Google v. Oracle Amicus Merits Stage Brief: Vindicating IP’s Channeling Principle and Restoring Jurisdictional Balance to Software Copyright Protection

Abstract

The Federal Circuit’s decisions in Oracle v. Google conflict with this Court’s seminal decision in Baker v. Selden, 101 U.S. 99 (1879), misinterpret Congress’s codification of this Court’s fundamental channeling principle and related limiting doctrines, and upend nearly three decades of sound, well-settled, and critically important decisions of multiple regional circuits on the scope of copyright protection for computer software. Based on the fundamental channeling principle enunciated in Baker v. Selden, as reflected in § 102(b) of the Copyright Act, the functional requirements of APIs for computer systems and devices, like the internal workings of other machines, are outside of the scope of copyright protection even as non-merged aspects of the implementing code for APIs are protectable. Google independently implemented the functional specifications of the 37 APIs at issue and hence did not infringe Oracle’s copyrights. By way of brief illustration, copyright protects artistic and literary works, such as a creative metal sculpture or haiku. Nonetheless, the proprietors of those works cannot complain when third parties replicate elements of that expression that are essential to the operation of a particular machine. For instance, a car manufacturer could secure the ignition switch for its automobiles via a metal key with an original cut pattern on the blade. Although that pattern might be protected as a modern sculpture, the car manufacturer could not use copyright law to prevent others from utilizing the same expression for the purpose of starting the car. The same consideration applies to a car manufacturer that secures a digital ignition switch via entry of a haiku. Copyright law does not bar third parties from utilizing the necessary expression of that otherwise protectable literary work for the purpose of starting the car. The computer program implementing that digital key may be protected by copyright law, but the law places no bar on copying the essential functional elements needed to operate the ignition switch — the haiku text and any other indispensable functional features of the computer program. As Baker v. Selden recognized, copyright law’s limiting doctrines implement a constitutional and statutory balance intended to promote progress by channeling functional features exclusively to the utility patent regime. Although copyright can protect separable expressive features, such as surface ornamentation of an ignition key or non-merged implementing code of a digital ignition key, it does not bar the use of functional specifications — the essential technological elements. Only utility patent law can protect those features.