`
`
`
`No. 18-956
`
`IN THE
`
`
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`ORACLE AMERICA, INC.,
`Respondent.
`
`On Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`
`BRIEF FOR THE PETITIONER
`
`
`
`Kent Walker
`Catherine Lacavera
`Renny Hwang
`GOOGLE LLC
`1600 Amphitheatre Parkway
`Mountain View, CA 94043
`Lisa S. Blatt
`David M. Krinsky
`Sarah M. Harris
`Meng Jia Yang
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`Robert A. Van Nest
`Christa M. Anderson
`Eugene M. Paige
`Reid P. Mullen
`KEKER, VAN NEST
`& PETERS LLP
`633 Battery Street
`San Francisco, CA 94111
`
`Thomas C. Goldstein
` Counsel of Record
`Sarah E. Harrington
`Kevin K. Russell
`Daniel Woofter
`Erica Oleszczuk Evans
`GOLDSTEIN & RUSSELL, P.C.
`7475 Wisconsin Avenue
`Suite 850
`Bethesda, MD 20814
`(202) 362-0636
`tg@goldsteinrussell.com
`Michael S. Kwun
`KWUN BHANSALI LAZARUS LLP
`555 Montgomery Street
`Suite 750
`San Francisco, CA 94111
`Bruce W. Baber
`Marisa C. Maleck
`KING & SPALDING LLP
`1180 Peachtree Street, N.E.
`Atlanta, GA 30309
`
`
`
`QUESTIONS PRESENTED
`The Copyright Act provides that, while “original
`works of authorship” are generally eligible for copy-
`right protection, 17 U.S.C. § 102(a), “[i]n no case does
`copyright protection for an original work of authorship
`extend to any idea, procedure, process, system, method
`of operation, concept, principle, or discovery, regard-
`less of the form in which it is described, explained, il-
`lustrated, or embodied in such work,” id. § 102(b). The
`Act also makes clear that “the fair use of a copyrighted
`work . . . is not an infringement of copyright.” Id. § 107.
`As is relevant here, software interfaces are lines
`of computer code that allow developers to operate pre-
`written libraries of code used to perform particular
`tasks. Since the earliest days of software develop-
`ment, developers have used interfaces to access essen-
`tial tools for building new computer programs. Con-
`travening that longstanding practice, the Federal Cir-
`cuit in this case held both that a software interface is
`copyrightable and that petitioner’s use of a software
`interface in a new computer program cannot constitute
`fair use as a matter of law.
`The questions presented are:
`1. Whether copyright protection extends to a soft-
`ware interface.
`2. Whether, as the jury found, petitioner’s use of
`a software interface in the context of creating a new
`computer program constitutes fair use.
`
`
`
`
`
`
`
`
`ii
`RULE 29.6 STATEMENT
`Petitioner Google LLC is an indirect subsidiary of
`Alphabet Inc., a publicly held company. Alphabet Inc.
`has no parent corporation, and no publicly held com-
`pany owns 10% or more of its stock.
