Judge Kathleen O'Malley, United States Court of Appeals for the Federal Circuit...courtesy photo
Judge Kathleen O’Malley, United States Court of Appeals for the Federal Circuit…courtesy photo ()

WASHINGTON — The World Series of IP cases is headed for extra innings.

A Federal Circuit panel appeared Wednesday to strongly disagree with U.S. District Judge William Alsup’s ruling last year that basic elements of the Java programming language cannot be copyrighted. That would hand a big win to Oracle, which accuses Google of stealing the so-called declaring code from its Java application program interface and riding it to spectacular success with its Android mobile operating system.

Alsup ruled that Google had limited its copying to the “command structure” of the API, and that part cannot be copyrighted. But Federal Circuit Judge Kathleen O’Malley suggested the theory was unworkable, saying it would let Google copy reams of computer code from competitors such as Apple and Microsoft. “You could take all their declaring code,” she told Google attorney Robert Van Nest of San Francisco’s Keker & Van Nest.

“If they had a program like Java … ” Van Nest began.

“What do you mean, ‘a program like Java’?” O’Malley shot back. “This would apply to every possible computer program out there.”

O’Malley and Judges S. Jay Plager and Richard Taranto repeatedly characterized Alsup’s ruling as puzzling and internally inconsistent. Specifically, the three suggested the San Francisco judge had mistakenly analyzed copyrightability under two Ninth Circuit cases—Sega Enterprises v. Accolade and Sony v. Connectix—that were focused more on fair use.

“Come on, Sega and Sony don’t say what you’re saying they say,” O’Malley told Van Nest. “I’m going to turn to fair use in a minute, and when we do that you cite Sega and Sony all you want.”

Google’s best hope Wednesday after 90 minutes of argument appeared to be remand to Alsup’s court for a decision on the fair use defense. O’Malley, Plager and Taranto all sounded skeptical of fair use, but hesitant to rule for Oracle as a matter of law.

Oracle sued Google in 2010, less than a year after acquiring the rights to Java via its acquisition of Sun Microsystems. Google had tried to negotiate a license so that programmers already familiar with Java source code, naming conventions and organization could write applications for the Android mobile operating system. After 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.

Oracle originally claimed the case was worth $6 billion, but lowered its demand to the hundreds of millions after its patent claims fizzled. A jury ruled that Google infringed Oracle’s copyright while deadlocking on fair use.

But Alsup had reserved the core issue of copyrightability to the court. Even though the API code is creative and original, Alsup concluded, it is strictly functional and therefore not copyrightable under §102(b) of the Copyright Act. That provision excludes any “procedure, process, system [or] method of operation,” among other things.

Alsup had dubbed Oracle v. Google the “World Series of IP cases.” The trial mesmerized Silicon Valley, with Alsup at one point revealing that he had learned Java coding to prepare for the case and challenging Oracle co–lead counsel David Boies’ knowledge of the subject matter.

On Wednesday, Plager noted that as a Federal Circuit judge he’s more familiar with patent law than with copyright. But he was nevertheless skeptical of Alsup’s copyright analysis. “It seems to me almost all computer code has to have a functional purpose. Otherwise, what’s the point of putting it into the code?” Plager said. “Isn’t it sort of difficult to find computer code that does not have some kind of functionality to it?”

Oracle attorney E. Joshua Rosenkranz, a partner at Orrick, Herrington & Sutcliffe, was quick to agree. “That is one of the key problems with the district court’s opinion,” he said.

Taranto suggested that what Alsup regarded as functionality could also be described as “a set of expressions” that connect names to code “so that users will have a particular experience with it.”

The Federal Circuit is bound to apply Ninth Circuit law on copyright, and Van Nest argued that Sega and Sony support Alsup’s decision. After O’Malley pushed back, Van Nest began referring to Sega, Sony and Lotus v. Borland, a 1995 First Circuit decision that said the menu command structure of a spreadsheet program could not be copyrighted. That decision was affirmed by an equally divided U.S. Supreme Court in 1996.

O’Malley told Van Nest Lotus was “your strongest case and in some ways might be the only case that really holds on all fours for what you want.” But she and Taranto also noted that Alsup found the Java declaring code highly creative. Under pressure from O’Malley, Van Nest conceded it’s “fair to say” that the code at issue in Lotus was “less developed than one would say in Java.”

The only major issue that appeared genuinely in doubt was whether to remand for another jury trial on fair use—with the copyrightability issue added into the traditional mix of factors to consider—or for the Federal Circuit to decide as a matter of law.

Rosenkranz urged the Federal Circuit to decide, or at least remand “with clear instructions.” There’s no dispute that Google’s use is commercial and nontranformative, and that it has cost Oracle market share in the mobile software space, he argued. By remanding, “all we’ll be doing is recreating the fair use record and sending it to this court again.”

But Van Nest argued there are genuine factual disputes about the fair use factors. “We expanded the market. They’re arguing, ‘No, you took away our ability to enter the market,’” he said.

Taranto said it would be difficult for the court to rule without an underlying jury verdict. On the other hand, he said, “if there are genuinely no underlying factual questions … then maybe all that’s left is a legal evaluation of those facts, In which case the question would be, ‘Why remand?’”

Contact the reporter at sgraham@alm.com.