SAN FRANCISCO — It was an iconic moment in what was billed in 2012 as the “World Series of IP cases.” Google lawyer Robert Van Nest wheeled a file cabinet into court to make the point that Oracle’s Java source code merely created a system of organization, which is not eligible for copyright.

Now, as the first jury trial in the smartphone wars goes up on appeal, his opponent, E. Joshua Rosenkranz, has conjured Ann Droid, a fictitious publisher who steals the chapter titles and topic sentences from every paragraph of a Harry Potter novel.

“Defendant Google Inc. has copied a blockbuster literary work just as surely, and as improperly, as Ann Droid,” Rosenkranz writes in Oracle’s appellate brief.

Van Nest and Rosenkranz will be arguing to the U.S. Court of Appeals for the Federal Circuit on Dec. 4, but it’s clear they also held in mind public opinion—or at least the software industry’s—as they staked out positions in this technology holy war.

Oracle, which once claimed the case was worth $6 billion, warns that U.S. District Judge William Alsup declared a “manifesto of software exceptionalism” last year that effectively strips copyright protection from all computer software. Oracle’s amici curiae include former U.S. Copyright Registrar Ralph Oman, who calls Alsup’s 41-page decision “outcome-driven,” and Oracle frenemy Microsoft, which declares the ruling “fundamentally flawed.”

Google replies that the Java application programming interface is not a work of imaginary fiction like Harry Potter. The APIs, as they’re known, simply create a “command structure” that ensure interoperability with widely used Java programs, and therefore are a “method of operation” excluded from copyright by Section 102(b) of the Copyright Act, Van Nest says.

Free use of APIs is critical to the continued development of software, particularly in the cloud computing and mobile device market, say Google amici Rackspace Inc. and Stack Exchange.

“Letting one company copyright APIs would be like letting one company have a monopoly on the use of the + sign,” Stack Exchange CEO Joel Spolsky has said.

Media coverage of the Oracle v. Google trial was so intense that Alsup ordered the tech titans to reveal the names of any commentators on company payrolls. The case is still generating heat on Silicon Valley blogs. Florian Mueller, an Oracle consultant, has criticized Google’s “extremely broad and almost borderless definition of interoperability” on his FOSS Patents blog, while TechCrunch columnists have cast Oracle’s supporters as “defending the aging Empire from the startup Foundation.”

Things could get hot at the lectern too. Google accuses Oracle of trying the case on one theory—that the nonliteral “structure, sequence and organization” of its source code was infringed—but now arguing on appeal that Google illegally copied the actual lines of code. “Any asserted error regarding those 7,000 lines is both harmless and waived,” Van Nest insists.

Oracle sticks by the argument in its reply brief, calling Google’s waiver argument “absurd.”

While the case presents 21st century issues of smartphone technology, it could also become the final chapter in a 23-year-old Silicon Valley copyright drama. Google is relying in part on Lotus Development v. Borland International, 49 F.3d 807, a 1995 First Circuit ruling which held that the structure of a computer menu was not copyrightable. With Justice John Paul Stevens recused, the U.S. Supreme Court split 4 to 4 on the issue.

“Until another computer copyright case reaches the Supreme Court,” Lyle Denniston wrote for the Baltimore Sun in 1996, Lotus would control copyright disputes over computer commands.

Seventeen years later, that day has yet to arrive.

CREATIVE, ORIGINAL AND NOT COPYRIGHTABLE

If the Oracle-Google trial was the World Series, then spring training got under way in 2005, when Google acquired the Android operating system and decided it needed a mobile version of Java.

Google wanted programmers who were familiar with Java source code, naming conventions and organization to write applications for Android. The company tried to negotiate a license with Oracle, which had obtained the Java rights by acquiring Sun Microsystems Inc. When negotiations failed, Google copied the names and functions of 37 Java API packages but developed its own code to implement the instructions set forth by the packages.

After a six-week trial a jury found Google had committed infringement while deadlocking on fair use. But Alsup had reserved the core issue of copyrightability to the court. Because the API code is strictly functional, Alsup concluded, it is not copyrightable under §102(b) of the Copyright Act, which excludes any “procedure, process, system [or] method of operation,” among other things.

“Yes, it is creative. Yes, it is original,” Alsup wrote. “But 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. For that reason, it cannot receive copyright protection—patent protection perhaps—but not copyright protection.”

CALLING for ‘the Defibrillator’

Boies, Schiller & Flexner and Morrison & Foerster represented Oracle at trial. On appeal the company is turning to Orrick’s Rosenkranz, who was dubbed “The Defibrillator” by The American Lawyer last year for resuscitating flatlining cases. Rosenkranz just persuaded the Federal Circuit to revive two smartphone patents that Apple had asserted against Google’s Motorola Mobility Inc. at the International Trade Commission. He also scored big copyright wins before the U.S. Supreme Court and the Ninth Circuit last year. Joining Rosenkranz are Orrick partners Mark Davies, who teamed up with him in the Apple case, and Annette Hurst, who was with Rosenkranz on the Supreme Court and Ninth Circuit cases.

