`
`No.
`
`
`In the Supreme Court of the United States
`
`
`
`GOOGLE LLC, PETITIONER
`
`v.
`
`
`ORACLE AMERICA, INC.
`
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`
`PETITION FOR A WRIT OF CERTIORARI
`
`
`THOMAS C. GOLDSTEIN
`GOLDSTEIN & RUSSELL, P.C.
`5225 Wisconsin Avenue,
`N.W., Suite 404
`Washington, DC 20015
`ROBERT A. VAN NEST
`CHRISTA M. ANDERSON
`EUGENE M. PAIGE
`REID P. MULLEN
`KEKER, VAN NEST
`& PETERS LLP
`633 Battery Street
`San Francisco, CA 94111
`BRUCE W. BABER
`MARISA C. MALECK
`KING & SPALDING LLP
`1180 Peachtree Street, N.E.
`Atlanta, GA 30309
`
`
`
`
`
`
`
`
`
`
`KANNON K. SHANMUGAM
`Counsel of Record
`CHARLES L. MCCLOUD
`MENG JIA YANG
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`(202) 434-5000
`kshanmugam@wc.com
`MICHAEL S. KWUN
`KWUN BHANSALI LAZARUS
`LLP
`555 Montgomery Street,
`Suite 750
`San Francisco, CA 94111
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`QUESTIONS PRESENTED
`The Copyright Act provides that, while “original
`works of authorship” are generally eligible for copyright
`protection, 17 U.S.C. 102(a), “[i]n no case does copyright
`protection for an original work of authorship extend to
`any idea, procedure, process, system, method of opera-
`tion, concept, principle, or discovery, regardless of the
`form in which it is described, explained, illustrated, or em-
`bodied in such work,” 17 U.S.C. 102(b). The Act also
`makes clear that “the fair use of a copyrighted work
`* * * is not an infringement of copyright.” 17 U.S.C.
`107.
`As is relevant here, software interfaces are lines of
`computer code that allow developers to operate prewrit-
`ten libraries of code used to perform particular tasks.
`Since the earliest days of software development, develop-
`ers have used interfaces to access essential tools for build-
`ing new computer programs. Contravening that long-
`standing practice, the Federal Circuit in this case held
`both that a software interface is copyrightable and that
`petitioner’s use of a software interface in a new computer
`program cannot constitute fair use as a matter of law.
`The questions presented are:
`1. Whether copyright protection extends to a soft-
`ware interface.
`2. Whether, as the jury found, petitioner’s use of a
`software interface in the context of creating a new com-
`puter program constitutes fair use.
`
`
`(I)
`
`
`
`
`
`CORPORATE DISCLOSURE STATEMENT
`Petitioner Google LLC is an indirect subsidiary of Al-
`phabet Inc., a publicly held company. Alphabet Inc. has
`no parent corporation, and no publicly held company owns
`10% or more of its stock.
`
`(II)
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`Opinions below ................................................................................ 1
`Jurisdiction ...................................................................................... 2
`Statutory provisions involved ....................................................... 2
`Statement ......................................................................................... 2
`A. Background ........................................................................ 4
`B. Procedural history ............................................................. 7
`Reasons for granting the petition ............................................... 11
`A. This Court should grant review to decide
`whether copyright protection extends
`to a software interface .................................................... 11
`B. This Court should grant review to decide
`whether, as the jury found, petitioner’s use
`of a software interface in the context of creating
`a new computer program constitutes fair use ............. 21
`C. The questions presented are exceptionally
`important and warrant review in this case .................. 29
`Conclusion ...................................................................................... 33
`
`
`TABLE OF AUTHORITIES
`
`Cases:
`American Society for Testing & Materials
`v. Public.Resource.Org, Inc.,
`896 F.3d 437 (D.C. Cir. 2018) .......................................... 24
`Apple Computer, Inc. v. Franklin Computer Corp.,
`714 F.2d 1240 (3d Cir. 1983), cert. denied,
`464 U.S. 1033 (1984) .................................................... 13, 15
`ATC Distribution Group, Inc. v. Whatever It Takes
`Transmissions & Parts, Inc.,
`402 F.3d 700 (6th Cir. 2005) ............................................. 13
`Baker v. Selden, 101 U.S. (11 Otto) 99 (1880) ......... 17, 18, 19
`Bill Graham Archives v. Dorling Kindersley Ltd.,
`448 F.3d 605 (2d Cir. 2006) .............................................. 29
`
`(III)
`
`
`
`IV
`
`Page
`
`Cases—continued:
`Campbell v. Acuff-Rose Music, Inc.,
`510 U.S. 569 (1994) ................................................... passim
`Computer Associates International, Inc.
