`
` No. 18-956
`
`IN THE
`Supreme Court of the United States
`
`
`
`
`
`
`
`
`
`Petitioner,
`
`
`
`GOOGLE LLC,
`
`
`
`v.
`
`ORACLE AMERICA, INC.,
`
`
`
`Respondent.
`
`
`
`
`
`
`
`
`
`
`On Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`
`
`
`
`
`
`
`
`
`
`BRIEF FOR THE COMMITTEE FOR JUSTICE
`AS AMICUS CURIAE IN SUPPORT OF RESPONDENT
`
`
`
`
`
`
`
`
`
`CURT LEVEY
`COMMITTEE FOR
`JUSTICE
`1629 K Street NW
`Suite 300
`Washington, DC 20006
`
`
`
`
`RYAN J. WALSH
` Counsel of Record
`EIMER STAHL LLP
`10 East Doty Street
`Madison, WI 53703
`(312) 660-7639
`rwalsh@eimerstahl.com
`
`JACOB M. HAMANN
`EIMER STAHL LLP
`224 South Michigan Avenue
`Chicago, IL 60604
`
`
`Counsel for Amicus Curiae The Committee for Justice
`
`
`
`
`
`
`
`
`
`i
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ........................................ ii
`
`INTEREST OF AMICUS CURIAE ............................. 1
`
`INTRODUCTION AND
`SUMMARY OF ARGUMENT ..................................... 2
`
`ARGUMENT ................................................................ 5
`
`I. THE CONSTITUTION AND THE COPYRIGHT ACT
`CONFER EXPANSIVE PROTECTION OVER THE
`NATURAL RIGHT TO INTELLECTUAL PROPERTY ...... 5
`
`A. The Copyright Clause Broadly Empowers
`Congress To Protect Authors’ Natural
`Right To Intellectual Property ......................... 5
`
`B. Consistent With The Framers’ Far-Reaching
`Conception Of The Right’s Scope And
`Justifications, The Copyright Act
`Extensively Protects Authors’ Natural
`Right To Intellectual Property ......................... 9
`
`II. SOUND TEXTUALIST PRINCIPLES DICTATE
`THAT ORACLE CODE AND ORGANIZATION
`ARE PROTECTED BY THE COPYRIGHT ACT ............ 12
`
`A. Oracle’s Code Is A Protected Literary
`Work ................................................................ 12
`
`B. Section 102(b) Does Not Preclude Copyright
`Protection For Oracle’s Code .......................... 15
`
`C. The Merger Doctrine Does Not Apply ............ 20
`
`III.WHETHER TO PARE BACK THE COPYRIGHT ACT’S
`PROTECTION OF COMPUTER CODE IS A QUESTION
`FOR CONGRESS, NOT THIS COURT ........................ 21
`
`CONCLUSION .......................................................... 25
`
`
`
`
`
`ii
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Am. Broad. Companies, Inc. v. Aereo, Inc.,
`573 U.S. 431 (2014) ...................................... 4, 23, 24
`
`Atari Games Corp. v. Nintendo of Am., Inc.,
`975 F.2d 832 (Fed. Cir. 1992) .......................... 13, 20
`
`Bobbs-Merrill Co. v. Straus,
`210 U.S. 339 (1908) .................................................. 8
`
`Computer Associates Intern. Inc. v. Altai, Inc.,
`982 F.2d 693 (2d Cir. 1992) .................................... 20
`
`Fourth Estate Pub. Benefit Corp. v. Wall-
`Street.Com, LLC,
`139 S. Ct. 881 (2019) .............................................. 24
`
`Golan v. Holder,
`565 U.S. 302 (2012) ................................................ 15
`
`Hamilton v. Lanning,
`560 U.S. 505 (2010) ................................................ 21
`
`Harper & Row Publishers, Inc. v. Nation
`Enterprises,
`471 U.S. 539 (1985) ................................................ 16
`
`Johnson Controls, Inc. v. Phoenix Control Sys.,
`886 F.2d 1173 (9th Cir. 1989) .......................... 13, 14
`
`King v. Burwell,
`135 S. Ct. 2480 (2015) ............................................ 21
`
`
`
`
`
`iii
`
`Lexmark Int’l Inc. v. Static Control Components,
`Inc., 387 F.3d 522 (6th Cir. 2004) .......................... 13
`
`Lotus Dev. Corp. v. Paperback Software Int’l,