`
`
`
`
`
`iii
`TABLE OF CONTENTS
`
`QUESTIONS PRESENTED ......................................... i
`RULE 29.6 STATEMENT ........................................... ii
`TABLE OF AUTHORITIES ....................................... vi
`BRIEF FOR THE PETITIONER ................................ 1
`OPINIONS BELOW .................................................... 1
`JURISDICTION........................................................... 1
`RELEVANT STATUTORY PROVISIONS ................. 1
`STATEMENT OF THE CASE ..................................... 1
`I. FACTUAL BACKGROUND .................................. 2
`A. Android And The Java Programming
`Language ........................................................ 2
`B. Android’s Reuse Of Declarations
`Necessary To Recognize Developers’ Calls .... 7
`II. PROCEDURAL HISTORY .................................... 9
`A. Copyrightability And Infringement ............... 9
`B. Fair Use ........................................................ 11
`SUMMARY OF THE ARGUMENT .......................... 13
`ARGUMENT .............................................................. 17
`I. Google Did Not Commit Copyright
`Infringement ........................................................ 17
`A. Copyright Protection Does Not Extend To
`Or Embody The System Or Method ............ 17
`
`Any System Or Method Of Operation, Or
`To One Of Only A Few Ways To Express
`
`
`
`iv
`
`Not Infringe Any Interest Protected By
`
`B. Google’s Reuse Of The Declarations Did
`Copyright ...................................................... 19
`1. Google reused only the material that
`the developers’ calls ................................ 20
`2. The merger doctrine provides that
`declarations ............................................ 21
`3. The merger doctrine applies
`to invoke the functions of a program ..... 22
`4. The number of declarations that
`merger analysis ...................................... 24
`5. The Federal Circuit’s rationales for
`merit ........................................................ 28
`6. The merger doctrine also resolves
`created by the declarations .................... 31
`II. There Is No Basis To Overturn The Jury’s
`Was Fair Use ....................................................... 34
`A. The Jury’s Verdict Is Reviewed For
`Substantial Evidence ................................... 34
`
`Finding That Google’s Reuse Of The
`Declarations From The Java SE Libraries
`
`was required by the Java language to
`perform the function of responding to
`
`Google has the right to reuse the
`
`to
`computer software interfaces designed
`
`Google reused does not change the
`
`rejecting the merger doctrine lack
`
`copyright
`that
`claims
`Oracle’s
`protection applies to the structure
`
`
`
`v
`
`Jury’s Overall Finding That Google’s
`
`Verdict With Respect To Each Of The
`
`B. Substantial Evidence Supported The
`Conduct Was Fair Use ................................. 37
`C. Substantial Evidence Supported The
`Illustrative Statutory Fair-Use Factors ...... 41
`1. Factor one: The purpose and
`character of the use ................................ 42
`2. Factor two: The nature of the
`copyrighted work .................................... 45
`3. Factor three: The amount and
`substantiality of the reuse ..................... 46
`4. Factor four: The effect on the market
`for, or value of, the original work .......... 48
`
`CONCLUSION .......................................................... 50
`ADDENDUM: Statutory provisions .......................... 1a
`
`
`
`
`
`vi
`TABLE OF AUTHORITIES
`
`Cases
`
`Alice Corp. v. CLS Bank Int’l,
`573 U.S. 208 (2014) ................................................ 26
`Baker v. Selden,
`101 U.S. 99 (1880) .......................................... passim
`Biestek v. Berryhill,
`139 S. Ct. 1148 (2019) ............................................ 35
`Campbell v. Acuff-Rose Music, Inc.,
`510 U.S. 569 (1994) ........................................ passim
`Computer Assocs. Int’l, Inc. v. Altai, Inc.,
`982 F.2d 693 (2d Cir. 1992) ................................... 33
`Eldred v. Ashcroft,
`537 U.S. 186 (2003) ................................................ 21
`Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
`499 U.S. 340 (1991) .......................................... 24, 25
`Fisher v. Dees,
`794 F.2d 432 (9th Cir. 1986) .................................. 36
`Gates Rubber Co. v. Bando Chem. Indus., Ltd.,
`9 F.3d 823 (10th Cir. 1993) .................................... 33
`Golan v. Holder,
`565 U.S. 302 (2012) ................................................ 18
`Hana Fin., Inc. v. Hana Bank,
`574 U.S. 418 (2015) ................................................ 35
`Harper & Row, Publishers, Inc. v.
