‘Merger’ and Acquisition: Google’s Copyright Contortion to Excuse Copying

By Steven Tepp
August 31, 2020

“The existence of other expressive choices to achieve the same functionality is fatal to Google’s merger claim. Because there are many ways to write the code Google chose to copy, the code does not merge with its function.”

https://depositphotos.com/31248541/stock-photo-opinion-business-concept.htmlThe Supreme Court is set to hear oral argument on October 7 from Oracle and Google in their long-running Java intellectual property case. The questions raised in Google v. Oracle go to the heart of the scope of copyright protection of all computer programs.

I’ve already written about the flaws in Google’s primary argument, which tries to conflate the creative Java code it copied to make its Android mobile operating system more attractive to developers and speed it to market, with the function that code performs once run.

Google’s second argument invokes a U.S. copyright law doctrine known as “merger,” which denies copyright to creative works if there’s only one or a very few ways to express a given idea. In those instances, the expression merges with the idea and as we know, ideas aren’t copyrightable. In this case, there are world-famous examples of platforms performing the same functionality as Java with different forms of expression, such as Apple’s and Microsoft’s. So, Google’s argument that it had no choice but to copy Java can only prevail if it can convince the Court to apply the merger doctrine with blinders on.

Enter the Merger Doctrine

To review the case’s history, Google in the mid-2000s was developing an operating system for mobile phones to extend its lucrative search-engine advertising business beyond desktop PCs that ran Google’s services well, to smaller, lower-powered mobile devices. Apple’s revolutionary iPhone threatened to run away with the franchise.

To catch up, Google needed to hasten the adoption of its Android phone software by enticing developers to write useful apps for it. More apps, in turn, would get consumers to embrace the new platform. Google sought out pre-built functions that programmers were familiar with, and eyed the popular Java platform. Instead of licensing Java from Sun (and then Oracle), as so many others in the software industry had done, Google copied more than 11,000 lines of Oracle’s declaring code – instructions that describe pre-written Java programs – and incorporated that code into Android. Oracle filed suit a decade ago and after four lower court proceedings the case is now pending before the Supreme Court.

As mentioned above, Google’s second argument that its copying was permitted revolves around the “merger” doctrine. It is a settled, bedrock principle of American law that copyrights protect creative expression fixed in a tangible medium. However, even creative expression may be denied copyright if there is only one or very few ways to express a particular idea. That means copyright protection is denied when the expression “merges” with the idea it necessarily embodies.

The limitation prevents the law from inadvertently protecting ideas.

Google’s merger argument essentially is that the only way it could have written Android’s code so that those familiar with Java would adopt it was to copy Oracle’s declaring code. This is tantamount to claiming there is only one way to write declaring code and so the merger doctrine applies.

This approach is flawed. In its March reply brief to the Court, contrary to both Oracle and the U.S. Solicitor General, Google said the merger analysis should be applied “from the perspective of the infringer,” at the time the infringement takes place. Google is asking the Court to consider the merger question only after Google decided to copy Oracle’s code. The result is a circular approach to merger: “once Sun made its conceptual choices about how the declarations should operate, Sun itself could express the declarations in only one way.” In other words, once Sun created Java, the only way Google could copy Java was to copy Java.

Google approaches the merger doctrine with the sophistication of Dr. Seuss’ Zax. Having decided to go South, it refuses to yield, “Never budge in the least. Not an inch to the West, not an inch to the East.”

Of course, that’s not how the law works. There were other options available to Google that would have achieved the functionality of Oracle’s declaring code. An obvious one: it could have taken a license for Java. And if it didn’t want a license, it could have written its own declaring code to perform the same functions as the Java declaring code. Apple achieved the same functionality in its iOS operating system with code different from Oracle’s. And Microsoft did the same for its Surface devices. Neither copied Java. Both performed the same functions as Java. Indeed, Google could have written its own declaring code in the Java programming language to perform the same functions without copying Sun and Oracle’s code.

The existence of other expressive choices to achieve the same functionality is fatal to Google’s merger claim. Because there are many ways to write the code Google chose to copy, the code does not merge with its function.

Google nevertheless takes its myopic approach to an illogical extreme, telling the Court “Oracle is inescapably claiming on the basis of its copyright the exclusive right to that method of operation.” But as the above shows, that is utterly false. Oracle is claiming copyright in the expressive code Google copied, and for which alternative forms of expression are famously available—not in the code’s underlying functionality.

