim Is Entirely
`Foreclosed by Baker v. Selden .
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`B. Whether an Element Is Functional Turns
`on the Nature of the Element’s Use, Not
`the Existence of Ex Ante Alternatives
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`III. The Federal Circuit Mischaracterizes the In-
`terface of Copyright and Patent .
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`A. Abstract
`Ideas Are Neither Copy-
`rightable Nor Patentable .
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`B. Potentially Patentable Processes are Not
`Themselves Copyrightable Expression .
`C. Arguments Regarding the Utility of In-
`terfaces Are Not Addressed to Software
`as a Whole .
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`. 11
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`CONCLUSION .
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`. 24
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`(ii)
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`TABLE OF AUTHORITIES
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`Cases
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`Affiliated Hosp. Prods., Inc. v. Merdel Game Mfg.
`Co., 513 F.2d 1183 (2d Cir. 1975) .
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`. 15
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`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct.
`2347 (2014) .
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`. 11, 18, 21–22
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`Ansehl v. Puritan Pharm. Co., 61 F.2d 131 (8th Cir.
`1932)
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`. 18
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`Anti-Monopoly, Inc. v. Gen. Mills Fun Group, 611
`F.2d 296 (9th Cir. 1979) .
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`. 15
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`Apple Computer, Inc. v. Microsoft Corp., 35 F.3d
`1435 (9th Cir. 1994)
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`. 6
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`Atari Games Corp. v. Nintendo of Am., Inc., 975
`F.2d 832 (Fed. Cir. 1992)
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`. 14
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`Baker v. Selden, 101 U.S. 99 (1880)
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`Bilski v. Kappos, 130 S. Ct. 3218 (2010) .
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`. 2, 11, 13–15
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`. 19, 22
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`Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834
`F.2d 1142 (2d Cir. 1987) .
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`. 15
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`Burrow-Giles Lithographic Co. v. Sarony, 111 U.S.
`53 (1884)
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`. 18
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`Christianson v. W. Publ’g Co., 149 F.2d 202 (9th Cir.
`1945)
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`. 18
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`(iii)
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`Computer Assocs. Int’l v. Altai, Inc., 982 F.2d 693
`(2d Cir. 1992) .
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`. 16, 18, 20, 22
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`Eldred v. Ashcroft, 537 U.S. 186 (2003) .
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`. 1
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`Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S.
`340 (1991) .
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`. 10, 13–14, 16, 18, 22–23
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`Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S.
`127 (1948) .
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`. 18
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`Golan v. Holder, 132 S. Ct. 873 (2012) .
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`. 1
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`Harper & Row Publishers, Inc., v. Nation Enters.,
`471 U.S. 539 (1985)
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`. 10, 18, 22–23
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`Hoopla Sports & Entm’t v. Nike, Inc., 947 F. Supp.
`347 (N.D. Ill. 1996)
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`. 15
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`Kieselstein-Cord v. Accessories by Pearl, Inc., 632
`F.2d 989 (2d Cir. 1980)
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`. 19–20
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`Kirtsaeng v. John Wiley & Sons, Inc.,, 133 S. Ct.
`1351 (2013) .
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`. 1
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`Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807
`(1st Cir. 1995), aff’d by an equally divided Court,
`516 U.S. 233 (1996) (per curiam) .
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`. 11, 14–16, 18, 22
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`Lotus Dev. Corp. v. Borland Int’l, Inc., 516 U.S. 233
`(1996) (per curiam)
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`. 11, 16
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`Mazer v. Stein, 347 U.S. 201 (1954)
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`. 18–19
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`(iv)
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`Morrissey v. Procter & Gamble Co., 379 F.2d 675
`(1st Cir. 1967)
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`. 10
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`Moseley v. V Secret Catalogue, Inc., 537 U.S. 418
`(2003) .
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`. 1
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`Nichols v. Universal Pictures Corp., 45 F.2d 119
`(2d Cir. 1930) .
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`. 18
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`Oracle Am., Inc. v. Google Inc., 750 F.3d 1339 (Fed.
