Seven weeks after the Oracle v. Google trial began, the very first question -- the question of the copyrightability of the structure, sequence and organization (SSO) of the 37 asserted Java APIs -- has been answered. And by determining that Google's use of the SSO of the asserted APIs didn't include anything copyrightable, Judge Alsup has concluded that a partial jury verdict on the copyright part of the case, which identified an infringement of that SSO (based on the jury being instructed to assume copyrightability) but didn't reach a consensus on Google's fair use defense, isn't relevant in any way unless his decision on copyrightability is overturned on appeal.
As a result, Google doesn't have to fear, in connection with Oracle's original lawsuit, an injunction against Android (or substantial damages, but an injunction would have been more important than any amount of damages that was ever claimed or discussed) for at least a couple of years. If the copied API material is held copyrightable on appeal, the question of whether this was fair use will have to be resolved either as a matter of law or by a new jury. Google argues that a new jury would have to evaluate the infringement question again, which might cause further delay. As of now, Google's decision to defend its position at a trial has paid off: it gets away unscathed, at least for another couple of years, with what it's done. Very few companies in Google's place would have taken the risks associated with his before the trial began, and the risks that still remain.
The literal jury was discharged more than a week ago, but the proverbial jury is still out on this one, though Google's immediate IP litigation worries will relate to further injunctions that may result from a long list of other Android-related intellectual property lawsuits facing Google, its newly-acquired subsidiary Motorola, and other Android device makers (particularly Samsung and HTC). The you-win-some-you-lose-some nature of these kinds of disputes is easy to see. Two weeks ago, a U.S. trade agency ordered an import ban against Google's (Motorola's) own Android-based devices and six days later, or just a couple of days after Google formally closed the acquisition of Motorola Mobility, a German court ordered a permanent injunction (in each case relating to devices that come with particular technology that Microsoft owns and Google would have to remove to keep selling).
It would be a human reaction for the 12 jurors, who had to spend weeks of their life in court at an hourly rate below minimum wage, to think to themselves: "why couldn't he decide this beforehand?" If this same decision had come down seven weeks earlier, there wouldn't have been a copyright liability trial or only one of a much narrower scope and simpler nature. Absent a settlement, there would still have been a patent liability trial. In that one, the jury verdict (which Judge Alsup upheld) was that Oracle had not proved Google's infringement of the two patents asserted at that stage (down from the seven asserted in August 2010), but at that stage this was the much less important part of the case.
The cart (copyrightability) was put before the horse (infringement trial) for only one reason: Judge Alsup knew all along that a decision against the copyrightability of the asserted API SSO would face a considerable risk of being overturned. He reiterated in today's order that he wanted to avoid the need for another jury trial in that event. If Judge Alsup, who had already looked into this copyrightability question last year (when he largely denied a Google motion for summary judgment), had been sure of his assessment, he wouldn't have put the copyright infringement question before 12 "good citizens" of the San Francisco Bay Area in the first place. Judge Alsup always showed consideration for the jury. He even told the parties the week before the trial that if they settle, they should please do so before the weekend in order to minimize disruption of the jurors' lives. Against this background, it's fair to say that even he is clearly unsure of the defensibility of his ruling on appeal, even though he certainly didn't make that concession in the order itself.
Given that even the judge recognized that an appeals court -- the next stop will be the Federal Circuit -- might come down on the other side, I think all those who are joyous about this non-final holding should be cautious and reasonable. Caution is required because Google has built key parts of Android on a controversial theory that one or two higher courts will ultimately have to decide, and even though a couple of years of reprieve on this front appears to be a long time in a rapidly-evolving space, the Android ecosystem (of which I'm a part, as one of hundreds of millions of users) certainly has longer-term interests in the platform. And with respect to reasonableness, a ruling that even the district judge was demonstrably unsure of doesn't mean that there was no case in the first place. Judge Alsup's decision is unprecedented in the sense that no comparable amount of software code (400 class definitions including many thousands of methods and other definitions) has previously been held uncopyrightable despite being deemed to satisfy the originality requirement. Both sides of the argument had reasons to voice and defend their respective positions -- that's why this had to go to trial, and that's why it will go on appeal. With the greatest respect for Judge Alsup, he doesn't have the final say. Only if his district court had ordered an injunction against Android, and if the appeals court had denied a Google motion to stay such an injunction, the district court's decision might have created facts (since Google would then have been under pressure to settle). But since the dispute carries on (unless the parties settle), the key issues now go on a coast-to-coast trip from San Francisco to Washington, D.C.
