tinue to use those macros in the Borland program.

The First Circuit in Borland did not find the SSO concept helpful in distinguishing protectable and unprotectable structural elements of computer programs. It held the SSO at issue in Borland was an unprotectable method of operation under Section 102(b), akin to the command structure of VCR machines.

The trial judge in the Oracle case relied on the Borland decision, characterizing the Java APIs as a similar type of command structure. The CAFC chose not to follow Borland, and interpreted Altai as applicable only when initial designers of APIs are themselves constrained in their choices about structuring the interfaces.

Conclusion

Twenty years ago, the Supreme Court took Lotus’ appeal from the First Circuit ruling. After oral argument, it split 4-4 on the proper interpretation of Section 102(b) as applied to computer programs. This left the First Circuit opinion intact, but did not make a nationwide precedent. The issues left undecided in that case are before the Court in the Oracle case.

Several amicus briefs filed in support of Google’s appeal say that if the Supreme Court does not repudiate the CAFC’s interpretation of copyright law, the result will likely be a new surge in litigation over the protectabil-ity of APIs, even though this issue had seemed to be resolved by appellate court rulings going back to 1992.

Oracle filed its brief in opposition to Supreme Court review in December 2014. Google’s petition for review was put on the Court’s calendar in January 2015. The Court decided to ask the Solicitor General to weigh in on whether the Court should hear Google’s appeal (which increases the likelihood the Court will take the case by 46 times). I predict the Court will review this case. How the Court will decide that case remains to be seen. A ruling in support of interoperability is much to be hoped for.

 

Pamela Samuelson ( [e-mail]) is the Richard M. Sherman Distinguished Professor of Law and Information at the University of California, Berkeley.

Copyright held by author.

expression adopted by the program-
mer is the copyrightable element in a
computer program, and that the actual
processes or methods embodied in the
program are not within the scope of the
copyright law.”
The Ninth Circuit in Sega recog-
nized copyright law should not pro-
tect interface procedures because that
would confer patent-like protection on
the functional requirements for com-
patibility without Sega meeting the
stricter standards required for patents.

The trial judge in Oracle expressed concern that Oracle’s copyright claim might be seeking to obtain “an exclusive right to a functional system, process, or method of operation that belongs in the realm of patents, not copyrights.” The court noted that “[b]oth Oracle and Sun have applied for and received patents that claim aspects of the Java API.”

In overturning that decision, the CAFC seemed untroubled about possible overlaps of copyright and patent protection for APIs. In effect, it read the procedure, system, and method exclusions out of the statute.

Is SSO Protectable by Copyright?

The idea that program SSO is protectable expression as long as there is more than one way to accomplish a programming objective derives from a 1986 Third Circuit ruling in Whelan Associates v. Jaslow Dental Lab. Oracle and the CAFC have embraced this theory.

The SSO concept was, however, substantially discredited in the Second Circuit’s 1992 Computer Associates v. Altai decision. In the years since Altai, courts have largely moved away from conceiving of SSO as protectable expression in programs because it fails to provide a workable framework within which to distinguish protectable and unprotectable structural aspects of programs.

The Second Circuit in Altai emphasized the “essentially utilitarian nature of computer programs” makes it difficult to separate protectable and unprotectable structural elements in programs.

Altai announced a new “ abstraction, filtration, and comparison” test for software copyright infringement.

Among the structural elements of
programs that must be filtered out
before assessing infringement are ef-
ficient design elements, elements con-
strained by external factors, and stan-
dard programming techniques.

The Second Circuit in Altai was quite explicit that elements of programs “dictated by external factors” such as “compatibility requirements of other programs with which a program is designed to operate in conjunction” lie outside the scope of protection that copyright provides to programs. Such structural similari-ties must be filtered out before courts can determine whether a defendant infringed copyright.

The Ninth Circuit followed Altai’s lead in holding that interface procedures necessary for achieving interoperability among programs were functional elements of programs that copyright did not protect under Section 102(b). In Sega, the court cited approvingly to Altai for the proposition that computer programs “contain many logical, structural, and visual display elements that are dictated by the function to be performed, by considerations of efficiency, or by external factors such as compatibility requirements and industry demands.”

 

Lotus v. Borland

Another important appellate ruling that supports Google’s theory is Lotus v. Borland. In 1995, the First Circuit ruled that Borland had not infringed by copying the SSO of the Lotus 1-2-3 command hierarchy for use in the emulation interface of Borland’s Quattro Pro program. Borland had to use the same commands in the same order so that users who had constructed macros of frequently executed functions in the Lotus macro language could con- Java has achieved considerable success, which is why Google wanted to use Java APIs in its software platform for mobile devices.