Judge Alsup Rules that Java APIs Are Not Copyrightable

In the well-publicized Oracle v. Google case, Judge Alsup has ruled that Java APIs are not copyrightable, at least to the extent of Google's limited use of the APIs in Android.  Judge Alsup relied on the Lotus v. Borland case I worked on many years ago, and other similar cases, to reject Oracle's copyright claim.  Since a jury ruled that Google didn't infringe the two Oracle patents being tried, that leaves Oracle with a minimal damages claim for a few lines of code (not related to the API claim).  Techdirt's writeup of this decision is here; EFF's post is here; Eric Goldman's post (by Tyler Ochoa) is here.

Some key points of Judge Alsup's ruling are as follows:

In view of the foregoing, this order concludes that our immediate case is controlled by these principles of copyright law:
• Under the merger doctrine, when there is only one (or only a few) ways to express something, then no one can claim ownership of such expression by copyright.
• Under the names doctrine, names and short phrases are not copyrightable.
• Under Section 102(b), copyright protection never extends to any idea, procedure, process, system, method of operation or concept regardless of its form. Functional elements essential for interoperability are not copyrightable.
• Under Feist, we should not yield to the temptation to find copyrightability merely to reward an investment made in a body of intellectual property.

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. Contrary to Oracle, copyright law does not confer ownership over any and all ways to implement a function or specification, no matter how creative the copyrighted implementation or specification may be.  The Act confers ownership only over the specific way in which the author wrote out his version.  Others are free to write their own implementation to accomplish the identical function, for, importantly, ideas, concepts and functions cannot be monopolized by copyright.

Much of Oracle’s evidence at trial went to show that the design of methods in an API was a creative endeavor. Of course, that is true. Inventing a new method to deliver a new output can be creative, even inventive, including the choices of inputs needed and outputs returned.  The same is true for classes. But such inventions — at the concept and functionality level — are protectable only under the Patent Act. The Patent and Trademark Office examines such inventions for validity and if the patent is allowed, it lasts for twenty years. Based on a single implementation, Oracle would bypass this entire patent scheme and claim ownership over any and all ways to carry out methods for 95 years — without any vetting by the Copyright Office of the type required for patents. This order holds that, under the Copyright Act, no matter how creative or imaginative a Java method specification may be, the entire world is entitled to use the same method specification (inputs, outputs, parameters) so long as the line-by-line implementations are different. To repeat the Second Circuit’s phrasing, “there might be a myriad of ways in which a programmer may . . . express the idea embodied in a given subroutine.” Computer Associates, 982 F.2d at 708. The method specification is the idea. The method implementation is the expression. No one may monopolize the idea.

To carry out any given function, the method specification as set forth in the declaration must be identical under the Java rules (save only for the choices of argument names). Any other declaration would carry out some other function. The declaration requires precision.  Significantly, when there is only one way to write something, the merger doctrine bars anyone from claiming exclusive copyright ownership of that expression. Therefore, there can be no copyright violation in using the identical declarations. Nor can there be any copyright violation due to the name given to the method (or to the arguments), for under the law, names and short phrases cannot be copyrighted.

In sum, Google and the public were and remain free to write their own implementations to carry out exactly the same functions of all methods in question, using exactly the same method specifications and names. Therefore, at the method level — the level where the heavy lifting is done — Google has violated no copyright, it being undisputed that Google’s implementations are different.

Interoperability sheds further light on the character of the command structure as a system or method of operation. Surely, millions of lines of code had been written in Java before Android arrived. These programs necessarily used the java.package.Class.method() command format. These programs called on all or some of the specific 37 packages at issue and necessarily used the command structure of names at issue. Such code was owned by the developers themselves, not by Oracle. In order for at least some of this code to run on Android, Google was required to provide the same java.package.Class.method() command system using the same names with the same “taxonomy” and with the same functional specifications. Google replicated what was necessary to achieve a degree of interoperability — but no more, taking care, as said before, to provide its own implementations.

