throbber

`
`No. 18-956
`================================================================
`
`In The
`Supreme Court of the United States
`
`---------------------------------  ---------------------------------
`
`GOOGLE LLC,
`
`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 65 INTELLECTUAL
`PROPERTY SCHOLARS AS AMICI CURIAE
`IN SUPPORT OF PETITIONER
`
`---------------------------------  ---------------------------------
`
`PAMELA SAMUELSON
`UNIVERSITY OF CALIFORNIA,
` BERKELEY, SCHOOL OF LAW
`892 Simon Hall
`Berkeley, CA 94720
`
`CATHERINE CRUMP
` Counsel of Record
`SAMUELSON LAW,
` TECHNOLOGY & PUBLIC
` POLICY CLINIC
`UNIVERSITY OF CALIFORNIA,
` BERKELEY, SCHOOL OF LAW
`353 Boalt Hall
`Berkeley, CA 94720
`(510) 292-6860
`ccrump@law.berkeley.edu
`
`================================================================
`COCKLE LEGAL BRIEFS (800) 225-6964
`WWW.COCKLELEGALBRIEFS.COM
`
`
`
`

`

`i
`
`TABLE OF CONTENTS
`
`5
`
`Page
`TABLE OF AUTHORITIES .................................
`iii
`INTEREST OF AMICI CURIAE .........................
`1
`SUMMARY OF ARGUMENT ..............................
`2
`ARGUMENT ........................................................
`5
`
`I. The Federal Circuit’s Merger Analysis
`Conflicts With This Court’s Ruling In
`Baker v. Selden As Well As With Decisions
`From Five Circuit Courts ..........................
`A. The Federal Circuit’s Merger Analysis
`Is Contrary To Baker v. Selden ............
`B. The Federal Circuit’s Merger Analysis
`Conflicts With Many Post-Baker Prec-
`edents ..................................................
`C. The Second Circuit Has Rejected The
`Third And Federal Circuits’ Narrow
`Conception Of Merger ......................... 11
` II. Circuit Courts Are Split On The Scope Of
`Copyright Protections For Software .......... 12
`A. A Circuit Split Exists About Applica-
`tions Of § 102(b) System And Method
`Exclusions In Software Copyright
`Cases .................................................... 13
`B. A Circuit Split Exists On The Viability
`Of Compatibility Defenses .................. 14
`
`5
`
`8
`
`

`

`ii
`
`TABLE OF CONTENTS – Continued
`
`Page
`C. A Circuit Split Exists On Whether The
`“Structure, Sequence, And Organiza-
`tion” (SSO) Of Computer Programs Is
`Protectable Expression As Long As It
`Exhibits Some Creativity .................... 15
`D. A Circuit Split Exists Over Whether
`Copyright and Utility Patents Can
`Provide Overlapping Protections To
`Program Innovations ........................... 17
` III. The Federal Circuit’s Decision Opens A
`Circuit Split On The Copyrightability Of
`Words And Short Phrases .......................... 19
`CONCLUSION ..................................................... 22
`
`APPENDIX
`List of Amici ................................................................ 1a
`
`

`

`iii
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`Apple Computer, Inc. v. Franklin Computer, Inc.,
`714 F.2d 1240 (3d Cir. 1983) ................................... 14
`Arica Inst., Inc. v. Palmer, 970 F.2d 1067 (2d Cir.
`1992) .......................................................................... 5
`ATC Distrib. Grp. v. Whatever It Takes Trans-
`missions & Parts, Inc., 402 F.3d 700 (6th Cir.
`2005) .................................................................. 20, 21
`Baker v. Selden, 101 U.S. 99 (1880) .................... passim
`Bateman v. Mnemonics, Inc., 79 F.3d 1532 (11th
`Cir. 1996) ..................................................... 11, 15, 16
`Code Revision Comm’n v. PublicResource.Org,
`Inc., 906 F.3d 1229 (11th Cir. 2018) ........................ 10
`Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d
`693 (2d Cir. 1992) ............................................ passim
`Dun & Bradstreet Software Servs., Inc. v. Grace
`Consulting, Inc., 307 F.3d 197 (3d Cir. 2002) ......... 14
`Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9
`F.3d 823 (10th Cir. 1993) ................................... 17, 19
`Lexmark Int’l, Inc. v. Static Control Components,
`Inc., 387 F.3d 522 (6th Cir. 2004) ................ 10, 15, 21
`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) .................................. 3, 13
`Mazer v. Stein, 347 U.S. 201 (1954) ............................ 18
`Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366 (10th Cir.
`1997) ........................................................................ 22
`
`

