“Lower courts increasingly rely on Oracle 1 and reach faulty outcomes. This most recent elucidation of this effect underscores the importance of the decision in Google v. Oracle, where the Supreme Court in failing to address the issue of copyrightability has not provided the much-needed clarity that industry was hoping for.”
On April 5, the U.S. Supreme Court held 6-2 that Google’s copying of 11,500 lines of code from the Java SE Application Programming Interface (API) in creating its Android operating system was a fair use. The ruling ends a decade-long battle between Google and fellow software giant Oracle, which purchased Java developer Sun Microsystems in 2010. It also overturns the Federal Circuit’s 2018 ruling in favor of Oracle, which could have led to a multi-billion dollar award against Google. Oracle Am., Inc. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018). A recent decision from a district court in the Western District of Pennsylvania emphasizes the relevance of the Supreme Court decision in Google v. Oracle. While the case predates the Google decision, it brings up some important issues that were sidestepped in the opinion itself but were raised in the arguments presented in briefs and oral arguments for the Google case.
An Ominous Omission
As Justice Thomas noted in one of his conclusions for the dissent: “By skipping copyrightability, the majority gets the methodology backward, causing the Court to sidestep a key conclusion that ineluctably affects the fair-use analysis…. The result … is an opinion that makes it difficult to imagine any circumstance in which declaring code will remain protected by copyright.” Writing for the majority, Justice Breyer declined to answer the first question presented in the petition for certoriari: “Whether copyright protection extends to a software interface,” defined narrowly as “lines of computer code that allow developers to operate prewritten libraries of code to perform particular tasks.” “[W]e assume, for argument’s sake, that the material [copied] was copyrightable.” Instead, the majority held that even if the entire API was protected, Google’s use of the declaring code, defining the names of the methods and their organization into packages, classes, and methods, was fair.
There are many different kinds of interface specifications. Most courts agree that software-to-computer or software-to-software interface specifications, which must be followed in order for software to interoperate with the computer or with other software, are not protected by copyright. See, e.g., Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.3d 693, 709-10 (2d Cir. 1992) More controversial are human-to-computer interface specifications. Those can be further subdivided into human-to-computer interface specifications for ordinary users or consumers, such as the menu command structure in Lotus Development Corp. v. Borland Int’l, Inc., 49 F.3d 807 (1st Cir. 1995), and the human-to-computer interface specifications for programmers involved in Google v. Oracle.
The Java API consists of both declaring code and implementing code. “The declaring code both labels the particular tasks in the API and organizes those tasks, or ‘methods,’ into ‘packages’ and ‘classes.’ We have referred to this organization, by way of rough analogy, as file cabinets, drawers, and files.” The implementing code then “actually instructs the computer on the steps to follow to carry out each task.” Finally, each of the names specified in the declaring code becomes a “method call,” the words that a computer programmer uses to invoke the program that executes the method or task. For example, to compare two numbers and determine which is the larger, the programmer would invoke (or “call”) the method by using the name “java.lang.math.max” (which indicates the “lang” package, the “math” class, and the “max” method). The Java API is organized into 166 packages, thousands of classes, and tens of thousands of methods.
The majority opinion notes that “No one claims that the decisions about what counts as a task are themselves copyrightable—although one might argue about decisions as to how to label and organize such tasks (e.g., the decision to name a certain task ‘max’ or to place it in a class called ‘Math’).” The names of each individual method are not likely to be meet the test for originality and individual names are not protected by copyright in any event. Instead, only a selection and arrangement of names can be protected. Java’s selection and arrangement was undoubtedly original under Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 111 S. Ct. 1282 (1991). But critically, programmers don’t use the names for their expressive content; they use the names in order to accomplish functional tasks. The result is very much like a QWERTY keyboard that uses names instead of letters for each key; the value lies in standardization, or network economic effects, rather than in the expressive value of the words chosen.
Additionally, from the point of view of economic policy, it would make much more sense to allow everyone to use the “standardized” method of operation, and to let them compete on different implementations of it. In his concurring opinion in the Lotus v. Borland case, Judge Boudin described and confronted the standardization problem directly. Judge Boudin concurred in the holding that the menu command structure in Lotus was not copyrightable as a “method of operation”.
The Pyrotechnics Case
In Pyrotechnics Mgmt. v. Xfx Pyrotechnics Llc & Firetek, the U.S. District Court for the Western District of Pennsylvania granted a preliminary injunction in a copyright infringement claim over certain command codes for digital pyrotechnics firing systems. Plaintiff Pyrotechnics Management Inc. (Pyrotechnics) manufactures digital pyrotechnics firing systems that are used to create fireworks displays, the software for which is authored by Pyrotechnics as the sole owner of all copyrights. Pyrotechnics alleged claims of copyright infringement of its command codes against Defendants fireTEK and XFX. fireTEK is a foreign competitor of Pyrotechnics, with XFX as its local distributor in the United States. Pyrotechnics Mgmt. v. Xfx Pyrotechnics Llc & Firetek, Civil Action No. 2:19-cv-00893, 2021 U.S. Dist. LEXIS 45739 (W.D. Pa. Mar. 11, 2021).
