Part VI: Everything That’s Old Is New Again (but it’s Still Overruled)

Last time, we examined Oracle’s strategy to overcome certain doom under the abstract-filter-compare test: pull back and look at the big picture. In other words, don’t focus on the line-by-line computer code, but look at the Java API as a whole—how the “methods” (individual programs that comprise the API) are organized and named.

The problem was that, even with the change in perspective, Oracle had serious problems under the abstract-filter-compare test because one of the things you’re supposed to filter out is expression required for interoperability or compatibility. As it turns out, the way the Java API was organized had everything to do with interoperability and compatibility. If you grant copyright to the way the API is organized internally, you’d interfere with the ability of programmers to program in Java, or, really, for anyone to use Java.

So Oracle needed a new test. And it turns out, if you go back far enough, you’ll find a test for determining infringement of copyright in software that is much friendlier to Oracle. It is from decision known as Whelan. But first, a short history lesson.

Computer software has been explicitly protected by the Copyright Act since 1980, and it’s been an important business since at least the mid 1980’s. It is surprising, therefore, that we know very little about how to draw a distinction between unprotectable functionality and protectable expression. Congress, in explicitly protecting computer code in 1980, knew that drawing this line would be very difficult under the Merger Doctrine, and it deliberately punted the issue to the courts: “Should a line need to be drawn to exclude certain manifestations of programs from copyright, that line should be drawn on a case-by-case basis by the institution designed to make fine distinctions—the federal judiciary.”

* From the 1978 CONTU report, whose recommendations Congress adopted in 1980. The federal judiciary is reported to have responded to the report as follows: “Gee, thanks!”

The first case involving the copyrightability of software to reach a federal court of appeals (i.e., to have any kind of precedent) was Whelan Associates v. Jaslow Dental Laboratory, decided by the Third Circuit way back in 1986. The judge in the Oracle v. Google case aptly summarized that decision as follows:

In that case, the claimant owned a program, Dentalab, that handled the administrative and bookkeeping tasks of dental prosthetics businesses. The accused infringer developed another program, Dentcom, using a different programming language. The Dentcom program handled the same tasks as the Dentalab program and had the following similarities:

The programs were similar in three significant respects . . . most of the file structures, and the screen outputs, of the programs were virtually identical . . . five particularly important “subroutines” within both programs — order entry, invoicing, accounts receivable, end of day procedure, and end of month procedure — performed almost identically in both programs.

On these facts, the district court had found, after a bench trial, that the accused infringer copied the claimant’s software program.

On appeal, the accused infringer argued that the structure of the claimant’s program was not protectable under copyright. In rejecting this argument, the court of appeals created the following framework to deal with non-literal copying of software:

[T]he line between idea and expression may be drawn with reference to the end sought to be achieved by the work in question. In other words, the purpose or function of a utilitarian work would be the work’s idea, and everything that is not necessary to that purpose or function would be part of the expression of the idea.

Applying this test, Whelan found that the structure of Dentalab was copyrightable because there were many different ways to structure a program managed a dental laboratory:

[T]he idea of the Dentalab program was the efficient management of a dental laboratory (which presumably has significantly different requirements from those of other businesses). Because that idea could be accomplished in a number of different ways with a number of different structures, the structure of the Dentalab program is part of the program’s expression, not its idea.

The phrase “structure, sequence and organization” originated in a passage Whelan explaining that the opinion used those words interchangeably and that, although not themselves part of the Act, they were intended to capture the thought that “sequence and order could be parts of the expression, not the idea, of a work.”

The crucial difference between Whelan’s SSO test and Computer Associates’ AFC test is where the line between idea and expression is drawn. Whelan tells us that the program’s purpose is its idea, and everything less abstract than that is protectable expression. If there’s more than one reasonable way to structure a computer program, there is copyright protection in that structure.

Two Teensy Problems with Whelan: Overbroad & Overruled

While this doesn’t give patent-like protection to the program—there are, after all, by definition different ways to achieve the same result—it gives very broad protection. If there were, say, only two good ways to structure a computer program for a given operating system, then two companies could monopolize that class of program for a very long time—effectively forever, given the speed at which software innovates.

