throbber
No. 18-956
`
`
`
`IN THE
`Supreme Court of the United States
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`ORACLE AMERICA, INC,
`Respondent.
`
`
`On Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`
`BRIEF OF AMICUS CURIAE
`ENGINE ADVOCACY
`IN SUPPORT OF PETITIONER
`
`Jef Pearlman
`Counsel of Record
`INTELLECTUAL PROPERTY &
`TECHNOLOGY LAW CLINIC
`UNIVERSITY OF SOUTHERN
`CALIFORNIA GOULD
`SCHOOL OF LAW
`699 Exposition Blvd.
`Los Angeles, CA 90089-0071
`(213) 740-7088
`jef@law.usc.edu
`
`Counsel for Amicus Curiae
`
`
`
`

`

`TABLE OF CONTENTS
`TABLE OF AUTHORITIES ....................................... iii
`INTEREST OF AMICUS CURIAE ............................. 1
`SUMMARY OF ARGUMENT ..................................... 2
`ARGUMENT ................................................................ 4
`I. The API Declarations at Issue Are a
`Fundamentally Functional System. ..................... 5
`II. Congress and the Courts Have Carefully
`Avoided Awarding Copyright Protection to
`Functionality and Invading the Domain of
`Patents. .................................................................. 7
`A. For 140 Years, Copyright Protection Has
`Been Unavailable for the Ideas or Systems
`Described in Works. ....................................... 8
`B. Section 102(b) Confirms that Protection of
`Functionality Is the Domain of Patents,
`Not Copyright. .............................................. 10
`C. Courts and Agencies Since Baker and
`§ 102(b) Have Consistently Cabined
`Copyright. ..................................................... 12
`D. The Federal Circuit Erroneously Allowed
`Copyright to Protect Functionality by
`Confusing
`“Software Programs” and
`“Declarations.” .............................................. 16
`III. The Decision Below Permits Parties to Evade
`the Carefully Constructed Requirements for
`and Limitations on Patenting. ............................ 18
`A. Patent Applicants Must Satisfy Numerous
`Requirements to Prove New Inventions or
`Technologies Warrant Patent Protection. ... 20
`
`

`

`ii
`B. Limitations on the Nature and Scope of
`Patent and Copyright Protection Diverge
`in Important Ways. ...................................... 25
`IV. The Consequences of Allowing This End-Run
`Are Particularly Bad for Startups. ..................... 27
`A. Startups Drive
`Innovation and Job
`Creation. ....................................................... 27
`B. Copyright-Protected
`APIs
`Threaten
`Interoperability. ........................................... 28
`C. Holding APIs Copyrightable Would Create
`Unsustainable Legal Costs for Startups. .... 29
`D. Discouraging Startups Would Stunt
`Innovation and Competition
`in
`the
`Industry. ....................................................... 33
`CONCLUSION .......................................................... 33
`
`
`
`

`

`iii
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. 208 (2014) .......................................... 23, 24
`Apple Computer, Inc. v. Microsoft Corp.,
`35 F.3d 1435 (9th Cir. 1994) .................................. 16
`Apple Computer, Inc. v. Microsoft Corp.,
`799 F. Supp. 1006 (N.D. Cal. 1992) ....................... 16
`Atari Games Corp. v. Nintendo of America, Inc.,
`975 F.2d 832 (Fed. Cir. 1992) ................................ 12
`Baker v. Selden,
`101 U.S. 99 (1879) .................................... 8, 9, 10, 30
`Computer Assocs. Int’l, Inc. v. Altai, Inc.,
`982 F.2d 693 (2d Cir. 1992) ............................. 14, 15
`Dawson Chem. Co. v. Rohm & Haas Co.,
`448 U.S. 176 (1980) ................................................ 26
`Enfish, LLC v. Microsoft Corp.,
`822 F. 3d 1327 (Fed. Cir. 2016) ............................. 24
`Gottschalk v. Benson,
`409 U.S. 63 (1972) .................................................. 24
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................... 22
`Intellectual Ventures I LLC v. Capital One
`Financial Corp.,
`850 F.3d 1332 (Fed. Cir. 2017) .............................. 24
`J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l,
`Inc.,
`534 U.S. 124 (2001) ................................................ 21
`
`

