In the Supreme Court of the United States
`
`No. 18-956
`
`
`
`________________
`
`GOOGLE LLC,
`
`
`v.
`
`ORACLE AMERICA, INC.,
`
`
`Petitioner,
`
`Respondent.
`
`________________
`On Petition for Writ of Certiorari to the
`United States Court of Appeals
`for the Federal Circuit
`________________
`BRIEF OF AMICUS CURIAE SOFTWARE
`INNOVATORS, STARTUPS, AND INVESTORS
`IN SUPPORT OF PETITIONER
`________________
`
`
`
`
`
`February 25, 2019
`
`J. Carl Cecere
`Counsel of Record
`CECERE PC
`6035 McCommas Blvd.
`Dallas, TX 75206
`(469) 600-9455
`ccecere@cecerepc.com
`Counsel for Amicus Curiae
`
`
`
`
`No. 18-956
`
`
`
`________________
`
`GOOGLE LLC,
`
`
`v.
`
`ORACLE AMERICA, INC.,
`
`
`Petitioner,
`
`Respondent.
`
`________________
`On Petition for Writ of Certiorari to the
`United States Court of Appeals
`for the Federal Circuit
`________________
`BRIEF OF AMICUS CURIAE SOFTWARE
`INNOVATORS, STARTUPS, AND INVESTORS
`IN SUPPORT OF PETITIONER
`________________
`
`
`
`
`
`February 25, 2019
`
`J. Carl Cecere
`Counsel of Record
`CECERE PC
`6035 McCommas Blvd.
`Dallas, TX 75206
`(469) 600-9455
`ccecere@cecerepc.com
`Counsel for Amicus Curiae
`
`
`
`
`
`
`TABLE OF CONTENTS
`Table of authorities .............................................................. ii
`Interest of amicus curiae .................................................... 1
`Introduction and summary of argument .......................... 2
`Argument ............................................................................. 4
`This case is vitally important for all startups. .................. 4
`A. Startups depend on easy access to APIs. ......... 5
`B. The Federal Circuit’s rulings threaten the
`easy access to APIs that startups need to
`survive. .................................................................. 9
`C. Without easy access to APIs, startups will
`be harder to develop, and harder to fund,
`sending ripples through the entire economy.
` ............................................................................. 13
`Conclusion .......................................................................... 19
`Appendix ............................................................................. 1a
`
`
`
`
`
`
`
`
`(i)
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases:
`Assessment Techs. of WI, LLC v. WIREdata,
`Inc.,
`350 F.3d 640 (7th Cir. 2003) ............................................ 14
`Baker v. Selden,
`101 U.S. (11 Otto) 99 (1880) .......................................... 12
`Bateman v. Mnemonics, Inc.,
`79 F.3d 1532 (11th Cir. 1996) .......................................... 13
`Computer Assocs. Int’l, Inc. v. Altai, Inc.,
`982 F.2d 693 (2d Cir. 1992) ............................................. 13
`Lexmark Int’l, Inc. v. Static Control
`Components, Inc.,
`387 F.3d 522 (6th Cir. 2004) ............................................ 13
`Lotus Dev’t Corp. v. Borland Int’l, Inc.,
`49 F.3d 807 (1st. Cir. 1995), aff’d, 516 U.S. 233
`(1996) (per curiam). ........................................................ 13
`Mitel, Inc. v. Iqtel, Inc.,
`124 F.3d 1366 (10th Cir. 1997) ........................................ 14
`Sega Enterps. Ltd. v. Accolade, Inc.,
`977 F.2d 1510 (9th Cir. 1992) .......................................... 13
`Statutes:
`Digital Millennium Copyright Act,
`17 U.S.C. § 1201(f)(1). .................................................... 11
