Reviews recent district court decision on lack of copyrightability of Java API and its ramifications

1. Oracle v. Google: How Can Your Protect APIs?
Dallas Bar Association
Computer Law Section
October 22, 2012
Marc A. Hubbard
Hubbard Law PLLC
mhubbard@hubbardip.com
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2. Agenda
• Java API and Android API and issues involved in Oracle v. Google
• Basic copyright issues
• Rationale of decision by court on issue of copyrightability of Java API
• Legal and business ramifications
• Other modes of protection
• Effect on protecting APIs as well as class names, file formats, protocols and other types of
specifications
• Business ramifications for the computer industry, open source initiatives,and the adoption of
standards.
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3. Lawsuit
• Early 2010: Oracle acquired Sun Microsystem and Sun’s interest in Java
• Late 2010: Oracle sued Google, accusing Google’s Android operating system of —
• Infringing copyright in Java API
• Patent infringement
• Trial in two phases in 2012:
• Copyright — Java API presumed to be copyrightable; jury found infringement and no fair use
• Patent - Jury found no infringement
• Court issued order after trial, on May 31, finding that Java API not copyrightable
• Oracle has filed notice of appeal
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4. What is “Java”?
• It’s an object-oriented programming language based on C and C++ that can be used to write source code for
compiling into a platform independent object code called “bytecode”
• It’s a software “platform” that allows creation of applications that for “write once, run anywhere”
• A “virtual machine” (one for each OS/hardware platform) (“JVM”)
• Interprets (executes) applications written in Java
• Provides the abstraction layer necessary to achieve platform independence for applications
• An extensible application programming interface (API)
• Comprised of multiple libraries, referred to as “packages,” of previously written software (classes and
interfaces) that provide “core” functions that can be called by applications in written Java and running on a Java
virtual machine
• Very helpful to application programmers; some are arguably necessary for many functions because of hardware-
dependency of the implementation
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5. 5
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6. Object oriented programming Java style
• A function that can be called by an application is referred to as a “method”
• Each method must be a member of a “class”
• Every Java program must have one class with one method
• A class may implement more than one method
• Classes may be grouped into “packages”
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7. Java API classes written using Java
Simplified example of package, class, method within API
package java.lang; Declares package “java.lang”
public class Math { Declares class “java.lang.math”
public static int max (int x, int y) { Declares method “java.lang.math.max”
if (x > y) return x ;
Body of method
else return y ;
}
}
Part of body of method in class file of an application calling method
int a = java.lang.Math.max (2, 3); Calling method “max” with
arguments “2” and “3”
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8. Java class file example
public class Bicycle {
Declaration of the class and start of
body of class
// the Bicycle class has
// three fields
public int cadence;
Declaration of data fields and their types
public int gear;
public int speed;
// the Bicycle class has for the class
// one constructor
public Bicycle(int startCadence, int startSpeed,
int startGear) {
gear = startGear;
cadence = startCadence;
speed = startSpeed;
}
// the Bicycle class has
// four methods
public void setCadence(int newValue) {
cadence = newValue;
}
public void setGear(int newValue) {
gear = newValue;
}
public void applyBrake(int decrement) {
speed -= decrement; Declaration of method
}
Body of Method
public void speedUp(int increment) {
speed += increment;
}
}
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9. Java API
• In 1996, at the time Java was introduced, API had 8 packages
• 3 packages were “core,” meaning must have these three to be able to write
applications using Java (java.lang, java.io, java.util)
• Sun and Java Community Process developed standard specifications for Java
classes and methods and added many more packages, classes and methods
• By 2008, API had 166 packages, containing over 600 classes with over 6000
methods
• Copyright in API registered as a single work
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10. What is “Android”?
• A complete software stack for mobile devices that is open source and without
license fees
• Application programs are written in Java
• Allows large number of programmers already familiar with writing in Java to also
write for Android
• Android includes a virtual machine that is used to to interpret Java bytecode (.class
or .jar file) that has been modified (into a “.dex” file) to run on a virtual machine that is
part of OS called the Dalvick virtual machine
• Android Includes a library written in Java that implements 37 of Java’s 166 packages
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11. Android System Architecture
Blue = written in Java
API of core packages
Google’s version of the
Java virtual machine
specially tuned for
mobile environment
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12. Points of similarity between 37 packages
implementing Android API and Java API
• Functions that are available, including inputs and outputs
• Names of packages, classes, methods, and arguments generally identical (for convenience of application
developers)
• Arrangement of the methods into classes, and the arrangement of classes into packages
• Declaration statements for packages, classes and methods
• Formats for declarations, etc., dictated by Java programming language
• “Throw” statements largely similar
• Standard terms dictated by Java programming language (e.g. “public,” “private,” “static”) and the types
of values (e.g. “int”, “boolean,” “char,” and “string”)
• Calls to methods (which much follow prescribed form)
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13. Points of dissimilarity
• Instructions that implement the method — the body of the methods
• NET RESULT
• 3% of the lines in the 37 packages of the Android API are identical to Java API
• 97% of the lines are dissimilar
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14. Business background
• Sun sued Microsoft in 1997 for breach of a licensing agreement because of
incompatible version of Java VM that allowed developers to take advantage of
Windows features.