`

`iv
`Lotus Dev. Corp. v. Borland Int’l, Inc.,
`49 F.3d 807 (1st Cir. 1995) ............................ passim
`MiTek Holdings, Inc. v. Arce Engineering Co.,
`89 F.3d 1548 (11th Cir. 1996) ................................ 14
`Oracle Am., Inc. v. Google Inc.,
`750 F.3d 1339 (Fed. Cir. 2014) .......................... 5, 17
`Oracle Am., Inc. v. Google Inc.,
`872 F. Supp. 2d 974 (N.D. Cal. 2012) ............... 19, 30
`Parker v. Flook,
`437 U.S. 584 (1978) ................................................ 24
`Whelan Associates, Inc. v. Jaslow Dental
`Laboratory, Inc., 797 F.2d 1222 (3d Cir. 1986) ..... 15
`Statutes
`17 U.S.C. § 101 ....................................................... 8, 16
`17 U.S.C. § 102(a) ...................................................... 21
`17 U.S.C. § 302 ........................................................... 26
`17 U.S.C. § 408 ........................................................... 21
`35 U.S.C. § 102 ........................................................... 22
`35 U.S.C. § 103 ........................................................... 22
`35 U.S.C. § 112(f) ....................................................... 25
`35 U.S.C. § 154 ........................................................... 26
`Legislative Authorities
`H.R. Rep. No. 94-1476 (1976) .................................... 11
`Uses of Copyrighted Works, Final Report (1979) ..... 12
`
`

`

`v
`
`Other Authorities
`Bruce Abramson, Promoting Innovation in the
`Software Industry: A First Principles
`Approach to Intellectual Property Reform, 8
`B.U.J. Sci. & Tech. L. 75 (2002) ............................ 15
`Charles Duan, Oracle Copied Amazon’s API—
`Was That Copyright Infringement?,
`ArsTechnica (Jan. 3, 2020),
`https://perma.cc/YH6J-QPBG ................................ 31
`Corynne McSherry, Dangerous Decision in
`Oracle v. Google: Federal Circuit Reverses
`Sensible Lower Court Ruling on APIs,
`Electronic Frontier Foundation (May 9, 2014),
`https://perma.cc/9N5T-8VCC ........................... 29, 32
`Data Visualization Center, USPTO,
`https://www.uspto.gov/dashboards/patents/ma
`in.dashxml (last accessed Jan. 11, 2020) .............. 21
`David Nimmer et al., A Structured Approach to
`Analyzing the Substantial Similarity of
`Computer Software in Copyright Infringement
`Cases, 20 Ariz. St. L.J. 625 (1988) ......................... 15
`Dennis S. Karjala, The Relative Roles of Patent
`and Copyright in the Protection of Computer
`Programs, 17 J. Marshall J. Computer & Info.
`L. 41 (1998) ............................................................... 7
`Gene Quinn, The Cost of Obtaining a Patent in
`the US, IPWatchDog (Apr. 4, 2015),
`https://perma.cc/4TLC-ZAWL ................................ 21
`Jason Wiens & Chris Jackson, The Importance
`of Young Firms for Economic Growth, Ewing
`Marion Kauffman Foundation (Sept. 13,
`2015), https://perma.cc/GC4G-RVTQ .................... 27
`
`

`

`vi
`Jeff John Roberts, Google and Oracle’s $9.3
`Billion Fair Use Fight Starts Today, Here’s a
`Guide, Fortune (May 9, 2016),
`https://fortune.com/2016/05/09/google-oracle-
`fair-use/ ................................................................... 31
`Marcin Moskala, Kotlin Programmer Dictionary:
`Function vs Method vs Procedure (Oct. 25,
`2017), https://perma.cc/368P-FB7U ...................... 19
`Ngram Viewer, Google Books,
`https://perma.cc/5CTS-SXHQ .................................. 4
`Nimmer on Copyright (2019) .................................... 15
`Pamela Samuelson & Clark D. Asay, Saving
`Software’s Fair Use Future, 31 Harv. J.L. &
`Tech. 535 (2018) ..................................................... 28
`Pamela Samuelson, Strategies for Discerning the
`Boundaries of Copyright and Patent
`Protections, 92 Notre Dame L.R. 1493 (2017) . 26, 31
`Pamela Samuelson, Why Copyright Law
`Excludes Systems and Processes from the
`Scope of Its Protection, 85 Tex. L. Rev. 1921
`(2007) ...................................................................... 11
`Quantifying Risks to Interoperability in the
`Software Industry, Developers Alliance &
`NDP Analytics (Dec. 2017),
`https://perma.cc/Q8J3-CSVK ........................... 29, 33
`Representative Chrissy Houlahan &
`Representative Cathy McMorris Rodgers,
`What Makes America Great is What Makes
`American Startups Thrive, Roll Call (Aug. 21,
`2019), https://perma.cc/26GX-L93T ....................... 28
`Robert P. Merges et al., Intellectual Property in
`the New Technological Age: 2019 (2019) ............... 18
`
`