`Cir. 2014) .
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`. 5, 7, 9, 13–14, 17, 20–23
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`Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 974
`(N.D. Cal. 2012)
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`. 13, 17, 21
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`Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909
`(7th Cir. 1996)
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`. 20
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`Rios v. Colon, 819 F.2d 319 (1st Cir. 1987) .
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`. 6
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`Ross, Brovins & Oehmke, PC v. Lexis/Nexis
`Group, 463 F.3d 478 (6th Cir. 2006)
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`. 12
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`Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510
`(9th Cir. 1992)
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`. 4
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`Trans-Lux Corp. v. United States, 696 F.2d 963
`(Fed. Cir. 1982) .
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`. 6
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`United States v. Microsoft Corp., 253 F.3d 34 (D.C.
`Cir. 2001) .
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`. 6
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`Uranita Found. v. Maaherra, 114 F.3d 955 (9th Cir.
`1997)
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`. 19
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`(v)
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`Constitutional Provisions
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`U.S. Const. art. 1, § 8, cl. 8 .
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`. 10
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`Statutes
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`17 U.S.C. § 101 (2013) .
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`. 4, 17
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`———, § 102 .
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`35 U.S.C. § 101 (2013) .
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`———, §§ 101–103 .
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`. 18
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`. 19
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`Other Sources
`
`A Dictionary of Computing (Oxford Univ. Press
`6th ed. 2008)
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`. 6
`
`al., Hypertext Transfer
`et
`T. Berners-Lee
`Protocol—HTTP/1.0 (1996), available at http://
`tools.ietf.org/html/rfc1945 .
`.
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`. 9
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`Paul E. Ceruzzi, A History of Modern Computing
`(2d ed. 2003)
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`. 9
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`Editors of the Am. Heritage Dicts., Dictionary of
`Computer and Internet Words (2001) .
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`. 5
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`James Gosling et al., The Java Application Pro-
`gramming Interface (1996) .
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`. 8
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`
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`(vi)
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`Neil Harper, Server-Side GPS and Assisted GPS in
`Java (2010) .
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`. 10
`
`Timothy B. Lee, Will the Supreme Court Save Us
`from Software Patents?, Wash. Post: Switch Blog
`(Feb. 26, 2014), http://www.washingtonpost.com/
`blogs/the-switch/wp/2014/02/26/will-the-supreme-
`court-save-us-from-software-patents/
`.
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`. 20
`
`Ian Murdock, On the Importance of Backward
`Compatibility, Ian Murdock’s Weblog (Jan. 14,
`2007), http: / / ianmurdock.com / platforms / on - the -
`importance-of-backward-compatibility/
`.
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`. 9
`
`Melville B. Nimmer & David Nimmer, Nimmer on
`Copyright (2014) .
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`. 4, 15, 19
`
`Official Rules of the National Basketball Associa-
`tion (2013–2014), available at http://mediacentral.
`nba.com/media/mediacentral/Official-NBA-Rule-
`Book.pdf
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`. 15
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`and Addendum of Plaintiff-
`Opening Brief
`Appellant, Oracle Am.,
`Inc. v. Google Inc.,
`750 F.3d 1339 (Fed. Cir. Feb. 11, 2013) (No. 13-
`1021)
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`. 5, 10, 13, 23
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`Random House Unabridged Dictionary (2d ed.
`1987)
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`. 6
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`Response and Reply Brief of Plaintiff-Appellant,
`Oracle Am., Inc. v. Google Inc., 750 F.3d 1339 (Fed.
`Cir. July 3, 2013) (No. 13-1021) .
`.
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`. 5, 9, 22
`
`
`
`(vii)
`
`Pamela Samuelson, CONTU Revisited: The Case
`Against Copyright Protection for Computer Pro-
`grams in Machine-Readable Form, 1984 Duke L.J.
`663 .
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`. 22–23
`
`Charles Selden, Selden’s Condensed Ledger and
`Condensed Memorandum Book (1861), available
`at http://lcweb2.loc.gov/service/rbc/rbc0001/2011/
`2011gen155867/2011gen155867.pdf
`.