`v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992) .......... 13, 14, 31
`Engineering Dynamics, Inc. v. Structural
`Software, Inc.:
`
`26 F.3d 1335 (5th Cir. 1994) ............................................. 14
`
`46 F.3d 408 (5th Cir. 1995) ............................................... 14
`Ets-Hokin v. Skyy Spirits, Inc.,
`225 F.3d 1068 (9th Cir. 2000) ........................................... 15
`Feist Publications, Inc. v. Rural Telephone Service
`Co., 499 U.S. 340 (1991) .................................................... 17
`Harper & Row Publishers, Inc.
`v. Nation Enterprises, 471 U.S. 539 (1985) ................... 28
`Kregos v. Associated Press,
`937 F.2d 700 (2d Cir. 1991), cert. denied,
`510 U.S. 1112 (1992) .......................................................... 15
`Lexmark International, Inc. v. Static Control
`Components, Inc.,
`387 F.3d 522 (6th Cir. 2004) ........................... 13, 15, 16, 20
`Lotus Development Corp. v. Borland
`International, Inc.:
`
`516 U.S. 233 (1996) ........................................................ 2, 12
`49 F.3d 807 (1st Cir. 1995) ...................................... passim
`
`Mitel, Inc. v. Iqtel, Inc.,
`124 F.3d 1366 (10th Cir. 1997) ......................................... 14
`Riley v. California, 134 S. Ct. 2473 (2014) ........................... 4
`Sega Entertainments v. Accolade,
`977 F.2d 1510 (9th Cir. 1992) ......................... 17, 24, 27, 31
`Seltzer v. Green Day, 725 F.3d 1170 (9th Cir. 2013) ......... 25
`Sony Computer Entertainment v. Connectix
`Corp., 203 F.3d 596 (9th Cir.), cert. denied,
`531 U.S. 871 (2000) .......................................... 17, 23, 24, 31
`Stewart v. Abend, 495 U.S. 207 (1990) ................................. 23
`Swatch Group Management Services Ltd.