`

`vii
`Sam Hogg, Why Small Companies Have the
`Innovation Advantage, Entrepreneur (Nov. 15,
`2011), https://perma.cc/RFN8-LF7Y ...................... 27
`Senator Ron Wyden, Floor Remarks: CDA 230
`and SESTA, Medium (Mar. 21, 2018),
`https://perma.cc/V5WZ-VCAE ............................... 32
`Senator Ron Wyden, Press Release, Wyden
`Issues Warning About SESTA (Nov. 8, 2017),
`https://perma.cc/XXD6-QMX2 ............................... 27
`U.S. Copyright Office & U.S. Patent &
`Trademark Office, Patent-Copyright Laws
`Overlap Study (1991), https://perma.cc/5ZU9-
`HCFX ...................................................................... 12
`
`

`

`1
`
`INTEREST OF AMICUS CURIAE
`Amicus Engine Advocacy (“Engine”) is a non-
`profit technology policy, research, and advocacy
`organization
`that bridges
`the gap between
`policymakers and startups, working with government
`and a community of high-technology, growth-oriented
`startups across the nation to support the development
`of technology entrepreneurship.1 Engine conducts
`research,
`orpganizes
`events, and
`spearheads
`campaigns
`to
`educate
`elected
`officials,
`the
`entrepreneur community, and the general public on
`issues vital to fostering technological innovation.
`Engine seeks to bring to the Court’s attention the
`unique perspective of high-technology startups on the
`impact of this case. In particular, Engine submits this
`brief to highlight the damage to startups, small
`businesses, entrepreneurs, and innovators that would
`result from extending copyright protection to API
`declarations. Such an extension would be a stark
`departure from longstanding legal principles and
`industry practice. Engine urges this Court to reverse
`the Federal Circuit’s decision, which would hinder
`American innovation and harm the economy as a
`whole.
`
`
`1 Petitioner’s blanket consent is on file with the Clerk and
`Respondent consented to the filing of this brief. No counsel for a
`party authored this brief in whole or in part, and no party or
`counsel for a party made a monetary contribution intended to
`fund its preparation or submission. No person other than the
`amici or their counsel made a monetary contribution to the
`preparation or submission of this brief.
`
`

`

`2
`
`SUMMARY OF ARGUMENT
`On its face, this case presents questions about
`copyright law. But under the surface, this lawsuit
`represents an end-run around
`the
`carefully
`constructed requirements and limitations of patent
`law. Respondent seeks to use copyright to obtain a
`monopoly
`on a
`functional
`system—its API
`declarations. But protection of ideas, systems, and
`methods is and has always been the domain of patents.
`More than a century ago, in Baker v. Selden, this
`Court recognized that copyright protected only the
`expression of an idea. It could not grant exclusivity
`over the idea itself; that was the exclusive domain of
`patents. When Congress codified Baker in 17 U.S.C.
`§ 102(b), it excluded any “process, system, [or] method
`of operation” from copyright protection. And since
`Baker, courts have been careful to avoid allowing
`copyright to encroach on the domain of patents.
` The API declarations at issue here are just such
`a “process, system,
`[or] method of operation.”
`Interoperability between Java developers and the
`Android operating system is impossible without the
`use
`of
`those declarations; writing different
`declarations will not work. The creative choices made
`in naming the declarations are no more expressive
`than the choices of labels on a filing cabinet of forms.
`In other words, to the extent there is any expression
`in those choices, that expression has merged with the
`functionality and is not protectable under copyright
`law.
`If the decision below is upheld, it will create
`exactly the type of “surprise and fraud upon the
`public” that this Court warned of in Baker. Patent law
`
`

