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Thin Tech Industry Support for Oracle in the Second Round of Supreme Court Briefing

· February 21, 2020

On February 12, 2020, Oracle filed its brief opposing Google’s appeal in the Supreme Court. A week later, 32 amicus briefs were filed supporting Oracle’s position. Many of the entities supporting Oracle have no connection to the technology industry or any understanding of the interoperability issues at play in this case. This post will summarize the briefs filed by Oracle’s amici, with the exception of the Solicitor General’s brief. That brief, as well as Oracle’s brief, will be the subject of a separate post next week. See here for a discussion of the briefs of Google and its amici. See here for a discussion of the litigation to this point.

I. Technology Industry Briefs

The companies that filed amicus briefs in support of Oracle have benefited in litigation from the rulings of the U.S. Court of Appeals for the Federal Circuit (“CAFC”) in this case. A total of ten computer scientists supported Oracle, while 85 joined briefs supporting Google.

SAS Institute produces a suite of business software. It described its contrasting experiences in U.S. and European courts on the issue of software protection. In particular, it noted that the Court of Justice for the European Union found that software interfaces were not protectable. Thus, the SAS brief confirms the argument in the CCIA/Internet Association amicus brief that the CAFC’s decision is out of step with the prevailing international norms. SAS also questioned how Google and its amici used the term “interoperability.” For SAS, product A is interoperable with product B only if it attaches to product B, not if it competes with product B. This argument overlooks the fact that the firm that creates the interface typically makes products on both sides of the interface. For example, in Sega v. Accolade, Sega manufactured both games and game platforms. Thus, the Accolade games that attached to the Sega platform also competed with Sega games. This is discussed below in greater detail in the context of the “Copyright Thought Leaders” brief.

Synopsis provides software products used to design and test computer chips used in computing devices. Synopsis recently was involved in litigation with a company that copied its command set. In its brief, it argued that “Google’s proposed re-interpretation of copyright law would strip software developers of their ability to protect their unique expressions.”

Mathworks flagship product is MATLAB, a computer program used by engineers and scientists worldwide to perform numeric calculations and visualizations, to solve complex research problems, and to design, create, and test new products. It claimed that “if it is legal to simply copy and reimplement popular software products, in the way Google copied verbatim the Java declaring code, innovation will suffer.”

Dolby Laboratories stressed that copyright has long protected functional works. Further, it claims Google gerrymandered the merger analysis by defining the function as allowing developers to write new software by using Oracle’s copyrighted phraseology.

USTelecom—The Broadband Association represents service providers and suppliers for the telecommunications industry. The brief included a footnote stating that the views expressed in the brief did not reflect the views of all USTelecom members, including Verizon and CenturyLink. The brief did not disclose that Oracle is a member of USTelecom.

USTelecom argued that its members’ networks use software and software interfaces to perform functions that were in the past performed by hardware. Because of the need for interconnection among different technologies, networks, and devices, USTelecom members have no choice but to make their software interfaces available to other firms. But “while telecommunications providers must share access to their software interfaces, they believe they must retain their exclusive property rights in their implementation of these interfaces if they are to ensure network security and resiliency, protect their customers’ privacy, innovate and compete.” 

This brief highlights the definitional complexities at the heart of this case. USTelecom questions the breadth of Google’s definition of “software interface.” It could very well be that the “implementations of these interfaces” that USTelecom seeks to protect are precisely the sort of implementations that Google and its amici agree are protected. Further, it should be noted that the telecommunications industry has a long history of standards established by standard setting organizations, and the industry is highly regulated by the Federal Communications Commission (“FCC”). The FCC has incorporated many of these standards in its regulations. While the written materials describing the standards are covered by copyright, the standards themselves can only be protected by patent, but must be licensed on fair, reasonable, and nondiscriminatory terms. 

Scott McNealy, the former CEO of Sun Microsystems (creator of Java SE), described the creativity that went into creating the Java declarations and their structure. He claimed that Google’s analogy to the labels in a filing cabinet was “an insult to the hard-working developers at Sun who made Java such a success.” He added that Sun “made creative choices so that the code would resonate with programmers and be intuitive to how they think.” Of course, the intuitiveness of the structure of the declarations suggests that it is unprotectable.