`v. Bloomberg L.P., 756 F.3d 73 (2d Cir. 2014) ........ 24, 29
`
`
`
`
`
`V
`
`Page
`
`Cases—continued:
`Veeck v. Southern Building Code Congress
`International, Inc., 293 F.3d 791 (5th Cir. 2002),
`cert. denied, 539 U.S. 969 (2003) ............................... 15, 16
`Whelan Associates, Inc. v. Jaslow Dental
`Laboratories, Inc., 797 F.2d 1222 (3d Cir. 1986),
`cert. denied, 479 U.S. 1031 (1987) ................................... 13
`Statutes:
`Copyright Act of 1976,
`Pub. L. No. 94-553, 90 Stat. 2541 ...................................... 2
`17 U.S.C. 102(a) ................................................................ 13, 16
`17 U.S.C. 102(b) ............................................................. passim
`17 U.S.C. 107 ..................................................................... 10, 22
`28 U.S.C. 1254(1) ...................................................................... 2
`Miscellaneous:
`Tony Dutra, Oracle Victory in Copyright Case
`Has Seeds for a Google Appeal, Bloomberg Law
`(Mar. 28, 2018) <tinyurl.com/dutraarticle> ................. 30
`H.R. Rep. No. 1476, 94th Cong., 2d Sess. (1976) ............... 17
`Anandashankar Mazumdar, Oracle Victory Stirs
`Uncertainties in Software Copyright,
`Bloomberg Law (May 10, 2018)
`<tinyurl.com/suit_decade> .............................................. 2
`Joe Mullin, Cisco v. Arista Awaits a Jury Verdict
`Under the Oracle v. Google Shadow, ArsTechnica
`(Dec. 14, 2016) <tinyurl.com/y9xxd4zf> ....................... 32
`National Commission on New Technological Uses of
`Copyrighted Works, Final Report of the National
`Commission on New Technological Uses of
`Copyrighted Works, 3 Computer L.J. 53 (1981) ........... 18
`Melville B. Nimmer & David Nimmer,
`Nimmer on Copyright (2015) .................................... 15, 29
`David Orenstein, Application Programming
`Interface, ComputerWorld (Jan. 10, 2000)
`<tinyurl.com/orensteinarticle> ..................................... 31
`S. Rep. No. 473, 94th Cong., 1st Sess. (1975) ..................... 17
`
`
`
`
`
`VI
`
`Page
`
`Miscellaneous—continued:
`Pamela Samuelson, Questioning Copyrights
`in Standards, 48 B.C. L. Rev. 193 (2007) ...................... 21
`Pamela Samuelson, Why Copyright Law Excludes
`Systems and Processes From the Scope of Its
`Protection, 85 Tex. L. Rev. 1921 (2007) ......................... 17
`
`
`
`
`
`
`
`
`
`In the Supreme Court of the United States
`
`
`
`
`GOOGLE LLC, PETITIONER
`
`v.
`
`No.
`
`
`
`
`ORACLE AMERICA, INC.
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`
`PETITION FOR A WRIT OF CERTIORARI
`
`
`Google LLC respectfully petitions for a writ of certio-
`rari to review the judgment of the United States Court of
`Appeals for the Federal Circuit in this case.
`OPINIONS BELOW
`The opinion of the court of appeals regarding fair use
`(App., infra, 1a-55a) is reported at 886 F.3d 1179. The
`district court’s orders denying respondent’s motions for
`judgment as a matter of law (App., infra, 92a-120a) and
`for a new trial (App., infra, 56a-91a) are unreported.
`The earlier opinion of the court of appeals regarding
`copyrightability (App., infra, 121a-192a) is reported at
`750 F.3d 1339. The district court’s order granting peti-
`tioner’s motion for judgment as a matter of law (App., in-
`fra, 212a-272a) is reported at 872 F. Supp. 2d 974.
`
`(1)
`
`
`
`2
`
`JURISDICTION
`The judgment of the court of appeals was entered on
`March 27, 2018. A petition for rehearing was denied on
`August 28, 2018 (App., infra, 299a-300a). On October 23,
`2018, the Chief Justice extended the time within which to
`file a petition for a writ of certiorari to and including Jan-
`uary 25, 2019. The jurisdiction of this Court is invoked
`under 28 U.S.C. 1254(1).
`STATUTORY PROVISIONS INVOLVED
`The relevant provisions of the Copyright Act of 1976,
`Pub. L. No. 94-553, 90 Stat. 2541, are reproduced in the
`appendix to this petition (App., infra, 285a-299a).
`STATEMENT
`This case has been aptly described as the “copyright
`lawsuit of the decade.” Anandashankar Mazumdar, Ora-
`cle Victory Stirs Uncertainties in Software Copyright,
`Bloomberg Law (May 10, 2018) <tinyurl.com/suitde-
`cade>. As it comes to this Court, the case presents two
`exceptionally important questions concerning the copy-
`rightability and fair use of software interfaces—lines of
`computer code that are necessary to allow developers to
`operate prewritten libraries of code used to perform par-
`ticular tasks.
