Oracle America, Inc. v. Google Inc.

United States Court of Appeals

for the Federal Circuit

______________________

ORACLE AMERICA, INC.,

Plaintiff-Appellant,

v.

GOOGLE INC.,

Defendant-Cross-Appellant.

______________________

2013-1021, -1022

______________________

Appeals from the United States District Court for the

Northern District of California in No. 10-CV-3561, Judge

William H. Alsup.

______________________

Decided: May 9, 2014

______________________

E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sut-

cliffe LLP, of New York, New York, argued for plaintiff-

appellant. With him on the brief were MARK S. DAVIES,

ANDREW D. SILVERMAN, KELLY M. DALEY; and ANNETTE L.

HURST, GABRIEL M. RAMSEY, and ELIZABETH C. MCBRIDE,

of San Francisco, California. Of counsel on the brief were

DORIAN E. DALEY, DEBORAH K. MILLER, MATTHEW

SARBORARIA, and ANDREW C. TEMKIN, Oracle America,

Inc., of Redwood Shores, California; and DALE M.

CENDALI, DIANA M. TORRES, SEAN B. FERNANDES, and

JOSHUA L. SIMMONS, Kirkland & Ellis LLP, of New York,

New York. Of counsel were SUSAN M. DAVIES, Kirkland &

2 ORACLE AMERICA, INC. v. GOOGLE INC.

Ellis LLP, of New York, New York; MICHAEL A. JACOBS,

Morrison & Foerster LLP, of San Francisco, California;

and KENNETH A. KUWAYTI, of Palo Alto, California.

ROBERT A. VAN NEST, Keker & Van Nest LLP, of San

Francisco, California, argued for defendant-cross-

appellant. With him on the brief were CHRISTA M.

ANDERSON, STEVEN A. HIRSCH, MICHAEL S. KWUN, and

DANIEL E. JACKSON. Of counsel on the brief were IAN C.

BALLON and HEATHER MEEKER, Greenberg Traurig, LLP,

of East Palo Alto, California; RENNY HWANG, Google Inc.,

of Mountain View, California; and DARYL L. JOSEFFER and

BRUCE W. BABER, King & Spalding LLP, of Washington,

DC.

MARCIA B. PAUL, Davis Wright Tremaine LLP, of New

York, New York, for amicus curiae Ralph Oman. With

her on the brief were LACY H. KOONCE, III and DEBORAH

A. ADLER.

WILLIAM A. RUDY, Lathrop & Gage LLP, of Kansas

City, Missouri, for amici curiae Picture Archive Council of

America, Inc., et al. With him on the brief were CAROLE

E. HANDLER and BRIANNA E. DAHLBERG, of Los Angeles,

California.

GREGORY G. GARRE, Latham & Watkins, LLP, of

Washington, DC, for amici curiae Microsoft Corporation,

et al. With him on the brief was LORI ALVINO MCGILL. Of

counsel on the brief were PAUL T. DACIER, KRISHNENDU

GUPTA, EMC Corporation, of Hopkinton, Massachusetts;

and DOUGLAS LUFTMAN, NETAPP, Inc., of Sunnyvale,

California.

JARED BOBROW, Weil, Gotshal & Manges LLP, of

Redwood Shores, California, for amici curiae Eugene H.

Spafford, Ph.D., et al. With him on the brief was AARON

Y. HUANG.

ORACLE AMERICA, INC. v. GOOGLE INC. 3

MATTHEW S. HELLMAN, Jenner & Block LLP, of Wash-

ington, DC, for amicus curiae BSA/The Software Alliance.

With him on the brief was PAUL M. SMITH.

STEVEN T. COTTREAU, Clifford Chance US LLP, of

Washington, DC, for amici curiae, Scott McNealy, et al.

MEREDITH JACOB, Program on Information Justice

and Intellectual Property, American University, Washing-

ton College of Law, of Washington, DC, for amici curiae

Intellectual Property Law Professors.

JULIE P. SAMUELS, Electronic Frontier Foundation, of

San Francisco, California, for amici curiae Computer

Scientists. With her on the brief was MICHAEL BARCLAY.

Of counsel on the brief was JASON M. SCHULTZ, NYU

Technology Law and Policy Clinic, NYU School of Law, of

New York, New York.

JONATHAN BAND, Jonathan Band PLLC, of Washing-

ton, DC, filed a brief for amicus curiae Computer & Com-

munications Industry Association. With him on the brief

was MATTHEW SCHRUERS, Computer & Communications

Industry Association, of Washington, DC.

CHAD RUBACK, The Ruback Law Firm, of Dallas, Tex-

as, filed a brief for amici curiae Rackspace US, Inc., et al.

JENNIFER M. URBAN, Samuelson Law, Technology and

Public Policy Clinic, U.C. Berkeley School of Law, of

Berkeley, California for amici curiae Software Innovators,

et al.

______________________

Before O’MALLEY, PLAGER, and TARANTO, Circuit Judges.

4 ORACLE AMERICA, INC. v. GOOGLE INC.

O’MALLEY, Circuit Judge.

This copyright dispute involves 37 packages of com-

puter source code. The parties have often referred to

these groups of computer programs, individually or collec-

tively, as “application programming interfaces,” or API

packages, but it is their content, not their name, that

matters. The predecessor of Oracle America, Inc. (“Ora-

cle”) wrote these and other API packages in the Java

programming language, and Oracle licenses them on

various terms for others to use. Many software develop-

ers use the Java language, as well as Oracle’s API pack-

ages, to write applications (commonly referred to as

“apps”) for desktop and laptop computers, tablets,

smartphones, and other devices.

Oracle filed suit against Google Inc. (“Google”) in the

United States District Court for the Northern District of

California, alleging that Google’s Android mobile operat-

ing system infringed Oracle’s patents and copyrights. The

jury found no patent infringement, and the patent claims

are not at issue in this appeal. As to the copyright claims,

the parties agreed that the jury would decide infringe-

ment, fair use, and whether any copying was de minimis,

while the district judge would decide copyrightability and

Google’s equitable defenses. The jury found that Google

infringed Oracle’s copyrights in the 37 Java packages and

a specific computer routine called “rangeCheck,” but

returned a noninfringement verdict as to eight decompiled

security files. The jury deadlocked on Google’s fair use

defense.

After the jury verdict, the district court denied Ora-

cle’s motion for judgment as a matter of law (“JMOL”)

regarding fair use as well as Google’s motion for JMOL

with respect to the rangeCheck files. Order on Motions

for Judgment as a Matter of Law, Oracle Am., Inc. v.

Google Inc., No. 3:10-cv-3561 (N.D. Cal. May 10, 2012),

ECF No. 1119. Oracle also moved for JMOL of infringe-

ORACLE AMERICA, INC. v. GOOGLE INC. 5

ment with respect to the eight decompiled security files.

In granting that motion, the court found that: (1) Google

admitted to copying the eight files; and (2) no reasonable

jury could find that the copying was de minimis. Oracle

Am., Inc. v. Google Inc., No. C 10-3561, 2012 U.S. Dist.

LEXIS 66417 (N.D. Cal. May 11, 2012) (“Order Granting

JMOL on Decompiled Files”).

Shortly thereafter, the district court issued its deci-

sion on copyrightability, finding that the replicated ele-

ments of the 37 API packages—including the declaring

code and the structure, sequence, and organization—were

not subject to copyright protection. Oracle Am., Inc. v.

Google Inc., 872 F. Supp. 2d 974 (N.D. Cal. 2012) (“Copy-

rightability Decision”). Accordingly, the district court

entered final judgment in favor of Google on Oracle’s

copyright infringement claims, except with respect to the

rangeCheck code and the eight decompiled files. Final

Judgment, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-

3561 (N.D. Cal. June 20, 2012), ECF No. 1211. Oracle

appeals from the portion of the final judgment entered

against it, and Google cross-appeals from the portion of

that same judgment entered in favor of Oracle as to the

rangeCheck code and eight decompiled files.

Because we conclude that the declaring code and the

structure, sequence, and organization of the API packages

are entitled to copyright protection, we reverse the district

court’s copyrightability determination with instructions to

reinstate the jury’s infringement finding as to the 37 Java

packages. Because the jury deadlocked on fair use, we

remand for further consideration of Google’s fair use

defense in light of this decision. With respect to Google’s

cross-appeal, we affirm the district court’s decisions:

(1) granting Oracle’s motion for JMOL as to the eight

decompiled Java files that Google copied into Android;

and (2) denying Google’s motion for JMOL with respect to

the rangeCheck function. Accordingly, we affirm-in-part,

reverse-in-part, and remand for further proceedings.

6 ORACLE AMERICA, INC. v. GOOGLE INC.

BACKGROUND

A. The Technology

Sun Microsystems, Inc. (“Sun”) developed the Java

“platform” for computer programming and released it in

1996. 1 The aim was to relieve programmers from the

burden of writing different versions of their computer

programs for different operating systems or devices. “The

Java platform, through the use of a virtual machine,

enable[d] software developers to write programs that

[we]re able to run on different types of computer hard-

ware without having to rewrite them for each different

type.” Copyrightability Decision, 872 F. Supp. 2d at 977.

With Java, a software programmer could “write once, run

anywhere.”

The Java virtual machine (“JVM”) plays a central role

in the overall Java platform. The Java programming

language itself—which includes words, symbols, and

other units, together with syntax rules for using them to

create instructions—is the language in which a Java

programmer writes source code, the version of a program

that is “in a human-readable language.” Id. For the

instructions to be executed, they must be converted (or

compiled) into binary machine code (object code) consist-

ing of 0s and 1s understandable by the particular compu-

ting device. In the Java system, “source code is first

converted into ‘bytecode,’ an intermediate form, before it

is then converted into binary machine code by the Java

virtual machine” that has been designed for that device.

Id. The Java platform includes the “Java development kit

(JDK), javac compiler, tools and utilities, runtime pro-

grams, class libraries (API packages), and the Java virtu-

al machine.” Id. at 977 n.2.

1 Oracle acquired Sun in 2010.

ORACLE AMERICA, INC. v. GOOGLE INC. 7

Sun wrote a number of ready-to-use Java programs to

perform common computer functions and organized those

programs into groups it called “packages.” These packag-

es, which are the application programming interfaces at

issue in this appeal, allow programmers to use the pre-

written code to build certain functions into their own

programs, rather than write their own code to perform

those functions from scratch. They are shortcuts. Sun

called the code for a specific operation (function) a “meth-

od.” It defined “classes” so that each class consists of

specified methods plus variables and other elements on

which the methods operate. To organize the classes for

users, then, it grouped classes (along with certain related

“interfaces”) into “packages.” See id. at 982 (describing

organization: “[e]ach package [i]s broken into classes and

those in turn [are] broken into methods”). The parties

have not disputed the district court’s analogy: Oracle’s

collection of API packages is like a library, each package

is like a bookshelf in the library, each class is like a book

on the shelf, and each method is like a how-to chapter in a

book. Id. at 977.

The original Java Standard Edition Platform (“Java

SE”) included “eight packages of pre-written programs.”

Id. at 982. The district court found, and Oracle concedes

to some extent, that three of those packages—java.lang,

java.io, and java.util—were “core” packages, meaning that

programmers using the Java language had to use them

“in order to make any worthwhile use of the language.”

Id. By 2008, the Java platform had more than 6,000

methods making up more than 600 classes grouped into

166 API packages. There are 37 Java API packages at

issue in this appeal, three of which are the core packages

identified by the district court. 2 These packages contain

2 The 37 API packages involved in this appeal are:

java.awt.font, java.beans, java.io, java.lang, ja-

8 ORACLE AMERICA, INC. v. GOOGLE INC.

thousands of individual elements, including classes,

subclasses, methods, and interfaces.

Every package consists of two types of source code—

what the parties call (1) declaring code; and

(2) implementing code. Declaring code is the expression

that identifies the prewritten function and is sometimes

referred to as the “declaration” or “header.” As the dis-

trict court explained, the “main point is that this header

line of code introduces the method body and specifies very

precisely the inputs, name and other functionality.” Id. at

979-80. The expressions used by the programmer from

the declaring code command the computer to execute the

associated implementing code, which gives the computer

the step-by-step instructions for carrying out the declared

function.

To use the district court’s example, one of the Java

API packages at issue is “java.lang.” Within that package

is a class called “math,” and within “math” there are

several methods, including one that is designed to find the

larger of two numbers: “max.” The declaration for the

“max” method, as defined for integers, is: “public static int

max(int x, int y),” where the word “public” means that the

method is generally accessible, “static” means that no

va.lang.annotation, java.lang.ref, java.lang.reflect, ja-

va.net, java.nio, java.nio.channels, java.nio.channels.spi,

java.nio.charset, java.nio.charset.spi, java.security, ja-

va.security.acl, java.security.cert, java.security.interfaces,

java.security.spec, java.sql, java.text, java.util, ja-

va.util.jar, java.util.logging, java.util.prefs, ja-

va.util.regex, java.util.zip, javax.crypto,

javax.crypto.interfaces, javax.crypto.spec, javax.net,

javax.net.ssl, javax.security.auth, ja-

vax.security.auth.callback, javax.security.auth.login,

javax.security.auth.x500, javax.security.cert, and ja-

vax.sql.

ORACLE AMERICA, INC. v. GOOGLE INC. 9

specific instance of the class is needed to call the method,

the first “int” indicates that the method returns an inte-

ger, and “int x” and “int y” are the two numbers (inputs)

being compared. Copyrightability Decision, 872 F. Supp.

2d at 980-82. A programmer calls the “max” method by

typing the name of the method stated in the declaring

code and providing unique inputs for the variables “x” and

“y.” The expressions used command the computer to

execute the implementing code that carries out the opera-

tion of returning the larger number.

Although Oracle owns the copyright on Java SE and

the API packages, it offers three different licenses to those

who want to make use of them. The first is the General

Public License, which is free of charge and provides that

the licensee can use the packages—both the declaring and

implementing code—but must “contribute back” its inno-

vations to the public. This arrangement is referred to as

an “open source” license. The second option is the Specifi-

cation License, which provides that the licensee can use

the declaring code and organization of Oracle’s API pack-

ages but must write its own implementing code. The

third option is the Commercial License, which is for

businesses that “want to use and customize the full Java

code in their commercial products and keep their code

secret.” Appellant Br. 14. Oracle offers the Commercial

License in exchange for royalties. To maintain Java’s

“write once, run anywhere” motto, the Specification and

Commercial Licenses require that the licensees’ programs

pass certain tests to ensure compatibility with the Java

platform.

The testimony at trial also revealed that Sun was li-

censing a derivative version of the Java platform for use

on mobile devices: the Java Micro Edition (“Java ME”).

Oracle licensed Java ME for use on feature phones and

smartphones. Sun/Oracle has never successfully devel-

oped its own smartphone platform using Java.