Joseph Tucci and Paul Dacier are former executives at EMC. They argued that Google’s merger arguments “would perversely punish software creators whose products succeed the most.” This would eliminate companies’ incentive to invest billions of dollars in software research and development.

Four professors of computer science argued that the design choices and overall structure, sequence, and organizations for the copied declarations amply demonstrate the creativity of its developers. They reject Google’s interoperability argument on the grounds that Android is not completely interoperable with Java. “This is because Google did not copy all of Oracle’s Java APIs, and as a practical matter a Java program needs one or more libraries, packages, or classes using those APIs that do not exist in Android or vice versa.” Thus, “Android is simply a competing software platform that included core features of the highly popular Java APIs to reduce the learning curve and make it more attractive for programmers.” In essence, these professors are arguing that Google’s legal position would have been strengthened had it copied more than it did.

U.S. Startups for Jobs and Inventors for Jobs (“USIJ”) is “a coalition of 21 startup companies and their affiliated executives, inventors and investors that depend on stable and reliable intellectual property protection as an essential foundation for their businesses.” (Many of its members appear to create medical devices.) It generally claimed that adoption of Google’s arguments would risk unintended collateral damage to entrepreneurs, startups and other highly creative companies that rely on copyright protection to justify their investment of time and resources to build new businesses and bring new software products and services to market. 

Five professors at the University of Massachusetts who form an interdisciplinary research team on programmer creativity claimed that their empirical research supported the assertion that the Java APIs were sufficiently creative to receive copyright protection, and were not unprotectable ideas.

II. Law Professor Briefs

Eleven law professors supported Oracle, while 97 supported Google. 

Arthur Miller, currently a professor at New York University Law School, and formerly a Commissioner on the National Commission on New Technological Uses of Copyrighted Works (“CONTU”), argued that CONTU recommended and Congress agreed that software should be treated exactly as every other literary work. Neither functionality nor popularity exempts a creative work from copyright protection or otherwise excuses an infringer’s actions. It should be noted that Professor Miller often served as an expert witness on behalf of plaintiffs in software copyright cases, and also as counsel of record in amicus briefs supporting such plaintiffs (including in Lotus v. Borland). Significantly, he took the opposite position of the nature of software before these engagements:

Congress’ specific limitation of copyright protection for a computer program is consistent with the utilitarian nature of computer operations. Computer programs are not works of fiction, musical compositions, of other types of works having an artistic or entertainment end purpose. The end purpose of a computer program is to achieve a utilitarian result, i.e., the computer’s performance of logical operations in a way that produces a desired practical consequence. One cannot compare, therefore, the underlying processes of a computer program with, say, the underlying plot structure of a novel or a screen play of a movie. This, of course, is the distinction recognized by the Supreme Court long ago in Baker v. Seldin, 101 U.S. 99 (1879)…. The history of Copyright in the United States and the language of the Copyright Act make it clear that Congress has been unwilling to grant monopolies to utilitarian processes under the aegis of copyright. 

Sandra Aistars signed a brief for nine law professors, most of whom are affiliated with the Center for the Protection of Intellectual Property at the George Mason University Antonin Scalia Law School. With respect to the protectability of software interfaces, the brief argued that “adopting Google’s position would amount to a judicially created, software-specific amendment.” Further, it is not fair use to engage in “purposeful copying to avoid business inconvenience.” The brief asserted that “although Google casts its theory as ‘software-specific,’ there is no reason why infringing parties could not regularly use it to justify copying any kind of protectable expression.” Accordingly, “to expand the fair use doctrine in the way Google advocates would set a dangerous precedent not limited to the software industry.” The brief overlooks the Supreme Court’s ability to make clear that its application of the fair use doctrine in this case was limited to software, consistent with the second fair use factor (the nature of the work used). 

