`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 HUDSON INSTITUTE AS AMICUS
`CURIAE IN SUPPORT OF RESPONDENT
`
`
`
`ERIK S. JAFFE
` (Counsel of Record)
`GENE C. SCHAERR
`SCHAERR | JAFFE LLP
`1717 K Street, NW, Suite 900
`Washington, DC 20006
`(202) 787-1060
`ejaffe@schaerr-jaffe.com
`
`Counsel for Amicus Curiae
`
`
`
`
`
`QUESTIONS PRESENTED
`The Copyright Act protects “literary works,”
`17 U.S.C. §102(a), expansively defined as “works * * *
`expressed in words, numbers, or other verbal or nu-
`merical symbols or indicia,” §101. Computer pro-
`grams are protected as literary works under the Act.
`Google copied 11,330 lines of Oracle’s original and
`creative computer code, as well as the intricate or-
`ganization of its computer program, into a competing
`software platform, Android.
`The questions presented are:
`1. Does the Copyright Act protect the code and
`organization of an original and creative reference
`system, popular with computer programers who use
`the Java programming language, that could have
`been written in countless ways to perform the same
`function?
`limitation on copyright
`fair-use
`2. Does the
`protection apply where the protected computer code
`was copied for commercial purposes, the copied code
`serves the same purpose and has the same meaning
`in the derivative work that it had in the original, and
`the derivative work containing the copied material
`competes directly with the original work, harming its
`actual and potential markets?
`
`
`
`
`
`
`ii
`
`TABLE OF CONTENTS
`
`
`Questions Presented ..................................................... i
`Table of Contents ......................................................... ii
`Table of Authorities .................................................... iii
`Interest of Amicus Curiae .......................................... 1
`Introduction ................................................................. 1
`Summary of Argument ................................................ 3
`Argument ..................................................................... 4
`I. Reduced and Indeterminate Copyright
`Protection for Computer Code Will
`Undermine Efforts To Reign in IP Theft by
`China, which Has a Long History of
`Hostility toward IP. ................................................ 4
`II. Concerns Over Interoperability Do Not
`Justify Diminished Protection for IP. ................. 10
`Conclusion .................................................................. 13
`
`
`
`
`
`iii
`
`TABLE OF AUTHORITIES
`
`Cases
`Faulkner v. Gibbs, 199 F.2d 635
`(9th Cir. 1952) ........................................................ 12
`Microsoft Corp. v. Motorola,
`Inc.,
`696 F.3d 872 (9th Cir. 2012) .................................. 11
`Inc. v. Weider
`Twin Laboratories,
`Health & Fitness, 900 F.2d 566
`(2d Cir. 1990) .......................................................... 12
`
`Statutes
`17 U.S.C. §101 ............................................................. i
`17 U.S.C. §102 ............................................................. i
`
`Other Authorities
`Robin Brant, How a Chinese firm fell
`victim to intellectual property theft,
`BBC News, March 25, 2019, available
`at
`www.bbc.com/news/business-
`47689065 .................................................................. 7
`Commission on the Theft of American
`Intellectual Property (IP Commission),
`2019 REVIEW: PROGRESS AND UPDATED
`RECOMMENDATIONS
`(Feb.
`2019),
`available
`at
`http://ipcommission.org/report/ip_commi
`ssion_2019_review_of_progress_and_up
`dated_recommendations.pdf ................................ 6, 7
`
`
`
`
`
`iv
`
`Commission on the Theft of American
`Intellectual Property (IP Commission),
`UPDATE TO THE IP COMMISSION REPORT,
`THE THEFT OF AMERICAN INTELLECTUAL
`PROPERTY: REASSESSMENTS
`OF
`THE
`CHALLENGE AND UNITED STATES POLICY
`(Feb.
`2017),
`available
`at
`http://www.ipcommission.org/report/IP_C
`ommission_Report_Update_2017.pdf ...................... 5
`Office
`of
`the United States Trade
`Representative (USTR), Executive Office
`of
`the President, FINDINGS OF THE
`INVESTIGATION
`INTO CHINA’S ACTS,
`POLICIES, AND PRACTICES RELATED TO
`TECHNOLOGY TRANSFER, INTELLECTUAL
`PROPERTY,
`INNOVATION UNDER
`AND
`SECTION 301 OF THE TRADE ACT OF 1974
`(Mar.