`740 F. Supp. 37 (D. Mass. 1990) ............................ 11
`
`Mazer v. Stein,
`347 U.S. 201 (1954) ............................................ 8, 19
`
`Mitel, Inc. v. Iqtel, Inc.,
`124 F.3d 1366, 1372 (10th Cir. 1997) ....................... 16
`
`Obergefell v. Hodges,
`135 S. Ct. 2584 (2015) .............................................. 5
`
`Ruckelshaus v. Monsanto Co.,
`467 U.S. 986 (1984) .................................................. 6
`
`Sony Corp. of America v. Universal City Studios,
`Inc., 464 U.S. 417 (1984) ........................................ 23
`
`Star Athletica, L.L.C. v. Varsity Brands, Inc.,
`137 S. Ct. 1002 (2017) .................................... passim
`
`Stewart v. Abend,
`495 U.S 207 (1990) ................................................. 24
`
`Wheaton v. Peters,
`33 U.S. (8 Pet.) 591 (1834) ....................................... 8
`
`White-Smith Music Publishing Company v.
`Apollo Company, 209 U.S. 1 (1908) ....................... 11
`
`Zalewski v. Cicero Builder Dev. Inc.
`754 F.3d 95 (2d Cir. 2014) ...................................... 20
`
`
`
`
`
`iv
`
`Statutes
`
`17 U.S.C. § 101 .................................................. passim
`
`17 U.S.C. § 102 .................................................. passim
`
`17 U.S.C. § 117 .......................................................... 13
`
`17 U.S.C. § 201 ............................................................ 9
`
`The Copyright Act of 1790, 1 Stat. 124-126 (1790) .... 9
`
`The Copyright Act of 1831, 4 Stat. 436 (1831) ........... 9
`
`The Copyright Act of 1870, 16 Stat. 198 (1870) ......... 9
`
`The Copyright Act of 1909, Pub. L. No. 60-349,
`35 Stat. 1075 (1909) ................................................. 9
`
`Other Authorities
`
`1 Melville B. Nimmer & David Nimmer,
`Nimmer on Copyright (2019) ................................. 13
`
`2 Patry on Copyright ........................................... 10, 19
`
`Adam D. Moore, A Lockean Theory of Intellectual
`Property, 21 Hamline L. Rev. 65 (1997) .................. 6
`
`Antonin Scalia & Bryan Garner, Reading Law:
`The Interpretation of Legal Texts 56
`(West 2012) ............................................................. 21
`
`B. Bailyn, The Ideological Origins of the
`American Revolution (1967) ..................................... 5
`
`
`
`
`
`v
`
`Gerald P. O’Driscoll Jr. and Lee Hoskins,
`Property Rights: The Key to Economic
`Development
`482 Policy Analysis (Aug. 7, 2003)......................... 11
`
`Jessica Litman, Sharing and Stealing, 27
`Hastings Comm. & Ent L.J. 1 (2004) ...................... 8
`
`John Locke, Second Treatise of Civil Government
`(J. Gough ed. 1947) ................................................... 6
`
`Justin Hughes, The Philosophy of Intellectual
`Property 77 Geo. L.J. 287 (1988) .............................. 6
`
`Randolph J. May and Seth L. Cooper, Liberty of
`Contract and the Free Market Foundations of
`Intellectual Property, 11 Perspectives from FSF
`Scholars 27 (July 29, 2016) ...................................... 7
`
`Robert P. Merges, Justifying Intellectual Property
`(2011) ........................................................................ 6
`
`Robert P. Merges, One Hundred Years of
`Solicitude: Intellectual Property Law, 1900 –
`2000, 88 Cal. L. Rev. 2187 (2000) .......................... 11
`
`The Federalist No. 43 (James Madison) ..................... 8
`
`Thomas B. Nachbar, Constructing Copyright’s
`Mythology, 6 The Green Bag 2d 37 (2002) .............. 7
`
`USPTO, Intellectual Property and the U.S.