Ralph Oman, a professorial lecturer at the George Washington University Law School and former Register of Copyrights, misstates the two questions at issue in this case: “The first concerns the copyrightability of particular computer programs, and the second addresses the application of fair use principles in the same context.” No one is disputing the copyrightability of the Java SE libraries. The question is whether the software interfaces, the declarations in those libraries, receive copyright protection.

However, Oman recognized an “interoperability doctrine” that “permits copying of a work to the limited extent necessary to permit the secondary work to function with the first.” He then cited Lexmark v. Static Control Components, which he described as “permitting limited copying of a computer program installed in Lexmark printer cartridges to enable the defendant to produce printer cartridges that would work with Lexmark printers.” Next, he cited Sega v. Accolade, which he described as “permitting limited copying of a code so that Accolade could reverse engineer functional elements of Sega’s gaming system and adapt its video games to run on the platform.” Oman argued that the interoperability doctrine did not apply here because Android was not completely interoperable with Java. This is a helpful crystallization of the core issue in this case: does the interoperability doctrine apply when software is partially interoperable? 

III. Content Industry Briefs

Many of the content industry briefs in this section, and the public interest organization briefs in the next section, express an animus towards Google unrelated to this case.

The Songwriters Guild along with three songwriters filed a brief attacking Google generally: “By tying together a set of limited exceptions and exclusions within the U.S. Copyright Act and analogous laws in other countries, and then advocating for the radical expansion of those exceptions, Google has amplified its own market power to the great detriment of copyright owners. Thus, where fair use is meant to be a limited defense to infringement founded on the cultural and economic good for both creators and the public, Google has throttled it into a business model….”

The Motion Picture Association (“MPA”) argued that “applying Google’s unprecedented and unduly broad definition of transformation to traditional expressive works like motion pictures would potentially eviscerate the copyright owner’s right to prepare new derivative works (such as sequels, prequels, and spinoffs) for the public to enjoy.” MPA added that “transformative use considerations, as previously articulated by this Court and developed in cases involving more traditional, purely expressive works, are particularly ill-suited for application in a case involving software.” Significantly, MPA conceded that “unlike purely expressive works, software, by definition, has a functional component that makes it inherently different.” With traditional works, a critical aspect of transformative use is that the second use has new purpose or meaning. However, the functional aspects of software “dictate that its re-use will be for the same purpose and same function as the original.” MPA does not, however, propose what test the Court should apply in cases involving software.

The Association of American Publishers (“AAP”) asserted that “if Google’s novel definition of ‘function’ were accepted, it would eviscerate copyright protection for software.” AAP does not explain why this is of any concern of the AAP’s members. AAP then made a nonsensical argument using the example of PowerPoint. AAP argued that under Google’s merger theory, a third-party developer could sell a user an exact copy of PowerPoint because users were familiar with how to use PowerPoint. To be sure, a third-party developer should be able to develop a program with the same commands and functionality as PowerPoint, but the code that implements those commands would have to be completely different.

The Authors Guild and eight other organizations representing photographers, illustrators, and writers requested the Court to clarify the application of fair use standards, particularly transformative use, in cases involving traditional works. Furthermore, the Authors Guild argued that judges are better positioned than juries to make fair use determinations.

The News Media Alliance, which represents 2,000 news media organizations in the United States and internationally, complained about digital platforms such as Google exploiting news content in news aggregation services, search, and social media, in a manner that substitutes for the underlying creation. Further, “tech companies ingest massive quantities of news reporting for the purpose of teaching their computers how to report news so they can compete with the originators of the reports in the dissemination of news content without expending the effort required to investigate, research, check, and prepare the news reports.” In such circumstances, news organizations “are in a position analogous to Oracle in that they have created valuable content that a third party then incorporates in a larger, highly valuable commercial product claiming that this act is ‘transformative,’ even though it has not altered or built upon the original news content.” 

