IP Frontiers: Ruling on copyright protection of software designs

Even as the Supreme Court grapples with patent protection of computer software, a decision in a recent case by a key federal appeals court may enhance copyright protection of software designs. In Oracle v. Google, decided May 9, the United States Court of Appeals for the Federal Circuit reversed a California district court’s finding that an applications programming interface (API) for software is not entitled to copyright protection, Oracle America, Inc. v. Google, Inc., No. 2013-1021/1022 (Fed. Cir. May 9).

The Court of Appeals, in a comprehensive opinion, held that so-called declaration source code, along with structure, sequence and organization of a software API, is entitled to copyright protection.

Computer programs, defined by the Copyright Act as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result” are literary works that may be entitled to copyright protection. The dispute in this case concerns the copyrightability of the applications programming interface of software, not an entire computer program.

Previous cases, tracing back to Computer Associates v. Altai,  cited by the district court, had cast doubt on the copyrightability of the structure, sequence and organization of software, Computer Associates Int’l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992).

If upheld and adopted by other federal courts, this ruling may breathe new life into copyright protection of software. Potential implications for software developers are significant, because a software API largely codifies the design of the software, without revealing the implementation details. Software developers may therefore be able to protect their designs through copyrights on the API, which includes, for example, the definition of data structures, functions, objects, classes and methods.

Further, the Court of Appeals decision may implicate software that was designed by reverse engineering of a widely used API. Indeed, in the case, Google reverse engineered the Java API, after failing to come to licensing terms with Oracle to include Java in Google’s popular Android mobile phone platform.

Software vendors and business who use such reverse engineered software may find themselves accused of copyright infringement by copyright holders. Another consequence of the decision may be that software developers will be able to seek copyright protection of APIs and designs, without disclosing implementation source code, which may then be protected as trade secrets.

In addition, the Court of Appeals explained that software, including software APIs, may be eligible for both copyright and patent protection. Quoting 60-year old Supreme Court precedent, the court stated that “neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted.” Therefore, numerous options may be available for software owners seeking to optimize protection of their software intellectual property, including simultaneous patent, copyright and trade secret protection.

The Oracle v. Google litigation traces its roots to the early days of the Internet, when Sun Microsystems, later acquired by Oracle, introduced the Java platform in 1990. A key benefit of the Java platform is that it enables software developers to write software one time. The software may then be run on many different platforms without further development.

This benefit is enabled by the use of a Java virtual machine on each platform, which offers a common Java API to be invoked by the software. As many Internet users are aware, this architecture allows a Java based application to run on, for example, any Web browser, such as on a PC, Mac or mobile device.

In order to enable the Java platform, developers at Sun Microsystems designed the Java API. An applications programming interface defines how software components, such as applications, interact with one another. Software APIs are prevalent across multiple platforms. Some other examples include Apple’s iOS platform, Microsoft’s Windows platform, databases and other servers.

Object-oriented software APIs, such as the Java API, define data structures, methods and hierarchical relationships for a set of objects. At issue in the case are 37 of the Java API packages. These Java API packages include definitions of 36 classes, 20 subclasses and 362 methods (or functions). These Java API packages include interfaces for Java applications to make use of, for example, language, text, fonts, security, networks and other common features needed in typical applications.

In the court below, the district court found that the structure, sequence and organization of the Java API packages is creative and original. Nevertheless the district court determined that because it is a “system or method of operation” it cannot be copyrighted, relying on a 1995 case from the Boston-based Court of Appeals for the First Circuit, Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807 (1st Cir. 1995) aff’d, 516 U.S. 233 (1996).

The Lotus case reached the Supreme Court, but was affirmed without opinion by an equally divided court, and therefore is not binding precedent on California courts or the Federal Circuit. In distinguishing the Lotus case, which involved copying of the command hierarchy for the text-based Lotus 1-2-3 spreadsheet program, the Court of Appeals for the Federal Circuit explained that the Lotus court found that the command hierarchy was not creative, unlike the district court’s finding that the Java API is creative and original.

The Court of Appeals further took issue with Google’s interoperability argument, which was accepted by the district court. The district court found that copying the Java API packages enabled interoperability, undermining copyrightability of the Java API. The Court of Appeals disagreed, but stated that the interoperability argument may work in favor of a fair use defense for Google. The Court of Appeals also rejected Google’s argument that the Java API elements in question were merely short phrases unworthy of copyright protection, noting that 7,000 lines of source code were at issue in the case. The court further noted that, for example, a Charles Dickens novel also consists of a series of short phrases.

The Court of Appeals remanded the case for evaluation of Google’s fair use defense, which was not previously resolved. In addition, Google may still seek a rehearing by the en banc Court of Appeals, or may seek review by the United States Supreme Court.

The decision in this case comes at a time when a cloud of uncertainty hangs over the specific details of software patentability. On March 31, the Supreme Court heard oral arguments in Alice Corporation Pty. Ltd. v. CLS Bank International to determine whether claims to computer-implemented inventions are patent eligible, Alice Corporation Pty. Ltd. v. CLS Bank International, 717 F.3d 1269 (Fed. Cir. 2013) cert. granted, 134 S. Ct. 734 (2013). A decision in that case is expected by this summer.

Regardless of the Supreme Court’s decision in Alice, the Court of Appeal’s decision in Oracle v. Google could have a far reaching impact on intellectual property protection of software, due to its conclusion that software design, as embodied in an API, may have the requisite elements of original expression of creativity deemed worthy of copyright protection under U.S. copyright laws.

Naresh K. Kannan is an associate attorney with Heslin Rothenberg Farley & Mesiti P.C. He can be reached via email at [email protected], or at (518) 452-5600.