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 AMICUS CURIAE
`ELECTRONIC FRONTIER FOUNDATION
`IN SUPPORT OF PETITIONER
`
`MIchael Barclay
`Counsel of Record
`corynne McSherry
`KIt WalSh
`electronIc FrontIer FoundatIon
`815 Eddy Street
`San Francisco, CA 94109
`(415) 436-9333
`michael@eff.org
`
`Counsel for Amicus Curiae
`
`A
`
`(800) 274-3321 • (800) 359-6859
`
`January 13, 2020
`293004
`
`

`

`i
`
`TABLE OF CONTENTS. . . . . . . . . . . . . . . . . . . . . . . . . . i
`
`TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . iv
`
`STATEMENT OF IDENTITY AND INTEREST
` OF AMICUS CURIAE . . . . . . . . . . . . . . . . . . . . . . . . .1
`
`INTRODUCTION A ND SU MM A RY OF
` ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1
`
`ARGUMENT. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3
`
`I. the Federal cIrcuIt haS IMproperly
`reWrItten SectIon 102(b) . . . . . . . . . . . . . . . . . . .3
`
`
`A. The Federal Circuit Improperly
`Deleted Important Exclusions from
`Copyright Protection . . . . . . . . . . . . . . . . . . .4
`
`
`
`B. The Federal Circuit Effectively
`Added Language to Section 102(b)
`That Doesn’t Appear in the Statute . . . . . . .8
`
`
`
`II. courtS ca n a nd Should deterMIne
`W h e n c o M p u t e r F u nc t Io n a l I t y I S
`copyrIghtaBle; Several non-excluSIve
`FactorS can help. . . . . . . . . . . . . . . . . . . . . . . . .11
`
`
`
`A. Does the Work in Question Meet the
`Definition of a Computer Program
`That Does Not Fall Within the
`Statutory Exclusions?. . . . . . . . . . . . . . . . . .12
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`

`

`ii
`
`1. A System for a Language Used
`to Write Computer Programs vs.
`a Program Written With That
`Language . . . . . . . . . . . . . . . . . . . . . . . .13
`
`
`
`2. A Computer Interface vs. a
`P rog r a m T hat Implement s
`That Interface . . . . . . . . . . . . . . . . . . . .16
`
`
`
`3. The “Certain Result” of a Program
`
`vs. the Program Itself . . . . . . . . . . . . . .18
`
`4. Does the Work in Question
`Define a Method of Operating a
` Machine? . . . . . . . . . . . . . . . . . . . . . . . . .20
`
`B. Does the Primary Value of the
`Work Derive from Network Effects
`Created by the User’s Learning and
`Investment in the Subject Matter? . . . . . . .21
`
`
`
`C. C o u l d a S e p a r a t e C o p y r i g ht
`Registration Have Been Obtained on
`the Subject Matter? . . . . . . . . . . . . . . . . . . .24
`
`
`
`D. Is the Work a “Necessary Incident”
`
`to the System? . . . . . . . . . . . . . . . . . . . . . . . .26
`
`E. Not Coincidentally, Some of These
`Factors Also Militate in Favor of
`Fair Use . . . . . . . . . . . . . . . . . . . . . . . . . . . . .28
`
`
`
`Table of Contents
`
`Page
`
`

`

`iii
`
`1. Strong Network Effects Militate
`
`in Favor of Fair Use. . . . . . . . . . . . . . . .28
`
`2. Fair Use Favors the Borrowing
`of a Small, Functional Component
`of a Work . . . . . . . . . . . . . . . . . . . . . . . . .29
`
`
`
`III. the Federal cIrcuIt haS IMproperly
`uSurped congreSS’ role In enSurIng
`that copyrIght ServeS ItS conStItutIonal
`purpoSe. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .30
`
`
`
`CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .33
`
`Table of Contents
`
`Page
`
`

