Tuesday, May 31, 2016

Filing deadline tomorrow: Samsung to make its case against total-profit disgorgement over design patent infringement

More than two months ago, the Supreme Court of the United States granted Samsung's petition for writ of certiorari (request for top-court review) regarding design patent damages, which was supported by Google, Facebook and other tech giants. Tomorrow, Samsung has to file its opening brief. At this level of proceeding the parties' positions, theories and arguments are largely known, but it will be very interesting to see what priorities they set, what case law they can find in support of their positions, and which amici curiae ("friends of the court") will support them.

In terms of potential impact on the economy, this case is about a lot more than the roughly $500 million (just for an order of magnitude) in play between the two parties. Based on Apple's position that a disgorgement of infringer's profits over a design patent shouldn't be apportioned, it would be theoretically possible that the owner of a design patent covering the shape of an icon or a screen layout could claim infringement by a single pre-installed iPhone app and sue Apple for (if the alleged infringement has been ongoing for many years) an amount like $100 billion. And under Apple's standard, the court would have to instruct the jury that the $100 billion amount is, at a minimum, the proper starting point. Yes, no company in the world potentially stands to lose nearly as much from affirmance as the very party that is pushing for it: Apple. That fact is no less an absurdity than an inflexible interpretation of the statute in question.

But in two respects, Apple has already won. No matter what the damages award will ultimately be, Apple's design patent enforcement, which began about five years ago, has presumably contributed to Samsung now making its products more distinguishable from Apple's products. It may also have influenced others. The second respect in which Apple has won is that the Supreme Court granted only one of the two parts of Samsung's petition, but that didn't come as a huge surprise since the part on design patent damages had way more momentum (also in terms of amicus briefs) than the part on claim construction. Theoretically, claim construction could have had a devastating impact on Apple's design patent case (because it could have resulted in findings of invalidity and/or non-infringement). But let's stay focused on what actually is before the Supreme Court now.

Unless Samsung's legal strategy surprisingly changes with tomorrow's filing, it's foreseeable that the key parts to analyze will be two meta-level arguments and two key terms in the relevant statute:

Background principles of causation and equity

If the Federal Circuit's interpretation of the statute was affirmed, design patent damages would be a total outlier in the context of remedies for intellectual property infringement. An unapportioned disgorgement of infringer's profits is not available for utility (i.e., technical) patent or copyright infringement, to name but two examples. And that is so because a strong causal nexus between an infringement and a related monetary award is really a cornerstone of U.S. intellectual property law (and even of tort law in general).

In its cert petition Samsung already told the Supreme Court that "Congress could not have intended design-patent damages, alone among all forms of intellectual-property remedies, to be exempt from ordinary principles of causation and proportionality."

Absurd results must be avoided

Samsung's cert petition mentioned the "absurd" result of an unapportioned disgorgement of infringer's profits several times, such as in the following passage:

"As noted, the Federal Circuit's contrary interpretation of Section 289 produces absurd and anomalous results. The Federal Circuit's holding would require awarding Apple all of Samsung's profits for sales of a smartphone containing any Apple design patent, even a trivial one. And under this holding, profits on an entire car--or even an eighteen-wheel tractor trailer--must be awarded based on an undetachable infringing cup holder."

Neither the Federal Circuit nor Judge Koh ever said that the result was not absurd. Those courts basically just said: "Whether it's absurd doesn't matter, it's the law of the land." Apple just tries to distinguish examples of absurd results (like the cup holder mentioned above) from its Samsung case, but it doesn't explain how absurd outcomes could be avoided if its proposed interpretation was affirmed.

At this stage I guess the question of lawmakers' intent is going to be very important. Samsung's cert petition already quoted from Congressional deliberations. In a dispute over statutory interpretation, it can tip the scales in favor of a common-sense interpretation if there is an indication that today's common sense and the common sense at the time the law was made are consistent. Apple's message is going to be: "Even if you philosophically agree with Samsung, you have to legislate from the bench to reverse the Federal Circuit." Samsung will then benefit from being able to say: "You would simply interpret the law the way Congress intended."

Lawmakers have always been aware of the potential use of their statements in statutory-interpretation disputes and sometimes make certain statements on the record with a view to this. In fact, Eva Lichtenberger, a Member of the European Parliament, told me in 2005 about a carefully-crafted statement she made in the final Legal Affairs Committee debate on software patents because it might help in the event of an ambiguous outcome.

Article of manufacture

Two years ago I agreed with the Computer & Communications Industry Association (CCIA), an industry body I don't always agree with, on the term "article of manufacture" being potentially key to a reasonable interpretation of 35 U.S.C. § 289, the design patents disgorgement paragraph. Here's the first sentence from that paragraph (emphasis added):

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

Apple says, and the Federal Circuit and Judge Koh said, that the relevant "articles of manufacture" in this case were various Samsung phones. But the whole problem would go away if "article of manufacture" was interpreted more narrowly, given that two of the design patents in question relate to only the outer cases of smartphones.

This argument reminds me of the "smallest salable unit" argument in the FRAND (fair, reasonable and non-discriminatory) licensing context. Oddly, Apple and Samsung/Google were standing on just the other foot at the time. Samsung and Google's Motorola demanded percentages of the entire price of an iPhone, but Apple (and with respect to the Xbox, Windows and other products, Microsoft) disagreed. I was on Apple's side then, I'm on Samsung's side this time around, but that's because I'm consistent, which those guys aren't (large corporations just have too many disputes to be consistent).

In connection with standard-essential patents, Motorola demanded 2.25% of the "price of the end product" and specifically clarified that this meant "e.g., each Xbox 360 product, each PC/laptop, each smartphone, etc." as opposed to "component software (e.g., Xbox 360 system software, Windows 7 software, Windows Phone 7 software, etc.)." It was outrageous, but at least it was clear. If Motorola could have just said "article of manufacture" to send out the same message, it would have done so. But "article of manufacture" doesn't mean the maximum royalty base imaginable. It doesn't mean "end product from consumer point of view" or anything like that.

Profits made from the infringement

The second part of the statute also contains a term that can be interpreted in a certain way to achieve a reasonable result (emphasis added):

Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement.

While this is just the passage on double recovery, the highlighted term can nevertheless be understood to be a description of the recovery the first sentence allows. (How could it not be?)

A "profit made from [an] infringement" is a narrower definition than "profit indirectly related in part to an infringement." It also suggests that the question of causation cannot simply be kept out of the design patent damages analysis the way the Federal Circuit and Judge Koh did.

In summary, there are ways in which the Supreme Court can restore sanity if it wants to, and that's the case Samsung is going to have to make in its opening brief tomorrow, in its reply brief a few months later, and at the Supreme Court hearing in the fall or winter. Apple's first-rate lawyers are going to give Samsung a run for the money, of course.

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Thursday, May 26, 2016

Oracle v. Google: jury finds in favor of "fair use," as no reasonable, properly-instructed jury could have

Courtroom tweeters in San Francisco have just reported that the Oracle v. Google retrial jury has found in favor of Google, i.e., has determined that Android's use of the declaring code and structure, sequence and organization of 37 Java APIs is "fair use."

This is the outcome of a rigged (for emotional, not financial reasons) retrial. It's absolutely wrong. This here is a far cry from anything any appeals court ever deemed to constitute fair use.

At the outset of the trial, I had already predicted that the jury was more likely than not to find for Google. I said 55%-60%. That was based on the fact that pretrial decisions by Judge Alsup had already favored Google, and his jury instructions on the "fair use" rules were unbelievably unfair and biased. They made it sound like the hurdle for "fair use" was rather low, while it's actually just meant to be an EXCEPTION (and copyright protection is the norm).

