Oracle Concedes it Cannot Claim Copyright in the Idea of Organizing Functions of a Computer Program

2. The Structure, Sequence, and Organization of the API Packages

The district court found that the SSO of the Java API packages is creative and original, but nevertheless held that it is a “system or method of operation . . . and, therefore, cannot be copyrighted” under 17 U.S.C. § 102(b). Copyrightability Decision, 872 F. Supp. 2d at 976-77. In reaching this conclusion, the district court seems to have relied upon language contained in a First Circuit decision: Lotus Development Corp. v. Borland International, Inc., 49 F.3d 807 (1st Cir. 1995), aff’d without opinion by equally divided court, 516 U.S. 233 (1996).[9]

In Lotus, it was undisputed that the defendant copied the menu command hierarchy and interface from Lotus 1- 2-3, a computer spreadsheet program “that enables users to perform accounting functions electronically on a computer.” 49 F.3d at 809. The menu command hierarchy referred to a series of commands—such as “Copy,” “Print,” and “Quit”—which were arranged into more than 50 menus and submenus. Id. Although the defendant did not copy any Lotus source code, it copied the menu command hierarchy into its rival program. The question before the court was “whether a computer menu command hierarchy is copyrightable subject matter.” Id.

Although it accepted the district court’s finding that Lotus developers made some expressive choices in selecting and arranging the command terms, the First Circuit found that the command hierarchy was not copyrightable because, among other things, it was a “method of operation” under Section 102(b). In reaching this conclusion, the court defined a “method of operation” as “the means by which a person operates something, whether it be a car, a food processor, or a computer.” Id. at 815.[10] Because the Lotus menu command hierarchy provided “the means by which users control and operate Lotus 1-2-3,” it was deemed unprotectable. Id. For example, if users wanted to copy material, they would use the “Copy” command and the command terms would tell the computer what to do. According to the Lotus court, the “fact that Lotus developers could have designed the Lotus menu command hierarchy differently is immaterial to the question of whether it is a ‘method of operation.’” Id. at 816. (noting that “our initial inquiry is not whether the Lotus menu command hierarchy incorporates any expression”). The court further indicated that, “[i]f specific words are essential to operating something, then they are part of a ‘method of operation’ and, as such, are unprotectable.” Id.

On appeal, Oracle argues that the district court’s reliance on Lotus is misplaced because it is distinguishable on its facts and is inconsistent with Ninth Circuit law. We agree. First, while the defendant in Lotus did not copy any of the underlying code, Google concedes that it copied portions of Oracle’s declaring source code verbatim. Second, the Lotus court found that the commands at issue there (copy, print, etc.) were not creative, but it is undisputed here that the declaring code and the structure and organization of the API packages are both creative and original. Finally, while the court in Lotus found the commands at issue were “essential to operating” the system, it is undisputed that—other than perhaps as to the three core packages—Google did not need to copy the structure, sequence, and organization of the Java API packages to write programs in the Java language.

More importantly, however, the Ninth Circuit has not adopted the court’s “method of operation” reasoning in Lotus, and we conclude that it is inconsistent with binding precedent.[11] Specifically, we find that Lotus is inconsistent with Ninth Circuit case law recognizing that the structure, sequence, and organization of a computer program is eligible for copyright protection where it qualifies as an expression of an idea, rather than the idea itself. See Johnson Controls, 886 F.2d at 1175-76. And, while the court in Lotus held “that expression that is part of a ‘method of operation’ cannot be copyrighted,” 49 F.3d at 818, this court—applying Ninth Circuit law—reached the exact opposite conclusion, finding that copyright protects “the expression of [a] process or method,” Atari, 975 F.2d at 839.

We find, moreover, that the hard and fast rule set down in Lotus and employed by the district court here— i.e., that elements which perform a function can never be copyrightable—is at odds with the Ninth Circuit’s endorsement of the abstraction-filtration-comparison analysis discussed earlier. As the Tenth Circuit concluded in expressly rejecting the Lotus “method of operation” analysis, in favor of the Second Circuit’s abstraction-filtrationcomparison test, “although an element of a work may be characterized as a method of operation, that element may nevertheless contain expression that is eligible for copyright protection.” Mitel, 124 F.3d at 1372. Specifically, the court found that Section 102(b) “does not extinguish the protection accorded a particular expression of an idea merely because that expression is embodied in a method of operation at a higher level of abstraction.” Id.