`

`iv
`
`CASES
`
`Affiliated Enters. v. Gruber,
`
`86 F.2d 958 (1st Cir. 1936) . . . . . . . . . . . . . . . . . . . . . . .5
`
`Affiliated Music Enters. v. Sesac, Inc.,
`
`160 F. Supp. 865 (S.D.N.Y. 1958) . . . . . . . . . . . . . . . .15
`
`Alice Corp. v. CLS Bank Int’l.,
`
`573 U.S. 208 (2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6
`
`Apple Comput., Inc. v. Microsoft Corp.,
`
`35 F.3d 1435 (9th Cir. 1994). . . . . . . . . . . . . . . . . . . . .19
`
`Bailey v. United States,
`
`516 U.S. 137 (1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5
`
`Baker v. Selden,
`101 U.S. 99 (1879) . . . . . . . . . . . . . . . . . . . . . . . . passim
`
`
`Bikram’s Yoga Coll. of India, L.P. v.
`Evolation Yoga, LLC,
`803 F.3d 1032 (9th Cir. 2015). . . . . . . . . . . . . . . . . . . .10
`
`
`
`Bilski v. Kappos,
`
`561 U.S. 593 (2010) . . . . . . . . . . . . . . . . . . . . . . . . . . . .11
`
`Brief English Sys., Inc. v. Owen,
`
`48 F.2d 555 (2d Cir. 1931) . . . . . . . . . . . . . . . . . . . .5, 15
`
`TABLE OF CITED AUTHORITIES
`
`Page
`
`

`

`v
`
`Dastar Corp. v.
`Twentieth Century Fox Film Corp.,
`539 U.S. 23 (2003). . . . . . . . . . . . . . . . . . . . . . . . . . . . .32
`
`
`
`Diamond v. Diehr,
`
`450 U.S. 175 (1981) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .7
`
`Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
`
`499 U.S. 340 (1991) . . . . . . . . . . . . . . . . . . . . . . . . .10, 31
`
`Fogerty v. Fantasy, Inc.,
`
`510 U.S. 517 (1994) . . . . . . . . . . . . . . . . . . . . . . . . .31, 32
`
`Fourth Estate Pubs. Benefit Corp. v.
`Wall-Street.com, LLC,
`139 S. Ct. 881 (2019). . . . . . . . . . . . . . . . . . . . . . . . . . .25
`
`
`
`Gottschalk v. Benson,
`
`409 U.S. 63 (1972). . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6
`
`Gustafson v. Alloyd Co.,
`
`513 U.S. 561 (1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5
`
`LeRoy v. Tatham,
`
`55 U.S. 156 (1852) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6
`
`Limelight Networks v. Akamai Techs.,
`
`572 U.S. 915 (2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . .11
`
`Lotus Dev. Corp. v. Borland Int’l, Inc.,
`49 F.3d 807 (1st Cir. 1995), aff’d by an equally
`
` divided court, 516 U.S. 233 (1996) . . . . . . . . . passim
`
`Cited Authorities
`
`Page
`
`

`

`vi
`
`Lotus Dev. Corp. v. Borland Int’l, Inc.,
`
`831 F. Supp. 223 (D. Mass. 1993) . . . . . . . . . . . . . . . .15
`
`Mitel, Inc. v. Iqtel, Inc.,
`
`124 F.3d 1366 (10th Cir. 1997). . . . . . . . . . . . . . . . . . .19
`
`Octane Fitness v. ICON Health & Fitness,
`
`572 U.S. 545 (2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . .11
`
`Oracle Am., Inc. v. Google Inc.,
`750 F.3d 1339 (Fed. Cir. 2014), cert. denied,
`
`135 S. Ct. 2887 (2015) . . . . . . . . . . . . . . . . . . . . passim
`
`
`Oracle Am., Inc. v. Google LLC,
`
`886 F.3d 1179 (Fed. Cir. 2018). . . . . . . . . . . . . . . .11, 28
`
`Perris v. Hexamer,
`
`99 U.S. 674 (1878) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5
`
`Sega Enters. v. Accolade, Inc.,
`
`977 F.2d 1510 (9th Cir. 1992). . . . . . . . . . . . . . . . . . . .17
`
`Sony Corp. of Am. v.
`Universal City Studios, Inc.,
`464 U.S. 417 (1984) . . . . . . . . . . . . . . . . . . . . . . . . .31, 32
`
`
`
`TRW Inc. v. Andrews,
`
`534 U.S. 19 (2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9
`
`Twentieth Century Music Corp. v. Aiken,
`
`422 U.S. 151 (1975) . . . . . . . . . . . . . . . . . . . . . . . . . . . .31
`
`Cited Authorities
`
`Page
`
`

