United States: Packages Of Computer Source Code Entitled To Copyright Protection

In Oracle America, Inc. v. Google Inc., Nos. 13-1021, -1022 (Fed. Cir. May 9, 2014), the Federal Circuit affirmed-in-part and reversed-in-part the district court's decision, holding that the declaring code and the structure, sequence, and organization of packages of computer source code known as "application programming interfaces," or API packages, were entitled to copyright protection.

The case stemmed from API packages in the Java programming language consisting of words and symbols that carry out various commands, and which Oracle America, Inc. ("Oracle") licenses to software developers to write applications, or "apps," for computers, tablets, smartphones, and similar devices.  The Java system was originally created by Oracle's predecessor, Sun Microsystems, Inc. ("Sun"), in 1996.  Sun wrote multiple "ready-to-use" Java API programs, which it organized into "packages."  These prewritten shortcuts allow programmers to include certain functionality into their own programs without having to create new code from scratch.  Each package contains "classes" that consist of code for specific functions known as "methods."  For example, one package at issue was "java.lang," which contains a class called "math," whose method instructs a device to find the larger of two numbers.  Adopting the district court's analogy, the Federal Circuit explained, "Oracle's collection of API packages is like a library, each package is like a bookshelf in the library, each class is like a book on the shelf, and each method is like a how-to chapter in a book."  Slip op. at 7.  Each package also contains declaring code, or the expression that "identifies the prewritten function" and "command[s] the computer to execute the associated implementing code," which gives step-by-step instructions to carry out the function.  Id. at 8.

At issue on appeal were thirty-seven API packages whose declaring code Google Inc. ("Google") admittedly copied verbatim into its then-new software platform, Android.  In bringing its copyright infringement claims, Oracle argued that its 7,000 lines of declaring source code and nonliteral elements of the thirty-seven Java API packages were protectable by copyright law.  In its opinion, the Court sifted through a number of issues at hand, particularly focusing on answering the ultimate question of "whether [the] elements of the Java platform are entitled to copyright protection."  Id. at 15.

In addressing copyrightability generally, the Court reiterated that protection can extend to literal and nonliteral elements of a computer program.  For instance, protection can extend to source and object code, and also to a program's sequence, structure, organization, and interface.  Additionally, the Court noted that the district court failed to apply the "abstraction-filtration-comparison" test, which is to be used when assessing the protectability of nonliteral elements of a computer program.  The three steps of the test require the court to (1) break down the allegedly infringed program into structural parts; (2) sift out ideas and all other nonprotectable material; and (3) compare any remaining creative expression with the allegedly infringing program.  In applying the test, the Court agreed with Oracle's argument that the Java API packages are expressive and could have been written and organized in varying ways to achieve the same functions; thus, they are—and were—entitled to protection.  The Court also agreed and explained that the district court erred when it "(1) concluded that each line of declaring code is uncopyrightable because the idea and expression have merged; (2) found the declaring code uncopyrightable because it employs short phrases; (3) found all aspects of the structure, sequence, and organization devoid of protection as a 'method of operation' under 17 U.S.C. § 102(b); and (4) invoked Google's 'interoperability' concerns in the copyrightability analysis."  Id. at 26.

"Whether Google's software is 'interoperable' in some sense with any aspect of the Java platform . . . has no bearing on the threshold question of whether Oracle's software is copyrightable."  Slip op. at 50.

The Court held that the merger doctrine was incorrectly applied by the district court, and that the district court did not focus on the options available to an original author.  The Court explained that the merger doctrine is an exception to the "idea/expression dichotomy"—which does not extend copyright protection to any "idea, procedure, process, system, method of operation, concept, principle, or discovery."  Id. at 18 (quoting 17 U.S.C. § 102(b)).  Instead, under the merger doctrine, if there are only a few ways to express an idea, the idea essentially "merges" with the expression and thus becomes unprotectable.  In this case, the Court held that the merger doctrine was inapplicable because the Ninth Circuit had previously determined that the distinctive arrangement of a computer program does not merge with the process if alternate expressions are available.  The Court recognized that the Android class names and methods could have been different from the names used by Java, and still could have worked.  For example, "java.lang.Math.max" could have instead been named "Arith.larger."  If Java's authors only had a limited number of ways to express the methods and classes, then the idea likely would have "merged" with the expression, making the packages unprotectable, but the Court held that they did not and, thus, the merger doctrine was inapplicable.