`22,
`2018),
`available
`at
`https://ustr.gov/sites/default/files/Section
`%20301%20FINAL.PDF .......................................... 7
`Eric Rosenbaum, 1 in 5 corporations say
`China has stolen their IP within the last
`year: CNBC CFO survey, CNBC (Mar. 1,
`2019),
`available
`at
`www.cnbc.com/2019/02/28/1-in-5-
`companies-say-china-stole-their-ip-
`within-the-last-year-cnbc.html ................................ 6
`
`
`
`
`
`v
`
`White House Office of Trade and
`Manufacturing Policy, HOW CHINA’S
`ECONOMIC AGGRESSION THREATENS THE
`TECHNOLOGIES
`INTELLECTUAL
`AND
`PROPERTY OF THE UNITED STATES AND
`THE WORLD (June 2018), available at
`www.whitehouse.gov/wp-
`content/uploads/2018/06/FINAL-China-
`Technology-Report-6.18.18-PDF.pdf ....................... 6
`
`
`
`
`
`
`
`
`
`
`INTEREST OF AMICUS CURIAE 1
`Hudson Institute is a nonpartisan public policy re-
`search foundation. Founded in 1961 by strategist
`Herman Kahn, Hudson Institute challenges conven-
`tional thinking and helps manage strategic transi-
`tions to the future through interdisciplinary studies
`in defense, international relations, economics, health
`care, technology, culture, and law. Hudson seeks to
`guide public policy makers and global leaders in gov-
`ernment and business through a vigorous program of
`publications, conferences, policy briefings, and rec-
`ommendations.
`This case interests Hudson because it involves the
`intersection of nearly all of those interrelated areas
`and requires a sensitivity to the intended and unin-
`tended consequences of weakening copyright protec-
`tion in the manner suggested by Petitioner.
`INTRODUCTION
`While amicus will leave the debate over the finer
`details of copyright law to the extensive and capable
`briefing of others, it agrees with Respondent that the
`words and organization of Java SE declarations are a
`creative expression that could have been and can be
`expressed in a myriad of other ways and are deserv-
`ing of protection. Resp. Br. 7, 11, 17. Indeed, to hold
`otherwise would withdraw protection from the nu-
`
`1 No counsel for a party authored this brief in whole or in
`part, nor did any person or entity, other than amicus or its
`counsel, make a monetary contribution intended to fund the
`preparation or submission of this brief. This brief is submitted
`pursuant to the written blanket consent of Petitioner and the
`written consent of Respondent.
`
`
`
`
`
`2
`
`merous headings and organizational structures of le-
`gal treatises, textbooks, the Westlaw Key Number
`system, and other educational and reference materi-
`als. All such materials – or at least the best of them
`– contribute originality and creativity not merely
`through their paragraphs and expositions, but also
`through the descriptive and organizational inven-
`tiveness of their structure and headings. Resp. Br. 2,
`4-5, 7.
`That the creative naming descriptions and organi-
`zation of Java SE, or analogous reference works, have
`become extremely and rightfully popular does not de-
`prive such creative works of their protection. There
`are many ways to organize and code in Java, just like
`there are many ways to discuss different areas of the
`law, or to describe human relationships in literature.
`Saying that there is only one way to “declare” in Java
`SE is precisely as circular as saying there is only one
`way to portray love, tragedy, and kings in Shake-
`speare – it reflects the popularity of the form of ex-
`pression, not the merger of the underlying idea and
`the expression. See Resp. Br. 18 (saying that neces-
`sary “idea” is to copy specific popular expression is
`circular approach to merger doctrine). While Java
`SE’s declarations and organization may not be
`Shakespeare, the fact that many programmers prefer
`Java SE’s approach to that of potential competing ex-
`pressions for organizing Java-based programming
`should be rewarded with diligent copyright protec-
`tion, not punished with the loss of protection.