`Sonny Bono Copyright Term Extension Act,
`Pub. L. No. 105-298, 112 Stat. 2827, § 102(b)
`(1998). ............................................................................... 15
`17 U.S.C. §
`102(b) ........................................................................... 9, 11
`
`
`
`
`
`(ii)
`
`
`
`iii
`
`
`Statutes—continued:
` 102(a). ............................................................................... 15
`Other Authorities:
`Kevin Ashton, That ‘Internet of Things’ Thing,
`RFID Journal (June 22, 2009),
`<https://bit.ly/2V0SJBJ>. .............................................. 5
`Jonathan Band, Interfaces on Trial 2.0 (2011). ............... 5
`Michael A. Carrier, Copyright and Innovation:
`The Untold Story, 2012 Wis. L. Rev. 891 (2012) ......... 16
`Adam DuVander, 7,000 APIs: Twice as Many as
`This Time Last Year, ProgrammableWeb
`(Aug. 23, 2012), <https://bit.ly/2EkDnRh> .................. 7
`Ewing Marion Kauffman Found., The
`Importance of Startups in Job Creation and
`Job Destruction 4 (Jul. 2010),
`<http://bit.ly/1eODvIy>. .............................................. 18
`Deborah Gage, The Venture Capital Secret: 3
`Out of 4 Start-ups Fail, Wall St. J., Sept. 20,
`2012 .................................................................................. 15
`Urs Gasser & John Palfrey, Interop: The
`Promise and Perils of Highly Connected
`Systems (2012) .................................................................. 5
`Paul Goldstein, Goldstein on Copyright § 2.3.11 ............. 9
`Fern Halper, Judith Hurwitz, & Marcia
`Kaufman, A Web API Study: The Benefits of
`APIs in the App Economy (2011),
`<https://bit.ly/2XlcWDv> ............................................... 8
`
`
`
`
`
`
`
`
`
`
`
`iv
`
`Other Authorities—continued:
`J. Haltiwanger et al., Ewing Marion Kauffman
`Found., Declining Business Dynamism in the
`U.S. High-Technology Sector 7 (Feb. 2014),
`<http://bit.ly/1OWNUPp> ........................................... 18
`J.D. Harrison, More businesses are closing than
`starting. Can Congress help turn that
`around?, Wash. Post, Sept. 17, 2014,
`<http://wapo.st/1Parrns>. ............................................ 18
`Darian M. Ibrahim, The (Not So) Puzzling
`Behavior of Angel Investors, 61 Vand. L. Rev.
`1405 (2008) ......................................................................... 8
`Tim Kane, Ewing Marion Kauffman Foundation,
`The Importance of Startups in Job Creation
`and Job Destruction (2010),
`<https://bit.ly/2xxx0GE>. .............................................. 2
`Ariel Katz, Copyright and Competition Policy in
`Handbook of the Digital Creative Economy
`(Christian Handke and Ruth Towse, eds. 2013) ............ 9
`Samuel Kortum & Josh Lerner, Assessing the
`Contribution of Venture Capital to
`Innovation, RAND Journal of Economics
`(2000) .................................................................................. 8
`Gary Lauder, Venture Capital: “The Buck Stops
`Where?”, 2 Med. Innovation & Bus. 14 (2010),
`<http://bit.ly/2xzoAhi>. ................................................ 16
`Nat’l Sci. Bd., Nat’l Sci. Found., Science and
`Engineering Indicators (2016),
`<http://1.usa.gov/1m7gkxG>. ...................................... 18
`
`
`
`
`
`
`
`
`
`
`v
`
`Other Authorities—continued:
`Nat’l Venture Capital Ass’n, Venture Impact:
`The Economic Importance of Venture-Backed
`Companies to the U.S. Economy (5th ed.