`.
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`.
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`. 12–13, 15
`
`Stalking Trolls, Economist, Mar. 8, 2014, available
`at http: / / www.economist.com / news / technology -
`quarterly / 21598321 - intellectual - property - after -
`being - blamed - stymying - innovation - america -
`vague .
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`. 20
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`Andries van Dam, Post-WIMP User Interfaces,
`Comm. ACM, Feb. 1997, at 63, available at http://
`citeseer.ist.psu.edu/viewdoc/summary?doi=10.1.1.
`46.6390 .
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`. 6
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`
`
`1
`
`INTEREST OF AMICUS CURIAE
`
`Public Knowledge is a non-profit organization that is
`dedicated to preserving the openness of the Internet and
`the public’s access to knowledge, promoting creativity
`through balanced intellectual property rights, and up-
`holding and protecting the rights of consumers to use
`innovative technology lawfully. As part of this mission,
`Public Knowledge advocates on behalf of the public in-
`terest for a balanced copyright system, particularly with
`respect to new and emerging technologies.1
`
`Public Knowledge has previously served as amicus
`in key copyright cases. E.g., Kirtsaeng v. John Wiley &
`Sons, Inc.,, 133 S. Ct. 1351 (2013); Golan v. Holder, 132
`S. Ct. 873 (2012); Moseley v. V Secret Catalogue, Inc., 537
`U.S. 418 (2003); Eldred v. Ashcroft, 537 U.S. 186 (2003).
`
`1Per Supreme Court Rule 37(6), no counsel for a party authored
`this brief in whole or in part, and no counsel or party made a mone-
`tary contribution intended to fund the preparation or submission of
`the brief. No person or entity, other than amicus, its members, or its
`counsel, made a monetary contribution to the preparation or submis-
`sion of this brief. Per Rule 37(2)(a), counsel of record for all parties
`received notice of intent to file this brief at least 10 days prior to the
`due date, and both parties granted consent to filing. Documents in-
`dicating such are being filed herewith.
`
`
`
`2
`
`SUMMARY OF ARGUMENT
`
`Say that Delphi Corporation manufactures screws. It
`hits upon a new design for a screw socket—the interface
`between screw and screwdriver—that is more efficient
`than the prevailing Phillips and flathead insertions. Cap-
`italizing on this novel idea, Delphi manufactures a line of
`screws using this socket, which it calls Sumatra.
`
`The Sumatra socket is wildly popular. New lines of
`screwdrivers are made for the Sumatra socket. Engi-
`neering textbooks praise the Sumatra design. Wood-
`workers teach their sons and daughters to use it. And
`competing screw manufacturer Zillion decides to make
`its own screws compatible with the Sumatra socket. The
`screws otherwise differ, but use the Sumatra socket so
`that woodworkers need not purchase new tools.
`
`Only then does Delphi declare the Sumatra socket a
`sculptural work, suing Zillion for copyright infringement.
`
`Software programs are today’s screws and screw-
`drivers of computer engineering. Just as screws and
`screwdrivers require a common socket in order to work,
`software requires a common language—an application
`programming interface. And just as Delphi may not
`leverage copyright to block competition in screw socket
`shape, Oracle in the present case may not use copyright
`to monopolize the Java system interface.
`
`Copyright is granted to promote the public interest
`in generating new creative works, and as such balances
`between securing incentives for authors and ensuring an
`open space of ideas upon which future creators may build.
`As part of that balance, this Court and others have re-
`peatedly held, since the venerable Baker v. Selden, that
`
`
`
`3
`
`no copyright may inhere in functional elements of a work.
`Such elements, being incidents of practical knowledge
`and the useful arts, cannot be restrained under a copy-
`right system intended for aesthetic expression.
`
`The Federal Circuit ignored this essential mandate,
`by finding copyrightable an element of software that is
`quintessentially a method of operation. Left uncorrected,
`that decision threatens to undermine the fundamental
`balance of copyright law.