`Nation Enters.,
`471 U.S. 539 (1985) ........................................ passim
`Incredible Techs., Inc. v. Virtual Techs., Inc.,
`400 F.3d 1007 (7th Cir. 2005) ................................ 22
`Kirtsaeng v. John Wiley & Sons, Inc.,
`568 U.S. 519 (2013) ................................................ 41
`
`
`
`vii
`Lexmark Int’l, Inc. v. Static Control
`Components, Inc.,
`387 F.3d 522 (6th Cir. 2004) .................................. 41
`Lotus Dev. Corp. v. Borland Int’l, Inc.,
`49 F.3d 807 (1st Cir. 1995) .................................... 27
`Meshwerks, Inc. v. Toyota Motor
`Sales U.S.A., Inc.,
`528 F.3d 1258 (10th Cir. 2008) .............................. 25
`Riley v. California,
`573 U.S. 373 (2014) .................................................. 2
`Sega Enters. Ltd. v. Accolade, Inc.,
`977 F.2d 1510 (9th Cir. 1993) .......................... 24, 40
`Sentilles v. Inter-Caribbean Shipping Corp.,
`361 U.S. 107 (1959) ................................................ 35
`SOFA Entm’t, Inc. v. Dodger Prods., Inc.,
`709 F.3d 1273 (9th Cir. 2013) ................................ 36
`Softel, Inc. v. Dragon Med. &
`Sci. Commc’ns, Inc.,
`118 F.3d 955 (2d Cir. 1997) ................................... 33
`Sony Corp. of Am. v.
`Universal City Studios, Inc.,
`464 U.S. 417 (1984) .................................... 23, 34, 37
`Southco, Inc. v. Kanebridge Corp.,
`390 F.3d 276 (3d Cir. 2004) ................................... 29
`Stewart v. Abend,
`495 U.S. 207 (1990) ................................................ 39
`Twentieth Century Music Corp. v. Aiken,
`422 U.S. 151 (1975) ................................................ 23
`U.S. Bank Nat’l Ass’n v.
`Village at Lakeridge, LLC,
`138 S. Ct. 960 (2018) .............................................. 36
`
`
`
`viii
`Wall Data Inc. v. L.A. Cty. Sheriff’s Dep’t,
`447 F.3d 769 (9th Cir. 2006) .................................. 38
`
`Statutes
`
`17 U.S.C. § 101 ......................................... 17, 23, 33, 44
`17 U.S.C. § 102(a) ...................................................... 17
`17 U.S.C. § 102(b) .............................................. passim
`17 U.S.C. § 107 ................................................... passim
`17 U.S.C. § 107(1) ...................................................... 42
`17 U.S.C. § 107(2) ...................................................... 45
`28 U.S.C. § 1254(1) ...................................................... 1
`
`Regulations
`Rules
`Other Authorities
`
`37 C.F.R. § 202.1(a) ............................................... 9, 29
`
`Fed. R. Civ. P. 50(a)(1) ............................................... 36
`
`Howard B. Abrams & Tyler T. Ochoa,
`The Law of Copyright ............................................. 18
`Paul Goldstein, Goldstein on Copyright ............. 18, 24
`H.R. Rep. No. 94-1476 (1976) ........................ 34, 37, 41
`Pierre N. Leval, Toward a Fair Use Standard,
`103 Harv. L. Rev. 1105 (1990) ......................... 39, 45
`Nat’l Comm’n on New Tech. Uses of
`Copyrighted Works, Final Report (1979) ........ 24, 30
`Melville B. Nimmer & David Nimmer,
`Nimmer on Copyright ...................................... 18, 46
`U.S. Copyright Office, Software-Enabled
`Consumer Products (Dec. 2016) ....................... 41, 50
`
`
`
`
`
`
`BRIEF FOR THE PETITIONER
`Petitioner Google respectfully requests that the
`judgment of the United States Court of Appeals for the
`Federal Circuit be reversed.
`OPINIONS BELOW
`The Federal Circuit’s opinion regarding fair use
`(Pet. App. 1a-55a) is reported at 886 F.3d 1179. The
`District Court’s orders denying respondent’s motions
`for judgment as a matter of law (Pet. App. 92a-120a)
`and for a new trial (id. at 56a-91a) are unreported.
