After 10 PM local time on Sunday, Google filed its objections to Judge Alsup's "final charge to the jury (Phase One) and special verdict form". At 3 AM local time on Monday morning, Oracle also filed objections. In my previous blog post I discussed what it means that the instructions say names (which are not copyrightable on a standalone basis) are copyrightable as part of a larger structure. Now that both parties have filed their objections to the "final" jury charge, I believe the so-called "final" version may have to be replaced with a "final-final" one.
In the following I will show the disputed passages of the document and sum up the parties' concerns (and one clarification on which they actually agree). I will do this in the order of the sections of the docuemnt, but I would like to point out that the definition of fair use in section 26 of the jury instructions appears particularly important -- and in need of corrections -- to me.
Instruction 16: definition of copyright infringement
The "final" April 29 version of the jury instructions states the following:
"As stated, the owner of a copyright has the exclusive right to make copies
of all or more than a de minimis part of the copyrighted work, subject only to the right of anyone to make fair use of all or a part of any copyrighted material, all as will be explained below."
While Oracle agreed to this wording at the charging conference on Friday, it finds that the jury charge as a whole now "lacks a clear and affirmative definition of infringement", which was contained in the original draft:
"As stated, the owner of a copyright has the exclusive right to make copies of all of [sic] part of the copyrighted work. If someone else does so without consent from the owner, then there is infringement (except in certain circumstances I will describe below."
Oracle notes that "Google's affirmative defenses of fair use and de minimis defenses are mentioned or explained in 10 of the 18 substantive instructions" but the document still needs "at least one clear definition of infringement, either in this instruction or elsewhere". I think Judge Alsup does strive to be balanced, and there's no reason why he couldn't put back the definition of infringement contained in his first draft.
Instruction 17: copyrightability and ideas/expression dichotomy
"Final" version of April 29:
"The copyright confers ownership over the particular expression of ideas in a work but it never confers ownership over ideas themselves. For example, if a book describes a strategy for playing a card game, the copyright prevents anyone (but the owner) from duplicating the book itself but everyone is still free to read the book and to use the strategy, for the idea set forth in the book, that is the strategy, is not protected by copyright. And, everyone is entitled to write their own book about the same game and the same strategy so long as they do not plagiarize the earlier book. Again, the main point is that the copyright protects the particular expression composed by the author.
Another statutory limitation on the scope of a copyright is that copyright never protects any procedure, process, system, method of operation, concept, principle, or discovery. Possibly such things can be claimed under the patent system or by trade secret laws but they may not be claimed by copyright. For purposes of your deliberations, I instruct that the copyrights in question do cover the structure, sequence and organization of the compilable code."
As I mentioned in my previous post, Google is unhappy about the final sentence and wants it to state the opposite. That is not going to happen -- the judge will decide on copyrightability at a later point. Google simply preserves the record with a view to an appeal.
Oracle would be fine with the final sentence if it stood on its own but objects to the remainder of that instruction. Oracle sees no point in presenting to the jury the ideas/expression issue since this will be decided by the judge himself, so all it can do to the jury is create confusion and "invite[] the jury to deliberate over whether the works at issue are protected by copyright".
Instruction 24: burden of proof for de minimis defense; virtual identity test for API documentation
"Final" version of April 29:
"Oracle must also prove that Google copied all or a protected part of a copyrighted work owned by Oracle and that the amount of copying was not de minimis. So, there are two elements Oracle must prove to carry its burden on infringement, namely copying of a protected part and the part copied was more than de minimis when compared to the work as a whole. These are issues for you to decide.
There are two ways to prove copying. One is by proof of direct copying, as where the copyrighted work itself is used to duplicate or restate the same words and symbols on a fresh page.
The second way is via circumstantial evidence by showing the accused had access to the copyrighted passages in question and that there are substantial similarities or, in certain instances, virtual identity between the copyrighted work and the accused work. The virtual identity test is used when the subject under consideration is a narrow one and we would expect certain terms and phrases to be used. This is in contrast to, for example, a fictional work in which there will be a broad range of creativity, in which case it is necessary only to prove substantial similarity. In this trial, you should use the substantial similarity test for all such comparisons except for those involving the API documentation, in which case you should use the virtual identity test. This is because the documentation for the API packages describe narrow technical functions and it is to be expected that some of the same words and phrases would likely be used.
