`
`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 PROFESSOR AND
`FORMER CONTU MEMBER ARTHUR R. MILLER
`IN SUPPORT OF RESPONDENT
`
`
`
`THEODORE STEVENSON, III
`Counsel of Record
`CHELSEA A. PRIEST
`PATRICK PIJLS
`MCKOOL SMITH, P.C.
`300 Crescent Court, Suite 1500
`Dallas, TX 75201
`(214) 978-4974
`tstevenson@mckoolsmith.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF AUTHORITIES ....................................... II
`
`INTEREST OF AMICUS CURIAE ............................ 1
`
`SUMMARY OF ARGUMENT ..................................... 2
`
`I.
`
`Nothing Has Changed Since CONTU
`Addressed Many of the Issues Before This
`Court ................................................................. 3
`
`Congress Has Accorded Copyright Protection
`to Functional Works Since 1790 ...................... 8
`
`
`II.
`
`
`III.
`
`If a Work Becomes a Standard Form of
`Expression, Copyright Law Does Not Deny
`Protection Via Copyrightability or a Fair Use
`Defense ............................................................ 14
`
`
`CONCLUSION .......................................................... 19
`
`
`
`
`(I)
`
`
`
`II
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Comput., Inc. v. Franklin
`Comput. Corp.,
`714 F.2d 1240 (3d Cir. 1983) ......................... 11, 12
`Baker v. Selden,
`101 U.S. 99 (1879) ................................................ 10
`Burrow-Giles Lithographic Co. v.
`Sarony,
`111 U.S. 53 (1884) .................................................. 8
`Eales v. Envtl. Lifestyles, Inc.,
`958 F.2d 876 (9th Cir. 1992) .................................. 9
`Howell v. Miller,
`91 F. 129 (6th Cir. 1898) ........................................ 9
`Perris v. Hexamer,
`99 U.S. 674 (1878) .............................................. 8, 9
`Rockford Map Publ’rs v. Directory Serv.
`Co. of Colo.,
`768 F.2d 145 (7th Cir. 1985) ............................ 9, 13
`Sony Corp. of Am. v. Universal City
`Studios, Inc.,
`464 U.S. 417 (1984) .............................................. 16
`
`Statutes and Regulations
`17 U.S.C. § 101 ............................................................ 9
`
`
`
`III
`
`17 U.S.C. § 102(b) ................................................ 15, 18
`17 U.S.C. §§ 107‒22 ................................................... 17
`17 U.S.C. § 117 .......................................................... 18
`Computer Software Copyright Act of
`1980, Pub. L. No. 96-517, 94 Stat.
`3015 .............................................................. passim
`Copyright Act of 1790, 1 Stat. 124
`(1790) .................................................................. 7, 8
`Copyright Act of 1831, 4 Stat. 436
`(1831) ...................................................................... 7
`Copyright Act of 1870, 16 Stat. 198
`(1870) ...................................................................... 7
`Copyright Act of 1909, Pub. L. No. 60-
`349, 35 Stat. 1075 (1909) ....................................... 7
`Copyright Act of 1976, Pub. L. No. 94-
`553, 90 Stat. 2541 (1976) ....................................... 7
`Orrin G. Hatch–Bob Goodlatte Music
`Modernization Act, Pub. L. No. 115-
`264, 132 Stat. 3676 (2018) ..................................... 8
`37 C.F.R. § 202.1(a) ................................................... 13
`
`
`
`
`IV
`
`Other Authorities
`Anthony L. Clapes, Software, Copyright,
`and Competition: The “Look and
`Feel” of the Law (1989) ......................................... 12
`Antonin Scalia & Bryan A. Garner,
`Reading Law: The Interpretation of
`Legal Texts (1st ed. 2012) .................................... 18
`Arthur R. Miller, Copyright Protection
`for Computer Programs, Databases,
`and Computer-Generated Works: Is
`Anything New Since CONTU?, 106
`Harv. L. Rev. 977 (1993) .............................. passim
`National Commission on New Techno-