`Amicus writes separately, however, to offer the
`modest additional contribution that lowering protec-
`
`
`
`
`
`3
`
`tion for this form of intellectual property (IP) – and
`thus for any form of popular and widely adopted
`computer code in general – will have broader interna-
`tional consequences making it harder for the United
`States to expand and enforce copyright protection,
`particularly when dealing with difficult actors like
`China, which has historically encouraged theft of
`United States IP, and is only recently taking lurching
`steps to improve its treatment of IP.
`
`SUMMARY OF ARGUMENT
`1. Opening a gaping hole in the coverage of and
`exceptions to copyright protection for computer pro-
`grams deemed too widely accepted and popular to al-
`low for protection will provide a ready-made excuse
`for competitors and thieves to appropriate valuable
`forms of expression. It also will make enforcement of
`IP rights more difficult and more uncertain, dimin-
`ishing the value of such rights and the incentives to
`create original works. Such dangers are present in
`the United States and among ordinary competitors,
`but are a particular concern in connection with the
`United States’ on-going difficulties with China on IP
`theft.
`Endorsing the overly lenient standards for using
`copyrighted software proposed by Petitioner not only
`will embolden numerous companies and nations to
`steal American IP, it will make it extremely difficult
`to police international theft of IP. Vague and circular
`standards regarding “merger” of ideas and expres-
`sion, or loose and manipulatable standards for fair
`use make it difficult to prosecute or sue bad actors,
`difficult to identify and discourage inadequacies in
`
`
`
`
`
`4
`
`foreign enforcement, and ultimately undermine nego-
`tiations with China and others by blurring relevant
`legal lines. Such diminished protection for the IP of
`American companies will harm the U.S. national in-
`terest, harm creative companies, and harm the rule of
`law.
`2. Concerns over copyright protection creating po-
`tential barriers to interoperability and American
`competitiveness abroad are overblown. The facts of
`this case reflect the ready availability of licenses that
`allow both interoperability and the creative incen-
`tives of copyright protection to coexist. They also
`demonstrate that undermining copyright protection
`does not ensure interoperability given that Android
`was intentionally designed not to be interoperable in
`many instances. To the extent there are genuine bar-
`riers to interoperability in other cases, there are nu-
`merous alternative means of solving that problem
`without eliminating the rewards and incentives pro-
`vided by copyright.
`
`ARGUMENT
`I. Reduced and Indeterminate Copyright Pro-
`tection for Computer Code Will Undermine
`Efforts To Reign in IP Theft by China, which
`Has a Long History of Hostility toward IP.
`Apart from the predictable domestic impact of
`weakened and amorphous standards for protecting
`copyrighted works – lower incentives and rewards for
`creativity, greater resort to secrecy, increased en-
`forcement and litigation costs even for vindicating
`still-protected works – such standards have a compa-
`
`
`
`
`
`5
`
`rable if not greater impact on efforts to obtain inter-
`national protection for American copyrighted works.
`Efforts to improve protection in countries with a his-
`tory of disregarding such rights, and that might only
`now be improving their IP regimes, require brighter
`lines for what is permissible and impermissible, few-
`er opportunities for abuse of vague or uncertain
`standards, and a consistency in valuing IP that can
`serve as both a model and a promise of protection for
`such property.
`China stands as an apt example of a country with
`a long history of acquiring technology and intellectual
`property from foreign countries and companies by
`any means fair or foul, but that only recently is mov-
`ing towards a more protective regime.
`According to the independent and bipartisan
`Commission on the Theft of American Intellectual
`Property (the “IP Commission”), the annual direct
`cost of IP theft to the United States is at least $225
`billion and may be as high as $600 billion. IP Com-
`mission, UPDATE TO THE IP COMMISSION REPORT, THE
`THEFT OF AMERICAN INTELLECTUAL PROPERTY: REAS-
`SESSMENTS OF THE CHALLENGE AND UNITED STATES
`POLICY
`1
`(Feb.