To determine whether the copyrighted work and the accused work are substantially similar, or where appropriate, virtual identity, you must compare to the works as whole. I will define the works as a whole in a moment.
However, in comparing to the works as a whole, you cannot consider similarities to unprotectable elements of Oracle's works. I have instructed you about the protectable and unprotectable elements of Oracle's work."
The final part about non-consideration of unprotectable elements is much less relevant in light of the clarification that the names are copyrightable as part of a larger structure, even if they are not on their own.
Oracle raises two objections against instruction 24:
Oracle reminds the court of the fact that de minimis is an affirmative defense raised by Google, and Google has the burden of proof. At any rate, with respect to the 37 APIs the judge already said last week that "[n]o reasonable jury could find that the structure, sequence, and organization is [de minimis]", which means that Oracle is entitled to judgment as a matter of law on this particular defense. I guess there's a good chance that the judge will rule on de minimis, at least with respect to the 37 APIs, and modify the jury instructions accordingly. That would be the most efficient way to provide more clarity, and to avoid confusion.
Oracle says that if the court actually intended to have the virtual identity test applied to (quoting the definition provided in jury instruction 18 as it currently stands) "all content--including English-language comments as well as method names and class names, declarations, definitions, parameters, and organization--in the reference document for programmers", this would be "incorrect" because it's too broad a definition.
Instruction 25: comparison of copyrighted work and accused work
"Final" version of April 29:
"To determine whether the copyrighted work and the accused work are substantially similar, or where appropriate, virtual identity, you must compare to the works as whole. I will define the works as a whole in a moment.
However, in comparing to the works as a whole, you cannot consider similarities to unprotectable elements of Oracle's works. I have instructed you about the protectable and unprotectable elements of Oracle's work."
Google notes that "virtually identical" (as opposed to "virtual identity") would be "necessary for proper grammar" in this context.
Furthermore, Google wants "the works as whole" (at the end of the first sentence) to be replaced with "the works as
a whole".
Oracle refers the court to the objections it already stated yesterday, in a separate brief. Oracle's position is that this instruction shouldn't be delivered at all and has the following shortcomings:
"the proper frame of reference for the 'work as a whole' should be Oracle's work, not Android;"
"the instruction does not include the fact that the comparison to the work as a whole should be both qualitative and quantitative, as even a quantitatively small amount of copying can have significance; and"
"the instruction should explicitly state that there is no need to engage in the substantial similarity analysis if there is evidence of direct copying of the kind Google has admitted to here."
All of the issues raised above are supported by applicable case law. This jury instruction is almost as problematic as the one on fair use (the next one).
Instruction 26: fair use
"Final" version of April 29:
"Now, I will explain the law governing Google’s defense based on the statutory right of anyone to make 'fair use' of copyrighted works. The public may use any copyrighted work in a reasonable way under the circumstances without the consent of the copyright owner if it would advance the public interest. Such use of a copyrighted work is called a 'fair use.' The owner of a copyright cannot prevent others from making a fair use of the owner's copyrighted work. For example, fair use may include use for criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.
Google has the burden of proving this defense by a preponderance of the
evidence.
In determining whether the use made of the work was fair, you should consider the following factors:
The purpose and character of the use, including whether such use is of a commercial nature, for nonprofit educational purposes, and whether such work is transformative (meaning whether Google’s use added something new, with a further purpose or different character, altering the copied work with new expression, meaning, or message). Commercial use cuts against fair use while transformative use supports fair use;
The nature of the copyrighted work, including whether the work is creative (which cuts against fair use), functional (which supports fair use), or factual (which also supports fair use);
The amount and substantiality of the portion used in relation to the copyrighted work as a whole. The greater the quantity and quality of the work taken, the less that fair use applies; and
The effect of the use upon the potential market for or value of the copyrighted work. Impairment of the copyrighted work cuts against fair use.