The Copyright Alliance claimed that its members rely on “the equivalence between copyright protection for software and copyright protection provided for other kinds of works.” Additionally, they depend on “a predictable and appropriately circumscribed fair use doctrine that furthers the purposes of copyright law, both by promoting creativity and by protecting the rights of copyright owners to control the reproduction and distribution of their works and the creation of derivative works.” The Copyright Alliance argued that “the Court should not penalize creators for their success by limiting the protection available for works simply because they are ‘familiar.’” The Copyright Alliance asserted that Google was asking the Court to hold that if a competitor uses an original work to enter an allegedly distinct market before the original creator can do so, the competitor’s use is likely transformative under the first fair use factor and likely does not detract from the market for the original work under the fourth fair use factor. The Copyright Alliance stated that “such an adverse-possession like system both fails to protect copyright owners’ investments in their works and disincentivizes copyright owners from creating new or derivative works.”

The Recording Industry Association of America (“RIAA”) and eight other music industry associations asserted that they rely on copyright to protect music and “at the same time respect the limits of copyright when their creative works contain or are inspired by other works.” The RIAA claimed that the lower courts have created “a new strain of fair use based on ‘transformation’ of the original work by the secondary work.” The RIAA criticized Second and Ninth Circuit decisions that have found fair use despite “(i) minimal alteration to the original copyrighted work; (ii) reliance on the original work as a featured attraction; (iii) usage for the same purpose as the original; and (iv) a negative impact on the market or potential market for the original.” It advocated instead for a more holistic approach articulated by the Seventh Circuit in Kienitz v. Sconnie Nation LLC, 766 F.3d 756 (7th Cir. 2014). 

RIAA and the other associations stated that they “represent both sides of the dynamic of creating derivative works.” Specifically, “their members are creators and owners of rights in original works, and also licensors and users of original works in derivative and other secondary works.” Accordingly, they “understand[] and appreciate[e] fully the creative dynamic of deriving new works from existing works.” Additionally, these amici acknowledged “that the underlying works in this action—software—are different from the purely creative works owned or held by amici’s members.”

Twenty-five professors of journalism requested the Court “to consider the critical role played by a vibrant and financially secure press in our democracy, and ensure that its decision in this case maintains robust copyright protections while clarifying the fair use standard that is so crucial to the successful functioning of the American news media.” The fair use standard advocated by Google “should be rejected because it would imperil the copyright owner’s exclusive right to create or license the creation of derivative works by blurring the line between derivative works…and unauthorized fair use.”

IV. Public Interest Briefs

The American Conservative Union Foundation (“ACUF”) “believes that private property, in all its forms, is the bedrock for human flourishing.” Taking “a person’s property – especially intellectual property – without proper compensation is to misappropriate not only the fruits of that person’s labor but also the fruits of that person’s creativity that the Constitution seeks to encourage through the Copyright Clause.” ACUF argued that Google and its amici seek to upend the well-ordered system of private property rights in software through “either an unworkably complex, nearly metaphysical, interpretation of copyrightability of software, or a broad ‘fair use’ exemption, both based on some conjured up ‘special status’ as players in the software industry.” 

ACUF agreed with Google’s amicus Microsoft that “the modern software industry’s development paradigm…accepts and expects that much functional code can be reused by follow-on developers.” However, the ACUF claimed that this expectation is contrary to the “properly-ordered system of property rights under the copyright laws and the Constitution of the United States,” which prohibits appropriation of “others’ proprietary software without negotiated compensation.” ACUF disagreed with the belief of “software giants like Google and Microsoft …that they are the proper arbiters of the metes and bounds of software copyright protection.”

The mission of the Internet Accountability Project “is to call attention to the economic and political harms caused by the activities of America’s dominant information technology companies, including Google.” These harms include privacy invasions, political bias, and exploitative conduct. The brief argued that Google’s conduct was inconsistent with the fair use principles articulated by Justice Story in Folsom v. Marsh in 1841. (The brief did not disclose that Oracle is one of the Internet Accountability Project’s major funders.)

