throbber
No. 18-956
`
`
`In the
`Supreme Court of the United States
`
`GOOGLE LLC,
`Petitioner,
`v.
`ORACLE AMERICA, INC.,
`Respondent.
`
`On Writ of Certiorari to the United States
`Court of Appeals for the Federal Circuit
`
`BRIEF OF AMICI CURIAE AUTO CARE
`ASSOCIATION AND STATIC CONTROL
`COMPONENTS, INC. IN SUPPORT OF THE
`PETITIONER
`
`
`Seth D. Greenstein
` Counsel of Record
`Robert S. Schwartz
`Constantine Cannon LLP
`1001 Pennsylvania Ave., N.W.
`Suite 1300 North
`Washington, D.C. 20004
`(202) 204-3500
`sgreenstein@constantinecannon.com
`
`Counsel for Amici Curiae Auto Care Association and
`Static Control Components, Inc.
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`i
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS .............................................. i 
`TABLE OF AUTHORITIES ...................................... ii 
`STATEMENT OF INTEREST ................................... 1 
`SUMMARY OF ARGUMENT .................................... 3 
`ARGUMENT ............................................................... 5 
`INDEPENDENT BUSINESSES THAT
`I. 
`REPAIR SOFTWARE-ENABLED PRO-
`DUCTS RELY ON ACCESS AND
`INTEROPERABILITY WITH NON-
`COPYRIGHTABLE ELEMENTS OF APIS .... 5 
`PROPER INTERPRETATION OF
`COPYRIGHT LAW AND DOCTRINES
`SHOWS THAT API DECLARING CODE IS
`NOT PROTECTABLE BY COPYRIGHT ...... 12 
`CONCLUSION .......................................................... 17 
`
`
`II. 
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`ii
`
`TABLE OF AUTHORITIES
`
`
`CASES
`
`ATC Distribution Grp., Inc. v. Whatever It Takes
`Transmissions,
`402 F.3d 700 (6th Cir. 2005) ........................ 13
`Chamberlain Grp. v. Skylink Tech.,
`381 F.3d 1178 (Fed. Cir. 2004) .................... 11
`Computer Assocs. Int’l v. Altai, Inc.,
`982 F.2d 693 (2d Cir. 1992) ..................... 4, 13
`Feist Publ’ns Inc. v. Rural Tel. Serv. Co.,
`499 U.S. 340 (1991) .................... 12, 13, 14, 15
`Ford Motor Co. v. AUTEL US Inc., No. 14-13760,
`2015 WL 5729067, Op. and Order,
`(E.D. Mich. Sept. 30, 2015) ............................ 8
`Gates Rubber Co. v. Bando Chem. Indus., Ltd.,
`9 F.3d 823 (10th Cir. 1993) .......................... 13
`General Motors LLC v. Dorman Prods., Inc.,
`No. 15-12917 2016, WL 5661578
`(E.D. Mich. Sept. 30, 2016) ............................ 8
`Impression Prods. v. Lexmark Int’l.,
`137 S. Ct. 1523 (2017) .................................... 7
`In re Keurig Green Mountain,
`383 F. Supp. 3d 187 (S.D.N.Y. 2019) ........... 10
`Lexmark Int’l v. Static Control Components,
`387 F.3d 522 (6th Cir. 2004) ................ passim
`
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`