All the factors should be weighed together to decide whether Google's use was fair use or not. It is up to you to decide how much weight to give each factor but you must consider all factors. If you find that Google proved by a preponderance of the evidence that Google made a fair use of Oracle's work, your verdict should be for Google on that question in the Special Verdict Form."
Google preserves the record with respect to its demand for a fifth factor, which would turn the fair use analysis into something that has no boundary at all. After it came up, I said that the court would probably reject it, and that's what happened. Other than that, Google is fine with the fair use instruction -- which comes as little surprise because the way Judge Alsup wrote up that one is exceedingly Google-friendly, not in all respects (for example, it now does reflect four suggestions Oracle made, one for each of the four factors) but on balance.
Oracle has two major issues with this instruction:
The passage on the second factor defines "transformative" too broadly by considering a "further purpose or different character, altering the copied work with new expression, meaning, or message" sufficient. The fair use rule was not intended to let anyone get away with infringement as long as they add some stuff of their own. Oracle notes that prior to Android there were already a billion phones in the world running Java -- Oracle stresses this fact, which shouldn't even have to be talked about, because Google seriously claims that Android's way of putting Java on a smartphone was "transformative". Oracle requests that the definition be changed to "meaning whether Google's use of copyrighted material was for a distinct purpose unrelated to the function and purpose of Oracle's original material". I believe this is the only way to open the floodgates to a "transformative" fair use defense for pretty much every kind of infringement.
Oracle says the term "functional" (in the explanation of the first factor) makes it too easy for Google to mislead the jury. The problem I see here is that program code, including API code, is always functional in a certain way, but still the rule is that it's protected and that using and especially redistributing it without a license is an infringement rather than fair use.
Instruction 28: de minimis
"Final" version of April 29:
"Copying that is considered 'de minimis' is not infringing. Copying is 'de minimis' only if it is so meager and fragmentary that compared to the work as a whole the average audience would not recognize the appropriation. You must consider the qualitative and quantitative significance of the copied portions in relation to the work as a whole. The burden is on Oracle to prove that the copied material was more than de minimis.
The relevant comparison is the copied portion contrasted to the work as a whole, as drawn from the copyrighted work, not contrasted to the accused infringer’s work as a whole. For example, if an infringing excerpt is copied from a book, it is not excused from infringement merely because the infringer includes the excerpt in a much larger work of its own."
In addition to reiterating that Google has to prove its de minimis defense, Oracle wants the instruction "clearly state that the defense of de minimis is only available to excuse Google's use the 11 Java source and object code files copied verbatim, and is not a defense to Google's use of the structure, sequence, and organization of the compilable code of the API packages or for the documentation of the API packages". This appears to be merely a request for a clarification of what the judge also thinks.
Instruction 29: work as a whole
"Final" version of April 29:
"In your deliberations, you will need to make certain comparisons to the 'work as a whole.' It is my job to isolate and identify for you the 'work as a whole.' You must take my identification as controlling if and when this comes up in your deliberations. This issue arises when (1) comparing Oracle’s work and Android's work for similarity under both substantial similarity and virtual identity standards, (2) deciding whether Google copied only a de minimis amount of Oracle's work, and (3) evaluating the third factor of fair use: the amount and substantiality of the portion used in relation to the copyrighted work as a whole.
Although you have seen that the copyright registrations cover a large volume of work, the entire registered work is not the work as a whole for these purposes. This may seem odd to you, so let me give an example. An entire magazine issue may be copyrighted but a specific article advertisement or photograph may be the relevant work as a whole, depending on what was allegedly copied.
For purposes of this case, I have determined that the 'work as a whole' means the following: For purposes of Question No. 1 in the Special Verdict Form, the 'work as a whole' constitutes all of the compilable code associated with all of the 166 API packages (not just the 37) in the registered work. This excludes the virtual machine. Similarly, for the purposes of Question No. 2 in the Special Verdict Form, the 'work as a whole' means the contents (including name, declaration and English-language comments) of the documentation for all of the 166 API packages (not just the 37) in the registered work. For purposes of Question No. 3, the 'work as a whole' is the compilable code for the individual file except for the last two files listed in Question No. 3, in which case the 'work as a whole' is the compilable code and all the English-language comments in the same file."