`The Federal Circuit’s opinion regarding copyrightabil-
`ity (id. at 121a-192a) is reported at 750 F.3d 1339. The
`District Court’s order granting petitioner’s motion for
`judgment as a matter of law (Pet. App. 212a-272a) is
`reported at 872 F. Supp. 2d 974.
`JURISDICTION
`The court of appeals entered its judgment on
`March 27, 2018, and denied rehearing on August 28,
`2018. Pet. App. 283a-284a. On October 23, 2018, the
`Chief Justice extended the time to file a petition for a
`writ of certiorari to January 25, 2019. The petition
`was filed on January 24, 2019, and was granted on No-
`vember 15, 2019. The jurisdiction of this Court is in-
`voked under 28 U.S.C. § 1254(1).
`RELEVANT STATUTORY PROVISIONS
`The relevant statutory provisions are reproduced
`as an Addendum to this brief.
`STATEMENT OF THE CASE
`To create an operating system for smartphones,
`petitioner Google wrote millions of lines of new com-
`puter code. Google also reused isolated instructions
`
`
`
`2
`from a work copyrighted by respondent Oracle, be-
`cause those were the only instructions that could per-
`form their functions. The instructions create an inter-
`face connecting the operating system to commands in
`applications written by software developers.
`The Federal Circuit both reversed the District
`Court’s holding that Oracle had no relevant copyright
`interest and overturned a jury’s finding that Google’s
`conduct was fair use. As reflected in the broad amicus
`support for Google, the Federal Circuit’s rulings would
`upend the long-settled practice of the computer soft-
`ware industry of reusing software interfaces. That
`practice has spurred the rapid development of interop-
`erable computer software and American technological
`progress in the digital era.
`I. FACTUAL BACKGROUND
`A. Android And The Java Programming
`Language
`1. The Android operating system. Smartphones
`are now “such a pervasive and insistent part of daily
`life that the proverbial visitor from Mars might con-
`clude that they were an important feature of human
`anatomy.” Riley v. California, 573 U.S. 373, 385
`(2014). But even recently, that was not true. Early
`mobile phones were much less useful, in part because
`many manufacturers used their own proprietary “op-
`erating systems”—i.e., software that controls the
`phone—for which few useful applications were cre-
`ated. See JA138-139; JA219; JA225-226; Trial Exhibit
`(TX) 7238 at 13.
`Google responded by creating Android, an “open
`source” operating system that worked with almost any
`smartphone. JA137-139; JA242; TX1 at 4-8; TX6 at
`
`
`
`3
`5-6, 23-24. Many phone manufacturers would adopt
`the operating system, Google recognized, leading
`many developers to write useful applications—such as
`programs for messaging, navigation, news, and social
`media. See ibid.
`Google designed Android so that developers who
`knew the “free and open” Java programming language
`could write applications. Pet. App. 102a. Roughly six
`million developers already had Java programming ex-
`pertise. JA228. This case arises from the require-
`ments imposed by the Java language for Google to per-
`mit Java developers to write applications using thou-
`sands of common commands they already know.
`2. Tools of the Java programming language: calls,
`methods, and declarations. Java developers depend on
`thousands of commands known as “calls.” The devel-
`opers become expert in using calls through formal
`training and years of experience. JA193-194. The de-
`velopers have the unfettered right to use the calls,
`which are not copyrighted. Dist. Ct. Docket (Doc.) 853
`at 5:20-22.
`A developer uses a call to invoke—i.e., use—sepa-
`rate, pre-written computer code called a “method.”
`Pet. App. 217a-218a, 228a. Each method performs a
`basic function—for example, determining the larger of
`two integers. See infra at 5-6. The methods are thus
`“interoperable” with any application that uses the cor-
`rect call.
`This approach to programming—which is used by
`every major programming language—makes it unnec-
`essary for developers to create their own versions of
`the method’s pre-written computer code. In addition,
`when that code is later improved or adapted to work
`
`
`
`4
`with new technology, developers need not go back and
`change their applications.
