Round 2: Did Oracle Overlook the Smoking Gun in its Case against Google?

We’ve titled this paper Round 2 because it feels like we’ve been through a boxing match regarding our first article on the subject. Despite the wounds, we felt that the first article brought up a number of interesting issues and generated a few very useful discussions, causing us to rethink our initial conclusion.

First, we’d like to thank the people who commented and gave useful information, particularly those who pointed to relevant links and applicable documents. That was much more helpful than the personal attacks posted in response to our article.

Second we want to again state that we did not accuse anyone of copying, of theft, of illegal activity, of guilt, or of infringement. We tried to walk the line of fairness. Some readers accused us of making those accusations. Interestingly, some readers claimed we were unfairly accusing Oracle, some claimed we were unfairly accusing Sun, and others claimed we were unfairly accusing Google. Maybe that means we succeeded in walking that line. (We did not actually accuse any party.)

We did say, however, that it appears Oracle missed a number of files that appeared to have been copied from Sun, but distinctly noted, “Not knowing all of the details of the case, there could be issues that we’re not aware of.” We realize that this was a long case involving many people, much code, and a very large pretrial record containing a huge number of documents. As we explained in the beginning of the article, we considered this an interesting exercise and wanted to share our results.

Corrections

Readers did point out some issues in our article that we would like to correct. First, we made some statements regarding copyright that are not completely accurate. A work can be jointly owned by two or more copyright holders who then have the right to individually assign nonexclusive rights without the permission of the other copyright holders. This is not typically done by companies developing code, because it effectively gives away the copyrights. It is more typically done when a company accepts code developed by an outside entity. In fact, as was pointed out by one reader, Sun has an agreement called the Sun Contributor Agreement (SCA) that specifies that any person who contributes code to a Sun-managed project gives Sun joint copyright in the code. This is an interesting way for Sun to ensure that code contributed to any of its projects can be used without restriction by Sun without copyright issues. However, note some points in the agreement that we will discuss later:

These terms apply to your contribution of materials to a product or project owned or managed by us …
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The term ‘contribution’ means any source code, object code, patch, tool, sample, graphic, specification, manual, documentation, or any other material posted or submitted by you to a project.
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you agree that each of us can do all things in relation to your contribution as if each of us were the sole owners, and if one of us makes a derivative work of your contribution, the one who makes the derivative work (or has it made) will be the sole owner of that derivative work.

Also to be 100% accurate, two identical (or nearly identical) files could be copies of each other or of some third party file. Given that we could not find evidence of any third party at that time, we felt it was safe to conclude that one file was copied from the other.

Java package java.util.concurrent

As one reader pointed out, the Java package java.util.concurrent was not asserted by Oracle. Oracle expert John C. Mitchell in his expert report dated July 29, 2011 states in a footnote on page 61:

Oracle has chosen not to assert copyright infringement of several other Java SE packages, in some cases because Oracle uses these packages under license from third parties or allows third parties to utilize these packages under permissive terms. These packages include: java.math, java.util.concurrent, java.util.concurrent.atomic, java.util.concurrent.locks, javax.xml, javax.xml.datatype, javax.xml.namespace, javax.xml.parsers, javax.xml.transform, javax.xml.transform.dom, javax.xml.transform.sax, javax.xml.transform.stream, javax.xml.validation, and javax.xml.xpath.

Our mistake was that we searched the reports for the names of the files that we found to be matching rather than for the package name. Because of this approach, we did not notice that the entire package was not asserted by Oracle against Google.

As we pointed out in the article, Doug Lea, professor of Computer Science at the State University of New York at Oswego, headed Java Specification Request group JSR-166 of the Java Community Process (JCP) that created the original java.util.concurrent package. It would be interesting to know why Oracle decided not to assert this package, though. According to the SCA, and according to copyright law, Doug Lea and the other members of his group would only hold the copyright for those modifications that they made to the files, not to anything created solely by Sun. Also if Sun made any further changes to the files, then Sun recovered full, exclusive copyrights in the changes it made to those derivative files according to copyright law. And, if our reading of the SCA is accurate, Sun would actually hold full, exclusive copyrights in the entire content of the derivative files according to the SCA (though copyright law may trump this agreement). However, the point of this paper is not to conjecture why things may have occurred.

The mime4j files

That still leaves the 4 files we found from the mime4j project used in Android. The Java versions of these files have the copyright notice:

* Copyright 2004 Sun Microsystems, Inc. All rights reserved.

* SUN PROPRIETARY/CONFIDENTIAL. Use is subject to license terms.

As we pointed out before, the Sun copyright notices in the file comments are for 2004 while the earliest release of software for the open source mime4j project is May 3, 2005. The dates in the comments of the Sun files go back to 2003. Now, having a copyright notice in these files, in and of itself, does not prove that Sun owned the copyright. Even registering a copyright with the Copyright Office is not proof of copyright ownership. And placing a date in a comment in a file does not prove that the file was created on that date.