`
`But it also threatens to undermine the decades of
`progress in Internet and computer technology that have
`come about only because the openness of technology in-
`terfaces enabled enormous competitive growth. To sanc-
`tion copyright, not on the workings of a computer pro-
`gram, but on the ways of using that program, would be to
`sanction monopolization of those fundamental elements
`that enabled such competitive growth.
`
`This case thus presents a question of national impor-
`tance on an issue of federal policy. This Court should
`grant certiorari to correct a decision that would other-
`wise stray far from longstanding precedent. This Court
`should grant certiorari to ensure that the progress of sci-
`ence and the useful arts is not slowed.
`
`And this Court should grant certiorari to protect the
`constitutional balance of copyright law, now upset by a
`decision too zealous in expanding private rights at the ex-
`pense of the public good. For what hangs in that balance
`is not merely a small corner of computer science. What
`hangs in the balance are those basic ideas that, as this
`Court once declared, must remain “free to all men and
`reserved exclusively to none.”
`
`
`
`4
`
`ARGUMENT
`
`It is textbook law that functional elements of a work
`cannot be copyrighted. 17 U.S.C. § 102(b) (2013) (copy-
`right protection does not extend “to any idea, procedure,
`process, system, method of operation, concept, principle
`or discovery”); Sega Enters. Ltd. v. Accolade, Inc., 977
`F.2d 1510, 1524 (9th Cir. 1992) (“To the extent that a work
`is functional or factual, it may be copied . . . .”); 1 Melville
`B. Nimmer & David Nimmer, Nimmer on Copyright
`§ 2.18(d)(2) (2014) [hereinafter Nimmer]. Yet the Court
`of Appeals for the Federal Circuit extracted the one el-
`ement of a computer program that is quintessentially
`functional—the application programming interface—and
`declared it protected by copyright.
`
`Left unchecked, the Federal Circuit’s decision sets a
`precedent that threatens not only to topple the careful
`balance of copyright law mandated by the Constitution
`and calibrated by this Court and Congress, but also to
`severely hamper the progress of innovation for decades
`to come. The Court should grant certiorari to correct this
`grave error of tremendous national importance.
`
`I. This Case Presents a Question of Impor-
`tance to the Future of Technology
`
`Prior to reviewing the substantial legal errors of the
`decision below, this Court must appreciate the magni-
`tude of the problem created by those errors, to under-
`stand the substantiality of the federal question for which
`this Court should grant certiorari. Thus, this section pro-
`ceeds in two parts: first, to explain the nature of Oracle’s
`copyright claim; and second, to review how that claim will
`severely harm the progress of technology.
`
`
`
`5
`
`A. Oracle Essentially Claims Copyright in
`a Way of Communicating with a Computer
`
`At the heart of the case is the concept of the “appli-
`cation programming interface,” or API. Oracle charges
`Google with copying the API of the Java system, and
`the Federal Circuit’s analysis focused on two components
`of that API, the “declaring code” and its structure, se-
`quence and organization. See Oracle Am., Inc. v. Google
`Inc., 750 F.3d 1339, 1347, 1356 (Fed. Cir. 2014). Thus, the
`precise meaning of that term is essential to this case.
`
`Oracle calls the term a “verbal chameleon,” Opening
`Brief and Addendum of Plaintiff-Appellant at 9, Oracle
`(Feb. 11, 2013) (No. 13-1021) [hereinafter Oracle Brief],
`but in fact it has a uniform, understandable definition.2
`An application programming interface is a set of
`commands and rules for communicating with a com-
`puter program. Technical dictionaries define “API” as
`an “interface through which one program can communi-
`cate with another.” Editors of the Am. Heritage Dicts.,
`
`2It is in fact only Oracle’s mistaken usage of the term “API” that
`creates any confusion. Oracle uses “Java API” to refer to an entire
`bundle of computer programs, not just declaring code. See id. This
`does not conform with the general understanding of the term “API,”
`but Oracle repeatedly insists on conflating its own mistaken defini-
`tion with the correct one. See Response and Reply Brief of Plaintiff-
`Appellant at 5, Oracle (July 3, 2013) (No. 13-1021). Oracle does in
`fact admit the correct definition, Oracle Brief, supra, at 9 (API can
`describe a “communication protocol to pass information between pro-
`grams”), and then invents the term “declaring code” to mean “API,”
`see id. at 10 (declaring code is “code that the programmer declares in
`order to invoke the prewritten program”).