`

`iii
`
`Lexmark Int’l v. Static Control Components,
`134 S. Ct. 1377 (2014) .................................... 9
`MDY Indus. v. Blizzard Entm’t,
`629 F.3d 928 (9th Cir. 2010) ........................ 11
`Mitel, Inc. v. Iqtel, Inc.,
`124 F.3d 1366 (10th Cir. 1997) .................... 13
`Oracle Am. v. Google,
`750 F.3d 1339 (Fed. Cir. 2014) .................... 15
`Sega Enters. v. Accolade, Inc.,
`977 F.2d 1510 (9th Cir. 1992) ...................... 15
`Sony Comput. Entm’t v. Connectix Corp.,
`203 F.3d 596 (9th Cir. 2000) ........................ 15
`Southco, Inc. v. Kanebridge Corp,
`390 F.3d 276 (3d Cir. 2004) ......................... 13
`Star Athletica v. Varsity Brands,
`137 S. Ct. 1002 (2017) .................................. 14
`Static Control Components v. Lexmark Int’l,
`Nos. Civ. A. 02-571, Civ. A. 04-84,
`2007 WL 1485770
`(E.D. Ky. Apr. 18, 2007) ............................... 10
`Universal City Studios v. Corley,
`273 F.3d 429 (2d Cir. 2001) ......................... 11
`STATUTES
`17 U.S.C. § 102 ........................................................ 12
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`iv
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`17 U.S.C. § 102(b) ......................................... 3, 12, 14
`17 U.S.C. § 1201(a) ......................................... passim
`REGULATIONS
`37 C.F.R. § 202.1(a) ............................................. 3, 13
`37 C.F.R. pt. 201 ..................................................... 10
`GOVERNMENTAL AUTHORITIES
`Environmental Protection Agency, Comprehensive
`Procurement Guidelines for Non-paper Office
`Products .............................................................. 2
`Exemption to Prohibition on Circumvention of
`Copyright Protection Systems for Access Control
`Technologies, 83 Fed. Reg. 54010
`(Oct. 26, 2018) .................................................... 10
`U.S. Copyright Office, A Report of the Register of
`Copyrights, Section 1201 of Title 17
`(June 2017) ................................................. 11, 12
`U.S. Copyright Office, A Report of the Register of
`Copyrights, Software-Enabled Consumer
`Products (Dec. 2016) .................................... 11, 12
`OTHER AUTHORITIES
`Adam Minter, U.S. Farmers Are Being Bled by the
`Tractor Monopoly, Bloomberg (Apr. 23, 2019) ... 9
`Brian Barrett, Keurig’s My K-Cup Retreat Shows
`We Can Beat DRM, Wired (May 8, 2015) ......... 10
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`v
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`Colin Beresford, Midwest Farmers Are Tired of
`Tech-Loaded Tractors They Can’t Fix, Car and
`Driver (Jan. 8, 2020) ......................................... 10
`Cory Doctorow, HP once again caught sneaking code
`into printers to reject third-party ink,
`boingboing.net (Sept. 14, 2017) .......................... 9
`Gopal Ratnam, Your Car is Watching You. Who
`Owns the Data?, Roll Call, (Apr. 9, 2019) .......... 6
`Hari Vasudevan, Vilas Kalamkar, Ravi Terkar,
`Remanufacturing for Sustainable Development:
`Key Challenges, Elements, and Benefits, 3 The
`International Journal of Innovation,
`Management and Technology, No. 1, Feb. 2012 2
`Kyle Wiens and Elizabeth Chamberlain, John Deere
`Just Swindled Farmers out of Their Right to
`Repair, Wired, (Sept. 9, 2018) ............................ 9
`Robert N. Charette, This Car Runs on Code, IEEE
`Spectrum (Feb. 1, 2009) ...................................... 6
`Sebastian Blanco, Bridgestone Rolls Out a
`Connected Tire Concept Claimed to Make You
`Safer, Car and Driver (Jan. 8, 2020) .................. 6
`The Recycler, New Firmware updates affect
`aftermarket cartridges (Mar. 27, 2019) .............. 9
`William Shakespeare, Romeo and Juliet,
`act 2, sc. 2 .......................................................... 15
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`1
`
`STATEMENT OF INTEREST1
`
`
`
`Amici represent the interests of companies
`compete
`against
`original
`equipment
`that
`manufacturers (“OEMs”) for sale and for repair and
`customization of products in the automotive and
`office
`technology
`industries, which products’
`functions are controlled by software embedded in
`semiconductor chips.
`
`
`Auto Care Association is a national trade
`organization of over 3,000 members representing
`more than 150,000 independent businesses that
`manufacture, distribute, and sell motor vehicle
`parts, accessories, tools, equipment, materials, and
`supplies, and perform vehicle service and repair.
`Following expiration of a new car warranty, over
`70% of car owners who patronize auto repair shops
`rely on independent repair shops over new car
`dealers. The independent auto care industry added
`some $405 billion to the American economy in 2018
`(about 2% of GDP), and provided employment to
`more than 4.7 million workers.
`
`
`Static Control Components, Inc. is a supplier
`of components to the imaging supplies industry,
`including
`thousands of components used by
`aftermarket competitors to recondition and repair
`
`
`1 The parties have consented to the filing of this brief. No
`counsel for a party authored this brief in whole or in part, and
`no counsel or party made a monetary contribution intended to
`fund the preparation or submission of this brief. No person
`other than amici or their counsel made a monetary contribution
`to its preparation or submission.
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`2
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`hundreds of OEM printer cartridge models.
`Acquisition guidelines of federal agencies, state and
`municipal governments, and corporations give
`preference to purchasing refurbished recycled toner
`cartridges.2 Remanufactured cartridges constitute
`some 30-35% of annual cartridge sales; but some
`375 million cartridges still are discarded into
`landfills annually.3
`
`Virtually every modern product is controlled
`by software. To diagnose and repair those products,
`and to create competitive and improved products,
`the businesses built by amici depend on the right to
`access and interface with software. The Federal
`Circuit’s decision threatens that right to repair by
`granting overbroad copyright protection to the
`declaring code of application program interfaces
`(“APIs”). Uncertainty over the scope of copyright in
`functional software code, in turn, has emboldened
`OEMs to file suits for copyright infringement and
`circumvention under
`the Digital Millennium
`Copyright Act of 1998 (“DMCA”) against service,