`Economy: 2016 Update ........................................... 12
`
`
`
`
`
`vi
`
`Yvette Joy Liebesman, The Wisdom of Legislating
`for Anticipated Technological Advancements,
`10 JMARRIPL 154 (2010) ...................................... 10
`
`
`
`
`
`
`
`1
`
`
`
`INTEREST OF AMICUS CURIAE1
`
`Founded in 2002, the Committee for Justice (CFJ)
`is a nonprofit, nonpartisan
`legal and policy
`organization dedicated to promoting the rule of law
`and preserving the Constitution's protection of
`individual liberty and property rights. The Founding
`Fathers recognized that the right to security in one’s
`property is a sine qua non of liberty and forms a
`bulwark against an overweening government. CFJ
`focuses, in part, on the preservation of these principles
`at the intersection of law and technology, including
`intellectual property law. CFJ believes that the
`Constitution’s protection of intellectual property and
`physical property with equal force has helped to make
`the United States the most prosperous society in the
`history of the world. CFJ advances its mission by,
`among other things, filing amicus curiae briefs in key
`cases and educating government officials and the
`American people about the Constitution and the
`proper role of the courts.
`
` In addition to its considered views on the
`fundamental legal principles at issue in this case, CFJ
`offers subject-matter expertise. Before becoming an
`attorney, our President, Curt Levey, earned
`undergraduate and graduate degrees in computer
`
`1 Pursuant to Rule 37.3, all parties consent to the filing of this
`brief. Petitioner Google LLC has provided blanket consent, and
`Respondent Oracle America, Inc. has provided written consent.
`No counsel for a party has authored this brief in whole or in
`part, and no person other than amicus curiae has made a
`monetary contribution to fund its preparation or submission.
`
`
`
`
`
`2
`
`science, worked for five years as a scientist at an
`artificial-intelligence startup company, and invented
`and patented pioneering technology for explaining the
`decisions made by machine-learning models. His
`experience writing code and seeking intellectual-
`property protection for his invention has informed
`CFJ’s views in this case.
`
`INTRODUCTION AND
`SUMMARY OF ARGUMENT
`
`The Copyright Act furthers the design of the
`Constitution’s Copyright Clause. Underlying the
`original understanding of that Clause is a theory of
`natural rights under which the right to intellectual
`property merits the same protection as the right to
`tangible property. Because it reflects and strengthens
`that robust conception of intellectual property rights,
`the Copyright Act—repeatedly expanded to protect all
`manner of emerging technologies—has long been a
`driver of America’s unparalleled economic prosperity
`and has made the United States the global leader in
`software and computing. The Court’s task here is
`merely to apply that Act, with its extremely capacious
`protections, to Oracle’s creative expression in the
`declaring code and the code organization and structure
`at issue.
`
`That task “begin[s] and end[s] . . . with the text” of
`the Copyright Act. Star Athletica, L.L.C. v. Varsity
`Brands, Inc., 137 S. Ct. 1002, 1010 (2017). Under a
`straightforward analysis of that text, Oracle’s code is
`a protected “original work[ ] of authorship fixed in” a
`“tangible medium of expression.” 17 U.S.C. § 102(a).
`
`
`
`
`
`3
`
`Indeed, it is undisputed that Oracle’s code is
`sufficiently “original” to meet the statutory threshold.
`And while Google invokes Section 102(b)’s proscription
`on copyright protection for “methods of operation,” its
`argument would eliminate copyright protection for all
`computer programs, contradicting the clear language
`of the Copyright Act. Instead, Section 102(b) instructs
`courts to separate the expressive content in a given
`work from the unprotected idea or method. The
`Federal Circuit did that here, correctly holding that
`Section 102(b) does not preclude copyright protection
`for the declaring code and the code organization and
`structure copied by Google. For similar reasons, the
`merger doctrine does not save Google from liability for
`copyright infringement. And while Google asserts that
`its copying was necessary to ensure that its Android
`operating system would be interoperable with other
`platforms,
`the Copyright Act
`contains no
`“interoperability” exception. It does not distinguish at
`all between computer code that is necessary for
`interoperability and code that is not. Nor does the Act
`afford lesser protection to declaring code than to other
`types of code.