The self-appointed Copyright Thought Leaders attempted to respond to arguments made in the CCIA/IA amicus brief. The “Thought Leaders” criticized the CCIA/IA reliance on the Ninth Circuit’s decision in Sega v. Accolade, noting that copyrightability was not at issue in that case. However, the “Thought Leaders” ignored CCIA/IA’s point with respect to Sega: that the court’s fair use finding concerning reverse engineering was predicated on the holding that “functional requirements for compatibility” that Accolade sought are not protected by copyright pursuant to 17 U.S.C. § 102(b). 

The “Thought Leaders” then attempted to distinguish Sega on its facts, asserting that Accolade did not seek to create a competing product and it did not incorporate Sega code into its final product. To the contrary, Accolade sought compatibility with the Sega Genesis game platform so that it could develop games that competed with games created by Sega and its licensees. Accolade reverse engineered Sega games to uncover the software interfaces necessary for it to achieve this objective. To be sure, the Ninth Circuit noted that “Accolade did not attempt to ‘scoop’ Sega’s release of any particular game or games.” But it did seek “to become a legitimate competitor in the field of Genesis-compatible video games.” The Ninth Circuit further acknowledged that “by facilitating the entry of a new competitor, … Accolade’s disassembly of Sega’s software undoubtedly ‘affected’ the market for Genesis-compatible games in an indirect fashion.” Nonetheless, “an attempt to monopolize the market by making it impossible for others to compete runs counter to the statutory purpose of promoting competitive expression and cannot constitute a strong equitable basis for resisting the invocation of the fair use doctrine.” 

Furthermore, Accolade did in fact include Sega code in its final product. This code was necessary for an Accolade game to unlock the Genesis console. The Sega court permitted this copying, quoting the CONTU Report’s statement that “when specific instructions, even though previously copyrighted, are the only and essential means of accomplishing a given task, their use by another will not amount to infringement.” The Sega court also explicitly found that fair use permitted this copying. To be sure, the copied Sega code was relatively simple. This is because 30 years, the technology in the Genesis platform was so basic that interoperability could be achieved by copying a small amount of code. The Java SE libraries are exponentially more complex than the Genesis platform.

The “Thought Leaders” brief next attacked the CCIA/IA brief’s reliance on the interoperability exception in the DMCA. Once again, the “Thought Leaders” ignored the CCIA/IA point with respect to the DMCA. The interoperability exception, and its legislative history, expressed strong Congressional support for the policy of software interoperability, and the competition and innovation it facilitated. The Senate Report explicitly ratified the Sega decision, which, as noted above, was premised on the understanding that software interfaces are not protectable under section 102(b). 

The “Thought Leaders” tried to distinguish the Copyright Office’s support for interoperability. The Copyright Office report on Software-Enabled Consumer Products states that “the Office believes that, in many cases, copying of appropriately limited amounts of code from one software-enabled product into a competitive one for purposes of compatibility and interoperability should also be found to be a fair use.”

The “Thought Leaders” argued that the free trade agreements cited by the CCIA/IA brief actually would be violated by a ruling permitting “verbatim copying for commercial use in competition with the copyrighted work.” The three-step test referenced by the “Thought Leaders” applies to exceptions a legislature may adopt, such as 17 U.S.C. § 110(5), the subject of the WTO proceeding brought by Ireland. The three-step test thus does not dictate how the Supreme Court must rule in any given case. Moreover, the interpretation of the three-step test advanced by the “Thought Leaders” is so narrow that it would completely undermine the ability of the highly commercial U.S. copyright industries to rely upon fair use. The “Thought Leaders” suggested that a ruling in favor of Google would interfere with the efforts of the U.S. government to deal with IP infringement in China. To the contrary, such a ruling would increase the credibility of the U.S. copyright system by showing that it can balance the needs of different stakeholders to advance the public interest. 

American Legislative Exchange Council (“ALEC”) educates state legislators and operates as a forum for the exchange of ideas for state-based solutions to encourage growth and preserve economic security. ALEC conceded that state legislators have no jurisdiction over copyright matters, but asserted that the legislators’ constituents include programmers and others who benefit from copyright protection. Any weakening of copyright protection for software would have a negative impact on these constituents and state economies. 