10 ORACLE AMERICA, INC. v. GOOGLE INC.

B. Google’s Accused Product: Android

The accused product is Android, a software platform

that was designed for mobile devices and competes with

Java in that market. Google acquired Android, Inc. in

2005 as part of a plan to develop a smartphone platform.

Later that same year, Google and Sun began discussing

the possibility of Google “taking a license to use and to

adapt the entire Java platform for mobile devices.” Copy-

rightability Decision, 872 F. Supp. 2d at 978. They also

discussed a “possible co-development partnership deal

with Sun under which Java technology would become an

open-source part of the Android platform, adapted for

mobile devices.” Id. The parties negotiated for months

but were unable to reach an agreement. The point of

contention between the parties was Google’s refusal to

make the implementation of its programs compatible with

the Java virtual machine or interoperable with other Java

programs. Because Sun/Oracle found that position to be

anathema to the “write once, run anywhere” philosophy,

it did not grant Google a license to use the Java API

packages.

When the parties’ negotiations reached an impasse,

Google decided to use the Java programming language to

design its own virtual machine—the Dalvik virtual ma-

chine (“Dalvik VM”)—and “to write its own implementa-

tions for the functions in the Java API that were key to

mobile devices.” Id. Google developed the Android plat-

form, which grew to include 168 API packages—37 of

which correspond to the Java API packages at issue in

this appeal.

With respect to the 37 packages at issue, “Google be-

lieved Java application programmers would want to find

the same 37 sets of functionalities in the new Android

system callable by the same names as used in Java.” Id.

To achieve this result, Google copied the declaring source

code from the 37 Java API packages verbatim, inserting

ORACLE AMERICA, INC. v. GOOGLE INC. 11

that code into parts of its Android software. In doing so,

Google copied the elaborately organized taxonomy of all

the names of methods, classes, interfaces, and packages—

the “overall system of organized names—covering 37

packages, with over six hundred classes, with over six

thousand methods.” Copyrightability Decision, 872 F.

Supp. 2d at 999. The parties and district court referred

to this taxonomy of expressions as the “structure, se-

quence, and organization” or “SSO” of the 37 packages. It

is undisputed, however, that Google wrote its own imple-

menting code, except with respect to: (1) the rangeCheck

function, which consisted of nine lines of code; and

(2) eight decompiled security files.

As to rangeCheck, the court found that the Sun engi-

neer who wrote it later worked for Google and contributed

two files he created containing the rangeCheck function—

“Timsort.java” and “ComparableTimsort”—to the Android

platform. In doing so, the nine-line rangeCheck function

was copied directly into Android. As to the eight decom-

piled files, the district court found that they were copied

and used as test files but “never found their way into

Android or any handset.” Id. at 983.

Google released the Android platform in 2007, and the

first Android phones went on sale the following year.

Although it is undisputed that certain Android software

contains copies of the 37 API packages’ declaring code at

issue, neither the district court nor the parties specify in

which programs those copies appear. Oracle indicated at

oral argument, however, that all Android phones contain

copies of the accused portions of the Android software.

Oral Argument at 1:35, available at http://www.

cafc.uscourts.gov/oral-argument-recordings/2013-1021/all.

Android smartphones “rapidly grew in popularity and

now comprise a large share of the United States market.”

Copyrightability Decision, 872 F. Supp. 2d at 978. Google

provides the Android platform free of charge to

smartphone manufacturers and receives revenue when

12 ORACLE AMERICA, INC. v. GOOGLE INC.

customers use particular functions on the Android phone.

Although Android uses the Java programming language,

it is undisputed that Android is not generally Java com-

patible. As Oracle explains, “Google ultimately designed

Android to be incompatible with the Java platform, so

that apps written for one will not work on the other.”

Appellant Br. 29.

C. Trial and Post-Trial Rulings

Beginning on April 16, 2012, the district court and the

jury—on parallel tracks—viewed documents and heard

testimony from twenty-four witnesses on copyrightability,

infringement, fair use, and Google’s other defenses.

Because the parties agreed the district court would decide

copyrightability, the court instructed the jury to assume

that the structure, sequence, and organization of the 37

API packages was copyrightable. And, the court informed

the jury that Google conceded that it copied the declaring

code used in the 37 packages verbatim. The court also

instructed the jury that Google conceded copying the

rangeCheck function and the eight decompiled security

files, but that Google maintained that its use of those

lines of code was de minimis. See Final Charge to the

Jury (Phase One), Oracle Am., Inc. v. Google Inc., 3:10-cv-

3561 (N.D. Cal. Apr. 30, 2012), ECF No. 1018 at 14 (“With

respect to the infringement issues concerning the

rangeCheck and other similar files, Google agrees that

the accused lines of code and comments came from the

copyrighted material but contends that the amounts

involved were so negligible as to be de minimis and thus

should be excused.”).

On May 7, 2012, the jury returned a verdict finding

that Google infringed Oracle’s copyright in the 37 Java

API packages and in the nine lines of rangeCheck code,

but returned a noninfringement verdict as to eight de-

compiled security files. The jury hung on Google’s fair use

defense.

ORACLE AMERICA, INC. v. GOOGLE INC. 13

The parties filed a number of post-trial motions, most

of which were ultimately denied. In relevant part, the

district court denied Oracle’s motion for JMOL regarding

fair use and Google’s motion for JMOL as to the

rangeCheck files. Order on Motions for Judgment as a

Matter of Law, Oracle Am., Inc. v. Google Inc., No. 3:10-

cv-3561 (N.D. Cal. May 10, 2012), ECF No. 1119. The

district court granted Oracle’s motion for JMOL of in-

fringement as to the eight decompiled files, however. In

its order, the court explained that: (1) Google copied the

files in their entirety; (2) the trial testimony revealed that

the use of those files was “significant”; and (3) no reason-

able jury could find the copying de minimis. Order Grant-

ing JMOL on Decompiled Files, 2012 U.S. Dist. LEXIS

66417, at *6.

On May 31, 2012, the district court issued the prima-

ry decision at issue in this appeal, finding that the repli-

cated elements of the Java API packages—including the

declarations and their structure, sequence, and organiza-

tion—were not copyrightable. As to the declaring code,

the court concluded that “there is only one way to write”

it, and thus the “merger doctrine bars anyone from claim-

ing exclusive copyright ownership of that expression.”

Copyrightability Decision, 872 F. Supp. 2d at 998. The

court further found that the declaring code was not pro-

tectable because “names and short phrases cannot be

copyrighted.” Id. As such, the court determined that

“there can be no copyright violation in using the identical

declarations.” Id.

As to the overall structure, sequence, and organiza-

tion of the Java API packages, the court recognized that

“nothing in the rules of the Java language . . . required

that Google replicate the same groupings even if Google

was free to replicate the same functionality.” Id. at 999.

Therefore, the court determined that “Oracle’s best argu-

ment . . . is that while no single name is copyrightable,

Java’s overall system of organized names—covering 37

14 ORACLE AMERICA, INC. v. GOOGLE INC.

packages, with over six hundred classes, with over six

thousand methods—is a ‘taxonomy’ and, therefore, copy-

rightable.” Id.

Although it acknowledged that the overall structure of

Oracle’s API packages is creative, original, and “resem-

bles a taxonomy,” the district court found that it “is

nevertheless a command structure, a system or method of

operation—a long hierarchy of over six thousand com-

mands to carry out pre-assigned functions”—that is not

entitled to copyright protection under Section 102(b) of

the Copyright Act. Id. at 999-1000. In reaching this

conclusion, the court emphasized that, “[o]f the 166 Java

packages, 129 were not violated in any way.” Id. at 1001.

And, of the 37 Java API packages at issue, “97 percent of

the Android lines were new from Google and the remain-

ing three percent were freely replicable under the merger

and names doctrines.” Id. On these grounds, the court

dismissed Oracle’s copyright claims, concluding that “the

particular elements replicated by Google were free for all

to use under the Copyright Act.” Id.

On June 20, 2012, the district court entered final

judgment in favor of Google and against Oracle on its

claim for copyright infringement, except with respect to

the rangeCheck function and the eight decompiled files.

As to rangeCheck and the decompiled files, the court

entered judgment for Oracle and against Google in the

amount of zero dollars, per the parties’ stipulation. Final

Judgment, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-

3561 (N.D. Cal. June 20, 2012), ECF No. 1211. Oracle

timely appealed from the portion of the district court’s

final judgment entered against it and Google timely cross-

appealed with respect to rangeCheck and the eight de-

compiled files. Because this action included patent

claims, we have jurisdiction pursuant to 28 U.S.C.

§ 1295(a)(1).

ORACLE AMERICA, INC. v. GOOGLE INC. 15

DISCUSSION

I. ORACLE’S APPEAL

It is undisputed that the Java programming language

is open and free for anyone to use. Except to the limited

extent noted below regarding three of the API packages, it

is also undisputed that Google could have written its own

API packages using the Java language. Google chose not

to do that. Instead, it is undisputed that Google copied

7,000 lines of declaring code and generally replicated the

overall structure, sequence, and organization of Oracle’s

37 Java API packages. The central question before us is

whether these elements of the Java platform are entitled

to copyright protection. The district court concluded that

they are not, and Oracle challenges that determination on

appeal. Oracle also argues that the district court should

have dismissed Google’s fair use defense as a matter of

law.

According to Google, however, the district court cor-

rectly determined that: (1) there was only one way to

write the Java method declarations and remain “interop-

erable” with Java; and (2) the organization and structure

of the 37 Java API packages is a “command structure”

excluded from copyright protection under Section 102(b).

Google also argues that, if we reverse the district court’s

copyrightability determination, we should direct the

district court to retry its fair use defense.

“When the questions on appeal involve law and prece-

dent on subjects not exclusively assigned to the Federal

Circuit, the court applies the law which would be applied

by the regional circuit.” Atari Games Corp. v. Nintendo of

Am., Inc., 897 F.2d 1572, 1575 (Fed. Cir. 1990). Copyright

issues are not exclusively assigned to the Federal Circuit.

See 28 U.S.C. § 1295. The parties agree that Ninth Cir-

cuit law applies and that, in the Ninth Circuit, whether

particular expression is protected by copyright law is

16 ORACLE AMERICA, INC. v. GOOGLE INC.

“subject to de novo review.” Ets-Hokin v. Skyy Spirits,

Inc., 225 F.3d 1068, 1073 (9th Cir. 2000). 3

3 The Supreme Court has not addressed whether

copyrightability is a pure question of law or a mixed

question of law and fact, or whether, if it is a mixed

question of law and fact, the factual components of that

inquiry are for the court, rather than the jury. Relatedly,

it has not decided the standard of review that applies on

appeal. Ten years ago, before finding it unnecessary to

decide whether copyrightability is a pure question of law

or a mixed question of law and fact, the Seventh Circuit

noted that it had “found only a handful of appellate cases

addressing the issue, and they are split.” Gaiman v.

McFarlane, 360 F.3d 644, 648 (7th Cir. 2004). And,

panels of the Ninth Circuit have defined the respective

roles of the jury and the court differently where questions

of originality were at issue. Compare North Coast Indus.

v. Jason Maxwell, Inc., 972 F.2d 1031, 1035 (9th Cir.

1992), with Ets-Hokin, 225 F.3d at 1073. More recently,

several district courts within the Ninth Circuit have

treated copyrightability as a question for only the court,

regardless of whether it is a pure question of law. See

Stern v. Does, No. 09-1986, 2011 U.S. Dist. LEXIS 37735,

*7 (C.D. Cal. Feb. 10, 2011); Jonathan Browning, Inc. v.

Venetian Casino Resort LLC, No. C 07-3983, 2009 U.S.

Dist. LEXIS 57525, at *2 (N.D. Cal. June 19, 2009); see

also Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 932 F.

Supp. 220, 225 (N.D. Ill. 1996) (Easterbrook, J.) (citing to

Markman v. Westview Instruments, Inc., 517 U.S. 370

(1996), and concluding that whether works are copyright-

able is a question which the “jury has nothing to do

with”). We need not address any of these questions,

because the parties here agreed that the district court

would decide copyrightability, and both largely agree that

ORACLE AMERICA, INC. v. GOOGLE INC. 17

We are mindful that the application of copyright law

in the computer context is often a difficult task. See Lotus

Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807, 820 (1st Cir.

1995) (Boudin, J., concurring) (“Applying copyright law to

computer programs is like assembling a jigsaw puzzle

whose pieces do not quite fit.”). On this record, however,

we find that the district court failed to distinguish be-

tween the threshold question of what is copyrightable—

which presents a low bar—and the scope of conduct that

constitutes infringing activity. The court also erred by

importing fair use principles, including interoperability

concerns, into its copyrightability analysis.

For the reasons that follow, we conclude that the de-

claring code and the structure, sequence, and organiza-

tion of the 37 Java API packages are entitled to copyright

protection. Because there is an insufficient record as to

the relevant fair use factors, we remand for further pro-

ceedings on Google’s fair use defense.

A. Copyrightability

The Copyright Act provides protection to “original

works of authorship fixed in any tangible medium of

expression,” including “literary works.” 17 U.S.C.

§ 102(a). It is undisputed that computer programs—

defined in the Copyright Act as “a set of statements or

instructions to be used directly or indirectly in a computer

in order to bring about a certain result,” 17 U.S.C.

§ 101—can be subject to copyright protection as “literary

works.” See Atari Games Corp. v. Nintendo of Am., Inc.,

975 F.2d 832, 838 (Fed. Cir. 1992) (“As literary works,

copyright protection extends to computer programs.”).

Indeed, the legislative history explains that “literary

works” includes “computer programs to the extent that

we may undertake a review of that determination de

novo.

18 ORACLE AMERICA, INC. v. GOOGLE INC.

they incorporate authorship in the programmer’s expres-

sion of original ideas, as distinguished from the ideas

themselves.” H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54,

reprinted in 1976 U.S.C.C.A.N. 5659, 5667.

By statute, a work must be “original” to qualify for

copyright protection. 17 U.S.C. § 102(a). This “originality

requirement is not particularly stringent,” however. Feist

Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 358

(1991). “Original, as the term is used in copyright, means

only that the work was independently created by the

author (as opposed to copied from other works), and that

it possesses at least some minimal degree of creativity.”

Id. at 345.

Copyright protection extends only to the expression of

an idea—not to the underlying idea itself. Mazer v. Stein,

347 U.S. 201, 217 (1954) (“Unlike a patent, a copyright

gives no exclusive right to the art disclosed; protection is

given only to the expression of the idea—not the idea

itself.”). This distinction—commonly referred to as the

“idea/expression dichotomy”—is codified in Section 102(b)

of the Copyright Act, which provides:

In no case does copyright protection for an origi-

nal work of authorship extend to any idea, proce-

dure, process, system, method of operation,

concept, principle, or discovery, regardless of the

form in which it is described, explained, illustrat-

ed, or embodied in such work.