One of the readers noted that the mime4j files had comments that they were created by the tools Java Compiler Compiler (JavaCC), a program that automatically generates Java code. Our research subsequently showed that JavaCC was initially developed at Sun but later given to the open source community. The reader noted the misspelling of the word “followng” in a comment in the Android and Java files we had found also appeared in files used in the code for JavaCC. Another reader pointed us to the World Wide Web Consortium (W3C). After some searching we found two of the files, ParseException.java and TokenMgrError.java at the website, which is an HTML parser developed by or given to the W3C. These files were dated October 19, 1999, several years before the Sun copyright notice dated 2004.

Regarding the remaining two Android files, JJTAddressListParserState.java and SimpleNode.java, that are nearly identical to Java files JJTParserState.java and SimpleNode.java respectively, we have been unable to track them down. The comments in the files state that they were generated by JJTree, a preprocessor for JavaCC that automatically generates Java code, which leads us to now believe that these were automatically generated, which would rule out copying though that still does not explain why Sun has a copyright notice in them.

Speculation and Theories

As we mentioned, some reader comments were very helpful for pointing us to relevant information or allowing us to refine our research. There were also a few interesting arguments raised by the comments to the previous article that we would like to address. First, there is no such thing as innocent infringement. If a first party owns a copyright in a work and a second party unknowingly uses a right to which it is not entitled, such as by using the work under license from an infringer without knowledge of the infringement, that still constitutes infringement.

Percentages don’t matter. There is no aspect of copyright that says that it is necessarily fair use to copy a certain percentage of a work or less. Therefore, the argument like the one that “only 9 files out of 12,262… proves… Google did not copy code” simply has no basis in the law. If any single file was copied that would mean that 100% of that file was taken. To focus on the totality of the work misses the entire copyright and fair use analysis. As the U.S. Copyright Office explains on its website:

How much of someone else’s work can I use without getting permission?

Under the fair use doctrine of the U.S. copyright statute, it is permissible to use limited portions of a work including quotes, for purposes such as commentary, criticism, news reporting, and scholarly reports. There are no legal rules permitting the use of a specific number of words, a certain number of musical notes, or percentage of a work. Whether a particular use qualifies as fair use depends on all the circumstances. See FL 102, Fair Use, and Circular 21, Reproductions of Copyrighted Works by Educators and Librarians.

Furthermore, in 1985 the Supreme Court of the United States recognized in Harper & Row v. Nation Enterprises that the copying of only 300 words from an entire book constitutes copyright infringement. In Harper the Supreme Court also determined that the fair use defense did not save the copyist. So whether nay-sayers choose to believe it or not, there is no right to literally copy even a small amount of material.

Conclusion

Theories about how something could have happened, without any evidence, have little weight. Theories based on the evidence available carry significant weight, as noted on the Ladas and Perry LLP website:

Since there is seldom direct evidence of copying (witnesses who actually saw the defendant copy the work, for instance), a copyright owner may prove copying through circumstantial evidence establishing that the defendant had access to the original work and that the two works are substantially similar.

Given the evidence we had at the time, we suggested the most reasonable conclusion. The legal system is adversarial for just this reason—one side presents evidence to support one theory and the other side attempts to present evidence that contradicts that theory. That is what happened here, and we appreciate those who did so in a cordial manner. We had no stake in this case. We felt the exercise was useful to us and we hoped it was educational to the readers.

We welcome further comments and criticism, though we do ask that commenters stick to the merits of the arguments. We appreciate facts about what actually occurred, references to documents, and links to websites, but not speculation about what might have occurred in some highly unlikely scenario. Fortunately, cases like these are won by presenting facts and drawing reasonable conclusions based on those facts. In that spirit, we welcome your feedback.

Acknowledgements

We would like to acknowledge attorney Steve Wu of Cooke Kobrick & Wu LLP for his discussions and for his help locating trial documents for this case. We would also like to thank attorney Gene Quinn of IPWatchdog for his review of the article and his suggestions, and expert witness Andy Finkel for his review and suggestions.

The Author

Evan Kovanis & Bob Zeidman

Evan Kovanis & Bob Zeidman

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 34 Comments comments.

  1. Carlos Woelz July 11, 2012 10:07 am

    Sirs,

    I want to thank you for your follow up article. It shows responsability and commitment to a fact-based discussion.

    I also want to thank Gene. His website has strong opinions, but the same commitments. I also want to thank him for his comment system: even with moderation, as he allows comments that are probably too strongly worded or less desirable, but in the end they let the discussion advance.

    I find myself sometimes in the middle of the debate here: I am a strong property rights advocate, I own a hedge fund (liquid assets, not private equity like Romney) and follow the debate here (and in other places, including Groklaw) to be current about the competitive environment in the IT industry. I am not american, but if I were, you could count me as a small state / low tax republican. So I understand the perspective of the IP advocates.

    On the other hand, I do think the current patent system is a mess, at least for the IT industry. Too many low quality patents are issued, and that the term for the IT industry may be too long. I believe Google has its issues with IP, but most challenges to Google, including Apple and Microsoft, were based in flawed IP, and as I see with current information, Google is right to go to court and not settle. I have been long Apple, IBM and Google over the last few years. I used to like Microsoft, but want to see how ARM Windows 8 goes before buying it again.