`

`vii
`
`STATUTES
`
`17 U.S.C. § 101 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2, 11, 12
`
`17 U.S.C. § 102(a) . . . . . . . . . . . . . . . . . . . . . . . . . .11, 12, 13
`
`17 U.S.C. § 102(b). . . . . . . . . . . . . . . . . . . . . . . . . . . passim
`
`17 U.S.C. § 107 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .29
`
`17 U.S.C. § 411(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .25
`
`35 U.S.C. § 100(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5
`
`35 U.S.C. § 101 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5
`
`CONSTITUTIONAL PROvISIONS
`
`U.S. Const. art. I, § 8, cl. 8 . . . . . . . . . . . . . . . . . . . . . .5, 30
`
`LEgISLATIvE MATERIALS
`
`1976 U.S.C.C.A.N. 5659 . . . . . . . . . . . . . . . . . . . . . . . . . .10
`
`Copyright Law Revision: Hearings Before the
`Subcomm. on Courts, Civil Liberties, and
`the Admin. of Justice of the House Comm. on
`the Judiciary, 94th Cong., 1st Sess. (1975) . . . . . . 7, 10
`
`
`
`H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54
`
`(1976) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10
`
`Cited Authorities
`
`Page
`
`

`

`viii
`
`OThER AUThORITIES
`
`Dennis S. Karjala, Oracle v. Google and the
`Scope of a Computer Program Copyright,
`24 J. Intell. Prop. L. (2016) . . . . . . . . . . . .14, 16, 18, 25
`
`
`
`Mark A. Lemley & David McGowan, Legal
`Im p li c a ti o n s of Ne t w o r k Ec o n o mi c
` Effects, 86 Calif. L. Rev. 479 (1998) . . . . . . . . . . .21, 23
`
`M ic r o s of t P r e s s C omput e r D ic t ion a r y
`
`(2d Ed. 1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14, 16
`
`Peter S. Menell, An epitaph for traditional
`copyright protection of network features
`of comp uter sof tware, T he A ntitr ust
` Bulletin/Fall-Winter 1998 (1998) . . . . . . . . . . . . . . . .21
`
`Peter S. Menell, Rise of the API Copyright Dead?:
`An Updated Epitaph for Copyright Protection of
`Network and Functional Features of Computer
` Software, 31 Harv. J.L. & Tech. 305 (2018). . . . .20, 27
`
`Richard H. Stern, Copyright in Computer
`Programming Languages, 17 Rutgers
` Computer & Tech. L.J. 321 (1991) . . . . . . . . . . . .14, 23
`
`U.S. Copyright Office, Compendium II of
`Copyright Office Practices, Library of Congress
`(1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .13, 15
`
`
`
`Cited Authorities
`
`Page
`
`

`

`ix
`
`U.S. Copyright Office, Compendium of U.S.
`Copyright Office Practices, Library of
` Congress (3d ed. 2017) (Compendium III) . . . . 24, 26
`
`Cited Authorities
`
`Page
`
`

`

`1
`
`STATEMENT OF IDENTITY AND INTEREST
`OF AMICUS CURIAE1
`
`The Electronic Frontier Foundation (“EFF”) is a
`non-profit civil liberties organization that has worked
`for 29 years to protect consumer interests, innovation,
`and free expression in the digital world. EFF and its
`more than 34,000 active donors have a strong interest in
`helping the courts and policymakers ensure that copyright
`law serves the interests of creators, innovators, and the
`general public.
`
`INTRODUCTION AND SUMMARY
`OF ARgUMENT
`
`The Court should apply 17 U.S.C. § 102(b) as Congress
`wrote it, to prohibit copyright in computer functionality
`for methods of operation, systems, and the other subject
`matter listed in the statute. The Federal Circuit refused to
`do that here. Instead, it improperly rewrote the language
`of § 102(b) in two ways. First, it effectively deleted seven
`
`1. No counsel for a party authored this brief in whole or in
`part, and no such counsel or party made a monetary contribution
`intended to fund the preparation or submission of this brief. No
`person other than the amicus curiae, or its counsel, made a monetary
`contribution intended to fund its preparation or submission. In an
`abundance of caution and for the sake of transparency, counsel state
`that Petitioner, Google LLC, has made contributions to the Electronic
`Frontier Foundation; such funds have been allotted to support
`specific projects, but not this brief. All parties have consented to
`the filing of this brief.
`
`Web sites cited in this brief were last visited on January 8, 2020.
`Unless otherwise indicated, all statutory references are to 17 U.S.C.
`
`