`logical Uses of Copyrighted Works,
`Final Report (1979) ...................................... passim
`Jane C. Ginsburg, Four Reasons and a
`Paradox: The Manifest Superiority of
`Copyright Over Sui Generis
`Protection of Computer Software, 94
`Colum. L. Rev. 2559, 2567 (1994) .......................... 8
`Ralph Oman, Computer Software As
`Copyrightable Subject Matter: Oracle
`v. Google, Legislative Intent, and the
`Scope of Rights in Digital Works, 31
`Harv. J.L. & Tech. 639, 642 (2018) ....................... 4
`
`
`
`V
`
`Steven R. Englund, Idea, Process, or
`Protected Expression?: Determining
`the Scope of Copyright Protection of
`the Structure of Computer Programs,
`88 Mich. L. Rev. 866, 900 (1990) ................... 12, 13
`
`
`
`
`
`
`INTEREST OF AMICUS CURIAE1
`Amicus Professor Arthur R. Miller currently is a
`University Professor at the New York University
`School of Law. He has devoted a substantial part of
`his professional career to the study of federal prac-
`tice and procedure and is a co-author of Charles Alan
`Wright, Arthur R. Miller, Mary Kay Kane & Richard
`L. Marcus, Federal Practice and Procedure. Professor
`Miller has taught copyright for more than forty years
`at a number of law schools.
`Most relevant here, Professor Miller participated
`in the debates, hearings, and negotiations that re-
`sulted in the Computer Software Copyright Act of
`1980. President Gerald Ford also appointed Profes-
`sor Miller to the National Commission on New Tech-
`nological Uses of Copyrighted Works (“CONTU”),
`where he served on the Software Subcommittee.
`That Subcommittee investigated the relationship be-
`tween software and copyright and drafted the rele-
`vant portion of the CONTU’s Final Report, which
`both parties cite in their briefing. See National
`Commission on New Technological Uses of Copy-
`righted Works, Final Report (1979) [hereinafter “Re-
`port”].
`In 1993, Professor Miller wrote an article defend-
`ing and reiterating CONTU’s recommendations and
`addressing the specific issue before this Court. See
`Arthur R. Miller, Copyright Protection for Computer
`
`
`1 The parties have consented to the filing of this brief and re-
`ceived timely notice of the intention to file. No counsel for any
`party authored this brief in whole or in part. No counsel or par-
`ty made a monetary contribution intended to fund the prepara-
`tion or submission of this brief.
`
`(1)
`
`
`
`2
`
`Programs, Databases, and Computer-Generated
`Works: Is Anything New Since CONTU?, 106 Harv.
`L. Rev. 977 (1993).
`Given his longstanding research on and participa-
`tion in debates regarding copyrightability of soft-
`ware, Professor Miller submits this brief to offer the
`Court his professional academic perspective on the
`issues presented in this case.2 He writes to expound
`on that defense of CONTU as it applies to the ques-
`tions before the Court and reiterate the view that
`“program interfaces are treated no differently from
`other program features for copyright purposes.” Mil-
`ler, supra, at 1032.
`SUMMARY OF ARGUMENT
`Petitioner would have this Court declare that use
`of a copyrighted work is “necessary” whenever it is
`popular and an infringer wants to take advantage of
`that popularity. That is not the law. CONTU recom-
`mended and Congress agreed that software should
`be treated exactly as every other literary work. Nei-
`ther functionality nor popularity exempts a creative
`work from copyright protection or otherwise excuses
`an infringer’s actions. The decision below should be
`affirmed.
`
`
`2 Amicus’s affiliations and past positions are included for con-
`text only. Amicus submits this brief solely in his personal ca-
`pacity and does not speak on behalf of any other person or insti-
`tution. Professor Miller’s complete biography is available at
`https://its.law.nyu.edu/facultyprofiles/index.cfm?fuseaction=prof
`ile.biography&personid=20130.