    Cheers,

    Carlos

  2. Graham Shaw July 11, 2012 11:44 am

    You downplay the importance of the number of files copied, but it makes a huge difference both to the likely damages and (more importantly) whether Google can work around the problem in a timely manner (as opposed to having to negotiate a licence from Oracle from a position of extreme weakness).

    Remember: this was the lawsuit that was going to cost Google billions and do huge damage to Android. Oracle has so far failed to achieve that, and 4 copied files – even if they are infringing – will not change the outcome in a way that anyone cares deeply about.

  3. Gene Quinn July 11, 2012 11:50 am

    Graham-

    The number of files copied is irrelevant to the issue of copyright infringement. There is no downplaying here, as you suggest.

    -Gene

  4. Brian July 11, 2012 11:53 am

    The conclusion regarding “there is no right to literally copy even a small amount of material”, ignores several important issues.

    First, software copyright is very different from other kinds of copyright. This is particularly true when regarding case law and precedents.

    Second, there are limitations when it comes to what is protectable under copyright, in software. Abstraction/Filtration/Comparison may be necessary before concluding whether elements are protectable or not.

    Third, it ignored the fact that there may be a permissive license governing the software in question.

    Fourth, it is necessary to first establish fully the provenance of the original software. It is not sufficient to assume that provenance, since there is no natural embodiment or fixing in a medium. Software is digital, even in source code. Digital means, literally, that it only exists in a virtual form, and that virtual form has no forensically detectable uniqueness. There is literally nothing to distinguish an original from a copy, among digital things. This applies to the content of a computer file, as well as to the on-computer meta-data related to the file (such as timestamps on a file, since that is itself digital data on a filesystem).

    Without that provenance, it is impossible to prove whether two files are original/copy, copy/original, or copy/copy, or even the results of compiler->decompiler, via permissible backwards engineering.

    And finally, the consequences of copying, even if proved, are heavily influenced by the scope of copying. Saying that “de minimus” copying is permissible, is not the same as saying it is impermissible but does not rise to the level of requiring punishment. Without proving harm, it may be fair, and sufficient, to require offending code to be replaced or removed. The case of the 9 files, in particular, fall under this category, especially when the files in question were copied but not distributed.

    So, even if the authors feel that copying was proved, it basically boils down to “no biggie, already resolved”.

    (Anyone reading this far is encouraged to read more at groklaw.net)

    Brian

  5. Renee Marie Jones July 11, 2012 12:07 pm

    “So whether nay-sayers choose to believe it or not, there is no right to literally copy even a small amount of material.”

    Oh yes there is. Quit lying about copyright.

  6. Brian July 11, 2012 1:15 pm

    Closed loop vs open loop

    While it may be good to have software that does comparisons in a vacuum, it is the users of that software who then need to use their full world-knowledge and resources at their disposal, to interpret the results.

    I humbly suggest that continuing to argue the merits of the closed system, ignores the fact that those closed systems’ results were provably incorrect.

    That actually leads to the conclusion that rather than being experts on their own software, the authors should instead spend efforts on educating themselves about the underlying subject matter.

    The lack of familiarity with other cases, or terms like “footgun”, belies their narrow understanding, and thus unreliability of their testimony for the purposes of discovering the truth of the situation.

    Absent truth, adversarial testimony can only be considered a value-subtract, rather than value-add, to society.

    If you search the earlier SCO litigation, you might be surprised to discover that the first foray into code comparison (by an SCO employee or contractor) yielded a negative result, i.e. that the conclusion was that no copying was done. Despite that, their management pursued the copying theory, to no avail.

    Oracle’s efforts were, in most regards, a virtual duplicate of that case, although much more streamlined, and less damaging to the party bringing the lawsuits.

    Brian

  7. W Klink July 11, 2012 1:49 pm

    While the amount copied is not a *sole* factor in determining fair use, it *is* a factor. To say “there is no right to literally copy even a small amount of material” is quite misleading. If that were literally true, your article would be violating copyright by quoting the SCA. And while it is true that sometimes as little as 300 words have been found to be a violation of copyright, it is also true that, in other circumstances, courts have found that copying something in its entirety (e.g. time-shifting television programs for private use) can be fair use (cf. Betamax case).

    In addition to the fair use defense, the amount of damages and relief are clearly a function of the amount of copying. The *primary* relief for copyright infringement is that the person violating copyright must stop, unless a license can be agreed upon. If the amount copied is minimal, this will have little to no effect on android. The second relief for copyright infringement is payment for past violations. Do you honestly believe the damages from copying 9 files could be anything like the billions Oracle initially claimed?

    Please stop pretending that the amount of copying doesn’t matter *at all*.

  8. Carlos Woelz July 11, 2012 3:28 pm

    Renee,

    Yes, there is Fair Use, and it could apply to a small amount of code. But files would probably qualify as infingement, as Gene points out.

    On the other hand, the number of files is important in practice. A few files could be replaced, so the infingement would cause Google / Android Manufacturersto pay damages, but not risk the platform. A large infingement would cause a lasting damage to the platform, and would affect Google shares in a sgnificant way.

    So there is no “lying”, just different perspectives, and different points to be made. Some people care if Google is found to be an “infringer”. I don’t care, as long as it does not affect the platform.

