Breaking Down the Briefing in Google v. Oracle: Respondent’s Brief

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A decadelong dispute between Google and Oracle regarding Google’s alleged infringement of Oracle’s copyright in its application programming interface (API) will culminate in a Supreme Court decision that will have lasting effects on the copyrightability of software. This post, which summarizes Oracle’s opening brief, is the second installment in a series analyzing the briefing and issues in Google v. Oracle. A breakdown of Google’s brief is available here.

Oracle asserts that Google infringed Oracle’s copyright by copying both 11,330 lines of Java SE and its “elaborate organization.” See Brief for Petitioner at 5, Google LLC v. Oracle Am., Inc. (No. 18-956), available here. Oracle calls Java SE’s creation a result of “a creative choice that could have been written countless ways” and “an art, not a science” worthy of copyright protection. Id. at 6, 7, 16. Oracle rebuts both of Google’s theories that Google is permitted to copy Oracle’s Java SE code: First, Oracle argues that the declaring code and organization are copyrightable works. Id. at 16. Second, Oracle argues that Google’s use is commercial in nature and therefore not protected under the fair use doctrine. Id. at 17. The first issue has greater implications for the copyrightability of software.

Oracle argues that computer programs have two aspects that can be sufficiently creative to reflect original expression – a noted requirement for copyrightability. See Brief for Respondent at 21. The first aspect is the written code, which Oracle claims “can be original, much like the prose in a book.” Id. The second creative aspect of the program, Oracle contends, is the program’s organization. Id.

Explaining the difference between declaring code and implementing code, Oracle compares declaring code to “topic sentences and chapter and section headings” and compares implementing code to “the body of paragraphs.” Id. at 5. Of the two, however, it is the declaring code that explains to app developers what it will do and how it will interact with other parts of Java SE. Id.

Oracle notes that Google conceded the fact that Java SE’s declaring code and organization are sufficiently original, see Brief for Respondent at 21, but nevertheless highlights where Java SE meets the originality requirement. To illustrate, Oracle describes the declaring code for a method called “verify” that determines whether a signature is valid. Id. at 5. Oracle argues that Java SE’s authors exercised creative choices in writing the declaring code and that the method’s instruction could have been written “countless ways.” Id. The name of the method, the name of every input and error message, and whether to include error messages at all are all aspects that Oracle contends show creative decision-making. Id. The code’s organization showed similar creativity in that the methods were grouped into classes and packages in a way that reflects the author’s unique view of what groupings and relationships would be best. Id. at 8.

Addressing the idea/expression dichotomy, first set forth in Baker v. Selden and codified as 17 U.S.C. § 102(b), Oracle distinguishes between the unprotectable ideas embodied in Java SE and the protectable expression of those ideas. See Brief for Respondent at 24. Oracle asserts that protecting the precise declaration and implementation code does not “preclude anyone from achieving ‘similar … results.’” Id. (quoting Baker v. Selden, 101 U.S. 99, 100-01 (1880)). Oracle argues that there is no question that another person “could write different code in Java … to perform the exact same function.” Id. at 25. Instead, Oracle argues that another person cannot use the “identical ‘statements or instructions’” contained in Oracle’s declaring code. Id. at 25. To support its argument, Oracle points to the Copyright Act’s legislative history, which states, “[E]xpression adopted by the programmer is the copyrightable element on a computer program.” Id. Ultimately, Oracle states that copying Java SE’s exact words and organization was not critical to Google’s expression of the same idea.

Oracle next argues that the merger doctrine does not apply. Id. at 28. Under the doctrine, where there are so few ways to express an idea and the idea and the expression are “indistinguishable,” the expression of that idea is not copyrightable. Id at 29. Google alleges the merger doctrine applies because its “engineering team had no other choice” than to copy the code. Id. at 30.

Oracle argues there are three main flaws with Google’s reasoning that the merger doctrine was applicable in this case. First, Oracle disagrees with Google’s assertion that the declarations can be written only in one way. Id. In support, Oracle points to platforms developed by Apple and Microsoft that provide prewritten programs with a similar functionality to Java SE. Id. at 31. Second, Oracle rebuts Google’s argument that the Java language required this copying, stating, “Google agreed that only 170 lines of code were necessary to write the Java language” and those same lines were no longer at issue. Id. at 32. Oracle again points to how others managed to develop platforms using the Java language but with different class names, method names, interfaces and relationships. Id. Finally, Oracle took particular issue with Google’s claim that copying was necessary to “make Android more accessible to Oracle’s loyal audience.” Id. Calling Google’s claim “anathema to copyright law,” Oracle states that a work does not lose protection because the audience endeavors to learn it. Id.; see also id. at 33 (“What an audience has learned, or grown to love, has no bearing on whether the work is protected or on merger.”).

Oracle claims Google’s application of the doctrine is misplaced, explaining that “under the Copyright Act’s basic design,” the merger doctrine focuses on the choices available to the author creating the work and not on the choices available to a copying party. Id. at 29. In other words, the doctrine looks to what choices were available to Java SE’s authors at the time they developed the code – not what was available to Google when it copied the code. Oracle argues that because copyright protection subsists from creation, an author gains exclusive rights in her work that cannot retroactively divest. Id. Given the low threshold for originality, Java SE would be sufficiently original under the act and therefore afforded copyright protection that cannot be rescinded. Moreover, Oracle notes that § 410(a) requires the Copyright Office to assess a work’s copyrightability and whether merger applies at the time of registration. Id. (citing Atari Games Corp. v. Oman, 888 F.2d 878, 884-85 (D.C. Cir. 1989)). Therefore, had the idea underlying Java SE been so expressed in a way virtually indistinguishable from the idea itself, the Copyright Office would have served as a gatekeeper and denied federal registration.

Broadly speaking, Oracle claims that Google seeks to rewrite copyright law to accommodate its unauthorized copying, despite having the resources to write its own code. Whether the Supreme Court agrees and whether the decision is framed narrowly remains to be seen.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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