17 U.S.C. § 102(b); see Golan v. Holder, 132 S. Ct. 873,

890 (2012) (“The idea/expression dichotomy is codified at

17 U.S.C. § 102(b).”).

The idea/expression dichotomy traces back to the Su-

preme Court’s decision in Baker v. Selden, 101 U.S. 99,

101 (1879). In Baker, the plaintiff Selden wrote and

obtained copyrights on a series of books setting out a new

system of bookkeeping. Id. at 100. The books included an

ORACLE AMERICA, INC. v. GOOGLE INC. 19

introductory essay explaining the system and blank forms

with ruled lines and headings designed for use with that

system. Id. Baker published account books employing a

system with similar forms, and Selden filed suit alleging

copyright infringement. According to Selden, the “ruled

lines and headings, given to illustrate the system, are a

part of the book” and “no one can make or use similar

ruled lines and headings, or ruled lines and headings

made and arranged on substantially the same system,

without violating the copyright.” Id. at 101.

The Supreme Court framed the issue on appeal in

Baker as “whether the exclusive property in a system of

book-keeping can be claimed, under the law of copyright,

by means of a book in which that system is explained.”

Id. In reversing the circuit court’s decision, the Court

concluded that the “copyright of a book on book-keeping

cannot secure the exclusive right to make, sell, and use

account-books prepared upon the plan set forth in such

book.” Id. at 104. Likewise, the “copyright of a work on

mathematical science cannot give to the author an exclu-

sive right to the methods of operation which he pro-

pounds.” Id. at 103. The Court found that, although the

copyright protects the way Selden “explained and de-

scribed a peculiar system of book-keeping,” it does not

prevent others from using the system described therein.

Id. at 104. The Court further indicated that, if it is neces-

sary to use the forms Selden included in his books to

make use of the accounting system, that use would not

amount to copyright infringement. See id. (noting that

the public has the right to use the account-books and that,

“in using the art, the ruled lines and headings of accounts

must necessarily be used as incident to it”).

Courts routinely cite Baker as the source of several

principles incorporated into Section 102(b) that relate to

this appeal, including that: (1) copyright protection ex-

tends only to expression, not to ideas, systems, or process-

es; and (2) “those elements of a computer program that

20 ORACLE AMERICA, INC. v. GOOGLE INC.

are necessarily incidental to its function are . . . unpro-

tectable.” See Computer Assocs. Int’l v. Altai, 982 F.2d

693, 704-05 (2d Cir. 1992) (“Altai”) (discussing Baker, 101

U.S. at 103-04).

It is well established that copyright protection can ex-

tend to both literal and non-literal elements of a computer

program. See Altai, 982 F.2d at 702. The literal elements

of a computer program are the source code and object

code. See Johnson Controls, Inc. v. Phoenix Control Sys.,

Inc., 886 F.2d 1173, 1175 (9th Cir. 1989). Courts have

defined source code as “the spelled-out program com-

mands that humans can read.” Lexmark Int’l, Inc. v.

Static Control Components, Inc., 387 F.3d 522, 533 (6th

Cir. 2004). Object code refers to “the binary language

comprised of zeros and ones through which the computer

directly receives its instructions.” Altai, 982 F.2d at 698.

Both source and object code “are consistently held pro-

tected by a copyright on the program.” Johnson Controls,

886 F.2d at 1175; see also Altai, 982 F.2d at 702 (“It is

now well settled that the literal elements of computer

programs, i.e., their source and object codes, are the

subject of copyright protection.”). Google nowhere dis-

putes that premise. See, e.g., Oral Argument at 57:38.

The non-literal components of a computer program in-

clude, among other things, the program’s sequence, struc-

ture, and organization, as well as the program’s user

interface. Johnson Controls, 886 F.2d at 1175. As dis-

cussed below, whether the non-literal elements of a pro-

gram “are protected depends on whether, on the

particular facts of each case, the component in question

qualifies as an expression of an idea, or an idea itself.” Id.

In this case, Oracle claims copyright protection with

respect to both: (1) literal elements of its API packages—

the 7,000 lines of declaring source code; and (2) non-literal

elements—the structure, sequence, and organization of

each of the 37 Java API packages.

ORACLE AMERICA, INC. v. GOOGLE INC. 21

The distinction between literal and non-literal aspects

of a computer program is separate from the distinction

between literal and non-literal copying. See Altai, 982

F.2d at 701-02. “Literal” copying is verbatim copying of

original expression. “Non-literal” copying is “paraphrased

or loosely paraphrased rather than word for word.” Lotus

Dev. Corp. v. Borland Int’l, 49 F.3d 807, 814 (1st Cir.

1995). Here, Google concedes that it copied the declaring

code verbatim. Oracle explains that the lines of declaring

code “embody the structure of each [API] package, just as

the chapter titles and topic sentences represent the struc-

ture of a novel.” Appellant Br. 45. As Oracle explains,

when Google copied the declaring code in these packages

“it also copied the ‘sequence and organization’ of the

packages (i.e., the three-dimensional structure with all

the chutes and ladders)” employed by Sun/Oracle in the

packages. Appellant Br. 27. Oracle also argues that the

nonliteral elements of the API packages—the structure,

sequence, and organization that led naturally to the

implementing code Google created—are entitled to protec-

tion. Oracle does not assert “literal” copying of the entire

SSO, but, rather, that Google literally copied the declar-

ing code and then paraphrased the remainder of the SSO

by writing its own implementing code. It therefore as-

serts non-literal copying with respect to the entirety of the

SSO.

At this stage, it is undisputed that the declaring code

and the structure and organization of the Java API pack-

ages are original. The testimony at trial revealed that

designing the Java API packages was a creative process

and that the Sun/Oracle developers had a vast range of

options for the structure and organization. In its copy-

rightability decision, the district court specifically found

that the API packages are both creative and original, and

Google concedes on appeal that the originality require-

ments are met. See Copyrightability Decision, 872 F.

Supp. 2d at 976 (“The overall name tree, of course, has

22 ORACLE AMERICA, INC. v. GOOGLE INC.

creative elements . . . .”); Id. at 999 (“Yes, it is creative.

Yes, it is original.”); Appellee Br. 5 (“Google does not

dispute” the district court’s finding that “the Java API

clears the low originality threshold.”). The court found,

however, that neither the declaring code nor the SSO was

entitled to copyright protection under the Copyright Act.

Although the parties agree that Oracle’s API packages

meet the originality requirement under Section 102(a),

they disagree as to the proper interpretation and applica-

tion of Section 102(b). For its part, Google suggests that

there is a two-step copyrightability analysis, wherein

Section 102(a) grants copyright protection to original

works, while Section 102(b) takes it away if the work has

a functional component. To the contrary, however, Con-

gress emphasized that Section 102(b) “in no way enlarges

or contracts the scope of copyright protection” and that its

“purpose is to restate . . . that the basic dichotomy be-

tween expression and idea remains unchanged.” Feist,

499 U.S. at 356 (quoting H.R. Rep. No. 1476, 94th Cong.,

2d Sess. 54, reprinted in 1976 U.S.C.C.A.N. 5659, 5670).

“Section 102(b) does not extinguish the protection accord-

ed a particular expression of an idea merely because that

expression is embodied in a method of operation.” Mitel,

Inc. v. Iqtel, Inc., 124 F.3d 1366, 1372 (10th Cir. 1997).

Section 102(a) and 102(b) are to be considered collectively

so that certain expressions are subject to greater scrutiny.

Id. In assessing copyrightability, the district court is

required to ferret out apparent expressive aspects of a

work and then separate protectable expression from

“unprotectable ideas, facts, processes, and methods of

operation.” See Atari, 975 F.2d at 839.

Of course, as with many things, in defining this task,

the devil is in the details. Circuit courts have struggled

with, and disagree over, the tests to be employed when

attempting to draw the line between what is protectable

expression and what is not. Compare Whelan Assocs., Inc.

v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1236 (3d Cir.

ORACLE AMERICA, INC. v. GOOGLE INC. 23

1986) (everything not necessary to the purpose or function

of a work is expression), with Lotus, 49 F.3d at 815

(methods of operation are means by which a user operates

something and any words used to effectuate that opera-

tion are unprotected expression). When assessing wheth-

er the non-literal elements of a computer program

constitute protectable expression, the Ninth Circuit has

endorsed an “abstraction-filtration-comparison” test

formulated by the Second Circuit and expressly adopted

by several other circuits. Sega Enters. Ltd. v. Accolade,

Inc., 977 F.2d 1510, 1525 (9th Cir. 1992) (“In our view, in

light of the essentially utilitarian nature of computer

programs, the Second Circuit’s approach is an appropriate

one.”). This test rejects the notion that anything that

performs a function is necessarily uncopyrightable. See

Mitel, 124 F.3d at 1372 (rejecting the Lotus court’s formu-

lation, and concluding that, “although an element of a

work may be characterized as a method of operation, that

element may nevertheless contain expression that is

eligible for copyright protection.”). And it also rejects as

flawed the Whelan assumption that, once any separable

idea can be identified in a computer program everything

else must be protectable expression, on grounds that more

than one idea may be embodied in any particular pro-

gram. Altai, 982 F.2d at 705-06.

Thus, this test eschews bright line approaches and re-

quires a more nuanced assessment of the particular

program at issue in order to determine what expression is

protectable and infringed. As the Second Circuit explains,

this test has three steps. In the abstraction step, the

court “first break[s] down the allegedly infringed program

into its constituent structural parts.” Id. at 706. In the

filtration step, the court “sift[s] out all non-protectable

material,” including ideas and “expression that is neces-

sarily incidental to those ideas.” Id. In the final step, the

24 ORACLE AMERICA, INC. v. GOOGLE INC.

court compares the remaining creative expression with

the allegedly infringing program. 4

In the second step, the court is first to assess whether

the expression is original to the programmer or author.

Atari, 975 F.2d at 839. The court must then determine

whether the particular inclusion of any level of abstrac-

tion is dictated by considerations of efficiency, required by

factors already external to the program itself, or taken

from the public domain—all of which would render the

expression unprotectable. Id. These conclusions are to be

informed by traditional copyright principles of originality,

merger, and scenes a faire. See Mitel, 124 F.3d at 1372

(“Although this core of expression is eligible for copyright

protection, it is subject to the rigors of filtration analysis

which excludes from protection expression that is in the

public domain, otherwise unoriginal, or subject to the

doctrines of merger and scenes a faire.”).

In all circuits, it is clear that the first step is part of

the copyrightability analysis and that the third is an

infringement question. It is at the second step of this

analysis where the circuits are in less accord. Some treat

all aspects of this second step as part of the copyrightabil-

ity analysis, while others divide questions of originality

from the other inquiries, treating the former as a question

of copyrightability and the latter as part of the infringe-

ment inquiry. Compare Lexmark, 387 F.3d at 537-38

4 Importantly, this full analysis only applies where

a copyright owner alleges infringement of the non-literal

aspects of its work. Where “admitted literal copying of a

discrete, easily-conceptualized portion of a work” is at

issue—as with Oracle’s declaring code—a court “need not

perform a complete abstraction-filtration-comparison

analysis” and may focus the protectability analysis on the

filtration stage, with attendant reference to standard

copyright principles. Mitel, 124 F.3d at 1372-73.

ORACLE AMERICA, INC. v. GOOGLE INC. 25

(finding that the district court erred in assessing princi-

ples of merger and scenes a faire in the infringement

analysis, rather than as a component of copyrightability),

with Kregos, 937 F.2d at 705 (noting that the Second

Circuit has considered the merger doctrine “in determin-

ing whether actionable infringement has occurred, rather

than whether a copyright is valid”); see also Lexmark, 387

F.3d at 557 (Feikens, J., dissenting-in-part) (noting the

circuit split and concluding that, where a court is as-

sessing merger of an expression with a method of opera-

tion, “I would find the merger doctrine can operate only as

a defense to infringement in that context, and as such has

no bearing on the question of copyrightability.”). We need

not assess the wisdom of these respective views because

there is no doubt on which side of this circuit split the

Ninth Circuit falls.

In the Ninth Circuit, while questions regarding origi-

nality are considered questions of copyrightability, con-

cepts of merger and scenes a faire are affirmative

defenses to claims of infringement. Ets-Hokin, 225 F.3d

at 1082; Satava v. Lowry, 323 F.3d 805, 810 n.3 (9th Cir.

2003) (“The Ninth Circuit treats scenes a faire as a de-

fense to infringement rather than as a barrier to copy-

rightability.”). The Ninth Circuit has acknowledged that

“there is some disagreement among courts as to whether

these two doctrines figure into the issue of copyrightabil-

ity or are more properly defenses to infringement.” Ets-

Hokin, 225 F.3d at 1082 (citations omitted). It, nonethe-

less, has made clear that, in that circuit, these concepts

are to be treated as defenses to infringement. Id. (citing

Kregos, 937 F.2d at 705 (holding that the merger doctrine

relates to infringement, not copyrightability); Reed-Union

Corp. v. Turtle Wax, Inc., 77 F.3d 909, 914 (7th Cir. 1996)

(explaining why the doctrine of scenes a faire is separate

from the validity of a copyright)).

With these principles in mind, we turn to the trial

court’s analysis and judgment and to Oracle’s objections

26 ORACLE AMERICA, INC. v. GOOGLE INC.

thereto. While the trial court mentioned the abstraction-

filtration-comparison test when describing the develop-

ment of relevant law, it did not purport to actually apply

that test. Instead, it moved directly to application of

familiar principles of copyright law when assessing the

copyrightability of the declaring code and interpreted

Section 102(b) to preclude copyrightability for any func-

tional element “essential for interoperability” “regardless

of its form.” Copyrightability Decision, 872 F. Supp. 2d at

997.

Oracle asserts that all of the trial court’s conclusions

regarding copyrightability are erroneous. Oracle argues

that its Java API packages are entitled to protection

under the Copyright Act because they are expressive and

could have been written and organized in any number of

ways to achieve the same functions. Specifically, Oracle

argues that the district court erred when it: (1) concluded

that each line of declaring code is uncopyrightable be-

cause the idea and expression have merged; (2) found the

declaring code uncopyrightable because it employs short

phrases; (3) found all aspects of the SSO devoid of protec-

tion as a “method of operation” under 17 U.S.C. § 102(b);

and (4) invoked Google’s “interoperability” concerns in the

copyrightability analysis. For the reasons explained

below, we agree with Oracle on each point.

1. Declaring Source Code

First, Oracle argues that the district court erred in

concluding that each line of declaring source code is

completely unprotected under the merger and short

phrases doctrines. Google responds that Oracle waived

its right to assert copyrightability based on the 7,000 lines

of declaring code by failing “to object to instructions and a

verdict form that effectively eliminated that theory from

the case.” Appellee Br. 67. Even if not waived, moreover,

Google argues that, because there is only one way to write

ORACLE AMERICA, INC. v. GOOGLE INC. 27

the names and declarations, the merger doctrine bars

copyright protection.