Google’s Broader Attack on Software Copyrights

Not content with its attacks on the copyrightability of Oracle’s code, Google also launched a broadside against copyright protection for computer programs, trying to argue they aren’t copyrightable at all. This was an issue Congress resolved in 1980, when it amended the U.S. Copyright Act to protect computer programs as a form of literary work.

Nevertheless, Google fights the statutory text and argues literary works receive varying degrees of copyright protection depending on whether or not they are useful. As support for this assertion, it cites two irrelevant cases: the Supreme Court’s decision in Campbell v. Acuff-Rose Music, Inc., involving a musical composition – not a literary work – written by Roy Orbison; and the Third Circuit’s decision in Southco, Inc. v. Kanebridge Corp, which involved a catalog of descriptive part numbers for industrial fasteners. These cases are effectively non sequiturs and fail to support Google’s argument.

I was a co-author of the 2000 government brief in support of defendant Kanebridge. We noted to the Third Circuit that the part numbers were produced by “the mechanical application of a set of rules” that lacked human judgment and possessed “no creative spark.”

By contrast, the U.S. government brief in Google v. Oracle reminds the Court that testimony showed Oracle’s code was developed through “a creative process” and that Google conceded the declaring code it copied and the structure, sequence, and organization of the Java Standard Library of pre-written computer instructions “satisfy the originality requirement for copyright protection.”

Google goes even further, asserting that Lotus v. Borland (citing a concurring opinion) and Sega Enters. Ltd. v. Accolade, Inc. (even though copyrightability was not at issue in that case) stand for the proposition that computer programs categorically are not “analogous to literature” because they perform a function, are not creative, and are not copyrightable. Such a reading would put those cases in conflict with the Copyright Act, which explicitly granted protection to computer programs as statements that “bring about a certain result” – i.e., literary works that perform a function.

A far less controversial application of existing copyright law and jurisprudence leads to the conclusion that Oracle’s code is indeed copyrightable.

Fair, Reasonable, and Non-Discriminatory

The U.S. Government’s February brief plainly says Google “created a competing platform and copied thousands of lines of code from the Java Standard Library in order to attract software developers” familiar with Oracle’s work. Even if one accepts at face value Google’s claim that it was compelled to use Oracle’s code as an industry standard, its conduct doesn’t withstand scrutiny.

Handling intellectual property rights in industry-standard technology is hardly a novel issue. It’s arisen primarily in patent law and there’s industry and government consensus that such IP should be made available to license on fair, reasonable, and non-discriminatory terms – the so-called “FRAND” standard.

Just last December, the U.S. Patent and Trademark Office, National Institute of Standards and Technology, and the U.S. Department of Justice’s Antitrust Division said complying with FRAND “will promote technology innovation, further consumer choice, and enable industry competitiveness.”

Oracle followed the fair, reasonable, and non-discriminatory approach, making its code available for licensing. Google refused and copied. Now Google is trying to tell the Court that any licensing requirement would be anti-competitive.

In fact, Google’s behavior is out of line with the FRAND consensus, which promotes competition and aids consumers. The Court should not be swayed by Google’s extreme policy views.

Image Source: Deposit Photos
Copyright: tashatuvangoAuthor tashatuvango
Image ID: 31248541 

The Author

Steven Tepp

Steven Tepp is President of Sentinel Worldwide and a Professorial Lecturer in Law at George Washington University Law School.

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.

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There are currently 2 Comments comments. Join the discussion.

  1. Anon August 31, 2020 8:56 am

    Off topic, but I am struck by how MaxDrei must be from Zax.

  2. Anon August 31, 2020 11:00 am

    The last (hyperlinked above) article by Professor Tepp had some interesting comments from coders – the basic premise of which (if I may paraphrase) is that code should be free of ANY IP restraints – neither copyright nor patent.

    The problem of course is that such assertions are baseless and ignores the facts and understanding of what IP provides. Software happens to be an item that has multiple aspects, and it is these different aspects that obtain different (and multiple) protections under the law.

    Utility: patent
    Expression: copyright

    It is a fallacy several layers deep to play the “anti-patent, but copyright coverage should be enough” game, and then turn around and try to play the “anti-copyright, this is clearly utilitarian” game.

    In trying to go for NEITHER, the factual matter is that BOTH may well apply.

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