`

`iv
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`MiTek Holdings, Inc. v. Arce Eng’g Co., 89 F.3d
`1548 (11th Cir. 1996) ......................................... 10, 19
`Morrissey v. Procter & Gamble Co., 379 F.2d 675
`(1st Cir. 1967) ........................................................ 8, 9
`Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510
`(9th Cir. 1992) .......................................................... 15
`Southco, Inc. v. Kanebridge Corp., 390 F.3d 276
`(3d Cir. 2004) (en banc) ........................................... 20
`Taylor Instrument Cos. v. Fawley-Brost Co., 139
`F.2d 98 (7th Cir. 1943) ....................................... 18, 19
`Veeck v. Southern Bldg. Code Cong. Int’l, 293
`F.3d 791 (5th Cir. 2002) ....................................... 9, 10
`Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc.,
`797 F.2d 1222 (3d Cir. 1986) ................. 11, 12, 15, 16
`
`
`
`CONSTITUTIONAL PROVISIONS
`U.S. Const. art. I, § 8, cl. 8 ............................................. 3
`
`
`STATUTES
`17 U.S.C. § 102(b) .............................................. 3, 12, 13
`
`
`RULES
`37 C.F.R. § 202.1 ......................................................... 21
`
`
`
`
`
`

`

`v
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`OTHER AUTHORITIES
`BSA|The Software Alliance, The Growing $1 Tril-
`lion Economic Impact of Software (Sep. 2017),
`https://software.org/reports/2017-us-software-
`impact/ ....................................................................... 1
`U.S. Copyright Office, Circular 33, Works Not
`Protected by Copyright (2017), https://www.
`copyright.gov/circs/circ33.pdf ................................. 21
`U.S. Copyright Office, Circular Update Guide,
`https://www.copyright.gov/circs/circular-update-
`guide.pdf .................................................................. 21
`
`

`

`1
`
`INTEREST OF AMICI CURIAE1
`Amici curiae are intellectual property scholars
`
`(listed in Appendix A) who are alarmed that the Fed-
`eral Circuit’s copyrightability ruling has deepened
`splits in circuit court interpretations of several major
`copyright doctrines as applied to computer programs.
`That ruling disrupted the relative equilibrium of more
`than two decades of software copyright precedents and
`upset settled expectations within the software indus-
`try. This Court’s guidance is urgently needed to ad-
`dress and resolve circuit conflicts affecting this $564
`billion industry.2 Amici’s sole interest in this case lies
`in their concern for the proper application of tradi-
`tional principles of copyright law to computer pro-
`grams. Because amici have devoted their careers to
`understanding the balancing principles built into
`copyright and other intellectual property laws, their
`
`
`1 Pursuant to Supreme Court Rule 37, counsel for amici rep-
`
`resent that they authored this brief in its entirety and that none
`of the parties or their counsel, nor any other person or entity other
`than amici or their counsel, made a monetary contribution in-
`tended to fund the preparation or submission of this brief. Coun-
`sel for petitioner gave blanket consent to the filing of amicus
`briefs, counsel for respondent has consented in writing to the fil-
`ing of this brief, and both parties received timely notice of amici’s
`intent to file this brief.
`2 See BSA|The Software Alliance, The Growing $1 Trillion
`
`Economic Impact of Software (Sep. 2017), https://software.org/
`reports/2017-us-software-impact/ (based on 2016 figures). The
`2017 study estimated total contributions by the software indus-
`try, including indirect and induced aspects, of more than a trillion
`dollars a year. Id.
`
`