`
`
`
`3
`
`I. Nothing Has Changed Since CONTU Ad-
`dressed Many of the Issues Before This
`Court
`In 1974, Congress created CONTU with the man-
`date to counsel Congress on, among other things,
`“the impact of the computer on copyrighted works.”
`Report, supra, at 5. CONTU was designed to incor-
`porate views from a variety of perspectives; thus, it
`included representatives of authors and copyright
`owners, copyright users, and members of the public.
`Id. at 4. In addition, CONTU held hearings and sem-
`inars and sought advice from numerous stakeholders
`and experts, including, for example, the Massachu-
`setts Institute of Technology and The New York
`Times. Id. at 6‒7, App’x F, G.
`CONTU issued its final report in 1978—a report
`that was the product of “three years of data collec-
`tion, hearings, analysis, and deliberation.” Id. at 1.
`CONTU’s recommendation was “to make it explicit
`that computer programs, to the extent that they em-
`body an author’s original creation, are proper subject
`matter of copyright.” Ibid. Two years later, Congress
`heeded CONTU’s recommendation to “put the new
`wine into the old bottles,” Miller, supra, at 979, and
`passed the Computer Software Copyright Act of
`1980, Pub. L. No. 96-517, 94 Stat. 3015.3 Given the
`rigor of CONTU’s work, the report merits great
`weight in interpreting the Copyright Act. As peti-
`
`3 The statutory changes were minimal. CONTU recommend-
`ed (1) defining “computer program” and (2) clarifying that alt-
`hough placing software into a computer creates a copy, whose
`unauthorized use would otherwise constitute piracy, a lawful
`possessor of the software is entitled to do so to use the software.
`Report, supra, at 12‒13.
`
`
`
`4
`
`tioner concedes, the report is the “authoritative guide
`to congressional intent.” Pet. Br. 24 (quoting Sega
`Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1520
`n.5 (9th Cir. 1992), as amended (Jan. 6, 1993)); see
`Ralph Oman, Computer Software As Copyrightable
`Subject Matter: Oracle v. Google, Legislative Intent,
`and the Scope of Rights in Digital Works, 31 Harv.
`J.L. & Tech. 639, 642 (2018) (“Congress adopted
`CONTU’s recommendations wholesale, making its
`report particularly useful.”). The “underlying prem-
`ise” of CONTU’s recommendation—and therefore the
`statutory text—is that computer programs “are enti-
`tled to copyright protection under the same princi-
`ples that govern other literary works.” Miller, supra,
`at 1008.
`CONTU’s description of the relationship between
`copyright and software remains dispositive of the
`questions before this Court today—in other words,
`nothing has changed since CONTU. See id. at 977.
`The need for protecting software, CONTU stated, has
`“grown proportionally with two related concurrent
`trends”: the proliferation of uses to which software
`can be put, which follows from the proliferation of
`computers themselves. See Report, supra, at 10.
`Even as early as the 1970s, CONTU recognized the
`importance of copyright protection for software: The
`“underlying principle of copyright,” CONTU pro-
`claimed, is that the lesser the cost of duplicating a
`work, the greater the need for legal protection to
`maintain the “necessary incentive” to spur its crea-
`tion. See ibid.; see also Miller, supra, at 1020 (noting
`that “subordinating the interests of those who create
`software in favor of those who copy software for their
`own commercial ends * * * inevitably undercut[s] the
`
`
`
`5
`
`incentives that Congress intended the Copyright Act
`to provide authors of programs”).
`When computers first appeared, a particular
`software program was of little use without a particu-
`lar computer. The two went hand-in-hand. When
`hardware and software development evolved into
`separate spheres, however, software could be devel-
`oped for use in any number of different computers.
`With the cost of replicating the software no longer
`tied to the cost of building the computer, then, soft-
`ware became relatively inexpensive to reproduce.