In closing, it is important to step back and take in the breadth of Oracle’s claim. Of the 166 Java packages, 129 were not violated in any way. Of the 37 accused, 97 percent of the Android lines were new from Google and the remaining three percent were freely replicable under the merger and names doctrines. Oracle must resort, therefore, to claiming that it owns, by copyright, the exclusive right to any and all possible implementations of the taxonomy-like command structure for the 166 packages and/or any subpart thereof — even though it copyrighted only one implementation. To 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.  No holding has ever endorsed such a sweeping proposition.

"The Pirate Bay Cries Foul Over Pirate Bay Copycats"

 IP and humor story of the day: "The Pirate Bay advises fans to use the authentic, original ThePirateBay and not some crummy rip-off."

Darth Seder!

Shame that Passover was a little while ago.

MAD Magazine Helpfully Explains Why "The Avengers" Made $200 Million Opening Weekend

MAD Magazine helpfully explains why "The Avengers" made $200 million in its opening weekend.

Phase One Verdict in Oracle v. Google, and It's a Mess

The Oracle v. Google case is being tried in San Francisco federal court.  The jury came back this morning with a partial verdict on Oracle's copyright claim (phase one).  Oracle claimed that Google infringed the APIs (Application Program Interfaces) in the Java language.  The jury decided that Google infringed the "overall structure, sequence and organization" of the APIs, but did not reach a verdict of whether this is fair use or not.  It is highly debatable whether API's are copyrightable at all -- the Judge will have to decide that -- and the jury's failure to decide fair use creates a real mess.  Articles by Techdirt and Ars Technica describe the mess.  Update: Here's EFF's post on the verdict.

Interesting Article About Mayo v. Prometheus

Last month I blogged about the Supreme Court decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  The case involved the patentability of medical diagnostic techniques, and has potentially broader implications for other types of technologies.

My colleague Bernard Chao wrote an interesting article about the case, "Moderating Mayo," which can be downloaded on SSRN.  I agree with Bernard's view that the "point of novelty" can be a useful tool in evaluating patents.

Viewing Patent Drawings Without Context

Mike Masnick and io9 have reported about a website that collects a bunch of patent illustrations without the context of their surrounding textual explanation.  The website is called "Context-Free Patent Art."  Here's an example:

 

Twitter's Anti-Troll Innovator’s Patent Agreement

Speaking of patent trolls, today Twitter announced that it will be handling invention assignments differently than most other companies.  Usually, companies require their employees to assign inventions to the company without any restrictions or limits on what the company can do with any resulting patent.  Twitter has agreed to limit its use of any patents to defensive purposes, to try to make the patents useless for any troll that later might acquire the patent and to try to improve the patent system.  We'll see if this becomes a trend.

"Don't negotiate with terrorists"

Drew Curtis, the head of one of my favorite humor web sites, www.fark.com, gave an interesting TED talk on his experience being sued by a patent troll.  His advice won't work for everyone, but it's interesting.

10 Amazing Practical Jokes

Want to lose your friends?  Try some of these.

Lawsuit of the Day

The Bank of America has decided to sue itself.  Fortunately, there is legal precedent for such a suit.

Viacom v. YouTube: Both Sides Declare Victory

Yesterday the Second Circuit Court of Appeals released its opinion in Viacom v. YouTube.  The Court affirmed much of the reasoning of the district court's opinion granting summary judgment in favor of YouTube, but remanded the case for certain fact-finding specific to that case.  (I previously summarized the case here and here, and discussed a related decision from the Ninth Circuit, UMG v. Veoh (Shelter Capital Partners), here.  Briefly, Viacom v. YouTube involves the liability of user-generated content (UGC) websites such as YouTube when their users post allegedly infringing content, and specifically how UGC sites can defend such liability using the "safe harbor" of the DMCA, 17 U.S.C. §512.)

Judging from the public press so far, both sides have declared victory.  According to TechCrunch, Viacom is "pleased with the decision" and its "message" that "intentionally ignoring theft is not protected by the law."  However, the same article quotes YouTube as saying that the "Second Circuit has upheld the long-standing interpretation of the DMCA and rejected Viacom's reading of the law."  Similarly, the L.A. Times reports that "Both sides found something to cheer about in the decision"; the Washington Post is similar.  The Hollywood Reporter's headline begins "Court Sides with Viacom," but then notes that "the 2nd Circuit mostly agrees with YouTube’s interpretation of the statute."  The San Francisco Chronicle somewhat bizarrely stated "YouTube loses" (a newspaper that close to Silicon Valley should know better).

