petitions that ask the Court to take
their appeals. Thus, the odds are
heavily stacked against the granting
of any petition.
Two things seem to tip in favor of
the Court’s grant of Google’s petition.
First, there genuinely are split decisions among federal circuit courts on
important scope of software copyright
issues. Indeed, the Court recognized
such a split in 1995 when it granted Lotus’ petition for review of the First Circuit’s Borland decision. Because the
Court itself split 4-4 in that case, the
First Circuit’s decision was affirmed,
but without setting a precedent or resolving the split. Unsurprisingly, the
circuit splits on software copyright
protections have deepened since then.
Second, the specific software copyright issues presented in the Oracle
case are of exceptional importance to
the software industry, of which Oracle
and Google are two giants. Other major software developers, including Red
Hat and Microsoft, and industry associations filed supportive amicus briefs
to stress the important consequences
at stake in this case.
If the Court does decide to hear the
Oracle case, it is, however, unlikely to
review both the copyrightability and fair
use rulings. Most amici, including me,
who support Google’s petition would
prefer the Court took the copyrightability issue rather than the fair use issue.
But the fair use decision is also deeply
flawed. So a grant on either issue would
be much better for the software industry than a denial of review.
One other interesting data point is
that since 2007, the Court has reversed
whatever circuit court ruling it reviewed 70% of the time. That does not
mean Google will definitely prevail before the Court, but its odds of winning
improve if the Court takes the Oracle
case on the merits. One bit of possibly
good news for Google is that the Court
has asked the Solicitor General’s opinion about whether it should take the
case. That somewhat increases the
chance that the Court will indeed hear
Pamela Samuelson ( email@example.com) is
the Richard M. Sherman Distinguished Professor of Law
and Information at the University of California, Berkeley,
and a member of the ACM Council.
Copyright held by author.
needs a flexible, robust, and balanced
framework for fair use analysis, which
the CAFC had failed to provide.
Several other organizations also
filed amicus briefs in support of
Google’s petition. They included the
Computer and Communications Industry Association, the Developers
Alliance, the American Antitrust Institute, the Electronic Frontier Foundation, R Street Institute, Engine
Advocacy, and a group of software
innovators, startups, and investors.
These briefs tended to emphasize the
exceptional importance of the case
to explain why the Court should hear
Google’s appeal and the risks to fair
competition and ongoing innovation
in the software industry if the CAFC is
IP Scholar Amicus Briefs
Two of the three IP scholar briefs focused on the CAFC’s copyrightability ruling, while a third focused on the
CAFC’s fair use ruling.
For the most part, these briefs do
not directly address the merits of the
CAFC’s Oracle decisions or the analyses on which the court relied (although
it doesn’t take a genius to tell which
litigant’s position on the merits the
briefs’ signatories generally favored).
There is an important strategic reason for eliding the merits at this stage
of Google’s appeal. The Supreme Court
mainly decides to review federal appellate court decisions when persuaded
there is a split among federal circuit
court interpretations of federal law. U.S.
copyright law is supposed to be uniformly interpreted and applied throughout
So if the Third and Federal Circuits
take one position on the protectability
of program APIs and several other circuit courts take the opposite position,
that constitutes a split among the circuits. Circuit splits make federal law
into a disharmonious mess.
A second reason the Court sometimes takes appeals is that a lower
court ruling is inconsistent with the
Court’s previous rulings on the same
or similar issues. So the IP scholar
briefs also focus on the Oracle
decisions’ misapplications of prior Supreme Court rulings.
These two considerations explain
why an amicus brief on behalf of 65
IP scholars, of which I was a principal
author, concentrates on respects in
which the CAFC’s copyrightability ruling is inconsistent with a key Supreme
Court precedent as well as with rulings
by several other circuit courts.
Here is an excerpt from our brief
to give you a sense for this type of argumentation: “Beyond merger, the
Federal Circuit’s interpretation of the
scope of copyright protection available to software innovations conflicts
with the rulings of other circuits in
four respects. First, the Federal Circuit’s interpretation of the exclusion of
methods and systems from copyright’s
scope under 17 U.S.C. § 102(b) is contrary to the First Circuit’s interpretation in Lotus Development Corp. v. Borland International, Inc., 49 F.3d 807 (1st
Cir. 1995), aff’d by an equally divided
Court, 516 U.S. 233 (1996).
“Second, several circuit courts have
ruled in favor of compatibility defenses in software copyright cases. Only
the Third and Federal Circuits have
“Third, the Federal Circuit’s conception of ‘structure, sequence, and organization’ (SSO) of programs as protectable expression as long as it embodies
a modicum of creativity conflicts with
the Second Circuit’s landmark decision, Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir.
1992). Altai rejected the conception of
SSO as determinative of protectable expression. Id. at 706.
“Fourth, the Federal Circuit’s asser-
tion that copyright and utility patents
can provide overlapping protection to
program SSO is in conflict with [the
Supreme Court’s] Baker [v Selden deci-
sion] as well as Tenth and Eleventh Cir-
We IP scholars will have a lot to say
on the merits if we get to that. But the
main goal of our brief is to persuade the
Court to grant Google’s petition because
of conflicts with Supreme Court prec-
edents and splits among circuit court
rulings on software copyright issues.
Google is fighting a steep uphill battle to persuade the Supreme Court to
review the CAFC’s Oracle
copyrightability and fair use decisions. Every
year the Court selects only about 80
cases to review out of the 7,000– 8,000