`CONTU saw the writing on the wall. See Report, su-
`pra, at 11 (observing that “[i]f present computer in-
`dustry trends continue, it is all but certain that pro-
`grams written by nonmachine manufacturers will
`gain an increasing share of the market”). The schism
`of computer and software design meant that the lat-
`ter—“the product of great
`intellectual effort”—
`demanded protection. Ibid.
`CONTU was prescient. Take this case as an ex-
`ample. Oracle, the world’s second largest software
`company, developed software libraries that Google
`used to develop the world’s most-used mobile operat-
`ing system. Because Google could simply copy and
`paste Oracle’s declaring code on which petitioner’s
`operating system and applications rely, the cost to
`Google of replicating Oracle’s work was minimal. Ab-
`sent the continued protection by the Copyright Act
`that CONTU envisioned, “the product of [Oracle’s]
`great intellectual effort” would be exposed to free
`copying.
`CONTU also foresaw the exact type of dispute
`that arises in this case, distinguishing between “cop-
`yrightable computer programs and uncopyrightable
`
`
`
`6
`
`processes or methods of operation.” Id. at 18. Be-
`cause that distinction “does not always seem to
`‘shimmer with clarity,’” CONTU thought it “im-
`portant that the distinction between programs and
`processes be made clear.” Id. So CONTU described
`how it envisioned the “‘idea-expression identity’ ex-
`ception” would operate in the software context:
`“when specific instructions, even though previously
`copyrighted, are the only and essential means of ac-
`complishing a given task, their later use by another
`will not amount to an infringement.” Id. at 20. But
`“[w]hen other language is available, programmers
`are free to read copyrighted programs and use the
`ideas embodied in them in preparing their own
`works.” Ibid. (emphasis original).4 In so saying,
`CONTU found that “[t]he availability of alternative
`noninfringing language is the rule rather than the
`exception.” Id. at 20 n.106.
`Google suggests that CONTU’s language repre-
`sents a reversal of the traditional approach to mer-
`ger, which focuses on the availability of alternatives
`to the creator of a computer program. Pet. Br. 30.
`Not so. As discussed above, CONTU’s overarching
`recommendation was to apply traditional copyright
`principles to computer programs. Moreover, the spe-
`cific text Google quotes was in the context of a sec-
`tion focused on “the fruits of intellectual labor” of the
`original author. Report, supra, at 20 (quoting United
`
`
`4 Contrary to petitioner’s argument, CONTU did not intend
`this language to shift the merger analysis from the time of crea-
`tion to the time of infringement. See Resp. Br. 29‒30. The Cop-
`yright Act provides protection from the time of conception, and
`as will be described in more detail below, a copyrighted work
`does not lose its protection merely because it is popular.
`
`
`
`7
`
`States v. Steffens, 100 U.S. 82, 94 (1879)). “This ex-
`ception would mean that a ‘program’ consisting of a
`very few obvious steps could not be a subject of copy-
`right.” Report, supra, at 20. Where there are unlim-
`ited choices available, merger does not apply. See
`ibid. (stating that merger applies when there are “a
`limited number of ways to express a given idea”).
`Pursuant to CONTU’s work, Congress afforded
`software clear-cut protection in the Computer Soft-
`ware Copyright Act of 1980. CONTU’s lesson is sim-
`ple. “All that copyright protection for programs * * *
`means is that users may not take the works of others
`to operate their machines.” Id. at 21. “In each in-
`stance,” however, “one is always free to make the
`machine do the same thing it would if it had the cop-
`yrighted work placed in it, but only by one’s own cre-
`ative effort rather than by piracy.” Ibid. This is the
`clear statement of Congress’ intent in the field.