Commentators such as Eric Goldman view the decision as creating difficulties for UGC websites like YouTube, but EFF, Public Knowledge, CDT and NetCoalition all seem to view the ruling as favorable to UGC sites.  Mike Masnick initially viewed the decision as mostly favorable, but tempered his views after reading Prof. Goldman's post.

I agree that the case is mostly favorable to UGC sites, particularly ones that are careful about the handling of user-generated content at the startup stage.  The key issues are as follows.

Knowledge Requirements.  The Second Circuit described the "first and most important question on appeal" as "whether the DMCA safe harbor at issue requires “actual knowledge” or “aware[ness]” of facts or circumstances indicating “specific and identifiable infringements.”  Viacom and its content industry supporters argued that general knowledge or awareness on the web site was enough to defeat the safe harbor; YouTube and its technology industry supporters argued that knowledge of specific infringing activity was required.

On this issue, the Court agreed with YouTube, and it's an important issue.  I was always troubled by Viacom's "general knowledge" theory for several reasons.  Most web sites are "generally" aware of some infringements on their web site, particularly for sites that host a great deal of user-generated material.  Viacom's theory would have unbounded implications.  Would a UGC site lose its safe harbor just upon a showing that at one time it knew of some infringements?  Would a single stray email impose liability for all works, by all copyright owners, for all time?  Could a web site never qualify for the safe harbor if it ever once had some "general knowledge"?  As I pointed out in my amicus brief for the CEA, could a content owner (or a competitor) forever disqualify a UGC site from the safe harbor simply by sending it a brief letter "notifying" the site of "general knowledge of infringements"? The problem raised by the "general knowledge" theory, and by such questions, is that there is no correlation or causal connection between the "general knowledge" and disqualification for the safe harbor for the particular works involved in a lawsuit.

The Second Circuit got this right.  It consistently focused on specific knowledge requirements, and in particular used phrases such as "specific infringing activity" or "specific infringements" over 40 times (even excluding the section analyzing the "control and benefit" issue discussed below).  The Court said it was "persuaded that the basic operation of § 512(c) requires knowledge or awareness of specific infringing activity."  The opinion then did one of the best jobs I've seen of rebutting Viacom's argument that the alternate showing of "red flag" knowledge could be satisfied by "general" red flag knowledge, and pointed out that "actual knowledge" and "red flag knowledge" both require knowledge of specific infringements:

The difference between actual and red flag knowledge is thus not between specific and generalized knowledge, but instead between a subjective and an objective standard. In other words, the actual knowledge provision turns on whether the provider actually or “subjectively” knew of specific infringement, while the red flag provision turns on whether the provider was subjectively aware of facts that would have made the specific infringement “objectively” obvious to a reasonable person.  . . . Both provisions do independent work, and both apply only to specific instances of infringement.

Later, the court discussed "willful blindness" as an alternative to actual knowledge.   (The opinion described this as meaning that a "person is “willfully blind” or engages in “conscious avoidance” amounting to knowledge where the person “‘was aware of a high probability of the fact in dispute and consciously avoided confirming that fact.’”)  The court first rejected the concept that "willful blindness" imposes any duty of a UGC site to affirmatively monitor its site -- that was one of the main arguments by Viacom and its supporters.  While the court did allow this doctrine to be used, it again limited it to specific infringing activity: "the willful blindness doctrine may be applied, in appropriate circumstances, to demonstrate knowledge or awareness of specific instances of infringement under the DMCA."

The result of the above discussion was to send the case back to the trial court, but not for judgment in Viacom's favor, or even necessarily for a trial.  Rather, the court merely told the trial court to examine the record more carefully to see if YouTube had specific knowledge of "particular clips or groups of clips," and then reconsider summary judgment.  This means that, at worse, YouTube might have some liability only for some specific clips, not all of them as the plaintiffs contended.  And for UGC sites in general, if they avoid the behavior shown in some of YouTube's early emails, they can fully comply with the "actual knowledge" requirement of the statute.