The Committee for Justice is “dedicated to promoting the rule of law and preserving the Constitution’s protection of individual liberty and property rights.” Underlying the Copyright Clause is a theory of natural rights under which the right to intellectual property merits the same protection as the right to tangible property. The Committee for Justice argued that the Copyright Act contains no “interoperability” exception, it does not distinguish at all between computer code that is necessary for interoperability and code that is not. If Google is interested in an interoperability exception, it should seek it from Congress.

The mission of Consumers’ Research (“CR”) is “to increase the knowledge and understanding of issues, policies, products, and services of concern to consumers and to promote the freedom to act on that knowledge and understanding.” CR believes that “Java SE’s popularity and dynamic functionality are illegitimate reasons to excuse Google’s unauthorized copying of the Java SE code.” CR stressed that “the original history of the Copyright Clause shows that the Founders’ conception of copyright was not just utilitarian; rather, a copyright was also seen as a core property right that entitled the holder to the fruits of his or her labor.” CR asserted that “Google’s naked assertions that Oracle (and other software companies) may engage in anticompetitive conduct if Google’s copyright infringement is not excused ring hollow in light of Google’s long history of anticompetitive conduct—both in regards to its Android platform and more broadly.” The brief argued that “regulators both in the United States and abroad have repeatedly investigated and sanctioned Google for a long litany of anticompetitive practices that span multiple aspects of its business.” CR stated that “given Google’s well-documented history of anticompetitive acts, this Court should view with skepticism any contention that Google needs to prevail in this case in order to protect consumers or promote competition.”

Hudson Institute is a public policy research foundation that “challenges conventional thinking and helps manage strategic transitions to the future through interdisciplinary studies in defense, international relations, economics, health care, technology, culture, and law.” Excluding the Java declarations from the scope of copyright protection would “withdraw protections from numerous headings and organizational structures of legal treatises, textbooks, the Westlaw Key Number system, and other educational and reference materials.” The popularity of the organization of Java SE, or analogous reference works, does not deprive such creative works of their protection. Further, “opening a gaping hole” in the coverage of copyright protection would make the enforcement of IP rights more uncertain, particularly “in connection with the United States’ on-going difficulties with China on IP theft.” 

The Digital Justice Foundation (“DJF”) is dedicated to preserving individual rights, including IP rights, in digital spaces. DJF claimed that Google and its amici “confuse necessity with convenience.” Furthermore, DJF asserted that Google believes that “all fair uses—no matter how profitable or how commercial—justify a complete absence of any compensation to the rightsholder(s) whatsoever.” This “all-or-nothing approach to fair use destroys markets and concentrates wealth.” DJF proposes that the payment of reasonable royalties be considered in the context of the fourth fair use factor: “where some measure of remuneration is paid, the fourth factor should weigh in favor of fair use because innovators can innovate; creators can get paid (and continue to work in that market); and the public can benefit at large.”

The Center for Medicine in the Public Interest (“CMPI”) is a health policy research institute that studies health information technology. CMPI stated that “Google’s treatment of the fair use doctrine to encompass virtually anything that Google believes is necessary to achieve interoperability will lead to a rapid consolidation of control over health data and will inhibit the ability and motivation of other parties to develop health care innovations.” CMPI argued that fair use is not necessary to achieve interoperability in the health care industry because a standards setting organization has promulgated an open standard.

Former Senators Hatch and DeConcini joined with former Congressman Goodlatte to argue that “both the text and history of the Copyright Act show that Congress accorded computer programs full copyright protection, with no carve-out for some undefined subset of software.” The brief does not address software interfaces or interoperability. 

Google’s reply brief is due on March 13, 2020. Oral argument will occur on March 24, 2020. The Supreme Court likely will issue its decision by the end of June 2020, when the current term ends.

Intellectual Property

The Internet enables the free exchange of ideas and content that, in turn, promote creativity, commerce, and innovation. However, a balanced approach to copyright, trademarks, and patents is critical to this creative and entrepreneurial spirit the Internet has fostered. Consequently, it is our belief that the intellectual property system should encourage innovation, while not impeding new business models and open-source developments.