`2009), <http://bit.ly/1X8wBmZ>. ................................ 18
`Nat’l Venture Capital Ass’n, Yearbook 2017
`(2017) <https://bit.ly/2U5bGlP> .................................... 8
`Tim O’Reilly, The Open Source Paradigm Shift,
`in Perspectives on Free and Open Source
`Software (J. Feller, B. Fitzgerald, S. Hissam,
`& K. R. Lakhani, eds., 2007)............................................ 6
`Open Source Initiative, The Open Source
`Definition, http://opensource.org/osd. ........................... 6
`Programmable-Web API Directory,
`https://www.programmableweb.com/apis/direc
`tory ..................................................................................... 7
`Pamela Samuelson & Suzanne Scotchmer,
`The Law and Economics of Reverse
`Engineering, 111 Yale L.J. 1575 (2002) ....................... 11
`Small Bus. Admin., Off. of Advocacy, Frequently
`Asked Questions 1,
`<http://1.usa.gov/1y1jgOO>......................................... 18
`Jeffery Stylos & Brad Myers, Mapping the
`Space of API Design Decisions, 2007 IEEE
`Symposium on Visual Languages and Human-
`Centric Computing (2007) ......................................... 8, 14
`Eric von Hippel, Democratizing Innovation
`(2006) ................................................................................ 17
`World Economic Forum, Technology Pioneers
`2018 <https://bit.ly/2yF8wiL> ....................................... 2
`
`
`
`
`
`
`
`
`
`vi
`
`
`Webpages:
`Apache Software Foundation, Open Office,
`http://www.openoffice.org/. .............................................. 6
`Basecamp (37signals, LLC),
`http://basecamp.com. ....................................................... 7
`Disqus, http://www.disqus.com .......................................... 7
`GitHub, Inc.,
`https://github.com/dewitt/opensearch. ........................... 7
`Last.fm LTD, http://www.last.fm ....................................... 7
`Microsoft Kinect, <https://bit.ly/2psUKdl>. ................... 7
`Mozilla Products, <https://mzl.la/2IASStD> .................. 6
`Simple Finance Technology Corp.,
`http://www.simple.com ..................................................... 7
`Wordpress, http://wordpress.org/. ..................................... 6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`In the Supreme Court of the United States
`________________________
` No. 18-956
`
`
` GOOGLE LLC,
`
`Petitioner,
`
` v.
`
` ORACLE AMERICA, INC.,
`Respondent.
`________________________
`On Petition for a Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`________________________
`BRIEF OF AMICUS CURIAE SOFTWARE
`INNOVATORS, START-UPS, AND INVESTORS
`IN SUPPORT OF PETITIONER
`________________________
`
`INTEREST OF AMICUS CURIAE1
`Amici, who are listed individually in the attached ap-
`pendix,
`include and represent software
`innovators,
`startups, and investors actively competing in a wide array
`of industry sectors and markets. This has given them
`
`1 Counsel for all parties received notice of amicus curiae’s intent to
`file this brief 10 days before its due date. Petitioner has lodged a blan-
`ket amicus consent letter with the Court, and Respondent has con-
`sented to the filing of this brief. No counsel for any party authored
`this brief in whole or in part, and no person or entity other than the
`amicus, its members, or its counsel made a monetary contribution in-
`tended to fund the brief ’s preparation or submission.
`
`
`
`
`(1)
`
`
`
`2
`
`
`
`first-hand knowledge of the types of application program-
`ming interfaces (APIs) at issue in this case, as well as an
`appreciation for the role that interoperability—and the
`limited, fair, and stable copyright rules on which it de-
`pends—plays in driving innovation in the technology sec-
`tor. Amici write to share the benefit of their considered
`expertise in this area, and to urge the Court to take this
`case to preserve longstanding limits on copyright that en-
`courage interoperability and allow startups to thrive.
`INTRODUCTION AND SUMMARY OF
`ARGUMENT
`American startups are one of the most vital compo-
`nents of the U.S. economy—one of our chief sources of
`jobs, capital, and economic growth.2 Our startups repre-
`sent some of the most important drivers of innovation in
`the world. This is starkly illustrated by a recent annual
`listing which put 24 American startups on a list of the 53
`most innovative in the world.3 And American startups
`have renowned histories to match their worldwide im-
`pact: the monster powerhouse companies of today, like
`Apple, Microsoft, Google, Yahoo!, Intel—and Oracle it-
`self—were all once small, garage-bound startups. Today’s
`startups continue that storied legacy, innovating new
`products and services that benefit every sector of society
`as they grow into tomorrow’s powerhouses. Amici, and
`
`
`2 See Tim Kane, Ewing Marion Kauffman Foundation, The Im-
`portance of Startups in Job Creation and Job Destruction 3 (2010),
`<https://bit.ly/2xxx0GE>.