`As explained below, see infra Parts II‒III, peti-
`tioner’s reasons for ejecting interfaces from the ambit
`of the Copyright Act or otherwise treating them dif-
`ferently are misplaced. But to the extent the policy
`arguments are given any merit, any changes in the
`scope of the Copyright Act should originate in Con-
`gress, which retains the power to revise its own stat-
`ute. Here, not only has Congress done so—amending
`the Copyright Act dozens of times since its first en-
`actment5— but in establishing CONTU in the first
`
`5 The first copyright statute enacted pursuant to the Intellec-
`tual Property Clause was the Copyright Act of 1790, 1 Stat. 124
`(1790). Since then, Congress has passed four principal revi-
`sions. See Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat.
`2541 (1976); Copyright Act of 1909, Pub. L. No. 60-349, 35 Stat.
`1075 (1909); Copyright Act of 1870, 16 Stat. 198 (1870); Copy-
`
`
`
`8
`
`place Congress signaled both its cognizance of the
`Act’s importance and Congress’s custody over the
`Act’s future.
`II. Congress Has Accorded Copyright Protec-
`tion to Functional Works Since 1790
`Petitioner and its amici focus much attention on
`the purported “functionality” of the copied code. Yet
`nothing in the Copyright Act renders interfaces (or
`any other computer software or program) per se un-
`copyrightable by virtue of their functionality. Indeed,
`Congress has consistently granted copyright protec-
`tion to works with functional attributes. See Jane C.
`Ginsburg, Four Reasons and a Paradox: The Mani-
`fest Superiority of Copyright Over Sui Generis Protec-
`tion of Computer Software, 94 Colum. L. Rev. 2559,
`2567 (1994).
`The Copyright Act has protected functional works
`since its first iteration in 1790, which granted copy-
`right protection to maps and charts. See Act of May
`31, 1790, ch. XV, 1 Stat. 124; see also Burrow-Giles
`Lithographic Co. v. Sarony, 111 U.S. 53, 57 (1884)
`(“This statute not only makes maps and charts sub-
`jects of copyright, but mentions them before books in
`the order of designation.”).6 Courts similarly have
`
`right Act of 1831, 4 Stat. 436 (1831). The revisions to Title 17 of
`the United States Code since 1976 are too numerous to catalog,
`but they number in the dozens. See U.S. Copyright Office, Cir-
`cular 92, Copyright Law of the United States and Related Laws
`v-xii (2016), https://www.copyright.gov/title17/title17.pdf. Just
`recently, Congress passed the Orrin G. Hatch–Bob Goodlatte
`Music Modernization Act, Pub. L. No. 115-264, 132 Stat. 3676
`(2018).
`6 Google’s amici analogize to maps in another way, by argu-
`ing that a color-coded map with a key was found not copyright-
`
`
`
`9
`
`granted protection to functional literary works, such
`as tables of contents and indices, even though the
`underlying material (state statutes) was not copy-
`rightable. See Howell v. Miller, 91 F. 129, 138 (6th
`Cir. 1898).
`That protection of functional expression continues
`to this day. See Rockford Map Publ’rs v. Directory
`Serv. Co. of Colo., 768 F.2d 145 (7th Cir. 1985) (copy-
`right infringement of plat maps). For example, courts
`have found copyright law applicable to protect archi-
`tectural drawings, even though “[t]he intrinsic func-
`tion of an architectural plan is to convey the infor-
`mation necessary to enable the reader to construct a
`building.” Eales v. Envtl. Lifestyles, Inc., 958 F.2d
`876, 879–80 (9th Cir. 1992). Likewise, the Act pro-
`tects useful works including “fact compilations, dic-
`tionaries, code books, encyclopedias, advertising, and
`‘how to’ instruction manuals.” Miller, supra, at 986.
