throbber

`
`No. 18-956
`================================================================================================================
`
`In The
`Supreme Court of the United States
`
`---------------------------------  ---------------------------------
`
`GOOGLE LLC,
`
`v.
`
`ORACLE AMERICA, INC.,
`
`Petitioner,
`
`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
`
`
`
`

`

`i
`
`TABLE OF CONTENTS
`
`3
`
`Page
`TABLE OF AUTHORITIES .................................
`iv
`INTEREST OF AMICI CURIAE .........................
`1
`SUMMARY OF ARGUMENT ..............................
`1
`ARGUMENT ........................................................
`3
`
`I. This Court’s Precedents, the Text of the
`Copyright Act, and Sound Copyright Policy
`Require the Exclusion of Program Inter-
`faces from Copyright’s Scope ......................
`A. This Court Originated the Exclusion of
`Systems, Methods, and Their Constitu-
`ent Elements from the Scope of Copy-
`right Protection ....................................
`B. Congress Codified the Well-Established
`Exclusion of Systems and Methods in
`§ 102(b) ................................................. 11
`C. The Federal Circuit’s Oracle Decision Ig-
`nored the § 102(b) System/Method Exclu-
`sions ..................................................... 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 Be-
`fore Assessing Infringement .............. 15
`
`6
`
`

`

`ii
`
`TABLE OF CONTENTS—Continued
`
`Page
`3. Methods and Systems Are Part of
`Program Structure, Sequence, and
`Organization, so SSO Obscures Ra-
`ther Than Clarifies Expressive As-
`pects of Software ............................. 16
`D. Key Post-1976 Act Decisions Follow
`Baker in Excluding Methods, Systems,
`and Their Constituent Elements from
`Copyright’s Scope ................................ 17
`E. Consistent with Baker and § 102(b),
`Program Interfaces Should Be Consid-
`ered Unprotectable Procedures, Meth-
`ods, or Systems .................................... 21
` II. The Federal Circuit’s Merger Analysis Is
`Irreconcilable with Baker and Other Per-
`suasive 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 Inter-
`faces 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 Pro-
`tectable by Copyright ........................... 32
`CONCLUSION ..................................................... 34
`
`APPENDIX: List of Amici .......................................... 1a
`
`
`

`

`iv
`
`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
`
`

`

`v
`
`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 di-
`vided Court, 516 U.S. 233 (1996) (per cur-
`iam) .............................................................. 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
`
`
`
`

`

`vi
`
`TABLE OF AUTHORITIES—Continued
`
`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
`
`Page
`
`
`
`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
`Copyright Law Revision: Hearings on S. 597
`before the Subcomm. on Patents, Trademarks,
`& Copyrights of the S. Comm. on the Judici-
`ary, 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 Copy-
`right’s Merger Doctrine, 63 J. Copyright Soc’y
`U.S.A. 417 (2016) ..................................................... 22
`Pamela Samuelson, The Story of Baker v. Sel-
`den: 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 Ex-
`cludes 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.
`copyright.gov/circs/circ33.pdf ................................. 34
`U.S. Copyright Office, Circular Update Guide,
`https://www.copyright.gov/circs/circular-update-
`guide.pdf .................................................................. 34
`U.S. Copyright Office, Compendium of U.S. Copy-
`right Office Practices (3d ed. 2015) ......................... 27
`
`

`

`1
`
`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 pro-
`grams. 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
`copyright law, thereby disrupting settled expectations
`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 compati-
`ble software because major decisions from the Courts
`
`
`1 Pursuant to Supreme Court Rule 37, counsel for amici rep-
`
`resent 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 in-
`tended to fund the preparation or submission of this brief. Coun-
`sel for petitioner gave blanket consent to the filing of amicus
`briefs, counsel for respondent has consented in writing to the fil-
`ing of this brief, and both parties received timely notice of amici’s
`intent to file this brief.
`2 See BSA Foundation, Software: Growing US Jobs and the
`
`GDP, https://software.org/wp-content/uploads/2019SoftwareJobs.pdf
`(based on 2018 data).
`
`

`

`2
`
`of Appeals for the Second and Ninth Circuits had es-
`tablished 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
`copyright-unprotectable elements, such as compatibil-
`ity-enabling interfaces, that must be filtered out before
`making infringement determinations. Programs con-
`sequently 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 exclu-
`sions. It misconstrued the case law properly interpret-
`ing those exclusions in relation to program interfaces.3
`
`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
`
`
`

`

`3
`
`The Federal Circuit also misapplied the merger doc-
`trine and case law persuasively holding that interfaces
`that enable compatibility are unprotectable by copy-
`right 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
`I. This Court’s Precedents, the Text of the Copy-
`right Act, and Sound Copyright Policy Re-
`quire the Exclusion of Program Interfaces
`From Copyright’s Scope.
`Freedom to compete and innovate in the develop-
`
`ment 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 mer-
`ger); 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).
`
`

`

`4
`
`programs that enable compatibility are unprotectable
`by copyright law, id. at 710, so Altai did not infringe by
`reimplementing the same interface as Computer Asso-
`ciates 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), cit-
`ing approvingly to Altai, decided that the functional
`requirements for achieving compatibility are unpro-
`tectable 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 video-
`games so that they could run on Sega’s popular plat-
`form. 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 be-
`tween the defendant’s application program and an
`operating system program). Altai and Accolade recog-
`nized that the essentially utilitarian nature of computer
`programs meant they embodied many copyright-
`unprotectable elements, including interfaces that ena-
`ble compatibility, and hence, enjoy “a relatively weak
`barrier against public access” to those unprotected el-
`ements, 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 be-
`lieved that the declarations of the Java Application
`Program Interface (API) used in its Android software
`
`