Also, while Google was able to present all of the "evidence" and testimony that helped its defense, Oracle had been precluded from presenting the entirety of its willful-infringement evidence.

Presumably, Judge Alsup will deny Oracle's motion for judgment as a matter of law (JMOL), if his jury instructions are any indication. Then Oracle will appeal again. I predict Oracle is very likely to succeed once again on appeal.

Judge Alsup has already said he knows there will be appeals. Last time, Oracle's appeal didn't end well for him. What the circuit judges said at the appellate hearing was anything but flattering for him.

I almost forgot to mention, before going to bed (and I'll sleep well because all's well that ends well), that a jury verdict obviously has no precedential relevance of any kind. As I wrote before the trial even started: this trial wasn't going to resolve the question of unlicensed, incompatible API reimplementations either way. Several hours before the verdict I said on Twitter that trial courts are the WRONG forum to resolve overarching, big issues--and especially in this case.

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Sunday, May 22, 2016

Google's 'fair use' defense against Oracle is an insult to human intelligence: Android's use of Java APIs violates copyright

There's a whole lot of doomsday stories out there on the Internet about Oracle v. Google, the Android-Java copyright case. In reality, the ongoing trial, in which jury deliberations will begin shortly, is not going to provide clarification regarding incompatible, unlicensed reimplementations of application programming interfaces (APIs) either way.

Let me be clear about this: I believe in pluralism, and that's why people certainly have every right to campaign against intellectual property (IP) protection of the declaring code and structure, sequence and organization (SSO) of APIs. What I do take issue with is that the anti-API IP crowd consistently advocates a misguided approach. If they wanted to talk to lawmakers on Capitol Hill about copyright and APIs, that would be democratically legitimate. If they showed a case in which a major API owner abused its rights in an anticompetitive manner, I'd most probably support a call for compulsory licensing. But after that non-copyrightability idiocy that failed at the appeals court (and that the Supreme Court declined to buy), the anti-API IP movement now picks a second inappropriate vehicle: the "fair use" exception to copyright infringement.

I'm investing a lot in software development (you'll see the results later this year) and I will fight hard against anyone seeking to unreasonably weaken software IP for purely ideological reasons. App developers like me would suffer collateral damage if anti-API IP advocates got their way on the wrong basis. On the right basis, such as compulsory licensing, I wouldn't have a problem with it. But I'll continue to speak out against a carpet-bombing of software copyright that would render even the most creative program code unprotected. That's where I draw the line, and the longer this takes, the more people will likely agree with me.

I'm 100% independent from Oracle but 100% behind its motion (filed Tuesday) for judgment as a matter of law (JMOL) against Google's "fair use" claim. And after reading Google's opposition brief, filed last night, my support for Oracle's motion is undiminished and I may be even more determined now because Google's lawyers have filed something utterly absurd.

To all you dreamers out there: it's time to wake up and face the facts. And the law.

The only regard in which Google has a point is that Sun Microsystems' management, including one of the industry's worst CEOs ever, failed to make it consistently clear to Google that the way it incorporated the Java API headers into Android was against the law. And failed to enforce. That combination of inconsistencies and weakness, however, is still a far cry from Google having had a license or that Java was "fair game." In fact, even the very Google-friendly jury in the first (spring 2012) trial accurately concluded that Google didn't actually rely upon its conduct being permitted. The retrial jury would almost certainly arrive at the same conclusion, and Oracle has shown some strong evidence that proved Google believed it needed a license at least for the sake of legal certainty, but most of the willful-infringement evidence has been withheld from the current jury by an unfair, biased, partial judge an IP lawyer (and software developer) described as a "sore loser."

JMOL in Oracle's favor is more than warranted because no reasonable, unbiased jury could possibly side with Google on "fair use" in this case. Google bears the burden of proof, but its defense is incredibly weak. You can read this in excruciating detail in Oracle's JMOL motion, which I published a few days ago. What I'll do now is point out the key deficiencies of Google's "fair use" defense, factor by factor based on the four-factor test in 17 U.S.C. § 107.

1. "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes"

There's no dispute about this being commercial. If Judge Alsup had followed the instructions from the appeals court more clearly, he wouldn't have stricken the adverb "purely" before the word "commercial".

The availability of (most but not even all of) Android on open-source terms changes nothing about this.

Commercial use doesn't automatically defeat a "fair use" defense, but it does up the ante for Google.

Commercial nature is one of several aspects of the purpose and character of the use. The one Google mostly stresses here (and no doubt it's going to be key on appeal) is whether its use was "transformative." And it's this area in which I find Google's argument most absurd. It provides a large part of the reason for the headline of this post calling Google's defense an insult to human intelligence.

The fact of the matter is that any given API header has the same meaning in Android as it had and continues to have in Java. There's no change of expression or meaning here whatosever. So Google is making a context-based argument: Android is a mobile operating system and it's open source. I'll say it bluntly what I think of this: transformative my ass!

First, Java was in use on a huge number of mobile devices (BlackBerry, Nokia, Samsung etc.) before Android. Some of those device makers have meanwhile adopted Android, and others have more or less gone out of business. But at the time Android was launched, no one needed Google to take Java to mobile phones, and even Eric Schmidt, Google's former CEO and now the executive chairman of its corporate parent (Alphabet), conceded that BlackBerry phones were smartphones.

Second, Java was already available on open-source terms (OpenJDK) at the time, but Google didn't want to have the so-called copyleft obligation of contributing derivative works back to the free and open-source software (FOSS) community. The open-source argument is furthermore ridiculous because Android is licensed on Apache terms, meaning that anyone can take that code and build closed-source, proprietary software.

2. "the nature of the copyrighted work"

Already at the time of the first trial, exceptional creativity in API design had been conceded. There's plenty of evidence for it in the current record, such as an admission by one of Google's own witnesses that API design is more of an art than a science.

The (flawed) jury instructions suggest that something functional (such as program code) gets weaker protection than something very creative. However, here we are talking about highly creative and expressive code.

This is also an aspect that could become a big topic on appeal because it threatens to vitiate all software copyright. I also think it's at least unbalanced to suggest weak protection of software in connection with the second factor without simultaneously clarifying in connection with the first factor that functional arguments for "transformative" use are generally weaker than creative arguments. The perfect "fair use" case involves, as § 107 says, "criticism, comment, news reporting, teaching (...), scholarship, or research." I also think that parody is at a level with that list. But if you take someone's program code and simply build another program, you don't criticize, ridicule, comment, report, teach or research anything. You just steal. Nothing more than that.

It's very rare that someone uses program code for the purpose of criticism/parody. One of the very few examples I know is only a few months old: the Trump programming language. I don't think it treats the candidate fairly, but that doesn't matter: this clearly is a humorous use of program code. Android, however, is just another program, not a parody, nor commentary.

3. "the amount and substantiality of the portion used in relation to the copyrighted work as a whole"

I don't blame programmers for misunderstanding this part, but I've also seen some inexcusable nonsense from at least one lawyer about this.

While there's a lot more implementing code in those Java APIs than declaring code (as in any computer program), this factor must be seen in light of the applicable case law. Taking the "heart" of a work is what Google has done here, but there's also plenty of case law that shows even a minor percentage of an overall work is often enough to defeat a "fair use" defense. For example, the Supreme Court held in its 1985 Harper & Row v. Nation Enterprises ruling that even just copying a Gerald Ford speech manuscript of 300 words taken from a biography was enough to constitute copyright infringement.