We find that Oracle did not waive arguments based

on Google’s literal copying of the declaring code. Prior to

trial, both parties informed the court that Oracle’s copy-

right infringement claims included the declarations of the

API elements in the Android class library source code.

See Oracle’s Statement of Issues Regarding Copyright,

Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D.

Cal. Apr. 12, 2012), ECF No. 899-1, at 3 (Oracle accuses

the “declarations of the API elements in the Android class

library source code and object code that implements the

37 API packages” of copyright infringement.); see also

Google’s Proposed Statement of Issues Regarding Copy-

right, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561

(N.D. Cal. Apr. 12, 2012), ECF No. 901, at 2 (Oracle

accuses the “declarations of the API elements in Android

class library source code and object code that implements

the 37 API packages.”).

While Google is correct that the jury instructions and

verdict form focused on the structure and organization of

the packages, we agree with Oracle that there was no

need for the jury to address copying of the declaring code

because Google conceded that it copied it verbatim.

Indeed, the district court specifically instructed the jury

that “Google agrees that it uses the same names and

declarations” in Android. Final Charge to the Jury at 10.

That the district court addressed the declaring code in

its post-jury verdict copyrightability decision further

confirms that the verbatim copying of declaring code

remained in the case. The court explained that the “iden-

tical lines” that Google copied into Android “are those

lines that specify the names, parameters and functionali-

ty of the methods and classes, lines called ‘declarations’ or

‘headers.’” Copyrightability Decision, 872 F. Supp. 2d at

979. The court specifically found that the declaring code

28 ORACLE AMERICA, INC. v. GOOGLE INC.

was not entitled to copyright protection under the merger

and short phrases doctrines. We address each in turn.

a. Merger

The merger doctrine functions as an exception to the

idea/expression dichotomy. It provides that, when there

are a limited number of ways to express an idea, the idea

is said to “merge” with its expression, and the expression

becomes unprotected. Altai, 982 F.2d at 707-08. As

noted, the Ninth Circuit treats this concept as an affirma-

tive defense to infringement. Ets-Hokin, 225 F.3d at

1082. Accordingly, it appears that the district court’s

merger analysis is irrelevant to the question of whether

Oracle’s API packages are copyrightable in the first

instance. Regardless of when the analysis occurs, we

conclude that merger does not apply on the record before

us.

Under the merger doctrine, a court will not protect a

copyrighted work from infringement if the idea contained

therein can be expressed in only one way. Satava v.

Lowry, 323 F.3d 805, 812 n.5 (9th Cir. 2003). For com-

puter programs, “this means that when specific [parts of

the code], even though previously copyrighted, are the

only and essential means of accomplishing a given task,

their later use by another will not amount to infringe-

ment.” Altai, 982 F.2d at 708 (citation omitted). We have

recognized, however, applying Ninth Circuit law, that the

“unique arrangement of computer program expression . . .

does not merge with the process so long as alternate

expressions are available.” Atari, 975 F.2d at 840.

In Atari, for example, Nintendo designed a program—

the 10NES—to prevent its video game system from ac-

cepting unauthorized game cartridges. 975 F.2d at 836.

Nintendo “chose arbitrary programming instructions and

arranged them in a unique sequence to create a purely

arbitrary data stream” which “serves as the key to unlock

the NES.” Id. at 840. Because Nintendo produced expert

ORACLE AMERICA, INC. v. GOOGLE INC. 29

testimony “showing a multitude of different ways to

generate a data stream which unlocks the NES console,”

we concluded that Nintendo’s specific choice of code did

not merge with the process. Id.

Here, the district court found that, “no matter how

creative or imaginative a Java method specification may

be, the entire world is entitled to use the same method

specification (inputs, outputs, parameters) so long as the

line-by-line implementations are different.” Copyrighta-

bility Decision, 872 F. Supp. 2d at 998. In its analysis, the

court identified the method declaration as the idea and

found that the implementation is the expression. Id.

(“The method specification is the idea. The method im-

plementation is the expression. No one may monopolize

the idea.”) (emphases in original). The court explained

that, under the rules of Java, a programmer must use the

identical “declaration or method header lines” to “declare

a method specifying the same functionality.” Id. at 976.

Because the district court found that there was only one

way to write the declaring code for each of the Java pack-

ages, it concluded that “the merger doctrine bars anyone

from claiming exclusive copyright ownership” of it. Id. at

998. Accordingly, the court held there could be “no copy-

right violation in using the identical declarations.” Id.

Google agrees with the district court that the imple-

menting code is the expression entitled to protection—not

the declaring code. Indeed, at oral argument, counsel for

Google explained that, “it is not our position that none of

Java is copyrightable. Obviously, Google spent two and a

half years . . . to write from scratch all of the implement-

ing code.” Oral Argument at 33:16. 5 Because it is undis-

5 It is undisputed that Microsoft and Apple devel-

oped mobile operating systems from scratch, using their

own array of software packages. When asked whether

Google could also copy all of Microsoft or Apple’s declaring

30 ORACLE AMERICA, INC. v. GOOGLE INC.

puted that Google wrote its own implementing code, the

copyrightability of the precise language of that code is not

at issue on appeal. Instead, our focus is on the declaring

code and structure of the API packages.

On appeal, Oracle argues that the district court:

(1) misapplied the merger doctrine; and (2) failed to focus

its analysis on the options available to the original au-

thor. We agree with Oracle on both points. First, we

agree that merger cannot bar copyright protection for any

lines of declaring source code unless Sun/Oracle had only

one way, or a limited number of ways, to write them. See

Satava, 323 F.3d at 812 n.5 (“Under the merger doctrine,

courts will not protect a copyrighted work from infringe-

ment if the idea underlying the copyrighted work can be

expressed in only one way, lest there be a monopoly on

the underlying idea.”). The evidence showed that Oracle

had “unlimited options as to the selection and arrange-

ment of the 7000 lines Google copied.” Appellant Br. 50.

Using the district court’s “java.lang.Math.max” example,

Oracle explains that the developers could have called it

any number of things, including “Math.maximum” or

“Arith.larger.” This was not a situation where Oracle was

selecting among preordained names and phrases to create

its packages. 6 As the district court recognized, moreover,

code—codes that obviously differ from those at issue

here—counsel for Google responded: “Yes, but only the

structure, sequence, and organization. Only the com-

mand structure—what you need to access the functions.

You’d have to rewrite all the millions of lines of code in

Apple or in Microsoft which is what Google did in An-

droid.” Oral Argument at 36:00.

6 In their brief as amici curiae in support of rever-

sal, Scott McNealy and Brian Sutphin—both former

executives at Sun who were involved in the development

of the Java platform—provide a detailed example of the

ORACLE AMERICA, INC. v. GOOGLE INC. 31

“the Android method and class names could have been

different from the names of their counterparts in Java

and still have worked.” Copyrightability Decision, 872 F.

Supp. 2d at 976. Because “alternative expressions [we]re

available,” there is no merger. See Atari, 975 F.2d at 840.

We further find that the district court erred in focus-

ing its merger analysis on the options available to Google

at the time of copying. It is well-established that copy-

rightability and the scope of protectable activity are to be

evaluated at the time of creation, not at the time of in-

fringement. See Apple Computer, Inc. v. Formula Int’l,

Inc., 725 F.2d 521, 524 (9th Cir. 1984) (quoting National

Commission on New Technological Uses of Copyrighted

Works, Final Report at 21 (1979) (“CONTU Report”)

(recognizing that the Copyright Act was designed “to

protect all works of authorship from the moment of their

fixation in any tangible medium of expression”)). The

focus is, therefore, on the options that were available to

Sun/Oracle at the time it created the API packages. Of

creative choices involved in designing a Java package.

Looking at the “java.text” package, they explain that it

“contains 25 classes, 2 interfaces, and hundreds of meth-

ods to handle text, dates, numbers, and messages in a

manner independent of natural human languages . . . .”

Br. of McNealy and Sutphin 14-15. Java’s creators had to

determine whether to include a java.text package in the

first place, how long the package would be, what elements

to include, how to organize that package, and how it

would relate to other packages. Id. at 16. This descrip-

tion of Sun’s creative process is consistent with the evi-

dence presented at trial. See Appellant Br. 12-13 (citing

testimony that it took years to write some of the Java

packages and that Sun/Oracle developers had to “wrestle

with what functions to include in the package, which to

put in other packages, and which to omit entirely”).

32 ORACLE AMERICA, INC. v. GOOGLE INC.

course, once Sun/Oracle created “java.lang.Math.max,”

programmers who want to use that particular package

have to call it by that name. But, as the court acknowl-

edged, nothing prevented Google from writing its own

declaring code, along with its own implementing code, to

achieve the same result. In such circumstances, the

chosen expression simply does not merge with the idea

being expressed. 7

It seems possible that the merger doctrine, when

properly analyzed, would exclude the three packages

identified by the district court as core packages from the

scope of actionable infringing conduct. This would be so if

the Java authors, at the time these packages were creat-

ed, had only a limited number of ways to express the

methods and classes therein if they wanted to write in the

Java language. In that instance, the idea may well be

merged with the expression in these three packages. 8

7 The district court did not find merger with respect

to the structure, sequence, and organization of Oracle’s

Java API packages. Nor could it, given the court’s recog-

nition that there were myriad ways in which the API

packages could have been organized. Indeed, the court

found that the SSO is original and that “nothing in the

rules of the Java language . . . required that Google

replicate the same groupings.” Copyrightability Decision,

872 F. Supp. 2d at 999. As discussed below, however, the

court nonetheless found that the SSO is an uncopyrighta-

ble “method of operation.”

8 At oral argument, counsel for Oracle was asked

whether we should view the three core packages “differ-

ently vis-à-vis the concept of a method of operation than

the other packages.” See Oral Argument at 7:43. He

responded: “I think not your Honor. I would view them

differently with respect to fair use . . . . It’s not that they

are more basic. It’s that there are just several methods,

ORACLE AMERICA, INC. v. GOOGLE INC. 33

Google did not present its merger argument in this way

below and does not do so here, however. Indeed, Google

does not try to differentiate among the packages for

purposes of its copyrightability analysis and does not

appeal the infringement verdict as to the packages. For

these reasons, we reject the trial court’s merger analysis.

b. Short Phrases

The district court also found that Oracle’s declaring

code consists of uncopyrightable short phrases. Specifical-

ly, the court concluded that, “while the Android method

and class names could have been different from the

names of their counterparts in Java and still have

worked, copyright protection never extends to names or

short phrases as a matter of law.” Copyrightability Deci-

sion, 872 F. Supp. 2d at 976.

The district court is correct that “[w]ords and short

phrases such as names, titles, and slogans” are not sub-

ject to copyright protection. 37 C.F.R. § 202.1(a). The

court failed to recognize, however, that the relevant

question for copyrightability purposes is not whether the

work at issue contains short phrases—as literary works

often do—but, rather, whether those phrases are creative.

See Soc’y of Holy Transfiguration Monastery, Inc. v.

that is, routines, within just those three packages that are

necessary to ‘speak the Java language.’ Nothing in the

other thirty-four packages is necessary in order to speak

in Java, so to speak.” Id. Counsel conceded, however,

that this issue “might go to merger. It might go to the

question whether someone—since we conceded that it’s

okay to use the language—if it’s alright to use the lan-

guage that there are certain things that the original

developers had to say in order to use that language,

arguably, although I still think it’s really a fair use analy-

sis.” Id.

34 ORACLE AMERICA, INC. v. GOOGLE INC.

Gregory, 689 F.3d 29, 52 (1st Cir. 2012) (noting that “not

all short phrases will automatically be deemed uncopy-

rightable”); see also 1 Melville B. Nimmer & David Nim-

mer, Nimmer on Copyright § 2.01[B] (2013) (“[E]ven a

short phrase may command copyright protection if it

exhibits sufficient creativity.”). And, by dissecting the

individual lines of declaring code at issue into short

phrases, the district court further failed to recognize that

an original combination of elements can be copyrightable.

See Softel, Inc. v. Dragon Med. & Scientific Commc’ns,

118 F.3d 955, 964 (2d Cir. 1997) (noting that, in Feist,

“the Court made quite clear that a compilation of non-

protectible elements can enjoy copyright protection even

though its constituent elements do not”).

By analogy, the opening of Charles Dickens’ A Tale of

Two Cities is nothing but a string of short phrases. Yet no

one could contend that this portion of Dickens’ work is

unworthy of copyright protection because it can be broken

into those shorter constituent components. The question

is not whether a short phrase or series of short phrases

can be extracted from the work, but whether the manner

in which they are used or strung together exhibits creativ-

ity.

Although the district court apparently focused on in-

dividual lines of code, Oracle is not seeking copyright

protection for a specific short phrase or word. Instead,

the portion of declaring code at issue is 7,000 lines, and

Google’s own “Java guru” conceded that there can be

“creativity and artistry even in a single method declara-

tion.” Joint Appendix (“J.A.”) 20,970. Because Oracle

“exercised creativity in the selection and arrangement” of

the method declarations when it created the API packages

and wrote the relevant declaring code, they contain pro-

tectable expression that is entitled to copyright protec-

tion. See Atari, 975 F.2d at 840; see also 17 U.S.C. §§ 101,

103 (recognizing copyright protection for “compilations”

which are defined as work that is “selected, coordinated,

ORACLE AMERICA, INC. v. GOOGLE INC. 35

or arranged in such a way that the resulting work as a

whole constitutes an original work of authorship”). Ac-

cordingly, we conclude that the district court erred in

applying the short phrases doctrine to find the declaring

code not copyrightable.

c. Scenes a Faire

The scenes a faire doctrine, which is related to the

merger doctrine, operates to bar certain otherwise crea-

tive expression from copyright protection. Apple Comput-

er, Inc. v. Microsoft Corp., 35 F.3d 1435, 1444 (9th Cir.

1994). It provides that “expressive elements of a work of

authorship are not entitled to protection against in-

fringement if they are standard, stock, or common to a

topic, or if they necessarily follow from a common theme

or setting.” Mitel, 124 F.3d at 1374. Under this doctrine,

“when certain commonplace expressions are indispensable

and naturally associated with the treatment of a given

idea, those expressions are treated like ideas and there-

fore [are] not protected by copyright.” Swirsky v. Carey,

376 F.3d 841, 850 (9th Cir. 2004). In the computer con-

text, “the scene a faire doctrine denies protection to pro-

gram elements that are dictated by external factors such

as ‘the mechanical specifications of the computer on which

a particular program is intended to run’ or ‘widely accept-

ed programming practices within the computer industry.’”

Softel, 118 F.3d at 963 (citation omitted).

The trial court rejected Google’s reliance on the scenes

a faire doctrine. It did so in a footnote, finding that

Google had failed to present evidence to support the claim

that either the grouping of methods within the classes or

the code chosen for them “would be so expected and

customary as to be permissible under the scenes a faire

doctrine.” Copyrightability Decision, 872 F. Supp. 2d at

999 n.9. Specifically, the trial court found that “it is

impossible to say on this record that all of the classes and

their contents are typical of such classes and, on this

36 ORACLE AMERICA, INC. v. GOOGLE INC.

record, this order rejects Google’s global argument based

on scenes a faire.” Id.

On appeal, Google refers to scenes a faire concepts

briefly, as do some amici, apparently contending that,

because programmers have become accustomed to and

comfortable using the groupings in the Java API packag-

es, those groupings are so commonplace as to be indispen-

sable to the expression of an acceptable programming

platform. As such, the argument goes, they are so associ-

ated with the “idea” of what the packages are accomplish-

ing that they should be treated as ideas rather than

expression. See Br. of Amici Curiae Rackspace US, Inc.,

et al. at 19-22.

Google cannot rely on the scenes a faire doctrine as an

alternative ground upon which we might affirm the

copyrightability judgment of the district court. This is so

for several reasons. First, as noted, like merger, in the

Ninth Circuit, the scenes a faire doctrine is a component

of the infringement analysis. “[S]imilarity of expression,

whether literal or non-literal, which necessarily results

from the fact that the common idea is only capable of

expression in more or less stereotyped form, will preclude

a finding of actionable similarity.” 4 Nimmer on Copy-

right § 13.03[B][3]. Thus, the expression is not excluded

from copyright protection; it is just that certain copying is

forgiven as a necessary incident of any expression of the

underlying idea. See Satava, 323 F.3d at 810 n.3 (“The

Ninth Circuit treats scenes a faire as a defense to in-

fringement rather than as a barrier to copyrightability.”).

Second, Google has not objected to the trial court’s

conclusion that Google failed to make a sufficient factual

record to support its contention that the groupings and

code chosen for the 37 Java API packages were driven by

external factors or premised on features that were either

commonplace or essential to the idea being expressed.

Google provides no record citations indicating that such a

ORACLE AMERICA, INC. v. GOOGLE INC. 37

showing was made and does not contend that the trial

court erred when it expressly found it was not. Indeed,

Google does not even make this argument with respect to

the core packages.

Finally, Google’s reliance on the doctrine below and

the amici reference to it here are premised on a funda-

mental misunderstanding of the doctrine. Like merger,

the focus of the scenes a faire doctrine is on the circum-

stances presented to the creator, not the copier. See Mitel,

124 F.3d at 1375 (finding error to the extent the trial

court discussed “whether external factors such as market

forces and efficiency considerations justified Iqtel’s copy-

ing of the command codes”). The court’s analytical focus

must be upon the external factors that dictated Sun’s

selection of classes, methods, and code—not upon what

Google encountered at the time it chose to copy those

groupings and that code. See id. “[T]he scenes a faire

doctrine identifies and excludes from protection against

infringement expression whose creation ‘flowed naturally

from considerations external to the author’s creativity.’”

Id. (quoting Nimmer § 13.03[F][3], at 13-131 (1997)). It is

this showing the trial court found Google failed to make,

and Google cites to nothing in the record which indicates

otherwise.

For these reasons, the trial court was correct to con-

clude that the scenes a faire doctrine does not affect the

copyrightability of either the declaring code in, or the SSO

of, the Java API packages at issue.

2. The Structure, Sequence, and Organization

of the API Packages

The district court found that the SSO of the Java API

packages is creative and original, but nevertheless held

that it is a “system or method of operation . . . and, there-

fore, cannot be copyrighted” under 17 U.S.C. § 102(b).

Copyrightability Decision, 872 F. Supp. 2d at 976-77. In

reaching this conclusion, the district court seems to have

38 ORACLE AMERICA, INC. v. GOOGLE INC.

relied upon language contained in a First Circuit decision:

Lotus Development Corp. v. Borland International, Inc.,

49 F.3d 807 (1st Cir. 1995), aff’d without opinion by

equally divided court, 516 U.S. 233 (1996). 9

In Lotus, it was undisputed that the defendant copied

the menu command hierarchy and interface from Lotus 1-

2-3, a computer spreadsheet program “that enables users

to perform accounting functions electronically on a com-

puter.” 49 F.3d at 809. The menu command hierarchy

referred to a series of commands—such as “Copy,” “Print,”

and “Quit”—which were arranged into more than 50

menus and submenus. Id. Although the defendant did

not copy any Lotus source code, it copied the menu com-

mand hierarchy into its rival program. The question

before the court was “whether a computer menu command

hierarchy is copyrightable subject matter.” Id.

Although it accepted the district court’s finding that

Lotus developers made some expressive choices in select-

ing and arranging the command terms, the First Circuit

found that the command hierarchy was not copyrightable

because, among other things, it was a “method of opera-

tion” under Section 102(b). In reaching this conclusion,

the court defined a “method of operation” as “the means

by which a person operates something, whether it be a

car, a food processor, or a computer.” Id. at 815. 10 Be-

cause the Lotus menu command hierarchy provided “the

means by which users control and operate Lotus 1-2-3,” it

9 The Supreme Court granted certiorari in Lotus,

but, shortly after oral argument, the Court announced

that it was equally divided and that Justice Stevens took

no part in the consideration or decision of the case. The

Court therefore left the First Circuit’s decision undis-

turbed. See Lotus, 516 U.S. at 233-34.

10 The Lotus majority cited no authority for this def-

inition of “method of operation.”

ORACLE AMERICA, INC. v. GOOGLE INC. 39

was deemed unprotectable. Id. For example, if users

wanted to copy material, they would use the “Copy”

command and the command terms would tell the comput-

er what to do. According to the Lotus court, the “fact that

Lotus developers could have designed the Lotus menu

command hierarchy differently is immaterial to the

question of whether it is a ‘method of operation.’” Id. at

816. (noting that “our initial inquiry is not whether the

Lotus menu command hierarchy incorporates any expres-

sion”). The court further indicated that, “[i]f specific

words are essential to operating something, then they are

part of a ‘method of operation’ and, as such, are unpro-

tectable.” Id.

On appeal, Oracle argues that the district court’s reli-

ance on Lotus is misplaced because it is distinguishable

on its facts and is inconsistent with Ninth Circuit law.

We agree. First, while the defendant in Lotus did not

copy any of the underlying code, Google concedes that it

copied portions of Oracle’s declaring source code verbatim.

Second, the Lotus court found that the commands at issue

there (copy, print, etc.) were not creative, but it is undis-

puted here that the declaring code and the structure and

organization of the API packages are both creative and

original. Finally, 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.

More importantly, however, the Ninth Circuit has not

adopted the court’s “method of operation” reasoning in

Lotus, and we conclude that it is inconsistent with bind-

ing precedent. 11 Specifically, we find that Lotus is incon-

11 As Oracle points out, the Ninth Circuit has cited

Lotus only one time, on a procedural issue. See Danjaq

40 ORACLE AMERICA, INC. v. GOOGLE INC.

sistent with Ninth Circuit case law recognizing that the

structure, sequence, and organization of a computer

program is eligible for copyright protection where it

qualifies as an expression of an idea, rather than the idea

itself. See Johnson Controls, 886 F.2d at 1175-76. And,

while the court in Lotus held “that expression that is part

of a ‘method of operation’ cannot be copyrighted,” 49 F.3d

at 818, this court—applying Ninth Circuit law—reached

the exact opposite conclusion, finding that copyright

protects “the expression of [a] process or method,” Atari,

975 F.2d at 839.

We find, moreover, that the hard and fast rule set

down in Lotus and employed by the district court here—

i.e., that elements which perform a function can never be

copyrightable—is at odds with the Ninth Circuit’s en-

dorsement of the abstraction-filtration-comparison analy-

sis discussed earlier. As the Tenth Circuit concluded in

expressly rejecting the Lotus “method of operation” analy-

sis, in favor of the Second Circuit’s abstraction-filtration-

comparison test, “although an element of a work may be

characterized as a method of operation, that element may

nevertheless contain expression that is eligible for copy-

right protection.” Mitel, 124 F.3d at 1372. Specifically,

the court found that Section 102(b) “does not extinguish

the protection accorded a particular expression of an idea

merely because that expression is embodied in a method

of operation at a higher level of abstraction.” Id.

Other courts agree that components of a program that

can be characterized as a “method of operation” may

LLC v. Sony Corp., 263 F.3d 942, 954 (9th Cir. 2001)

(citing Lotus for the proposition that delay “has been held

permissible, among other reasons, when it is necessitated

by the exhaustion of remedies through the administrative

process . . . when it is used to evaluate and prepare a

complicated claim”).

ORACLE AMERICA, INC. v. GOOGLE INC. 41

nevertheless be copyrightable. For example, the Third

Circuit rejected a defendant’s argument that operating

system programs are “per se” uncopyrightable because an

operating system is a “method of operation” for a comput-

er. Apple Computer, Inc. v. Franklin Computer Corp., 714

F.2d 1240, 1250-52 (3d Cir. 1983). The court distin-

guished between the “method which instructs the com-

puter to perform its operating functions” and “the

instructions themselves,” and found that the instructions

were copyrightable. Id. at 1250-51. In its analysis, the

court noted: “[t]hat the words of a program are used

ultimately in the implementation of a process should in no

way affect their copyrightability.” Id. at 1252 (quoting

CONTU Report at 21). The court focused “on whether the

idea is capable of various modes of expression” and indi-

cated that, “[i]f other programs can be written or created

which perform the same function as [i]n Apple’s operating

system program, then that program is an expression of

the idea and hence copyrightable.” Id. at 1253. Notably,

no other circuit has adopted the First Circuit’s “method of

operation” analysis.

Courts have likewise found that classifying a work as

a “system” does not preclude copyright for the particular

expression of that system. See Toro Co. v. R & R Prods.

Co., 787 F.2d 1208, 1212 (8th Cir. 1986) (rejecting the

district court’s decision that “appellant’s parts numbering

system is not copyrightable because it is a ‘system’” and

indicating that Section 102(b) does not preclude protec-

tion for the “particular expression” of that system); see

also Am. Dental Ass’n v. Delta Dental Plans Ass’n, 126

F.3d 977, 980 (7th Cir. 1997) (“A dictionary cannot be

called a ‘system’ just because new novels are written

using words, all of which appear in the dictionary. Nor is

word-processing software a ‘system’ just because it has a

command structure for producing paragraphs.”).

Here, the district court recognized that the SSO “re-

sembles a taxonomy,” but found that “it is nevertheless a

42 ORACLE AMERICA, INC. v. GOOGLE INC.

command structure, a system or method of operation—a

long hierarchy of over six thousand commands to carry

out pre-assigned functions.” Copyrightability Decision,

872 F. Supp. 2d at 999-1000. 12 In other words, the court

concluded that, although the SSO is expressive, it is not

copyrightable because it is also functional. The problem

with the district court’s approach is that computer pro-

grams are by definition functional—they are all designed

to accomplish some task. Indeed, the statutory definition

of “computer program” acknowledges that they function

“to bring about a certain result.” See 17 U.S.C. § 101

(defining a “computer program” as “a set of statements or

instructions to be used directly or indirectly in a computer

in order to bring about a certain result”). If we were to

accept the district court’s suggestion that a computer

program is uncopyrightable simply because it “carr[ies]

out pre-assigned functions,” no computer program is

protectable. That result contradicts Congress’s express

intent to provide copyright protection to computer pro-

grams, as well as binding Ninth Circuit case law finding

computer programs copyrightable, despite their utilitari-

an or functional purpose. Though the trial court did add

the caveat that it “does not hold that the structure, se-

quence and organization of all computer programs may be

stolen,” Copyrightability Decision, 872 F. Supp. 2d at

1002, it is hard to see how its method of operation analy-

sis could lead to any other conclusion.

While it does not appear that the Ninth Circuit has

addressed the precise issue, we conclude that a set of

commands to instruct a computer to carry out desired

12 This analogy by the district court is meaningful

because taxonomies, in varying forms, have generally

been deemed copyrightable. See, e.g., Practice Mgmt. Info.

Corp. v. Am. Med. Ass’n, 121 F.3d 516, 517-20 (9th Cir.

1997); Am. Dental, 126 F.3d at 978-81.

ORACLE AMERICA, INC. v. GOOGLE INC. 43

operations may contain expression that is eligible for

copyright protection. See Mitel, 124 F.3d at 1372. We

agree with Oracle that, under Ninth Circuit law, an

original work—even one that serves a function—is enti-

tled to copyright protection as long as the author had

multiple ways to express the underlying idea. Section

102(b) does not, as Google seems to suggest, automatically

deny copyright protection to elements of a computer

program that are functional. Instead, as noted, Sec-

tion 102(b) codifies the idea/expression dichotomy and the

legislative history confirms that, among other things,

Section 102(b) was “intended to make clear that the

expression adopted by the programmer is the copyrighta-

ble element in a computer program.” H.R. Rep. No. 1476,

94th Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N.

5659, 5670. Therefore, even if an element directs a com-

puter to perform operations, the court must nevertheless

determine whether it contains any separable expression

entitled to protection.

On appeal, Oracle does not—and concedes that it can-

not—claim copyright in the idea of organizing functions of

a computer program or in the “package-class-method”

organizational structure in the abstract. Instead, Oracle

claims copyright protection only in its particular way of

naming and organizing each of the 37 Java API packag-

es. 13 Oracle recognizes, for example, that it “cannot

copyright the idea of programs that open an internet

13 At oral argument, counsel for Oracle explained

that it “would never claim that anyone who uses a pack-

age-class-method manner of classifying violates our

copyright. We don’t own every conceivable way of organ-

izing, we own only our specific expression—our specific

way of naming each of these 362 methods, putting them

into 36 classes, and 20 subclasses.” Oral Argument at

16:44.

44 ORACLE AMERICA, INC. v. GOOGLE INC.

connection,” but “it can copyright the precise strings of

code used to do so, at least so long as ‘other language is

available’ to achieve the same function.” Appellant Reply

Br. 13-14 (citation omitted). Thus, Oracle concedes that

Google and others could employ the Java language—much

like anyone could employ the English language to write a

paragraph without violating the copyrights of other

English language writers. And, that Google may employ

the “package-class-method” structure much like authors

can employ the same rules of grammar chosen by other

authors without fear of infringement. What Oracle con-

tends is that, beyond that point, Google, like any author,

is not permitted to employ the precise phrasing or precise

structure chosen by Oracle to flesh out the substance of

its packages—the details and arrangement of the prose.

As the district court acknowledged, Google could have

structured Android differently and could have chosen

different ways to express and implement the functionality

that it copied. 14 Specifically, the court found that “the

14 Amici McNealy and Sutphin explain that “a quick

examination of other programming environments shows

that creators of other development platforms provide the

same functions with wholly different creative choices.”