`Like maps, charts, and architectural works, soft-
`ware is copyrightable despite its functionality. The
`Copyright Act defines a computer program in terms
`that make clear that such programs are functional:
`“a set of statements or instructions to be used direct-
`
`able in Perris v. Hexamer, 99 U.S. 674 (1878). But that case
`applied an early form of scenes a faire, because maps are ex-
`pected to have keys; “[s]carcely any map is published on which
`certain arbitrary signs, explained by a key printed at some con-
`venient place for reference, are not used to designate objects of
`special interest.” Id. at 676. Yet “it has never been supposed
`that a simple copyright of the map gave the publisher an exclu-
`sive right to the use upon other maps of the particular signs
`and key which he saw fit to adopt.” Ibid. Both the district court
`and the court of appeals (correctly) rejected Google’s scenes a
`faire defense, Pet. App. 155a-157a, and Google does not make
`any scenes a faire argument in its briefing to this Court.
`
`
`
`10
`
`ly or indirectly in a computer in order to bring about
`a certain result.” 17 U.S.C. § 101 (emphasis added).
`CONTU recommended—and Congress accepted—
`that software be copyrightable just like any other lit-
`erary work. Treating software any differently or ac-
`cording it weaker copyright protection “explicitly
`contradicts CONTU’s finding, enacted into law by
`Congress, that computer programs are to be treated
`as literary works and accorded corresponding copy-
`right protection.” Miller, supra, at 1022. And “inter-
`faces are treated no differently from other program
`features for copyright purposes.” Id. at 1032.
`To be sure, the protection can be limited, but only
`when the idea and the expression merge, such that it
`is impossible to perform the function without also
`copying the idea. That was the issue in Baker v. Sel-
`den, 101 U.S. 99 (1879), where this Court explained
`that the public was free to use the accounting meth-
`od Selden described, but “in using the art, the ruled
`lines and headings of accounts must necessarily be
`used as incident to it.” Id. at 104. Thus, the forms at
`issue were not copyrightable. Id. at 107; see also Mil-
`ler, supra, at 986 (noting that Baker distinguished
`between works “having their final end in application
`and use” and those “whose essence consists only in
`their statement,” but “found the expression in both
`categories eligible for protection”).
`As respondent explains, merger analysis must be
`conducted ex ante, at the time the work is created,
`not ex post, at the time of infringement. See Resp. Br.
`29 (“[E]very circuit to consider the issue has conclud-
`ed that what matters are the options available to the
`author creating the original work.”). Without careful
`adherence to the temporal distinction between an ex
`
`
`
`11
`
`ante and ex post merger analysis, there is risk that
`the law might erroneously deny copyright protection
`to works that have become so highly popular that the
`gamut of alternative expressions has, ex post, become
`limited.
`CONTU debated extensively the merger doctrine
`and whether it could properly resolve the utility/non-
`utility problem. CONTU members engaged in end-
`less discussions about the copyrightability of pro-
`grams embedded in chips and programs used for en-
`tirely utilitarian purposes, such as the air-fuel mix-
`ture in automobiles. It concluded that copyright law,
`including merger, struck the proper balance for pro-
`tecting works in the software context as copyright
`law does in other fields. See Report, supra, at 20.
`In other words, a developer is free to write code
`that causes a computer to perform a novel function.
`The developer cannot use copyright to prevent any-
`one else from performing that function. But the de-
`veloper can use copyright to prevent anyone from us-
`ing the same expression—i.e., code—to perform that
`function. See Apple Comput., Inc. v. Franklin Com-
`put. Corp., 714 F.2d 1240, 1253 (3d Cir. 1983) (“If
`other programs can be written or created which per-
`form the same function as [a developer’s] operating
`system program, then that program is an expression
`of the idea and hence copyrightable.”). The only ex-
`ception is if the specific code is the only way to per-
`form the function. See id. (“[T]his inquiry is no dif-
`ferent than that made to determine whether the ex-
`pression and idea have merged, which has been stat-
`ed to occur where there are no or few other ways of
`expressing a particular idea.”).
