On January 12th, the Supreme Court called for the views of the US Solicitor General (SG) on a cert petition filed by Google in a case involving Oracle’s Java software platform. SCOTUSBlog has a wonderful background on calls for the Solicitor General (CVSG)—but, while the Supreme Court often follows the recommendation of the SG on whether or not to hear a case, in intellectual property cases it tends to listen to what it has to say and then chart its own path.

This case involves Google’s admitted literal copying of 7,000 lines of verbatim software code, as well as the nonliteral copying of the structure, sequence, and organization of Oracle’s Java API packages. Despite Google’s arguments, last May, the Federal Circuit held that these elements are indeed copyrightable, and remanded to the district court for further proceedings on Google’s fair use defense to the lower court’s finding of infringement. (For more background on the case, see my previous posts, Fed Circuit hears Oracle v Google arguments and Federal Circuit releases decision in Oracle v Google.) Yet, rather than seeking en banc review or waiting for a district court decision on fair use, Google took the rather unusual step of appealing straight to the Supreme Court for review.

The Supreme Court only hears a small percentage of cases it is asked to review, and at the petition stage, the focus is not typically on the merits of the case, but rather whether there is some factor making it worth Supreme Court review. In its opening brief, Google argues primarily that the Supreme Court should review the Federal Circuit decision because “it presents a longstanding, widely-recognized split in the courts of appeals.” It claims these courts “are in disarray about the application of Section 102(b) to software.”

In fact, there is no disarray. Google cites few Circuit Court decisions from the past three decades to support its claim of a deep split, and in addition, the most recent case Google cites for this proposition is from 1997—18 years ago.

If there is any such disarray in the courts regarding copyright protection for software, the software industry hasn’t noticed. As the Software and Information Industry Association reports, “From 1997 to 2012, software industry production grew from $149 billion to $425 billion,” outpacing the rest of the economy.1Robert J. Shapiro, The U.S. Software Industry as an Engine for Economic Growth and Employment, Sonecon (Sept. 2014).

A closer look at the cases cited by Google reveals that this purported split is largely illusory.

For starters, the four cases Google cites in its discussion on the split all stand for the same general propositions. Each Circuit agrees that infringement can arise from copying of either literal or nonliteral elements of software.2Mitel, Inc. v. Iqtel, Inc., 124 F. 3d 1366, 1373 (10th Cir. 1997); Lotus Development Corp. v. Borland Intern., Inc., 49 F. 3d 807, 814 (1st Cir. 1995); Computer Associates Intern., Inc. v. Altai, Inc., 982 F. 2d 693, 702-03 (2nd Cir. 1992); Whelan Associates v. Jaslow Dental Laboratory, 797 F.2d 1222, 1237 (3d Cir. 1986). They agree that copyright only protects expression, not ideas,3Mitel at 1371; Altai at 703; Whelan at 1234. and that copyright protection may exclude expression if it is purely functional/utilitarian, is considered scènes à faire, or is the only way to express an idea (the merger doctrine).4Mitel at 1374-76; Altai at 707-10 (describing scenes a faire in the context of computer software as “elements dictated by external factors”); Whelan at 1235-37.

The Federal Circuit’s decision is consistent with these decisions.

Google’s circuit split argument relies heavily on the First Circuit’s Lotus decision. Google’s argument, however, is misplaced, as Lotus is easily distinguishable on its facts from the Oracle case. First, Google verbatim copied 7,000 lines of admittedly original and creative source code, while the defendant in Lotus did not copy any code at all. Second, both parties, the district court, and the Federal Circuit all agree that Oracle’s complex declaring code and its organization is creative, but the evidence in Lotus established that the commands at issue were not. Third, the Federal Circuit found that “while the court in Lotus found the commands at issue were ‘essential to operating’ the system, it is undisputed that—other than perhaps as to the three core packages—Google did not need to copy the structure, sequence, and organization of the Java API packages to write programs in the Java language.”

Google’s “deep circuit split” simply does not exist on closer inspection. If there is any split, it hasn’t resulted in any noticeable difference in outcomes, and certainly hasn’t thrown the software industry in disarray. A circuit split implies that courts are employing contradictory tests—coming to opposite conclusions when presented with similar sets of facts. That is not the case here. Certainly one can see some variation in outcomes when one looks at decisions involving different underlying facts—but that would seem an unavoidable result when looking at the metaphysical boundary between idea and expression.

What’s more, Google’s other main argument—that issues of interoperability should factor into a copyrightability analysis—is both incorrect and further reason for the Supreme Court to deny review. As the Federal Circuit correctly observed, “Google’s interoperability arguments are only relevant, if at all, to fair use.” A doctrine that privileges a reasonable amount of copying for socially beneficial uses that don’t supersede a copyright owner’s interest is perfectly suited for dealing with interoperability. However, Google has appealed before any fair use determination could be made, making this case a poor vehicle for Supreme Court review regardless of any split.

Perhaps even more importantly, the Federal Circuit made clear that, as a factual matter, Android is not interoperable with Java—programs written for Android will not run on Java, and vice-versa. Google documents and witnesses admitted this during the district court trial. Indeed, Google purposefully designed Android in such a way as to fragment Java and ensure that programs written in the Android flavor of Java cannot run on any other operating system, circumventing Java’s goal of “write once, run anywhere.”

References   [ + ]

1. Robert J. Shapiro, The U.S. Software Industry as an Engine for Economic Growth and Employment, Sonecon (Sept. 2014).
2. Mitel, Inc. v. Iqtel, Inc., 124 F. 3d 1366, 1373 (10th Cir. 1997); Lotus Development Corp. v. Borland Intern., Inc., 49 F. 3d 807, 814 (1st Cir. 1995); Computer Associates Intern., Inc. v. Altai, Inc., 982 F. 2d 693, 702-03 (2nd Cir. 1992); Whelan Associates v. Jaslow Dental Laboratory, 797 F.2d 1222, 1237 (3d Cir. 1986).
3. Mitel at 1371; Altai at 703; Whelan at 1234.
4. Mitel at 1374-76; Altai at 707-10 (describing scenes a faire in the context of computer software as “elements dictated by external factors”); Whelan at 1235-37.