`

`2
`
`of the statute’s eight exclusions of copyrightable subject
`matter, incorrectly limiting the section to the first
`exclusion, which prohibits copyrighting an “idea.” Those
`additional exclusions are not redundant: most are derived
`from the patent laws, which Congress felt were better
`suited than copyright to address functionality. Second, the
`Federal Circuit effectively added language to § 102(b) that
`narrowed even the first exclusion so that it would not apply
`where different words could be used to describe an idea.
`
`The circuit court claimed its approach was necessary
`to provide “protection to computer programs.” Oracle Am.,
`Inc. v. Google Inc., 750 F.3d 1339, 1367 (Fed. Cir. 2014)
`(“Oracle I”), Pet. App. 163a, cert. denied, 135 S. Ct. 2887
`(2015). This belief was based on the misguided notion that
`applying the statute as Congress wrote it would render
`all computer programs uncopyrightable. The court was
`wrong. Applying the actual language of § 102(b) simply
`requires courts to determine which parts of computer
`programs are copyrightable and which parts are either
`the province of patent law or in the public domain. Indeed,
`the majority of Oracle’s claims were based on patent law;
`having lost on those claims, it may not rewrite the scope
`of copyright to get a second bite at the apple.
`
`This brief offers several non-exclusive factors that
`can help courts determine copyright eligibility. First,
`courts can look to whether a computer functionality
`meets the statutory definition of a “computer program”
`in 17 U.S.C. § 101 or falls within the scope of one of
`§ 102(b)’s exclusions. Second, courts can consider whether
`a computer functionality creates network effects, where
`the value of the functionality increases as the number of
`
`

`

`3
`
`users increases. Section 102(b) is designed to help prevent
`copyright owners such as Oracle from using network
`effects to lock their users into a particular implementation
`of an uncopyrightable interface. Third, courts can consider
`whether the actual material in dispute—as opposed to an
`entire program—would be independently registrable. If
`the Copyright Office likely would have rejected a copyright
`application for just the part in question, its use shouldn’t
`be the basis of a copyright lawsuit.
`
`The Java declarations at issue here are uncopyrightable
`under most if not all of the above tests.
`
`As this Court has often noted, the purpose of
`copyright is to protect the public interest, not merely to
`give copyright owners 95 year-long monopoly rents. This
`purpose is best served by upholding the district court’s
`initial dismissal of Oracle’s copyright claims on the basis
`of § 102(b).
`
`ARgUMENT
`
`I. the federal CirCUit haS imprOperly reWritten
`SeCtiOn 102(b)
`
`The Federal Circuit’s decisions in this litigation have
`depended on a cramped view of § 102(b) that ignores
`important statutory exclusions from copyright protection
`and improperly adds further narrowing language. The
`following redline shows how the Federal Circuit effectively
`rewrote § 102(b) (deletions are in strikethrough, additions
`are underlined):
`
`

`

`4
`
`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 discovery,
`regardless of the form in which it is described,
`explained, illustrated, or embodied in such
`work; unless (1) there are different words that
`can be used to describe, explain, illustrate or
`embody that idea, or (2) the idea is complex.
`
`A. The Federal Circuit Improperly Deleted
`Important Exclusions from Copyright
`Protection
`
`The Federal Circuit erroneously claimed that § 102(b)
`simply “codified” the “idea/expression dichotomy.”
`Oracle I, 750 F.3d at 1354-55, Pet. App. 137a. The
`court then asserted that the statute permits copyright
`protection if “the author had multiple ways to express the
`underlying idea.” Id. at 1367, Pet. App. 163a.
`
`In fact, § 102(b) excludes far more than just “ideas”
`from copyrightability. It identifies seven other exclusions:
`“procedure, process, system, method of operation, concept,
`principle, or discovery.” Oracle calls these additional
`categories a mere “synonym” for ideas, and agrees with
`the Federal Circuit that § 102(b) is limited to the “idea/
`expression dichotomy.” Brief in Opposition at 15-16, Google
`LLC v. Oracle Am., Inc., No. 18-956 (March 27, 2019).
`
`Oracle and the Federal Circuit are wrong.
`
`As an initial matter, the Federal Circuit violated the
`well-established rule that courts should “avoid a reading
`[of a statute] which renders some words altogether
`
`