`

`3
`has a host of policy-related requirements that must be
`
`met before a system or process may be protected. For
`example:
` A patent must complete a rigorous examination
`process.
` It must claim patent-eligible subject matter.
` It must claim a new and non-obvious invention.
` It must prove to the reader that the applicant
`possessed the invention.
` It must teach the reader how to use the invention.
`Even when granted, a patent monopoly is limited:
` Exclusivity lasts 20 years.
` Exclusivity is limited to the precise invention
`defined for the public by the patent’s claims.
`these
`Copyright
`law
`contains none
`of
`requirements or restrictions. Copyright attaches as
`soon as words are put to paper or saved on a
`computer—no examination is necessary. No one
`checks to determine if copyrighted matter is novel or
`non-obvious because it does not have to be. Copyright
`lasts for 95 years or 70 years beyond the lifetime of the
`author. And the author does not need to inform
`anyone of the scope of the rights they are claiming.
`The decision below permits Oracle to use
`copyright to obtain patent-like protection over the
`functionality of their API declarations. This gives it
`broad, long-lasting rights of unspecified scope, with no
`requirement that their creation is new and no
`examination by anyone.
`Allowing this end-run around patent law will have
`far-reaching consequences. The software industry,
`which has relied on free copying of declarations since
`
`

`

`4
`it began, will find itself in a morass of copyright-based
`
`protection of inventions. Startups in particular will
`find it difficult to withstand the licensing or litigation
`costs associated with this retroactive source of
`liability. And those that wish to interoperate with
`existing software will find it particularly difficult to
`secure funding, survive, and innovate.
`The Court should therefore reverse the decision
`below and hold
`that API declarations are
`uncopyrightable under 17 U.S.C. § 102(b).
`ARGUMENT
`The API declarations2 at issue in this case are, at
`their core, functional systems. If a monopoly over
`those systems is to be granted, it must be granted
`through patents. This case represents an attempt by
`Respondent to use copyright law to evade patent law.
`If it succeeds, Respondent will have avoided the
`critical requirements and limitations of patent law to
`obtain a long-lasting, unexamined, and automatic
`monopoly over a method. This is precisely what this
`
`
`2 Throughout this brief, we use the terms “API declarations” or
`“declarations” to refer to the portions of the API at issue here,
`including any structure, sequence, or organization (SSO)
`embodied by those declarations, but not the code implementing
`the API.
`We do not use the term “declaring code,” despite its use by the
`court below. “Declaring code” has never been used this way in
`the software industry or by computer scientists. See, e.g., Ngram
`Viewer, Google Books, https://perma.cc/5CTS-SXHQ (showing
`common use of “API declaration” but not a single use of “declaring
`code” in books through 2008). Declarations do not execute and
`are therefore not “code.”
`
`

`

`5
` Court explicitly avoided in Baker v. Selden in 1879 and
`Congress subsequently forbade, but that the Federal
`Circuit’s decision on copyrightability makes real. See
`Oracle Am., Inc. v. Google Inc., 750 F.3d 1339 (Fed.
`Cir. 2014) [hereinafter Copyrightability Opinion].
`I. The API Declarations at Issue Are a
`Fundamentally Functional System.
`The API declarations at issue in this case are the
`type of fundamentally functional system that has
`historically been excluded from copyright protection
`and instead lies within the province of patents. As
`others have aptly explained in this proceeding, API
`declarations “embod[y]” a “process, system, [or]
`method of operation.”3 See Pet. Br. 17–18. See also
`Computer Scientists Br. Cert. Supp. Pet. 5 (2019). A
`monopoly on a set of API declarations is not, at its core,
`the exclusive right to a creative work. It is the
`exclusive right to control a particular way to operate a
`computer.
`It is undisputed that source code may generally be
`copyrighted, even though it can be compiled and
`
`3 Throughout this brief, we use these terms interchangeably, as
`all apply:
` Each individual declaration also defines a method of
`operation through which one piece of software can
`operate another. (It is, in fact, called a “method” in
`programming.)
` Each declaration also defines the process through which
`that method can be used by a programmer.
` Taken together, a set of declarations specifies a
`functional system.
`The precise classification does not matter; none are copyrightable
`under 17 U.S.C. § 102(b).
`
`