`The first question is whether copyright protection ex-
`tends to a software interface. This Court granted certio-
`rari to resolve a closely related question in Lotus Devel-
`opment Corp. v. Borland International, Inc., 516 U.S. 233
`(1996) (per curiam), but the Court deadlocked 4-4 on that
`question after oral argument. The second question is
`whether, as the jury found, petitioner’s use of a software
`interface in the context of creating a new computer pro-
`gram constitutes fair use. The lower courts are badly in
`
`
`
`
`
`3
`
`need of guidance on how to apply the fair-use doctrine in
`the context of computer code.
`This case involves a high-profile dispute between two
`leading technology companies, petitioner Google and re-
`spondent Oracle. Sun Microsystems originally developed
`the Java platform, which includes the free Java program-
`ming language. The software interfaces at issue are part
`of the Java language’s application programming interface
`(API). Sun encouraged developers to learn the Java lan-
`guage by touting the ability to use software interfaces—
`also known as “the Java API declarations”—to access
`preexisting libraries of code used to perform particular
`tasks. The interfaces thereby facilitated development of
`programs in the Java language.
`Google used some of the Java API declarations to
`build Android, a revolutionary platform for modern mo-
`bile devices such as smartphones and tablets. Google in-
`corporated those declarations to allow developers to write
`applications for Android using the Java language. Sun
`originally applauded Google for using the Java language.
`But after Oracle acquired Sun, it sued Google for copy-
`right infringement.
`After years of litigation, the Federal Circuit (which
`had jurisdiction because of Oracle’s initial assertion of
`now-dismissed patent claims) has twice reversed judg-
`ments in Google’s favor. It first held that the Java API
`declarations are copyrightable and then overturned a
`jury’s verdict that Google’s use of the declarations consti-
`tuted fair use. The Federal Circuit thereby deepened the
`acknowledged conflicts among the courts of appeals con-
`cerning the application of the Copyright Act and the mer-
`ger doctrine in the context of computer software.
`Google has never disputed that some forms of com-
`puter code are entitled to copyright protection. But the
`Federal Circuit’s widely criticized opinions—in an area in
`
`
`
`
`
`4
`
`which that court has no specialized expertise—go much
`further, throwing a devastating one-two punch at the soft-
`ware industry. If allowed to stand, the Federal Circuit’s
`approach will upend the longstanding expectation of soft-
`ware developers that they are free to use existing soft-
`ware interfaces to build new computer programs. Devel-
`opers who have invested in learning free and open pro-
`gramming languages such as Java will be unable to use
`those skills to create programs for new platforms—a re-
`sult that will undermine both competition and innovation.
`Because this case is an optimal vehicle for addressing the
`exceptionally important questions presented, the petition
`for a writ of certiorari should be granted.
`A. Background
`1. Modern smartphones are “such a pervasive and in-
`sistent part of daily life that the proverbial visitor from
`Mars might conclude they were an important feature of
`human anatomy.” Riley v. California, 134 S. Ct. 2473,
`2484 (2014). Given the ubiquity of smartphones today, it
`is easy to forget the challenges that developers initially
`faced in building the operating systems that allow modern
`smartphones to perform their myriad functions. Among
`other things, developers had to account for smaller pro-
`cessors, limited memory and battery life, and the need to
`support mobile communications and interactive applica-
`tions. C.A. App. 21958.
`In 2008, Google overcame those challenges and re-
`leased Android, an open-source platform designed to en-
`able mobile devices such as smartphones and tablets. The
`Android platform took over three years to build, and
`Google had almost 100 engineers working on the project.
`C.A. App. 21858, 21861-21862. In the decade since its re-
`lease, Android has become one of the most widely used
`
`
`
`
`
`5
`
`mobile operating systems, with billions of users world-
`wide.