`
`
`
`12
`
`But as CONTU heard at public hearings, “[t]he
`availability of alternative noninfringing language is
`the rule rather than the exception.” Report, supra, at
`20 n.106. The following colloquy between Professor
`(then-Commissioner) Miller and the Vice President
`of the Association of Computing Machinery makes
`this clear:
`Commissioner Miller: How many different ways
`are there to produce a program * * * *?
`Dan McCracken: An infinite number in princi-
`ple, and in practice dozens, hundreds.
`Commissioner Miller: So it is comparable to the
`theoretically infinite number of ways of writing
`Hamlet?
`McCracken: I believe so. It is not really true
`that there is a very restrictive way to write a
`program [which might make it] not copyrighta-
`ble. I don’t believe that at all.
`Id. (quoting Transcript, CONTU Meeting No. 10, at
`44‒45). Professor Miller reiterated that view years
`later. See Miller, supra, at 1042 n.292 (describing
`“assurances that a given computer program ordinari-
`ly can be written in innumerable ways”); see also An-
`thony L. Clapes, Software, Copyright, and Competi-
`tion: The “Look and Feel” of the Law 115‒16 (1989)
`(“[T]he range of constructs and manipulations from
`which the program author selects are constrained
`more by the author’s imagination than by the rela-
`tively weak constraints imposed by the nature of the
`desired result.”).
`As another author said, “there are usually many
`ways to implement any function.” Steven R. En-
`glund, Idea, Process, or Protected Expression?: De-
`
`
`
`13
`
`termining the Scope of Copyright Protection of the
`Structure of Computer Programs, 88 Mich. L. Rev.
`866, 900 (1990). “Claims of necessity should thus be
`viewed with some skepticism.” Id. Only when the
`code is “necessary to the purpose or function of a
`computer program” is the code unprotectable. Miller,
`supra, at 996 (citing Whelan Assocs., Inc. v. Jaslow
`Dental Lab., Inc., 797 F.2d 1222, 1236 (3d Cir.
`1986)).
`This is as true for single instructions as it is for
`entire computer programs. Petitioner is wrong to
`claim that the Copyright Act “does not extend copy-
`right protection to an isolated computer instruction.”
`See Pet. Br. 23 (emphasis omitted). Just like the
`merger doctrine does not destroy the copyrightability
`of a sentence within a larger book, it does not pre-
`clude the copyrightability of a single line of computer
`code, so long as the same function could have been
`accomplished a different way.7 See Rockford Map
`Publ’rs, 768 F.2d at 148–49 (“Dickens did not need to
`complete Bleak House before receiving a copyright;
`every chapter—indeed every sentence—could be pro-
`tected standing alone.”).
`The question before the Court is whether copy-
`right law properly resolves, consistent with sound
`policy objectives, the current dispute, if one assumes
`that Google copied the declaring code not because it
`was the only way to accomplish the desired function,
`but because the declaring code had become popular
`
`7 Putting aside, for the moment, that “[w]ords and short
`phrases such as names, titles, and slogans” are not copyrighta-
`ble. 37 C.F.R. § 202.1(a). Google argues in this Court only that
`the calls developers use—not the declaring code at issue here—
`fall within that exception. Pet. Br. 9; Resp. Br. 23.
`
`
`
`14
`
`to the point that it is now standard language for de-
`velopers, and thus the efficient solution. Existing
`copyright is situated to resolve this type of dispute:
`“a court should not declare a computer program ele-
`ment uncopyrightable simply because it can be con-
`clusorily classified as ‘efficient’ or ‘externally deter-
`mined.’” Miller, supra, at 1009. Even if copying is the
`more “efficient” choice in a particular case, “the mere
`fact that the expression is efficient should not, with-
`out more, bar protection for original authorship in
`the programming context any more than it does with
`prose work.” Id. at 1004. The court must “protect a
`program’s expressive elements.” Id. at 1009.