• Microsoft referred to its version of the VM as “Java”, which seemed to be the primary
point of contention
• Sun wanted Google to pay a big license fee to call its phone a Java phone, and join
Nokia, Motorola, Blackberry (RIM) and others in developing apps that run across all the
platforms.
• Java licensing was a $100 million plus business for Sun
• Sun would also profit by enlarging the Java community and creating more of a barrier to
competition with Microsoft, et al.
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15. Google’s position
• As long as it is not referring using the “Java” trademark, or implying that it’s platform
was “Java” or fully compliant with the Java specifications, it was free to build a VM
that could run programs written in Java unless there was a patent.
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16. Oracle’s purported concern
• “Fragmentation” / Balkanization of platforms
• Imperfect interoperability among platforms means that Java applications will not run on
incompatible platforms.
• Java applications relying on unsupported packages will not run on Android
• Licensing requirements avoid fragmentation problems
• Questions: if fragmentation was really the issue, would Oracle have sued Google if it has
implemented all 166 of the Java API packages?
• There were any number of ways to organize functions of the API into classes, the classes
into packages, and to name the various classes and packages, and there was a signficant
amount of expression involved in the particular API.
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17. Fairness issue
• Is it fair to allow Google to gain the benefit of the Java ecosystem without paying for
the privilege of using it, or at least contributing to it?
• Subject to patent rights, Google or anyone else to could have created a virtual
machine and an API offering the same set of functionality, but with different names
for the packages, classes and methods
• Google obviously wanted the advantages of Java without abide by the restrictions
imposed by Sun or Oracle
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18. Fundamental legal principles guiding decisions as
formulated by district court
• There is no decision directly on point; no court has ever decided the issue of whether a computer API was
protectable by copyright.
• Under 17 U.S.C. §102(b), copyright protection never extends to any idea, procedure, process, system,
method of operation or concepts regardless of the form. (The idea/expression dichotomy)
• Functional elements essential for interoperability are not copyrightable.
• Under the merger doctrine, when there is only one or just a few ways to express something, no one can claim
ownership of such expression by copyright.
• Under the names doctrine, names and short phrases are not copyrightable.
• Court should not yield to temptation to find copyrightability merely to reward an investment in a body of
intellectual property.
• “Sweat of the brow” doctrine rejected in U.S. Supreme Court in Feist Publications, Inc., v. Rural Telephone
Service Co., 499 U.S. 340 (1991).
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19. Origin of idea / expression dichotomy and merger
doctrine
• Baker v. Seldon, 101 U.S. 99 (1879)
• Book on new system of double-entry accounting, which included blank form;
infringer made use of method of bookkeeping, but used different forms.
• And where the art it teaches cannot be used without employing the methods and
diagrams used to illustrate the book, or such as are similar to them, such
methods and diagrams are to be considered as necessary incidents to the art, and
given therewith to the public; not given for the purpose of publication in other
works explanatory of the art, but for the purpose of practical application.
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20. Idea / expression dichotomy as codified in 1976
Copyright Act
However, the Copyright Act does not contain explicit standards for separating ideas from
expression.
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21. Merger doctrine rationale
• Where idea and expression are intertwined and where non-protectable ideas
predominate, copyright protection does not exist because granting protection to the
expressive component necessarily would extend protection to the work’s
uncopyrightable ideas as well.
• The merger doctrine is applied as a prophylactic device to ensure that courts do not
unwittingly grant protection to an idea by granting exclusive rights to the only, or one
of only a few, means of expressing that idea.
• See Gates Rubber Co. v. Bando Chemical Indus., Ltd., 9 F.3d 823 (10th Cir. 1993);
Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004); ;
Murray Hill Publ’ns, Inc. v. Twentieth Century Fox Film Corp., 361 F.3d 312 (6th Cir.
2004); Concrete Machinery Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600,
606-607 (1st Cir. 1988); Apple Computer, Inc. v. Microsoft Corp., 799 F.Supp. 1006
(N.D.Cal. 1992).