Other courts agree that components of a program that can be characterized as a “method of operation” may nevertheless be copyrightable. For example, the Third Circuit rejected a defendant’s argument that operating system programs are “per se” uncopyrightable because an operating system is a “method of operation” for a computer. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1250-52 (3d Cir. 1983). The court distinguished between the “method which instructs the computer to perform its operating functions” and “the instructions themselves,” and found that the instructions were copyrightable. Id. at 1250-51. In its analysis, the court noted: “[t]hat the words of a program are used ultimately in the implementation of a process should in no way affect their copyrightability.” Id. at 1252 (quoting CONTU Report at 21). The court focused “on whether the idea is capable of various modes of expression” and indicated that, “[i]f other programs can be written or created which perform the same function as [i]n Apple’s operating system program, then that program is an expression of the idea and hence copyrightable.” Id. at 1253. Notably, no other circuit has adopted the First Circuit’s “method of operation” analysis.

Courts have likewise found that classifying a work as a “system” does not preclude copyright for the particular expression of that system. See Toro Co. v. R & R Prods. Co., 787 F.2d 1208, 1212 (8th Cir. 1986) (rejecting the district court’s decision that “appellant’s parts numbering system is not copyrightable because it is a ‘system’” and indicating that Section 102(b) does not preclude protection for the “particular expression” of that system); see also Am. Dental Ass’n v. Delta Dental Plans Ass’n, 126 F.3d 977, 980 (7th Cir. 1997) (“A dictionary cannot be called a ‘system’ just because new novels are written using words, all of which appear in the dictionary. Nor is word-processing software a ‘system’ just because it has a command structure for producing paragraphs.”).

Here, the district court recognized that the SSO “resembles a taxonomy,” but found that “it is nevertheless a command structure, a system or method of operation—a long hierarchy of over six thousand commands to carry out pre-assigned functions.” Copyrightability Decision, 872 F. Supp. 2d at 999-1000.[12] In other words, the court concluded that, although the SSO is expressive, it is not copyrightable because it is also functional. The problem with the district court’s approach is that computer programs are by definition functional—they are all designed to accomplish some task. Indeed, the statutory definition of “computer program” acknowledges that they function “to bring about a certain result.” See 17 U.S.C. § 101 (defining a “computer program” as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result”). If we were to accept the district court’s suggestion that a computer program is uncopyrightable simply because it “carr[ies] out pre-assigned functions,” no computer program is protectable. That result contradicts Congress’s express intent to provide copyright protection to computer programs, as well as binding Ninth Circuit case law finding computer programs copyrightable, despite their utilitarian or functional purpose. Though the trial court did add the caveat that it “does not hold that the structure, sequence and organization of all computer programs may be stolen,” Copyrightability Decision, 872 F. Supp. 2d at 1002, it is hard to see how its method of operation analysis could lead to any other conclusion.

While it does not appear that the Ninth Circuit has addressed the precise issue, we conclude that a set of commands to instruct a computer to carry out desired operations may contain expression that is eligible for copyright protection. See Mitel, 124 F.3d at 1372. We agree with Oracle that, under Ninth Circuit law, an original work—even one that serves a function—is entitled to copyright protection as long as the author had multiple ways to express the underlying idea. Section 102(b) does not, as Google seems to suggest, automatically deny copyright protection to elements of a computer program that are functional. Instead, as noted, Section 102(b) codifies the idea/expression dichotomy and the legislative history confirms that, among other things, Section 102(b) was “intended to make clear that the expression adopted by the programmer is the copyrightable element in a computer program.” H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N. 5659, 5670. Therefore, even if an element directs a computer to perform operations, the court must nevertheless determine whether it contains any separable expression entitled to protection.