Here we're talking about 11,000 lines of code, more lines of code than NASA used to control the Apollo moon landing.

Oracle's JMOL motion provides additional examples from the case law.

4. "the effect of the use upon the potential market for or value of the copyrighted work"

Java may still be popular in some other areas, but Oracle has shown plenty of evidence of losing business from customers such as Samsung (which is now the biggest Android device maker). Now, Google (and potentially Judge Alsup) would like to make a distinction between Java ME and Java SE. The stolen code has been taken from Java SE; Java ME was the mobile edition. But the question of whether Java ME was a derivative work of Java SE or vice versa is ultimately not going to decide this case.

Key holdings in Google Books case

Last month, the Supeme Court declined to take a look at the "Google Books" case. Earlier on, the Second Circuit had ruled in favor of Google's related fair use defense, and as I explained at the time, the rationale actually supports Oracle's case against "fair use" in connection with Android. I'd like to just quote and briefly discuss two key passages from the Second Circuit's Google Books ruling:

  • "Google's division of the page into tiny snippets is designed to show the searcher just enough context surrounding the searched term to help her evaluate whether the book falls within the scope of her interest (without revealing so much as to threaten the author's copyright interests)"

    Note particularly the part in parentheses. Google Books basically provide a teaser that can generate book sales. But Android does not use only so little of Java that programmers would ultimately prefer the real thing.

  • "Snippet view thus adds importantly to the highly transformative purpose of identifying books of interest to the searcher. With respect to the first factor test, it favors a finding of fair use (unless the value of its transformative purpose is overcome by its providing text in a manner that offers a competing substitute for Plaintiffs' books [...])"

    Here, too, the part in parentheses is key. Android crossed the line because it did become a competing substitute for Java-based mobile platforms.

The body of evidence is far stronger now than in 2012

There was enough evidence on the table back in 2012 that I called Google's "fair use" defense a fairy tale. But now there is so much more evidence, especially but not only regarding market impact, that no jury should even have to deliberate. This is a no-brainer. It's unfair use. As unfair as it gets. It may require an appeals court, though, to arrive at the correct result.

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Wednesday, May 18, 2016

Oracle moves for judgment as a matter of law against Google's 'fair use' defense to Java copyright infringement

Oracle has just filed a JMOL (judgment as a matter of law) motion against Google's flimsy "fair use" defense in the Android-Java copyright infringement case. Oracle's lawyers argue (and I agree) that, after the close of Google's "fair use" case, no reasonable jury could conclude that the way Android hijacked Java constitutes "fair use".

I can't comment on it until much later today, but I did want to publish this important motion immediately. It's the key motion in case the jury (which did not get to see some of the most important evidence and may have been confused by some of the testimony presented) finds in Google's favor. In that case, Oracle will -- no doubt -- appeal and argue that denial of its JMOL motion constituted an abuse of discretion (which it would also be in my opinion). Here's the motion for now:

16-05-17 Oracle Motion for JMOL on 'Fair Use' by Florian Mueller

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Saturday, May 14, 2016

Here's a MOUNTAIN of willful-infringement evidence the Oracle v. Google jury won't see in trial phase one

Further below you can find a very long list of items in the evidentiary record of Oracle v. Google (the Android-Java copyright infringement case) that will convince any reasonable person not affiliated with Google that Google was fully aware of the legally problematic approach its Android team took to the Java APIs. You'll find amazingly clear internal emails and presentation slides that simply leave no doubt about this. The potentially worst part is at the very end: Google attempted to conceal its use of the copyright materials for as long as possible because Googlers believed Sun was going to come after them. If the jury saw all of this now, Google's defense would be toast, but Judge Alsup doesn't want the whole truth to be put before the jury at the most critical stage...

As you can see, this blog's Oracle v. Google anti-unfair trial campaign--not affiliated with any party in any way whatsoever--is continuing. In response to my most recent post in this series, two U.S. lawyers, one with a focus on litigation and the other one with a specialization in IP, agreed with me publicly (on Twitter). The litigator said that Judge Alsup's plan to tell the jury about his (fundamentally flawed and reversed) original non-copyrightability holding is "begging for a mistrial," and the IP lawyer, who has practiced before Judge Alsup, called the judge a "sore loser, that's all."

Now Judge Alsup filed a request for information from the parties that does nothing to rebuild my confidence in his handling of this case. He now wants the parties to explain whether Google may have had good-faith reasons for considering Oracle's API-related declaring code (the lines of code and their structure, sequence and organization) non-copyrightable:

"From 2012 to 2014, the law in this case held that the declaring lines of code and the structure, sequence, and organization were not copyrightable. That was reversed by the 2014 ruling of the Federal Circuit, but an issue for us in this follow-on trial is whether and to what extent the jury may consider the law in the case prior to the 2014 holding by the Federal Circuit in evaluating willfulness and bad faith by Google during that period. Please cite decisions on point on or before MONDAY AT NOON. Please include decisions, pro and con, not just those on your side."

Oh no. If the Federal Circuit had changed the law on this, the Supreme Court would have heard the case. That would have been a clear circuit split, and Google had mobilized so many of its supporters to give weight to its cert petition that the Supreme Court certainly won't have assumed nobody was interested in the matter.

It does give the impression of being a "sore loser" when someone doesn't want to understand--but maybe he will after Oracle responds to this order--that his ruling was an extreme outlier. Before Judge Alsup, no other U.S. court ever held a similar combination of quantity and creativity of original (!) human-authored text non-copyrightable. There were cases in which large amounts (even larger than what's at issue in this case) of non-original, non-creative data were deemed non-copyrightable, such as telephone directories. There were also cases in which very small amounts of original material were denied copyright protection. But no one else ever held many thousands of lines of original, concededly (even Google's witnesses said so) highly creative material non-copyrightable.

Yeah, there were some "fair use" cases such as the famous Sony and Sega decisions, which Circuit Judge O'Malley told Google's counsel (the same one as in this trial, Robert van Nest) to stop raising in connection with copyrightability because they had no bearing on it. The holdings of those "fair use" cases amounted to using a few bytes in a game and to making a few private (!) copies of games in order to reverse-engineer them. That's just so very different from distributing thousands of lines of code on billions of devices.

So this latest "request for briefing re willfulness and bad faith before Federal Circuit decisions" is nothing more than the expression of a constant state of denial. It's disrespectful of the clear findings of the three higher judges than him who ruled on this last year. It also puts Judge Alsup at loggerheads with the U.S. government, which found Google's cert petition flawed and recommended its rejection last year. The Department of Justice clearly concluded that Judge Alsup's ruling had been an outlier and that the Federal Circuit opinion merely reiterated what the law had been all along. But Judge Alsup doesn't want to accept this reality.

The trial structure--bifurcation with "fair use" first, damages second, and most of the willfulness evidence being limited to the second phase, which may not even be reached if Google's counsel and witnesses once again confuse the jury--is one of various indications of an unfair approach to this retrial that harms Oracle. While Google can raise all sorts of issues in phase one that the jury could mistakenly (or just subconsciously) view as buttressing Google's "fair use" fairy tale, Oracle is very limited in its reference to such evidence in phase one. Some stuff has come up in connection with cross-examinations, such as the "half-ass" email this blog already published last August (it wasn't first to publish it, but it was first to draw attention to it).