`

`2
`
`views can aid the Court in resolving the important is-
`sues presented by the Petition.
`
`---------------------------------  ---------------------------------
`
`SUMMARY OF ARGUMENT
`The Federal Circuit’s copyrightability ruling in
`
`Oracle has deepened splits in circuit court interpreta-
`tions of several major copyright doctrines as applied to
`computer programs.
`
`This brief makes three principal points. First, the
`
`Federal Circuit’s merger analysis is in conflict with
`this Court’s ruling in Baker v. Selden, 101 U.S. 99
`(1880), and decisions by the First, Second, Fifth, Sixth,
`and Eleventh Circuits. Second, the Federal Circuit’s in-
`terpretation of the scope of copyright protection avail-
`able to computer programs is at odds with Baker and
`decisions of the First, Second, Tenth, and Eleventh Cir-
`cuits. Third, the Federal Circuit’s interpretation of the
`words and short phrases doctrine cannot be reconciled
`with holdings of the Third and Sixth Circuits.
`
`The merger doctrine holds that expressions in
`
`works of authorship are unprotectable by copyright
`law when, as a practical matter, there is only a limited
`number of ways to express an idea, fact, or function.
`When ideas, facts, or functions, in effect, “merge” with
`expression, copyright protection will be withheld from
`the merged elements. The merger doctrine fosters so-
`cially beneficial competition and ongoing innovation as
`well as promoting the ongoing progress of science and
`
`

`

`3
`
`useful arts, as the Constitution commands. U.S. Const.
`art. I, § 8, cl. 8.
`
`The Federal Circuit’s copyrightability ruling con-
`
`flicts with Baker in three respects: first, because the
`Federal Circuit concluded that merger can only be
`found if a first author had no alternative ways to ex-
`press an idea when creating the work; second, because
`it held that constraints on a second comer’s design
`choices are never relevant to merger; and third, be-
`cause it ruled that merger is only a defense to infringe-
`ment, and never raises a copyrightability issue.
`
`Post-Baker cases from the First, Second, Fifth,
`
`Sixth, and Eleventh Circuits have conceptualized and
`applied the merger doctrine more broadly than the
`Federal Circuit. These idea/expression, fact/expres-
`sion, and function/expression merger cases have re-
`sulted in uncopyrightability rulings, which contradict
`the Federal Circuit’s holding on merger.
`
`Beyond merger, the Federal Circuit’s interpreta-
`
`tion of the scope of copyright protection available to
`software innovations conflicts with the rulings of other
`circuits in four respects. First, the Federal Circuit’s in-
`terpretation of the exclusion of methods and systems
`from copyright’s scope under 17 U.S.C. § 102(b) is con-
`trary to the First Circuit’s interpretation in Lotus De-
`velopment Corp. v. Borland International, Inc., 49 F.3d
`807 (1st Cir. 1995), aff ’d by an equally divided Court,
`516 U.S. 233 (1996). Second, several circuit courts have
`ruled in favor of compatibility defenses in software
`copyright cases. Only the Third and Federal Circuits
`
`

`

`4
`
`have rejected them. Third, the Federal Circuit’s con-
`ception of “structure, sequence, and organization”
`(SSO) of programs as protectable expression as long as
`it embodies a modicum of creativity conflicts with the
`Second Circuit’s landmark decision, Computer Associ-
`ates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d
`Cir. 1992). Altai rejected the conception of SSO as de-
`terminative of protectable expression. Id. at 706.
`Fourth, the Federal Circuit’s assertion that copyright
`and utility patents can provide overlapping protection
`to program SSO is in conflict with Baker as well as
`Tenth and Eleventh Circuit decisions.
`
`There is, moreover, conflict among the circuits con-
`
`cerning the protectability of “words and short phrases.”
`The District Court denied Oracle’s claim in part based
`on its view that names and short phrases are not
`copyrightable, but the Federal Circuit held that words
`and short phrases, such as the names of individual
`Java declarations, could, if original, be eligible for cop-
`yright protection. However, the Third and Sixth Cir-
`cuits have denied similar claims in cases involving
`identifiers such as names and numbers. Granting the
`Petition would enable this Court to resolve this split as
`well.
`
`
`
`---------------------------------  ---------------------------------
`
`
`
`
`