The Court also held that the district court erred in concluding that Oracle's declaring codes were uncopyrightable because they were short phrases.  Although, under 37 C.F.R. § 202.1(a), words and short phrases such as "names, titles and slogans" are unprotectable under copyright law, the relevant inquiry is whether the manner in which a short phrase is strung together and used is creative, the Court noted.  The Court further noted that Oracle is not seeking protection for single phrases, but short phrases strung together.  Because an original "combination" of words can be copyrightable, the Court held that the district court erred in finding that the programs were unprotectable short phrases.

In addition, the Court reviewed the scenes a faire doctrine.  This doctrine states that if an expressive element is standard or common to a topic or setting, that element of a work of authorship is not by itself subject to copyright protection.  In the district court, Google argued that this doctrine applied because the programs were customarily used in the industry.  But the district court rejected this defense, holding that there was not sufficient evidence to assert that all of the classes and their contents were subject to the doctrine.  The Federal Circuit affirmed, holding that (1) the doctrine is not part of a copyrightability analysis, but rather a defense to infringement; (2) Google did not object to the district court's conclusion that the factual record was not sufficient on this issue; and (3) a scenes a faire analysis must focus not on the alleged copier, but on the external factors faced by the author when first creating the work at issue.

The Court also reversed the trial court's determination that the sequence, structure, and organization of the Java API packages were a "method of operation," or solely served functional purposes, and thus unprotectable.  The Court noted that the district court wrongly applied 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), which did not involve the copying of source code, but rather the copying of a menu command hierarchy with terms such as "Copy," "Print," and "Quit."  Slip op. at 37-38 (quoting Lotus, 49 F.3d at 809).  Unlike the court in Lotus, the Federal Circuit noted that Ninth Circuit law recognizes that the structure, sequence, and organization of a computer program is protectable when deemed an expression, and that computers by their definition by Congress are functional.  Thus, denying protection to a computer program simply because it is functional would be against Congress's intent to provide protection to computer programs, and, thus, if a set of commands instructing a computer to carry out an operation contains a creative "expression," it may be entitled to protection.

The Court also agreed with Oracle that the district court improperly included interoperability in its copyright analysis.  On appeal, Google had maintained that its use of the "Java class and method names and declarations was 'the only and essential means' of achieving a degree of interoperability with existing programs written in the [Java language]."  Id. at 50 (alteration in original) (citation omitted).  However, the Court noted that "[w]hether Google's software is 'interoperable' in some sense with any aspect of the Java platform . . . has no bearing on the threshold question of whether Oracle's software is copyrightable."  Id.  The Court did find that Google's competitive objective may be relevant to a fair use inquiry. 

In addressing additional points, the Federal Circuit acknowledged the four statutory factors to be considered when determining if a particular use is fair.  At the lower court, the jury was hung on Google's fair use defense and a new trial was denied.  The Federal Circuit ultimately decided that the record contained insufficient facts on which it could base a de novo assessment of Google's assertion of fair use; thus, the issue was remanded.  The Court also affirmed the district court's decision to grant Oracle's motion for JMOL in regards to "eight decompiled Java files that Google copied into Android" and which contain security functions, and affirmed the district court's decision to deny Google's motion for JMOL in regards to nine lines of "rangeCheck" code because copying was "more than de minimis." Id. at 62-66. 

*Danielle Wright is a Summer Associate at Finnegan.

Judges:  O'Malley (author), Plager, Taranto

[Appealed from N.D. Cal., Judge Alsup]

This article previously appeared in Last Month at the Federal Circuit, June, 2014.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
27 Jan 2019, Other, Washington, DC, United States

Finnegan is a sponsor of the Association of Corporate Patent Counsel Winter Meeting. Finnegan partner Erika Arner will join the panel discussion “PTAB Review & Litigation.”

27 Jan 2019, Other, Florida, United States

Finnegan is a sponsor of the Association of Corporate Patent Counsel Winter Meeting. Finnegan partner Erika Arner will join the panel discussion “PTAB Review & Litigation.

28 Jan 2019, Other, Washington, DC, United States

Finnegan is a Gold sponsor of IAM Magazine’s second annual Pharma & Biotech IP Summit. Finnegan partner Anthony Tridico will moderate the panel discussion “Overcoming the Barriers to Building a Successful IP Business Strategy.”

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions