Amicus Curiae Brief — Google LLC, Petitioner v. Oracle America, Inc.

Supreme Court briefJan 13, 2020

Ask Donna

What actually matters in this document.

Text

No. 18-956

================================================================================================================

In The

Supreme Court of the United States

-----------------------------------------------------------------GOOGLE LLC,

Petitioner,

ORACLE AMERICA, INC.,

Respondent.

-----------------------------------------------------------------On Writ Of Certiorari To The

United States Court Of Appeals

For The Federal Circuit

-----------------------------------------------------------------BRIEF OF 72 INTELLECTUAL

PROPERTY SCHOLARS AS AMICI

CURIAE IN SUPPORT OF PETITIONER

-----------------------------------------------------------------PAMELA SAMUELSON

UNIVERSITY OF CALIFORNIA,

BERKELEY, SCHOOL OF LAW

892 Simon Hall

Berkeley, CA 94720

CATHERINE CRUMP

Counsel of Record

SAMUELSON LAW,

TECHNOLOGY & PUBLIC

POLICY CLINIC

UNIVERSITY OF CALIFORNIA,

BERKELEY, SCHOOL OF LAW

353 Boalt Hall

Berkeley, CA 94720

(510) 292-6860

ccrump@law.berkeley.edu

================================================================================================================

COCKLE LEGAL BRIEFS (800) 225-6964

WWW.COCKLELEGALBRIEFS.COM

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES .................................

INTEREST OF AMICI CURIAE .........................

SUMMARY OF ARGUMENT ..............................

ARGUMENT ........................................................

This Court’s Precedents, the Text of the

Require the Exclusion of Program Interfaces from Copyright’s Scope ......................

A. This Court Originated the Exclusion of

Systems, Methods, and Their Constituent Elements from the Scope of Copyright Protection ....................................

B. Congress Codified the Well-Established

Exclusion of Systems and Methods in

§ 102(b) ................................................. 11

C. The Federal Circuit’s Oracle Decision Ignored the § 102(b) System/Method Exclusions ..................................................... 12

1. The Method and System Exclusions

of § 102(b) Avert Patent/Copyright

Overlaps .......................................... 14

2. Unprotectable Elements in Computer

Programs Must Be Filtered Out Before Assessing Infringement .............. 15

TABLE OF CONTENTS—Continued

Page

3. Methods and Systems Are Part of

Program Structure, Sequence, and

Organization, so SSO Obscures Rather Than Clarifies Expressive Aspects of Software ............................. 16

D. Key Post-1976 Act Decisions Follow

Baker in Excluding Methods, Systems,

and Their Constituent Elements from

E. Consistent with Baker and § 102(b),

Program Interfaces Should Be Considered Unprotectable Procedures, Methods, or Systems .................................... 21

II.

The Federal Circuit’s Merger Analysis Is

Irreconcilable with Baker and Other Persuasive Decisions ....................................... 22

A. The Federal Circuit’s Analysis of the

Merger Doctrine Is at Odds with Baker

in Three Key Respects .......................... 24

B. The Merger Doctrine Provides a Sound

Basis for Holding That Program Interfaces That Enable Compatibility Are

Uncopyrightable ................................... 27

C. The Federal Circuit Ignored the District

Court’s Fact Findings That Supported

Its Holding That the Interfaces at Issue

Were Unprotectable Under the Merger

Doctrine................................................ 31

iii

TABLE OF CONTENTS—Continued

Page

D. The District Court Properly Held That

Names and Short Phrases Are Not Protectable by Copyright ........................... 32

CONCLUSION..................................................... 34

APPENDIX: List of Amici ..........................................1a

TABLE OF AUTHORITIES

Page

CASES

Aldrich v. Remington Rand, Inc., 52 F. Supp. 732

(N.D. Tex. 1942) .......................................................11

Alice Corp. v. CLS Bank International, 573 U.S.

208 (2014) ................................................................16

Apple Computer, Inc. v. Franklin Computer

Corp., 714 F.2d 1240 (3d Cir. 1983)................... 28, 29

Arica Inst., Inc. v. Palmer, 970 F.2d 1067 (2d Cir.

1992) ........................................................................22

Atari Games Corp. v. Nintendo of Am., Inc., 975

F.2d 832 (Fed. Cir. 1992) ......................... 3, 14, 15, 29

ATC Distribution Group v. Whatever It Takes

Transmissions & Parts, Inc., 402 F.3d 700 (6th

Cir. 2005) .................................................................33

Baker v. Selden, 101 U.S. 99 (1880) .................... passim

Bateman v. Mnemonics, Inc., 79 F.3d 1532 (11th

Cir. 1996) ............................................................. 4, 30

Bikram’s Yoga College of India, L.P. v. Evolation

Yoga, LLC, 803 F.3d 1032 (9th Cir. 2015) ......... 17, 18

Brief English Systems, Inc. v. Owen, 48 F.2d 555

(2d Cir. 1931) ...........................................................11

Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d

693 (2d Cir. 1992) ............................................ passim

Eldred v. Ashcroft, 537 U.S. 186 (2003)......................13

Griggs v. Perrin, 49 F. 15 (C.C.N.D.N.Y. 1892) ...........11

Ho v. Taflove, 648 F.3d 489 (7th Cir. 2011) ............. 2, 18

TABLE OF AUTHORITIES—Continued

Page

Hutchins v. Zoll Med. Corp., 492 F.3d 1377 (Fed.

Cir. 2007) ...................................................................3

King v. Burwell, 135 S. Ct. 2480 (2015) ............... 12, 13

Lexmark Int’l, Inc. v. Static Control Components,

Inc., 387 F.3d 522 (6th Cir. 2004) ................ 29, 30, 33

Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d

807 (1st Cir. 1995), aff’d by an equally divided Court, 516 U.S. 233 (1996) (per curiam) .............................................................. 19, 20, 21

Mazer v. Stein, 347 U.S. 201 (1954) ............................15

MiTek Holdings, Inc. v. Arce Eng’g Co., 89 F.3d

1548 (11th Cir. 1996) .................................................3

Mitel v. Iqtel, 124 F.3d 1366 (10th Cir. 1997) .............33

Morrissey v. Procter & Gamble Co., 379 F.2d 675

(1st Cir. 1967) ..........................................................25

Palmer v. Braun, 287 F.3d 1325 (11th Cir. 2002) .......18

Perris v. Hexamer, 99 U.S. 674 (1879) ...................... 6, 7

Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510

(9th Cir. 1992).................................................. passim

Sony Computer Entm’t, Inc. v. Connectix Corp.,

203 F.3d 596 (9th Cir. 2000) ....................................19

Southco, Inc. v. Kanebridge Corp., 390 F.3d 276

(3d Cir. 2004) (en banc) ..................................... 32, 33

Stewart v. Abend, 495 U.S. 207 (1990)........................14

TABLE OF AUTHORITIES—Continued

Page

TrafFix Devices, Inc. v. Marketing Displays, Inc.,

532 U.S. 23 (2001) ...................................................25

Veeck v. Southern Bldg. Code Cong. Int’l, 293

F.3d 791 (5th Cir. 2002) (en banc)...........................26

CONSTITUTIONAL PROVISIONS

U.S. Const. art. I, § 8, cl. 8...........................................22

STATUTES

17 U.S.C. § 102(b) ................................................ passim

RULES

37 C.F.R. § 202.1 ................................................... 33, 34

OTHER AUTHORITIES

Brief Amici Curiae of American Committee for

Interoperable Systems (ACIS) and Computer

& Communications Association in Support of

Respondent, Lotus Dev. Corp. v. Borland Int’l,

Inc., 516 U.S. 233 (1996) (No. 94-2003)............... 6, 22

BSA Foundation, Software: Growing US Jobs

and the GDP, https://software.org/wp-content/

uploads/2019SoftwareJobs.pdf .................................1

before the Subcomm. on Patents, Trademarks,

& Copyrights of the S. Comm. on the Judiciary, 90th Cong. (1967) (statement of Arthur R.

Miller) ......................................................................14

vii

TABLE OF AUTHORITIES—Continued

Page

Paul Goldstein, Goldstein on Copyright (2015) .........27

H.R. Rep. No. 94-1476 (1976) .....................................13

National Commission on New Technological

Uses of Copyrighted Works, Final Report

(1979) ................................................................. 30, 31

Melville B. Nimmer & David Nimmer, Nimmer

on Copyright (2019) .................................................27

S. Rep. No. 94-473 (1975) ............................................13

Pamela Samuelson, Reconceptualizing Copyright’s Merger Doctrine, 63 J. Copyright Soc’y

U.S.A. 417 (2016) .....................................................22

Pamela Samuelson, The Story of Baker v. Selden: Sharpening the Distinction Between

Authorship and Invention, in Intellectual

Property Stories (Rochelle Cooper Dreyfuss &

Jane C. Ginsburg eds. 2005) ............................... 7, 10

Pamela Samuelson, Why Copyright Law Excludes Systems and Processes from the Scope

of Its Protection, 85 Tex. L. Rev. 1921 (2007) .... 11, 14

U.S. Copyright Office, Circular 33, Works Not

Protected by Copyright (2017), https://www.

U.S. Copyright Office, Circular Update Guide,

https://www.copyright.gov/circs/circular-updateguide.pdf ..................................................................34

U.S. Copyright Office, Compendium of U.S. Copyright Office Practices (3d ed. 2015) .........................27

INTEREST OF AMICI CURIAE

Amici curiae (listed in Appendix A) are scholars of

intellectual property law.1 Amici’s sole interest in this

case lies in our concern for the proper application of

traditional principles of copyright law to computer programs. The Federal Circuit’s copyrightability ruling in

Oracle misconstrued the text of the Copyright Act, this

Court’s rulings as well as software copyright case law

persuasively establishing that interfaces that enable

compatibility among programs are unprotectable by

of this $845 billion industry.2 Amici respectfully urge

this Court to reverse the Federal Circuit’s decision.

------------------------------------------------------------------

SUMMARY OF ARGUMENT

Until the Court of Appeals for the Federal Circuit’s

2014 Oracle decision, software developers felt free to

compete and innovate in the development of compatible software because major decisions from the Courts

Pursuant to Supreme Court Rule 37, counsel for amici represent that they authored this brief in its entirety and that none

of the parties or their counsel, nor any other person or entity other

than amici or their counsel, made a monetary contribution intended to fund the preparation or submission of this brief. Counsel for petitioner gave blanket consent to the filing of amicus

briefs, counsel for respondent has consented in writing to the filing of this brief, and both parties received timely notice of amici’s

intent to file this brief.

See BSA Foundation, Software: Growing US Jobs and the

GDP, https://software.org/wp-content/uploads/2019SoftwareJobs.pdf

(based on 2018 data).

of Appeals for the Second and Ninth Circuits had established that copyright law does not protect software

interfaces that enable the development of compatible

programs. These cases and their progeny recognized

that unlike conventional literary works, computer

programs are highly utilitarian. They embody many

making infringement determinations. Programs consequently receive a relatively “thin” scope of copyright

protection to ensure that subsequent programmers can

freely reuse unprotectable elements in developing

their own programs. As a matter of copyright law, the

pro-compatibility decisions are sound as they facilitate

fair competition by those who write new code while

preserving copyright’s role in protecting software from

piracy and other wrongful appropriations.

The Federal Circuit’s 2014 Oracle decision was a

radical departure from these precedents and directly

contradicts their rulings. It adopted an unduly narrow

view of this Court’s ruling in Baker v. Selden, 101 U.S.

99 (1880), which excluded methods, systems, and their

constituent elements from copyright’s scope. It ignored

Congress’ codification of the method/system exclusions. It misconstrued the case law properly interpreting those exclusions in relation to program interfaces.3

The District Court relied on both the § 102(b) method/

system exclusions and the merger doctrine in its analysis of the

copyrightability issue. This practice is common. Once an author

devises a particular method/system, there may be relatively few

ways to express it. See, e.g., Ho v. Taflove, 648 F.3d 489, 497-99

(7th Cir. 2011) (analyzing the copyrightability of a scientific

The Federal Circuit also misapplied the merger doctrine and case law persuasively holding that interfaces

that enable compatibility are unprotectable by copyright law. Because of the Federal Circuit’s numerous

errors in analyzing Google’s copyrightability defense,

this Court should overturn its ruling. Programmers

should have to write their own implementation code,

as Google did, but interfaces that enable compatibility

should be free from copyright restrictions.

------------------------------------------------------------------

ARGUMENT

This Court’s Precedents, the Text of the Copyright Act, and Sound Copyright Policy Require the Exclusion of Program Interfaces

From Copyright’s Scope.

Freedom to compete and innovate in the development of compatible software was first recognized in

the Second Circuit’s landmark decision in Computer

Associates International, Inc. v. Altai, Inc., 982 F.2d 693

(2d Cir. 1992). It held that interfaces of computer

model and equation under § 102(b) and the merger doctrine);

Hutchins v. Zoll Med. Corp., 492 F.3d 1377, 1383-85 (Fed. Cir.

2007) (analyzing the copyrightability of the process of CPR and

standard instructions for performing that process under § 102(b)

and merger); MiTek Holdings, Inc. v. Arce Eng’g Co., Inc., 89 F.3d

1548, 1556 n.19, 1557 n.20 (11th Cir. 1996) (analyzing application

of copyright to a command tree structure under § 102(b) and merger); Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832,

839-40 (Fed. Cir. 1992) (analyzing the copyrightability of a

data stream for unlocking a console under both § 102(b) and

merger).

programs that enable compatibility are unprotectable

by copyright law, id. at 710, so Altai did not infringe by

reimplementing the same interface as Computer Associates in its competing scheduling program. Id. at 715.

Later that year the Ninth Circuit in Sega Enterprises,

Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992), citing approvingly to Altai, decided that the functional

requirements for achieving compatibility are unprotectable by copyright law. Id. at 1522. It characterized

these requirements as “interface procedures” that were

excluded from copyright protection under 17 U.S.C.

§ 102(b). Id. Accolade was thus free to adapt its videogames so that they could run on Sega’s popular platform. Other courts followed these precedents. See, e.g.,

Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1547 (11th

Cir. 1996) (recognizing the need for compatibility between the defendant’s application program and an

operating system program). Altai and Accolade recognized that the essentially utilitarian nature of computer

programs meant they embodied many copyrightunprotectable elements, including interfaces that enable compatibility, and hence, enjoy “a relatively weak

barrier against public access” to those unprotected elements, thus ensuring that subsequent programmers

can reuse those elements in developing their programs.

Altai, 982 F.2d at 712. See also Accolade, 977 F.2d at

1527.

Relying on these precedents and the method/

system exclusions of 17 U.S.C. § 102(b), Google believed that the declarations of the Java Application

Program Interface (API) used in its Android software

and the structure, sequence, and organization (SSO)

embodied in the declarations are not within the scope

of protection that copyright law provides to the work of

authorship at issue,4 namely, Java 2 SE (Java SE),

whose contents include program code, specifications of

the Java packages and their classes and methods, and

related documentation.

The District Court made findings of fact from

which it concluded that these declarations were not

within the scope of protection that copyright law provided to Java SE. Pet. App. 215a-216a. It regarded the

declarations as constituent elements of an interface

system or method that should be excluded from the

scope of copyright protection under 17 U.S.C. § 102(b).

Id. This ruling is consistent with this Court’s decision

in Baker v. Selden, 101 U.S. 99, 106 (1880), which held

that the selection and arrangement of columns and

headings in Selden’s bookkeeping forms were not

within the scope of protection that copyright law provided to his book, with congressional codification of

Baker’s exclusion of methods and systems, and with

the Ninth Circuit’s characterization of program interfaces as unprotectable procedures in Accolade, 977

F.2d at 1522. It was also consistent with the views of

an information technology industry association known

as the American Committee for Interoperable Systems

According to the District Court, “all agree[ ] that Google

had not literally copied the software but had instead come up with

its own implementations of the 37 API packages,” Pet. App. 213a,

which is consistent with computer scientists’ conception of the

declarations as interfaces. 78 Computer Scientists Cert. Br. 6.

(ACIS), whose founding member, Sun Microsystems,

created the Java API. In an amicus brief, ACIS advised

this Court that “it can accurately be said that the interface specification is the ‘system’ or ‘method of operation’ that is ‘expressed’ by the program code.” Brief

Amici Curiae of American Committee for Interoperable Systems and Computer & Communications Association in Support of Respondent at 19, Lotus Dev. Corp.

v. Borland Int’l, Inc., 516 U.S. 233 (1996) (No. 94-2003).5

A. This Court Originated the Exclusion of

Systems, Methods, and Their Constituent

Elements from the Scope of Copyright

Protection.

The first of this Court’s decisions to rule that copyright protection did not extend to a system and its constituent parts embodied in a copyrighted work was

Perris v. Hexamer, 99 U.S. 674 (1879). Perris sued Hexamer for using the same symbol system in a map of

Philadelphia as Perris had used in a map of certain

wards of New York City. Id. at 675. Both maps depicted

the layout of lots and buildings using a set of symbols

and color-coding to identify different types of buildings

to aid in risk assessment for fire insurance purposes.

Id. The Court concluded that Perris had “no more an

exclusive right to use the form of the characters they

employ to express their ideas upon the face of the map,

than they have to use the form of type they select to

print the key.” Id. at 676. After all, Hexamer had not

ACIS membership was listed, id. at 1, n.1.

copied Perris’ map, but only “use[d] to some extent

their system of arbitrary signs and their key.” Id. The

Court considered this system to be a “useful contrivance[ ] for the despatch of business.” Id. at 675. It did

not matter how original that system might have been

or how many other symbol systems could have been

devised. That system was simply not protectable by

Soon thereafter, this Court reviewed a similar infringement claim in Baker. Because Baker is such a

foundational case and its proper interpretation is disputed by the litigants, we provide some details about

the case. Prior to Charles Selden’s claimed invention of

a novel bookkeeping system, the standard process by

which officials kept account books was slow and inefficient. Bookkeepers had to record information about

each transaction in a journal for accounts of that kind

and then record details again in a ledger where all

transactions were recorded in sequential fashion. Supreme Court Record at 92, 106, Baker v. Selden, 101

U.S. 99 (1880) [Record].6 Because the relevant information was spread out over multiple volumes, it was

difficult to prepare a balance sheet for each period and

to detect errors or fraud.

For further details about the Baker litigation, see Pamela

Samuelson, The Story of Baker v. Selden: Sharpening the Distinction Between Authorship and Invention 160, in Intellectual Property Stories (Rochelle Cooper Dreyfuss & Jane C. Ginsburg eds.,

2005). To view simulations of the relevant forms, see id. at 17071.

Selden’s key innovation was figuring out a way (as

the book’s title, “Selden’s Condensed Ledger, or Bookkeeping Simplified,” suggested) to condense the journals and ledger, so that users could record pertinent

information about transactions and accounts on one

page or two adjoining pages. It enabled a much more

efficient accounting process, making the preparation of

trial balances and detection of errors and fraud much

easier.

Selden’s sense of the magnitude of his achievement was expressed in the preface of his book: “To

greatly simplify the accounts of extensive establishments doing credit business would be a masterly

achievement, worthy to be classed among the greatest

benefactions of the age.” Record at 21. The preface revealed that Selden had sought a patent on his system

“to prevent the indiscriminate use [of his system] by

the public.” Id.

Although Selden knew about Baker’s competing

book and similar forms during his lifetime, it was his

widow who charged Baker with infringement, claiming

that “the ruled lines and headings, given to illustrate

the system, are a part of the book, and, as such, are

secured by the copyright; and that no one can make or

use similar ruled lines and headings . . . without violating the copyright.” Baker, 101 U.S. at 101.

The Court had no doubt that a work on bookkeeping could be copyrighted, or that it would be “a very

valuable acquisition to the practical knowledge of the

community.” Id. at 102. But the Court perceived “a

clear distinction between the book, as such, and the

[useful] art which it is intended to illustrate.” Id. Copyright law could protect the author’s explanation of a

useful art, but not the useful art itself, no matter how

creative it was. “To give to the author of the book an

exclusive property in the [useful] art described

therein,” the Court said, “would be a surprise and a

fraud upon the public. That is the province of letterspatent, not of copyright.” Id. That Mrs. Selden intended

to assert patent-like rights through copyright is evident from her announcement to Baker’s customers

that they too were infringers. Record at 79-80. Had Selden obtained the patent he sought, it would have given

him and his heirs exclusive rights to control uses of the

system, as well as making and selling the forms that

embodied the system. But no such patent had issued.

The Court recognized that Selden’s claim seemed

plausible because of the “peculiar nature of the [useful]

art described in [his] books” in which “the illustrations

and diagrams employed happen to correspond more

closely than usual with the actual work performed by

the operator who uses the art.” Baker, 101 U.S. at 104.

Someone who kept books using Selden’s method would

necessarily use forms with the same or substantially

similar headings and columns. Usually, the Court observed, useful arts are “represented in concrete forms

of wood, metal, stone, or some other physical embodiment.” Id. at 105. But “the principle is the same in all”

regardless of whether the useful art was embodied in

a writing or in metal. Id. The Court concluded that Selden’s system was unprotectable by copyright law, as

were the ruled lines and headings that instantiated

the system. Id. at 106.

Baker illustrates why copyright law should allow

second comers to build upon methods and systems embodied in a first author’s works and why authors of

writings on methods and systems should not have too

much control over subsequent adaptations of these

creations. Selden’s forms may have been a substantial

improvement over the old-fashioned bookkeeping

methods previously in use, but they were only one

stage in an evolving art of bookkeeping. Selden’s death

meant that any further innovation in this field would

have to come from others. Baker advanced the state of

the art by redesigning the forms so that entries could

be made as transactions occurred rather than having

to wait until the end of the week or month as Selden’s

forms required. Samuelson, Baker Story, supra, at 162.

Baker went on to write other books and he, not Selden,

is credited with having advanced the state of the art of

bookkeeping in the nineteenth century. Id. at 169, n.76.

Had Mrs. Selden prevailed, further improvements in

the bookkeeping field might well have been retarded

until the copyrights expired. This outcome would have

disserved both patent and copyright goals as it would

have slowed progress in the science and useful art of

bookkeeping.

B. Congress Codified the Well-Established

Exclusion of Systems and Methods in

§ 102(b).

Dozens of cases followed Baker’s conclusion that

methods, systems, and their constituent elements are

beyond the scope of copyright protection in writings

that embody useful arts. Two courts, for example, rejected claims of infringement against authors who

wrote books about the plaintiffs’ original shorthand

systems: Brief English Systems, Inc. v. Owen, 48 F.2d 555

(2d Cir. 1931); Griggs v. Perrin, 49 F. 15 (C.C.N.D.N.Y.

1892). Another court in Aldrich v. Remington Rand,

Inc., 52 F. Supp. 732, 733 (N.D. Tex. 1942) dismissed a

claim of infringement for copying the plaintiff ’s tax

record system, which Aldrich claimed to be “the most

modern and efficient system of property revaluation

for tax purposes.” Numerous other Baker-inspired

cases ruled that original methods and systems for contests, games, rules, and strategies for playing games

were beyond the scope of copyright protection. See

Pamela Samuelson, Why Copyright Law Excludes Systems and Processes from the Scope of Its Protection, 85

Tex. L. Rev. 1921, 1936-44 (2007) (reviewing post-Baker

method/system copyright cases).

The Baker-inspired exclusions of methods and systems from copyright’s scope was so well-established

that Congress decided to codify these exclusions in the

no case does copyright protection for an original work

of authorship extend to any idea, procedure, process,

system, method of operation, concept, principle, or

discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such

work.”

C. The Federal Circuit’s Oracle Decision Ignored the § 102(b) System/Method Exclusions.

Amici agree with the Federal Circuit that § 102(b)

should not be interpreted so literally that it would deprive authors of machine-executable programs of the

exclusive rights that Congress intended them to have

just because programs are machine processes. Pet.

App. 163a.

The Federal Circuit’s Oracle decision properly

quoted the text of § 102(b), Pet. App. 137a, but it

treated ideas as the only unprotectable elements of

software, giving the other seven terms of exclusion no

substantive meaning. Pet. App 163a. This is, as Justice

Scalia once stated, “a stark violation of the elementary

principle that requires an interpreter ‘to give effect, if

possible, to every clause and word of a statute,’ ” to

which he added:

Lawmakers sometimes repeat themselves . . . .

[They] do not, however, tend to use terms that

“have no operation at all.” So while the rule

against treating a term as a redundancy is far

from categorical, the rule against treating it

as a nullity is as close to absolute as interpretive principles get.

King v. Burwell, 135 S. Ct. 2480, 2498 (2015) (Scalia, J.,

dissenting) (citations omitted). When a statute such as

§ 102(b) specifically identifies several categories of uncopyrightable elements and says “[i]n no case” should

any of these be within the scope of copyright’s protection, reading all but one of the terms out of the statute,

as the Federal Circuit did in Oracle, violates this rule.

It failed to be “deferential to the judgment of Congress

in the realm of copyright.” Eldred v. Ashcroft, 537 U.S.

186, 198 (2003).

Although the text of § 102(b) and holdings in

Baker and its progeny are unambiguous, it is worth

noting that Congress added the method/system exclusions to the statute in part to allay concerns about the

risk of excessive copyright protection for software:

Some concern has been expressed lest copyright in computer programs should extend

protection to the methodology or processes

adopted by the programmer, rather than

merely to the “writing” expressing his ideas.

Section 102(b) is intended, among other

things, to make clear that the expression

adopted by the programmer is the copyrightable element in a computer program, and that

the actual processes or methods embodied in

the program are not within the scope of the

H.R. Rep. No. 94-1476 at 57 (1976); S. Rep. No. 94-473

at 54 (1975).7 The Federal Circuit tellingly recited only

During hearings on copyright revision bills, several witnesses recommended adoption of a specific provision to limit the

that part of the legislative history stating that § 102(b)

codified the idea/expression distinction, Pet. App. 141a,

and omitted congressional expressions of concern

about excessive copyright protection for software. It

overlooked this Court’s directive not to “alter the delicate balance Congress has labored to achieve.” Stewart

v. Abend, 495 U.S. 207, 230 (1990).

1. The Method and System Exclusions

of § 102(b) Avert Patent/Copyright

Overlaps.