`For purposes of clarity, this brief uses the term “Java API” to refer
`only to the declaring code and its organizational structure; the term
`“Java system” will refer to the entire bundle of computer programs.
`
`
`
`6
`
`Dictionary of Computer and Internet Words 11 (2001);
`accord A Dictionary of Computing 19 (Oxford Univ.
`Press 6th ed. 2008) (defining API as “a set of functions
`and procedures [that] enables a program to gain access
`to facilities within an application”). The D.C. Circuit has
`defined the term as “routines or protocols that perform
`certain widely-used functions” that are “expos[ed]—
`i.e., ma[de] available to software developers.” United
`States v. Microsoft Corp., 253 F.3d 34, 53 (D.C. Cir. 2001).
`
`This definition should not sound foreign, because the
`concept of an “interface” is well known from many fields.
`A “user interface” includes the windows, icons, and other
`graphical elements by which people communicate with
`computers. See, e.g., Apple Computer, Inc. v. Microsoft
`Corp., 35 F.3d 1435, 1438 (9th Cir. 1994) (describing the
`Apple Macintosh user interface as “a user-friendly way
`for ordinary mortals to communicate with the Apple com-
`puter”); Andries van Dam, Post-WIMP User Interfaces,
`Comm. ACM, Feb. 1997, at 63, available at http://citeseer.
`ist.psu.edu/viewdoc/summary?doi=10.1.1.46.6390.3 Out-
`side the computer context, “interface” can mean “commu-
`nication or interaction,” or “a thing or circumstance that
`enables separate and sometimes incompatible elements
`to coordinate effectively.” Random House Unabridged
`Dictionary 993 (2d ed. 1987).4
`
`3WIMP stands for “Windows, Icons, Menus, and mouse Pointer.”
`4See also Rios v. Colon, 819 F.2d 319, 328 (1st Cir. 1987) (describ-
`ing government official as “a kind of cultural interface” because du-
`ties included acting as “a public liaison between the government and
`the artistic community”); Trans-Lux Corp. v. United States, 696 F.2d
`963, 964 (Fed. Cir. 1982) (calling a device designed to enable commu-
`nication between a Telex network and a user terminal an “interface
`between” the two).
`
`
`
`7
`
`The Java API comprises lines of “declarations.” As
`one example, the Java system can compute the larger of
`two numbers. This capability may be used through the
`following API command (explained further in Figure 1):
`
`public static int max(int x, int y)
`
`Oracle, 750 F.3d at 1349. The declaration—which exem-
`plifies what Oracle is claiming copyright in—serves as a
`template for the programmer to fill in. To use the com-
`mand, a programmer would follow the template to write:
`
`max(3, 4)
`
`and the Java system would return as output the larger
`value, namely 4. See id. at 1350.
`
`[b]
`[a]
`[c]
`[d]
`Declaration: public static int max ( int x, int y )
`
`Example use:
`
`max (
`
`3,
`
`4
`
`)
`
`[a] This is the name of command.
`[b] These are the template for providing inputs
`to the command. Here, the command expects
`two inputs of integers.
`[c] This prefix indicates that the command out-
`put will be an integer.
`[d] These two prefix words indicate that the API
`command can be called by anyone in any con-
`text.
`
`Figure 1: Example Java API command and usage
`
`
`
`8
`
`Two main conclusions about application programming
`interfaces deserve mention.
`
`First, as stated initially, an API is simply the com-
`mands and rules for communicating with a computer
`program, as precise and exacting as those rules may be.
`A programmer uses the Java API to operate the Java sys-
`tem, much as a remote control car driver uses knobs and
`buttons to operate the car.