`

`5
`
`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 pro-
`vided 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 pro-
`vided to his book, with congressional codification of
`Baker’s exclusion of methods and systems, and with
`the Ninth Circuit’s characterization of program inter-
`faces 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
`
`
`4 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.
`
`

`

`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 in-
`terface specification is the ‘system’ or ‘method of oper-
`ation’ that is ‘expressed’ by the program code.” Brief
`Amici Curiae of American Committee for Interopera-
`ble Systems and Computer & Communications Associ-
`ation 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 copy-
`
`right protection did not extend to a system and its con-
`stituent parts embodied in a copyrighted work was
`Perris v. Hexamer, 99 U.S. 674 (1879). Perris sued Hex-
`amer 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
`
`
`
`5 ACIS membership was listed, id. at 1, n.1.
`
`
`
`

`

`7
`
`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 contriv-
`ance[ ] 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
`copyright law.
`
`Soon thereafter, this Court reviewed a similar in-
`
`fringement claim in Baker. Because Baker is such a
`foundational case and its proper interpretation is dis-
`puted 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 ineffi-
`cient. 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. Su-
`preme Court Record at 92, 106, Baker v. Selden, 101
`U.S. 99 (1880) [Record].6 Because the relevant infor-
`mation was spread out over multiple volumes, it was
`difficult to prepare a balance sheet for each period and
`to detect errors or fraud.
`
`
`6 For further details about the Baker litigation, see Pamela
`
`Samuelson, The Story of Baker v. Selden: Sharpening the Distinc-
`tion Between Authorship and Invention 160, in Intellectual Prop-
`erty Stories (Rochelle Cooper Dreyfuss & Jane C. Ginsburg eds.,
`2005). To view simulations of the relevant forms, see id. at 170-
`71.
`
`

`

`8
`
`Selden’s key innovation was figuring out a way (as
`
`the book’s title, “Selden’s Condensed Ledger, or Book-
`keeping Simplified,” suggested) to condense the jour-
`nals 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 achieve-
`
`ment was expressed in the preface of his book: “To
`greatly simplify the accounts of extensive establish-
`ments doing credit business would be a masterly
`achievement, worthy to be classed among the greatest
`benefactions of the age.” Record at 21. The preface re-
`vealed 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 vio-
`lating the copyright.” Baker, 101 U.S. at 101.
`
`The Court had no doubt that a work on bookkeep-
`
`ing 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
`
`

`

`9
`
`clear distinction between the book, as such, and the
`[useful] art which it is intended to illustrate.” Id. Copy-
`right 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 letters-
`patent, not of copyright.” Id. That Mrs. Selden intended
`to assert patent-like rights through copyright is evi-
`dent from her announcement to Baker’s customers
`that they too were infringers. Record at 79-80. Had Sel-
`den 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 ob-
`served, useful arts are “represented in concrete forms
`of wood, metal, stone, or some other physical embodi-
`ment.” 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 Sel-
`den’s system was unprotectable by copyright law, as
`
`

`

`10
`
`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 em-
`bodied 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.
`
`
`
`
`
`
`

`

`11
`
`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, re-
`jected 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 con-
`tests, games, rules, and strategies for playing games
`were beyond the scope of copyright protection. See
`Pamela Samuelson, Why Copyright Law Excludes Sys-
`tems 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 sys-
`
`tems from copyright’s scope was so well-established
`that Congress decided to codify these exclusions in the
`Copyright Act of 1976. 17 U.S.C. § 102(b) provides: “In
`no case does copyright protection for an original work
`of authorship extend to any idea, procedure, process,
`system, method of operation, concept, principle, or
`
`

`

`12
`
`discovery, regardless of the form in which it is de-
`scribed, explained, illustrated, or embodied in such
`work.”
`
`
`
`C. The Federal Circuit’s Oracle Decision Ig-
`nored the § 102(b) System/Method Exclu-
`sions.
`Amici agree with the Federal Circuit that § 102(b)
`
`should not be interpreted so literally that it would de-
`prive 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 interpre-
`tive principles get.
`
`

`

`13
`
`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 un-
`copyrightable elements and says “[i]n no case” should
`any of these be within the scope of copyright’s protec-
`tion, 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 exclu-
`sions to the statute in part to allay concerns about the
`risk of excessive copyright protection for software:
`
`Some concern has been expressed lest copy-
`right 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 copyright-
`able element in a computer program, and that
`the actual processes or methods embodied in
`the program are not within the scope of the
`copyright law.
`
`H.R. Rep. No. 94-1476 at 57 (1976); S. Rep. No. 94-473
`at 54 (1975).7 The Federal Circuit tellingly recited only
`
`
`7 During hearings on copyright revision bills, several wit-
`
`nesses recommended adoption of a specific provision to limit the
`
`
`

`

`14
`
`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 deli-
`cate 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 protec-
`tion 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 Copy-
`right Law Revision: Hearings on S. 597 before the Subcomm. on
`Patents, Trademarks, & Copyrights of the S. Comm. on the Judi-
`ciary, 90th Cong. 196-97 (1967) (statement of Arthur R. Miller).
`Miller foresaw a risk that courts would interpret copyright to ex-
`tend 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.
`
`

`

`15
`
`that patent and copyright laws protect “distinct as-
`pects” 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 pa-
`tenting

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