`

`6
`executed to perform a function. But it is also
`
`undisputed that another party may write their own
`code that performs the same function, because a
`copyright does not confer an exclusive right to the
`function performed by the source code.
`API declarations are different. If a third party
`writes an app in the Java language, and Google wants
`to write software—Android—that can run that app, it
`must use API declarations that are essentially the
`same as Oracle’s. Allowing Oracle to copyright those
`declarations, and the SSO embodied in them, gives
`Oracle an exclusive right to that functionality—
`running Java code. All the millions of independently
`written lines of source code for Android’s Java
`implementation cannot
`function without
`those
`declarations to connect Java developers to the Android
`system.
`This difference between source code and API
`declarations is critical: while copyright can be used to
`protect code, it cannot be used to protect the
`functionality itself. API declarations, if they are to be
`protected, fall within the domain of a patented system,
`uncopyrightable under 17 U.S.C. § 102(b).
`Google has correctly analogized the names of Java
`packages and methods to labels on a filing cabinet, its
`drawers, and the folders it contains. Pet. Br. 4–5. It
`may be that the labels embody some creativity. But
`the labels are also a system or process for locating
`methods in their respective folders. And if they are
`given copyright protection, they give control over the
`process for locating folders, not just the names of the
`folders.
`
`

`

`7
` Since Baker, such systems and processes have
`explicitly been the domain of patents. If a party wants
`to offer their own folders to clerks who have experience
`with a particular filing system, they are free to do so
`unless the system itself is patented. But that party
`must use the same labels if they want clerks to be able
`to access their folders. If the labels are different,
`clerks will not know how to use their system and all
`their previous experience is wasted.4 Granting
`copyright protection to the labels thereby grants a
`monopoly not over the expression, but the system and
`how it functions.
`II. Congress and the Courts Have Carefully
`Avoided Awarding Copyright Protection to
`Functionality and Invading the Domain of
`Patents.
`Where patents protect inventions, copyrights
`protect expressive works. See, e.g., Dennis S. Karjala,
`The Relative Roles of Patent and Copyright in the
`Protection of Computer Programs, 17 J. Marshall J.
`Computer & Info. L. 41, 45 (1998) (noting that
`functionality is the main differentiator between
`traditional patent and copyright subject matter,
`whereas
`“[p]atents protect creative,
`functional
`invention; copyright protects creative, nonfunctional
`authorship.”).
`
`
`4 This case has involved some dispute over the level of
`interoperability between Android and Java. That dispute is
`irrelevant. Even if the new system only provides some of the
`cabinets and folders that were in the original and adds new ones,
`the old ones must use the existing labels for clerks to use them.
`The same is true of Java methods.
`
`

`

`8
`federal agencies
` Congress, the courts, and
`respective, non-
`consistently make
`clear
`the
`overlapping roles of copyrights and patents. In
`particular, they have sought to prevent awarding
`exclusivity over functionality through copyright.
`Oracle’s attempt to extend copyright protection to API
`declarations crosses the law’s carefully drawn lines.5
`A. For 140 Years, Copyright Protection Has
`Been Unavailable for the Ideas or
`Systems Described in Works.
` Since at least the late 19th century, this Court has
`recognized the harms that flow from misapplying
`copyright to protect function. In Baker v. Selden, the
`Court addressed an attempt to use copyright in a book
`describing a system of bookkeeping to control the use
`of that system.
`The Court recognized the danger, and held that
`copyright could not be used in this fashion:
`The description of the art in a book, though
`entitled to the benefit of copyright, lays no
`foundation for an exclusive claim to the art
`itself. The object of the one is explanation; the
`object of the other is use. The former may be
`secured by copyright. The latter can only be
`secured, if it can be secured at all, by letters-
`patent.
`
`
`5 In addition to the statutory and case law discussed herein, there
`are other doctrines that ensure copyright protection is limited to
`non-functional, expressive content.
` For example, though
`inapplicable here, the useful article doctrine prohibits protection
`of the useful aspects of pictorial, graphic, or sculptural works. See
`17 U.S.C. § 101.
`
`

`

`9
` Baker v. Selden, 101 U.S. 99, 105 (1879).
`Critically, the Court also held that the forms in
`the book embodied the bookkeeping system itself, and
`were therefore also unprotectable under copyright:
`In describing the art, the illustrations and
`diagrams employed happen to correspond
`more closely than usual with the actual work
`performed by the operator who uses the art.
`Those illustrations and diagrams consist of
`ruled lines and headings of accounts; and it is
`similar ruled lines and headings of accounts
`which, in the application of the art, the book-
`keeper makes with his pen, or the stationer
`with his press; . . .
`Id. at 104–05 (emphasis added).
`Baker held that copyright protection did not apply
`to forms that embodied an accounting method because
`copyright should not extend to utilitarian works whose
`expression exists solely to assist in performing its
`function. Thus, while Selden could copyright the
`explanation of his bookkeeping system, he could not
`copyright the bookkeeping forms even though they
`contained original expression because they embodied
`a process that others had to copy “for the purpose of
`practical application.” Id. at 103.
`The Court also signaled how the legal system has
`viewed and continued to view copyright and patent as
`playing distinct
`roles
`in protecting different
`intellectual creations. See id. Baker showed how
`copyright law could provide one layer of protection for
`some aspects of original works (Selden’s explanation
`of his bookkeeping system), while patent law could
`apply to other aspects (the bookkeeping system
`
`