`

`5
`
`ARGUMENT
`I. The Federal Circuit’s Merger Analysis Con-
`flicts With This Court’s Ruling In Baker v.
`Selden As Well As With Decisions From Five
`Circuit Courts.
`The Federal Circuit’s analysis of the merger doc-
`
`trine is contrary to this Court’s decision in Baker and
`decisions of numerous circuit courts. These decisions
`make clear that merger can be a reason to withhold
`copyright from expression when a first author’s design
`choices constrain a second comer’s options in a wide
`range of contexts beyond software copyrights.
`
`
`
`A. The Federal Circuit’s Merger Analysis
`Is Contrary To Baker v. Selden.
`The merger doctrine is often traced to this Court’s
`
`decision in Baker v. Selden, 101 U.S. 99 (1880). See, e.g.,
`Arica Institute, Inc. v. Palmer, 970 F.2d 1067, 1076 (2d
`Cir. 1992). Selden devised a novel bookkeeping system,
`and he could have designed the system in a number of
`ways. Selden thereafter claimed that Baker infringed
`by copying the selection and arrangement of columns
`and headings from forms in Selden’s book setting forth
`that system. Baker’s forms were not identical to Sel-
`den’s, but were substantially similar. Baker, 101 U.S.
`at 101. The Court recognized, though, that anyone who
`wanted to implement the Selden system would have to
`select and arrange columns and headings in a substan-
`tially similar way. Id. Since copyright does not protect
`useful arts such as bookkeeping systems, but only
`
`

`

`6
`
`authorial expression, id. at 101-02, Baker was free to
`publish similar forms to instantiate the Selden system.
`The Court ruled that the forms were uncopyrightable.
`Id. at 105. Baker importantly distinguished between
`authorship (the original expression that copyright pro-
`tects) and invention (the functional creativity, which
`only utility patent law can protect). Id.
`
`The Federal Circuit diverges from Baker in taking
`
`an excessively narrow view of when the merger doc-
`trine applies. The opinion also contains internal con-
`tradictions. Although the Federal Circuit sometimes
`correctly describes the merger doctrine as applying
`“when there are a limited number of ways to express
`an idea,” App. 147a, on other occasions it incorrectly
`characterizes the doctrine as applying only when an
`idea “can be expressed in only one way,” App. 148a. Re-
`gardless, its application of the doctrine reveals it views
`the doctrine too narrowly. For example, it pointed to
`the existence of alternative names for Java functions,
`such as “Arith.Larger” instead of “Math.Max,” in find-
`ing that the merger doctrine did not apply to the Java
`API. App. 150a. This reasoning, however, does not com-
`port with Baker, in which it did not matter whether
`column headers such as “Brought forw’d.” or “Aggre-
`gates of Accounts” could have been worded differently
`when implementing Selden’s accounting system.
`
`Thus, merger is a viable argument against copy-
`
`rightability when the range of available alternatives
`for this function is very limited, as the District Court
`concluded, App. 261a, and as was true in Baker. More-
`over, the District Court made a finding that there was,
`
`