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22. Names and short phrases not protectable
Copyright Office regulation 37 C.F.R. 202.1(a)
§ 202.1
Material not subject to copyright.
The following are examples of works not subject to copyright and applications
for registration of such works cannot be entertained:
(a) Words and short phrases such as names, titles, and slogans; familiar
symbols or designs; mere variations of typographic ornamentation, lettering or
coloring; mere listing of ingredients or contents;
Rule followed in 9th Circuit. Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510
(9th Cir. 1992), (a competitor’s use of Sega’s initialization code, consisting of
merely of 20 bytes of initialization code plus the letters S-E-G-A, was of de
minimis length and therefore likely a “word” or “short phrase” that is not
protected)
Most other circuits appear to have accepted this regulation as a fair statement of
the law
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23. Disfavor of “structure, sequence and organization”
theory
• Court acknowledged that non-literal elements of computer software — “structure, sequence and
organization” — can by protected by copyright
• Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222 (3d Cir. 1986) (structure
of program for managing a dental office was copyrightable because there were many different
ways to structure a program to manage a dental laboratory)
• Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir. 1989)(affirming
under abuse of discretion standard finding that SSO of program was protectable expression on
grounds that there was evidence that there was room for creativity in expression of functions.)
• But court noted that SSO type of analysis had become disfavored in 9th circuit and other circuits,
had been heavily criticized, and failed to recognize the danger of conferring monopoly by copyright
over Congress had expressly warned should only be granted by patent. See Sega Enters., Ltd. v.
Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992)
• Whelan and Johnson Controls: “Too narrow a view of the ‘idea’”
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24. Court favors abstraction, filtration and comparison
analysis
• Originally developed in the Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693
(2nd Cir. 1992) as an aid to analyze to distinguish between unprotectable ideas and
protectable expression when comparing software programs for substantially
similarity.
• (1) Dissect program according to its varying levels of generality to provide a
framework
• (2) Examine each level of generality or abstraction in order to filter out those
elements of the program which are unprotectable.
• (3) Compare of the remaining protectable elements with the allegedly infringing
work to determine whether the defendants have misappropriated substantial
elements of the plaintiff’s work.
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25. Filtration of unprotectable elements
• (1) Structure based on “practical considerations”
• (2) Structures dictated by external factors
• “standard techniques”
• Extrinsic considerations such a computer hardware, compatibility requirements with
other programs, demands of industry being serviced, widely accepted programming
practices, hardware standards, software standards, mechanical specifications
• Scènes à faire doctrine
• (3) Structures already found in public domain
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26. uncopyrightable.
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U.S. Copyright Office, Circular 34; see 37 C.F.R. 202.1(a).
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This rule is followed in the Ninth Circuit. Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d
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1510, 1524 n.7 (9th Cir. 1992). This has relevance to Oracle’s claim of copyright ownership
Court concernedand packages.
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over names of methods, classes that SSO is domain of patents
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2. THE DEVELOPMENT OF LAW ON THE COPYRIGHTABILITY
10 OF COMPUTER PROGRAMS AND THEIR STRUCTURE,
SEQUENCE AND ORGANIZATION.
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Turning now to the more difficult question, this trial showcases a distinction between
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For the Northern District of California
copyright protection and patent protection. It is an important distinction, for copyright
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exclusivity lasts 95 years whereas patent exclusivity lasts twenty years. And, the Patent and
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Trademark Office examines applications for anticipation and obviousness before allowance
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whereas the Copyright Office does not. This distinction looms large where, as here, the vast
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majority of the code was not copied and the copyright owner must resort to alleging that the
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accused stole the “structure, sequence and organization” of the work. This phrase — structure,
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sequence and organization — does not appear in the Act or its legislative history. It is a phrase
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that crept into use to describe a residual property right where literal copying was absent.
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A question then arises whether the copyright holder is more appropriately asserting an exclusive
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right to a functional system, process, or method of operation that belongs in the realm of patents,
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not copyrights.
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A. Baker v. Seldon.
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The general question predates computers. In the Supreme Court’s decision in Baker v.
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Seldon, 101 U.S. 99 (1879), the work at issue was a book on a new system of double-entry
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27. Holding 1: Specification for each method is an idea
• “The method specification was the idea. The method implementation is the
expression.”
• Google used its own code to implement method specification, including inputs,
outputs, etc.
• Names of individual methods, classes and packages not protectable
• The declarations, save for the argument names, dictated by rules of Java (external
considerations and interoperability)
• As long as the specific code written to implement a method is different, anyone
is free under the Copyright Act to write his or her own method to carry out exactly the
same function or specification of any and all methods used in the Java API. Ideas,
functions and concepts cannot be “monopolized” by copyright.