It's easy for me to see what Judge Alsup's latest request for briefing is about: he knows that if Google loses (despite some people's efforts to avoid it) trial phase one and its "fair use" defense is thrown out, willfulness could become a big issue in phase two and, especially, a subsequent judicial decision on injunctive relief. About five years ago, Judge Alsup himself told Google it was "on the losing end" of the so-called Lindholm email and particularly highlighted the serious implications of willful infringement for injunctive relief:

"You're going to be on the losing end of this document with Andy Rubin on the stand. You think about that," Judge Alsup told Google's counsel. "And I want to say this: Willful infringement is final. There are profound implications of a permanent injunction. I'm not saying there is willful infringement, but that is a serious factor when you're considering an injunction."

So what if the jury finds Google infringed willfully? Then Judge Alsup could still "acquit" (not in a legal, but practical sense) Google by holding there was no objective willfulness as Google had, in his opinion (contrary to that of the higher courts), good reasons for believing it was in its right to use the material at issue. At this stage I predict Judge Alsup to do so later on, though I'd like to be proven wrong.

As I wrote above, Oracle is limited in its ability to put all the willfulness evidence before the jury at the right point in time, which would be now. But I have no working relationship with Oracle at this stage (and don't plan on having any again), and I'm free to publish things that are in the public record. And that's what I'm going to do now. I'm now going to show you the complete list of willfulness evidence that Oracle's counsel filed on September 14, 2015 (doc. no. 1312; please note I've restructured the content of that document for the purposes of this blog and added the second-level headings), some but not all of which has been or will be shown to the jury before its decision on "fair use":

1. Google Knew Sun Claimed Copyright in the Java API Packages

1.1 Bob Lee testimony

Bob Lee, former Google Core Library Lead for Android, testified at trial that he: (1) consulted Java docs when implementing APIs for Android; and (2) observed copyright notices on those documents.

1.2 Brian Swetland testimony

Brian Swetland, senior staff software engineer for Google, testified that he knew, while working for Android, that Sun claimed copyrights on its method signatures:

"Q. You were aware [between 2000 and 2004] that Sun's position was that the method signatures, the specifications, method signatures were copyrighted, correct?

A. I do recall mention that Sun claimed copyright on the method signatures.

. . .

Q. Nothing had changed between the time you were at Danger and the time you were at Android, correct?

A. Nothing about since -- very, very broad.

Q. Your knowledge about what Sun claimed about its copyright and the method signature had not changed?

A. That is correct."

1.3 Andy Rubin email of March 24, 2006

Andy Rubin, then-SVP of Google in charge of Android, wrote an email stating that "Java.lang apis are copyrighted" and that since "[S]un . . . own[s] the brand and ip[,]" "[S]un gets to say who they license the tck to[.]"

1.4 Google-internal document of March 6, 2008

"In an internal Google document rehearsing the 'Mobile + Android' narrative, Google anticipated that it would be asked whether 'Android's Dalvik VM violate[s] Java's IP restrictions"” and had no answer to that question."

1.5 Alan Donovan email of April 9, 2008

Alan Donovan, software developer at Google, wrote an internal email to java-users@google.com explaining how to turn off "Sun proprietary API" warnings issued by the Java compiler.

1.6 Dan Bornstein email of April 2009

Dan Bornstein, then-technical lead for the Android Dalvik virtual machine and core libraries, emailed that "Bob is right: We don’t ‘own’ the java.* API and so can’t go around altering it."

2. Google Knew Throughout That it Needed a License to Use the Copyrighted Materials

2.1 Rubin agreement (as CEO of Danger, his previous company) with Sun of October 19, 2001

Andy Rubin, as CEO of Danger, signed a confidential disclosure agreement with Sun relating to possible licensing of Java Technology by Danger from Sun.

2.2 Rubin agreement with Sun (as CEO of Danger) of August 26, 2003

Andy Rubin, as CEO of Danger, helped negotiate a license with Sun to allow Danger to do a clean room implementation of Java ME.

2.3 Swetland aware of Danger license deal with Sun

Brian Swetland, senior staff software engineer for Google, knew that Danger had taken a license from Sun for use of Java's method signatures:

"Q. . . . [Y]ou did know that Danger took a license from Sun . . . correct?

A. Correct.

Q. And you knew that the reason that Sun gave for why Danger was required to take a license was that Sun held a license on the method signatures, a copyright on the method signatures, correct?

A. Well, I heard that from Andy [Rubin.]"

2.4 Google-internal PowerPoint presentation of April 24, 2005

Internal Google PowerPoint presentation, with talking points for Andy Rubin, stated that even if Sun and Google could not agree to a co-development partnership, Google would still have to take a license from Sun for Android's use of Java, and complained that such a license would "put[] Sun in a position of control."

2.5 Google-internal presentation of July 26, 2005 entitled "Android GPS: Key strategic decisions around Open Source"

An internal Google presentation entitled "Android GPS: Key strategic decisions around Open Source” concluded that Google "[m]ust take [a] license from Sun" and proposed that "Google/Android, with support from Tim Lindholm, [would] negotiate[] the first OSS J2ME JVM license with Sun."

2.6 Rubin email of July 29, 2005

Andy Rubin sent an email attaching a document summarizing internal Google discussions relating to licensing Java from Sun. The document states that "Google would like to work with Sun to conceive of and agree to a license that enables Google to release to the Open Source community, under a license of it's [sic] own choosing, it's [sic] internally developed CLDC based JVM." The document further states that "Google needs a TCK license."

2.7 Rubin email to Page of October 11, 2005

Andy Rubin sent an email to Larry Page proposing that Google "take a license [from Sun for Java] . . . . We'll pay Sun for the license and the TCK." The email further stated that "[i]f Sun doesn’t want to work with us, we have two options: 1) Abandon our work . . . – or – 2) Do Java anyway and defend our decision, perhaps making enemies along the way[.]"

2.8 Lindholm email thread of October 25-26, 2005

Tim Lindholm sent an email to Andy Rubin stating that "perhaps the key exercise [with Sun] probably remains trying to find an enforceable license that requires compatibility but otherwise does not impose cost or onerous conditions on distribution and use[.]"

2.9 Rubin email of December 20, 2005

Andy Rubin wrote an email to other Google employees recommending that "either a) we'll partner with Sun as contemplated in our recent discussions or b) we'll take a license."

2.10 Lindholm email of February 10, 2006

Tim Lindholm wrote an email to another Google employee, copying Andy Rubin, stating that he had recently been "helping negotiate with my old team at Sun for a critical license."

2.11 Gupta-Rubin email thread of March 16-April 19, 2006

Vineet Gupta of Oracle and Andy Rubin of Google exchanged several emails in an attempt to negotiate between the companies a Collaboration Development and License Agreement.

2.12 Desalvo email of June 1, 2006

Chris Desalvo, a software engineer at Google, wrote an email to Andy Rubin asking him: "With talks with Sun broken off where does that leave us regarding Java class libraries?"

2.13 Bornstein email of June 12, 2006

Dan Bornstein, technical lead for the Android Dalvik virtual machine and core libraries, wrote an email to the Android engineering team acknowledging that Google's use of Java was dependent on reaching a deal with Sun: "As for what set of java.* classes we're aiming for, that's still somewhat of an open question, the resolution of which will undoubtedly hinge on what happens (or fails to happen) with Sun."

2.14 Swetland email of August 16, 2006

Brian Swetland, software engineer, sent an internal Google email stating: "we are building a java based system: that decision is final[.]"

2.15 Rubin email of November 12, 2006

Andy Rubin learned that Sun was open sourcing Java SE, Java ME, and Java EE under a GNU General Public License, and engaged in an email discussion about how and whether Google could use that license in order to obtain the desired rights to Java. The discussion pointed out that the "GPL license (sun's license) doesn;t [sic] work for us."