Br. of McNealy and Sutphin 17. For example, in Java, a

developer setting the time zone would call the “setTime-

Zone” method within the “DateFormat” class of the ja-

va.text package. Id. Apple’s iOS platform, on the other

hand, “devotes an entire class to set the time zone in an

application—the ‘NSTimeZone’ class” which is in the

“Foundation framework.” Id. at 17-18 (noting that a

“framework is Apple’s terminology for a structure concep-

tually similar to Java’s ‘package’”). Microsoft provides

similar functionality with “an entirely different structure,

naming scheme, and selection.” Id. at 18 (“In its Windows

Phone development platform, Microsoft stores its time

ORACLE AMERICA, INC. v. GOOGLE INC. 45

very same functionality could have been offered in An-

droid without duplicating the exact command structure

used in Java.” Copyrightability Decision, 872 F. Supp. 2d

at 976. The court further explained that Google could

have offered the same functions in Android by “re-

arranging the various methods under different groupings

among the various classes and packages.” Id. The evi-

dence showed, moreover, that Google designed many of its

own API packages from scratch, and, thus, could have

designed its own corresponding 37 API packages if it

wanted to do so.

Given the court’s findings that the SSO is original and

creative, and that the declaring code could have been

written and organized in any number of ways and still

have achieved the same functions, we conclude that

Section 102(b) does not bar the packages from copyright

protection just because they also perform functions.

3. Google’s Interoperability Arguments

are Irrelevant to Copyrightability

Oracle also argues that the district court erred in in-

voking interoperability in its copyrightability analysis.

Specifically, Oracle argues that Google’s interoperability

arguments are only relevant, if at all, to fair use—not to

the question of whether the API packages are copyrighta-

ble. We agree.

In characterizing the SSO of the Java API packages

as a “method of operation,” the district court explained

that “[d]uplication of the command structure is necessary

for interoperability.” Copyrightability Decision, 872 F.

Supp. 2d at 977. The court found that, “[i]n order for at

zone programs in the ‘TimeZoneInfo’ class in its ‘Systems’

namespace (Microsoft’s version of a ‘package’ or ‘frame-

work’).”). Again, this is consistent with the evidence

presented at trial.

46 ORACLE AMERICA, INC. v. GOOGLE INC.

least some of [the pre-Android Java] code to run on An-

droid, Google was required to provide the same ja-

va.package.Class.method() command system using the

same names with the same ‘taxonomy’ and with the same

functional specifications.” Id. at 1000 (emphasis omitted).

And, the court concluded that “Google replicated what

was necessary to achieve a degree of interoperability—but

no more, taking care, as said before, to provide its own

implementations.” Id. In reaching this conclusion, the

court relied primarily on two Ninth Circuit decisions:

Sega Enterprises v. Accolade, Inc., 977 F.2d 1510 (9th Cir.

1992), and Sony Computer Entertainment, Inc. v. Con-

nectix, Corp., 203 F.3d 596 (9th Cir. 2000).

Both Sega and Sony are fair use cases in which copy-

rightability was addressed only tangentially. In Sega, for

example, Sega manufactured a video game console and

game cartridges that contained hidden functional pro-

gram elements necessary to achieve compatibility with

the console. Defendant Accolade: (1) reverse-engineered

Sega’s video game programs to discover the requirements

for compatibility; and (2) created its own games for the

Sega console. Sega, 977 F.2d at 1514-15. As part of the

reverse-engineering process, Accolade made intermediate

copies of object code from Sega’s console. Id. Although

the court recognized that the intermediate copying of

computer code may infringe Sega’s copyright, it concluded

that “disassembly of copyrighted object code is, as a

matter of law, a fair use of the copyrighted work if such

disassembly provides the only means of access to those

elements of the code that are not protected by copyright

and the copier has a legitimate reason for seeking such

access.” Id. at 1518. The court agreed with Accolade that

its copying was necessary to examine the unprotected

functional aspects of the program. Id. at 1520. And,

because Accolade had a legitimate interest in making its

cartridges compatible with Sega’s console, the court found

that Accolade’s intermediate copying was fair use.

ORACLE AMERICA, INC. v. GOOGLE INC. 47

Likewise, in Sony, the Ninth Circuit found that the

defendant’s reverse engineering and intermediate copying

of Sony’s copyrighted software program “was a fair use for

the purpose of gaining access to the unprotected elements

of Sony’s software.” Sony, 203 F.3d at 602. The court

explained that Sony’s software program contained unpro-

tected functional elements and that the defendant could

only access those elements through reverse engineering.

Id. at 603. The defendant used that information to create

a software program that let consumers play games de-

signed for Sony’s PlayStation console on their computers.

Notably, the defendant’s software program did not con-

tain any of Sony’s copyrighted material. Id. at 598.

The district court characterized Sony and Sega as

“close analogies” to this case. Copyrightability Decision,

872 F. Supp. 2d at 1000. According to the court, both

decisions “held that interface procedures that were neces-

sary to duplicate in order to achieve interoperability were

functional aspects not copyrightable under Section

102(b).” Id. The district court’s reliance on Sega and

Sony in the copyrightability context is misplaced, howev-

er.

As noted, both cases were focused on fair use, not cop-

yrightability. In Sega, for example, the only question was

whether Accolade’s intermediate copying was fair use.

The court never addressed the question of whether Sega’s

software code, which had functional elements, also con-

tained separable creative expression entitled to protec-

tion. Likewise, although the court in Sony determined

that Sony’s computer program had functional elements, it

never addressed whether it also had expressive elements.

Sega and Sony are also factually distinguishable because

the defendants in those cases made intermediate copies to

understand the functional aspects of the copyrighted

works and then created new products. See Sony, 203 F.3d

at 606-07; Sega, 977 F.2d at 1522-23. This is not a case

where Google reverse-engineered Oracle’s Java packages

48 ORACLE AMERICA, INC. v. GOOGLE INC.

to gain access to unprotected functional elements con-

tained therein. As the former Register of Copyrights of

the United States pointed out in his brief amicus curiae,

“[h]ad Google reverse engineered the programming pack-

ages to figure out the ideas and functionality of the origi-

nal, and then created its own structure and its own literal

code, Oracle would have no remedy under copyright

whatsoever.” Br. for Amicus Curiae Ralph Oman 29.

Instead, Google chose to copy both the declaring code and

the overall SSO of the 37 Java API packages at issue.

We disagree with Google’s suggestion that Sony and

Sega created an “interoperability exception” to copyright-

ability. See Appellee Br. 39 (citing Sony and Sega for the

proposition that “compatibility elements are not copy-

rightable under section 102(b)” (emphasis omitted)).

Although both cases recognized that the software pro-

grams at issue there contained unprotected functional

elements, a determination that some elements are unpro-

tected is not the same as saying that the entire work loses

copyright protection. To accept Google’s reading would

contradict Ninth Circuit case law recognizing that both

the literal and non-literal components of a software

program are eligible for copyright protection. See John-

son Controls, 886 F.2d at 1175. And it would ignore the

fact that the Ninth Circuit endorsed the abstraction-

filtration-comparison inquiry in Sega itself.

As previously discussed, a court must examine the

software program to determine whether it contains crea-

tive expression that can be separated from the underlying

function. See Sega, 977 F.2d at 1524-25. In doing so, the

court filters out the elements of the program that are

“ideas” as well as elements that are “dictated by consider-

ations of efficiency, so as to be necessarily incidental to

that idea; required by factors external to the program

itself.” Altai, 982 F.2d at 707.

ORACLE AMERICA, INC. v. GOOGLE INC. 49

To determine “whether certain aspects of an allegedly

infringed software are not protected by copyright law, the

focus is on external factors that influenced the choice of

the creator of the infringed product.” Dun & Bradstreet

Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d

197, 215 (3d Cir. 2002) (citing Altai, 982 F.2d at 714;

Mitel, 124 F.3d at 1375). The Second Circuit, for example,

has noted that programmers are often constrained in

their design choices by “extrinsic considerations” includ-

ing “the mechanical specifications of the computer on

which a particular program is intended to run” and “com-

patibility requirements of other programs with which a

program is designed to operate in conjunction.” Altai, 982

F.2d at 709-10 (citing 3 Melville B. Nimmer & David

Nimmer, Nimmer on Copyright § 13.01 at 13-66-71

(1991)). The Ninth Circuit has likewise recognized that:

(1) computer programs “contain many logical, structural,

and visual display elements that are dictated by . . .

external factors such as compatibility requirements and

industry demands”; and (2) “[i]n some circumstances,

even the exact set of commands used by the programmer

is deemed functional rather than creative for purposes of

copyright.” Sega, 977 F.2d at 1524 (internal citation

omitted).

Because copyrightability is focused on the choices

available to the plaintiff at the time the computer pro-

gram was created, the relevant compatibility inquiry asks

whether the plaintiff’s choices were dictated by a need to

ensure that its program worked with existing third-party

programs. Dun & Bradstreet, 307 F.3d at 215; see also

Atari, 975 F.2d at 840 (“External factors did not dictate

the design of the 10NES program.”). Whether a defend-

ant later seeks to make its program interoperable with

the plaintiff’s program has no bearing on whether the

software the plaintiff created had any design limitations

dictated by external factors. See Dun & Bradstreet, 307

F.3d at 215 (finding an expert’s testimony on interopera-

50 ORACLE AMERICA, INC. v. GOOGLE INC.

bility “wholly misplaced” because he “looked at externali-

ties from the eyes of the plagiarist, not the eyes of the

program’s creator”). Stated differently, the focus is on the

compatibility needs and programming choices of the party

claiming copyright protection—not the choices the de-

fendant made to achieve compatibility with the plaintiff’s

program. Consistent with this approach, courts have

recognized that, once the plaintiff creates a copyrightable

work, a defendant’s desire “to achieve total compatibil-

ity . . . is a commercial and competitive objective which

does not enter into the . . . issue of whether particular

ideas and expressions have merged.” Apple Computer,

714 F.2d at 1253.

Given this precedent, we conclude that the district

court erred in focusing its interoperability analysis on

Google’s desires for its Android software. See Copyrighta-

bility Decision, 872 F. Supp. 2d at 1000 (“Google replicat-

ed what was necessary to achieve a degree of

interoperability” with Java.). Whether Google’s software

is “interoperable” in some sense with any aspect of the

Java platform (although as Google concedes, certainly not

with the JVM) has no bearing on the threshold question of

whether Oracle’s software is copyrightable. It is the

interoperability and other needs of Oracle—not those of

Google—that apply in the copyrightability context, and

there is no evidence that when Oracle created the Java

API packages at issue it did so to meet compatibility

requirements of other pre-existing programs.

Google maintains on appeal that its use of the “Java

class and method names and declarations was ‘the only

and essential means’ of achieving a degree of interopera-

bility with existing programs written in the [Java lan-

guage].” Appellee Br. 49. Indeed, given the record

evidence that Google designed Android so that it would

not be compatible with the Java platform, or the JVM

specifically, we find Google’s interoperability argument

confusing. While Google repeatedly cites to the district

ORACLE AMERICA, INC. v. GOOGLE INC. 51

court’s finding that Google had to copy the packages so

that an app written in Java could run on Android, it cites

to no evidence in the record that any such app exists and

points to no Java apps that either pre-dated or post-dated

Android that could run on the Android platform. 15 The

compatibility Google sought to foster was not with Ora-

cle’s Java platform or with the JVM central to that plat-

form. Instead, Google wanted to capitalize on the fact

that software developers were already trained and experi-

enced in using the Java API packages at issue. The

district court agreed, finding that, as to the 37 Java API

packages, “Google believed Java application programmers

would want to find the same 37 sets of functionalities in

the new Android system callable by the same names as

used in Java.” Copyrightability Decision, 872 F. Supp. 2d

at 978. Google’s interest was in accelerating its develop-

ment process by “leverag[ing] Java for its existing base of

developers.” J.A. 2033, 2092. Although this competitive

objective might be relevant to the fair use inquiry, we

conclude that it is irrelevant to the copyrightability of

Oracle’s declaring code and organization of the API pack-

ages.

Finally, to the extent Google suggests that it was enti-

tled to copy the Java API packages because they had

15 During oral argument, Google’s counsel stated

that “a program written in the Java language can run on

Android if it’s only using packages within the 37. So if

I’m a developer and I have written a program, I’ve written

it in Java, I can stick an Android header on it and it will

run in Android because it is using the identical names of

the classes, methods, and packages.” Oral Argument at

31:31. Counsel did not identify any programs that use

only the 37 API packages at issue, however, and did not

attest that any such program would be useful. Nor did

Google cite to any record evidence to support this claim.

52 ORACLE AMERICA, INC. v. GOOGLE INC.

become the effective industry standard, we are unper-

suaded. Google cites no authority for its suggestion that

copyrighted works lose protection when they become

popular, and we have found none. 16 In fact, the Ninth

Circuit has rejected the argument that a work that later

becomes the industry standard is uncopyrightable. See

Practice Mgmt. Info. Corp. v. Am. Med. Ass’n, 121 F.3d

516, 520 n.8 (9th Cir. 1997) (noting that the district court

found plaintiff’s medical coding system entitled to copy-

right protection, and that, although the system had

become the industry standard, plaintiff’s copyright did not

prevent competitors “from developing comparative or

better coding systems and lobbying the federal govern-

ment and private actors to adopt them. It simply pre-

vents wholesale copying of an existing system.”). Google

was free to develop its own API packages and to “lobby”

programmers to adopt them. Instead, it chose to copy

16 Google argues that, in the same way a formerly

distinctive trademark can become generic over time, a

program element can lose copyright protection when it

becomes an industry standard. But “it is to be expected

that phrases and other fragments of expression in a

highly successful copyrighted work will become part of the

language. That does not mean they lose all protection in

the manner of a trade name that has become generic.”

Warner Bros., Inc. v. Am. Broadcasting Cos., 720 F.2d

231, 242 (2d Cir. 1983) (“No matter how well known a

copyrighted phrase becomes, its author is entitled to

guard against its appropriation to promote the sale of

commercial products.”). Notably, even when a patented

method or system becomes an acknowledged industry

standard with acquiescence of the patent owner, any

permissible use generally requires payment of a reasona-

ble royalty, which Google refused to do here. See general-

ly In re Innovatio IP Ventures, LLC, No. 11-C-9308, 2013

U.S. Dist. LEXIS 144061 (N.D. Ill. Sept. 27, 2013).

ORACLE AMERICA, INC. v. GOOGLE INC. 53

Oracle’s declaring code and the SSO to capitalize on the

preexisting community of programmers who were accus-

tomed to using the Java API packages. That desire has

nothing to do with copyrightability. For these reasons, we

find that Google’s industry standard argument has no

bearing on the copyrightability of Oracle’s work.