In order to prevail, plaintiffs always need to overcome all defenses. In a separate ruling today, Judge Alsup threw out a couple of equitable defenses and stated that Google cannot claim to be "excused as to any aspect of Android because the whole of the platform was generally applauded by Sun", and in light of the collapsed licensing negotiations the parties had years ago, "[i]t would be most bizarre to somehow find an implied license in this scenario". Largely the same people who are jubilant about Judge Alsup's decision on copyrightability also claimed that a blog post by former Sun CEO Jonathan Schwartz, and his related testimony at the trial, proved that Google couldn't be held liable in any way, a theory that Judge Alsup has now held to be "bizarre".
The reasoning behind Judge Alsup's finding of uncopyrightability
Judge Alsup's order on copyrightability starts with the statement that "{t]his action was the first of the so-called 'smartphone war' cases tried to a jury", which is technically true though a number of cases that were filed after this one (August 2010) had meanwhile been adjudicated in different jurisdictions without involving juries. What's more important is to point out that this case has unique characteristics that make it distinguishable from the other smartphone-related disputes. One such characteristic is that the parties (in Oracle's case, that means Sun, years before it was acquired) were actually negotiating a license deal. For example, Google never went to Apple to ask for a license to its multi-touch interface before deciding that Android should imitate the iPhone. The other unique characteristic is that none of the other smartphone-related intellectual property cases involves copyright claims -- in most of them, patents are the only category of intellectual property rights at issue. (Other exceptions are limited to Apple also asserting some design-related rights against Samsung and, to a lesser extent, against Motorola, and to eBay suing Google over trade secrets.)
Among copyright lawsuits, this is one of a rare species of cases because it was not just about infringement, or about whether an infringement was justified under the fair use rule, but also about whether the copied material is protected by copyright -- in other words, about the scope of copyrightable subject matter.
Recognizing that this decision would be analyzed by many people in the industry due to the high profile of this case, the judge clarifies the intended limited scope of his holding in its final part:
"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 Act."
For this initial reaction, I don't want to go into too much detail, especially since only a limited number of people follow the evolution of copyrightability-related case law. But I have read this in detail, and I previously analyzed the key cases cited by the parties and concluded that copyrightability is not the right level at which to protect competition in this context.
Judge Alsup's reasoning has not changed this position of mine. I think copyrightability is a matter of originality (though of course no one should extend the scope of copyright to a level of abstraction at which someone writing about a method acquires patent-like ownership of the method itself), fair use is a more suitable way to ensure that applications can be written for platforms like Java (which is not at issue in this particular dispute, though some people mistakenly thought that a ruling in favor of copyrightability would prevent developers from creating apps), but even fair use isn't the right way to let competing platforms use vast amounts of original material since antitrust law can always impose FRAND licensing obligations to prevent abuse of a dominant market position by a single company or a cartel.
An analogy would be real estate. Intellectual property is like virtual real estate. Some estates are in locations that are particularly important for traffic (whether or not that was the case when they were acquired is case-specific). I obviously can't collect rent or damages or fire at people who enter the outer part of my property to ring at the door as part of the normal course of business. And if someone turns his car around in my street and temporarily touches the outer part of my property, that is also something I have to accept. Those are "fair use" cases in this regard: I still keep my property, but I have to allow its free-of-charge use to some degree. In an extreme case, the government may want to build a new road, and the route that has been chosen requires me to sell them some (or, ina worst case, all) of my land. They can, under the laws of my country, expropriate me but only under special circumstances and only against reasonable compensation. This is the equivalent of a FRAND obligation under antitrust law. Obviously, all those "fair use" and "antitrust" issues in connection with my property could be avoided by not letting me, or anyone else, own such property. All land could be considered part of a "commons", and that would definitely simplify a lot of things. Even though it wouldn't make sense for me to sue the driver of a car that makes a turn and almost certainly represent a lost cause, my ownership of the land would allow me to try -- with a commons, there's no such problem in the first place. Also, if the government wants to build a road, it can do so on a commons, while I could defend myself against expropriation in the courts, which might delay construction by several years or even force the government to choose a new route and start all over again. The practical advantages of there being no real estate are clear, but only a few die-hard communists would agree that there should be no real estate or that it should be abolished. On balance, it makes more sense to have real estate but to also ensure that ownership comes with actual and potential obligations.