    It is not when you are right that you have the opportunity to display character, but when you are wrong. And Zeidman Consulting just showed us they deserve our respect by correcting their previous views. I wish all discourse on the internet had this quality.

  9. IANAL July 11, 2012 3:36 pm

    > First, there is no such thing as innocent infringement.

    If you’re trying to explain strict liability for infringing copyrights, that was an extremely poor choice of words. Innocent infringement absolutely does exist, and you can read 17 USC § 907 – Limitation on exclusive rights: innocent infringement if you don’t believe me.

    http://www.law.cornell.edu/uscode/text/17/907

  10. Anthony Youngman July 11, 2012 3:43 pm

    Doug Lee and java.util.concurrent … there are two major problems with your analysis …

    Firstly, you stated that Doug Lee would only hold copyright to the changes he made … hang on – he owns the *entire* original file. The original work was copyright Doug Lee, so it is SUN that “only holds copyright to the changes they made”.

    And secondly, the file as distributed by Sun claims that the file is copyright Sun, NOT copyright Doug Lee and Sun. As AT&T found out to their cost, deleting someone else’s valid copyright notice can be very costly. In the Unix case, it cost them their presumption of validity. I doubt Oracle wanted that precedent brought up against them!

    And lastly, it also appears that Sun’s registration of the copyrights was faulty. Given that you can only claim damages for a properly-registered work, that basically destroyed their damages claim. (I’m not sure about the statutory/actual damages aspect, but the combination of “a tiny percentage of the work in question” plus a faulty registration for said work basically meant that Oracle would get almost nothing whichever route they chose.)

  11. Terry Cole July 11, 2012 9:53 pm

    Dear Gene, Renée, and Carlos,
    Not even fair use – which is a defence rather than a right – exists in some non-US jurisdictions, such as those based on Westminster-style parliaments – like Canada. Although I should note that there is a concept of ‘fair dealing’ which protects (among other things) news reporting, but generally not commercial use.

    On the other hand, absolutely there is a thing called “innocent infringement”, in two senses.

    The authors assertion that “First, there is no such thing as innocent infringement” – infringement remains infringement – reflects the language of the District Court granting summary judgement in Lexmark v SCC a decade ago: “Innocent infringement, however, is still infringement.” This is quite true, but it doesn’t prevent some kinds of infringement being ‘innocent’. In particular, criminal (as distinct from civil) copyright infringement is much harder to assert in the face of evidence that the infringer did not know it was an offence (no ‘mens rea’).

    But even for civil cases, the language of the district court in Lexmark v SCC was overturned on appeal. The sixth circuit appeal judges held (in a confusing variety of opinions) that the DMCA protected against certain classes of infringement, and in particular, those which were necessary for interoperability. Any such infringement under copyright law is ‘innocent’ under another statute – the DMCA.

    All that said, the point of the original article was to show the capabilities of a particular code searching algorithm, and this it most certainly achieved. That some conclusions drawn from the results are invalid should not detract from the capabilities of the algorithm.

  12. Gene Quinn July 11, 2012 11:02 pm

    IANAL-

    Sorry, but you are the one who is sadly mistaken. There are legions of cases that say exactly that there is no such thing as innocent infringement. You are wrong.

    Further, the citation you provide relates to semiconductor chips. Really? Is that the best you can do? Provide a citation to something that is completely irrelevant and then pretend you are correct? My goodness the level of Internet dialogue is atrocious.

    Please keep your comments relevant and accurate. If you cannot be relevant and accurate please go elsewhere. Misleading and misrepresentation and misdirection is not allowed on IPWatchdog.com.

    -Gene

  13. Terry Cole July 12, 2012 12:21 am

    Dear Gene,

    I am not IANAL. I am, however, the person who referred to the Lexmark case – involving code declared to be infringing, not just chips – where a (lower court) judge did indeed, as you say, assert that there is no such thing as innocent infringement. But that case was overturned.

    In any event, case law is not all of law. In particular it is not statute, and IANAL provided a link to one statute which contradicts you [USC, Title 17, Chapter 9, § 907, relating to that doctrine limiting exclusive rights known as “innocent infringement”].

    It does not matter, for the purposes of infringement being innocent, whether the infringing item was chips or code. Nor does it matter that the statute cited refers to innocent purchasers, rather than innocent manufacturers, not least because innocent manufacturers are covered by another statute.

    The principle of some infringements being innocent is long established, both in case and statute law. The protests of some lower courts judges to the contrary have not availed on appeal.

  14. Gene Quinn July 12, 2012 1:14 am

    Terry-

    You are 100% wrong.

    First, we are talking about computer code, not chips. Therefore, the citation provided by IANAL is misleading at best. So you can try and take what is said out of context and then provide a statute that does not address the issue and say “see… see… I’m right and you are wrong… see.. see.” But that is the argument of a child. One who cannot compare apples with apples because they will lose the argument if they do.

    Your bringing Lexmark into the discussion misses the point completely. You are using a case on one issue and trying to over-exaggerate what it means and how it applies to unrelated cases. Further, your bringing up criminal copyright infringement is intellectually dishonest and disingenuous. Was the Google-Oracle case one of criminal infringement? No, it wasn’t. So that is another red herring thrown into the discussion. You seem to like red herrings.