The Java APIs, Rosenkranz argues in Oracle’s brief, are “the programming equivalent of a magnum opus—an intensely creative endeavor involving thousands of subjective and intuitive, even artistic, judgments” about how to appeal to programmers. Sun and Oracle invested hundreds of millions in developing them and had every right to license them on their terms, including the requirement that new works be compatible with the Java platform, Rosenkranz says. This was known as Java’s “Write Once, Run Anywhere” credo.

But Google instead lifted 7,000 lines of declaring code, which Rosenkranz compares to the chapter headings and topic sentences in a novel. Google then “paraphrased” the remainder of the text, he says. The result is that a company like Amazon, which bought a Java Commercial License for the Kindle, now runs the Amazon Kindle Fire on Android.

“Google,” Rosenkranz writes, “replaced ‘write once, run anywhere’ with ‘write once, run only on Android.’”

If Alsup is right that “commands to carry out pre-assigned functions” cannot be copyrighted, Rosenkranz argues, then no software can be copyrighted.

But the Federal Circuit ruled otherwise in a 1992 decision, Atari Games Corp. v. Nintendo of America, 975 F.2d 832, Rosenkranz says. The opinion by Judge Randall Rader, now chief judge of the circuit, held that software code was protectable expression because authors selected and arranged it in an original way.

That provides “an independent basis” for reversing Alsup, Rosenkranz says, along with the judge’s mistaken conclusion that the structure, sequence and organization, or SSO, of the Java APIs were not copyrightable.

‘THIN PROTECTION’ FOR SOFTWARE

Google attorney Van Nest says Oracle is confusing expression with functionality.

“However creative and useful the Java API may be, it is fundamentally a functional, utilitarian work,” he writes. “It exists for the practical convenience of programmers. A work of imaginative fiction like Harry Potter serves no such utilitarian function.”

While Rosenkranz cites Atari, a Federal Circuit case that applied Ninth Circuit copyright law, Van Nest goes directly to the source, citing Sega Enterprises v. Accolade, 977 F.2d 1510 (1992). “The fundamental purpose of the Copyright Act,” Ninth Circuit Judge Stephen Reinhardt wrote in Sega, is “protecting the expressive elements of [original] works while leaving the ideas, facts, and functional concepts in the public domain for others to build on.”

Software, Van Nest says, is “largely functional” and therefore merits only “thin protection.” That’s why the Sega decision let a video game maker copy enough of Sega’s code to achieve interoperability with Sega’s gaming platform.

As for Rosenkranz’s “independent basis” for reversal, Van Nest smells a rat. “Sensing that its SSO claim may not be salvageable,” he writes, Oracle is angling for reversal based on the copyrightability of the code itself.

But Oracle agreed to jury instructions that focused the decision on structure, sequence and organization. “Oracle does not get a second bite at the apple if its SSO claim fails,” Van Nest writes.

Other Keker lawyers on Google’s team include appellate specialist Steven Hirsch and former Google litigation counsel Michael Kwun.

LOOPING BACK TO LOTUS?

None of the circuit precedents cited by either side is directly on point. Sega is a fair use case—its discussion of copyrightability is, arguably, dicta. Although Rader’s Atari opinion protected the computer code in question, he also noted in general that “expression dictated by external factors” such as “compatibility with other programs” would not be protectable.

There is one U.S. Supreme Court decision that could be controlling, but it is only one sentence long.

It started with a case that was its own World Series of IP in the early 1990s. “Silicon Valley Companies Large and Small Want Loosening of Copyright Protections Won by Lotus,” stated a 1993 Recorder headline after Lotus persuaded a federal judge that Borland’s Quattro Pro software infringed Lotus’ 1-2-3 spreadsheet program.

Borland’s Wilson Sonsini Goodrich & Rosati team featured Gary Reback, who would go on to fame in the Microsoft antitrust case; Peter Detkin, later of Intel and now vice-chairman at Intellectual Ventures; and Michael Barclay, now at Electronic Frontier Foundation—and amicus curiae cocounsel in Oracle v. Google. They helped persuade the First Circuit that a computer menu command hierarchy is an uncopyrightable method of operation.

When the Supreme Court handed down its one-sentence affirmance, Barclay recalls, “we were happy for the client that they won. We were sad that we didn’t get a precedent for the rest of the country. And as private practice lawyers, we were looking forward to all the work we’d be getting” as new cases raising the same issue bubbled up to the Supreme Court.

“And you know what?” Barclay says. “It just didn’t happen.”

Barclay says that’s because the legal community and the software industry accepted the First Circuit’s reasoning. Van Nest spends eight pages of his brief extolling the Lotus decision, saying Alsup’s findings “align perfectly with Lotus‘s holding.”

Oracle and Rosenkranz don’t see it that way. “No other circuit adopts the Lotus formulation and no opinion applies it to a case like this,” he writes. The Tenth Circuit has explicitly declined to follow it, and its expansive treatment of §102(b) is “undoubtedly part of the reason” the Supreme Court granted cert.

To Barclay, the silence speaks volumes.

“If it was that questionable,” Barclay says, “you would have seen another case long before now.”

Contact the reporter at sgraham@alm.com.