`repair, replacement parts, and customization
`deemed lawful under patent and competition law.
`
`2 See Environmental Protection Agency, Comprehensive
`
`
`for Non-paper Office Products,
`Procurement Guidelines
`https://www.epa.gov/smm/comprehensive-procurement-
`guidelines-non-paper-office-products#08 (last visited Jan. 8,
`2020). The computer printers in this Court’s chambers likely
`use remanufactured printer cartridges.
`3 Hari Vasudevan, Vilas Kalamkar, Ravi Terkar,
`Remanufacturing
`for Sustainable Development:
` Key
`Challenges, Elements, and Benefits, 3 The International
`Journal of Innovation, Management and Technology, No. 1,
`Feb. 2012, http://www.ijimt.org/papers/202-CM026.pdf.
`
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`3
`
`
`Therefore, the amici submit this brief to
`elucidate for the Court the harm that the Federal
`Circuit’s misinterpretation of Copyright Act Section
`102(b) will
`cause
`to aftermarket
`commerce
`generally and the industries which the amici
`represent.
`
`
`SUMMARY OF ARGUMENT
`
`
`Virtually every product with a button,
`display, plug, or battery runs on software. On a
`daily basis, consumers use hundreds of computer
`programs embedded in chips within these products.
`Those programs commonly interoperate with other
`programs to enable these devices to perform their
`intended functions. The information necessary to
`enable that interoperability is contained in the
`declaring code of an application program interface,
`or “API.” Thus, to maintain, service, repair,
`customize, and refurbish these OEM products,
`competitors must access the product software
`applications through the program interface.
`
`The majority of courts have correctly held
`that the functions and procedures in declaring
`code—designed to enable data exchange, access,
`and
`interop-erability—are not protectable by
`copyright. Section 102(b) excludes from copyright
`ideas,
`facts, procedures, processes, methods,
`numerical values, and systems. Names and short
`phrases assigned
`to API
`functions are not
`copyrightable. 37 C.F.R. § 202.1(a). The doctrines
`of merger and scènes à faire preclude copyright
`
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`4
`
`protection for program code that reflects standard
`programming techniques and technical constraints
`imposed by programming languages and hardware.
`See Computer Assocs. Int’l v. Altai, Inc., 982 F.2d
`693, 707-710 (2d Cir. 1992); Lexmark Int’l v. Static
`Control Components, 387 F.3d 522, 534-537 (6th
`Cir. 2004).
`
`
`to APIs
`copyright protection
`Granting
`threatens otherwise lawful competition for repair,
`replacement, and customization of software-enabled
`products. Over the last 20 years, independent
`businesses that offer products and services that rely
`on interoperability have faced bet-the-company
`lawsuits alleging copyright
`infringement and,
`increasingly, circumvention under the DMCA. Fair
`use may protect these competitors against copyright
`infringement claims, but courts have held fair use
`does not exempt violations of the DMCA.
`
`While this Court consistently has interpreted
`intellectual property rights so as not to interfere
`with the public’s right to repair the chattels they
`own, the Federal Circuit opinion would allow OEMs
`to
`leverage
`copyright
`to bar
`independent
`competition
`for replacement parts and repair
`services. Amici therefore urge this Court to reverse
`the opinion below, and to clarify under existing law
`that copyright protection should not be accorded to
`API declaring code that specifies the data and
`functions necessary to interoperability.
`
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`5
`
`ARGUMENT
`
`I.
`
`
`INDEPENDENT BUSINESSES THAT
`REPAIR SOFTWARE-ENABLED PRO-
`DUCTS RELY ON ACCESS AND
`INTEROPERABILITY WITH
`NON-
`COPYRIGHTABLE ELEMENTS OF
`APIS.
`
`By misinterpreting the scope of copyright-
`ability for API declaring code, the Federal Circuit
`has sanctioned the use of copyright to block lawful
`competition – thereby restricting consumer choice,
`increasing
`consumer
`prices,
`and
`stifling
`aftermarket innovation for every software-enabled
`product. Meaning, virtually every product.
`
`This case is not just about smart phones or
`devices ordinarily thought of as “computers.” The
`humdrum devices used daily—alarm clocks, coffee
`makers, microwave ovens, garage door openers,
`refrigerators, and laundry machines—operate on
`software embedded in semiconductor chips.
`
`The amici’s industries exemplify this trend of
`products
`increasingly
`incorporating
`software
`controls:
`
` It is no exaggeration to call cars “computers
`on wheels.” In 2000, a typical SUV had fewer
`than ten
`(10) modules with embedded
`software controllers. By 2019, that same
`vehicle model
`incorporated 70 or more
`software units. The latest innovation –
`
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`6
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`computer-connected tires – were rolled out at
`last week’s 2020 Consumer Electronics
`Show.4
`
`contain
`cartridges
`printer
` Computer
`semiconductor chips with software code and
`data that interoperate with the specific make
`and model printer and printer software.
`
`
`
`Today’s repair shop toolboxes add laptop
`computers and specialized software diagnostics to
`the mix of wrenches and screwdrivers that once
`were sufficient to get the job done. Repairing
`products with embedded software now requires
`independent services to (a) access OEM software
`and stored operations data, (b) replace broken
`physical parts with new physical parts loaded with
`the same software, (c) replace or modify the existing
`code, or (d) replace or add parts with independently
`developed code.5
`
`
`
`4 Sebastian Blanco, Bridgestone Rolls Out a Connected
`Tire Concept Claimed to Make You Safer, Car and Driver, (Jan.
`8, 2020),
`https://www.caranddriver.com/news/a30443516/bridgestone-
`connected-tire/; see also, Robert N. Charette, This Car Runs on
`Code,
`IEEE
`Spectrum
`(Feb.
`1,
`2009),
`http://spectrum.ieee.org/transportation/systems/this-car-runs-
`on-code.
`5 Automotive computing systems also generate massive
`amounts of data detailing vehicle and driver operations, and
`access to that data can be necessary to repair or improve
`vehicle functions. See Gopal Ratnam, Your Car is Watching
`You. Who Owns the Data?, Roll Call, (Apr. 9, 2019),
`https://www.rollcall.com/news/policy/cars-data-privacy.
`
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`

`7
`
`All of these services depend upon the inter-
`operability of the replacement parts and program
`code to access and exchange data with the existing
`OEM product software.
` That interoperability
`depends, in turn, on the ability of independent
`competitors to access and use non-copyrightable
`elements of the OEM product code free from claims
`under copyright law. Independent competitors use
`this API declaring code to correct OEM design
`issues
`discovered
`in
`use,
`and
`innovate
`improvements on the OEM product functions, such
`as more granular regulation of a vehicle’s fuel
`mixture or monitoring of ink and toner levels.6
`
`This Court recently reaffirmed that patent
`does not
`restrict
`independent
`parts
`law
`manufacturers and repair services from repairing
`products under principles of patent exhaustion and
`competition law. See Impression Prods. v. Lexmark
`Int’l., 137 S. Ct. 1523 (2017). But while the Court
`has opened the doors of patent law to permit
`independent repair, OEMs increasingly are turning
`to copyright law to stifle competition to service and
`repair OEM products with embedded software. In
`addition to asserting rights in methods and data in
`embedded
`software,
`OEMs
`incorporate
`technological protection measures
`(such as
`cryptographic “handshakes”) in their products—
`thereby leveraging both copyright infringement and
`
`6 For example, Static Control’s “AllPage” technology
`saves consumers as much as 15-30% of toner over OEM
`software by more accurately reporting the number of printable
`pages
`remaining
`from a
`cartridge.
` https://www.scc-
`inc.com/allpage/index.html (last visited Jan. 8, 2020).
`
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`8
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`the DMCA against lawful aftermarket competition,
`to the detriment of consumers and independent
`businesses.7 For example:
`
` Automobile manufacturers such as Ford
`Motor Company and General Motors have
`filed litigation against replacement parts
`manufacturers,
`based
`on
`alleged
`infringement of copyright and violations of
`the anticircumvention provisions of the
`DMCA.8
`
` Computer printers implement software-based
`technological measures
`to prevent and
`restrict
`consumer use
`of
`competitive
`remanufactured printer cartridges.
` For
`example, HP uses
`“Toner Cartridge
`Authentication technology” to “ensure that
`any cartridge(s) installed in the printer is a
`genuine HP LaserJet supply” – i.e., not a
`competitor’s
`less expensive
`replacement
`
`
`
`7 The Digital Millennium Copyright Act of 1998
`provides stiff statutory damages and injunctive remedies
`against unauthorized circumvention of technological measures
`(such as passwords or cryptographic authentication methods)
`that control access to copyrighted works, and that protect a
`right of copyright owners in copyrighted works (such as by
`encrypting the works). 17 U.S.C. § 1201(a)(1) and (2). While
`intended to protect emerging digital and online commerce, as
`explained herein OEMs have wielded the DMCA—generally
`unsuccessfully—against aftermarket competitors in a variety of
`industries.
`8 General Motors LLC v. Dorman Prods, Inc., No. 15-
`12917 2016 WL 5661578 (E.D. Mich. Sept. 30, 2016); Ford
`Motor Co. v. AUTEL US Inc., No. 14-13760, 2015 WL 5729067,
`Op. and Order, (E.D. Mich. Sept. 30, 2015).
`
` 
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`