`Java developers use multiple calls to invoke meth-
`ods in every application; the language will not work
`without them. See, e.g., JA213-214; 2016 Trial Tran-
`script (Tr.) 1463:3-1464:19; TX9223. Developers call
`numerous methods, using them as building blocks to
`create sophisticated applications. Pet. App. 228a; id.
`at 125a.
`A call will not work correctly unless it corresponds
`precisely to instructions called “declarations.” There
`are more than ten thousand calls in Java, each with
`corresponding declarations. The declarations perform
`two functions that are relevant here.1
`First, declarations create the system that organ-
`izes the methods. Pet. App. 217a-218a. In Java, meth-
`ods are organized and stored in “libraries.”
`The Java language requires that the libraries be
`organized hierarchically. There are three levels. The
`top is composed of “packages.” Each package contains
`“classes.” Each class file contains methods.
`There is a declaration for every method, as well as
`for every class and package. Together, those declara-
`tions specify the method’s place in the library. Pet.
`App. 216a, 227a-228a.
`A library’s hierarchy is thus a filing system for the
`methods. See, e.g., 2012 Tr. 2205:3-2206:1. Each
`package is like a filing cabinet; each class like a
`drawer in that cabinet; and each method like a folder
`
`1 This brief uses the term “function” in the ordinary sense of
`what computer instructions do, as distinguished from the Java
`language’s technical usage of “function” as a type of method.
`
`
`
`5
`in that drawer. The declarations are labels identifying
`each cabinet and drawer, as well as the folder contain-
`ing the method.
`Notably, the hierarchy is not itself a computer
`program. And the declarations for a library therefore
`do not appear together (as would a contiguous segment
`of a computer program); they are scattered throughout
`the library.
`Second, and critically, declarations connect a Java
`developer’s call to its corresponding method. Pet. App.
`221a, 227a-228a. Together, the call and the declara-
`tion form the method’s “interface.” See id. at 226a-
`228a, 267a-268a; see also 2012 Tr. 2102:12-2103:6.2
`In the Java language, calls take the form of the
`method’s “fully qualified name.” That is the combined
`name
`of
`each
`element
`in
`the hierarchy:
`package.class.method. JA34-35; JA38-39; see also Pet.
`App. 223a-225a. If the call does not correspond
`precisely to declarations, it will not work correctly.3
`The computer code that performs a method’s func-
`tion is called “implementing code.” Implementing code
`can be written many different ways.
`3. An illustrative example. Here is an example of
`how calls, declarations, and methods work. A Java
`
`2 The brief uses the term “interface”—shorthand for “software
`interface”—in the ordinary sense of a means of connecting to,
`interacting with, or operating computer software, as distin-
`guished from the Java language’s technical usage of “interface”
`as a “reference type” for a class or method.
`3 In certain circumstances in which the developer has already
`specified the name of the package and/or class earlier in the ap-
`plication, the Java language may not require the developer to
`repeat those elements of the name again.
`
`
`
`6
`developer writes the call java.lang.Math.max(5, 10) to
`determine whether 5 or 10 is the larger number. That
`call invokes a method called max, which determines
`the larger of two integers. The call requires that the
`libraries contain precisely written declarations speci-
`fying the max method, within the Math class, within
`the java.lang package. The call and declarations to-
`gether establish an interface that makes the Java ap-
`plication interoperable with the max method. See Pet.
`App. 222a.4
`The call also identifies the numbers 5 and 10 as
`“arguments.” The declarations pass the arguments to
`the implementing code. The Java language does not
`require that any particular implementing code be used
`to determine which is the larger number. The decla-
`rations then return the answer to the developer’s ap-
`plication.
`
`public class Math {
`
`
`4 The call java.lang.Math.max(5, 10) requires that the
`libraries set forth the following three declarations, in this order
`(albeit often separated by other instructions):
` package java.lang;
` ...