`
`Google and various amici warn that affirming the
`Federal Circuit on copyrightability will cause the sky
`to fall on a critical industry. This argument, frequently
`deployed in big intellectual-property cases, is a
`smokescreen. While there are numerous reasons to
`think this policy-driven prediction baseless, the more
`important point is that copyright cases do not call for
`“a free-ranging search for the best copyright policy,
`but
`rather
`depend[]
`solely
`on
`statutory
`
`
`
`
`
`4
`
`interpretation.” Star Athletica, 137 S. Ct. at 1010.
`After all, “the proper course is not to bend and twist
`[the Copyright] Act’s terms in an effort to produce a
`just outcome, but to apply the law as it stands and
`leave to Congress the task of deciding whether the
`Copyright Act needs an upgrade,” Am. Broad.
`Companies, Inc. v. Aereo, Inc., 573 U.S. 431, 463 (2014)
`(Scalia, J., dissenting). And indeed, Congress has
`successfully performed this task repeatedly over the
`life of the Act, by balancing complicated and
`sometimes
`countervailing
`policies
`that
`are
`particularly ill-suited for judicial administration. The
`proper audience for Google’s concerns, therefore, is
`across the street.
`
`
`
`
`
`5
`
`
`ARGUMENT
`
`I.
`
`THE CONSTITUTION AND THE COPYRIGHT ACT
`CONFER EXPANSIVE PROTECTION OVER THE
`NATURAL RIGHT TO INTELLECTUAL PROPERTY
`
`A. The Copyright Clause Broadly
`Empowers Congress To Protect
`Authors’ Natural Right To Intellectual
`Property
`
`Copyright is rooted in the natural rights of persons
`in their property. It is not a contingent right that is
`tolerated only to the extent it incentivizes authors or
`promotes public good. This is a critical point, since
`Google focuses much of its argument on utilitarian
`concerns and
`thus
`ignores
`the natural-rights
`foundation of Congress’s copyright power.
`
`“The founding-era understanding of liberty was
`heavily influenced by John Locke, whose writings ‘on
`natural rights and on the social and governmental
`contract’ were cited ‘[i]n pamphlet after pamphlet’ by
`American writers.” Obergefell v. Hodges, 135 S. Ct.
`2584, 2634 (2015) (Thomas, J., dissenting) (quoting B.
`Bailyn, The Ideological Origins of the American
`Revolution, 27 (1967)). Locke’s theory explained that,
`because the “state of nature” leaves individuals
`“insecure in their persons and property,” they enter
`into “civil society, trading a portion of their natural
`liberty for an increase in their security,” John Locke,
`Second Treatise of Civil Government, § 97, p. 49 (J.
`
`
`
`
`
`6
`
`Gough ed. 1947), but in no way forfeiting the rights to
`which the laws of nature entitle them.
`
`Locke’s and the Framers’ conception of property
`rights equally justify the protection of both tangible
`and intellectual property. See, e.g., Robert P. Merges,
`Justifying Intellectual Property, 48–66 (2011); Adam
`D. Moore, A Lockean Theory of Intellectual Property,
`21 Hamline L. Rev. 65, 77–86 (1997). The rationale for
`“propertizing ideas under Locke’s approach” follows
`from several propositions: “first, that the production of
`ideas requires a person’s labor; second, that these
`ideas are appropriated from a ‘common’ which is not
`significantly devalued by the idea’s removal; and
`third, that ideas can be made property without
`breaching the non-waste condition.” Justin Hughes,
`The Philosophy of Intellectual Property, 77 Geo. L.J.
`287, 300 (1988). Applied to copyright, Lockean theory
`justifies protection of the “expression” or execution of
`the idea, as opposed to merely the idea, given that the
`expression or execution more obviously involves labor.
`Id. at 314.
`
`Ratifying a Lockean understanding of the nature
`and scope of property rights, the Constitution protects
`the liberty of individuals to acquire, use, and transfer
`property freely—including intellectual property. It
`does this not only in the Fifth and Fourteenth
`Amendments’ Due Process Clauses and the Fifth
`Amendment’s Takings Clause, see, e.g., Ruckelshaus v.
