Case Summary: Oracle loses a significant battle in seeking copyright
protection for Java software against Google and Android-based mobile phones.
Key Takeaway: The 'structure, sequence, and organization' of Java
application programming interface packages does not make Java eligible for
By Tony Dutra
Summary: Oracle loses a significant battle in seeking copyright
protection for Java software against Google and Android-based mobile
Takeaway: The 'structure, sequence, and organization' of Java
application programming interface packages does not make Java eligible for
Oracle's attempt to share in Android mobile phone revenues because of the
phones' underlying software code was dealt its most severe blow yet May 31, as
the U.S. District Court for the Northern District of California ruled that Java
application programming interfaces are not eligible for copyright protection
(Oracle America Inc. v. Google Inc.,
N.D. Cal., No. 3:10-cv-03561-WHA, 5/31/12).
While the focus in the case has been on the potential for huge royalty
payments if Oracle were to succeed, Judge William Alsup's order could have
implications for intellectual property in software products generally.
Alsup held that Oracle's Java APIs constitute “a utilitarian and functional
set of symbols, each to carry out a pre-assigned function.” Their “structure,
sequence, and organization”--the basis for Oracle's copyright argument as to
code not literally copied by Google--thus is equivalent to “a system or method
of operation under Section 102(b) of the Copyright Act and, therefore, cannot be
copyrighted,” the court said.
While the court limited its judgment to the facts of the case, most API
packages offered for license follow the same basic rules as to structure,
sequence, and organization.
The holding relates to companies like Google Inc. that seek to replicate the
APIs. Those who want to use the functions in Java API packages are still subject
to licensing requirements, the court said.
Sun Microsystems Inc. created the Java “write once, run anywhere” (WORA)
platform in 1996. The platform includes multiple components, including both
human-readable software code and computer-readable, predefined functions.
The application programming interfaces (APIs) at question in this case are
intended to implement the WORA concept. Any programmer can create other software
on any device using a variety of operating systems and use the functions
available in the APIs. The programmer does not have to know how the API code is
written, but the programmer must use specific naming conventions and “header”
information to take advantage of the API functions.
Google Inc. negotiated for a license from Sun to use the entire Java platform
as Google started to build its Android operating system for mobile phones, but
the parties were unable to reach a deal.
Google consequently developed and implemented its own platform with its own
code, but also sought to replicate support for over 6,000 functions available in
37 specific Java API “packages.” That is, Google wanted Android application
programmers to take advantage of the Java WORA concept. Because Google thus had
to use the Java naming conventions and headers, 3 percent of its code had to
match the code in the Java APIs that Sun was licensing.
Oracle Corp. acquired Sun in 2010 and renamed the subsidiary Oracle America
Inc. Oracle then sued Google in the Northern California district court.
Oracle claimed both copyright and patent infringement by the Android
operating system of Java software and functionality.
Alsup split up the case so that a jury would rule on copyright issues first,
then patent issues, and finally damages.
In the first part of the case, Alsup told the jury to assume the APIs were
copyrighted. Google agreed that it uses the same names and declarations but
contended that its line-by-line implementations are different, with the
exception of nine lines of code on a “rangeCheck” function, a contention not
disputed by Oracle.
The jury on May 7 returned a split verdict, finding that Google infringed by
literally copying the rangeCheck code, but it did not answer the key question of
whether there was a fair use (89 PTD, 5/9/12).
Then on May 23 the jury determined that Oracle America Inc. failed to prove
Google's infringement of patents (RE38,104 and 6,061,520) on the Java operating
system by Android-based cell phones(100 PTD, 5/24/12).
In his May 31 decision, Alsup now addressed the underlying question of the
extent to which the Java APIs could be copyrighted so as to capture infringement
even as to code that Google did not literally copy.
Oracle conceded that Google was free to use the Java programming language and
implement the 6,000 individual functions.
“The copyright issue, rather,” the court said, “is whether Google was and
remains free to replicate the names, organization of those names, and
functionality of 37 out of 166 packages in the Java API, which has sometimes
been referred to in this litigation as the 'structure, sequence and
organization' of the 37 packages.”
The court therefore focused on the 3 percent of code that replicated the
naming and header requirements for Java compatibility in the context of the
structure, sequence, and organization (SSO) of the 37 API packages.
The court first noted that names, titles, and short phrases are not
copyrightable, according to the Copyright Office's rule specified in 37 C.F.R.