    Now please provide a citation that explains that innocent infringement is a defense to copyright infringement. It is an issue that can come into play when statutory damages are being calculated, but infringement has already been established. You simply cannot defend and say you are not liable as a copyright infringer because what you did was innocent or unknowing. Copyright infringement is strict liability. It does not require anyone prove any state of mind, and there is no knowledge requirement to prove infringement. You can be an infringer even if you didn’t know you were infringing. That is black letter Copyright law whether you choose to believe it or not. That is just the way it is, period.

    -Gene

  15. Gene Quinn July 12, 2012 1:19 am

    Terry-

    One final thought. You say: “The principle of some infringements being innocent is long established…”

    That is correct. There are plenty of decisions from every level of court that acknowledge that innocent infringement happens. They then go on to conclude that it is, however, irrelevant.

    To educate yourself take a look at this:

    http://www.schnader.com/files/Publication/c81e58ca-c551-4f8c-b289-ca966bfeb10c/Presentation/PublicationAttachment/9911b06e-d26c-4d42-a928-d20fdf6379d3/Bloomberg%20Law%20Report_Kluger_Nicholas_12-2010.pdf

    “An assertion of innocent infringement is not a defense against liability. Rather, the innocent infringer provision permits the defendant to claim ignorance of a copyright in order to mitigate the application of statutory damages.”

    You won’t be able to provide a citation that says otherwise because it doesn’t exist. Of course, I suspect you will hold fast to your erroneous view in spite of overwhelming evidence to the contrary.

    Have you even Googled “innocent infringer defense” as it pertains to copyright law? Doubtful. If you had you would see that you are wrong.

    -Gene

  16. Gene Quinn July 12, 2012 1:31 am

    Terry-

    Yet another thought…

    The U.S. Supreme Court has said: “Intention to infringe is not essential under the Act.” See Buck v. Jewell-Lasalle Realty Co., 283 U.S. 191, 198 (1931). see also ABKCO Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988, 999 (2d Cir. 1983) (“the problems of proof inherent in a rule that would permit innocent intent as a defense to copyright infringement could substantially undermine the protections Congress intended to afford copyright holders”).

    See also:

    “Innocent intent should no more constitute a defense in an infringement action than in the case of conversion of tangible personalty. In each case the injury to a property interest is worthy of redress regardless of the innocence of the defendant. Moreover, a plea of innocence in a copyright action may often be easy to claim and difficult to disprove. Copyright would lose much of its value if third parties such as publishers and producers were insulated from liability because of their innocence as to the culpability of the persons who supplied them with the infringing material.”

    See 3 NIMMER ON COPYRIGHT § 13.08 at 13-291 (1994).

  17. Bob Zeidman July 12, 2012 2:10 am

    Brian,

    You’re right. My lack of knowledge of the term “footgun” makes me wholly unqualified in the field of intellectual property. I’ve decided to withdraw from the field in deference to you and others who are obviously more knowledgeable and more creative in their knowledge of slang (certainly the first, and perhaps only requirement to work in the field).

    -Bob

  18. Terry Cole July 12, 2012 4:19 am

    Dear Gene,
    That was a rather interesting triple blast. It’s hard to know where to begin, but perhaps I should return to IANAL’s original comment and your responses.

    IANAL responded to your assertion that “there is no such thing as innocent infringement”, that this was an “extremely poor choice of words” if your point was to talk about strict liability for copyright infringement.

    He emphatically did not deny strict liability for copyright infringement existed. In particular, he did not deny that many court decisions have used those words. He didn’t have to, because that was not his point. Rather, he pointed to a specific statute. That statute not only provides that an ‘innocent’ purchaser of an infringing bit of electronics is not liable under law, but the statute title calls it “Innocent infringement”.

    IANAL thus established not only that the concept existed – which you had explicitly denied – but that the exact phrase occurs in statute. Which is why he thought your choice of words was poor. Under some circumstances an innocent infringer of intellectual property has a (statutory) right under law. You may multiply cases where a judge says otherwise if you wish, but the statute is there for all to see, and it is not the only one.

    Furthermore, IANAL’s example is not so far removed from code. What is infringed is ‘the mask work embodied in the semiconductor chip product’, which is much more abstract than the chip itself.

    As to the studies and papers you provide, I’m always eager for an opportunity to educate myself. I’d note however that the SCOTUS cases (Buck v. Jewell-Lasalle Realty Co., and ABKCO Music, Inc. v. Harrisongs Music ) are old, prior to the statute pointed out by IANAL.

    The much more recent Maverick case (which the Kluger report deals with) is famous, and I had heard about it. It does not deal with copying of code any more than IANAL’s chip statute does. Maverick involves downloading of music. I am also aware that SCOTUS denied certiorari, so the decision currently stands, though Alito dissented in terms which invited review. In any event, I’m quite happy to acknowledge that presently, strict liability applies in civil copyright cases – with some statutory exceptions.

    In any event, IANAL is probably aware of that too. It is orthogonal to his point of his post, which was very short and quite polite by comparison with some of the other invective you, and poor Mr Zeideman, have had to put up with. I feel he did not deserve the reply you gave him. Clearly, you disagree.