`
` ...
`public static int max(int a, int b) {
`
`
`Pet. App. 224a. The declarations allow the Java language to
`recognize that call because they: (1) identify the java.lang
`package [ package java.lang; ], (2) create the Math class within
`that package [ public class Math { ], and (3) create the max
`method within that class [ public static int max(int a, int b) { ].
`The last of the three declarations also specifies that the max
`method will receive two integers [ (int a, int b) ] and will return
`an integer [ int ].
`
`
`
`7
`B. Android’s Reuse Of Declarations
`Necessary To Recognize Developers’
`Calls
`Google’s Android project took three years of work
`and more than 100 engineers to launch. JA45; JA116-
`117. Google’s engineers created thousands of new
`methods designed for creating smartphone applica-
`tions. See JA197-198. Google also designed Android
`to recognize the existing calls that Java developers
`would expect to use in developing smartphone applica-
`tions. JA47-50; JA169-170; JA203; JA213-214.
`The process of writing new software to perform
`certain functions of a legacy product is known as “re-
`implementation.” Through reimplementation, the
`new entrant creates its own computer code to perform
`the functions, but reuses the limited number of in-
`structions that are required to create the interface al-
`ready known by the users. See infra at 26-27.
`Android did not need to—and therefore did not—
`reimplement every method that Java developers al-
`ready knew. Originally, the Java language was de-
`signed and principally used to write programs for serv-
`ers and traditional desktop computers. JA151-152;
`JA228-229. Google determined that many of the Java
`methods were therefore inappropriate for smart-
`phones. JA48-50; JA169-170; JA264-265.
`Google’s engineers wrote from scratch (or ac-
`quired from others) the millions of lines of implement-
`ing code that perform the functions of all the Android
`methods—both new methods and those that Android
`reimplemented. Pet. App. 213a, 218a-219a. The engi-
`neers tailored that implementing code to the con-
`straints of smartphones, such as limited battery life
`
`
`
`8
`and computing power. JA158-160; JA167-168; JA197-
`198; JA204.
`But as discussed, the Java language would not
`permit Google to write its own declarations for those
`methods that Android reimplemented, without requir-
`ing Java developers to learn thousands of new calls.
`The developers’ calls only work with the methods’ orig-
`inal declarations. As the District Court found: “Signif-
`icantly, the rules of Java dictate the precise form of
`certain necessary lines of code called declarations,
`whose precise and necessary form explains why An-
`droid and Java must be identical when it comes to
`those particular lines of code.” Pet. App. 221a.
`Google’s engineering team therefore reused the
`mandatory declarations that correspond to the calls
`for the Java methods reimplemented by Android. Pet.
`App. 218a-221a. Those methods, and the declarations,
`were originally set forth in the “Java SE libraries,”5
`which are in turn included in a work called “Java 2
`SE” (Java SE). Respondent Oracle holds the copyright
`in Java SE through its acquisition of the creator, Sun
`Microsystems (Sun). Id. at 212a, 216a-218a.
`Because Google created its own computer code
`whenever possible—including thousands of new meth-
`ods and all the implementing code—Android reuses
`less than 0.5% of the 2.86 million lines of computer
`
`
`5 The lower courts sometimes referred to this collection of
`methods—including the implementing code—as the “Java SE
`API.” This brief uses the term “Java SE libraries” instead. An
`API is an “application programming interface.” As its name
`suggests, an API generally refers to the “interface” connecting
`“programs.” It generally does not refer as well to the
`implementing code that performs the methods’ functions.
`
`
`
`9
`code in the Java SE libraries. JA212. Those declara-
`tions amount to roughly 0.1% of the approximately 15
`million lines of computer code in Android. See ibid.
`Google released Android in 2007 as a free, open-
`source operating system for any smartphone manufac-
`turer to use. Pet. App. 219a; JA117-118; JA138-139.