`

`5
`
`redundant.” Gustafson v. Alloyd Co., 513 U.S. 561, 574
`(1995); see also Bailey v. United States, 516 U.S. 137, 145
`(1995) (“Congress intended each of [the statute’s] terms
`to have meaning”).
`
`And as a practical matter, the circuit court’s approach
`misunderstands the role most of the categories play in
`drawing the line between patent and copyright protection.
`It is no coincidence that most of them are found in patent
`law. For example, “process” and “method” are explicitly
`described in the patent statutes. See 35 U.S.C. §§ 100(b)
`(“process” means “process, art, or method”), 101 (a “new
`and useful process” is patentable). This Court used both
`“methods of operation” and “system” in Baker v. Selden,
`101 U.S. 99 (1879), to illustrate that which “is the province
`of letters patent, not of copyright.” Id. at 102-04. Indeed,
`since Baker, copyright cases often have used the term
`“system” to describe matter that falls within the ambit of
`patent rather than copyright. See, e.g., Affiliated Enters.
`v. Gruber, 86 F.2d 958, 961-62 (1st Cir. 1936) (promotional
`system); Brief English Sys., Inc. v. Owen, 48 F.2d 555, 556
`(2d Cir. 1931) (system of shorthand). Notably, this Court
`rejected a claim for a copyright on a “system” for making
`signs and keys on maps. Perris v. Hexamer, 99 U.S. 674,
`676 (1878).
`
`The distinguishing role of “discovery” may be even
`more apparent. The term can be found in the Progress
`Clause itself, U.S. Const. art. I, § 8, cl. 8:
`
`Congress shall have the power. . .To 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.
`
`

`

`6
`
`Copyright gives “authors” a limited exclusive right to
`“writings,” while patents give “inventors” a limited
`exclusive right to their “discoveries.”
`
`As for principles and procedures, “principle” has long
`been used as the patent counterpart of “ideas,” for which
`no patent can be obtained. See e.g., LeRoy v. Tatham, 55
`U.S. 156, 174-175 (1852) (“A principle, in the abstract, is
`a fundamental truth; an original cause; a motive; these
`cannot be patented, as no one can claim in either of them
`an exclusive right”) (cited with approval in Alice Corp. v.
`CLS Bank Int’l., 573 U.S. 208, 216 (2014)). And in patent
`cases such as Gottschalk v. Benson, 409 U.S. 63, 65 (1972),
`the Court specifically used the term “procedure” to define
`a computer algorithm as a “procedure for solving a given
`type of mathematical problem.”
`
`Thus, while § 102(b) (and Baker v. Selden ) are
`concerned with the idea/expression dichotomy, both are
`also focused on the difference between things that are
`patentable and things that are copyrightable. Baker, 101
`U.S. at 102. When Congress codified Baker in § 102(b), it
`didn’t merely limit the statute’s exclusions to “ideas,” but
`also excluded many other categories identified in patent
`law. By their terms, the exclusions establish Congress’
`intent that copyright should not be allowed to substitute
`for or interfere with the subject matter of patent—both
`that which is unpatentable, such as principles, and that
`which is patentable, such as processes and methods of
`operation.
`
`Indeed, Oracle’s attempt to lump these terms together
`as undifferentiated “ideas” would undo much of patent
`law. The distinction between “processes” (or “methods
`
`