B. Fair Use

As noted, the jury hung on Google’s fair use defense,

and the district court declined to order a new trial given

its conclusion that the code and structure Google copied

were not entitled to copyright protection. On appeal,

Oracle argues that: (1) a remand to decide fair use “is

pointless”; and (2) this court should find, as a matter of

law, that “Google’s commercial use of Oracle’s work in a

market where Oracle already competed was not fair use.”

Appellant Br. 68.

Fair use is an affirmative defense to copyright in-

fringement and is codified in Section 107 of the Copyright

Act. Golan, 132 S. Ct. at 890 (“[T]he fair use defense, is

codified at 17 U.S.C. § 107.”). Section 107 permits use of

copyrighted work if it is “for purposes such as criticism,

comment, news reporting, teaching (including multiple

copies for classroom use), scholarship, or research.” 17

U.S.C. § 107. The fair use doctrine has been referred to

as “‘the most troublesome in the whole law of copyright.’”

Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1170 (9th

Cir. 2012) (quoting Dellar v. Samuel Goldwyn, Inc., 104

F.2d 661, 662 (2d Cir. 1939) (per curiam)). It both per-

mits and requires “courts to avoid rigid application of the

copyright statute when, on occasion, it would stifle the

very creativity which that law is designed to foster.”

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577

(1994) (quoting Stewart v. Abend, 495 U.S. 207, 236

(1990)).

“Section 107 requires a case-by-case determination

whether a particular use is fair, and the statute notes four

54 ORACLE AMERICA, INC. v. GOOGLE INC.

nonexclusive factors to be considered.” Harper & Row

Publishers, Inc. v. Nation Enters., 471 U.S. 539, 549

(1985). Those factors are: (1) “the purpose and character

of the use, including whether such use is of a commercial

nature or is for nonprofit educational purposes;” (2) “the

nature of the copyrighted work;” (3) “the amount and

substantiality of the portion used in relation to the copy-

righted work as a whole;” and (4) “the effect of the use

upon the potential market for or value of the copyrighted

work.” 17 U.S.C. § 107. The Supreme Court has ex-

plained that all of the statutory factors “are to be ex-

plored, and the results weighed together, in light of the

purpose[] of copyright,” which is “[t]o promote the Pro-

gress of Science and useful Arts.” Campbell, 510 U.S. at

578, 575 (internal citations omitted).

“Fair use is a mixed question of law and fact.” Harper

& Row, 471 U.S. at 560. Thus, while subsidiary and

controverted findings of fact must be reviewed for clear

error under Rule 52 of the Federal Rules of Civil Proce-

dure, the Ninth Circuit reviews the ultimate application

of those facts de novo. See Seltzer v. Green Day, Inc., 725

F.3d 1170, 1175 (9th Cir. 2013) (citing SOFA Entm’t, Inc.

v. Dodger Prods., Inc., 709 F.3d 1273, 1277 (9th Cir.

2013)). Where there are no material facts at issue and

“the parties dispute only the ultimate conclusions to be

drawn from those facts, we may draw those conclusions

without usurping the function of the jury.” Id. (citing

Fisher v. Dees, 794 F.2d 432, 436 (9th Cir. 1986)). Indeed,

the Supreme Court has specifically recognized that,

“[w]here the district court has found facts sufficient to

evaluate each of the statutory factors, an appellate court

‘need not remand for further factfinding . . . [but] may

conclude as a matter of law that [the challenged use]

[does] not qualify as a fair use of the copyrighted work.’”

Harper & Row, 471 U.S. at 560 (citation omitted).

Of course, the corollary to this point is true as well—

where there are material facts in dispute and those facts

ORACLE AMERICA, INC. v. GOOGLE INC. 55

have not yet been resolved by the trier of fact, appellate

courts may not make findings of fact in the first instance.

See Shawmut Bank, N.A. v. Kress Assocs., 33 F.3d 1477,

1504 (9th Cir. 1994) (“[W]e must avoid finding facts in the

first instance.”); see also Golden Bridge Tech., Inc. v.

Nokia, Inc., 527 F.3d 1318, 1323 (Fed. Cir. 2008) (“Appel-

late courts review district court judgments; we do not find

facts.”). Here, it is undisputed that neither the jury nor

the district court made findings of fact to which we can

refer in assessing the question of whether Google’s use of

the API packages at issue was a “fair use” within the

meaning of Section 107. Oracle urges resolution of the

fair use question by arguing that the trial court should

have decided the question as a matter of law based on the

undisputed facts developed at trial, and that we can do so

as well. Google, on the other hand, argues that many

critical facts regarding fair use are in dispute. It asserts

that the fact that the jury could not reach a resolution on

the fair use defense indicates that at least some presuma-

bly reasonable jurors found its use to be fair. And, Google

asserts that, even if it is true that the district court erred

in discussing concepts of “interoperability” when consider-

ing copyrightability, those concepts are still relevant to its

fair use defense. We turn first to a more detailed exami-

nation of fair use.

The first factor in the fair use inquiry involves “the

purpose and character of the use, including whether such

use is of a commercial nature or is for nonprofit educa-

tional purposes.” 17 U.S.C. § 107(1). This factor involves

two sub-issues: (1) “whether and to what extent the new

work is transformative,” Campbell, 510 U.S. at 579 (cita-

tion and internal quotation marks omitted); and

(2) whether the use serves a commercial purpose.

A use is “transformative” if it “adds something new,

with a further purpose or different character, altering the

first with new expression, meaning or message.” Id. The

critical question is “whether the new work merely super-

56 ORACLE AMERICA, INC. v. GOOGLE INC.

sede[s] the objects of the original creation . . . or instead

adds something new.” Id. (citations and internal quota-

tion marks omitted). This inquiry “may be guided by the

examples given in the preamble to § 107, looking to

whether the use is for criticism, or comment, or news

reporting, and the like.” Id. at 578-79. “The Supreme

Court has recognized that parodic works, like other works

that comment and criticize, are by their nature often

sufficiently transformative to fit clearly under the fair use

exception.” Mattel Inc. v. Walking Mountain Prods., 353

F.3d 792, 800 (9th Cir. 2003) (citing Campbell, 510 U.S. at

579).

Courts have described new works as “transformative”

when “the works use copy-righted material for purposes

distinct from the purpose of the original material.” Elvis

Presley Enters., Inc. v. Passport Video, 349 F.3d 622, 629

(9th Cir. 2003) (“Here, Passport’s use of many of the

television clips is transformative because they are cited as

historical reference points in the life of a remarkable

entertainer.”), overruled on other grounds by Flexible

Lifeline Sys., Inc. v. Precision Lift, Inc., 654 F.3d 989, 995

(9th Cir. 2011) (per curiam); see also Bouchat v. Baltimore

Ravens Ltd. P’ship, 619 F.3d 301, 309-10 (4th Cir. 2010)

(quoting A.V. ex rel. Vanderhyge v. iParadigms, LLC, 562

F.3d 630, 638 (4th Cir. 2009) (“[A] transformative use is

one that ‘employ[s] the quoted matter in a different man-

ner or for a different purpose from the original.’”)). “A use

is considered transformative only where a defendant

changes a plaintiff’s copyrighted work or uses the plain-

tiff’s copyrighted work in a different context such that the

plaintiff’s work is transformed into a new creation.”

Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165

(9th Cir. 2007) (quoting Wall Data Inc. v. L.A. County

Sheriff’s Dep’t, 447 F.3d 769, 778 (9th Cir. 2006), and

finding that Google’s use of thumbnail images in its

search engine was “highly transformative”).

ORACLE AMERICA, INC. v. GOOGLE INC. 57

A work is not transformative where the user “makes

no alteration to the expressive content or message of the

original work.” Seltzer, 725 F.3d at 1177; see also Wall

Data, 447 F.3d at 778 (“The Sheriff’s Department created

exact copies of RUMBA’s software. It then put those

copies to the identical purpose as the original software.

Such a use cannot be considered transformative.”); Monge,

688 F.3d at 1176 (finding that a magazine’s publication of

photographs of a secret celebrity wedding “sprinkled with

written commentary” was “at best minimally transforma-

tive” where the magazine “did not transform the photos

into a new work . . . or incorporate the photos as part of a

broader work”); Elvis Presley Enters., 349 F.3d at 629

(finding that use of copyrighted clips of Elvis’s television

appearances was not transformative where “some of the

clips [we]re played without much interruption, if any . . .

[and] instead serve[d] the same intrinsic entertainment

value that is protected by Plaintiffs’ copyrights.”). Where

the use “is for the same intrinsic purpose as [the copyright

holder’s] . . . such use seriously weakens a claimed fair

use.” Worldwide Church of God v. Phila. Church of God,

Inc., 227 F.3d 1110, 1117 (9th Cir. 2000) (quoting Weiss-

mann v. Freeman, 868 F.2d 1313, 1324 (2d Cir. 1989)).

Analysis of the first factor also requires inquiry into

the commercial nature of the use. Use of the copyrighted

work that is commercial “tends to weigh against a finding

of fair use.” Harper & Row, 471 U.S. at 562 (“The crux of

the profit/nonprofit distinction is not whether the sole

motive of the use is monetary gain but whether the user

stands to profit from exploitation of the copyrighted

material without paying the customary price.”). “[T]he

more transformative the new work, the less will be the

significance of other factors, like commercialism, that may

weigh against a finding of fair use.” Campbell, 510 U.S.

at 579.

The second factor—the nature of the copyrighted

work—“calls for recognition that some works are closer to

58 ORACLE AMERICA, INC. v. GOOGLE INC.

the core of intended copyright protection than others, with

the consequence that fair use is more difficult to establish

when the former works are copied.” Id. at 586. This

factor “turns on whether the work is informational or

creative.” Worldwide Church of God, 227 F.3d at 1118;

see also Harper & Row, 471 U.S. at 563 (“The law general-

ly recognizes a greater need to disseminate factual works

than works of fiction or fantasy.”). Creative expression

“falls within the core of the copyright’s protective purpos-

es.” Campbell, 510 U.S. at 586. Because computer pro-

grams have both functional and expressive components,

however, where the functional components are themselves

unprotected (because, e.g., they are dictated by considera-

tions of efficiency or other external factors), those ele-

ments should be afforded “a lower degree of protection

than more traditional literary works.” Sega, 977 F.2d at

1526. Thus, where the nature of the work is such that

purely functional elements exist in the work and it is

necessary to copy the expressive elements in order to

perform those functions, consideration of this second

factor arguably supports a finding that the use is fair.

The third factor asks the court to examine “the

amount and substantiality of the portion used in relation

to the copyrighted work as a whole.” 17 U.S.C. § 107(3).

Analysis of this factor is viewed in the context of the

copyrighted work, not the infringing work. Indeed, the

statutory language makes clear that “a taking may not be

excused merely because it is insubstantial with respect to

the infringing work.” Harper & Row, 471 U.S. at 565.

“As Judge Learned Hand cogently remarked, ‘no plagia-

rist can excuse the wrong by showing how much of his

work he did not pirate.’” Id. (quoting Sheldon v. Metro-

Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936)). In

contrast, “the fact that a substantial portion of the in-

fringing work was copied verbatim is evidence of the

qualitative value of the copied material, both to the origi-

nator and to the plagiarist who seeks to profit from mar-

ORACLE AMERICA, INC. v. GOOGLE INC. 59

keting someone else’s copyrighted expression.” Id. The

Ninth Circuit has recognized that, while “wholesale

copying does not preclude fair use per se, copying an

entire work militates against a finding of fair use.”

Worldwide Church of God, 227 F.3d at 1118 (internal

citation and quotation omitted). “If the secondary user

only copies as much as is necessary for his or her intended

use, then this factor will not weigh against him or her.”

Kelly v. Arriba Soft Corp., 336 F.3d 811, 820-21 (9th Cir.

2003). Under this factor, “attention turns to the persua-

siveness of a parodist’s justification for the particular

copying done, and the enquiry will harken back to the

first of the statutory factors . . . [because] the extent of

permissible copying varies with the purpose and character

of the use.” Campbell, 510 U.S. at 586-87.

The fourth and final factor focuses on “the effect of the

use upon the potential market for or value of the copy-

righted work.” Harper & Row, 471 U.S. at 566. This

factor reflects the idea that fair use “is limited to copying

by others which does not materially impair the marketa-

bility of the work which is copied.” Id. at 566-67. The

Supreme Court has said that this factor is “undoubtedly

the single most important element of fair use.” Id. at 566.

It requires that courts “consider not only the extent of

market harm caused by the particular actions of the

alleged infringer, but also whether unrestricted and

widespread conduct of the sort engaged in by the defend-

ant . . . would result in a substantially adverse impact on

the potential market for the original.” Campbell, 510 U.S.

at 590 (citation and quotation marks omitted). “Market

harm is a matter of degree, and the importance of this

factor will vary, not only with the amount of harm, but

also with the relative strength of the showing on the other

factors.” Id. at 590 n.21.

Oracle asserts that all of these factors support its po-

sition that Google’s use was not “fair use”—Google know-

ingly and illicitly copied a creative work to further its own

60 ORACLE AMERICA, INC. v. GOOGLE INC.

commercial purposes, did so verbatim, and did so to the

detriment of Oracle’s market position. These undisputa-

ble facts, according to Oracle, should end the fair use

inquiry. Oracle’s position is not without force. On many

of these points, Google does not debate Oracle’s character-

ization of its conduct, nor could it on the record evidence.

Google contends, however, that, although it admitted-

ly copied portions of the API packages and did so for what

were purely commercial purposes, a reasonable juror still

could find that: (1) Google’s use was transformative;

(2) the Java API packages are entitled only to weak

protection; (3) Google’s use was necessary to work within

a language that had become an industry standard; and

(4) the market impact on Oracle was not substantial.

On balance, we find that due respect for the limit of

our appellate function requires that we remand the fair

use question for a new trial. First, although it is undis-

puted that Google’s use of the API packages is commer-

cial, the parties disagree on whether its use is

“transformative.” Google argues that it is, because it

wrote its own implementing code, created its own virtual

machine, and incorporated the packages into a

smartphone platform. For its part, Oracle maintains that

Google’s use is not transformative because: (1) “[t]he same

code in Android . . . enables programmers to invoke the

same pre-programmed functions in exactly the same

way;” and (2) Google’s use of the declaring code and

packages does not serve a different function from Java.

Appellant Reply Br. 47. While Google overstates what

activities can be deemed transformative under a correct

application of the law, we cannot say that there are no

material facts in dispute on the question of whether

Google’s use is “transformative,” even under a correct

reading of the law. As such, we are unable to resolve this

issue on appeal.