    I was taken aback by your accusation of intellectual dishonesty. I was trying to point out that “innocent infringement” certainly exists, in the face of broad assertions otherwise. The reason I feel that the Lexmark case is important and relevant in this context is that it introduced what I think of as the elephant in the room – the DMCA, and less well known Acts which protect ‘innocent infringers’ such as the Communications Decency Act.

    Google, as a manufacturer and coder, was accused of infringing Oracle’s copyrighted code. Likewise, Lexmark accused SCC of infringing their copyrighted code. SCC had made infringing copies of Lexmark code while reverse engineering. Among the reasons Lexmark lost, was that the DMCA (in §1201(f)) provides that no liability existed where such circumvention was for purposes of ‘interoperability’. Even though there might have been a way to achieve SCC’s goal without making infringing copies. And the appeal court ruled that the original judge was wrong to suggest otherwise.

    In short, especially where infringement is the only reasonable way of accomplishing certain perfectly legal commercial objectives, there may be no liability. And that casts a very different light on strict liability in copyright law – one which I feel justifies use of the phrase ‘innocent infringement’. You clearly feel otherwise.

  19. Gene Quinn July 12, 2012 10:37 am

    Terry-

    How could you be taken back by a charge of intellectual dishonesty? What you are saying is wrong. You are twisting what was said and using citations to wholly irrelevant material to support your erroneous conclusion. That his clearly being intellectually dishonest.

    Chips are not code. That should be self evident.

    The Maverick case deals with innocent infringement being a defense to damages. The person is still an infringer and will still have to pay damages for their infringement, but an innocent infringer may have to pay less per each infringement. So it is not at all incorrect to say that there is no innocent infringer defense to liability. Being innocent does not absolve one of infringement.

    As far as your desire to continue to say there is an innocent infringe defense you confuse fair use and ignore the black letter law from the Supreme Court. Whether we like it or not (and I usually don’t like it) the Supreme Court gets the final word. So in the citations I provided you the answer is pretty clear. Innocent infringement is not a defense to copyright infringement liability.

    Twist as you may, but the chip statute is wholly irrelevant. This was not a criminal case. And lessening of damages still means you pay damages having been adjudicated an infringer. Obviously you will continue to cling to your incorrect view, which is up to you. You have a right to be wrong, but I’m not going to let such clearly erroneous statements go unchallenged.

    -Gene

  20. Brian July 12, 2012 11:22 am

    Bob,

    Lack of familiarity with other cases is the issue. “Footgun” is the “canary in the coalmine” regarding familiarity.

    The kinds of cases (where either the provenance, or the nature and scope of alleged copying) that one would be expected to be familiar with would include:
    – SCO vs Red Hat
    – SCO vs IBM
    – SCO vs AutoZone
    – SCO vs Daimler Chrysler

    All of the above were covered extensively on groklaw.

    Not being familiar with SCO’s saga, and being a so-called expert in intellectual property (in the specific area of software copyright), is inconceivable, to the level of suggesting that one has been living under a rock.

    There is also the question of the relevance of copied files, to the overall body of work.

    Consider the following contrived example:
    – A large open-source software package, consisting of 10,000 source files and documentation
    – The package includes automated scripts for turning the source files into a single executable
    – A single file is somehow included in the package tree, which is not used by the package, where that file is a tiny part of some other package, and unable to be compiled or used by itself (imagine a drag & drop error)

    The question is, if technically that single file is distributed without the copyright holder’s permission, what conclusions can be made about that file?
    Technically, it is a copyright violation.
    Or is it?
    And what kinds of response, upon discovering this, are appropriate?
    A lawsuit?
    Or a request to have the erroneous (and unused file) removed from the source tree?
    Is there any real harm to the copyright owner?
    Is it possible to infer, from whether and/or how the specific file is used (or not) as part of the tree?
    Does the source tree’s own packaging scripts actually include the file when building the package file for general users to download?
    If not, but if the file is present in a publicly accessible location, is it *really* being distributed?
    If it were included in the package file, there would be a stronger argument regarding distribution, but even then, if the unpacking and building process never used the file, there is no benefit to the infringer-distributor, correct?

    This is what happened, roughly, in one of the four cases above (a backup of a system was made onto another system, where the second system was completely incompatible, and provably the software could not have ben used.) How closely did the 9 files (or 4 files), e.g. the test package that was never distributed to end users, mirror the above example?

    How does the above scenario qualify as a “smoking gun”?

    Brian

  21. Bob Zeidman July 12, 2012 1:22 pm

    Brian,

    Though I had deemed to remove myself from debating you due to your overwhelming brilliance, I just had to add one fact. If you knew how to use the Internet as well as you know the meaning of obscure slang, you would know I was an expert on SCO v. IBM and my work was referenced in IBM’s expert report.

    -Bob

  22. Terry Cole July 12, 2012 5:07 pm

    Dear Gene,
    Just what conclusion do you think I was trying to draw? To me, it was that “There is no such thing as innocent infringement” is demonstrably false. The phrase even occurs in statute. And there is case law against it.