`9
`
`cartridge.9 As another example, Lexmark
`used
`software
`encryption between
`its
`printers and a cartridge chip to lock-out
`competitors’
`remanufactured
`recycled
`cartridges; and sued competitors for alleged
`copyright infringement and DMCA violations
`for developing
`replacement
`chips and
`cartridges.10
`
`technological
`implements
` John Deere
`barriers to prevent farmers from accessing
`software to troubleshoot and repair their own
`equipment.11
` Lost time during spring
`planting and fall harvesting seasons can cost
`these farmers tens of thousands of dollars –
`
`9 See HP Customer Support Knowledge Base,
`https://support.hp.com/us-en/document/c02632486 (last visited
`Jan. 8, 2020); see also Cory Doctorow, HP once again caught
`ink,
`sneaking code
`into printers
`to reject
`third-party
`boingboing.net
`(Sept.
`14,
`2017),
`https://boingboing.net/2017/09/14/repeat-offenders.html.
`Brother Int’l. Corp. similarly updates printer firmware to lock
`out competitor cartridges. The Recycler, New Firmware
`updates affect aftermarket cartridges
`(Mar. 27, 2019),
`https://www.therecycler.com/posts/new-firmware-updates-
`affect-aftermarket-cartridges/.
`10 Lexmark Int’l v. Static Control Components,
`134 S. Ct. 1377, 1383-84 (2014). See also, Impression Prods.,
`137 S. Ct. at 1529-30.
`11 See Adam Minter, U.S. Farmers Are Being Bled by
`the Tractor Monopoly, Bloomberg
`(Apr.
`23,
`2019),
`https://www.bloomberg.com/opinion/articles/2019-04-23/u-s-
`farmers-need-a-better-way-to-fix-their-tractors; Kyle Wiens and
`Elizabeth Chamberlain, John Deere Just Swindled Farmers out
`to Repair, Wired,
`(Sept. 9, 2018).
`of Their Right
`https://www.wired.com/story/john-deere-farmers-right-to-
`repair/.
`
`
`
` 
`
`
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`

`10
`
`not to mention the higher cost of service by
`an “authorized” dealer – and so many
`farmers are buying older tractors they can fix
`themselves.12
`
` Software in Keurig’s “2.0” coffee maker
`rejected
`coffee pods without Keurig’s
`“interactive” seal.13
`
` Manufacturers of medical devices such as
`CPAP machines deploy
`software-based
`measures to restrict access to collected
`data.14
`
`
`
`Careful analysis of copyrightability is crucial
`to these cases for two reasons. First, embedded
`software programs often consist of short, purely
`functional
`code written
`using
`standard
`programming techniques within constraints that
`merge
`the
`function and
`the
`expression.15
`
`12 Colin Beresford, Midwest Farmers Are Tired of Tech-
`Loaded Tractors They Can’t Fix, Car and Driver (Jan. 8, 2020),
`https://www.caranddriver.com/news/a30444879/midwest-
`farmers-buying-older-tractors/.
`13 In re Keurig Green Mountain, 383 F. Supp. 3d 187,
`214, 230-31 (S.D.N.Y. 2019); Brian Barrett, Keurig’s My K-Cup
`Retreat Shows We Can Beat DRM, Wired (May 8, 2015),
`https://www.wired.com/2015/05/keurig-k-cup-drm/.
`14 The Librarian of Congress determined, in a triennial
`proceeding, that circum-vention of such technological measures
`does not violate Section 1201(a)(1) of the DMCA. Exemption to
`Prohibition on Circumvention of Copyright Protection Systems
`for Access Control Technologies, 83 Fed. Reg. 54010, 54013,
`54029 (Oct. 26, 2018) (codified at 37 C.F.R. pt. 201).
`15 See Lexmark v. Static Control, 387 F.3d at 539-540;
`Static Control Components v. Lexmark Int’l, Nos. Civ. A. 02-
`
`
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`

`11
`
`Accordingly, such programs may not qualify for
`copyright protection in the first instance. Second,
`DMCA anticircumvention liability obtains only
`where the technological measure protects against
`unauthorized access to or use of a copyrighted work.
`Thus, non-copyrightability is a complete defense to
`DMCA liability; but the majority of courts hold that
`fair use is not.16
`
`The Copyright Office studied the impact of
`copyright law and the DMCA on software-enabled
`products, and concluded that copyright law should
`not impede repair and modification either as a
`matter of copyright infringement or under Section
`1201 of the DMCA.17 As the Register observed,
`Congress did not intend “that section 1201 would
`serve as a sword to inhibit market entrants from
`offering competing consumer products.” 1201 Study
`
`
`571, Civ. A. 04-84, 2007 WL 1485770 (E.D. Ky. Apr. 18, 2007)
`(granting summary judgment of non-copyrightability of copied
`embedded program).
`16 See MDY Indus. v. Blizzard Entm’t, 629 F.3d 928 (9th
`Cir. 2010) (rejecting fair use defense to DMCA circumvention
`proscriptions); Universal City Studios v. Corley, 273 F.3d 429,
`443-444 (2d Cir. 2001) (DMCA “targets the circumvention of
`digital walls guarding copyrighted material . . . but does not
`concern
`itself with
`the use of
`those materials after
`circumvention has occurred.”); but see Chamberlain Grp. v.
`Skylink Tech., 381 F.3d 1178 (Fed. Cir. 2004) (in case involving
`aftermarket
`garage door
`openers,
`restricting DMCA
`proscriptions to circumvention in aid of infringement).
`17 U.S. Copyright Office, A Report of the Register of
`Copyrights, Section 1201 of Title 17, at 38-40, 47-49 (June
`2017) (“1201 Study”); U.S. Copyright Office, A Report of the
`Register of Copyrights, Software-Enabled Consumer Products
`at 27-41 (Dec. 2016).
`
`
`
`
`
`
`
`
`
`
`

`

`12
`
`concluded,
`the Register
` Similarly,
`at 48.
`“[t]raditional copyright doctrines such as the
`idea/expression dichotomy, merger, scènes à faire,
`and fair use provide a combined and reasonable
`defense for many tinkering and repair activities.”
`Software-Enabled Consumer Products Study at 33.
`
`But the Register’s finding came with a
`caveat, presciently pertinent to this case: repair of
`software-enabled products may be accommodated
`under
`“current
`copyright
`law,
`properly
`interpreted. . . .” Id. (emphasis added). Thus, if not
`corrected by this Court, the Federal Circuit’s
`improper
`interpretation of copyright
`law will
`reverberate throughout markets for all software-
`enabled products, and thwart consumers’ and
`competitors’ lawful right to repair.
`
`OF
`INTERPRETATION
`PROPER
`COPYRIGHT LAW AND DOCTRINES
`SHOWS THAT API DECLARING CODE
`IS
`NOT
`PROTECTABLE
`BY
`COPYRIGHT.
`
`Copyright protection extends only to copy-
`rightable subject matter under Section 102, and
`“only to those components of a work that are
`original to the author.” Feist Publ’ns Inc. v. Rural
`Tel. Serv. Co., 499 U.S. 340, 348
`(1991).
`Copyrightable subject matter excludes
`ideas,
`procedures, methods of operation, concepts, and
`principles, 17 U.S.C. § 102(b), all of which functions
`form the heart of API declaring code.
`
`
`II.
`
`
`
`
`
`
`
`
`
`
`

`

`13
`
`Traditional doctrines constraining copyright-
`ability have been contextually applied to computer
`program code. Where a particular idea can only be
`expressed in a limited number of ways, the
`“merger” doctrine denies copyright protection to
`those components. See Gates Rubber Co. v. Bando
`Chem. Indus., Ltd., 9 F.3d 823, 836-37 (10th Cir.
`1993). Facts, such as numerical values, cannot be
`protected. Id. at 837. Names assigned to API
`routines and functions are not copyrightable. 37
`C.F.R. § 202.1(a). See Mitel, Inc. v. Iqtel, Inc., 124
`F.3d 1366, 1373 (10th Cir. 1997) (finding neither
`names of functions nor numerical values merit
`copyright protection).18 Code that follows typical
`programming practices, or reflects constraints
`imposed by programming languages, hardware, or
`size limitations, also cannot be copyrightable (or
`deemed to be “original” reflections of authorship)
`under the scènes à faire doctrine. See Computer
`Assocs. v. Altai, 982 F.2d at 707-710; Lexmark v.
`Static Control, 387 F.3d at 534-537.
`
`For nearly three decades, courts assessing
`the copyrightability of computer programs have
`applied the Computer Assocs. v. Altai “abstraction-
`filtration-comparison” test to determine, first, what
`elements of a program are copyrightable, and then
`whether copyrightable elements were infringed.
`
`18 See also ATC Distribution Grp., Inc. v. Whatever It
`Takes Transmissions, 402 F. 3d 700 (6th Cir. 2005) (holding
`catalog parts numbers not copyrightable); Southco, Inc. v.
`Kanebridge Corp, 390 F.3d 276 (3d Cir. 2004) (en banc)
`(holding, inter alia, part numbers excluded from copyright
`protection as analogous to short phrases or titles).
`
`
`
`
`
`
`
`
`
`
`