`

`7
`
`in fact, only one way to write the name of each function:
`“Under the rules of Java, [declarations] must be iden-
`tical to declare a method specifying the same function-
`ality—even when the implementation is different.”
`App. 215a. Thus, any programmer wishing to invoke
`the functionality of “Math.Max” would have to use the
`exact phrase “Math.Max.”
`
`Even more difficult to reconcile with Baker is the
`
`Federal Circuit’s holding that courts in merger cases
`can consider only constraints on the plaintiff ’s crea-
`tion and never constraints on the defendant’s expres-
`sive choices. App. 151a. The Court in Baker did not
`consider whether Selden’s own choices in designing a
`bookkeeping system were constrained. Nor is there an-
`ything in Baker suggesting that the Court rejected Sel-
`den’s copyright claim because Selden had no choice
`about how to select and arrange columns and headings
`for his bookkeeping forms. Indeed, Baker’s forms were
`somewhat different. See Baker, 101 U.S. at 101. In-
`stead, the Court decided that once Selden designed his
`bookkeeping system, Baker’s design choices for ar-
`ranging columns and headings to implement the same
`system were constrained by the choices that Selden
`had made. Id.
`
`Finally, the Federal Circuit’s decision conflicts
`
`with Baker in holding that merger can be a defense to
`infringement claims, but not a basis for denying copy-
`rightability. App. 144a-145a. However, the Court in
`Baker held that Selden’s forms were uncopyrightable
`because the selection and arrangement of columns and
`
`

`

`8
`
`headings were embodiments of the bookkeeping sys-
`tem. Baker, 101 U.S. at 107.
`
`
`
`B. The Federal Circuit’s Merger Analysis
`Conflicts With Many Post-Baker Prece-
`dents.
`In addition to being irreconcilable with Baker, the
`
`Federal Circuit’s merger analysis also conflicts with
`decisions of the First, Fifth, Sixth, and Eleventh Cir-
`cuits. In these cases, the plaintiffs had more than one
`choice about how to express ideas, facts, or functions,
`but the range of choices was limited. In most, courts
`recognized that the defendant’s choices of alternative
`expressions were constrained by the plaintiff ’s choices,
`and some ruled against copyrightability because of
`those constraints. These precedents go far beyond the
`computer software context; yet, they apply the exact
`same legal rule. These cases thus illustrate how far the
`Federal Circuit’s misconstruction of the merger doc-
`trine diverges from how courts generally apply the
`merger doctrine to many different types of works.
`
`The Federal Circuit’s conception of merger is, for
`
`example, at odds with the First Circuit’s ruling in Mor-
`rissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir.
`1967). Morrissey authored a set of sweepstakes contest
`rules. Id. at 676. The First Circuit agreed with Morris-
`sey that his rules were original because of evidence
`that there were different ways to express such rules.
`Id. at 678. However, the court characterized the way
`that Morrissey chose as straightforward and simple
`
`

`

`9
`
`and observed that the range of possible expressions of
`sweepstakes rules admitted of little variation,
`
`so that “the topic necessarily requires,” [cita-
`tions omitted] if not only one form of expres-
`sion, at best only a limited number, [so] to
`permit copyrighting would mean that a party
`or parties, by copyrighting a mere handful of
`forms, could exhaust all possibilities of future
`use of the substance. In such circumstances it
`does not seem accurate to say that any partic-
`ular form of expression comes from the sub-
`ject matter. However, it is necessary to say
`that the subject matter would be appropriated
`by permitting the copyrighting of its expres-
`sion. We cannot recognize copyright as a game
`of chess in which the public can be check-
`mated. Cf. Baker v. Selden [citation omitted].
`
`Id. at 678-79. Even if Procter & Gamble had deliber-
`ately copied Morrissey’s rules, no infringement would
`be found because the rules were uncopyrightable be-
`cause of the limited choices available to anyone seek-
`ing to draft such rules. Id. at 679. Had the Federal
`Circuit approached applying the merger doctrine with
`the same principles as Morrissey, Google’s merger de-
`fense would likely have succeeded because the decla-
`rations had to be replicated exactly to invoke the
`appropriate functionality. App. 215a.
`
` While Morrissey dealt with constraints derived
`from the choice of subject matter, other circuit court
`cases have applied merger where a second comer’s
`choices were limited by decisions a first author made.
`In Veeck v. Southern Building Code Congress Int’l, Inc.,
`
`