    Both in plain language, case law, and statute, the concept is well defined and occasionally the defence succeeds.Based on the cases and statutes cited If you believe I was being intellectually dishonest in saying that, I fear there is no hope for you. I will leave it to your readers to decide who is being intellectually dishonest.

    One unrelated point, relating to fair use. I have not seen it discussed in the body of the article, nor in posts, but there is now precedent that copying the whole of a work may be fair use. And in breaking news, it appears that the Canadian supreme court has extended the Westminster doctrine of ‘fair dealing’ in as dramatic a fashion.

  23. Terry Cole July 12, 2012 5:20 pm

    Dear Bob,
    Not wanting to add to anyones troubles, but I was waiting for you to drop that particular shoe.

  24. Gene Quinn July 12, 2012 6:04 pm

    Terry-

    Again you REFUSE to take things in context. Why? What are you afraid of? The article does not discuss damages at all. It discusses potential liability. For liability there is no such thing as an innocent infringer. Furthermore, whether the statute calls it an innocent infringer or not the fact that it may be innocent or not does not absolve the individual from liability. So there is no such thing as an innocent infringer for purposes of liability, which is what the article was about.

    Yes, the defense does occasionally succeed, but ONLY to minimize damages. The person who is an “innocent infringer” is still an infringer and is still liable and still has to pay damages.

    I am find with letting others decide who is intellectually dishonest. Anyone who is fair and objective will conclude it is you. You cite statutes that are irrelevant and bring up criminal liability which is irrelevant to the article and bring up damage issues which are unrelated to the article. You ignore the Supreme Court precedent. It is pretty clear who is intellectually challenged in this argument.

    -Gene

  25. Terry Cole July 12, 2012 6:48 pm

    Dear Gene,
    That is a straw man argument. I did not discuss damages either. You and the article denied the existence of a concept – ‘innocent infringement’ – which can be found explicitly in statutes as well as implicitly in case law.

    Liability enters the picture under the statute pointed at by IANAL. I would not minimize the importance of Bob Zeidman’s point, which was that for the case he was looking at – Oracle v Google – this was most unlikely to be an available defence. But to say this:

    “First, there is no such thing as innocent infringement. If a first party owns a copyright in a work and a second party unknowingly uses a right to which it is not entitled, such as by using the work under license from an infringer without knowledge of the infringement, that still constitutes infringement.”

    – is wrong under the statute. I am not surprised Bob didn’t note the exception. He was discussing code, not masks; but he overgeneralized.

    You may declare it irrelevant to a coding discussion, but 907 remains a copyright statute (being under section 17 of USC), “innocent infringement” is therefore a potential defence under US copyright law, and IANAL was right to point to it.

    Case law may well be lacking for this statute. It would not surprise me, given that the wording is so clear, and the cost of litigation. Statutes though are law, as much as cases. That provision baldly states no liability exists for innocent purchasers of ‘semiconductor chips’ that embody a copyrighted work (the mask) – at least until notice of protection is given. It also holds free of liability subsequent purchasers.

  26. J July 12, 2012 9:38 pm

    @Gene:

    Exactly how is the number of files copied irrelevant for making a determination of infringement? It could certainly be argued (and was argued before Judgle Alsup in Oracle v. Google) that copying X number of files or Y lines of code out of Java’s thousands of files and millions of lines of code is de minimis, and thus either too trivial to concern the court, or not enough to make the works substantially similar.

    Additionally, if the accused party was to argue that no copying even took place, a small number of files or lines could be used to support such an argument.

  27. Gene Quinn July 12, 2012 10:36 pm

    J-

    It is irrelevant because if the file is copied that means 100% of the file was copied. That means 100% of a copyrighted work has been copied. You are making the mistake of focusing on the entire product that consists of many different files. The entirety is not what is copyrighted. Each individual file is copyrighted. So if you copy 100% of something it is impossible to argue fair use.

    Look at it like this. If you copy 1 song from a CD of 12 songs have you copied 1/12 of the work? No. You copied 100% of one work; namely a song that is individually copyrighted.

    -Gene

  28. Gene Quinn July 12, 2012 10:45 pm

    Terry-

    You are saying now that you did not discuss damages? Now we are getting somewhere. You are admitting that you are wrong because the ONLY possible argument for innocent infringement under the Copyright Laws (save the irrelevant and inapplicable chip statute) is in determining statutory damages. See 17 USC 504(c), which says:

    “the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.”

    It should be noted, however, that if there is a copyright notice it is impossible to be an innocent infringer. You see, even if you are didn’t know what you are doing you are still liable as an infringer “to a sum of not less than $200.”

    Thus, if you are not talking about damages you are COMPLETELY wrong.

    As far as me declaring Sec. 907 irrelevant, you say that like I am making some unwarranted proclamation. Of course it is irrelevant. All you have to do is read the statute to see it is inapplicable.

    I will also point out that aside from Lexamark (which is inapplicable) and section 907 (also inapplicable) you provide no citations. Thus, your citations to support your argument are all irrelevant and misleading. On the contrary I have provided overwhelming evidence with citations and links to primary sources (and secondary sources) that I am correct. Yet you cling to your erroneous views. You prove that the level of Internet discourse is extraordinarily low, which is a very sad commentary.