`Countless new developers learned the Java language
`to create Android applications. See JA212-213. Sun
`publicly offered Google its “heartfelt congratulations,”
`because Android had “strapped another set of rockets
`to the [Java] community’s momentum.” JA130-133;
`JA148-149; TX2352. Independent developers using
`Java have created millions of Android applications
`used by more than a billion people.
`II. PROCEDURAL HISTORY
`Oracle brought this suit against Google for patent
`and copyright infringement. Doc. 1. Google prevailed
`on the patent claims, which Oracle abandoned on ap-
`peal. Based on Google’s reuse of declarations from the
`Java SE libraries, Oracle has sought more than $8 bil-
`lion in copyright damages.
`Oracle does not assert a copyright in the Java lan-
`guage or the developers’ calls. See, e.g., JA276; Doc.
`853 at 5:20-22. As to the latter, names and short
`phrases are not eligible for copyright protection. 37
`C.F.R. § 202.1(a). Oracle nonetheless asserts that its
`copyright in the Java SE libraries gives it the same
`power to control the developers’ use of their calls to
`create innovative applications, by indirection.
`A. Copyrightability And Infringement
`1. Original District Court proceedings. The Dis-
`trict Court rejected Oracle’s copyright claim, relying
`
`
`
`10
`principally on the “merger” doctrine. Section 102(b) of
`the Copyright Act prevents an author from securing
`the exclusive right to an idea or function itself, as op-
`posed to the author’s expression. 17 U.S.C. § 102(b).
`Merger precludes securing that right indirectly by as-
`serting copyright when there are only a limited num-
`ber of ways to express or embody the idea or function.
`Pet. App. 237a, 261a.
`Here, the District Court concluded, Oracle asserts
`an exclusive right to the declarations’ functions. Only
`the Java SE declarations can create the interface with
`the calls known to Java developers. The court rea-
`soned that “when there is only one way to write some-
`thing, the merger doctrine bars anyone from claiming
`exclusive copyright ownership of that expression.
`Therefore, there can be no copyright violation in using
`the identical declarations.” Pet. App. 264a.
`2. Oracle’s first appeal to the Federal Circuit. The
`Federal Circuit had appellate jurisdiction because Or-
`acle’s complaint had included patent claims. That
`court held that the merger doctrine does not exclude
`the declarations from copyright protection. The court
`did not doubt that only the precise instructions that
`Google reused would perform the declarations’ func-
`tion of responding properly to the existing calls used
`by developers. But it reasoned that “nothing pre-
`vented Google from writing its own declaring code,
`along with its own implementing code, to achieve the
`same” general “result” as the Java SE libraries. Pet.
`App. 151a-152a.
`The Federal Circuit also held that merger is inap-
`plicable because Sun made numerous decisions re-
`garding which methods to create, how to organize
`them, and what to name them. The court thus deemed
`
`
`
`11
`it irrelevant that the Java language gave Sun one way
`to express the choices it made. Pet. App. 150a-151a.
`The court also recognized that the declarations
`principally consist of names, which are not protected
`by copyright. But it held that Google had infringed Or-
`acle’s interest in a “compilation” of the methods’
`names. Pet. App. 153a-155a. Relatedly, the court held
`that Oracle’s copyright protected the non-literal
`“structure, sequence, and organization” (SSO) of the
`Java SE libraries—i.e., the filing system into which
`Sun sorted methods of a certain type, apart from their
`literal contents. Id. at 158a-166a.
`B. Fair Use
`1. The jury verdict on remand. The Federal Cir-
`cuit concluded that Google’s fair-use defense could not
`be resolved as a matter of law, and remanded. Pet.
`App. 182a-184a. The District Court conducted a two-
`week trial. The jury heard sworn testimony from doz-
`ens of witnesses and received voluminous documen-
`tary evidence. The parties agreed to accept a general
`verdict. The jury found that Google’s conduct was pro-
`tected as fair use.