`Google built Android using the Java programming lan-
`guage. Sun Microsystems released the Java language in
`the 1990s and made it free and open for all to use without
`a license. Sun’s motives for doing so were not entirely al-
`truistic: Sun believed that the resulting proliferation of
`Java developers would drive sales of Sun hardware and
`other services. Java has become one of the world’s most
`popular programming languages. App., infra, 216a.
`Java 2 Standard Edition (Java SE) is a platform used
`to write and run programs for desktop and server com-
`puters. Java SE includes the Java language, which in turn
`contains the Java application programming interface
`(API). C.A. App. 51447-51448. The Java API provides
`access to prewritten “methods.” In Java, as in many other
`programming languages, methods are used to program
`specific, commonly performed tasks. Each method con-
`sists of two parts: a method header and a method body.
`The method header is also known as a “declaration” or
`“declaring code,” because it labels (or “declares”) the
`method, typically by reference to what the method will do.
`The declaration also includes information about where the
`method is located in the Java API libraries. The method
`body, also known as the “implementing code,” is the un-
`derlying code that actually performs the task stated in the
`declaration. App., infra, 126a.
`The relationship between the declaration and the im-
`plementing code is analogous to the interaction between a
`keyboard and a word-processing program. Just as a typ-
`ist writes “a” by pressing a particular key, causing the
`word-processing program to display that letter, a devel-
`oper triggers a particular function by using the relevant
`declaration to run the corresponding implementing code.
`By allowing developers easily to access the libraries of
`
`
`
`
`
`6
`
`prewritten code in a standard manner, the Java API facil-
`itates the creation of programs in the Java language
`across different platforms, much as the now-standard
`QWERTY keyboard layout facilitates the creation of doc-
`uments by enabling more efficient typing regardless of
`the specific word-processing program being used.
`Once the corresponding declaration is used for a par-
`ticular method, the developer does not need to worry
`about or even understand the specifics of the method’s im-
`plementing code. Instead, all a developer needs to do to
`invoke a method is to use a shorthand command derived
`from the method’s declaration. App., infra, 4a-5a, 126a-
`127a. By using the shorthand commands, a developer can
`create complex software without having to write new im-
`plementing code for every routine task. Id. at 4a.
`3. In 2005, Google and Sun began discussing a part-
`nership that would have allowed Google to adapt the en-
`tire Java SE platform for smartphones. Google and Sun
`conducted negotiations but were unable to reach an
`agreement. In the absence of such an agreement, Google
`used the freely available Java language (and its declara-
`tions) to develop its own libraries of methods that enabled
`developers to build smartphone applications for use on
`Android devices. App., infra, 106a-107a, 117a, 218a-219a.
`At the same time, Google understood that developers
`would want to use their existing Java language skills to
`create Android applications, including their knowledge of
`familiar declarations and shorthand commands to trigger
`common operations. For those commands to work on the
`Android platform, Google had to replicate the syntax and
`structure of the Java API declarations exactly; any
`change to those declarations would have prevented devel-
`opers from reusing the same commands, thereby forcing
`them to learn new commands for each routine task.
`Google accordingly used the same declarations for certain
`
`
`
`
`
`7
`
`methods in 37 Java API libraries that were determined by
`Google to be “key to mobile devices.” App., infra, 219a.
`For every one of those methods, however, Google wrote
`its own implementing code, tailoring the code to accom-
`modate the unique challenges of the smartphone environ-
`ment. Id. at 218a-219a.
`Because Google independently wrote the implement-
`ing code that formed the body of each method, using only
`certain declarations, only 3% of the code was the same
`across the 37 disputed Java API libraries and the corre-
`sponding Android libraries. App., infra, 220a. In total,
`that overlapping code represented less than 0.1% of the
`over 15 million relevant lines of code in Android.
