Restoring balance to software copyrights

Our previous article addresses the substantive defects of the U.S. Court of Appeals for the Federal Circuit's rulings in the Oracle v. Apple case. This article will tackle the unanticipated fork in federal appellate jurisdiction from the Federal Circuit's arrogation to itself of a decisive role in adjudicating copyright software disputes nationwide.

Not all circuit courts are created equal. Congress granted the Federal Circuit exclusive authority to interpret patent law, but specifically required that it faithfully apply the law of regional circuits in addressing non-patent questions. By not faithfully applying 9th Circuit precedent, the Federal Circuit has improperly usurped the role that Congress reserved for regional courts of appeals. See Peter S. Menell, "API Copyrightability Bleak House," 31 BERKELEY TECH. L.J. 1515 (2016).

In crafting the Federal Circuit's subject matter jurisdiction, Congress was clear that the Federal Circuit's exclusive patent jurisdiction did not apply to other areas of federal law, such as copyright. See 28 U.S.C. Section 1295. As the Senate Report explains, the establishment of the Federal Circuit "is intended to alleviate the serious problems of forum shopping among the regional courts of appeals on patent claims by investing exclusive jurisdiction in one court of appeals. It is not intended to create forum shopping opportunities between the Federal Circuit and the regional courts of appeals on other claims." S. Rep. 97-275 (1981).

Yet the Federal Circuit's exclusive appellate jurisdiction over cases involving patent infringement claims has created a new species of interpretive confusion. In patent cases that contain copyright causes of action, the Federal Circuit will hear the appeals of non-patent issues even if, as in Oracle v. Google, neither party challenged the district court's patent rulings. Congress did not provide a mechanism short of Supreme Court review for ensuring that the Federal Circuit properly interprets regional circuit law. This creates the potential for a mutant body of regional circuit software copyright law that is beyond the reach of the very regional circuit court in charge, which is precisely what the Federal Circuit has wrought.

The Federal Circuit's misinterpretation of 9th Circuit copyright law now motivates software intellectual property owners to bundle patent and copyright claims in order to take advantage of the Federal Circuit's expansive interpretation of software copyright protection. It is no coincidence that Cisco filed its complaint alleging software patent and copyright causes of action against Arista Networks after the Federal Circuit's 2014 Oracle v. Google decision. The district judge in that case faced the dilemma of whether to follow actual 9th Circuit decisions or the Federal Circuit's distorted version of 9th Circuit law. The forum shopping problem is especially pronounced because of the ease with which the software copyright owners can manufacture Federal Circuit jurisdiction. Software patents have proliferated over the past two decades (almost a half-million by one estimate) and a robust market for software patents exists. Thus, even if software companies have not patented their software, they can find a broad assortment of software patents to purchase in the secondary market.

The mere filing of a complaint alleging both patent and copyright causes of action locks in Federal Circuit appellate jurisdiction over all issues in the case. Even if the patent issues later drop out of the case, as occurred in both Oracle v. Google and Cisco v. Arista, the Federal Circuit retains appellate jurisdiction over whatever remains.

Absent Supreme Court intervention, the Federal Circuit's Oracle v. Google decisions validate legislators' fears that the national appellate patent tribunal will establish itself as the de facto national appellate software copyright tribunal.

As introduced in our previous article, 9th Circuit jurisprudence holds that the "functional requirements for compatibility with the Genesis [video game console constitute] aspects of Sega's programs that are not protected by copyright. 17 U.S.C. Section 102(b)." Sega Enterprises Ltd. v. Accolade, 977 F.2d 1510; see Sony Comput. Entm't, Inc. v. Connectix Corp., 203 F.3d 596, 603 (9th Cir. 2000). As essential "gears and levers" for particular digital machines, the Java API declarations are not protectable under copyright law due to the overarching channeling principle established in Baker v. Selden, 101 U.S. 99 (1879), and reflected in Section102(b) and other limiting doctrines.

The Federal Circuit mistakenly holds that Sega's unequivocal statement applies only to fair use analysis (and not to the threshold question of copyrightability), and that copyrightability is focused on the choices available to the plaintiff at the time the computer program

was created, not the defendant's desire to achieve interoperability. That stance is in accord with the early ruling of Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222 (3d Cir. 1986), a rival legal formulation which the 9th Circuit has pointedly and, in our view correctly, rejected. See Sega, 977 F.2d at 1525.

After the Federal Circuit's decision, the 9th Circuit ruled that even if there are multiple methods to reach a particular end, a choice made among those methods is not expression to which copyright protection extends. See Bikram's Yoga College of Indiana, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032, 1042 (9th Cir. 2015) (citing Baker v. Selden and Sega). The 9th Circuit makes no mention of the Federal Circuit's 2014 Oracle v. Google decision in Bikram's Yoga or any other decision. Indeed, when district courts resolve copyright cases not bundled with a patent count, they do not hesitate to follow 9th Circuit law directly, to the contrary of the Federal Circuit's gloss. See Dr. Seuss Enters. LP v. Comicmix LLC, Case No. 16-CV-2779 JLS (BGS) (S.D. Cal. Mar. 12, 2019) at 16 ("This Court does not find Oracle persuasive").

As actual 9th Circuit law makes clear, copyright's limiting doctrines operate as threshold copyrightability determinations, part of the filtration step of infringement analysis, and as factors in fair use analysis. See Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1080 (9th Cir. 2000) (treating the object of the photograph as uncopyrightable under the useful article doctrine, i.e., at a threshold copyrightability level); Sega, 977 F.2d at 1517-27; Sony, 203 F.3d at 602-05.

Previously, the Supreme Court unanimously rebuffed a plaintiff 's efforts to invoke trademark laws to "create a species of mutant copyright law that limits the public's 'federal right to "copy and to use" ' " works not validly within copyright protection. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 34 (2003). The Federal Circuit's vindication of plaintiff Oracle's position gives rise to parallel dangers. To avoid mutant and conflicting species of copyright law, the Supreme Court should grant review of the Federal Circuit's 2014 copyrightability decision and its 2018 fair use decision. The former is especially important to the integrity of copyright law and competition, as well as to innovation in the computer software industry.

This commentary is based on the authors' Google v. Oracle amicus certiorari stage brief, which is available here