`

`10
`embodied in Selden’s book). Granting copyright over
`
`functionality to authors of useful arts “is the province
`of
`letters patent,” so allowing copyright over
`functionality when “no examination of its novelty
`[under patent law] has ever been officially made”
`would be “a surprise and a fraud upon the public.” Id.
`at 102.
`Because the Federal Circuit’s Copyrightability
`Opinion
`ignores
`these
`fundamental principles,
`threatens to undermine decades of well-reasoned case
`law, and upends industry expectations surrounding
`software innovation, it should not be allowed to stand.
`B. Section 102(b) Confirms that Protection
`of Functionality Is the Domain of
`Patents, Not Copyright.
`Section 102(b), which codifies the distinction
`articulated in Baker, states that copyright protection
`for an original work of authorship does not extend to
`“any idea, procedure, process, system, method of
`operation, concept, principle, or discovery, regardless
`of the form in which it is . . . embodied in such work.”
`17 U.S.C. § 102(b). The legislative history of § 102(b)
`shows that the statute was enacted to confirm Baker
`and its progeny to ensure that computer program
`copyrights would not be construed to embrace
`functionality:
`lest
`Some concern has been expressed
`copyright
`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
`
`

`

`11
`computer
`in a
`element
` copyrightable
`program, and that the actual processes or
`methods embodied in the program are not
`within the scope of the copyright law . . . .
`Section 102(b) in no way enlarges or contracts
`the scope of copyright.
`H.R. Rep. No. 94-1476, at 57 (1976).
`While testifying at the 1967 Senate hearings
`leading up to the passage of § 102(b), Professor Arthur
`Miller raised concerns that software copyrights would
`“likely confer patent like protection under the guise of
`copyright” and asked Congress to make clear that
`copyright would not cover “the art, process or scheme
`that is fixed in [a] program.” Pamela Samuelson, Why
`Copyright Law Excludes Systems and Processes from
`the Scope of Its Protection, 85 Tex. L. Rev. 1921, 1950
`(2007) (citations omitted). When asked to craft specific
`language for this purpose, Professor Miller provided
`the text that would ultimately become § 102(b). Id.
`Section 102(b)’s prohibition against copyrighting
`processes, systems, and methods of operation is
`further enforced through the merger doctrine. This
`doctrine prevents an author from indirectly asserting
`copyright over a system or method by claiming the
`exclusive right to the only expression for that system
`or method. See Pet. Br. 21. In software,
`[w]hen the “idea” and its “expression” are []
`inseparable, copying the “expression” will not
`be barred, since protecting the “expression” in
`such circumstances would confer a monopoly
`of the “idea” upon the copyright owner free of
`the conditions and limitations imposed by the
`patent law.
`
`

`

`12
` Atari Games Corp. v. Nintendo of America, Inc., 975
`F.2d 832, 837, 839. See also, e.g., Uses of Copyrighted
`Works, Final Report 20 (1979) (“when specific
`instructions, even though previously copyrighted, are
`the only and essential means of accomplishing a given
`task, their later use by another will not amount to an
`infringement.”). Thus, one cannot control the use of
`the functionality of API declarations merely because
`they include expressive names.
`C. Courts and Agencies Since Baker and
`§ 102(b) Have Consistently Cabined
`Copyright.
`These principles continue to be endorsed by
`federal agencies and the courts. A 1991 study
`conducted by the U.S. Copyright Office and the U.S.
`Patent and Trademark Office concluded that copyright
`“protection of the functionality of [] software itself”
`would be contrary to § 102(b). U.S. Copyright Office &
`U.S. Patent & Trademark Office, Patent-Copyright
`Study
`11,
`87–88
`(1991),
`Laws Overlap
`https://perma.cc/5ZU9-HCFX.
` The
`categories
`described in § 102(b) cannot qualify for copyright
`protection, and are instead “assigned to patents where
`a much more rigorous test must be undergone and the
`barriers to entry, in terms of time, cost, and
`complexity, are higher.” Id. at 88.
`Courts have applied these principles in the
`software context. For example, the Federal Circuit
`has itself noted that whereas copyright protects
`program expression, authors should look to patents to
`protect methods of operation or processes. See Atari,
`975 F.2d at 842 (“An author cannot acquire patent-like
`protection by putting an idea, process, or method of
`operation in an unintelligible format and asserting
`
`