2.16 Swetland email of March 29, 2007

Brian Swetland of Google wrote an email to Dan Bornstein, also of Google, copying an Android Engineering email list, explaining with respect to Android: "[T]he fact that we are not likely to run TCKs and unlikely to be able to call it Java is not due to desires on our part, but to legal/contractual hurdles imposed by a certain external entity."

2.17 Rubin-Schmidt email thread of May 10-11, 2007

Andy Rubin wrote an email to Eric Schmidt stating "I'm done with Sun (tail between my legs, you were right.) They won't be happy when we release our stuff, but we now have a huge alignment with industry, and they are just beginning."

2.18 Gupta-Rubin email of August 2, 2007

Once Google made clear to the public in the second half of 2007 that it was working on a Google phone, Vineet Gupta of Oracle emailed Andy Rubin to ask what Google was planning and to discuss licensing. Andy Rubin did not respond.

2.19 Lee email (to Schmidt) of May 30, 2008

Bob Lee, former Google Core Library Lead for Android, emailed Eric Schmidt, Google’s chairman and then CEO, that: "Sun puts field-of-use restrictions in the Java SE TCK licenses which prohibit Java SE implementations from running on anything but a desktop or server. These restrictions prevent Apache Harmony from independently implementing Java SE . . . not to mention Android (though that's water under the bridge at this point)."

2.20 Gupta email of October 1, 2008

In an internal Oracle email, Vineet Gupta of Oracle reported on a recent discussion with executives in which they discussed "a license to Google that enables them to make Dalvik compatible, get the Java Brand – [and] any one downstream that wanted the Brand (and IP protection) would need to come back to Sun for the license as well (I assume TCK).”

2.21 Schmidt testimony about Google's legal worries in 2009

Eric Schmidt, Google's Chairman and former CEO, testified that in 2009, "Google was sufficiently worried about being sued that it thought about buying all the rights to Java."

2.22 Sobota email of February 19, 2009

Dave Sobota, a director of corporate development at Google, sent an email to Tim Lindholm, Bob Lee, and others proposing that "Google buys the rights to Java from Sun (patents, copyrights, etc)." The email stated that this proposal was "Good for Google" because "Our Java lawsuits go away." It further stated that a possible bad alternative if Google did not buy the rights to Java would be that "IBM or Oracle buys rights to Java, further locks down the platform or entangles it in more Patents/IP."

2.23 Cizek testimony on April 2009 licensing talks with Google

Leo Cizek, Oracle Account Manager, testified that he discussed Java licensing with Google in April 2009:

"Q. After December 2005, did you have any other discussions with anyone from Google regarding Android?

A. Yes. In, I think, April of 2009, I had a discussion where the person from Google wanted to discuss Java Standard Edition. But I brought up the subject of Android, and we discussed that, as well.

Q. So what was the name of the person whom you spoke to, who worked for Google?

A. Martin Buccholz.

Q. And what was the reason that you found yourself speaking to Mr. Buccholz?

A. Mr. Buccholz had contacted a colleague of mine, indicating that he wanted to discuss with the correct person at Sun the possibility of Google's licensing the source code to Java Standard Edition so that they could get access to a particular type of support. Getting, like, advance notice on security bug fixes.

. . .

A. When I called Mr. Buccholz -- this was a conference call, by the way -- I had a colleague on that line with me, as well, a systems engineer from Sun. I explained that Sun would be very interested in looking into the possibility of doing a source license agreement covering Java SE and providing just the type of support that they were requesting. But I said that there would be something that would have to be fixed, first, which is the fact that regarding Android there was no commercial use license; and, as we understood it, Android was shipping an incompatible version of Java, commercially."

2.24 Cizek email of April 29, 2009

Leo Cizek, an Oracle employee, sent an internal email reporting on a conversation in which he informed Martin Buchholz, a Google software engineer, that Google's use of Java in Android was unacceptable: "I delivered the message that they have only two options: OpenJDK or Commercial Use, which would require compatibility. I also explained that using Java in the context of customer-facing applications is considered by Sun to be commercial use. I also explained that if they choose the commercial use/compatible option, it would have ramifications throughout Google, and I gave Android as an example. Martin replied: ‘The Android group did not use any Java code in developing Dalvik; they only used the Java specifications.’ . . . I replied that Sun’s position is that the spec license agrmts require that any s/w created from them which is for commercial use be compatible."

2.25 Catz testimony on May/June 2010 discussions with Google

Safra Catz, Oracle's CEO, testified as follows regarding discussions with Google:

"Q. Well, what did you do, if anything, before bringing this lawsuit against Google?

A. We reached out to Google a number of times trying to get this matter resolved with them. We met with them. You know, a number of us met with them at different times.

Q. Were you involved in any of those meetings?

A. Yeah. I was informed about the other meetings, but I was actually involved with one with Alan Eustace, Andy Rubin's boss at the time.

Q. Can you explain what it was you were trying to accomplish by meeting with Google -- approximately when were these meetings taking place?

A. Well, we actually acquired Sun in -- in January of 2010. And so after that the -- the meeting I went to Alan Eustace was almost two years ago now, so June of -- June of 2010 --

Q. And what were you trying to accomplish --

A. (Continuing) -- May maybe. May, June, something like that.

Q. And in these meetings around May, June, 2010, what was it that you were trying to accomplish by meeting with Google?

A. Well, we had really two objectives. One was to bring Android on into Java compatibility. That was very, very critical. The other part was to get Android licensed and paying for the intellectual property."

2.26 Kurian testimony on May-July 2010 discussions with Google

Thomas Kurian, Oracle EVP for Software Development, testified as follows:

"Q. With respect to the second item, Mr. Kurian, Mr. Kurian, what did you say to Google?

A. I specifically discussed -- we specifically discussed with Mr. Rubin that the Dalvik implementation and their implementation of Java needed to comply with the Java Standard specifications, which meant you had to implement the class libraries completely and also pass the TCK.

Q. Did Google accept that?

A. No."

2.27 Lindhom email of August 6, 2010 (the most famous "Lindholm email")

Tim Lindholm sent an email to Andy Rubin and others stating that "Larry and Sergei [sic]" asked him "to investigate what technical alternatives exist to Java for Android and Chrome." In the email, Lindholm writes that the alternatives "all suck," and that Google "need[s] to negotiate a license for Java under the terms we need."

3. Google Knowingly and Willfully Infringed Because of its Profit Motive and To Secure Its Dominance in the Mobile Search Market

3.1 Miner email of October 12, 2005

Rich Miner co-founder of Android and Google employee, wrote an email to Andy Rubin stating: "[i]t is widely believed by that if an open platform is not introduced in the next few years then Microsoft will own the programmable handset platform[.]"

3.2 Google Inc.'s Form 10-K for 2005

Google Inc.'s Form 10-K for the fiscal year ending December 31, 2005 noted:

  • Google's business model of relying on search engine advertising from browsers used on personal computers was in jeopardy because "[t]he number of people who access the Internet through devices other than personal computers, including mobile telephones . . . , has increased dramatically in the past few years."

  • "[I]f we are slow to develop products and technologies that are more compatible with non-PC communications devices, we will fail to capture a significant share of an increasingly important portion of the market for online services."

3.2 Bornstein email of April 13, 2006

In an internal Google email to Andy Rubin and Steve Horowitz, Dan Bornstein wrote: "We need to provide an alternative to MSFT [= Microsoft], and we need to do it in such a way as we don't fragment 3rd party developers. . . . Java has very little fragmentation, and it's adoptable. If we play our cards right, we can also leverage not only existing developers, but applications as well."