Oracle seeks to avoid a comparison of "the structure sequence and organization of the 37 packages with all of the compilable code in the 166 packages". Instead, the structure, sequence and organization of one work should be compared to the structure, sequence and organization of another.
Furthermore, Oracle asks the court to deemphasize the word "all" in front of "of the 166 API packages (not just the 37)". Oracle attributes the italicization of that word to the evolution of this document: in the original draft, the italicized word "all" was meant to contrast particularly strongly with the equally-italicized passage "that individual API package", but Oracle no longer asserts individual API packages, so there's no more need to emphasize the word "all".
Instruction 30: sublicense, public dedication
"Final" version of April 29:
"Unless you find fair use, de minimis, or non-infringement in Google's favor, Google had no right to copy any elements of the Java platform protected by copyright unless it had a written license to do so from Sun or Oracle or had a written sub-license to do so from a third party who had a license from Sun or Oracle conferring the right to grant such sub-licenses. The burden would be on Google to prove it had any such express license or sublicense rights. But in this trial it makes no such contention. Put differently, if Google claims a license from a third party, Google has the burden to prove that the third party itself had the proper right and authority from Sun or Oracle as to any of the copyrights owned by Sun or Oracle and used by Google, for Google could acquire from the third party no greater right than the third party had in the first place. Similarly, if Google contends that Oracle or Sun had dedicated elements protected by copyright to the public domain for free and open use, the burden would be on Google to prove such a public dedication but the parties agree that there is no such issue for you to decide. Again, Google makes no such contention in this trial and this statement of the law regarding licenses is simply to put some of the evidence you heard in context."
Google objects to this instruction in its entirety, as it previously did. And it says that "Sun dedicated the Java language, including the APIs, to the public", so there is now a jury issue (and not just an issue for the court to decide) in connection with the concept of "public dedication".
Special Verdict Form Question 3: infringement by direct copying of source code, comments or decompiled code
This question is whether "Oracle [has] proven that Google’s conceded use of the following was infringing, the only issue being whether such use was de minimis", then listing the rangeCheck method, eight decompiled files, and the English-language comments in two other files.
Oracle reiterates that the burden of proof for de minimis is on Google. The parties agree, however, that it would be useful to make perfectly clear to the jury what a Yes or No answer means by placing parentheticals below the answers ("infringing", "not infringing").
Special Verdict Form Question 4: issues relevant to Google's equitable defenses
Question 4 consists of two questions that the jury is asked to answer only if it previously identifies an infringement of the compilable code for the 37 APIs:
"A. Has Google proven that Sun and/or Oracle engaged in conduct Sun and/or Oracle knew or should have known would reasonably lead Google to believe that it would not need a license to use the structure, sequence, and organization of the copyrighted compilable code? [Yes/No]
B. If so, has Google proven that it in fact reasonably relied on such conduct by Sun and/or Oracle in deciding to use the structure, sequence, and organization of the copyrighted compilable code without obtaining a license? [Yes/No]
Your answer will be used by the judge with issues he must decide. These interrogatories do not bear on the issues you must decide on Questions 1 to 3."
Google wants to avoid a possible misunderstanding by the jury regarding what its answers to other questions will be used for. Therefore, it asks to specifically reference "Questions 4A and 4B" in a couple of contexts.
Oracle already objected in a separate pleading yesterday to these questions. Today Oracle again expressed concer that "including these interrogatories will improperly focus the jury on Google's equitable defenses, which are for the Court to decide". Also, Oracle says these equitable defenses have additional elements that the proposed questions "do not capture".
Judge Alsup is an early riser. There could be a new jury charge and verdict form very soon. There are serious issues involved, and there are pretty clear solutions. I'll report as soon as I see a revised jury charge and verdict form.
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