`3 See World Economic Forum, Technology Pioneers 2018
`<https://bit.ly/2yF8wiL> (listing 24 American start-ups out of a total
`of 53 as the most innovative in the world).
`
`
`
`
`
`
`
`
`3
`
`the companies they fund, rank among the most innovative
`of these.
`Yet startups are under threat. The Federal Circuit’s
`multiple rulings in this decade-long battle between
`Google and Oracle have changed the rules of copyright.
`By holding that APIs—software interfaces allowing de-
`velopers to access prewritten lines of code—are copy-
`rightable, and use of them will rarely, if ever, constitute
`fair use, the lower court struck a blow against the interop-
`erability copyright meant to protect—a blow that falls
`particularly heavily on startup companies. And because of
`the Federal Circuit’s special place in the copyright world,
`which makes it an option for copyright appeals whenever
`a patent is also involved, these new copyright rules will
`effectively be nationalized and impossible to avoid. See
`Br. of Amicus Curiae Engine Advocacy in Support of Pe-
`titioner.
`This regime change will allow copyright-wielding in-
`cumbents to hold interoperability under lock and key—
`permitting them to decide who gets to connect to their
`products, and how much would-be connectors must pay.
`That is because APIs are essential for connecting differ-
`ent kinds of software components to each other, and often
`it is physically impossible, or at least practically impossi-
`ble, to design around them. In a world where interopera-
`bility is critical, an inability to connect to existing prod-
`ucts would be the death knell for any small developing
`business. Knowing that, incumbents—and the new brand
`of copyright trolls the lower court’s decision will foster—
`will be able to make the toll to achieve interoperability
`very high.
`That will force many startups to pay exorbitant royal-
`ties to perform rudimentary operations, or engage in
`hundreds, or thousands, of expensive workarounds (when
`
`
`
`
`
`4
`
`such workarounds are even possible). This will exponen-
`tially increase the costs of developing software. The likely
`result will be that more startups will fail, billions of dollars
`in investments will be lost, and consumers will be forced
`to spend far more to get far less—stuck with less desira-
`ble, less functional products. This Court’s review is essen-
`tial to bring clarity to the law and to prevent the Federal
`Circuit’s erroneous rules from taking hold.
`ARGUMENT
`This case is vitally important for all startups.
`The Federal Circuit’s rulings at issue in this case may
`concern only a few lines of code shared between Oracle’s
`Java programming language and Google’s Android oper-
`ating system, but their ripples will be felt throughout all
`of copyright law, and the entire American startup commu-
`nity. That is because the dominant concern in today’s mar-
`ketplace is interoperability. Any new product a startup
`might offer must integrate seamlessly into to a world of
`existing networks, devices, storage, and software. The
`specific type of product does not really matter. Software,
`hardware, or brick-and-mortar business—the most inno-
`vative offerings in virtually any field will be interoperable.
`Regardless of the product, this interoperability is ulti-
`mately traceable to software, and depends upon APIs like
`those at issue in this case.
`By upsetting the legal regime under which these APIs
`have traditionally been considered freely and widely
`available, the Federal Circuit’s ruling upsets the expecta-
`tions of the entire startup world, and the balance between
`incumbents and the competitors that sometimes follow
`fast behind them, adding risk, uncertainty, and expense to
`every step in the product-development process. This will
`harm the prospects of virtually every fledgling American
`
`
`
`
`
`5
`
`startup, thereby eroding cornerstones of the U.S. econ-
`omy.
`
`A. Startups depend on easy access to APIs.
`Modern innovation flourishes through interoperabil-
`ity.4 Interoperability is the reason you can read a website
`regardless of the browser you use, why the email you
`wrote on your laptop, through Microsoft’s Outlook email
`application, can be read on someone else’s Apple’s iPhone,
`and why you can switch flawlessly from watching a movie
`on your phone to watching it on your computer, and then
`on your television. Your bicycle may be able to keep track
`of your workouts, even when you are using someone else’s
`bicycle. You may be able to control the temperature of
`your house from your phone, or from your watch.