3.3 Android PowerPoint presentation dated November 2006

An Android PowerPoint presentation, dated November 2006, states:

  • "Supporting Java is the best way to harness developers"

  • "[There are] 6M Java developers worldwide."

  • "Strategy: Leverage Java for its existing base of developers."

3.4 December 2008 Android presentation

December 2008 Android presentation discussed the growing mobile market and explained that "the trajectory for mobile search will converge with conventional computer based search." It further stated: "Why did Google invest in Android? . . . . Don't get locked out!"

3.5 Gundotra email of April 13, 2010

Vic Gundotra of Google emailed Jonathan Rosenberg of Google and copied Andy Rubin, stating: "Apple is going to make sure only they have a shot at mobile advertising. We need android to win more than ever."

3.6 Talking points slide of October 12, 2010

Jonathan Rosenberg's assistant forwards a "talking points" slide to Alan Eagle of Google stating that Android is a "critical asset" for the success of Google's 5 Business Units, each of which is a $10 billion opportunity for Google.

3.7 Google-internal notes of November 4-5, 2010

Internal Google notes from a Mobile Strategy Summit state that "if we miss the 'mobile window', we'll be out of business in 10 years."

4. Google Knowingly and Willfully Infringed Because It Had No Viable Technical Alternative

4.1 Rubin email (to Page) of October 11, 2005

Andy Rubin sent an email to Larry Page stating that "[i]f Sun doesn't want to work with us, we have two options: 1) Abandon our work . . . – or – 2) Do Java anyway and defend our decision, perhaps making enemies along the way[.] As you can see, the alternatives are sub-optimal[.]" The email further stated: "Android is building a Java OS. We are making Java central to our solution because a) Java, as a programming language, has some advantages because it's the #1 choice for mobile development b) There exists documentation and tools c) carriers require managed code d) Java has a suitable security framework[.]"

4.2 Swetland email of January 2, 2006

Brian Swetland of Google wrote an email to Mathias Agopian, also of Google, and copied Andy Rubin, stating that a primarily Java API "simplifies the application development story . . . reduces our development time… faster app development and debuggability." He further stated that Java was better than other technical alternatives, such as "C++, Intercal, etc" because:

  • "Java is more accessable [sic] than C++. There are more Java programmers. There is more standardization in tools and libraries. Debugging is much simpler (especially for people who are not total rockstars – perhaps a lot of casual developers, etc)"

  • "Java solves a lot of the portability issues C++ has"

  • "Java does have a big win of being much more compact code than native arm/thumb code."

4.3 Desalvo "half-ass" email of June 1, 2006

Chris Desalvo, software engineer at Google, wrote an email to Andy Rubin stating: “"egarding Java class libraries[,] [o]urs are half-ass at best. We need another half of an ass."

4.4 Bourrillion chat message of November 14, 2007

Kevin Bourrillion, software engineer at Google, wrote a chat message to Bob Lee saying that Android had "take[n] [the] good stuff from java[.]"

4.5 Lindholm email of August 6, 2010 (the most famous "Lindholm email"

Tim Lindholm sent an email to Andy Rubin and others stating that "Larry and Sergei" asked him "to investigate what technical alternatives exist to Java for Android and Chrome." In the email, Lindholm writes that the alternatives "all suck."

5. Google Attempted to Conceal its Use of the Copyrighted Materials for as Long as Possible

5.1 Chen-Chu chat of November 4, 2007

In a November 4, 2007 chat between Jason Chen and Eric Chu, both of Google, Eric Chu wrote: "This Java stuff can be nothing or very serious. I do believe Sun is planning to come after us." He further wrote: "the only thing we need to scrub for at this stage is references to Java."

5.2 Bornstein email of November 7, 2007

In an internal Google email, Dan Bornstein directs a team to "[s]crub out a few more 'j's" from the Android code.

5.3 McFadden email of November 12, 2007

Andy McFadden, software engineer for Google, reported that his recent activities included: "Remov[ing] various incarnations of the 'J word' from the SDK."

5.4 Walker email of November 12, 2007

Amanda Walker, a Google software engineer, emailed Dan Morrill, also of Google, to ask him not to "publicly compare Android to J2ME or any other technology." She explained: "As innocent as that seems, unfortunately it's exactly one of things that it's vital that we not do. It doesn't even sound that innocent, actually--at a first guess, the fact that we're not using a 'real' JVM or J2ME at all may dim Sun's initial euphoria a bit . . . and if Sun decides to take potshots at Android, that would hugely complicate things. . . . I'm planning on just playing dumb and forwarding all questions back to the mother ship :-)."

5.5 Morrill instant message of November 14, 2007

In an instant message from Dan Morrill to Dan Bornstein, both of Google, Dan Morrill announced his intention to "do a sanity pass over the [Dalvik spec] docs" before they were released, because he would not "be surprised to find legally questionable uses of the j word."

5.6 Rubin email (to PR team) of November 16, 2007

After learning that a Google employee had stated publicly that Google had its "own APIs [and] a better flavor of Java[,]" Andy Rubin emailed the PR team to request that "only authorized speakers speak to the press" and emphasized that: "This is really important and a legal issue."

5.7 Miner email of November 18, 2007

After another Google employee was asked to do a tech interview relating to Android, Rich Miner, co-founder of Android and Google employee, wrote to Andy Rubin and others that he would "prefer to have" himself "or someone else from our team handle these calls if they [are] Android related[.]" He stated that "[t]here is lots of sensitivity around Android and Sun/Java[.]"

5.8 Burke email of November 21, 2007

David Burke, an engineering director at Google, described his recent presentation on Android to Andy Rubin, stating: "I was very conscious of the sensitivity around Java and was careful to sidestep any pointed questions in that direction (I definitely never said JVM or ‘the’ Java language, for instance)."

5.9 Rubin email of March 24, 2008

Andy Rubin wrote an internal Google email directing employees at the JavaOne conference booth to "answer direct developer questions about Android" and demonstrate Android on a "[o]ne-on-one only" basis. He instructed the employees to give demonstrations on a "one-on-one only" basis where the individual "know[s] exactly who . . . [he/she is] . . . talking to." He explicitly directed them not to "demonstrate to any sun employees or lawyers."

5.10 Bug-tracking system entry of May 12, 2008

A Google "Buganizer" entry list that Issue 1168987 is to "[r]emove j-word from everywhere." The notes to the entry state: "The problem is that we can't just find and replace java with dalvik. This has no functional impact but we need to make a call in terms of what extent we need to do this. Need feedback from arubin, hiroshi, and some combination of lawyers."

5.11 Gibson email of October 7, 2008

Ryan Gibson of Google wrote an internal Google email to Dan Bornstein, among others, noting that Dan had "stripped" "dirty words like 'Java' and 'J2ME' before SDK release."

5.12 Lindhom email of April 29, 2009

Tim Lindholm wrote an internal Google email about discussions with Sun about a partnership or support agreement. He stated that he wanted to avoid "inadvertently stir[ring] anything up for Android" and opined that Google should "step away" from the negotiating table with Sun "and only respond further if Sun chases after us."

5.13 Morrill email of September 28, 2010

Dan Morrill of Google sent an internal Google email discussing results of word search on Android code for the purposes of cleaning up that code. That word search included, "for obvious reasons: sun oracle* orcl Java jvm jdk jre Jcp jsr patent*" Dan Morrill stated: "Honestly I don’t think we can’t not scan for these. These represent ~50% of the total hits, so perhaps we can spotcheck this set, as we discussed."