Consistent with the Baker tradition, codification of

the system/method exclusions in § 102(b) aims, in part,

to ensure that domains of copyright and patent protection for programs should be kept separate. The Federal

Circuit recognized this purpose in Atari Games Corp.

v. Nintendo of America, Inc., 975 F.2d 832 (Fed. Cir.

1992). After quoting § 102(b)’s exclusion of procedures,

processes, systems, and methods of operation, it stated

scope of copyright protection in computer programs. See Copyright Law Revision: Hearings on S. 597 before the Subcomm. on

Patents, Trademarks, & Copyrights of the S. Comm. on the Judiciary, 90th Cong. 196-97 (1967) (statement of Arthur R. Miller).

Miller foresaw a risk that courts would interpret copyright to extend to computer processes “that the program uses to achieve a

functional goal,” which would confer “patentlike protection under

the guise of copyright.” Id. at 197. He recommended that Congress

should affirm that copyright would extend “solely to duplication

or replication of the program” and not to “the art, process or

scheme that is fixed in the program” because only patent law

could protect “systems, schemes, and processes.” Id. at 197, 199.

For a fuller discussion of the genesis of § 102(b) exclusions, see

Samuelson, Why Copyright Excludes Systems, supra, at 1944-61.

that patent and copyright laws protect “distinct aspects” of programs. Id. at 839. The role of copyright,

said the court, was to protect program expression, not

any methods or processes that might be eligible for patenting under the Patent Act. Id.

The Federal Circuit’s Oracle decision, however, instead seemingly endorsed the view that computer program innovations such as interfaces were eligible for

both copyright and patent protection. Pet. App. 190a

(erroneously quoting Mazer v. Stein, 347 U.S. 201, 217

(1954), which considered only potential design patent

and copyright overlaps). This was pertinent because

both Sun and Oracle had obtained utility patents on

program interfaces. Pet. App. 260a.

2. Unprotectable Elements in Computer Programs Must Be Filtered Out

Before Assessing Infringement.

The Federal Circuit’s Oracle decision also failed to

recognize that the utilitarian nature of computer programs differentiates them from conventional literary

works because programs contain many functional design elements, including methods and systems, that

are beyond the scope of copyright under § 102(b) and

other doctrines. See, e.g., Accolade, 977 F.2d at 1524.

The higher quantum of unprotectable elements in programs as compared with novels explains why courts

such as the Second Circuit in Altai have directed that

numerous types of unprotectable elements of programs

be “filtered out” before deciding infringement claims in

software copyright cases. Altai, 977 F.2d at 706-11.

Although the Federal Circuit criticized the lower court

for not following Altai, Pet. App. 145a, the appellate

court itself performed no filtration whatsoever.

3. Methods and Systems Are Part of Program Structure, Sequence, and Organization, So SSO Obscures Rather

Than Clarifies Expressive Aspects of

Software.

The Federal Circuit accepted without question Oracle’s claim that the SSO of computer programs is protectable expression. Pet. App. 159a-160a. By contrast,

the Second Circuit wisely recognized in Altai that SSO

is not a useful term with which to distinguish nonliteral elements of programs that may be expressive

enough to be copyright-protectable from nonliteral elements that are excluded from copyright protection.

Altai, 982 F.2d at 706.

By their very nature, methods and systems, when

embodied in computer programs, are parts of SSO. Under the Federal Circuit’s Oracle decision, it would be

trivially easy for software developers to claim SSO copyright protection in methods or processes for which they

failed to seek patent protection, or even to claim SSO

protection is now unavailable in the aftermath of Alice

Corp. v. CLS Bank International, 573 U.S. 208 (2014).

The Federal Circuit’s ruling thus undermines this

Court’s holding in Alice.

D. Key Post-1976 Act Decisions Follow

Baker in Excluding Methods, Systems,

and Their Constituent Elements from

An exemplary decision applying Baker and

§ 102(b) to exclude systems and their constituent parts

from the scope of copyright is Bikram’s Yoga College of

India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032 (9th

Cir. 2015). Bikram Choudhury claimed copyright in a

sequence of twenty-six yoga poses and two breathing

exercises described and illustrated in books and videos.

Id. at 1035-36. After Evolation Yoga began teaching

the same sequence, Bikram’s Yoga College sued for infringement. Relying on Baker and its codification in

§ 102(b), the Ninth Circuit held that the Bikram Yoga

Sequence was “not a proper subject of copyright protection.” Id. at 1034.

It did not matter whether Choudhury’s arrangement of poses and breathing exercises was beautiful or

graceful. Id. at 1040. Nor did it matter that “the Sequence may possess many constituent parts,” for “[v]irtually any process or system could be dissected in a

similar fashion.” Id. at 1041. Also irrelevant was “that

similar results could be achieved through a different

organization of yoga poses and breathing exercises.”

Id. at 1042. What mattered was that “[a]n essential element of this ‘system’ is the order in which the yoga

poses and breathing exercises are arranged.” Id. at

1039. Choudhury’s books directed his pupils to perform

the yoga moves “in the strict order given in this book.”

Id. Choudhury had, moreover, repeatedly characterized his sequence as a method or system for improving

health and well-being, which rendered the system and

its constituent parts too functional for copyright protection. Id. at 1038-39.

As in Baker, the Ninth Circuit in Bikram opined

that to get exclusive rights in a functional system, such

as the Yoga Sequence, it would be necessary to obtain

a patent. Id. at 1039-40. As in Baker, copyright protected Choudhury’s explanation of his method or system, not the system itself or downstream uses of it. His

books invited readers to practice the method the books

taught. Echoing Baker, the Ninth Circuit said that this

objective “would be frustrated if the knowledge could

not be used without incurring the guilt of piracy of the

book.” Id. at 1041 (quoting Baker, 101 U.S. at 103). “Consumers would have little reason to buy Choudhury’s

book if Choudhury held a monopoly on the practice of

the very activity he sought to popularize.” Id. See also

Ho v. Taflove, 648 F.3d 489, 498-99 (7th Cir. 2011) (scientific model and constituent elements held unprotectable by copyright law); Palmer v. Braun, 287 F.3d 1325,

1334 (11th Cir. 2002) (meditation exercises held uncopyrightable process).

Consistent with Bikram was the Ninth Circuit’s

Accolade decision, which stated that program “interface

procedures” that constituted “the functional requirements for [achieving] compatibility” were unprotectable by copyright law under 17 U.S.C. § 102(b). Accolade,

977 F.2d at 1522. While these statements appeared in

a ruling that Accolade’s reverse-engineering of Sega

program code was fair use, they were not mere dicta or

of only slight importance to the outcome of the fair use

ruling, as the Federal Circuit asserted. Pet. App. 166a.