`

`13
`copyright infringement against those who try to
`
`understand
`that
`idea, process, or method of
`operation.”) (citing Feist Publications, Inc. v. Rural
`Tel. Serv. Co., 499 U.S. 340, 349-50 (1991); 17 U.S.C.
`§ 102(b)).
`In Lotus v. Borland, the First Circuit affirmed
`these principles, holding that a “menu command
`hierarchy
`is an uncopyrightable
`‘method
`of
`operation.’” Lotus Dev. Corp. v. Borland Int’l, Inc., 49
`F.3d 807, 815 (1st Cir. 1995), aff’d by an equally
`divided Court, 516 U.S. 233 (1996) (per curiam). The
`facts and reasoning in Lotus are quite close. Borland
`had replicated the names and structure of the menus
`in Lotus’s product, which allowed both users and
`software “macros” to
`interact with spreadsheet
`commands without relearning a new set of commands.
`Id. at 809–810. Borland did not copy Lotus’s
`underlying code. Id. at 810.
`In other words, just like with the Java API
`declarations, Borland had to provide the exact same
`command names and structure in order for existing
`users and software to interact with their new, original
`software.
` But as the court recognized, “[t]he
`‘expressive’ choices of what to name the command
`terms and how to arrange them do not magically
`change the uncopyrightable menu command hierarchy
`into copyrightable subject matter.” Id. at 816. The
`Lotus court also recognized the difference between the
`uncopyrightable names and structure of the commands
`and the copyrightable code that implements them:
`The Lotus menu command hierarchy is []
`different from the underlying computer code,
`because while code is necessary for the
`program to work, its precise formulation is
`
`

`

`14
` not. . . . [T]o allow users to operate its
`programs in substantially the same way,
`however, Borland had to copy the Lotus menu
`command hierarchy.
`Id. at 816.
`Judge Boudin additionally noted how granting
`copyright protection to certain aspects could have
`“some of the consequences of patent protection”
`because it would “limit[] other people’s ability to
`perform a task in the most efficient manner.” Id. at
`819 (Boudin, J., concurring). And he recognized the
`tension of using copyright rather than patent
`protection, explaining that “[i]t is no accident that
`patent protection has preconditions that copyright
`protection does not—notably, the requirements of
`novelty and non-obviousness—and that patents are
`granted for a shorter period than copyrights.” Id.
`Other
`courts have maintained
`the same
`distinction
`between
`copyrightable
`code
`and
`uncopyrightable names and structures. For example,
`in MiTek Holdings, the court held a menu and
`submenu command
`tree structure
`to be an
`uncopyrightable process under § 102(b).
` MiTek
`Holdings, Inc. v. Arce Engineering Co., 89 F.3d 1548,
`1556 (11th Cir. 1996). To find otherwise “would be
`affording copyright protection to a process that is the
`province of patent law.” Id. at 1556 n.19.
`Relatedly, courts consistently limit the scope of
`copyright claims over the functionality of software. In
`Altai, the Second Circuit adopted a “successive
`filtering method for separating protectable expression
`from non-protectable material.” Computer Assocs.
`Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 707 (2d Cir. 1992)
`
`

`

`15
` The court excluded from
`(quotation omitted).
`
`protection components of the software that were not
`protectible, including those “dictated by external
`factors,” including “compatibility requirements of
`other programs with which a program is designed to
`operate in conjunction.” Id. at 710 (quoting 3 Melville
`B. Nimmer & David Nimmer, Nimmer on Copyright
`§ 13.03[F][3] at 13–66–71
`(1991)).
` The court
`recognized that allowing copying of these elements “is
`neither unfair nor unfortunate. It is the means by
`which copyright advances the progress of science and
`art.” Id. at 721 (quoting Feist, 499 U.S. 340).6
`Altai quickly became a standard, ultimately
`becoming
`“the
`dominant
`test.”
`4 Nimmer on Copyright § 13.03[A][1][d] (2019). At
`least the Fourth, Fifth, Ninth, Tenth, and Ele

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