`
`Second, an API is a generalized concept, not a partic-
`ular writing or piece of code. It is much like a language or
`protocol. It may be embodied in a work using it or a dic-
`tionary enumerating its vocabulary. See James Gosling
`et al., The Java Application Programming Interface xviii
`(1996). But standing alone, it is merely abstract knowl-
`edge, enabling two parties to understand and perform the
`wishes of each other.
`
`B. To Extend Copyright to Basic Computer
`Communication Methods Would Rapidly
`Decelerate Innovation
`
`Although the application programming interface is a
`relatively straightforward concept, it is of critical impor-
`tance to modern innovation. APIs underlie practically
`every significant advance in computing technology, and
`permitting copyright to extend over those APIs would
`severely hinder further advances in that technology.
`
`The history of computer technology is marked by
`incremental progress, with scores of innovations ema-
`nating out of individual, well-designed platforms—each
`presenting an interface to downstream innovators. Mi-
`crosoft Windows famously maintained a consistent API
`
`
`
`9
`
`for many years, allowing for the creation of numerous
`Windows software programs. See Ian Murdock, On the
`Importance of Backward Compatibility, Ian Murdock’s
`Weblog (Jan. 14, 2007), http://ianmurdock.com/platforms/
`on-the-importance-of-backward-compatibility/.
`
`Furthermore, the success of the Internet has been
`credited to its “use of a common protocol,” a single lan-
`guage with which all contemporary computers can com-
`municate. Paul E. Ceruzzi, A History of Modern Com-
`puting 295–96 (2d ed. 2003). Every web page owes its
`existence to the HyperText Transport Protocol by which
`computers obtain web pages. See T. Berners-Lee et al.,
`Hypertext Transfer Protocol—HTTP/1.0 (1996), avail-
`able at http://tools.ietf.org/html/rfc1945. Each of these
`interfaces—Windows, the Internet, HTTP—served as a
`springboard for enormous further advancement of tech-
`nology.
`
`If copyright circumscribed the ability of others to use
`and emulate these interfaces, it would have balkanized
`software and strangled the Internet.5 The Federal Cir-
`cuit dismissed any problems with copyright on APIs be-
`cause others “could have chosen different ways to ex-
`press and implement the functionality.” Oracle, 750 F.3d
`at 1368. But following this mandate for operating sys-
`
`5Oracle makes a halfhearted attempt to distinguish its case from
`a general copyright grant on computer interfaces. See Response
`and Reply Brief of Plaintiff-Appellant at 5, Oracle (July 3, 2013)
`(No. 13-1021). But its attempts to appeal to the ambiguity of the term
`“API”—an ambiguity that, as noted at note 2 supra p. 5, was man-
`ufactured by Oracle itself—are unavailing. Oracle offers no reason
`why its arguments as to the copyrightability of “declaring code” (its
`term for an API) are at all distinguishable from any other interface,
`computer or otherwise.
`
`
`
`10
`
`tems would have led to a proliferation of incompatible op-
`erating system interfaces, creating a headache for soft-
`ware developers—one that even Oracle criticized.6 Cf.
`Neil Harper, Server-Side GPS and Assisted GPS in Java
`69 (2010) (explaining how a lack of an available standard
`for a particular GPS location function led to “a prolifera-
`tion of proprietary interfaces”). And following that man-
`date would have turned the Internet from a universal in-
`formation resource into a Tower of Babel, every website
`speaking a different API language.
`
`This is problematic in its own right, but particularly
`problematic in view of the purpose of copyright to pro-
`mote the progress of science and the useful arts. See U.S.
`Const. art. 1, § 8, cl. 8. This Court has repeatedly held
`that “copyright assures authors the right to their origi-
`nal expression, but encourages others to build freely upon
`the ideas and information conveyed by a work.” Feist
`Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349–50
`(1991) (citing Harper & Row Publishers, Inc., v. Nation
`Enters., 471 U.S. 539, 556–57 (1985)).