`B. Procedural History
`1. Sun was aware that Google was developing An-
`droid using the Java language, including the API declara-
`tions, but never objected or mentioned its Java copyrights
`to Google. C.A. App. 50363, 51692-51693. To the contrary,
`Sun initially celebrated the launch of Android. Its chief
`executive officer publicly offered “heartfelt congratula-
`tions” to Google, stating that Google had “strapped an-
`other set of rockets to the [Java] community’s momen-
`tum.” Id. at 55325.
`In 2010, however, Oracle acquired Sun. A few months
`after the acquisition, Oracle sued Google in the United
`States District Court for the Northern District of Califor-
`nia, alleging seven counts of patent infringement. Oracle
`eventually withdrew five of
`its patent-infringement
`claims, and the jury found against Oracle on the two re-
`maining claims.
`Oracle’s complaint also asserted a single claim of cop-
`yright infringement. Although the Java language was
`free and open, Oracle claimed that Google’s use of the
`
`
`
`
`
`8
`
`Java API declarations infringed Oracle’s copyrights. Or-
`acle asserted that Google had impermissibly copied the
`declarations and also the “structure, sequence, and organ-
`ization” of the Java API; Oracle premised the latter claim
`on the theory that the declarations “embod[ied] the struc-
`ture” of the Java API by specifying the name and location
`of each method. App., infra, 140a.
`After a two-week trial, the jury considered the copy-
`right-infringement claims but was ultimately unable to
`reach a verdict, hanging on Google’s fair-use defense. The
`district court then granted Google’s motion for judgment
`as a matter of law on the copyright claims. App., infra,
`212a-272a. The district court held that the Java API dec-
`larations were not copyrightable because they constituted
`a “method of operation” under 17 U.S.C. 102(b). App., in-
`fra, 262a-263a, 265a. The court further held that the dec-
`larations were not copyrightable under the merger doc-
`trine, which provides that, “when there is only one (or only
`a few) ways to express something, then no one can claim
`ownership of such expression by copyright.” Id. at 261a.
`The court also denied Oracle’s motion for judgment as a
`matter of law on Google’s fair-use defense. Id. at 211a.
`2. The Federal Circuit reversed and remanded.
`App., infra, 121a-192a.
`Recognizing a three-way circuit conflict on the copy-
`rightability question, the Federal Circuit first reasoned
`that the merger doctrine was “irrelevant” to copyright-
`ability and was in any event not satisfied here, because
`Sun could have written the declarations in more than one
`way. App., infra, 142a-143a, 148a, 150a-151a. The Fed-
`eral Circuit then reasoned that Section 102(b) “does not
`extinguish the protection accorded a particular expres-
`sion of an idea merely because that expression is embod-
`ied in a method of operation.” Id. at 161a (internal quota-
`
`
`
`
`
`9
`
`tion marks and citation omitted). In the court’s view, Sec-
`tion 102(b) served only to codify the “idea/expression di-
`chotomy”—that is, the principle that “[c]opyright protec-
`tion extends only to the expression of an idea—not to the
`underlying idea itself.” Id. at 137a. The Federal Circuit
`remanded for a new trial on Google’s fair-use defense,
`concluding that the record did not “contain[] sufficient
`factual findings upon which [the court] could base a de
`novo assessment.” Id. at 184a.
`3. Google petitioned for a writ of certiorari, and this
`Court called for the Solicitor General’s views. The gov-
`ernment acknowledged that Google’s petition raised “sub-
`stantial and important” concerns about the effects of en-
`forcing Oracle’s copyrights on software development, in-
`cluding lock-in effects and restrictions on interoperability.
`14-410 U.S. Br. 10, 17. But the government recommended
`against certiorari, citing the case’s then-interlocutory pos-
`ture and noting that its concerns could be addressed on
`remand through the fair-use defense. See id. at 10, 22.
`This Court denied review. 135 S. Ct. 2887 (2015).
`4. On remand, after another two-week trial featuring
`dozens of witnesses and hundreds of exhibits, the jury
`found that Google had engaged in fair use. The district
`court denied Oracle’s motions for judgment as a matter of
`law and for a new trial. App., infra, 56a-120a.