`

`7
`
`of operation”) and “ideas” (or “principles”) is as central
`to patent law as the distinction between “expression”
`and “ideas” is to copyright. See, e.g., Diamond v. Diehr,
`450 U.S. 175, 182-185 (1981) (contrasting patentable
`“processes” with unpatentable “ideas”). “Process” and
`“method of operation” for these purposes are the opposite
`of “ideas”—a fact of which Congress plainly was aware.
`In 1975 House hearings on the eventual 1976 Copyright
`Act, the Computer & Business Equipment Manufacturers
`Association proposed deleting “plan, procedure, process,
`system, method of operation” from § 102(b); Congress
`rejected this deletion. Copyright Law Revision: Hearings
`Before the Subcomm. on Courts, Civil Liberties, and the
`Admin. of Justice of the House Comm. on the Judiciary,
`94th Cong., 1st Sess., Pt. 3, at 2215, 2218, 2223 (1975).2
`
`Patent law’s relationship to § 102(b)’s exclusions
`is central here, where Oracle initially sued Google on
`seven patent claims and one copyright claim. Amended
`Complaint for Patent and Copyright Infringement, Dkt.
`No. 36, N.D. Cal. No. 10-3561 (Oct. 27, 2010). The jury
`rejected Oracle’s patent claims—a verdict from which
`Oracle did not appeal. Special Verdict Form (patent phase
`verdict), Dkt. No. 1190, N.D. Cal. No. 10-3561 (May 23,
`2012). Having lost its patent case, Oracle instead seeks a
`95-year copyright on subject matter that § 102(b) says is
`covered only by the patent laws.
`
`All of the exclusions in § 102(b) have meaning and limit
`the scope of copyright. To apply the statute as Congress
`wrote it, none may be disregarded.
`
`2. Available at: https://babel.hathitrust.org/cgi/pt?id=umn.31
`951d00827185m&view=1up&seq=839
`
`

`

`8
`
`B. The Federal Circuit Effectively Added
`Language to Section 102(b) That Doesn’t
`Appear in the Statute
`
`Not only did the Federal Circuit improperly restrict
`§ 102(b) by deleting words of exclusion, it narrowed the
`statute further by effectively adding language that also
`limited the statute’s reach. Contrary to Supreme Court
`precedent and legislative intent, the circuit court held
`that merger did not bar copyright protection for the Java
`declarations unless “Sun/Oracle had only one way, or a
`limited number of ways, to write them.” Oracle I, 750 F.3d
`at 1361, Pet. App. 150a. Therefore, the Federal Circuit
`reasoned, if another company wanted to use a Java method
`such as “Math.max,” Oracle could use copyright to force
`the second company to use synonyms or “choices” such as
`“Math.maximum” or “Arith.larger.” Id. & n.6. And in the
`context of copyrightability of Java’s structure, sequence,
`and organization, the circuit court held:
`
`We agree with Oracle that, under Ninth Circuit
`law, an original work—even one that serves a
`function—is entitled to copyright protection as
`long as the author had multiple ways to express
`the underlying idea. Section 102(b) does not, as
`Google seems to suggest, automatically deny
`copyright protection to elements of a computer
`program that are functional.
`
`Id. at 1367, Pet. App. 163a. Therefore, in addition to
`limiting § 102(b)’s exclusions to solely “ideas,” the
`Federal Circuit effectively narrowed the statute further
`by improperly adding “unless there are different words
`that can be used to describe, explain, illustrate or embody
`that idea.”
`
`

`

`9
`
`Adding this exception to the statute is improper for
`several reasons. First, as a general rule, it is improper to
`add exceptions into a statute, in the absence of legislative
`intent. See TRW Inc. v. Andrews, 534 U.S. 19, 28-29 (2001).
`
`Second, the availability of synonyms or creative
`choices doesn’t convert uncopyrightable subject matter
`into copyrightable subject matter. The Court encountered
`this very issue in Baker v. Selden. According to the trial
`court record, Baker copied many of the same words that
`Selden used as headings in his accounting system, such as
`“current receipts and disbursements,” “totals,” “balances,”
`and “present receipts.” Supreme Court Record in Baker
`at 19-20 (trial court decree dated Jan. 21, 1875), at 103-04
`(testimony of Samuel Raber).3 Synonyms existed for many
`of those words, such as “sums” for “totals” and “revenue”
`for “receipts.” Nevertheless, the Court rejected Selden’s
`claim that “no one can make or use similar ruled lines and
`headings, or ruled lines and headings made and arranged
`on substantially the same system, without violating the
`copyright.” Baker, 101 U.S. at 101. Thus, because Selden’s
`system of headings could not “be used without employing
`the methods and diagrams used to illustrate the book, or
`such as are similar to them, such methods and diagrams
`are to be considered as necessary incidents to the art, and
`given therewith to the public.” Id. at 103.
`
`3. The Supreme Court Record in Baker v. Selden, including
`the trial court record, is available at: https://www.dropbox.com/s/
`azafhdqr5frf5iv/Baker%20v%20Selden.pdf?dl=0.
`
`Pages 19-20 of the Record are located at page 7 of the PDF
`document, and pages 103-04 are at pages 41-42 of the PDF.
`
`