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28. Holding 2: overall system of organization of methods
not protectable
• Arrangement of methods into classes, and classes into packages involved creativity
and resembles a taxonomy, but it is nevertheless a command structure or system or
method of operation.
• Because the use of the same taxonomy or command structure was necessary to
achieve interoperability, it has to be a method of operation
• Google replicated what was necessary, but not more than necessary, to achieve
interoperability.
• Oracle’s fears of fragmentation and imperfect interoperability arising from incomplete
implementation of API tends to confirm that it is a method of operation
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29. Implications
• It is the first decision to address squarely issue of protectability of specification of computer API
• Will have to see how the appellate court reacts.
• This is not a holding that all APIs cannot be protected by copyright. However, it is difficult to imagine when an API
would be copyrightable. If copying of elements necessary to achieve interoperability or compatability will always
be permitted, APIs will not likely ever be found to be protectable by copyright.
• If decision is upheld on appeal, the only real legal limits on third parties recreating a software or hardware
“platform” will be:
• Contractual limitations
• Patents
• Secrecy
• Trademarks
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30. Oracle/Sun failed at protecting Java API with patents
• Infringement of 7 patents plead
• Infringement claims with respect to 2 survived until trial and jury found no
infringement
• Patents had little, if anything, to do with the Java API or its implementation
• Not so easy to obtain patents on method of operation of an API or to make a claim
of infringement stick
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31. Feasibility of protecting API with patents
• API software specifications, as such, are abstract
• Patent must claim a process, a machine or article of manufacture
• Must look to patent processes essential to implementation of the API
• However, patent eligibility of computer implemented processes under scrutiny
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32. Patents on software implemented inventions
• Bilski v. Kappos, 130 S.Ct. 3218 (2010)
• Laws of nature, physical phenomena, and abstract ideas are not patentable
• CLS Bank v. Alice Corp. en banc rehearing ordered by the Federal Circuit (involves
computer implemented financial business method):
• “What test should the court adopt to determine whether a computer-implemented
invention is a patent ineligible "abstract idea"; and when, if ever, does the presence
of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
• “In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented
invention, should it matter whether the invention is claimed as a method, system, or
storage medium; and should such claims at times be considered equivalent for § 101
purposes?”
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33. The abstraction chasm
Method of operation, process, system
Invention / Practical application of idea Abstract idea Expression of idea
§101 case law Case law relating to
pushing fuzzy copyrightability of program
boundary one structures pushing fuzzy
direction boundary the other direction
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34. Basic advice to clients developing an API or hardware
or software “platform”
• Keep secret; avoid “open source” or “open standard;” self-help precautions
• Aggressive contractual and licensing provisions to keep API and other interfaces
secret
• Patent all novel processes essential to implementing or supporting API specification
• If business model depends on “open” API or open standard, there may not much
that can be done, other than create circumstances which favor inclusion rather than
exclusion
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35. Basic advice to client wanting to develop
interoperable software and hardware
• Avoid contracts with party who developed platform (watch for implied contracts
associated with using specification)
• Evaluate patents
• Avoid confidentiality restrictions
• Avoid using trademarks
• Reverse engineer using clean room techniques that are consistent with current law
• Otherwise, have at it
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36. Open source and standards
• Generally viewed by the popular media and software programmers as good for open
source; one less obstacle
• However, strong copyright protection is, arguably, essential to
• Enforcing licensing requirements in open source (e.g. contribution of derivatives, limits
on commercial uses, etc)
• Less ability to control development and guard against splintering or forking in standards
• More difficulty in getting standards off the ground
• One less means to force cooperation among all of the players, and to encourage others
to join
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37. Conclusions
• Court’s decision expresses a consistent theme found in cases, which is the concern
over the extrinsic effects of extending copyright protection
• Specifications for an API, file format, etc. generally exist to achieve interoperability. If
reasoning of this decision is followed, APIs are likely not to be protectable under
copyright under rationale that they are methods of operation.
• Similarities in expression occurring within an implementation essential to
implementation of a specification are likely not protectable under the merger or
scènes à faire doctrines.
• Subject to misappropriation of trade secrets, contractual limitations, patents, and
trademark rights, software and hardware platforms appear to be generally free for
the taking
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38. Marc A. Hubbard
Hubbard Law PLLC
740 E. Campbell Road, Suite 550 | Richardson, TX 75081
(214) 396-6001 direct
(214) 208.2601 mobile
(214) 785-6958 fax
www.hubbardip.com
© 2012 Marc A. Hubbard
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