`5. The Federal Circuit again reversed and remanded.
`Having concluded in the first appeal that the fair-use de-
`fense should be decided by a jury because the panel could
`not resolve the underlying factual issues, the same panel
`reversed course and held that Google had not engaged in
`fair use as a matter of law. App., infra, 1a-55a.
`The non-exclusive factors relevant to determining fair
`use include (1) the purpose and character of the use; (2)
`the nature of the copyrighted work; (3) the amount and
`
`
`
`
`
`10
`
`substantiality of the portion used in relation to the copy-
`righted work as a whole; and (4) the effect on the potential
`market for or value of the copyrighted work. See 17
`U.S.C. 107. In holding that Google had not engaged in fair
`use, the Federal Circuit focused primarily on the first and
`fourth factors. App., infra, 25a-53a.
`As to the first factor, the Federal Circuit determined
`that the commercial nature of Google’s use of the declara-
`tions weighed against a finding of fair use. App., infra,
`25a-28a. In considering whether Google’s use was trans-
`formative, the Federal Circuit asserted that the declara-
`tions served the same function in Android as in the Java
`platform, and it concluded on that basis that the declara-
`tions themselves had not been transformed—even though
`Google used the declarations to create an entirely new
`smartphone platform and developed new implementing
`code tailored to the smartphone environment. Id. at 28a-
`37a.
`As to the fourth factor, the Federal Circuit found that
`Java SE had been used in early mobile phones, which
`meant that “Android competed directly with [Java] in the
`market for mobile devices.” App., infra, 50a. And even if
`Java SE had not been so used, the Federal Circuit would
`still have concluded that there was market harm by con-
`sidering how “Google’s copying affected potential mar-
`kets Oracle might enter or derivative works it might cre-
`ate or license others to create.” Id. at 51a (emphases
`added).
`Weighing the four enumerated factors together, and
`without considering other relevant evidence as this Court
`has required, the Federal Circuit held that Google did not
`engage in fair use as a matter of law. App., infra, 53a-54a.
`Having overturned the jury’s verdict, the court remanded
`for a trial on damages. Id. at 54a-55a.
`
`
`
`
`
`11
`
`6. After calling for a response, the Federal Circuit
`denied Google’s petition for rehearing. App., infra, 283a-
`284a.
`
`REASONS FOR GRANTING THE PETITION
`The questions presented in this case are of critical im-
`portance to the computer software industry, one of the
`principal drivers of the nation’s economy. Because new
`software builds on components of existing software, inno-
`vation in this field largely depends on how copyright law
`treats software interfaces, the essential building blocks of
`software development. The Federal Circuit has upended
`the computer industry’s longstanding expectation that de-
`velopers are free to use software interfaces to build new
`computer programs. In the opinions under review, the
`Federal Circuit first deemed software interfaces to be
`copyrightable, then held that petitioner’s reuse of such in-
`terfaces could not be fair use as a matter of law because
`the interfaces performed the same function in the new
`software.
`The Federal Circuit has deepened an existing circuit
`conflict over the copyrightability of software interfaces.
`Other courts of appeals have concluded that similar inter-
`faces are not copyrightable under both the plain language
`of Section 102(b) of the Copyright Act and the merger
`doctrine. And as to fair use, the Federal Circuit misap-
`plied the doctrine and rendered it essentially impossible
`for the reuse of software interfaces to qualify as fair use.
`The Court should review and correct the Federal Circuit’s
`distortion of copyright law in an area crucial to technolog-
`ical innovation.
`A. This Court Should Grant Review To Decide Whether Cop-
`yright Protection Extends To A Software Interface
`The Federal Circuit’s first opinion deepens acknowl-
`edged conflicts among the courts of appeals regarding the
`
`
`
`
`
`12
`
`proper interpretation of Section 102(b) of the Copyright
`Act and the application of the merger doctrine.