The statements were the very linchpin of the Accolade

ruling. Accolade’s reverse-engineering of Sega programs was legitimate because of its need to make copies to get access to and extract interface information to

enable it to reimplement the procedures and make its

games compatible with the Sega platform. Accolade,

977 F.2d at 1525-26.

The Ninth Circuit explained that “[i]f disassembly

of copyrighted object code is per se an unfair use, the

owner of the copyright gains a de facto monopoly over

the functional aspects of his work—aspects that were

expressly denied copyright protection by Congress.” Id.

at 1526 (citing § 102(b)). Channeling Baker, the Ninth

Circuit said that if Sega wanted to enjoy a legal monopoly over the interface procedures, it would have to

“satisfy the more stringent standards imposed by the

patent laws.” Id. Allowing reverse-engineering would

enable new entrants such as Accolade to make compatible products available in the market. Id. at 1523-24.

Accord Sony Computer Entm’t, Inc. v. Connectix Corp.,

203 F.3d 596, 605, 608 (9th Cir. 2000) (reverseengineering to achieve partial compatibility was fair

use); Pet. App. 269a (“Contrary to Oracle, ‘full compatibility’ is not relevant to the Section 102(b) analysis.”).

Compatibility considerations were also important

in Lotus Development Corp. v. Borland International,

Inc., 49 F.3d 807 (1st Cir. 1995), aff ’d by an equally divided Court, 516 U.S. 233 (1996) (per curiam). Lotus

charged Borland with infringement for reusing the Lotus 1-2-3 menu command hierarchy for the emulation

mode of its competing spreadsheet program. The District Court held that this hierarchy was protectable

SSO because there were other ways to organize commands for spreadsheet program functions. Id. at 81011.

The First Circuit recognized that “Borland had to

copy the Lotus menu command hierarchy” if it wanted

to enable users “to operate its programs in substantially the same way” as Lotus 1-2-3. Id. at 816. Borland’s emulation mode enabled users of the Lotus

program who had constructed macros for common sequences of functions to “port” those macros to Borland’s

program. Id. at 811-12. For those macros to be executable, Borland had to employ the same command terms

arranged in exactly the same order. As the First Circuit

explained:

Under the district court’s holding, if the user

wrote a macro to shorten the time needed to

perform a certain operation in Lotus 1-2-3, the

user would be unable to use that macro . . . .

Rather, the user would have to rewrite his or

her macro using that other program’s menu

command hierarchy. This is despite the fact

that the macro is clearly the user’s own work

product.

Id. at 818. The First Circuit concluded that this hierarchy was an unprotectable method of operating a

spreadsheet program under § 102(b). Id. at 817-18.

Judge Boudin, concurring, observed: “If Lotus is

granted a monopoly on this pattern, users who have

learned the command structure of Lotus 1-2-3 or devised their own macros are locked into Lotus, just as a

typist who has learned the QWERTY keyboard would

be the captive of anyone who had a monopoly on the

production of such a keyboard.” Id. at 821 (Boudin, J.,

concurring). Lotus’ command hierarchy “look[s] hauntingly like the familiar stuff of copyright; but the ‘substance’ probably has more to do with problems

presented in patent law.” Id. at 820.

E. Consistent with Baker and § 102(b), Program Interfaces Should Be Considered

Unprotectable Procedures, Methods, or

Systems.

This Court articulated a clean distinction in Baker

between the copyrightable expression in Selden’s book

and the uncopyrightable bookkeeping system, constituent elements of which were embodied in the forms. A

clean distinction is also possible here. Google and Java

programmers around the world should be free to use

the Java SE declarations to develop compatible programs, subject only to the norm that they must instantiate those interfaces in independently written code

that copyright law protects from misappropriation.

Characterizing program interfaces as unprotectable procedures under § 102(b) is consistent with Baker,

the text of § 102(b), and the case law properly interpreting it. The District Court’s characterization of the

declarations as methods or systems is similarly consistent, as was the ACIS amicus brief in Borland, supra. Interfaces are methods insofar as they enable one

program to function effectively with other software or

with hardware. Some program interfaces are relatively

simple, as in Accolade, while others are more complex,

as in Oracle. But as this Court so aptly said, “the principle is the same in all.” Baker, 101 U.S. at 105. Allowing programmers to reuse interfaces that enable

compatibility promotes the ongoing progress in the

field of computer programming as well as advancing

the science of computing, in keeping with the constitutional purpose of copyright law. U.S. Const. art. I, § 8,

cl. 8.

II.

The Federal Circuit’s Merger Analysis Is

Irreconcilable with Baker and Other Persuasive Decisions.

The merger doctrine is often traced to this Court’s

decision in Baker.8 See, e.g., Arica Inst., Inc. v. Palmer,

970 F.2d 1067, 1076 (2d Cir. 1992). In Baker, this Court

concluded that the forms embodying Selden’s

bookkeeping system were unprotected by copyright

law because using these or similar arrangements of

columns and headings was necessary to implement the

See Pamela Samuelson, Reconceptualizing Copyright’s

While Baker did not originate the term “merger,” it nonetheless

articulated principles congruent with what came to be known as

the merger doctrine and that guide the outcome here.

underlying system. 101 U.S. at 103. As the Court explained:

[W]here the [useful] art [a work] teaches cannot be used without employing the methods

and diagrams used to illustrate the book, or

such as are similar to them, such methods and

diagrams are to be considered as necessary incidents to the art, and given therewith to the

public; not given for the purpose of publication

in other works explanatory of the art, but for

the purpose of practical application.

Id. (emphasis added). This “necessary incidents” language serves to prevent copyright from extending to

unprotectable systems when the reuse of some expression is inseparable from the systems.

The Federal Circuit’s analysis of the merger doctrine cannot be reconciled with Baker. It is, moreover,

contrary to persuasive authorities recognizing the

merger doctrine as a shield against infringement for

software interfaces that enable the development of

compatible programs. Consistent with these authorities, the District Court found that the declarations had

to be identical for the functionality they enable to be

available in Android, leading it to conclude correctly

that the merger doctrine barred Oracle’s infringement

claim. Pet. App. 215a.

A. The Federal Circuit’s Analysis of the

Merger Doctrine Is at Odds with Baker

in Three Key Respects.

When Charles Selden devised his novel bookkeeping system, he could have designed it in a number of

ways. This Court recognized that anyone who wanted

to implement the Selden system would have little

choice but to select and arrange columns and headings

in a substantially similar way. Baker, 101 U.S. at 101.

Since copyright does not protect useful arts such as

bookkeeping systems, but only authorial expression,

id. at 101-02, Baker was free to publish similar forms

to instantiate the Selden system. The Court ruled that

the forms were uncopyrightable. Id. at 105. Baker importantly distinguished between authorship (the original expression that copyright protects) and invention

(the functional creativity, which only utility patent law

can protect). Id.