`1. Any startup must confront this interoperative
`world, and find ways for its products to connect to the ex-
`isting universe of products, platforms, content, and ser-
`vices. Some do so by designing products that connect to
`networks—such as through the “Internet of Things.”5
`Some do so by adding features to their products that ulti-
`mately come from others—customizing them with readily
`available technologies. Many products, for example, add
`Google Maps, Twitter interfaces, or links to Facebook into
`their applications.
`Some offerings connect to, and build upon, others’ in-
`novations—thereby competing with, and sometimes
`
`
`4 See Urs Gasser & John Palfrey, Interop: The Promise and Perils
`of Highly Connected Systems 111-125 (2012).
`5 Kevin Ashton, That ‘Internet of Things’ Thing, RFID Journal
`(June 22, 2009), <https://bit.ly/2V0SJBJ>.
`
`
`
`
`
`
`6
`
`replacing, the original.6 This, for instance, is what Mozilla
`has done with its Firefox browser, Thunderbird e-mail cli-
`ent, the SeaMonkey Internet application suite, and the
`FileZilla FTP client.7 Word processing software OpenOf-
`fice8 competes with Microsoft’s Word. Blogging platform
`WordPress is widely used.9 These offerings are all “open
`source”—they come with free licenses allowing develop-
`ers to freely modify and redistribute the program’s
`source code.10 Yet they have become popular because
`they are compatible with—even as they compete
`against—their proprietary counterparts.11
`2. Regardless of the type of product at issue, interop-
`erative software lies at its heart. And APIs are critical to
`achieving that interoperability. These go way beyond
`Java’s particular declaring and implementing codes. They
`comprise a whole series of programs, subroutines, and
`communication protocols providing the basic tools for
`building software—with a ready shorthand to stand in for
`the sometimes lengthy underlying code. APIs allow hard-
`ware and software to communicate with each other, and
`allow software to communicate with other software. APIs
`
`6 See Jonathan Band, Interfaces on Trial 2.0 1-5 (2011).
`7 Mozilla Products, <https://mzl.la/2IASStD>.
`8 Apache Software Foundation, Open Office, http://www.openof-
`fice.org/.
`9 http://wordpress.org/.
`10 See Open Source Initiative, The Open Source Definition,
`http://opensource.org/osd.
`11 See, e.g., Tim O’Reilly, The Open Source Paradigm Shift, in Per-
`spectives on Free and Open Source Software 461 (J. Feller, B. Fitz-
`gerald, S. Hissam, & K. R. Lakhani, eds., 2007).
`
`
`
`
`
`
`7
`
`also permit programmers to use a single set of instruc-
`tions to access codes that will translate those instructions
`to make them compatible with a host of other platforms.
`3. APIs are practically ubiquitous in programming,
`used in everything from online discussion,12 to web
`search,13 project management,14 banking,15 motion track-
`ing,16 and music.17
`“If an app does anything interesting, it likely needs ***
`an API.”18 And APIs are proliferating at a breakneck
`pace—with hundreds of new APIs created every month.
`Ibid. One popular central listing currently indexes over
`20,000 APIs—and it is probably an exceedingly underin-
`clusive listing.19 Indeed, every startup supported by ami-
`cus Foundry Group uses at least one API.
`4. APIs have driven growth in the startup community,
`because under the legal regime that has operated until
`now, developers have properly assumed that they can use
`established API descriptive labels, and use the same API
`endpoints, as other, familiar pieces of software, for the
`sake of interoperability. This enables the creation of
`
`12 Disqus, http://www.disqus.com.
`13 GitHub, Inc., https://github.com/dewitt/opensearch.
`14 Basecamp (37signals, LLC), http://basecamp.com.
`15 Simple Finance Technology Corp., http://www.simple.com.
`16 Microsoft Kinect, <https://bit.ly/2psUKdl>.
`17 Last.fm LTD, http://www.last.fm.