`
`Sanctioning copyright in the Java API contravenes
`this principle: it would allow Oracle to unilaterally block
`further public use and innovation. Copyright is not “a
`game of chess in which the public can be checkmated” in
`this way. Morrissey v. Procter & Gamble Co., 379 F.2d
`675, 679 (1st Cir. 1967).
`
`6Oracle noted that, prior to Java, “computer programmers had
`to pick one platform when writing new programs,” and touted that
`Java “allows programmers to write programs that run on different
`types of computer hardware.” Oracle Brief, supra, at 8 (alterations
`omitted).
`
`
`
`11
`
`II. The Decision Below Misapprehends the
`Role of Functionality in Copyright
`
`Besides being bad policy, the Federal Circuit’s deci-
`sion is erroneous on the law. As the following discussion
`demonstrates, the Federal Circuit has decided an impor-
`tant federal question of copyrightability of functional ele-
`ments, in a way that conflicts with the relevant decisions
`of this Court. Certiorari is warranted to correct that er-
`ror.
`
`A. Oracle’s Copyright Claim Is Entirely
`Foreclosed by Baker v. Selden
`
`Blank forms are generally not copyrightable because
`they are functional. See Baker v. Selden, 101 U.S. 99, 101–
`02 (1880). Application programming interfaces are simi-
`larly not copyrightable because they are merely the re-
`sult of taking a blank form and saying “apply it with a
`computer.” Cf. Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S. Ct. 2347, 2358 (2014).7
`
`7Although it may appear that Lotus Development Corp. v. Bor-
`land International, Inc., 49 F.3d 807 (1st Cir. 1995), aff’d by an
`equally divided Court, 516 U.S. 233 (1996) (per curiam), considered
`and rejected this argument, that case actually contemplated some-
`thing quite different. Lotus considered whether menu items in a
`spreadsheet application were methods of operation and thus not
`copyrightable. See id. at 813. Borland argued that the case was con-
`trolled by Baker because the spreadsheet functions of the applica-
`tion were analogous to the blank forms of Baker. See Lotus, 49 F.3d
`at 814. Unsurprisingly, the court dismissed this argument, since the
`menu items, and not the spreadsheet functions, were at issue. See id.
`The First Circuit never considered whether the menu items them-
`selves were on par with the blank forms of Baker.
`
`
`
`12
`
`The elements of blank forms are identical to the el-
`ements of an API. Using the identifiers of Figure 1 on
`page 7, the Java API can be understood as a collection
`of declarations of commands, each declaration compris-
`ing [a] an identifier for the command, [b] a template of
`inputs to be provided with the command, and [c] a spec-
`ification of outputs or results caused by performing the
`command. And, indeed, a blank form is composed of [a]
`a name identifying the form and its purpose, [b] a series
`of blank spaces forming a template for form inputs, and
`[c] an intended purpose or result to be achieved when the
`form is submitted.
`
`This identity of content leads to identity of func-
`tion. A blank form enables structured communication
`between a person filling in the form and a person read-
`ing the filled form. For example, Selden’s condensed
`ledger enabled a bookkeeper to efficiently communicate
`financial records to an auditor or other reviewer. See
`Charles Selden, Selden’s Condensed Ledger and Con-
`densed Memorandum Book 8 (1861) [hereinafter Selden’s
`Condensed Ledger], available at http://lcweb2.loc.gov/
`service/rbc/rbc0001/2011/2011gen155867/2011gen155867.
`pdf.8
`
`The blank form thus serves as an interface between
`the writer and reader. An API is an interface as well; the
`only difference is that the reader is a computer rather
`than a person. Cf. Ross, Brovins & Oehmke, PC v.
`Lexis/Nexis Group, 463 F.3d 478, 485 (6th Cir. 2006) (“au-
`tomation” of filling in forms “not sufficiently original to
`
`8This book contains no page numbers, so the numbers identified
`in the citations refer to the page numbers of the PDF document cited
`in the URL.
`
`
`
`13
`
`warrant copyright protection”).
`
`Oracle repeatedly points to the “intricate web of con-
`nections” of the Java API, in an effort to suggest that
`its structure, sequence and organization of the API is
`copyrightable. Oracle Brief, supra, at 26. But so too
`can uncopyrightable blank forms constitute an intricate
`web of connections. Selden’s book included 19 forms and
`24 pages of demonstrative explanation designed “to com-
`press almost innumerable accounts under a few specific,
`intelligible heads.” Selden’s Condensed Ledger, supra, at
`8. For either blank forms or APIs, intricacy does not con-
`fer copyrightability.
`
`Given that an API is factually on par with a blank
`form, it is unsurprising that the reasoning of Baker di-
`rectly applies to the copyrightability of APIs. Baker held
`that blank ledger forms, including the “ruled lines and
`headings,” could not properly be the subject of copyright.
`101 U.S. at 101–02. The Court said that copyright cannot
`cover “systems” or an “art”; the Java API is certainly a
`system, one that teaches the “art” of using the Java sys-
`tem. See id. at 102; Oracle, 750 F.3d at 1351 (describing
`the API as an “overall system of organized names” (quot-
`ing Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 974,
`999 (N.D. Cal. 2012))).
`
`The Java API is on all fours with the blank forms
`of Baker, both factually and legally. Since copying of
`the blank forms in Baker was permissible, copying of
`the Java API is too. Cf. Feist, 499 U.S. at 361 (“Not all
`copying, however, is copyright infringement.”) Accord-
`ingly, the Federal Circuit’s decision directly contradicts
`Baker.
`
`
`
`14
`
`B. Whether an Element Is Functional
`Turns on the Nature of the Element’s
`Use, Not the Existence of Ex Ante
`Alternatives
`
`The Federal Circuit found the Java API copyrightable
`because “alternate expressions are available” for the API
`command names, so their choices for command names
`and inputs were creative and thus fully protected from
`copying.9 But numerous cases have held elements of a
`work unprotectable by copyright, even though the au-
`thors made choices among alternatives in constructing
`the work.
`
`Baker certainly supports the proposition that func-
`tionality is not obviated by the existence of ex ante al-
`ternatives. The Court held Selden’s blank forms uncopy-
`rightable, even though Selden himself recognized that
`one could alternatively reorganize the forms to “place
`
`9Oracle, 750 F.3d at 1360 (quoting Atari Games Corp. v. Nintendo
`of Am., Inc., 975 F.2d 832, 840 (Fed. Cir. 1992)); see id. at 1367 (“[A]n
`original work—even one that serves a function—is entitled to copy-
`right protection as long as the author had multiple ways to express
`the underlying idea.”); id. at 1363 (“Because Oracle exercised cre-
`ativity in the selection and arrangement of the method declarations
`when it created the API packages and wrote the relevant declaring
`code, they contain protectable expression that is entitled to copy-
`right protection.”).
`Among other reasons, the Federal Circuit appeared to arrive at
`this conclusion from a logical misreading of Feist. In that case, this
`Court held that a minimal degree of creativity was necessary for
`copyright to inhere in a work. See 499 U.S. at 362. But the Fed-
`eral Circuit took Feist to mean that a minimal degree of creativity is
`sufficient for copyright. See Oracle, 750 F.3d at 1354, 1362; see also
`id. at 1365 (distinguishing Lotus Development Corp. v. Borland In-
`ternational, Inc. on the grounds that the Java API is “creative and
`original”).
`
`
`
`15
`
`the names of Accounts to the extreme left or right—or
`other than central—of the columns.” Selden’s Condensed
`Ledger, supra, at 35.
`
`Cases in diverse fields have followed suit. Even with
`facts involving subjects as far apart as games,10 basket-
`ball rules,11 and wavy bicycle racks,12 courts have uni-
`formly found the subject matter not copyrightable and
`thus not infringed by copying, even though in each case
`the author of the work made creative choices among al-
`ternatives (terminology for games, names of basketball
`fouls, and alternate shapes of waves, respectively).
`
`Most relevant to the present case, c
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