With regard to merger, the Federal Circuit conflicts with Baker in three significant ways.

First, the Federal Circuit incorrectly concluded

that merger can only be found if a first author had no

or only extremely limited alternative ways to express

an idea when creating his work.9 For example, it

pointed to the existence of alternative names for Java

The Federal Circuit construed the merger doctrine inconsistently. It correctly describes the merger doctrine as applying

“when there are a limited number of ways to express an idea,”

Pet. App. 147a, but elsewhere it incorrectly characterizes the doctrine as applying exclusively when an idea “can be expressed in

only one way,” Pet. App. 148a.

functions, such as “Arith.larger” instead of “Math.max,”

in finding that the merger doctrine did not apply to the

Java SE declarations. Pet. App. 150a. In Baker, it did

not matter whether column headers such as “Brought

forw’d.” or “Aggregates of Accounts” could have been

worded differently when implementing Selden’s accounting system.

Thus, merger is a viable argument against copyrightability when the range of available alternatives

for functions is limited, as the District Court concluded, Pet. App. 261a, and as was true in Baker.10

Courts since Baker have also concluded that merger is an

available defense when there is a limited number of alternatives

(and not just one choice). For example, in Morrissey v. Procter &

Gamble Co., the court concluded that a set of sweepstakes rules

Morrissey authored was original, and that there were different

ways to express the rules. 379 F.2d 675, 678 (1st Cir. 1967). However, the court observed that the range of possible expressions of

sweepstakes rules admitted of little variation “so that ‘the topic

necessarily requires’ if not only one form of expression, at best

only a limited number, [so] to permit copyrighting would mean

that a party or parties, by copyrighting a mere handful of forms,

could exhaust all possibilities of future use of the substance.” Id.

(citations omitted). The court rejected this outcome, writing that

“[w]e cannot recognize copyright as a game of chess in which the

public can be checkmated.” Id. at 679 (citing Baker). Cf. TrafFix

Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33-34 (2001) (rejecting test for functionality of trade dress based solely on the existence of alternative designs).

Second, the Federal Circuit’s opinion conflicts with

Baker in concluding that courts in merger cases can

consider only constraints on the plaintiff ’s creation

and never constraints on the defendant’s expressive

choices. Pet. App. 151a. The Court in Baker did not consider whether Selden’s own choices in designing a

bookkeeping system were constrained. Nor is there

anything in Baker suggesting that the Court rejected

Selden’s copyright claim because Selden had no choice

about how to select and arrange columns and headings

for his bookkeeping forms. Indeed, Baker’s forms were

somewhat different. See Baker, 101 U.S. at 101. Instead, the Court decided that once Selden designed his

bookkeeping system, Baker’s design choices for arranging columns and headings to implement the same system were constrained by the choices that Selden had

made.11 Id.

Third, the Federal Circuit’s decision conflicts with

Baker in holding that merger can be a defense to

More recent appellate decisions also support the idea that

a first comer’s choices can limit the options of those who come after. In Veeck v. Southern Building Code Congress International,

Inc., 293 F.3d 791 (5th Cir. 2002) (en banc), merger precluded enforcement of SBCCI’s claim against Veeck for his online posting

of a privately written code that had been adopted as law in Anna

and Savoy, Texas. Id. at 800-02. It did not matter how many possible alternative expressions existed when the codes were initially

created. What mattered was that once enacted, there was no other

way to express what the law was. Id. at 802.

infringement claims, but not a basis for denying copyrightability. Pet. App. 144a-145a. The Court in Baker

held that Selden’s forms were uncopyrightable because

the selection and arrangement of columns and headings were embodiments of the bookkeeping system.

Baker, 101 U.S. at 107. Thus, the merger doctrine can

be part of the copyrightability analysis, and is not

solely a defense to infringement.

There is a consensus among major authorities in

treatises now recognize that merger can serve as a bar

to copyrightability. 1 Paul Goldstein, Goldstein on Copyright, §§ 2.3.2, 2:38.1 (2015); 1 Melville B. Nimmer &

David Nimmer, Nimmer on Copyright, § 2A.05[A][2][b]

of the bases on which the Office may refuse registration applications. U.S. Copyright Off., Compendium of

B. The Merger Doctrine Provides a Sound

Basis for Holding That Program Interfaces That Enable Compatibility Are

Uncopyrightable.

Since the Second Circuit’s Altai decision, there has

been broad-based consensus that computer program

interfaces that enable the development of compatible

software programs are not within the scope of copyright protection. Computer Associates claimed that

Altai infringed by copying the structure of the compatibility component of its scheduling software designed

to run on IBM operating systems. Altai, 982 F.2d at

701. The Altai court invoked Baker as the “doctrinal

starting point” of its analysis. Id. at 704.

Altai articulated a three-step “abstraction, filtration, and comparison” test for judging nonliteral infringement of software copyrights. The first step

involves creation of a hierarchy of abstractions of the

plaintiff ’s program; the second step filters out unprotectable elements; and the third step compares the remaining expressive elements of the plaintiff ’s program

with the defendant’s program to determine if the defendant’s program is substantially similar to expressive elements copied from the plaintiff ’s program. Id.

at 706-11. Among the unprotectable elements to be filtered out are those dictated by efficiency, those constrained by external factors—such as the need to be

compatible with hardware or software—and those in

the public domain. Id. at 707-10. The court concluded

that the similarities between Altai’s and Computer Associates’ programs were constrained by external factors, namely, the need to be compatible with IBM

programs. Id. at 714-15.

Courts have invoked the merger doctrine in concluding that even literal copying may be excused from

infringement when needed to achieve compatibility.12

The only decision—other than the Federal Circuit ruling

in Oracle—to cast doubt on the lack of copyright protection for

computer program elements required for interface compatibility

was the Third Circuit’s in Apple Computer, Inc. v. Franklin

The Federal Circuit once recognized this principle in

Atari Games, 975 F.2d at 840. Atari Games claimed its

copying of Nintendo’s data stream was necessary to enable videogames to run on its platform. Id. at 836-37.

Had Atari Games copied only as much of the Nintendo

data stream as was actually necessary to achieve compatibility with the then-current version of the Nintendo platform, the Federal Circuit said it would have

ruled in Atari’s favor on merger grounds. Id. at 839-40.

Because it copied more than was necessary, its merger

defense failed. Id. at 840.