`18 Adam DuVander, 7,000 APIs: Twice as Many as This Time Last
`Year,
`ProgrammableWeb
`(Aug.
`23,
`2012),
`<https://bit.ly/2EkDnRh>.
`19 See Programmable-Web API Directory, https://www.program-
`mableweb.com/apis/directory.
`
`
`
`
`
`
`8
`
`software for just a few hundred dollars that would other-
`wise require millions of dollars to produce if everything
`had to be coded from scratch.
`Fueled by APIs, today’s startups have been able to
`flourish, bringing products efficiently to market with lim-
`ited risk and expense.20 Indeed, one study found that soft-
`ware programs implementing APIs make it to market
`30% faster than those that do not.21
`5. The ease and predictability of creating software with
`APIs has attracted venture capital funding, which in turn
`has further hastened the pace of innovation.22 In 2016
`alone, venture capital firms provided over $69.1 billion of
`to 7,750 companies, largely at the crucial “seed- and early-
`stage” of their development paths.23 The dramatic in-
`crease in software startups, and indeed, startups of all
`kinds, can thus be traced to the ease of transmitting ideas
`
`
`20 Jeffery Stylos & Brad Myers, Mapping the Space of API Design
`Decisions, 2007 IEEE Symposium on Visual Languages and Human-
`Centric Computing 53-54 (2007) (IEEE Report).
`21 See Fern Halper, Judith Hurwitz, & Marcia Kaufman, A Web
`API Study: The Benefits of APIs in the App Economy (2011),
`<https://bit.ly/2XlcWDv>.
`22 See Samuel Kortum & Josh Lerner, Assessing the Contribution
`of Venture Capital to Innovation, RAND Journal of Economics
`(2000) (finding that increases in venture capital funding in a sector
`are associated with statistically significant higher rates of innova-
`tion); see also Darian M. Ibrahim, The (Not So) Puzzling Behavior of
`Angel Investors, 61 Vand. L. Rev. 1405, 1407 (2008) (discussing the
`boosts to employment and gross domestic product that investor-
`backed firms provided in the 2000s).
`23 Nat’l Venture Capital Ass’n, Yearbook 2017 13–14 (2017)
`<https://bit.ly/2U5bGlP>.
`
`
`
`
`
`9
`
`into reality—in significant part due to the ready availabil-
`ity of APIs.
`
`B. The Federal Circuit’s rulings threaten the easy
`access to APIs that startups need to survive.
`The Federal Circuit’s decisions in this case collectively
`make big changes in copyright law that not only disre-
`spect the interoperability copyright was meant to foster,
`but have enormous practical consequences for startups.
`1. Interoperability is written into copyright’s very
`soul. It lives in the limits imposed on copyrightability in
`17 U.S.C. § 102(b), which “identifies specifically those el-
`ements of a work for which copyright is not available.”
`Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 356
`(1991). § 102(b) extends copyright protection to expres-
`sions of ideas under easily satisfied rules, but stops short
`of protecting the ideas themselves and the “procedure[s],
`process[s], system[s], method[s] of operation, concept[s],
`or discover[ies]” that go into those expressions. These
`ideas, methods, and systems are reserved for patent law,
`subject to patent’s very rigorous standards to ensure only
`very few ideas can be monopolized.
`This dual-track dichotomy—between expressions and
`ideas, patent and copyright—preserves a wide realm of
`ideas and their “creative building blocks,” Paul Goldstein,
`Goldstein on Copyright § 2.3.11. It allows people to build
`upon everyone else’s ideas, to comment on them, and de-
`part from them, thereby permitting the world of ideas to
`work as a seamless, interconnected whole, in which each
`idea is accessible, and interacts and operates together
`with every other one. Through this interoperability, cop-
`yright seeks to “stimulate the production of the most
`abundant possible array of expression,” ibid., and to
`
`
`
`
`
`10
`
`provide new market entrants the means to compete on
`equal footing with incumbents.24
`2. The Court has long recognized that giving teeth to
`§ 102(b)’s dichotomy requires denying copyright protec-
`tion in instances where “expression” and “idea” (or build-
`ing blocks) overlap. Thus, since Baker v. Selden, 101 U.S.