`

`10
`
`Since § 102(b) “in no way enlarges or contracts”
`existing law, Baker’s principles remain embodied in the
`statute. See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499
`U.S. 340, 356 (1991) (citing H.R. Rep. No. 1476, 94th Cong.,
`2d Sess. 54, 57 (1976), reprinted in 1976 U.S.C.C.A.N.
`5659, 5670).
`
`Indeed, Congress specifically rejected the proposed
`modification to the statute’s language that the Federal
`Circuit effectively adopted here. In the 1975 House
`hearings, the Information Industry Association proposed
`adding language to § 102(b) giving copyright protection
`to “alternative ideas or abstractions or in a discretionary
`pattern of events or processes.” Congress refused.
`Copyright Law Revision: Hearings Before the Subcomm.
`on Courts, Civil Liberties, and the Admin. of Justice of
`the House Comm. on the Judiciary, 94th Cong., 1st Sess.,
`Pt. 1, at 332, 334-35 (1975).4
`
`Several circuit courts have rejected similar claims
`by copyright owners seeking to protect uncopyrightable
`§ 102(b) subject matter on the same “other choices” theory.
`See, e.g., Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d
`807, 816 (1st Cir. 1995), aff’d by an equally divided court,
`516 U.S. 233 (1996) (“expressive” choices of what to name
`or arrange menu command terms do not “magically”
`change uncopyrightable terms or their arrangement into
`copyrightable subject matter); Bikram’s Yoga Coll. of
`India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032, 1042
`(9th Cir. 2015) (“the possibility of attaining a particular
`end through multiple different methods does not render
`the uncopyrightable a proper subject of copyright”).
`
`4. Available at: https://babel.hathitrust.org/cgi/pt?id=pur1.3
`2754075290456&view=1up&seq=344
`
`

`

`11
`
`Finally, the Federal Circuit repeatedly alluded to
`“7,000 lines” of allegedly copied code, and 37 copied
`API packages. See, e.g., Oracle I, 750 F.3d at 1353, 1356,
`1359, 1361, 1363, Pet. App. 134a, 139a, 146a, 150a, 154a;
`see also Oracle Am., Inc. v. Google LLC, 886 F.3d 1179,
`1187, 1206 (Fed. Cir. 2018) (“Oracle II”), Pet. App. 7a, 45a
`(references to “11,500 lines” of code). It appears that the
`circuit assumed that if code is lengthy and complex, there
`must be something copyrightable in it. But the language
`of § 102(b) contains no exception for “complex” cases.
`
`The Federal Circuit’s approach reflects an unfortunate
`pattern usually found in its patent jurisprudence:
`misinterpreting patent statutes to alter the text. In
`those cases, this Court has not hesitated to correct the
`Federal Circuit’s ruling and hold that statutes should be
`interpreted as Congress wrote them. See, e.g., Limelight
`Networks v. Akamai Techs., 572 U.S. 915, 926 (2014) (the
`Federal Circuit’s alteration of the statute would result in
`“serious and problematic consequences”); Octane Fitness
`v. ICON Health & Fitness, 572 U.S. 545, 548 (2014)
`(Federal Circuit rule is not “consistent” with the statutory
`text); Bilski v. Kappos, 561 U.S. 593, 612 (2010) (“Today,
`the Court once again declines to impose limitations on the
`Patent Act that are inconsistent with the Act’s text.”). The
`Court should make a similar correction here.
`
`II. COUrtS Can and ShOUld determine When COmpUter
`fUnCtiOnality iS COpyrightable; Several nOn-
`exClUSive faCtOrS Can help
`
`The Federal Circuit’s approach is purportedly
`intended to resolve a potential conflict between 17 U.S.C.
`§ 101, § 102(a), and § 102(b). The first two provisions say
`
`