ORACLE AMERICA, INC. v. GOOGLE INC. 61

Next, while we have concluded that it was error for

the trial court to focus unduly on the functional aspects of

the packages, and on Google’s competitive desire to

achieve commercial “interoperability” when deciding

whether Oracle’s API packages are entitled to copyright

protection, we expressly noted that these factors may be

relevant to a fair use analysis. While the trial court erred

in concluding that these factors were sufficient to over-

come Oracle’s threshold claim of copyrightability, reason-

able jurors might find that they are relevant to Google’s

fair use defense under the second and third factors of the

inquiry. See Sega, 977 F.2d at 1524-25 (discussing the

Second Circuit’s approach to “break[ing] down a computer

program into its component subroutines and sub-

subroutines and then identif[ying] the idea or core func-

tional element of each” in the context of the second fair

use factor: the nature of the copyrighted work). We find

this particularly true with respect to those core packages

which it seems may be necessary for anyone to copy if

they are to write programs in the Java language. And, it

may be that others of the packages were similarly essen-

tial components of any Java language-based program. So

far, that type of filtration analysis has not occurred.

Finally, as to market impact, the district court found

that “Sun and Oracle never successfully developed its own

smartphone platform using Java technology.” Copyright-

ability Decision, 872 F. Supp. 2d at 978. But Oracle

argues that, when Google copied the API packages, Oracle

was licensing in the mobile and smartphone markets, and

that Android’s release substantially harmed those com-

mercial opportunities as well as the potential market for a

Java smartphone device. Because there are material

facts in dispute on this factor as well, remand is neces-

sary.

Ultimately, we conclude that this is not a case in

which the record contains sufficient factual findings upon

which we could base a de novo assessment of Google’s

62 ORACLE AMERICA, INC. v. GOOGLE INC.

affirmative defense of fair use. Accordingly, we remand

this question to the district court for further proceedings.

On remand, the district court should revisit and revise its

jury instructions on fair use consistent with this opinion

so as to provide the jury with a clear and appropriate

picture of the fair use defense. 17

II. GOOGLE’S CROSS-APPEAL

Google cross-appeals from the portion of the district

court’s final judgment entered in favor of Oracle on its

claim for copyright infringement as to the nine lines of

17 Google argues that, if we allow it to retry its fair

use defense on remand, it is entitled to a retrial on in-

fringement as well. We disagree. The question of wheth-

er Google’s copying constituted infringement of a

copyrighted work is “distinct and separable” from the

question of whether Google can establish a fair use de-

fense to its copying. See Gasoline Prods. Co. v. Champlin

Refining Co., 283 U.S. 494, 500 (1931) (“Where the prac-

tice permits a partial new trial, it may not properly be

resorted to unless it clearly appears that the issue to be

retried is so distinct and separable from the others that a

trial of it alone may be had without injustice.”). Indeed,

we have emphasized more than once in this opinion the

extent to which the questions are separable, and the

confusion and error caused when they are blurred. The

issues are not “interwoven” and it would not create “con-

fusion and uncertainty” to reinstate the infringement

verdict and submit fair use to a different jury. Id. We

note, moreover, that, because Google only mentions this

point in passing, with no development of an argument in

support of it, under our case law, it has not been properly

raised. See SmithKline Beecham Corp. v. Apotex Corp.,

439 F.3d 1312, 1320 (Fed. Cir. 2006) (when a party pro-

vides no developed argument on a point, we treat that

argument as waived) (collecting cases).

ORACLE AMERICA, INC. v. GOOGLE INC. 63

rangeCheck code and the eight decompiled files. Final

Judgment, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-

3561 (N.D. Cal. June 20, 2012), ECF No. 1211. Specifical-

ly, Google appeals from the district court’s decisions:

(1) granting Oracle’s motion for JMOL of infringement as

to the eight decompiled Java files that Google copied into

Android; and (2) denying Google’s motion for JMOL with

respect to rangeCheck.

When reviewing a district court’s grant or denial of a

motion for JMOL, we apply the procedural law of the

relevant regional circuit, here the Ninth Circuit. Trading

Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1357 (Fed.

Cir. 2010). The Ninth Circuit reviews a district court’s

JMOL decision de novo, applying the same standard as

the district court. Mangum v. Action Collection Serv.,

Inc., 575 F.3d 935, 938 (9th Cir. 2009). To grant judg-

ment as a matter of law, the court must find that “the

evidence presented at trial permits only one reasonable

conclusion” and that “no reasonable juror could find in the

non-moving party’s favor.” Id. at 938-39 (citation and

internal quotation marks omitted).

Oracle explains that the eight decompiled files at is-

sue “contain security functions governing access to net-

work files” while rangeCheck “facilitates an important

sorting function, frequently called upon during the opera-

tion of Java and Android.” Oracle Response to Cross-

Appeal 60-61. At trial, Google conceded that it copied the

eight decompiled Java code files and the nine lines of code

referred to as rangeCheck into Android. Its only defense

was that the copying was de minimis. Accordingly, the

district court instructed the jury that, “[w]ith respect to

the infringement issues concerning the rangeCheck and

other similar files, Google agrees that the accused lines of

code and comments came from the copyrighted materials

but contends that the amounts involved were so negligible

as to be de minimis and thus should be excluded.” Final

Charge to the Jury (Phase One), Oracle Am., Inc. v.

64 ORACLE AMERICA, INC. v. GOOGLE INC.

Google, Inc., No. 3:10-cv-3561 (N.D. Cal. Apr. 30, 2012),

ECF No. 1018, at 14.

Although the jury found that Google infringed Ora-

cle’s copyright in the nine lines of code comprising

rangeCheck, it returned a noninfringement verdict as to

eight decompiled security files. But because the trial

testimony was that Google’s use of the decompiled files

was significant—and there was no testimony to the con-

trary—the district court concluded that “[n]o reasonable

jury could find that this copying was de minimis.” Order

Granting JMOL on Decompiled Files, 2012 U.S. Dist.

LEXIS 66417, at *6. As such, the court granted Oracle’s

motion for JMOL of infringement as to the decompiled

security files.

On appeal, Google maintains that its copying of

rangeCheck and the decompiled security files was de

minimis and thus did not infringe any of Oracle’s copy-

rights. According to Google, the district court should

have denied Oracle’s motion for JMOL “because substan-

tial evidence supported the jury’s verdict that Google’s use

of eight decompiled test files was de minimis.” Cross-

Appellant Br. 76. Google further argues that the court

should have granted its motion for JMOL as to

rangeCheck because the “trial evidence revealed that the

nine lines of rangeCheck code were both quantitatively

and qualitatively insignificant in relation to the [Java]

platform.” Id. at 78.

In response, Oracle argues that the Ninth Circuit does

not recognize a de minimis defense to copyright infringe-

ment and that, even if it does, we should affirm the judg-

ments of infringement on grounds that Google’s copying

was significant. Because we agree with Oracle on its

second point, we need not address the first, except to note

that there is some conflicting Ninth Circuit precedent on

the question of whether there is a free-standing de mini-

mis defense to copyright infringement or whether the

ORACLE AMERICA, INC. v. GOOGLE INC. 65

substantiality of the alleged copying is best addressed as

part of a fair use defense. Compare Norse v. Henry Holt &

Co., 991 F.2d 563, 566 (9th Cir. 1993) (indicating that

“even a small taking may sometimes be actionable” and

the “question of whether a copying is substantial enough

to be actionable may be best resolved through the fair use

doctrine”), with Newton v. Diamond, 388 F.3d 1189, 1192-

93 (9th Cir. 2003) (“For an unauthorized use of a copy-

righted work to be actionable, the use must be significant

enough to constitute infringement. This means that even

where the fact of copying is conceded, no legal conse-

quences will follow from that fact unless the copying is

substantial.”) (internal citation omitted)). 18

Even assuming that the Ninth Circuit recognizes a

stand-alone de minimis defense to copyright infringement,

however, we conclude that: (1) the jury reasonably found

that Google’s copying of the rangeCheck files was more

than de minimis; and (2) the district court correctly

concluded that the defense failed as a matter of law with

respect to the decompiled security files.

First, the unrebutted testimony at trial revealed that

rangeCheck and the decompiled security files were signif-

icant to both Oracle and Google. Oracle’s expert, Dr. John

Mitchell, testified that Android devices call the

18 At least one recent district court decision has rec-

ognized uncertainty in Ninth Circuit law on this point.

See Brocade Commc’ns Sys. v. A10 Networks, Inc., No. 10-

cv-3428, 2013 U.S. Dist. LEXIS 8113, at *33 (N.D. Cal.

Jan. 10, 2013) (“The Ninth Circuit has been unclear about

whether the de minimis use doctrine serves as an affirma-

tive defense under the Copyright Act’s fair use exceptions

or whether the doctrine merely highlights plaintiffs’

obligation to show that ‘the use must be significant

enough to constitute infringement.’”) (citing Newton, 388

F.2d at 1193; Norse, 991 F.2d at 566).

66 ORACLE AMERICA, INC. v. GOOGLE INC.

rangeCheck function 2,600 times just in powering on the

device. Although Google argues that the eight decompiled

files were insignificant because they were used only to

test the Android platform, Dr. Mitchell testified that

“using the copied files even as test files would have been

significant use” and the district court specifically found

that “[t]here was no testimony to the contrary.” Order

Granting JMOL on Decompiled Files, 2012 U.S. Dist.

LEXIS 66417, at *6. Given this testimony, a reasonable

jury could not have found Google’s copying de minimis.

Google emphasizes that the nine lines of rangeCheck

code “represented an infinitesimal percentage of the 2.8

million lines of code in the 166 Java packages—let alone

the millions of lines of code in the entire [Java] platform.”

Google Cross-Appeal Br. 78-79. To the extent Google is

arguing that a certain minimum number of lines of code

must be copied before a court can find infringement, that

argument is without merit. See Baxter v. MCA, Inc., 812

F.2d 421, 425 (9th Cir. 1987) (“[N]o bright line rule exists

as to what quantum of similarity is permitted.”). And,

given the trial testimony that both rangeCheck and the

decompiled security files are qualitatively significant and

Google copied them in their entirety, Google cannot show

that the district court erred in denying its motion for

JMOL.

We have considered Google’s remaining arguments

and find them unpersuasive. Accordingly, we affirm both

of the JMOL decisions at issue in Google’s cross-appeal.

III. GOOGLE’S POLICY-BASED ARGUMENTS

Many of Google’s arguments, and those of some amici,

appear premised on the belief that copyright is not the

correct legal ground upon which to protect intellectual

property rights to software programs; they opine that

patent protection for such programs, with its insistence on

non-obviousness, and shorter terms of protection, might

be more applicable, and sufficient. Indeed, the district

ORACLE AMERICA, INC. v. GOOGLE INC. 67

court’s method of operation analysis seemed to say as

much. Copyrightability Decision, 872 F. Supp. 2d at 984

(stating that this case raises the question of “whether the

copyright holder is more appropriately asserting an

exclusive right to a functional system, process, or method

of operation that belongs in the realm of patents, not

copyrights”). Google argues that “[a]fter Sega, developers

could no longer hope to protect [software] interfaces by

copyright . . . Sega signaled that the only reliable means

for protecting the functional requirements for achieving

interoperability was by patenting them.” Appellee Br. 40

(quoting Pamela Samuelson, Are Patents on Interfaces

Impeding Interoperability? 93 Minn. L. Rev. 1943, 1959

(2009)). And, Google relies heavily on articles written by

Professor Pamela Samuelson, who has argued that “it

would be best for a commission of computer program

experts to draft a new form of intellectual property law for

machine-readable programs.” Pamela Samuelson,

CONTU Revisited: The Case Against Copyright Protection

for Computer Programs in Machine-Readable Form, 1984

Duke L.J. 663, 764 (1984). Professor Samuelson has more

recently argued that “Altai and Sega contributed to the

eventual shift away from claims of copyright in program

interfaces and toward reliance on patent protection.

Patent protection also became more plausible and attrac-

tive as the courts became more receptive to software

patents.” Samuelson, 93 Minn. L. Rev. at 1959.

Although Google, and the authority on which it relies,

seem to suggest that software is or should be entitled to

protection only under patent law—not copyright law—

several commentators have recently argued the exact

opposite. See Technology Quarterly, Stalking

Trolls, ECONOMIST, Mar. 8, 2014, http://www.economist.

com/news/technology-quarterly/21598321-intellectual-

property-after-being-blamed-stymying-innovation-

america-vague (“[M]any innovators have argued that the

electronics and software industries would flourish if

68 ORACLE AMERICA, INC. v. GOOGLE INC.

companies trying to bring new technology (software

innovations included) to market did not have to worry

about being sued for infringing thousands of absurd

patents at every turn. A perfectly adequate means of

protecting and rewarding software developers for their

ingenuity has existed for over 300 years. It is called

copyright.”); Timothy B. Lee, Will the Supreme Court save

us from software patents?, WASH. POST, Feb. 26, 2014, 1:13

PM, http://www.washingtonpost.com/blogs/the-switch/wp/

2014/02/26/will-the-supreme-court-save-us-from-software-

patents/ (“If you write a book or a song, you can get copy-

right protection for it. If you invent a new pill or a better

mousetrap, you can get a patent on it. But for the last

two decades, software has had the distinction of being

potentially eligible for both copyright and patent protec-

tion. Critics say that’s a mistake. They argue that the

complex and expensive patent system is a terrible fit for

the fast-moving software industry. And they argue that

patent protection is unnecessary because software innova-

tors already have copyright protection available.”).

Importantly for our purposes, the Supreme Court has

made clear that “[n]either the Copyright Statute nor any

other says that because a thing is patentable it may not

be copyrighted.” Mazer v. Stein, 347 U.S. 201, 217 (1954).

Indeed, the thrust of the CONTU Report is that copyright

is “the most suitable mode of legal protection for computer

software.” Peter S. Menell, An Analysis of the Scope of

Copyright Protection for Application Programs, 41 Stan.

L. Rev. 1045, 1072 (1989); see also CONTU Report at 1

(recommending that copyright law be amended “to make

it explicit that computer programs, to the extent that they

embody an author’s original creation, are proper subject

matter of copyright”). Until either the Supreme Court or

Congress tells us otherwise, we are bound to respect the

Ninth Circuit’s decision to afford software programs

protection under the copyright laws. We thus decline any

ORACLE AMERICA, INC. v. GOOGLE INC. 69

invitation to declare that protection of software programs

should be the domain of patent law, and only patent law.

CONCLUSION

For the foregoing reasons, we conclude that the de-

claring code and the structure, sequence, and organiza-

tion of the 37 Java API packages at issue are entitled to

copyright protection. We therefore reverse the district

court’s copyrightability determination with instructions to

reinstate the jury’s infringement verdict. Because the

jury hung on fair use, we remand Google’s fair use defense

for further proceedings consistent with this decision.

With respect to Google’s cross-appeal, we affirm the

district court’s decisions: (1) granting Oracle’s motion for

JMOL as to the eight decompiled Java files that Google

copied into Android; and (2) denying Google’s motion for

JMOL with respect to the rangeCheck function. Accord-

ingly, we affirm-in-part, reverse-in-part, and remand for

further proceedings.

AFFIRMED-IN-PART, REVERSED-IN-PART,

AND REMANDED