And what if one structure is far better than the others, though they be reasonable? And what if one of copyright holders is very large, with very deep pockets, and willing to sue to anyone who tries to develop a new structure for the same type of software, on grounds that the interloper “must” be using a similar structure?*

* There’s a weird consequence from the Computer Associates AFC test. Efficient structures might not receive copyright protection when inefficient structures do because efficiency is something that should be filtered out. That’s a fairly perverse incentive, but necessary precisely so someone can’t monopolize the best way to structure a program. The good news is that I don’t know of any software engineers who deliberately avoid efficiency (i.e., efficiency has so many built-in advantages that this perverse incentive doesn’t matter much).

Although the Oracle v. Google judge spent a lot of time discussing Whelan and tracing the history of the Whelan (SSO) and Computer Associates (AFC) tests, he didn’t really have a choice about which test to apply. That’s because Oracle v. Google was heard in the Northern District of California, and the Northern District of California must apply the law of the Ninth Circuit, and the judge regarded the Ninth Circuit as having come down on the AFC test:

[T]he development of the law reveals a trajectory in which enthusiasm for protection of “structure, sequence and organization” peaked in the 1980s, most notably in the Third Circuit’s Whelan decision. That phrase has not been re-used by the Ninth Circuit since Johnson Controls in 1989, a decision affirming preliminary injunction. Since then, the trend of the copyright decisions has been more cautious. This trend has been driven by fidelity to Section 102(b) [i.e., the idea-expression dichotomy] and recognition of the danger of conferring a monopoly by copyright over what Congress expressly warned should be conferred only by patent. This is not to say that infringement of the structure, sequence and organization is a dead letter. To the contrary, it is not a dead letter. It is to say that the Whelan approach has given way to the Computer Associates approach, including in our own circuit. See Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510, 1525 (9th Cir. 1992); Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1445 (9th Cir. 1994).

Sega, in fact, comes right out and accepts Computer Associates over Whelan—very soon, in fact, after Computer Associates was decided. Here’s what Sega had to say about Whelan: “The Whelan rule, however, has been widely—and soundly—criticized as simplistic and overbroad.” About Computer Associates, it had this to say. “In our view, in light of the essentially utilitarian nature of computer programs, the Second Circuit’s approach [in Computer Associates] is an appropriate one.” Apple* reached a similar conclusion, but more obliquely (and was a lot more polite to Whelan, damning it with faint praise).

* This is the case in which Apple tried to stop the Windows 3.0 on grounds on grounds that Windows infringed the “look and feel” of Apple’s graphic user interface (GUI). Contrary to popular belief, the court didn’t decide whether GUIs are subject to copyright protection. It seemed to assume that it was, but held it was nevertheless subject to “dissection” to separate protectable from non-protectable elements—another way of describing the Computer Associates AFC test. The court’s decision was made much easier by the fact that Microsoft had actually licensed Apple’s GUI way back in 1985, at a time when copyright protection for software seemed much broader. When the court filtered out all of the licensed elements, what was left over wasn’t protectable. Note that Apple couldn’t claim ownership (as by patent) of the idea of a GUI, since it got the idea, somewhat famously, from Xerox PARC.

Do I need to ask, “What was Oracle suing about?” for a fourth time? Yeah, I think I do. How likely was it that a court, especially a court in the Ninth Circuit, was going to follow Whelan? To be fair, Oracle wasn’t trying to get the court to adopt Whelan—an impossibility under Sega, anyway—but was trying to reinterpret a number of Ninth Circuit decisions to reach a Whelan-like result. Oracle’s lawyers gave it their all, but seriously, what were the odds they were going to succeed? Was Oracle just tilting at windmills?

If I can manage it, I’ll have some final thoughts about the Oracle v. Google decision on the copyrightability of APIs, next time.

Thanks for reading!

Rick Sanders

Rick is an intellectual-property litigator. He handles lawsuits, arbitrations, emergency injunctions and temporary restraining orders, opposition and cancellation proceedings, uniform dispute resolution proceedings (UDRPs), pre-litigation counseling, litigation avoidance, and other disputes, relating to copyrights, trademarks, trade secrets, domain names, technology and intellectual-property licenses, and various privacy rights. He has taught Copyright Law at Vanderbilt University Law School. He co-founded Aaron | Sanders with Tara Aaron-Stelluto in 2011.