`Monsanto Co., 467 U.S. 986, 1002–03 (1984) (citing
`Locke, among other sources, to support holding that
`intangible property is “property” within the meaning
`
`
`
`
`
`7
`
`of the Fifth Amendment, incorporated against the
`States through the Fourteenth Amendment), but also
`by empowering the federal government, through
`Article I, Section 8, “[t]o promote the Progress of
`Science and useful Arts, by securing for limited Times
`to Authors and Inventors the exclusive Right to their
`respective Writings and Discoveries.”
`
`While some, more recent observers have suggested
`that the property right recognized in the Copyright
`Clause is an exclusively contingent one—legitimately
`tolerated only to the extent it incentivizes authors or
`otherwise promotes public policy—the original
`understanding of the Clause is rooted primarily in the
`broad, natural-right conception of the right to property
`as described above. Indeed, when the Constitution was
`adopted, the prevailing consensus was that copyright
`and patent rights were founded, like all property
`rights, in the natural rights of inventors and authors
`to the fruits of their labors. See Randolph J. May and
`Seth L. Cooper, Liberty of Contract and the Free
`Market Foundations of Intellectual Property, 11
`Perspectives from FSF Scholars 27 at 2 (July 29,
`2016). That is why twelve of the thirteen states in the
`founding era had copyright laws. See Thomas B.
`Nachbar, Constructing Copyright’s Mythology, 6 The
`Green Bag 2d 37, 37 (2002). Many of these state laws
`expressly affirmed authors’ natural right to their
`works. Id. at 44.
`
`Federalist 43 explicitly embraces this reading of
`the Copyright Clause. There, James Madison located
`the natural-rights-based “copyright of authors” as
`
`
`
`
`
`8
`
`“solemnly adjudged, in Great Britain, to be a right of
`common law.” The Federalist No. 43 (James Madison).
`And while Madison also acknowledged
`the
`“coincide[ntal]” instrumental value of copyright, he
`was careful to acknowledge that this was a feature of
`the right only, not its foundation: “The public good
`fully coincides … with the claims of individuals” such
`that the “utility of this power will scarcely be
`questioned.” Id. (emphasis added).
`
`This Court’s copyright precedents accord with our
`constitutional tradition’s long-held understanding of
`the nature and scope of the right, beginning with this
`Court’s pronouncement in 1834 that “a literary man is
`as much entitled to the product of his labour as any
`other member of society,” Wheaton v. Peters, 33 U.S. (8
`Pet.) 591, 657 (1834). See Jessica Litman, Sharing and
`Stealing, 27 Hastings Comm. & Ent. L.J. 1, 13 n.45
`(2004) (observing that the “the incentive rationale for
`copyright has become so conventional that it is easy to
`forget that it is in fact [a] relatively recent”
`explanation). For example, in Bobbs-Merrill Co. v.
`Straus, the Court said that, in construing the
`Copyright Act, courts needed to consider “the nature
`of the property and the protection intended to be given
`the inventor or author as the reward of genius or
`intellect in the production of his book or work of art.”
`210 U.S. 339, 347 (1908). In Mazer v. Stein, the Court,
`while ostensibly discussing the incentive rationale,
`affirmed the natural-rights justification for copyright,
`declaring that “[s]acrificial days devoted to such
`creative activities deserve rewards commensurate
`with the services rendered.” 347 U.S. 201, 219 (1954).
`
`
`
`
`
`
`9
`
`B. Consistent With The Framers’ Far-
`Reaching Conception Of The Right’s Scope
`And Justifications, The Copyright Act
`Extensively Protects Authors’ Natural
`Right To
`Intellectual Property and
`Promotes Innovation and Prosperity
`
`
`Beginning in 1790, Congress has consistently
`expanded the subject-matter scope of the Act in
`response to technological developments, evincing an
`intent to legislate close to the limits of the Copyright
`Clause’s grant of authority. The First Congress passed
`the Copyright Act of 1790, which provided protection
`for “maps, charts, and books,” that period’s state-of-
`the-art technologies. 1 Stat. 124-126.2 The Copyright
`Act of 1831 added musical compositions, prints, cuts,
`and engravings. See 4 Stat. 436. In 1870, Congress
`amended
`the Act again, extending
`copyright
`protection to translations and dramatizations of
`literary works, paintings, drawings,
`chromo-
`lithographs, and statues. See 16 Stat. 198. The 1909
`Act broadened the range of copyrightable subject
`matter still further, to include dramatic compositions,
`motion pictures, and sound recordings. See Pub. L. No.