`

`14
`
`This “A-F-C” test is fully consonant with this
`Court’s precedents. As Feist observed, “[t]he mere
`fact that a work is copyrighted does not mean that
`every element of the work may be protected.” Id.,
`499 U.S. at 348. Cf. Star Athletica v. Varsity
`Brands, 137 S. Ct. 1002, 1016 (2017) (holding that
`features designed into useful articles must be
`capable of being perceived, and must be assessed
`for protectability, separately
`from the useful
`article).
`
`The Federal Circuit failed to correctly apply
`the A-F-C test and thus erroneously concluded that
`the API declaring code could be protected by
`copyright. First, the Federal Circuit erred in
`considering these doctrines in the infringement
`analysis,
`rather
`than
`as
`elements
`of
`copyrightability. Where the range of expression
`available to a programmer is so limited that the
`expression and the idea become one, the expression
`the
`idea, and
`ideas are excluded
`from
`is
`copyrightable subject matter under Section 102(b).
`Similarly, scènes à
`faire
` excludes elements
`compelled by externalities which, by definition,
`cannot be original authorship—again, affecting
`copyrightability rather than infringement. See
`Lexmark v. Static Control, 387 F.3d at 539 (noting
`that these doctrines “discern whether ‘originality’
`exists in the work”).
`
`Second, the Federal Circuit erroneously
`reversed the district court finding of merger merely
`because Oracle or Google could have assigned
`different names to API declaring code functions or
`
`
`
`
`
`
`
`
`
`
`

`

`15
`
`variables. Oracle Am. v. Google, 750 F.3d 1339,
`1361 (Fed. Cir. 2014). Names are not copyrightable
`expression, so adopting the same non-protectable
`names cannot constitute infringement.19 Moreover,
`the Federal Circuit’s approach ignores the key
`inquiry: whether the declaring code as written was
`original, not whether there were alternative ways to
`name (or even write) the declaring code. The phone
`listings in Feist could have been arranged in an
`original manner, but that did not render their non-
`original arrangement protectable. See Lexmark v.
`Static Control, 387 F.3d at 538.
`
`the Federal Circuit erroneously
`Third,
`concluded that use of the declaring code for
`purposes of interoperability pertained only to fair
`use but not protectability. The Ninth Circuit cases
`cited by the Federal Circuit held that the fair use
`defense exempted from infringement intermediate
`copying of program code to access
`its non-
`copyrightable elements (such as ideas and lock-out
`codes), while confirming that those functional
`elements themselves were unprotected. See Sony
`Comput. Entm’t v. Connectix Corp., 203 F.3d 596,
`603-604 (9th Cir. 2000); Sega Enters. v. Accolade,
`Inc., 977 F.2d 1510, 1518 (9th Cir. 1992). The
`district court here held, correctly, that the declaring
`code is functional—it defines the methods of
`operation
`that
`enable
`independently-written
`
`19 Supra, at 12. Differences between the names
`“math.max,” “math.maximum,” and “Arith.larger” are so
`minute as to lack authorship and originality, and can have no
`legal significance for purposes of the merger doctrine. Cf.
`William Shakespeare, Romeo and Juliet, act 2, sc. 2, at 45-46.
`
`
`
`
`
`
`
`
`
`
`

`

`16
`
`programs to operate in the Java environment, and
`it has to be used precisely as-is, without alteration,
`to achieve interoperability.
`
`
`* * *
`
`
`
`This Court consistently has reaffirmed the
`right of consumers and competitors to repair
`patented articles under principles of patent law.
`The Court’s decision here will determine whether
`copyright law becomes the new gatekeeper over
`competition for compatible products and services.
`There
`is no policy
`justification to treat any
`differently the right to repair products controlled by
`functional computer code than products that
`implement utility patents.
` Indeed,
`it would
`contravene long-standing copyright doctrines if
`courts vested API declaring code, intended as the
`engine of innovation and interoperability, with the
`power to stifle competition.
`
`
`
`
`
`
`
`
`
`
`

`

`17
`
`CONCLUSION
`
`
`
`The Federal Circuit decision should be
`reversed.
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`Seth D. Greenstein
` Counsel of Record
`Robert S. Schwartz
`Constantine Cannon LLP
`1001 Pennsylvania Ave., N.W.
`Suite 1300 North
`Washington, D.C. 20004
`(202) 204-3500
`sgreenstein@constantinecannon.com
`
`
`
`
`
`
`
`

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