`(11 Otto) 99 (1880), the Court has maintained that the de-
`scription of a method of operation—even an original and
`expressive one—is uncopyrightable, lest the copyright
`provided to the description capture the unprotectible
`method of operation itself. This was true of the accounting
`forms in Baker, which were not copyright-protectible
`even though they were described in a book that was pro-
`tected, because “the object of the one [the book] is expla-
`nation; the object of the other [the forms] is use.” Id. at
`105. This concession was necessary to prevent companies
`from keeping whole methods of operation locked up under
`copyright protection, cut off from interconnected world of
`ideas, simply by applying a descriptive label to them.
`3. Until the Federal Circuit’s decision in this case, that
`protected zone of interoperability has been universally
`extended to software interfaces, preventing them from
`acquiring protection even when they bear a descriptive
`label. So Lotus’s “menu command hierarchy” was denied
`copyright protection, despite the expressive choices that
`went into it, because that hierarchy attached to a pure
`“method of operation.” Lotus Dev’t Corp. v. Borland Int’l,
`Inc., 49 F.3d 807, 809, 816 (1st Cir. 1995), aff’d, 516 U.S.
`233 (1996) (per curiam). Copyright has also made more
`direct concessions to interoperability. A company that
`
`24 See Ariel Katz, Copyright and Competition Policy in Handbook
`of the Digital Creative Economy (Christian Handke and Ruth Towse,
`eds. 2013).
`
`
`
`
`
`11
`
`copies another’s software interfaces when necessary to
`make products work with the copyright owner’s products
`has been held to constitute fair use, even when the result-
`ing product competes directly with the copyright owner’s.
`See, e.g., Sega Enterps. Ltd. v. Accolade, Inc., 977 F.2d
`1510, 1514 (9th Cir. 1992).
`Under these widely-applicable principles, the legality
`of copying APIs and other interface components has been
`settled for over a quarter century. See, e.g., Computer As-
`socs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 710-15 (2d Cir.
`1992); Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1539,
`1543-1545 (11th Cir. 1996); Lexmark Int’l, Inc. v. Static
`Control Components, Inc., 387 F.3d 522, 542 (6th Cir.
`2004); Assessment Techs. of WI, LLC v. WIREdata, Inc.,
`350 F.3d 640, 644-645 (7th Cir. 2003); Mitel, Inc. v. Iqtel,
`Inc., 124 F.3d 1366, 1374-1376 (10th Cir. 1997); Pamela
`Samuelson & Suzanne Scotchmer, The Law and Econom-
`ics of Reverse Engineering, 111 Yale L.J. 1575, 1621-1626
`(2002). Congress itself weighed in to endorse this settled
`law when it enacted the Digital Millennium Copyright
`Act, making an exception to its rules against circumvent-
`ing anti-piracy protections on software when done “for
`the sole purpose of identifying and analyzing those ele-
`ments of the program that are necessary to achieve in-
`teroperability of an independently created computer pro-
`gram with other programs.” 17 U.S.C. § 1201(f)(1).
`4. Yet the Federal Circuit has changed all this, and in
`the process undermined concepts of interoperability
`hardwired into copyright law. It erased Baker’s limits
`against giving protection to an expressive description
`when necessary to preserve the availability of the modes
`of operation described. It did so by holding that § 102(b)
`served only to codify the “idea/expression dichotomy”:
`the principle that “[c]opyright protection extends only to
`
`
`
`
`
`12
`
`the expression of an idea—not to the underlying idea it-
`self.” Pet. App. 137a. Through that interpretation, the
`Federal Circuit limited § 102(b)’s applicability, relegating
`it to distinguishing among the elements within a particu-
`lar piece of software that could be protected, rather than
`the different types of software could be given copyright
`protection. That locked up the modes of operation embod-
`ied in the implementing code within Oracle’s APIs, not
`because the implementing code itself was expressive, but
`because it bore a descriptive declaratory label.