`2017),
`available
`at
`http://www.ipcommission.org/report/IP_Commission_
`Report_Update_2017.pdf. Indirect costs such as loss
`of competitiveness and devaluation of remaining IP
`rights are much harder to measure but may well be
`higher. Id. at 13.
`China appears to be the chief culprit in this inter-
`national problem, with many examples reflecting
`years of abuse. See, e.g., White House Office of Trade
`
`
`
`
`
`6
`
`and Manufacturing Policy, HOW CHINA’S ECONOMIC
`AGGRESSION THREATENS THE TECHNOLOGIES AND IN-
`TELLECTUAL PROPERTY OF THE UNITED STATES AND
`THE WORLD 2 (June 2018) (noting that China has a
`policy of obtaining international technology and intel-
`lectual property through virtually any means possi-
`ble, including state-sponsored IP theft, evasion of
`U.S. export control laws, counterfeiting, and piracy),
`available
`at
`www.whitehouse.gov/wp-
`content/uploads/2018/06/FINAL-China-Technology-
`Report-6.18.18-PDF.pdf; IP Commission, 2019 RE-
`VIEW: PROGRESS AND UPDATED RECOMMENDATIONS 4
`(Feb. 2019) (noting that China was placed on the U.S.
`“Priority Watch List due to critical IP concerns, in-
`cluding trade secret theft, online piracy and counter-
`feiting, * * * and weak enforcement”), available at
`http://ipcommission.org/report/ip_commission_2019_r
`eview_of_progress_and_updated_recommendations.p
`df.2
`Despite China’s long and multifaceted history of
`participation in, encouragement of, and protection for
`IP theft, there has been some measure of progress in
`bringing China into line with rule-of-law principles in
`the IP space, and in obtaining at least a grudging
`level of legal protection for U.S. intellectual property.
`
`
`2 The problem of IP theft by China is widespread in addition
`to being costly. In 2019 one in five American companies report-
`ed it had IP stolen by China within the past year. Eric Rosen-
`baum, 1 in 5 corporations say China has stolen their IP within
`the last year: CNBC CFO survey, CNBC (Mar. 1, 2019), availa-
`ble at www.cnbc.com/2019/02/28/1-in-5-companies-say-china-
`stole-their-ip-within-the-last-year-cnbc.html.
`
`
`
`
`
`7
`
`IP Commission, 2019 REVIEW, at 4 (noting USTR con-
`clusion that while “China has continuously failed to
`implement its promises to strengthen IP protection
`* * * there is positive momentum in China’s judicial
`reforms that include its specialized IP courts and tri-
`bunals, which demonstrate competence, expertise,
`and transparency to a greater degree than other Chi-
`nese courts”); Robin Brant, How a Chinese firm fell
`victim to intellectual property theft, BBC News,
`March 25, 2019 (officials in Washington “argue Amer-
`ican and other foreign companies in China have en-
`dured decades of theft and infringement,” and while
`“China has taken some steps to address the problem
`* * * [n]ow though comes the hard part – enforce-
`ment.”), available at www.bbc.com/news/business-
`47689065.
`But there remain numerous barriers to and chal-
`lenges facing further improvement in IP protection in
`China. Office of the United States Trade Representa-
`tive (USTR), Executive Office of the President, FIND-
`INGS OF THE INVESTIGATION INTO CHINA’S ACTS, POLI-
`CIES, AND PRACTICES RELATED TO TECHNOLOGY
`TRANSFER, INTELLECTUAL PROPERTY, AND INNOVATION
`UNDER SECTION 301 OF THE TRADE ACT OF 1974, at 180
`(Mar.
`22,
`2018),
`available
`at
`https://ustr.gov/sites/default/files/Section%20301%20
`FINAL.PDF. Such problems are caused and exacer-
`bated by a variety of factors, including “substantial
`obstacles to civil enforcement and ineffective and in-
`consistent criminal and administrative enforcement
`by the government of China.” Id.