`1. Under Section 102(b), copyright protection does
`not extend to “any idea, procedure, process, system,
`method of operation, concept, principle, or discovery, re-
`gardless of the form in which it is described, explained,
`illustrated, or embodied in such [original] work.” 17
`U.S.C. 102(b). More than two decades ago, the Court
`granted certiorari to consider whether that provision
`“bars protection for [a] menu command hierarchy despite
`its expressive characteristics, because it assists users in
`communicating with a computer program in order to per-
`form useful operations.” Br. at i, Lotus Development
`Corp. v. Borland International, Inc., 516 U.S. 233 (1996)
`(No. 94-2003). The Court deadlocked 4-4 on that question
`after oral argument, and the division among the courts of
`appeals has only grown with the intervening rise of the
`modern software industry. Given its obvious importance
`and its close relation to the question left unresolved in Lo-
`tus, the question presented here cries out for the Court’s
`review.
`a. The First and Sixth Circuits have held that Section
`102(b) precludes copyright protection for all methods of
`operation, including those embodied in computer software
`interfaces.
`The First Circuit’s decision in Lotus concerned the
`menu command hierarchy in Lotus 1-2-3, a then-ubiqui-
`tous spreadsheet program. See 49 F.3d 807, 809 (1995).
`The First Circuit acknowledged that “the Lotus develop-
`ers made some expressive choices” in creating the hierar-
`chy, but it nevertheless held that the hierarchy consti-
`tuted a “method[] of operation” and was thus excluded
`from copyright protection under Section 102(b). Id. at
`816. That was true regardless of whether the developers
`“could have designed the Lotus menu command hierarchy
`
`
`
`
`
`13
`
`differently.” Ibid. Because the “menu command hierar-
`chy provides the means by which users control and oper-
`ate” the spreadsheet program, the hierarchy constituted
`a method of operation. Id. at 815.
`The Sixth Circuit adopted a similar rule in Lexmark
`International, Inc. v. Static Control Components, Inc.,
`387 F.3d 522 (2004). The court reasoned that, “even if a
`work is in some sense ‘original’ under § 102(a), it still may
`not be copyrightable because [of] § 102(b).” Id. at 534.
`The Sixth Circuit reaffirmed that understanding in ATC
`Distribution Group, Inc. v. Whatever It Takes Transmis-
`sions & Parts, Inc., 402 F.3d 700 (2005). There, it ex-
`plained that, although methods of operation may be
`“[o]riginal and creative,” Section 102(b) excludes them
`from copyright protection because they are “the idea it-
`self” rather than the “expression of the idea.” Id. at 707.
`b. For its part, the Third Circuit has taken the dia-
`metrically opposite position, holding that Section 102(b)
`was “not intended to enlarge or contract the scope of cop-
`yright protection” but rather to codify the “somewhat
`metaphysical” dichotomy between idea and expression.
`Apple Computer, Inc. v. Franklin Computer Corp., 714
`F.2d 1240, 1252, 1253 (1983), cert. denied, 464 U.S. 1033
`(1984). In the Third Circuit’s view, a “method of opera-
`tion” embodied in a software interface is copyrightable as
`long as it could have been written differently and still
`serve the same high-level purpose, such as “to aid in the
`business operations of a dental laboratory.” Whelan As-
`sociates, Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d
`1222, 1238 (1986), cert. denied, 479 U.S. 1031 (1987).
`c. The Second Circuit has adopted still another ap-
`proach: the so-called “abstraction/filtration/comparison”
`test. See Computer Associates International, Inc. v. Al-
`tai, Inc., 982 F.2d 693, 706 (1992). Under that test, a court
`
`
`
`
`
`14
`
`should first “dissect the allegedly copied program’s struc-
`ture and isolate each level of abstraction contained within
`it.” Id. at 707. The court should then “filter[] * * * pro-
`tectable expression from non-protectable material.” Ibid.
`Finally, after isolating the “golden nugget” of “protecta-
`bl
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