`Furthermore, while the law until now has limited cop-
`yrightability in software interfaces and APIs because of
`their usefulness in achieving interoperability, the Federal
`Circuit’s interpretation of the merger doctrine refuses to
`give any ground to interoperability even in circumstances
`where there is literally no way to avoid using the API—
`where a workaround is impossible. The principle of mer-
`ger provides that “[w]hen there is essentially only one
`way to express an idea, the idea and its expression are in-
`separable and copyright is no bar to copying that expres-
`sion.” Concrete Machinery Co. v. Classic Lawn Orna-
`ments, Inc., 843 F.2d 600, 606 (1st Cir. 1988). Yet the Fed-
`eral Circuit deemed this principle “irrelevant” to the cop-
`yrightability of Oracle’s APIs, and was in any event not
`satisfied, because Sun could have written the declarations
`in more than one way. App., infra, 142a-143a, 148a, 150a-
`151a. By that rule, if the creator of the API had multiple
`choices in how he could write the API, the merger prob-
`lem disappears even if that results in making it harder, or
`impossible, to connect. That effectively hands to the soft-
`ware developer an absolute power to dictate who is enti-
`tled to connect to his products.
`The Federal Circuit’s determinations regarding fair
`use strike further blows to interoperability, first through
`
`
`
`
`
`13
`
`an over-rigid application of the transformative-use factor.
`The Federal Circuit held that even though Oracle’s APIs
`comprised only a tiny fraction of the 15 million lines of
`code in the Android operating system, and even when
`Google rewrote the implementing code to create an en-
`tirely different platform, that still did not make Google’s
`use transformative. Pet. App. 25a-28a. With the bar set
`that high, virtually no other innovator will be able to make
`transformative use of an API, even when it changes some
`of the code itself.
`The lower court made things still worse with its appli-
`cation of the fair use defense’s market-harm factor. It
`found that factor satisfied because some early cell phones
`used Java, even though neither Oracle nor Sun succeeded
`in developing a phone of their own. Pet. App. 50a. It also
`found market harm based on the potential that Oracle
`might enter the smartphone market in the future. Id. 51a.
`This did far more than simply protect the expressions Or-
`acle had actually created in Java—it put the products Or-
`acle might create, or had tried, and failed, to create, un-
`der a 95-year monopoly. See Sonny Bono Copyright Term
`Extension Act, Pub. L. No. 105-298, 112 Stat. 2827, §
`102(b) (1998). These are devastating blows to the interop-
`erability that copyright is meant to protect—and single-
`handedly withdraws many APIs from the public domain.
`
`C. Without easy access to APIs, startups will be
`harder to develop, and harder to fund, sending
`ripples through the entire economy.
`The collective effect of the Federal Circuit’s rulings
`presents a serious, multi-faceted threat to startups.
`1. With APIs no longer freely available for developers
`to use, many will have to design around them by writing
`code from scratch. That alone will significantly magnify
`
`
`
`
`
`14
`
`the cost of development for new products, because the
`very interoperability that APIs foster virtually guaran-
`tees that achieving that interoperability without them will
`involve writing individual code to connect to a great many
`pieces of other software and hardware. Moreover, when
`APIs are no longer readily available to translate code be-
`tween different platforms, developers will have to write
`several different versions of programs—one for each
`hardware platform or incompatible program language.
`2. Further complicating matters, many APIs cannot
`be designed around. The process is either too cumber-
`some or functionally impossible. This is because often de-
`velopers “must use the provided APIs because the imple-
`mentation details are intentionally hidden” to protect in-
`tellectual property rights in protectable elements of in-
`teracting programs. IEEE Report, supra note 20 at 5.
`But under the Federal Circuit’s new rules, these barriers
`to interconnectivity are irrelevant—APIs will remain
`copyrightable no matter how hard it is to design around
`them. The Federal Circuit’s high bar for transformative
`use adds a further barrier to work-arounds, because it in-
`dicates that a fair-use defense may be inapplicable even if
`changes are made to the API’s description or its imple-
`me
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