`60-349, 35 Stat. 1075. So far-reaching were the 1909
`Act’s protections that, when computer programs first
`surfaced in the 1960s, the Copyright Office held them
`
`
`2 Importantly, this first Act acknowledged that, like other
`forms of property, copyrights are transferrable by granting the
`right to authors and “their executors, administrators or assigns.”
`Session II, Ch. 15, § 1; see also 17 U.S.C. § 201(d)(1) (“ownership
`of a copyright may be transferred in whole or in part by any
`means of conveyance or by operation of law”).
`
`
`
`
`
`10
`
`to be protected under the 1909 Act’s definition of
`“book.” The Office began registering the copyrights of
`computer programs in 1964. 2 Patry on Copyright
`§ 3.71.
`
`The last major revision to the Copyright Act was
`the 1976 Act, which is still in effect today. Like the
`versions that came before it, the 1976 Act expanded
`the scope of copyright protection, including by
`adopting a capacious definition of protected “literary
`works.” See 17 U.S.C. § 101, et. seq. That term is not
`limited to works of literature but rather includes any
`tangible form of expression, “other than audiovisual
`works, expressed in words, numbers, or other verbal
`or numerical symbols or indicia, regardless of the
`nature of the material objects . . . in which they are
`embodied.” 17 U.S.C. § 101. With its expansive
`definition of “works of authorship”, the 1976 Act
`provides for “an indefinite expansion of the subject
`matter covered . . . contemplate[ing] technologies not
`in existence at the time of the law’s enactment.” Yvette
`Joy Liebesman, The Wisdom of Legislating for
`Anticipated
`Technological
`Advancements,
`10
`JMARRIPL 154, 161 (2010).
`
`Congress has steadily expanded the scope of the
`Copyright Act
`in response
`to scientific and
`technological developments to ensure that creative
`works are protected to the limit of Congress’s
`constitutional grant. The expansions have generally
`fallen into two categories. First, with respect to wholly
`new technologies, such as photographs, sound
`recordings, and motion pictures, expanding the
`
`
`
`
`
`11
`
`Copyright Act was “deemed necessary to give them full
`recognition as copyrightable works.” Lotus Dev. Corp.
`v. Paperback Software Int’l, 740 F. Supp. 37, 48 (D.
`Mass. 1990) (quotation omitted). Second, in the case of
`technologies like electronic music, filmstrips, and
`computer programs that built upon previously existing
`media or technology, these were regarded as “an
`extension of copyrightable subject matter Congress
`had already intended to protect, and were thus
`considered copyrightable from the outset without the
`need of new legislation.” Id (quotation omitted).3
`
`Because strong commitments to private-property
`protection enable an economy to more effectively
`allocate resources and opportunities, see Gerald P.
`O’Driscoll Jr. and Lee Hoskins, Property Rights: The
`Key to Economic Development, 482 Policy Analysis at
`8 (Aug. 7, 2003), it is no surprise that, as Congress has
`expanded and strengthened copyright protection,
`intellectual-property-intensive
`industries such as
`software have contributed increasing wealth and
`innovation to the American economy. As the United
`States Patent and Trademark Office found in a 2016
`
`
`3 An example in the latter category is the mechanical piano
`roll. This Court, in White-Smith Music Publishing Company v.
`Apollo Company, held that a mechanical piano roll could not
`constitute a “copy” of a copyrighted musical composition because
`it could not be seen or read by the human eye. 209 U.S. 1, 17
`(1908). Congress, however, disagreed with the Court’s conclusion:
`“[A]lmost before the ink was dry on the Apollo decision . . .
`Congress passed the 1909 Copyright Act, rejecting the Court’s
`crabbed definition of a ‘copy.’” Robert P. Merges, One Hundred
`Years of Solicitude: Intellectual Property Law, 1900 – 2000, 88
`Cal. L. Rev. 2187, 2194 (2000).