`

`12
`
`that computer programs are copyrightable as a literary
`work. But § 102(b) excludes many aspects of computer
`functionality, such as procedures, processes, methods
`of operation, and others. The circuit court feared that
`applying the statute as written would mean that “no
`computer program is protectable.” Oracle I, 750 F.3d at
`1367, Pet. App. 163a.
`
`The Federal Circuit’s concern is overstated. Courts
`can and should determine which parts of computer
`programs are excluded from copyright under § 102(b), and
`which parts are protectable. That determination can be
`rooted in a set of practical and statutory factors that, taken
`together, offer a rubric to help identify noncopyrightable
`material. To be clear, since § 102 outlines a large range
`of different types of copyrightable and uncopyrightable
`subject matter, the same work may be noncopyrightable
`for multiple reasons. Likewise, some copyright-ineligible
`program components might not satisfy all of these factors,
`since they are designed to cover a large scope of possible
`§ 102(b) ineligible subject matter.
`
`Under this rubric, while the Java implementing code
`may be copyrightable, the Java declarations are not.
`
`A. Does the Work in Question Meet the Definition
`of a Computer Program That Does Not Fall
`Within the Statutory Exclusions?
`
`The Copyright Act defines a “computer program” as
`“a set of statements or instructions to be used directly or
`indirectly in a computer in order to bring about a certain
`result.” 17 U.S.C. § 101. This provides copyright protection
`for computer programs as a literary work under 17 U.S.C.
`§ 102(a).
`
`

`

`13
`
`But “computer programs,” like other works, are
`subject to § 102(b). When a work describing computer
`functionality does not even qualify as a “computer
`program,” it is unlikely to be eligible subject matter. Also,
`in some cases there are parts of a computer program
`that, standing alone, clearly do not meet the definition of
`a computer program and won’t be a copyrightable literary
`work under § 102(a). If it is a close question, an analysis of
`whether a computer component has the characteristics of
`something that does not meet the definition of “computer
`program” may not provide easy resolution, but should
`still be helpful.
`
`1. A System for a Language Used to Write
`Computer Programs vs. a Program
`Written With That Language
`
`A computer language used to write a program
`is typically an uncopyrightable system or method
`of operation. The Copyright Office has defined a
`computer language as “a programming language used
`by a programmer for writing a computer program.”
`Compendium II of Copyright Office Practices, the Library
`of Congress, § 326 at 300-32 (1984) (“Compendium II”).5
`A commentator summarized a number of definitions of
`computer language as follows:
`
`A computer programming language is a formal
`system of expression including:
`(1) a set of vocabulary elements;
`
`5. Available at: https://www.copyright.gov/history/comp/
`compendium-two.pdf. Page 300-32 is at page 66 of the online
`document.
`
`

`

`14
`
`(2) a set of syntax rules for combining vocabulary
`elements into statements; and
`(3) the assignment of meaning to statements
`that properly combine vocabulary elements in
`accordance with the syntax rules.
`
`Richard H. Stern, Copyright in Computer Programming
`Languages, 17 Rutgers Computer & Tech. L.J. 321, 327
`(1991) (“Stern”) (footnotes omitted).6
`
`As this suggests, a computer language is fundamentally
`different than a program written in that language. A
`computer language includes a set of rules and associated
`syntax; a computer program, by contrast, is a particular
`set of the language’s available instructions that achieves
`a “certain result” upon execution by the computer. See
`Dennis S. Karjala, Oracle v. Google and the Scope of
`a Computer Program Copyright, 24 J. Intell. Prop. L.
`1, 16 (2016) (“Karjala”).7 In other words, a computer
`program uses selected words of the language in the order
`appropriate for the function being performed. The Java
`language is sometimes called a “high-level language,”
`which can be defined as a “computer language that
`provides a certain level of abstraction from the underlying
`machine language through the use of declarations, control
`statements, and other syntactical structures.” Microsoft
`Press Computer Dictionary at 198 (2d Ed. 1994); see 2016
`Fair Use Trial Tr. 1211-14 (“Trial Tr.”) (Astrachan).
`
`6. Available at: http://docs.law.gwu.edu/facweb/claw/ProgLang.
`
`pdf
`
`7. Available at: https://digitalcommons.law.uga.edu/cgi/
`viewcontent.cgi?article=1399&context=jipl
`
`

`

`15
`
`Other examples of uncopyrightable language systems
`that can be used to create a program or copyrighted work
`appear both in the computer context and otherwise. For
`example, the Lotus macro language allowed users to
`write their own macro programs. Lotus, 49 F.3d at 809-10,
`811-12 (majority opinion), 820-21 (Boudin, J., concurring);
`Lotus Dev. Corp. v. Borland Int’l, Inc., 831 F. Supp. 223,
`227-29 (D. Mass. 1993). Non-computer examples include
`

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