Drawing in part on Atari Games, the Sixth Circuit

concluded that literal copying of program code to enable compatibility was justifiable under the merger doctrine. Lexmark Int’l, Inc. v. Static Control Components,

Inc., 387 F.3d 522 (6th Cir. 2004). Lexmark challenged

Static’s copying of a program installed in Lexmark

printer cartridges. Static defended by saying this

copying was necessary for its chip customers to manufacture printer cartridges that interoperated with

Lexmark printers. Id. at 529-30. There was no other

way for unlicensed cartridges to perform the digital

Computer Corp., 714 F.2d 1240 (3d Cir. 1983). Its anti-compatibility

dicta should be given little weight for two reasons. First, Franklin

made no effort to reimplement the interface procedures embedded

in the Apple OS in independently written code. It made exact copies of the Apple programs. Id. at 1245. Second, these statements

were made at an early stage in the evolution of software copyright

law, well before Altai and other cases described above provided

more thorough analyses of the copyright implications of a second

comer’s reimplementation of interface procedures necessary for

interoperability.

handshake with Lexmark’s printer software to authenticate the cartridge so it would work in Lexmark printers.

Id. The court decided that “[t]o the extent compatibility

requires that a particular code sequence be included in

the component device to permit its use, the merger and

scenes a faire doctrines generally preclude the code sequence from obtaining copyright protection.” Id. at

536.

The Eleventh Circuit rendered a similar ruling in

Bateman, 79 F.3d at 1547. After Bateman stopped licensing its operating system on which Mnemonics had

run its automated parking garage program, Mnemonics developed its own compatible operating system that

reimplemented Bateman’s interface. Id. at 1538-39.

The Eleventh Circuit concluded that even literal code

may be filtered out under the abstraction, filtration,

and comparison test pioneered in Altai. Id. at 1545. It

faulted the District Court for failing to instruct the

jury “that compatibility . . . is a consideration that applies at the literal level.” Id. at 1546. While the court

declined to hold that interface specifications are wholly

outside the scope of copyright, id. at 1547, it nonetheless concluded that “external considerations such as

compatibility may negate a finding of infringement” Id.

Where literal copying is “dictated by compatibility requirements,” id., copyright does not apply.

These decisions affirm the conclusions of the National Commission on New Technological Uses of Copyrighted Works, whose report Congress commissioned

and relied upon when regulating software copyrights.

Nat’l Comm’n on New Tech. Uses of Copyrighted

Works, Final Report (1979). The report explained that

“[w]hen specific instructions, even though previously

copyrighted, are the only and essential means of accomplishing a given task, their later use by another

will not amount to infringement.” Id. at 20 (emphasis

added).

C. The Federal Circuit Ignored the District Court’s Fact Findings That Supported Its Holding That the Interfaces

at Issue Were Unprotectable Under the

Merger Doctrine.

As these authorities demonstrate, merger is a viable argument against copyrightability when the range

of available alternatives for expressing a particular

idea or method is very limited. The District Court

made a finding that there was, in fact, only one way to

write the name of each function: “Under the rules of

Java, [declarations] must be identical to declare a

method specifying the same functionality—even when

the implementation is different.” Pet. App. 215a. Thus,

any programmer wishing to invoke the functionality of

“Math.max” would have to use the exact phrase

“Math.max.”

Its conclusion that there was only one way to write

the declarations is bolstered by the amicus brief submitted by 78 computer scientists. 78 Computer Scientists Cert. Br. They explain that, with a very limited

exception addressed below, the Java programming language requires that declarations be written in a

precise form; that reuse of software interfaces such as

the Java SE declarations is a foundational practice in

computer science that allows programmers to write

software that performs on multiple platforms at once;

and, that this reimplementation requires exact duplication of an interface’s declarations and organizational

scheme. Id. at 3.

D. The District Court Properly Held That

Names and Short Phrases Are Not Protectable by Copyright.

The only part of the declarations not precisely dictated by the Java language are names given to specific

functions. Id. at 8-9. But this does not bring the interface within the scope of copyright. As the District Court

concluded, Pet. App. 202a, names are not protected by

Among the circuit courts concluding that identifiers of functional items are unprotectable by copyright

law is Southco, Inc. v. Kanebridge Corp., 390 F.3d 276

(3d Cir. 2004) (en banc) (Alito, J.), in which the Third

Circuit considered whether the serial numbers used to

uniquely identify hardware parts were copyrightable;

it decided that they were not. Id. at 277-78. The court

explained that part numbers are “excluded from

Declaration names are constrained by efficiency and other

functional considerations. 78 Computer Scientists Cert. Br. 7-9.

Changing the names would also undermine compatibility.

short phrases or the titles of works.”14 Id. at 285.

The Sixth Circuit has rendered similar rulings. In

ATC Distribution Group v. Whatever It Takes Transmissions & Parts, Inc., 402 F.3d 700 (6th Cir. 2005), the

court held that a taxonomy for assigning unique identifiers to auto transmission parts by sorting them into

categories and sub-categories was not copyrightable.

Id. at 706. The taxonomy for assigning numbers was

itself an uncopyrightable idea, id. at 707, and the numbers generated through application of the taxonomy

were unprotected because they were unoriginal or else

merger had occurred. Id. Beyond this, the court concluded that there were additional reasons not to grant

numbers.” Id. at 709. It recognized that allowing copyright in such short works would substantially raise the

risk of litigation for those who use such works legitimately and would not meaningfully advance the progress of science and useful arts. Id. at 710. Accord

Lexmark, 387 F.3d at 542 (invoking names and short

phrases doctrine to reject Lexmark’s claim that inserting stock ticker symbols into code was creative expression).15 See also 37 C.F.R. § 202.1(a) (“[w]ords and short

The Court also held that the serial numbers were not original expressions. Id. at 282.

Other circuits have denied copyright protection to names

on other grounds. See, e.g., Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366,

1373 (10th Cir. 1997) (four-digit numeric codes used to access features of telecommunications hardware not copyrightable due to

unoriginality and scenes a faire).

phrases such as names, titles, and slogans” are not copyright-protectable) (emphasis added).16

Thus, because names are unprotectable, no aspect

of the declarations is protectable by copyright law.

------------------------------------------------------------------

CONCLUSION

For the foregoing reasons, the Federal Circuit’s

judgment should be reversed.

Respectfully submitted,

CATHERINE CRUMP

Counsel of Record

SAMUELSON LAW, TECHNOLOGY

& PUBLIC POLICY CLINIC

UNIVERSITY OF CALIFORNIA,

BERKELEY, SCHOOL OF LAW

353 Boalt Hall

Berkeley, CA 94720

(510) 292-6860

ccrump@law.berkeley.edu

January 13, 2020

Circular 34, Copyright Protection Not Available for

Names, Titles, or Short Phrases, was updated to become Circular

33, Works Not Protected by Copyright (2017), available at

https://www.copyright.gov/circs/circ33.pdf. The update is noted

in the Office’s Circular Update Guide, https://www.copyright.gov/

circs/circular-update-guide.pdf.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.