    -Gene

  29. Terry Cole July 13, 2012 4:00 am

    Dear Gene,
    I hope we can avoid arguing past each other at this point.

    What IANAL objected to (and I concur) was the overreaching language, which denied the existence of innocent infringement in copyright law at all.

    You seem to have gradually moved from denying that innocent infringement exists at all under copyright law, through saying that it exists but not to remove liability, only as a defence against damages, to the point where you can now say “save the irrelevant and inapplicable chip statute” [sec. 907]. This is progress, of a sort. Irrelevance and inapplicability are in the eye of the beholder.

    IANAL provided section 907, not me. But I gladly agree that it’s irrelevant and inapplicable to the Oracle case. Lexmark, though, is another matter. At first instance the judge in that case said, just like you, “Innocent infringement, however, is still infringement”. He was overturned on appeal. Reason: to allow liability in the circumstances would have given the copyright some characteristics of a patent – protecting an idea rather than expression. Now, something similar happened in the Oracle v Google case, because there one of the bones of contention was whether Google infringed Oracle’s APIs in Java. The judge held that they did not, for much the same reason. He might be overturned on appeal, but I wouldn’t hold my breath.

    Neither 907 nor Lexmark were cited in reference to the Oracle v Google case in any event. They were intended to show that “innocent infringement” does indeed exist under copyright law, which the article flatly denied, and that at least one copyright statute did actually remove liability rather than merely reducing damages.

    You are bothered by my comparative lack of citations. I didn’t feel the need to multiply cases. Your primary sources predate section 907, so that one statute is a sufficient counterexample. But the Lexmark case does show that no liability exists for copying code (the toner loader) where that is necessary to achieve interoperability.

    I might add that where a copyright holder of a century-old work could not be found, the author can be presumed fifty years dead unless the Copyright Office can say otherwise – and then you can rely on that presumption, no liability there either.

    Those reading your original post might reasonably have thought that all copyright infringement of any kind exposed them to liability. Now they know there is at least one exception. They also know, if they have been paying attention, that the Google had to find another defence, which should be satisfying to you. This series of posts has not, then, entirely been in vain.

  30. Gene Quinn July 13, 2012 1:23 pm

    Terry-

    At this point debating with you is useless. I haven’t moved my position at all, and you suggesting it has evolved is proof enough of your intellectual dishonesty.

    I will leave the debate and take your earlier suggestion to let others decide who is correct and who is incorrect. Those who are unable to understand things in context, like citations to irrelevant statutes for support, appreciate ignoring black letter law from the Supreme Court will no doubt find your misdirection and misrepresentations persuasive.

    I will leave on this thought. What you and so many others ignorantly fail to understand, in an almost blissful way, is that an article is NOT a treatise. It is sad that I have to point that out so often. So you want to take issue with one thing said in context and twist it out of context to say I’m wrong. You must be a liberal. That is a play straight from the MSNBC playbook.

    -Gene

  31. Terry Cole July 13, 2012 8:09 pm

    Dear Gene,
    It was you who asserted that “You are admitting that you are wrong”, though nowhere did I admit to any such thing. I merely said that you SEEM to have moved from outright denial. Fortunately, your own words are the evidence. Let the record speak for itself.

    The word liberal has a great many meanings to different people. Ultimately there’s no point in responding to abuse.

  32. Gene Quinn July 13, 2012 10:22 pm

    Terry-

    Actually, you did admit you are wrong. Since you don’t seem to understand the issues it is not surprising that you didn’t recognize the fatal admission you gave. You said that you were not talking about damages. Unfortunately for you that is the only place in the copyright laws where an innocent infringer can come up.

    My own words easily speak for themselves and show I am right and you are wrong.

    As for being liberal, the tried and true liberal tactic you see every evening in the news is to take one thing after another out of context, which is exactly what you do in every comment. You ignore precedent, you ignore logic, you insert issues that are irrelevant to what was being discussed, cite cases on wholly different issues and pretend that a statute that deals with microchips has anything to do with the copyright liability issues in the article. You are representative of the lowest form of Internet dialogue. I called you out and you cry fowl. Of course you are a liberal.

    -Gene

  33. Terry Cole July 14, 2012 12:15 am

    Dear Gene,
    It is not true that ‘damages’ is the only place in the copyright laws where an innocent infringer can come up. The phrase even occurs in statute, notably section 907 of the US Copyright title, which excludes liability (and therefore damages) for an innocent infringer.

    I was talking about what, as IANAL put it, was a very poor choice of words. Neither of us ever mentioned damages. To reiterate: “There is no such thing as innocent infringement” is demonstrably false. And there is case law against it.

  34. Gene Quinn July 14, 2012 11:23 am

    Terry-

    First, I thought you weren’t going to take this abuse?

    Second, why can’t you understand that section 907 is TOTALLY IRRELEVANT? Which part of TOTALLY IRRELEVANT is confusing you? Please tell.

    You are so dishonest. At no point have you acknowledged the absolute truth that section 907 is completely irrelevant to the issues discussed in this article. You raise a red herring and continue to throw it around like it supports your absurd position.

    Sorry. I’m not going to allow you and your ignorance to take up any more of my time.

    -Gene