I M A G E B Y A N D R I J B O R Y S A S S O C I A T E S / S H U T T E R S T O C K

of its protection traces back to the Supreme Court’s 1880 ruling in Baker v. Selden. Selden sued Baker because he copied the bookkeeping forms Selden published to illustrate how to implement his new bookkeeping system. Selden won at the trial court level, and Baker appealed.

The Supreme Court perceived the
question in Baker to be “whether the
exclusive property in a system of book-
keeping can be claimed, under the law
of copyright, by means of a book in
which that system is explained[.]”
The Court ruled Selden’s copyright
extended to his explanation of the
bookkeeping system, but not to the
system itself, the method of operation
it prescribed, or the forms that imple-
mented the system. Such a “useful art”
might have been eligible for patent
protection, but not for copyright.

The Court observed that “[t]o give
to the author of the book an exclusive
property in the [useful] art described
therein, when no examination of its
novelty has ever been officially made,
would be a surprise and a fraud upon
the public. That is the province of let-
ters-patent, not of copyright.”
Congress codified the Baker holding
in Section 102(b). A legislative report
said it did so “to make clear that the
discovery, regardless of the form in
which it is … embodied in such work.”

Oracle asserts this provision restates the classic distinction between expression (which copyright law protects) and ideas (which are beyond the scope of copyright protection). Because the Java APIs are much more detailed than ideas and may have original elements, they are not ideas alone, but rather expressions of ideas. The CAFC agreed, concluding these Java APIs are copyrightable because of the creativity they embody and the existence of alternative ways in which Google could have developed its own APIs.

Ninth Circuit Precedents

Google has pointed out the plain language of Section 102(b) makes procedures, systems, and methods of operation unprotectable by copyright law. It asserts the Java APIs at issue are unprotectable under this provision.

Google has relied on several appellate court decisions to support its claims that the Java APIs are unprotectable by copyright law. Especially relevant is the Ninth Circuit Court of Appeals’ ruling in Sega v. Accolade.

Sega sued Accolade because it
made copies of Sega software in the
course of reverse-engineering to get
access to the interface procedures
embedded in the Sega code. Accolade
needed to know this information to
make its videogames compatible with
the Sega platform.
The Ninth Circuit held this reverse
engineering was a noninfringing fair
use because it was done for the le-
gitimate purpose of getting access to
interface procedures that were “the
functional requirements for [achiev-
ing] compatibility” and consequently
unprotectable under Section 102(b).
Google claims the CAFC erred by ig-
noring this aspect of the Sega decision.
(Ordinarily an appeal from a California
federal court would have gone to the
Ninth Circuit, but because Oracle origi-
nally sued Google for patent as well as
copyright infringement, Oracle’s ap-
peal from the copyright loss went to the
CAFC instead. The CAFC was supposed
to follow Ninth Circuit precedents.)

The CAFC opined that Google’s arguments about compatibility might be relevant to its fair use defense to Oracle’s claim of infringement, but not to whether the Java APIs were protectable by copyright law.

 

Origins of Section 102(b) Exclusions Copyright’s exclusion of systems and methods of operation from the scope