"By Reason of Storage":  As had UMG in the Veoh case, Viacom argued that YouTube didn't qualify for the safe harbor because the videos weren't stored at the direction of the users.  Like the Ninth Circuit, the Second Circuit rejected this argument for all but a small quantity of YouTube's videos.  For example, Viacom argued the safe harbor only applied when users stored videos, but not when they were played back -- in other words, that the Internet is a black hole that can only swallow information.  The court rejected this argument, as well as Viacom's arguments that YouTube's conversion of user videos for later viewing and its display of "related videos" were outside the statute.

YouTube did one additional thing: it selected certain videos for syndication for Verizon mobile devices.  The court held that this manual selection wasn't at the "direction of a user" and might not qualify for the safe harbor.  However, the court limited any exposure (again) only to those particular videos, and told the trial court to see if any of those videos were actually the subject of Viacom's claims.

"Right and Ability to Control":  As Eric Goldman and Mike Masnick point out, the primary unfortunate part of the opinion deals with the issue of whether the UGC site has the "right and ability to control" infringing activity, where the site receives a financial benefit directly attributable to the infringing activity.  YouTube argued that this factor also is limited to knowledge of specific infringing items; the trial court had agreed, as had the Ninth Circuit in the Veoh case.   Viacom and its supporters argued that "control" means the mere ability to take down infringing works.

The Second Circuit rejected both of these views, but didn't give much guidance.  It agreed that "something more" is required than the mere ability to remove or block access to the UGC materials.  Rather than say what that "something more" actually is, it gave two examples where the service provider exerts "substantial influence" on the activities of users.  In one example, the service provider gave its users detailed instructions and requirements of what to do and not to do.  The other example involved inducing infringement under the Grokster case.

While we don't know what "substantial influence" means, it would appear to mean a lot more than merely letting users upload content, as sites such as YouTube, Veoh, Facebook and others have done.  As long as the web site doesn't get substantially involved in telling users what to do, it probably will pass this test.  An analogous and possibly helpful case is the Roommates.com decision from a few years ago.  In that case, Roommates.com lost its immunity under Section 230 of the CDA because it forced its subscribers to answer certain questions that allegedly were discriminatory (which the court ironically found later were not discriminatory, but that's another issue).  And the Grokster standard arguably requires the plaintiff to show: (1) that the defendant acted with the specific objective of promoting the use of its product to infringe; (2) that the defendant furthered that objective by affirmative measures taken to foster infringement; and (3) that the infringement at issue actually resulted from the defendant’s inducing conduct.  Most UGC sites don't require or tell their users to upload infringing content, so they hopefully will be safe under that standard.

So while the Second Circuit decision wasn't the total victory for YouTube that the trial court decision was, at a minimum it greatly limits YouTube's potential exposure, and is vastly better than what Viacom sought.  And it seems like something that careful UGC sites can live with going forward.

Update: I went back to check YouTube's brief.  What do you know, the Second Circuit's above discussion of "red flag" knowledge largely tracks pages 31-34 of YouTube's brief.  Good job.

Of Course, You Know What Today Is

Yesterday was Bunsen Burner Day.  But you all know what today is.  It's the day where nothing is what it seems, especially on the web.  You can't do normal web searches anymore, popular sporting events are much different today, the U.S. political system has gotten very strange, public interest groups have unusual newsletters, lawsuits have gotten out of hand, as have science fair experiments, and apparently some people have lost their sense of humor.  

However, some things are better today.  It is much easier to find maps, look for street views, watch all the videos you want, get to places more quickly, use your smartphone or your PC, eat in a healthier manner, share documents, or even use the telephone.  One of my favorite humor web sites has some exciting new features.

Some people have even made lists of how this day is different.   For some people, it might even be the end of the world, but don't worry, they're just kidding.

Need a New Doormat?

This one looks good.

Breast Cancer Gene Case to be Reconsidered

Last week I wrote about Mayo v. Prometheus, a Supreme Court case involving the patentability of medical diagnostic processes.  In that post I predicted that the Supreme Court would tell the lower courts to reconsider another pending case involving the patenting of genes used to detect breast cancer, Association for Molecular Pathology v. Myriad Genetics, to apply the legal principles in the Mayo opinion.   That has in fact happened, according to the second page of today's Supreme Court order list.