§202.1(a) and Ninth Circuit law, in Sega Enterprises Ltd. v. Accolade
Inc., 977 F.2d 1510, 1524 n.7, 24 USPQ2d 1561 (9th Cir. 1992).
The court then addressed the idea of SSO for owners of copyrights
This phrase--structure, sequence and
organization--does not appear in the Act or its legislative history. It is a
phrase that crept into use to describe a residual property right where literal
copying was absent. A question then arises whether the copyright holder is more
appropriately asserting an exclusive right to a functional system, process, or
method of operation that belongs in the realm of patents, not
The court quoted extensively from the 1879 U.S. Supreme Court decision
distinguishing “methods” from creative works and establishing the “merger
doctrine” in Baker v. Seldon, 101 U.S. 99 (1879). “It is true that Baker
is aged but it is not passé,” the court said.
Congress codified “a Baker-like limitation on the scope of copyright
protection” in 1976, according to the court, by excluding “method of operation”
from copyrightability in 35 U.S.C. §102(b). And the National Commission on New
Technological Uses of Copyrighted Works (CONTU) reconciled the copyrightability
of a “computer program” with the preclusion of protection for methods of
operation under Section 102(b).
The court further quoted the CONTU commission's application of the merger
doctrine to computer program copyrightability: “In the computer context this
means that when specific instructions, even though previously copyrighted, are
the only and essential means of accomplishing a given task, their later use by
another will not amount to an infringement.”
Next, the court reviewed the case law on SSO copyrightablity.
It essentially discounted the holding in the case where the phrase
originated, Whelan Associates Inc. v. Jaslow Dental Laboratory Inc., 797
F.2d 1222, 230 USPQ 481 (3d Cir. 1986).
Whelan has been criticized by many, the court said, including the
Ninth Circuit, which has followed an approach more along the lines of the Second
Circuit's “abstract-filtration-comparison” test in Computer Associates
International Inc. v. Altai, 982 F.2d 693, 23 USPQ2d 1241 (2d Cir. 1992):
the copyrighted program into its structural components.
out structures that are not copyrightable because they are “dictated by
efficiency,” “dictated by external factors” such as compatibility or standard
practices, or “already found in the public domain.”
the code of the programs that remain after the filtration process.
The court referenced the Supreme Court's holding in Feist Publications
Inc. v. Rural Telephone Services Co., 499 U.S. 340, 18 USPQ2d 1275 (U.S.
1991), primarily to note that “copyright in a factual compilation is thin,” with
competing works limited only by a prohibition against using “the same selection
and arrangement” of the compiled facts.
Using the precedents, the court arrived at a series of conclusions:
more than 6,000 functions addressable as subroutines in the API packages are
methods of operation, and “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.”
is only one way to carry out the individual methods under Java rules. The header
information in the 3 percent of Android's code that replicates Java headers thus
is not a copyright violation because “the merger doctrine bars anyone from
claiming exclusive copyright ownership of that expression.”
use of identical function names is not a violation because “names and short
phrases cannot be copyrighted.”
organization of the 6,000 functions into 600 classes and then 37 packages is a
copyrightable classification scheme, but in the context of Google's use of the
same classes and packages, “it is also a command structure for a system
or method of operation of the application programming interface.”
The court made clear that SSO copyrightability depends on the facts and
circumstances of each case. It suggested that its judgment was thus limited to
these specific facts:
This order does not hold that Java API
packages are free for all to use without license. It does not hold that the
structure, sequence and organization of all computer programs may be stolen.
Rather, it holds on the specific facts of this case, the particular elements
replicated by Google were free for all to use under the Copyright
The court consequently dismissed Oracle's claim based on the SSO
The current status of the case is that Google has escaped infringement
liability on all but the nine lines of code making up the rangeCheck
In the current opinion, Alsup referred to that infringement as “innocuous and
overblown by Oracle” and “an innocent and inconsequential instance of copying in
the context of a massive number of lines of code.”
Alsup chose not to proceed to the third phase of the jury trial. “The third
phase would have dealt with damages but was obviated by stipulation and
verdicts,” he said.
Google is, however, still liable for statutory damages, but Oracle does not
contest that, once Google identified the innocent copying, it deleted the
offending nine lines of code from Android.
The court did not comment on how it would resolve the statutory damages
Oracle is represented by David Boies of Boies, Schiller, Flexner, Armonk,
N.Y. Google is represented by Donald F. Zimmer Jr. of King & Spalding, San
Opinion at http://pub.bna.com/ptcj/103561May31.pdf