`
`
`
`
`
`8
`
`Given the difficult history and difficult progress
`surrounding China’s protection of IP, and particular-
`ly American IP, creating uncertainty and diminished
`protection for important aspects of IP such as copy-
`rights in computer code will inevitably throw a
`wrench into efforts to get China to provide greater
`and more certain protection. At a minimum, it will
`create a gaping and ill-defined hole in copyright pro-
`tection for computer code making it more difficult to
`enforce remaining protections in historically hostile
`foreign venues such as China, where agencies and
`courts have greater incentives to favor domestic ap-
`propriators over American innovators.
`Excluding fundamental and popular software from
`copyright protection because its very popularity
`makes it the “only” thing that will satisfy program-
`mers who prefer it creates a built-in loophole denying
`protection to any creative work in the software space
`that is broadly successful. Indeed, the more a crea-
`tive work exceeded the offerings of its competitors in
`quality and popularity, the easier it would be to ar-
`gue for an exception to copyright protection. China
`thus could readily justify appropriation of U.S. soft-
`ware packages, or parts thereof, on the argument
`that the software is so popular that consumers or cli-
`ents demand “interoperability” and the same func-
`tionality.
`Petitioner’s appeal to “fair use” to justify its appro-
`priation of Respondent’s Java SE declarations and
`organization likewise provides a roadmap to foreign
`actors like China to circumvent U.S. and internation-
`al copyright protection for computer code and other
`
`
`
`
`
`9
`
`works. Such a roadmap, if adopted by this Court, will
`remove the brighter lines and greater clarity provided
`by the decision below, and would eliminate a signifi-
`cant tool for private and governmental enforcement of
`IP rights.3
`It is not hard to foresee how such loopholes and
`uncertainties would be taken advantage of by a coun-
`try like China with a limited commitment to IP pro-
`tection in general, and a strong incentive to favor
`Chinese appropriators of American IP. Weakening of
`actual and potential enforcement regimes will ob-
`scure not only the enforcement of rights, but also the
`definition of the rights in question, thereby making
`even negotiations over the subject more difficult.
`Copyright Thought Leaders Amicus Br. 34 (a ruling
`for Petitioner in this case would become a “weakness
`in our negotiating posture that would be exploited [by
`China] to our detriment”). Such uncertainty and im-
`precision raise the especial danger that they will em-
`bolden China to continue its predatory practices in
`the future regarding U.S. IP.
`If the U.S. is going to insist that China respect the
`IP rights of American companies, and adhere to a ro-
`bust standard for protecting copyright as well as pa-
`tent rights, it is imperative that the U.S. set a strong
`example and adopt clear and enforceable rules for
`protecting popular and valuable works and other IP.
`
`3 If fair use includes commercial and competing uses of fun-
`damental creative aspects of a work in order to create derivative
`works, then it only requires surrounding the core originality and
`innovation with frills and add-ons to effectively exclude protec-
`tions for derivative works. Resp. Br. 19.
`
`
`
`
`
`10
`
`The nascent positive trend in China’s treatment of IP
`rights needs to be reinforced by U.S. actions, not just
`words.
` Maintaining
`strong and difficult-to-
`circumvent protection at home would help demon-
`strate that the U.S. upholds the same strong protec-
`tions for IP that we demand of China and others.
`II. Concerns Over Interoperability Do Not
`Justify Diminished Protection for IP.
`Petitioner and various amici raise the need for
`national and international interoperability as a
`justification for removing copyright protection when a
`computer program becomes sufficiently popular that
`many businesses want to use it and copy its key
`features. See, e.g., Pet. Br. 15, 41, 50 (arguing that
`copyright protection for interface programs could
`prevent
`interoperability);
`Computer
`&
`Communications Indus. Ass’n Amicus Br. 5-6
`(discussing supposed need
`to deny
`copyright
`protection to allow international interoperability);
`R Street
`Inst. Amicus Br. 31-32
`(discussing
`reimplementation and standardization).
`As an initial matter, amicus notes that the benefits
`from interoperability described in those briefs do not
`turn on denying copyright protection to the creators
`of original and popular naming conventions and or-
`ganizations structures for various coding tools. The
`many licenses offered by Respondent, Resp. Br. 12,
`including a free license for those actually sharing
`their derivative works with others or paid licenses
`requiring genuine interoperability, readily solve such
`problems and better achieve the benefits supposedly
`advanced by undermining copyright protection.