`In short, functionality alone does not remove
`software—even
`interfaces—from Congress’s com-
`mand that software is copyrightable. In a case in
`which the accused infringer admits that the copy-
`right owner’s code is original, and admits that it
`could have achieved the same function without copy-
`ing, there would not be merger.
`III. If a Work Becomes a Standard Form of Ex-
`pression, Copyright Law Does Not Deny
`Protection Via Copyrightability or a Fair
`Use Defense
`Petitioner’s justification for its copying is that it
`was “necessary” because it wanted developers to be
`able to use their preexisting knowledge of Java’s API
`calls. Yet the “narrow[]” grounds on which petitioner
`urges the Court to decide the copyrightability issue,
`Pet. Br. 19, would upend the foundations of copyright
`law. That a particular work is “popular” does not
`mean it becomes uncopyrightable.
`
`
`
`15
`
`There is nothing new to Google’s position—while
`“dressed in anti-monopolistic garb, at bottom it is an
`argument for standardization.” Miller, supra, at
`1019.8 At its root is the notion that “popular systems
`are to lose their copyright protection merely because
`their popularity denominates them ‘standards.’” Id.
`at 1020. This notion “would not be taken seriously if
`the copyrighted works were Steinbeck’s Grapes of
`Wrath, Hemingway’s The Sun Also Rises, or Miller’s
`Death of a Salesman.” Ibid.
`This issue was discussed at length by CONTU,
`which understood that there are rare instances in
`which extrinsic public policy dictated denial of a cop-
`yright. At the time, some asserted that should be the
`fate of the Kennedy assassination films taken by Mr.
`Zapruder. But CONTU also understood that mere
`popularity—like mere utility—did not make some-
`thing uncopyrightable. Works of genius and works of
`folly often become extraordinarily “popular.” That
`does not mean, however, they become uncopyrighta-
`ble. When CONTU said that normal copyright prin-
`ciples should apply to computer programs, implicit in
`that recommendation is the range of reasons that a
`particular work might get less protection or no pro-
`tection at all: principles concerning fair use, the First
`Amendment, antitrust law, and generic works.
`Equally implicit, though, is the notion that if a com-
`puter program becomes popular, so be it, but that
`
`
`8 While Google’s amici quote Professor Miller’s 1967
`statement expressing concerns as to copyright protection of un-
`derlying processes, Congress subsequently enacted Section
`102(b) at his recommendation; Professor Miller noted that his
`concerns had “moderated” by 1993. See Miller, supra, at 981
`n.10.
`
`
`
`16
`
`does not void the copyright ex post, and it does not
`prevent basic copyrightability.
`Congress had good reason not to enact a populari-
`ty exception to copyright. As an initial matter, such
`an exception would lure the courts into a hopeless
`exercise in line-drawing: Just how popular must a
`work become before the creator is penalized with loss
`of protection? The exercise is even more impossible
`when, as in this case, substitute means of expression
`abound. See Pet. App. 47a (“Google also conceded
`that it could have written the APIs differently to
`achieve the same function.”).
`Nor does calling the copied material an “inter-
`face” aid in the line-drawing exercise. Though that
`term “may seem precise * * * it really has no specific
`meaning in programming. Certainly, it has no mean-
`ing that has any relevance to copyright principles.”
`Miller, supra, at 1034 (footnote omitted). “Any limi-
`tation on the protection of ‘interfaces’ thus would be
`a limitation on the protection of much of the valuable
`expression in programs, and would invite plagiarists
`to label as an ‘interface’ whatever they have chosen
`to copy without permission.” Ibid.
`More importantly, a popularity exception would
`eviscerate the goal of the Copyright Act, which is to
`promote advancements. “The purpose of copyright is
`to create incentives for creative effort.” Sony Corp. of
`Am. v. Universal City Studios, Inc., 464 U.S. 417, 450
`(1984). But advance too far and create widely desired
`work, petitioner warns, and risk losing copyright
`protection altogether; anyone will be able to copy the
`previously protected material by claimi
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