5.14 Google-internal emails Of October 26-November 11, 2010

A group of Google employees sent various emails discussing scanning the Android code for references to "bad words" and finding that "biggest offenders are Java, License and Patent."

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Thursday, May 12, 2016

The biggest problem for the Oracle v. Google retrial: Judge Alsup's reality distortion field

As an observer of two major disputes that started in the Northern District of California, Apple v. Samsung and Oracle v. Google, I have repeatedly taken issue with Judge Lucy Koh's unwilligness to invalidate bad patents, but all in all I'm still glad she has been nominated for the Ninth Circuit rather than Judge William H. Alsup, her San Francisco-based colleague. Judge Koh has always dealt very professionally with appellate decisions reversing her rulings, which is more than Judge Alsup can say at this stage.

The biggest problem facing the ongoing Oracle v. Google retrial is that Judge Alsup doesn't seem to have swallowed the fact that the IP-specialized Federal Circuit found it hard to believe how one could get copyright law as wrong as he did in this case ("confused" is what one of the appellate judges said at the December 2013 hearing).

For purely emotional reasons, this retrial appears rigged to me. Various pretrial decisions didn't seem evenhanded to me, with Google perhaps benefiting from Judge Alsup's frustration with the fact that his highest-profile IP ruling was nullified by three higher judges than him. Judge Alsup would, of course, benefit from a final decision in Google's favor in the sense that his 2012 non-copyrightability blunder would then be deemed inconsequential in retrospect.

This is the way in which Judge Alsup proposes to inform the jury of the fact that there has been a previous trial:

"The trial judge held, however, that the declaring lines of code and their structure, sequence, and organization were not copyrightable under the Copyright Act. On appeal, the Court of Appeals for the Federal Circuit disagreed with regard to copyrightability and held that the declaring lines of code and their structure, sequence, and organization were copyrightable and sent the case back here for this trial on fair use and, depending on that verdict, for damages and other relief. This is the trial we are now having."

This just appears to be a statement of facts, but its net effect is highly prejudicial from Oracle's point of view. I just spotted this filing by Oracle's lawyers, which warns Judge Alsup that the way he plans to influence the jury would in and of itself turn this trial into a mistrial (this post continues below the document):

16-05-12 Oracle Objections Re. Instruction on Procedural History by Florian Mueller

Oracle's lawyers essentially argue that jurors will place more faith in Judge Alsup's assessment (as they see him every day) than in that of an appeals court that is a few thousand miles away and won't appear in San Francisco to explain why Judge Alsup got the copyrightability part completely wrong. For example, this could lead jurors to believe Google acted in good faith. Judges are not allowed to appear as witnesses in their cases, and this is not a question of the hat they wear at a given time but of what they say:

"If the Court reports its views to the jury on the copyrightability of the declaring code and SSO, and indicates that the jury hung in the first trial, it will be tantamount to calling the Court as a witness. [...] The only way Oracle could counter such testimony is by calling Judges O'Malley, Plager, and Taranto as witnesses to tell the jury that the Court got it completely wrong, and in fact that the declaring code and SSO are copyrightable. But no judge should be a witness, pure and simple. And a judge should not become a witness inadvertently through the act of informing the jury of his views on a legal issue that already has been decided. Such testimony is inadmissible under Rule 605."

I doubt that Oracle's lawyers would have put it this bluntly ("the Court got it completely wrong") if they believed they were getting a fair trial in Judge Alsup's court.

Oracle cites a former Federal Circuit decision, according to which a district judge is reasonably expected to "put[] out of his or her mind previously-expressed views or findings determined to be erroneous." (TriMed, Inc. v. Stryker Corp., which quotes a Ninth Circuit case). I, too, believe that the proposed jury instruction on procedural history falls short of that standard. Judge Alsup's 2012 decision has been nullified, not only by the Federal Circuit but practically also by the Supreme Court, which declined (despite massive campaigning by Google and its allies) to reinstate the original decision.

Oracle also fears, for understandable reasons, that any reference to a former jury having deadlocked over the "fair use" issue could hurt. The proposed instruction could be interpreted as indicating that fact but it doesn't say so explicitly. Therefore, Oracle's objection appears stronger to me with respect to the copyrightability question.

The filing notes that Judge Alsup greeted Jonathan Schwartz, whose disastrous stewardship of Sun Microsystems was once criticized by Oracle founder Larry Ellison and who simply wants to settle accounts with Oracle by supporting Google here, with the words "Welcome again." I wonder whether Judge Alsup said the same to other witnesses who came back.

On a website that spreads -- without a factual basis -- fear, uncertainty and doubt about the implications of this case, I read that Judge Alsup told jurors not to inform themselves about this case on the Internet (which they're simply not allowed to do, though I guess it's sometimes hard to prevent) because there was "propaganda" out there about it "on both sides." What appears evenhanded is actually just another biased misrepresentation by Judge Alsup. There's lots of "sky falling down because of APIs" propaganda out there, and to that extent I agree that smart jurors shouldn't pay any attention to it. However, I'm not aware of anything comparable in Oracle's favor. Saying "on both sides" is the opposite of evenhanded when it's simply not the truth.

There are only two kinds of bloggers who have agreed with some of Oracle's claims. There are a very few lawyers who write about this totally nonjudgmentally, without the slightest indication of them being Oracle supporters. They are neutral, as opposed to Google-friendly bloggers affiliated with Google-funded organizations and long-standing Google allies of the "right or wrong, my company" kind writing about it. And then there's this blog here.

Please bear with me while I'm repeating the following: I haven't done any work for Oracle in quite a while, I have no reason to assume today that I'll ever do any again (I'll release two game apps this year and that's my professional future), and I have taken consistent positions ever since the case started. This lawsuit was filed not long after I had been fighting against Oracle's acquisition of Sun Microsystems on the antitrust front. Despite having embroiled in a bitter fight with Oracle, I realized early on that Oracle had a point here (though I usually like Google a lot, especially Android). I still hold those views even though working with Oracle on standard-essential patent matters is a thing of the past for me.

An opinionated, independent view is not "propaganda" by any stretch of the imagination. This blog got copyrightability right when Judge Alsup got it wrong, and three higher judges than Judge Alsup totally agreed with me (and the top U.S. court didn't elect to hear the case in order to disagree). The truth is on my side, not his. And when all is said and done, people will see that this blog also got "fair use" right to a greater extent than he did/does.

Having invested heavily in mobile app development (I promise you that you'll see a really groundbreaking result soon), I'm concerned that Judge Alsup's "fair use" instructions threaten to portray software developers like me as second-class copyright holders, and I'm going to fight for our rights and I'll oppose the baseless FUD according to which communism is the right answer to the API question. Yes, access to APIs is sometimes very important. This case is not about whether one can write apps for an existing platform. It's not even about compatible reimplementations. It's about an "embrace-extend-extinguish" approach to APIs. If anyone ever tried to turn APIs into a strategic weapon, compulsory licensing on fair, reasonable and non-discriminatory terms would be the more appropriate vehicle than non-copyrightability and "fair use" of a kind that would be extremely unfair to honest software developers.

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Sunday, May 8, 2016

Oracle v. Google copyright retrial won't bring clarification on application programming interfaces (APIs)

Tomorrow, the Oracle v. Google Android-Java copyright retrial is scheduled to begin. Almost six years have passed since the filing of this lawsuit, and about four years since the first trial, which could have been much more useful if not for Judge Alsup's sometimes unfathomable (and bad) decisions.