`
`
`
`
`
`11
`
`Conversely, undermining copyright protection does
`not even ensure interoperability, as evidenced by the
`fact that Android was intentionally designed not to be
`interoperable with other Java SE-based programs in
`many instances. Resp. Br. 14. Petitioner’s proposed
`weakening of copyright protection thus is neither
`necessary nor sufficient to address the central con-
`cern advanced by Petitioner and its amici.
`Even if interoperability were a genuine issue in
`some other case, there are other ways to mitigate
`such concerns that do not involve destroying the
`existence or value of IP and the incentive for high-
`level organizational innovation. For example, if the
`organization and naming conventions of Java SE
`were truly essential – though they are not –
`interoperability and access could be addressed
`through private standard-setting organizations in
`much the same way such issues are dealt with in the
`patent context. See, e.g., Microsoft Corp. v. Motorola,
`Inc., 696 F.3d 872, 875-77 (9th Cir. 2012) (discussing
`standard-setting process and licensing requirements
`for standard-essential patents). In such instances the
`many stakeholders collaborate to decide what is
`essential for interoperability, and the contributors to
`the selected standard agree to fair, reasonable, and
`non-discriminatory (FRAND) licensing regimes. See
`Copyright Thought Leaders Amicus Br. 17-19
`(discussing benefits of FRAND licensing regime as an
`approach that provides access without destroying IP
`protection).
`Alternatively, if voluntary fair licensing terms
`were unsuccessful, governments presumably could
`
`
`
`
`
`12
`
`judicially-
`license with a
`impose a compulsory
`determined fair royalty – providing just compensa-
`tion for what might otherwise be a taking of intellec-
`tual property. Cf. Faulkner v. Gibbs, 199 F.2d 635,
`638 (9th Cir. 1952) (an “established royalty” is the
`“best measure of value of what was taken” by patent
`infringement).
`Similarly, many of Petitioner’s complaints about
`the potential loss of interoperability due to an unco-
`operative copyright holder sound suspiciously like an-
`titrust, monopolization, or patent abuse complaints
`that could be addressed by doctrines in those or re-
`lated fields to the extent the implicit complaints ac-
`tually prove true. If Java SE is to be viewed as a mo-
`nopoly on a critical interface, or as an essential facili-
`ty of some sort, the law has ample means of evaluat-
`ing and addressing such concerns. See, e.g., Twin
`Laboratories, Inc. v. Weider Health & Fitness, 900
`F.2d 566, 568-71 (2d Cir. 1990) (discussing require-
`ments for essential facilities and monopolization
`claims).4 But invalidating or narrowing property
`rights should be the last resort in such circumstanc-
`es, and solutions can be better tailored so as not to
`undermine the very point of IP rights in the first
`place.5
`
`
`4 Petitioner does not raise a claim or defense of copyright
`misuse or similar issues in this Court.
`5 And, of course, it goes without saying that in a policy-
`dependent area such as this, a court should be more inclined to
`let the elected branches sort out any future balance of competing
`interests.
`
`
`
`
`
`13
`
`Given the many alternatives to resolving any in-
`teroperability concerns not already resolved by Re-
`spondent’s existing license offerings, copyright law
`should not be distorted or muddled to reach a result
`that effectively appropriates the value of Respond-
`ent’s work. It should be sufficient that the work in
`question falls within the plain language of the Copy-
`right Act, is unquestionably creative and original,
`and hence should not lose protection because others
`seek to appropriate its success and popularity.
`
`CONCLUSION
`For the foregoing reasons, this Court should affirm
`the judgment of the court of appeals.
`
`
`Respectfully submitted,
`
`ERIK S. JAFFE
` (Counsel of Record)
`GENE C. SCHAERR
`SCHAERR | JAFFE LLP
`1717 K Street, NW, Suite 900
`Washington, DC 20006
`(202) 787-1060
`ejaffe@schaerr-jaffe.com
`
`Counsel for Amicus Curiae
`
`
`
`
`
`
`Dated: February 19, 2020
`
`