Just to be very clear: Judge Alsup despises communism (he blamed Google in one of his orders last year for a "soviet-style" approach to business negotiations). But his order on this particular issue of API copyrightability happens to come down on the anti-property side of the spectrum. He could have held the asserted API SSO copyrightable and pointed to fair use and antitrust as the right ways to address any legitimate concerns. That is, by the way, what a senior Google copyright counsel, William Paltry, advocated years ago, and it's what Judge Michael Boudin wrote in his concurring opinion on the Lotus v. Borland appellate ruling. While Lotus v. Borland was about a much smaller SSO than the asserted Java APIs, the key thing is that he supported a ruling against copyrightability but felt that this could have unintended consequences and that there should be some kind of privilege to allow the use of some material rather than denying copyrightability in the first place.
What Judge Alsup instead decided to do is, in a nutshell, to say that method definitions are inherently so functional that they can't be copyrightable expression, and to point to interoperability considerations even though the very case he mostly relies on in this context, Sega v. Accolade was a fair use case. The example of a method definition he gives is this:
public static int max (int x, int y)
That line defines a public (i.e., accessible by all other code) and static (i.e., it's there when a program starts to run and doesn't require what is called instantiation of objects) function named "max" (for "maximum") that returns an "int" (integer, i.e., non-fractional numbers) result based on two parameters, x and y, that are also integers. The order makes clear that this is merely an example to illustrate, but the choice of this example is potentially misleading. Programmers know that there are far longer and more expressive names than "max" (those who read my blog won't be surprised to hear that my own coding style is to use rather long and expressive names -- not always, but sometimes) and, especially, more complicated parameter lists and, most importantly, more project-specific types of functions than the rather generic concept of calculating the greater of two values. There can be functions that use parameters of highly original formats and return a result in a highly original format, and the formats of the parameters and results may each be derived from other highly original formats. That's what object-oriented programming allows, and Java is object-oriented. Even C-style non-object-oriented languages allow what I described.
Oracle never claimed a monopoly over a function like "max". The API part of its lawsuit wasn't even just about a collection of basic mathematical functions of this kind but about a much larger and more expressive body of work.
Judge Alsup wrote that "[t]o accept Oracle’s claim would be to allow anyone to copyright one version of code to carry out a system of commands and thereby bar all others from writing their own different versions to carry out all or part of the same commands" and says that "[n]o holding has ever endorsed such a sweeping proposition". In the passage I just quoted, the words "or part" are key: in order to prevent Oracle from potentially claiming a monopoly over a part of this huge set of definitions that would be too small to be reasonably copyrightable in Judge Alsup's opinion, he denied copyrightability for many thousands of definitions with complex interdependencies (and major design choices involved). In other words, he issued a sweeping ruling in order to prevent someone from potentially concluding from a ruling on this particular case of copying that there's room for potentially "sweeping" claims along the lines of monopolizing "max", or a fundamental math library.
The appeals court will have to decide whether a sweeping denial of copyrightability is in line with statutory law and case law, or whether copyrightability has to be allowed since the "sweeping proposition" Judge Alsup is concerned about can always be dealt with in other ways.
Trial courts make decisions, and if those result in injunctions that aren't stayed, they have immediate impact. But there are reasons for which there are appeals courts that take a more strategic perspective on the underlying policy issues. With that more strategic perspective, they may agree with Judge Alsup and Google, in which case Google is cleared, or they may agree with Oracle, in which case the next question to address is fair use. The debate will move to a higher level, and it will be interesting to watch. In a way, the real thing is just about to begin.
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