`The District Court denied Oracle’s motion for
`judgment as a matter of law, finding ample evidence
`to support the jury’s verdict. The court explained that
`it had adopted Oracle’s proposed instruction directing
`the jury to decide fair use holistically based on all the
`facts. Pet. App. 116a. The court also found that the
`evidence presented easily supported the verdict with
`respect to the four illustrative factors set forth in 17
`U.S.C. § 107. The court gave several examples, but
`stressed that “many more variations and balancings
`
`
`
`12
`could have reasonably led to the same verdict.” Pet.
`App. 117a.
`First, regarding the purpose and character of the
`use, the court concluded that “though Google’s use was
`commercial, which weighed against fair use, the jury
`could reasonably have found the open-source charac-
`ter [i.e., the free distribution] of Android tempered
`Google’s overall commercial goals.” Pet. App. 108a.
`Further, the “jury could reasonably have found” An-
`droid to be “transformative,” because it used only a
`subset of the Java SE declarations, in combination
`with Google’s own implementing code and thousands
`of new methods, to create an innovative “mobile
`smartphone platform.” Id. at 111a.
`Second, regarding the nature of the work, the
`court recognized that Oracle had introduced evidence
`that its design of the Java SE libraries was to some
`degree creative. But “our jury could reasonably have
`gone the other way” and concluded that “functional
`considerations predominated in their design.” Pet.
`App. 113a-114a.
`Third, regarding the amount of the work used,
`“our jury could reasonably have found that Google du-
`plicated the bare minimum” from the Java SE librar-
`ies, “thus finding that Google copied only so much as
`was reasonably necessary for a transformative use.”
`Pet. App. 114a.
`Fourth, with respect to the effect of the use on the
`market for the work, “our jury could reasonably have
`found that use of the declar[ations] (including their
`[structure]) in Android caused no harm to the market
`for the copyrighted works.” Pet. App. 114a.
`
`
`
`13
`2. Oracle’s renewed appeal. On Oracle’s appeal,
`the same panel of the Federal Circuit this time deemed
`fair use to be a question of law that is reviewed de
`novo, treated the jury’s verdict as “advisory,” and re-
`versed it. Pet. App. 19a, 23a-24a, 55a. The court
`agreed that the verdict established that the declara-
`tions are highly functional and have little expressive
`value. Id. at 42a. Nonetheless, it held as a matter of
`law that no reasonable jury could find that Google had
`engaged in fair use, principally because Google had
`supposedly used the declarations for the same purpose
`as had Oracle, in a commercial product, in a market in
`which Oracle said it wanted to compete. Id. at 53a-
`54a.
`
`SUMMARY OF THE ARGUMENT
`I. Oracle has no interest protected by copyright in
`the declarations of the Java SE libraries. This case is
`controlled by the merger doctrine, which holds that
`copyright protection does not apply when there are
`only a few ways to express or embody a particular
`function.
`Over the course of three years, more than 100
`Google engineers worked to create Android. Google
`had the right to reimplement methods from the Java
`SE libraries, in which Oracle holds no patent. To do
`that, Google wrote its own implementing code to per-
`form the methods’ functions.
`Google reused declarations from the Java SE li-
`braries because—and only because—no other option
`would recognize the calls used by Java developers. If
`it had been possible to create from scratch the minus-
`cule portion of Android represented by the Java SE
`declarations, and still have those declarations function
`
`
`
`14
`as intended, Google’s engineers would have done so.
`Those declarations were not beyond Google’s capacity
`to create. The opposite is true: They were rote, de min-
`imis instructions that easily fall within the rule that
`short phrases do not involve enough expression to re-
`ceive copyright protection.
`Because no other instructions can perform the dec-
`larations’ function, merger excludes them from copy-
`right protection. Any other result would impermissi-
`bly convert Oracle’s copyright in the declarations’ ex-
`pression into an exclusive right to the declarations’
`function.
`Google therefore had the right to reuse the decla-
`rations, free from Oracle’s assertion o
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