For software copyright infringement claims, courts should properly look to whether a computer functionality meets the statutory definition of a “computer program” in 17 U.S.C. §101 or falls within the scope of one of Section 102(b)’s exclusions. Here, the FireOne (Plaintiff) field modules are electrically connected to the pyrotechnic products that get activated through the use of FireOne’s command/control protocol (the “Protocol”). The Protocol enables the operator to use the FireOne control panel and FireOne field modules to execute fireworks displays in which fireworks are ignited in a particular order and at specific times.
The command codes of the Protocol, therefore, are a good example of a “system” or “method of operation” and hence excluded from copyright protection under Section 102(b). In fact, the facts of this case are analogous to the facts in Lotus v. Borland, where the court held that whether “Lotus developers could have designed the Lotus menu command hierarchy differently is immaterial to the question of whether it is a ‘method of operation’ … The ‘expressive’ choices of what to name the command terms and how to arrange them do not magically change the uncopyrightable menu command hierarchy into copyrightable subject matter.”
Firstly, this is yet another example of a district court treating Oracle Am., Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014) (“Oracle I”) (which stands unaffected by the Google decision) as the primary copyright authority to be followed—even where the case does not include any patent claims and will therefore never end up before the Federal Circuit. This is especially problematic when the root issue in the case was to discern the copyrightability of the functional aspects of computer programs under 17 U.S.C. § 102(b) and given that Oracle I obfuscates the proper test for evaluating copyrightability under 17 U.S.C. § 102(b). The Pyrotechnics opinion specifically states, “where there are a variety of program structures through which an idea can be expressed, the structure and organization of a computer program, in addition to its object and source codes, are protected by copyright law,” citing Oracle I for the proposition that the structure, sequence, and organization of a computer program is eligible for copyright protection even where it qualifies as an expression of an idea.
The court failed to note, however, that in the same opinion, the Federal Circuit had also discussed the mandate of Section 102(b)—that copyright protection does not “extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied.” When cited in conjunction (as was the case here) with Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., where the court ruled that everything about a program excepts its basic functionality was protectable expression, it renders virtually all aspects of a program protectable, in turn, making the statutory exceptions for copyright protection under Section 102(b) toothless. However, even in Whelan, the court had noted that copyright protection was available to non-literal elements of the code unless there was only one way (or very few ways) to achieve that functionality, in which case the idea and its expression were merged, and no protection was available.
Secondly, even under the broad reading of Whelan, an application with command codes for operating fireworks display is the classic case of a necessary incident for the function of a utilitarian work, and hence properly excluded under the principles of Baker v. Selden and Section 102(b). In Whelan, the court applied the Baker v. Selden test and held that the line between idea and expression may be drawn with reference to the end sought to be achieved by the work in question. Here, the end sought to be achieved was remote ignition of Pyrotechnic products, such as fireworks. Specifically, in response to commands, the FireOne control panel uses the Protocol to communicate to one or more FireOne field modules so as to cause the FireOne field module to execute certain predefined functions to ignite pyrotechnic products that are electrically connected to the FireOne field modules.
Here, the Protocol was integral to the function and hence excluded under the Baker test. The Pyrotechnics court’s faulty reasoning is evident from its own language in the opinion, “the Protocol’s command signals are copyright protected because they are integral to the function of the Plaintiff’s FireOne firing system and are not merely a lock-out subroutine that is intended to frustrate connections with unauthorized devices.” In its opinion, the Pyrotechnics court acknowledged the purpose or function of the Protocol is to communicate between the FireOne control panel and the FireOne field module to permit the remote ignition of fireworks. (Findings of Fact (“FOF”), ¶¶ 21-23.) But, still, it went on to hold that the particular code and command structure embodied in the protocol is not necessary to achieve that purpose, as FireOne chose command code expressions and arranged them in a unique sequence to create an original data stream.
Finally, the kind of assertion made in this case is not within the metes and bounds of harm contemplated by copyright laws nor within the economic policy interests served by this law. Especially when the purpose of the command codes is to control Pyrotechnics’ proprietary hardware, specifically to control its field modules, and when the FSK message format in use for doing so is industry standard. Awarding copyright protection in such a case would be against the very purpose of enriching the general public through access to creative works that copyright laws serve. As the Supreme Court has reiterated in its case law, it is peculiarly important that the boundaries of copyright law are limited in nature and must ultimately be demarcated as clearly as possible to serve the public good. See Fogerty v. Fantasy, Inc., 510 U.S. 517, 526-27 (1994) (citing Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984)).
In Dismissing the Copyright Question, the Court Failed to Provide Clarity
In sum, the Federal Circuit erroneously claimed that Section 102(b) simply “codified” the “idea/expression dichotomy.” The court then asserted that the statute permits copyright protection if “the author had multiple ways to express the underlying idea.” And lower courts increasingly rely on Oracle 1 and reach faulty outcomes. This most recent elucidation of this effect underscores the importance of the decision in Google v. Oracle, where the Supreme Court in failing to address the issue of copyrightability has not provided the much-needed clarity that industry was hoping for on the interplay of Section 102(a) and (b)—a distinction which has long been blurred by Oracle 1— and which continues to be good law.
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