The interplay between patents and copyrights

By: Brian Lefort Tuesday October 21, 2014 0 comments


By Brian Lefort

As I previously wrote, during last year's term, the Supreme Court attempted to decide what type of software is patentable subject matter.  This term, the Supreme Court may decide what type of software is copyrightable. Last week, Google petitioned the Supreme Court to review its outstanding dispute with Oracle and decide "[w]hether copyright protection extends to all elements of an original work of computer software, including a system or method of operation."

The dispute began in 2010 when Oracle sued Google and alleged that Google's Android software infringed both Oracle's patents and copyrights relating to Java, which Oracle acquired when it bought Sun Microsystems.  In 2012, a jury decided that the Android software did not infringe Oracle's patents. At trial, Oracle's copyright infringement case was based upon the allegation that the Android software contained 37 packages of computer source code the parties refer to as "application programming interfaces," or "APIs."

The APIs at issue, which were also written by Oracle (formerly Sun) when creating the Java programming language, allow programmers to efficiently take advantage of the built-in functions of a computer's operating system. The APIs are essentially shortcuts that allow programmers to use the prewritten code to build certain functions into their own programs, rather than write their own code to perform those functions from scratch. Each API package includes two types of source code: (1) "declaring code" and (2) "implementing code." The declaring code is the expression that identifies the prewritten function, which is often referred to as the "header." The declaring code then commands the computer to execute the associated implementing code, which gives the computer the step-by-step instructions for carrying out the declared function.  Google wrote its own implementing code when developing its Android software, but Google admitted copying certain lines of "declaring code" from the Java APIs.  At trial, Google argued that (i) there was only one way to write the declaring code to remain "interoperable" with Java and (ii) the organization and structure of the 37 Java API packages is not copyrightable subject matter. In short, Google argued that the declaring code is functional and therefore exempt from copyright protection. And, in 2012, the district court agreed.

Oracle appealed the copyright case, and the Court of Appeals for the Federal Circuit reversed the district court by holding that the APIs are copyrightable despite Google's argument that the statute defining the subject matter for copyrights explicitly states otherwise. Specifically, 17 U.S.C. § 102(b) states that "[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work."

In its recent petition to the Supreme Court, Google contends that there are three reasons why the Supreme Court should review this case:  (1) there is non-uniformity amongst the United States Courts of Appeals concerning copyrightable subject matter; (2) the Federal Circuit's decision runs afoul of the statute concerning copyrightable subject matter (i.e., 17 U.S.C. § 102); and (3) the Java headers are a system or method of operation. Google's third reason is particularly interesting because Google is arguing that the header is a functional system or method, which is only capable of being protected under the patent laws--not the copyright laws--and the Supreme Court needs to clarify that copyrights may not be used to evade the limits on patent protection and secure a longer monopoly. More specifically, the term of a Unites States patent is 20 years from filing, whereas a copyright is protected for the life of the author plus 70 years (or depending upon the type of work, 95 years from the first publication or 120 years from the date of its creation, whichever is less).  Copyrights obviously provide a longer term of protection in comparison to patents.  But copyrights arguably provide a narrower type of protection in comparison to patents.

Patentable subject matter includes "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." In Alice Corporation Pty. Ltd. v. CLS Bank International, although the Supreme Court held that an abstract idea on a computer is not patent eligible subject matter, the Supreme Court stated that certain software is patentable, particularly if the claims are directed to "improve[ing] the functioning of the computer" or "effect[ing] an improvement in any other technology or technical field." In other words, there are limits to the protection available to software under the patent laws because overly broad protection for software would inhibit others from using basic "building blocks." In its petition to the Supreme Court, Google asserts that "[p]ermitting such an end-run around the carefully crafted limits on patent protection would stifle competition and innovation in the software industry--the very competition and innovation this Court has sought to protect by enforcing the comparable limits on patentability." In essence, Google argues that "[e]xtending copyright protection to methods and systems of operation would undermine the limits on patent protection."

If the Supreme Court decides to review this case (a decision could be made by the end of this year), it will be interesting to see whether the Court decides to discuss the interplay between the patent and copyright laws, particularly whether functional aspects of software are copyrightable, as Google articulates is statutorily prohibited. 
Brian Lefort

About the Author: Brian Lefort

Brian Lefort is a Boulder-based intellectual property attorney who specializes in helping innovative startup and emerging businesses identify and protect their valuable technology assets. Brian has more than 15 years of legal experience building and enforcing strategic patent and trademark portfolios for innovative products in the medical device, telecommunications, software and other high technology industries. He can be reached at [email protected] or 303-447-7723.