`

`10
`
`293 F.3d 791 (5th Cir. 2002) (en banc), cert. denied, 539
`U.S. 969 (2003), merger precluded enforcement of
`SBCCI’s claim against Veeck for his online posting of a
`privately written code that had been adopted as law in
`Anna and Savoy, Texas. Id. at 800-02. It did not matter
`how many possible alternative expressions existed
`when the codes were initially created. What mattered
`was that once enacted, there was no other way to ex-
`press what the law was. Id. at 802. See also Code Revi-
`sion Commission v. PublicResource.Org, Inc., 906 F.3d
`1229, 1243 (11th Cir. 2018) (annotations on Georgia
`laws that merged with the texts of the statutes held
`uncopyrightable).
`
`The most striking contrast with the Federal Cir-
`
`cuit’s narrow conception of merger is the Sixth Cir-
`cuit’s ruling against a claim of copyright infringement
`involving printer cartridge software in Lexmark Int’l,
`Inc. v. Static Control Components, Inc., 387 F.3d 522
`(6th Cir. 2004). Static persuaded the court that in-
`stalling a copy of the Lexmark code was necessary to
`enable competing cartridges to interoperate with
`Lexmark printers. Id. at 542. Although Lexmark ar-
`gued that there were alternative ways to write code
`that would achieve the same functions, id. at 539, the
`Sixth Circuit concluded that the alternatives were in-
`efficient and functionality constrained Static’s design
`choices. Id. at 540. Static was therefore free to use the
`Lexmark code because “if any single byte of the Toner
`Loading Program is altered, the printer will not func-
`tion.” Id. at 542. See also MiTek Holdings, Inc. v. Arce
`Engineering Co., 89 F.3d 1548, 1556 n.19 (11th Cir.
`
`

`

`11
`
`1996) (recognizing method/expression merger); Bate-
`man v. Mnemonics, Inc., 79 F.3d 1532, 1541 n.21 (11th
`Cir. 1996) (accord). The Federal Circuit ignored these
`decisions.
`
`
`
`C. The Second Circuit Has Rejected The
`Third And Federal Circuits’ Narrow
`Conception Of Merger.
`The Third Circuit is the only circuit court to have
`
`adopted as narrow a conception of merger as the Fed-
`eral Circuit. In Whelan Associates, Inc. v. Jaslow Dental
`Laboratory, Inc., 797 F.2d 1222 (3d Cir. 1986), the court
`adopted a broad conception of the scope of copyright in
`software and a narrow conception of merger. Whelan
`claimed that Jaslow copied the “structure, sequence,
`and organization” (SSO) of its software to automate
`common business functions of dental laboratories. The
`Third Circuit upheld an infringement ruling based on
`SSO similarities, id. at 1233-34, 1242-48, and an-
`nounced this test for software copyright infringement:
`
`the purpose or function of a utilitarian work
`would be the work’s idea and everything that
`is not necessary to that purpose or function
`would be part of the expression of the idea.
`
`Id. at 1236 (emphasis in the original). The court pur-
`ported to derive this test from Baker. Id. Like the Fed-
`eral Circuit in Oracle, the court in Whelan confined
`merger to situations in which there was only one way
`to express an idea or function. Id. at 1236-37. Like
`Oracle, Whelan focused on expressive choices (or lack
`
`

`

`12
`
`thereof ) available to the plaintiff at the time of crea-
`tion. Id.
`
` Whelan’s narrow conception of merger and broad
`conception of software copyright scope has been much
`criticized, most notably by the Second Circuit in its
`landmark Altai decision, 982 F.2d at 705-06. The court
`in Altai invoked the merger doctrine as a basis for
`filtering out efficient program structures during in-
`fringement analysis. Id. at 707. Even if other alterna-
`tives might be available, the range of efficient design
`choices would be limited. The court noted that “[i]n the
`context of computer program design, the concept of ef-
`ficiency is akin to deriving the most concise logical
`proof or formulating the most succinct mathematical
`computation.” Id. at 708. Copyright law should not
`force second comers to adopt less efficient structures to
`accomplish program functions. The Federal Circuit’s
`conception of merger is inconsistent with Altai.
`
`This case presents an opportunity to resolve the
`
`serious and longstanding conflict among the circuits
`and with Baker about copyright’s merger doctrine.
`
`
`II. Circuit Courts Are Split On The Scope Of
`Copyright Protections For Software.
`The Federal Circuit’s copyrightability ruling con-
`
`flicts with circuit court decisions on four other scope of
`protection issues that often arise in software copyright
`cases: (1) the role of § 102(b) method exclusions in soft-
`ware copyright cases, (2) the viability of compatibility
`
`
`

`

`13
`
`defenses, (3) whether “structure, sequence, and organ-
`ization” of computer programs is copyrightable expres-
`sion, and (4) whether copyright and utility patents can
`provide overlapping protections.
`
`
`
`A. A Circuit Split Exists About Applica-
`tions Of § 102(b) System And Method Ex-
`clusions In Software Copyright Cases.
`Amici agree with Google’s Petition that for the
`
`past 24 years there has been a well-recognized circuit
`split about the proper interpretation of § 102(b)’s ex-
`clusions of methods and processes from the scope of
`copyright as applied to computer programs. See 17
`U.S.C. § 102(b) (“In no case does copyright protection
`for an original work of authorship extend to any idea,
`procedure, process, system, method of operation, con-
`cept, principle, or discovery, regardless of the form in
`which it is described, explained, illustrated, or embod-
`ied in such work.”).
`
`By granting certiorari to review the First Circuit’s
`
`ruling in Lotus Development Corp. v. Borland Interna-
`tional, Inc., 49 F.3d 807 (1st Cir. 1995), this Court rec-
`ognized that split, but was unable to resolve it,
`affirming the First Circuit’s decision by an evenly di-
`vided court, 516 U.S. 233 (1996).
`
`The Petition is correct that since then, the circuit
`
`split has deepened. Pet. 11-14. The Federal Circuit’s
`Oracle decision is only its latest manifestation. This
`longstanding split on its own would be a worthy reason
`to grant certiorari in this case.
`
`

`

`14
`
`B. A Circuit Split Exists On The Viability
`Of Compatibility Defenses.
`The Federal Circuit characterized Google’s in-
`
`teroperability defense as “irrelevant to copyrightabil-
`ity.” App. 166a. It relied on Dun & Bradstreet Software
`Services, Inc. v. Grace Consulting, Inc., 307 F.3d 197 (3d
`Cir. 2002), which held that the only compatibility con-
`siderations that mattered for copyrightability pur-
`poses were those faced by the first author when
`creating its software, not the effect of the first author’s
`choices on a second author’s options. App. 169a-171a.
`The Federal Circuit opined that “a defendant’s desire
`‘to achieve total compatibility . . . is a commercial and
`competitive objective which does not enter into the . . .
`issue of whether particular ideas and expressions have
`merged.’ ” App. 171a (quoting Apple Computer, Inc. v.
`Franklin Computer, Inc., 714 F.2d 1240, 1253 (3d Cir.
`1983)). Four circuits have ruled otherwise.
`
`The Second Circuit in Altai was the first to recog-
`
`nize compatibility as a meaningful constraint on pro-
`grammers’ design decisions. Altai, 986 F.2d at 709-10.
`Similarities due to compatibility constraints must be
`filtered out of infringement analysis. Id. The Second
`Circuit made no distinction between compatibility as a
`constraint on plaintiffs or on defendants. Id. at 715.
`Because Altai needed to use the same parameters as
`Computer Associates to attain interoperability, its
`compatibility defense succeeded. Id.
`
`Following Altai, other courts have ruled in favor of
`
`compatibility defenses when defendants claimed their
`
`