Hitler Reacts to Mayo v. Prometheus

The Hitler "Downfall" meme, as applied to last week's Supreme Court decision in Mayo v. Prometheus.  Courtesy of Patently-O (and apparently Robert Sachs of Fenwick & West).

Helpful Poem Explains Copyright Fair Use

If you want to understand what is copyright "fair use", read this helpful poem by a Techdirt commentator.

The Peabody Duckmaster Blog

Apparently the Peabody Hotel in Memphis has famous ducks.  So famous, in fact, that the ducks now have their own blog.  Including such items as this delicious menu.

Medical Diagnostic Processes Not Patentable

In recent years medical companies have been getting patents on medical diagnostic techniques and processes.  In their simplest form, such a patent claims testing a patient to see if a certain disorder is present; and then reporting the result to the patient, or perhaps applying some treatment.  These patents have been controversial, since they potentially interfere with a doctor's ability to give advice to the patient, and with medical research generally.

Today the U.S. Supreme Court decided Mayo Collaborative Services v. Prometheus Laboratories, Inc.  The Court unanimously held that Prometheus was not entitled to a patent for treating a gastrointestinal disorder.  The patent covered administering a drug to a patent, testing the patent for the level of a metabolite, and increasing or decreasing the drug dose depending on the test result.  The patent apparently did not cover the drug itself, and did not cover any particular methods of administering the drug or doing the testing.

Justice Breyer's opinion held that the patent covered little more than a law of nature, which is not patentable under 35 U.S.C. §101.  The Court adopted a test of unpatentability for processes that merely "involve well-understood, routine, conventional activity":

In particular, the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field.  At the same time, upholding the patents would risk disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of further discoveries.

The opinion contained several other interesting statements:

If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.  A patent, for example, could not simply recite a law of nature and then add the instruction “apply the law.”  Einstein, we assume, could not have patented his famous law [E=mc^2] by claiming a process consisting of simply telling linear accelerator operators to refer to the law to determine how much energy an amount of mass has produced (or vice versa).  Nor could Archimedes have secured a patent for his famous principle of flotation by claiming a process consisting of simply telling boat builders to refer to that principle in order to determine whether an object will float.

. . . even though rewarding with patents those who discover new laws of nature and the like might well encourage their discovery, those laws and principles, considered generally, are “the basic tools of scientific and technological work.”  Benson, supra, at 67.  And so there is a danger that the grant of patents that tie up their use will inhibit future innovation premised upon them, a danger that becomes acute when a patented process amounts to no more than an instruction to “apply the natural law,” or otherwise forecloses more future invention than the underlying discovery could reasonably justify.

Patent protection is, after all, a two-edged sword.  On the one hand, the promise of exclusive rights provides monetary incentives that lead to creation, invention, and discovery.  On the other hand, that very exclusivity can impede the flow of information that might permit, indeed spur, invention, by, for example, raising the price of using the patented ideas once created, requiring potential users to conduct costly and time-consuming searches of existing patents and pending patent applications, and requiring the negotiation of complex licensing arrangements.  At the same time, patent law’s general rules must govern inventive activity in many different fields of human endeavor, with the result that the practical effects of rules that reflect a general effort to balance these considerations may differ from one field to another.

This case will have broad implications for other cases.  For example, another highly publicized case involving patents on using genes to detect breast cancer is pending before the Supreme Court; next Monday the Court will likely send that case back to the lower courts for reconsideration in view of Mayo v. Prometheus.  Other cases dealing with §101 involve adding conventional things such as a computer to abstract concepts such as advertising, and those patents will be highly suspect in the future as well.

Here are discussions of the case by SCOTUSblog and the Patently-O blog.  UPDATE:  More posts by EFF, Techdirt and Michael Risch.

Good News: Pi Is Not Copyrightable

Two different composers wrote musical works based on the sequence of Pi (the irrational number that begins 3.14159 . . . ).  The second composer assigned different notes to the numbers so the songs sounded differently.  As reported by Eric Goldman and Techdirt, a district Judge has dismissed the first composer's copyright suit against the second.  Fortunately, basic facts like the value of Pi are not copyrightable.