On appeal, Oracle does not—and concedes that it cannot—claim copyright in the idea of organizing functions of a computer program or in the “package-class-method” organizational structure in the abstract. Instead, Oracle claims copyright protection only in its particular way of naming and organizing each of the 37 Java API packages.[13] Oracle recognizes, for example, that it “cannot copyright the idea of programs that open an internet connection,” but “it can copyright the precise strings of code used to do so, at least so long as ‘other language is available’ to achieve the same function.” Appellant Reply Br. 13-14 (citation omitted). Thus, Oracle concedes that Google and others could employ the Java language—much like anyone could employ the English language to write a paragraph without violating the copyrights of other English language writers. And, that Google may employ the “package-class-method” structure much like authors can employ the same rules of grammar chosen by other authors without fear of infringement. What Oracle contends is that, beyond that point, Google, like any author, is not permitted to employ the precise phrasing or precise structure chosen by Oracle to flesh out the substance of its packages—the details and arrangement of the prose.

As the district court acknowledged, Google could have structured Android differently and could have chosen different ways to express and implement the functionality that it copied.[14] Specifically, the court found that “the very same functionality could have been offered in Android without duplicating the exact command structure used in Java.” Copyrightability Decision, 872 F. Supp. 2d at 976. The court further explained that Google could have offered the same functions in Android by “rearranging the various methods under different groupings among the various classes and packages.” Id. The evidence showed, moreover, that Google designed many of its own API packages from scratch, and, thus, could have designed its own corresponding 37 API packages if it wanted to do so.

Given the court’s findings that the SSO is original and creative, and that the declaring code could have been written and organized in any number of ways and still have achieved the same functions, we conclude that Section 102(b) does not bar the packages from copyright protection just because they also perform functions.

[9] The Supreme Court granted certiorari in Lotus, but, shortly after oral argument, the Court announced that it was equally divided and that Justice Stevens took no part in the consideration or decision of the case. The Court therefore left the First Circuit’s decision undisturbed. See Lotus, 516 U.S. at 233-34.

[10] The Lotus majority cited no authority for this definition of “method of operation.”

[11] As Oracle points out, the Ninth Circuit has cited Lotus only one time, on a procedural issue. See Danjaq LLC v. Sony Corp., 263 F.3d 942, 954 (9th Cir. 2001) (citing Lotus for the proposition that delay “has been held permissible, among other reasons, when it is necessitated by the exhaustion of remedies through the administrative process . . . when it is used to evaluate and prepare a complicated claim”).

[12] This analogy by the district court is meaningful because taxonomies, in varying forms, have generally been deemed copyrightable. See, e.g., Practice Mgmt. Info. Corp. v. Am. Med. Ass’n, 121 F.3d 516, 517-20 (9th Cir. 1997); Am. Dental, 126 F.3d at 978-81.

[13] At oral argument, counsel for Oracle explained that it “would never claim that anyone who uses a package-class-method manner of classifying violates our copyright. We don’t own every conceivable way of organizing, we own only our specific expression—our specific way of naming each of these 362 methods, putting them into 36 classes, and 20 subclasses.” Oral Argument at 16:44.

[14] Amici McNealy and Sutphin explain that “a quick examination of other programming environments shows that creators of other development platforms provide the same functions with wholly different creative choices.” Br. of McNealy and Sutphin 17. For example, in Java, a developer setting the time zone would call the “setTimeZone” method within the “DateFormat” class of the java.text package. Id. Apple’s iOS platform, on the other hand, “devotes an entire class to set the time zone in an application—the ‘NSTimeZone’ class” which is in the “Foundation framework.” Id. at 17-18 (noting that a “framework is Apple’s terminology for a structure conceptually similar to Java’s ‘package’”). Microsoft provides similar functionality with “an entirely different structure, naming scheme, and selection.” Id. at 18 (“In its Windows Phone development platform, Microsoft stores its time zone programs in the ‘TimeZoneInfo’ class in its ‘Systems’ namespace (Microsoft’s version of a ‘package’ or ‘framework’).”). Again, this is consistent with the evidence presented at trial.