`
`
`
`
`
`12
`
`study, IP-intensive industries now account for almost
`40 percent of U.S. Gross domestic Product. USPTO,
`Intellectual Property and the U.S. Economy: 2016
`Update at ii. The link between innovation and strong
`intellectual property protection is unmistakable in the
`software industry. As Oracle has pointed out, no
`company would “make the enormous investment
`required to launch a groundbreaking work like Java
`SE” if it could be copied “precisely because it has
`become so popular.” Resp. Br. 57.
`
`II.
`
`SOUND TEXTUALIST PRINCIPLES DICTATE
`THAT THE ORACLE CODE AND ORGANIZATION
`ARE PROTECTED BY THE COPYRIGHT ACT
`
`A. Oracle’s Code Is A Protected Literary
`Work
`
`code warrants
`Whether Oracle’s declaring
`copyright protection “begin[s] and end[s] . . . with the
`text” of the Copyright Act. Star Athletica, 137 S. Ct. at
`1010. The Copyright Act protects “original works of
`authorship
`fixed
`in any
`tangible medium of
`expression.” 17 U.S.C. § 102(a). Thus the statute
`imposes three basic conditions on copyrightability.
`The item must be a (1) “work of authorship” that is (2)
`“original” and is (3) “fixed” in “tangible medium of
`expression.” Works of authorship include “literary
`works,” 17 U.S.C. § 102(a), a generic term covering all
`“works, other than audiovisual works, expressed in
`words, numbers, or other verbal or numerical symbols
`or indicia.” Id. § 101.
`
`
`
`
`
`13
`
`Computer code is a “literary work” under the
`statute. Computer code consists of source code, the
`spelled-out computer code that humans can read, and
`binary code, which is expressed in ones and zeroes that
`tell the computer how to operate. Johnson Controls,
`Inc. v. Phoenix Control Sys., 886 F.2d 1173, 1175 (9th
`Cir. 1989). Both are works “expressed in words,
`numbers, or other verbal or numerical symbols or
`indicia.” Indeed, the Act defines “computer program”
`as “a set of statements or instructions [that is,
`computer code] to be used directly or indirectly in a
`computer in order to bring about a certain result.” 17
`U.S.C. § 101. And other provisions of the Act make
`clear that “computer programs” are protectable.
`Section 117, for example, sets out narrow limitations
`to the copyright in computer programs, such as copies
`made for archival purposes. 17 U.S.C. § 117(a)(2). See
`also id. §§ 109, 121. Hence the leading treatise reports
`that it is “firmly established” that computer code is
`copyrightable. 1 Melville B. Nimmer & David Nimmer,
`Nimmer on Copyright, § 2A.10[B] (2019); accord Atari
`Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832,
`838 (Fed. Cir. 1992) (“As literary works, copyright
`protection extends to computer programs”); Johnson
`Controls, Inc. 886 F.2d at 1175; Lexmark Int’l Inc. v.
`Static Control Components, Inc., 387 F.3d 522, 533
`(6th Cir. 2004).
`
`That Congress chose to protect computer code
`under the Copyright Act should not be surprising.
`Computer code has all of the hallmarks of Lockean
`intellectual property. Like other intellectual property,
`computer code requires labor, is based up ideas
`
`
`
`
`
`14
`
`appropriated from a commons that is not significantly
`devalued by the idea’s removal, and, when protected
`as property, is not wasted. See Section I.A, supra.
`
`Oracle’s declaring code meets the Section 102(a)
`requirements for copyrightable subject matter. There
`is no dispute here over the fixation and originality
`requirements. See, e.g., Pet. App. at 140a. (“At this
`stage, it is undisputed that the declaring code and the
`structure and organization of the Java API packages
`are original.”).
`
`There is likewise no serious dispute that Oracle’s
`declaring code is a “work of authorship.” The declaring
`code that Google copied is a set of statements that,
`when called by developers, command the computer to
`execute corresponding implementing code. See Pet.
`App. at 127a. Oracle’s declaring code is a fixed set of
`statements expressed in words, numbers, and symbols
`and therefore is fundamentally a “literary work[ ],” 17
`U.S.C. § 101, an express covered category of “work[s]
`of authorship.” Id. § 102(a). The declaring code also
`easily fits the Copyright Act’s definition of “computer
`program,” i.e., “a set of statements or instructions to
`be used directly or indirectly in a computer in order to
`bring about a certain result.” Id. § 101. This is
`important because provisions of the Copyright Act
`make clear that computer programs are protectable.
`
`As with all works, this copyright protection applies
`both to the work’s literal elements and to its non-
`literal elements. See Johnson Controls, 886 F.2d at
`1175. The court of appeals correctly found, therefore,
`that by verbatim copying the declaring code for 37 of
`
`
`
`
`
`15
`
`Java SE’s packages, Google copied both the literal
`elements (the code itself) and non-literal elements (the
`sequence, structure, and organization) of Oracle’s
`code. Pet. App. at 129a (By copying the declaring
`source code from the 37 Java SE packages verbatim,
`“Google copied the elaborately organized taxonomy of
`all the names of methods, classes, interfaces and
`packages”).4
`
`102(b) Does Not Preclude
`B. Section
`Copyright Protection For Oracle’s Code
`
`Section 102(b) of the Copyright Act states that
`copyright protection does not “extend to any idea,
`procedure, process, system, method of operation,
`concept, principle, or discovery, regardless of the form
`in which it is described, explained, illustrated, or
`embodied in such work.” 17 U.S.C. § 102(b). This
`provision clarifies the scope of protection in a given
`copyrightable work by codifying the idea/expression
`dichotomy. See Golan v. Holder, 565 U.S. 302, 328
`(2012). That doctrine holds that, for any work of
`authorship, copyright protection only applies to the
`author’s original expression of an idea, not to the idea
`itself. As noted in Section I.A supra, this distinction
`reflects the natural-law origins of copyright protection
`in that only the author’s original contribution and his
`or her labor in executing the idea is protected.
`Copyright is therefore limited to “those aspects of the
`work—termed ‘expression’—that display the stamp of
`
`
`4 Calling Oracle’s code an “interface” does produce a different
`conclusion. See Resp. Br. 26–27.
`
`
`
`
`
`16
`
`the author’s originality.” Harper & Row Publishers,
`Inc. v. Nation Enterprises, 471 U.S. 539, 547 (1985).
`
`Just as Section 102(b)’s foreclosure of copyright
`protection for an “idea” requires a court to distinguish
`the expressive aspects of a work
`from
`the
`unprotectable idea, Section 102(b)’s preclusion of
`copyright protection for any “process, system, [or]
`method of operation”
`requires
`that a
`court
`differentiate between the expressive aspects and the
`unprotectable process, system, or method. See Atari,
`975 F.2d at 839. It does not mean that any work that
`can be characterized as a “system” or “method of
`operation” is not copyrightable. Mitel, Inc. v. Iqtel, Inc.,
`124 F.3d 1366, 1372 (10th Cir. 1997) (“Section 102(b)
`does not extinguish protection accorded a particular
`expression of an idea merely because that expression
`is embodied in a method of operation at a higher level
`of abstraction.”).
`
`Applied here, Section 102(b) does not preclude
`copyright protection for either Oracle’s declaring code
`or the structure and organization of Java SE. Oracle
`claims copyright protection only for its particular
`declaring code and for its particular way of choosing,
`connecting, and organizing the various components of
`Java SE. Those aspects are expressive. At trial, it was
`undisputed that the declaring code and the structure
`and organization of the Java SE packages were both
`creative and original. Pet. App. at 140a. Further, the
`evidence showed that Oracle had “unlimited options”
`for the selection and arrangement of the code that
`Google ultimately copied. Pet. App. at 150a. The
`
`
`
`
`
`17
`
`software engineers that designed Oracle’s code made
`myriad creative choices; they did not just select among
`preordained names and phrases. Id.
`
`It is those creative choices, not any idea, that
`Oracle seeks to protect. Oracle does not claim a
`copyright in the general functions that its code causes
`a computer to perform. And indeed, Google could have
`written its own declaring code to express the same
`functionality as the code it copied. Pet. App. 151a-152a
`(“nothing prevented Google from writing its own
`declaring code, along with its own implementing co
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