`

`15
`
`program needed to be compatible with another firm’s
`program. In Lexmark, for instance, the Sixth Circuit
`was persuaded that Static had no choice but to use cop-
`ies of Lexmark’s code for printer cartridges loaded with
`Static chips to interoperate with Lexmark printers.
`Lexmark, 387 F.3d at 530-31. Lexmark’s printer car-
`tridge code was held uncopyrightable. Id. at 544. See
`also Bateman, 79 F.3d at 1546-48 (recognizing viability
`of compatibility defense); Sega Enterprises, Ltd. v. Ac-
`colade, Inc., 977 F.2d 1510, 1522 (9th Cir. 1992) (ac-
`cord).
`
`
`
`C. A Circuit Split Exists On Whether The
`“Structure, Sequence, And Organiza-
`tion” (SSO) Of Computer Programs Is
`Protectable Expression As Long As It
`Exhibits Some Creativity.
` Whelan introduced the SSO concept to software
`copyright law. Whelan, 797 F.2d at 1224. In the Third
`Circuit’s view, all program SSO was copyright-protect-
`able expression unless one or more elements were in-
`capable of being expressed in a different way. Id. at
`1236-37. Whelan spoke of computer programs as liter-
`ary works and reasoned that just as the structure of a
`novel or play could be protectable expression, so could
`the SSO of programs. Id. at 1234.
`
`Relying on Whelan, Computer Associates alleged
`
`that Altai had copied protectable SSO from CA’s sched-
`uling program. Altai, 982 F.2d at 701-02. The Second
`Circuit was highly critical of the Whelan decision, the
`
`

`

`16
`
`SSO concept, and its test for software copyright in-
`fringement. Id. at 705-06. While it agreed with Whelan
`that some nonliteral elements of programs may be
`copyright-protectable, id. at 702, the court did not find
`the SSO concept to be helpful in distinguishing be-
`tween those nonliteral elements of programs that are
`copyright-protectable and those that are not. Id. at
`705-06. Moreover, the SSO conception “demonstrated
`a flawed understanding of a computer program’s
`method of operation” and rested on a “somewhat out-
`dated appreciation of computer science.” Id. at 706.
`It characterized the Whelan test for software copy-
`right infringement as “conceptually overbroad” and
`“descriptively inadequate,” relying “too heavily on met-
`aphysical distinctions” instead of on “practical consid-
`erations.” Id. at 705-06.
`
`The Altai decision recognized that the highly func-
`
`tional nature of computer programs meant that copy-
`right could provide only a narrow scope of protection.
`Id. at 712. It directed courts to “filter out” three cate-
`gories of unprotectable elements—efficient program
`structures, constraints on programmer design choices
`due to external factors (such as compatibility consider-
`ations), and public domain elements—before proceed-
`ing to compare protectable elements of programs to
`determine if the defendant infringed the plaintiff ’s
`work. Id. at 706-08. Numerous courts have followed
`Altai and used its filtration analysis. See, e.g., Bate-
`man, 79 F.3d at 1541 n.21, 1545 (directing filtration
`also of program processes and methods, and further
`holding that regardless whether the Altai test applies
`
`

`

`17
`
`to literal copying, “a parallel type of analysis must be
`undertaken in examining alleged instances of literal
`copying of computer code or screen displays”); Gates
`Rubber Co. v. Bando Chemical Industries, Ltd., 9 F.3d
`823, 836-37 (10th Cir. 1993) (following Altai).
`
`The District Court in Oracle, like the Second Cir-
`
`cuit in Altai, was not persuaded that the SSO concept
`provided a sound basis for distinguishing between
`structural elements of programs that copyright can
`protect and those that it cannot. App. 259a. The Fed-
`eral Circuit has revived the discredited Whelan con-
`ception of program SSO as protectable expression.
`App. 191a. The circuit split over the protectability of
`program SSO is deep and longstanding. This Court
`should grant the Petition to resolve this issue.
`
`
`
`D. A Circuit Split Exists Over Whether
`Copyright and Utility Patents Can Pro-
`vide Overlapping Protections To Pro-
`gram Innovations.
`In support of its ruling that the parts of the Java
`
`API Google used in Android were uncopyrightable,
`the District Court noted some patents that Sun and
`Oracle had obtained on APIs. App. 260a. These patents
`suggested that APIs were more utility patent than cop-
`yright subject matters. After all, Baker had conceptu-
`alized copyright and patent subject matters as distinct
`and mutually exclusive. Patent protection might b

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