There's really no reason to get excited about this retrial with respect to application programming interfaces (APIs). For Oracle it's more important than for Google to make headway, and for the outside world it's of very limited interest what happens now (as opposed to what may happen on appeal). During and after the first trial, the copyrightability of APIs was a key issue. In my opinion, the way this played out was merely consistent with what the law had been all along, but admittedly a lot of people took a different position in the public debate, so this had to be settled--and it has been, in Oracle's (and almost all software developers') favor.

Nothing that the judge, the jury or the lawyers will say during the retrial is going to have an impact on API copyrightability or result in a general rule that makes APIs available on "fair use" terms. The issues that will be raised are predictable based on pretrial motions practice and pretrial orders. There'll be some well-known industry execs testifying (pretty much the same lineup as last time), they'll show some company-internal documents, and they'll discuss mindblowing financials. But let me put it in the clearest terms:

This retrial is not about whether the technically-incompatible reimplementation of an API is covered by fair use.

This is not a prediction of the outcome. While I'm as convinced as ever that there is hardly a clearer case of UNfair use than this one (let me just refer you to two previous blog posts on this question: "Fair use" is a fairy tale, Google Books comparison), the trial is a tossup. If I had to estimate the chances of Google persuading the jury that this is (though it absolutely positively isn't) "fair use," or of Google getting another jury to deadlock (like in 2012, where some jurors made comments to the press that didn't suggest they understood the case), then I'd say it's a little bit more likely than Oracle convincing the jury to throw out Google's defenses. In numbers: I see a 55% or 60% chance for Google. But if Google prevails, Oracle can still win by judicial decision. Anything is possible, even a post-trial finding by Judge Alsup that no reasonable jury could have found "fair use" here, though he couldn't surprise me more (not because of the merits, which would warrant such a decision, but because of the way he's been handling the case so far). The appeals court, however, would be fairly likely side with Oracle.

I saw a comment somewhere a few days ago from a lawyer who said that copyright trials like this favor right holders because the jury, after seeing literal copying, will be more inclined to conclude that there was an infringement. One can only make that statement without conducting an analysis of the record of this particular case. Google will benefit from the following success factors (which are not going to matter much on appeal, but they will influence the jury):

  1. Jury instructions: Judge Alsup has made some edits since his first draft, which was scandalous. Those jury instructions still suck. There are issues on which a clear holding in Oracle's favor would have been warranted. Instead, the final jury instructions (still) suggest that you can steal someone's program code as long as the product resulting from such theft is in some way, shape or form different from the original. It's a shame.

  2. Bifurcation: The same judge who had no qualms about letting an entire jury trial over "fair use" be a potential waste (including long jury deliberations) instead of previously making up his mind on copyrightability suddenly (honi soit qui mal y pense) found it more economic to separate the damages question from the "fair use" merits. The net effect is that Google will actually be able to present some evidence and testimony during the first trial stage that the jury could easily confuse for "fair use" considerations, or that might at least influence the jury for purely psychological reasons. By contrast, Oracle's ability to raise some of its most powerful points with respect to Google's conduct has been limited.

  3. "Free" Java language: Unlike in almost any other "fair use" case, Oracle's lawyers face a considerable hurdle (not the only one, but a key one) in the fact that Sun allowed everyone to implement the Java language. While it will (based on pretrial filings and orders) be made technically clear to the jury that only a few APIs were deemed necessary for implementation of the Java language, jurors may very well feel that Java was for the taking anyway and that whatever Google took beyond the undisputedly-free part was then covered by "fair use." Jonathan Schwartz, on whose 2012 testimony I commented in this blog post, will be in the tank for Google once more with a particular emphasis on "free Java."

  4. Open source: I've been dealing with open source IP issues ever since I became involved with MySQL AB, a dual-licensing open-source startup, almost 15 years ago. To me it's just obvious that Google simply didn't use Java on open-source terms in the past; it may do so in the future, but that's another story. Java under the GPL and Java in Android (Apache-licensed) have nothing to do with each other, and whatever the Harmony project may have done with out a license doesn't mean Google's actions were legal. However, it won't be easy for jurors to see through the OpenJDK, GPL, Apache, Harmony etc. smokescreen they're going to have in front of them.

Based on what I've been able to research, Oracle's trial lawyers know how to build a connection with a jury and how to make compelling, simple arguments on issues that are actually very complex. So do Google's. I expect both trial teams to be at a level. And Google's team has the advantages outlined in the previous four bullet points, and possibly others.

If the jury is very smart, it will figure this out and conclude that there was no "fair use" here, by far. Of course, a stupid jury could also reach that conclusion, but more likely a stupid or even "semi-smart" jury will side with Google.

If the jury agrees with Oracle, Google will appeal. Otherwise, Oracle will. But this "fair use" thing here should never even have been put before a jury. The evidence simply doesn't support a reasonable finding of "fair use." Even one or more of the "fair use" cases Google cited in the appellate proceedings involved a determination by judges that they, not juries, could resolve "fair use" since it's an equitable rule, as opposed to a mere fact-finding exercise.

No doubt both parties will try to get a judgment as a matter of law (JMOL). I doubt they'll get it. The correct decision would be to enter JMOL in Oracle's favor, but it's too far a stretch of the imagination that Judge Alsup would do that. Chances of that one are not nil, but maybe 0.1%. It's also unlikely he'll side with Google because he probably knows this could result in a humiliating reversal, which would call his fairness into question considering that the appeals court already found the 2012 decision in Google's favor ridiculous. The safest path for him will be to let the trial unfold and to let the jury render a verdict (or deadlock).

There's simply no way in which the outside world, especially the industry at large, will be smarter after this trial. In tactical terms, either party obviously would increase its chances in the appellate proceedings, at least psychologically, by prevailing now. But it will only get interesting at the appeals court(s). And even then, this is not really going to be about APIs. There's particularly one passage in the jury instructions (relating to how hard or easy it is to establish transformative use) that I think raises huge issues for the software industry at large, but that one doesn't mention or allude to APIs in any way.

So if anybody thought this trial could effectively provide everyone with free access to APIs, including technically-incompatible reimplementations, you can only be disappointed. Even if Google wins, that won't be the result. The result would, in that case, just be that a jury got confused about open-source licensing issues, "free" access to a programming language and things like that.

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Monday, May 2, 2016

Where will the 'friends of the Supreme Court' come down on design patent damages in Apple v. Samsung?

In March, the Supreme Court granted Samsung's petition for writ of certiorari with respect to design patent damages. Thankfully, the top U.S. court will interpret a statute that the Federal Circuit and Judge Koh in the Northern District of California believe allows an unapportioned disgorgement of infringer's profits regardless of how many other patented and non-patented elements a product may have--an approach that is not applied to any other intellectual property right. Meanwhile, both Apple and Samsung have been granted extensions for their filings. Samsung's opening brief is due on June 1. The amici curiae ("friends of the court") supporting will then have to file their briefs on or before June 8.

This will be the fourth round of friend-of-the-court submissions in connection with this extremely important issue:

  • In 2014, amicus briefs were filed ahead of the Federal Circuit opinion on Samsung's appeal of the Northern District of California ruling. Samsung's supporters included 27 law professors and industry group CCIA, which presented the theory that I believe is Samsung's best shot now. Apple received support from companies, with maybe one exception, could be described as no-tech and low-tech companies.

  • After the Federal Circuit sided with Apple last year, Samsung petitioned for a rehearing. Google, Facebook, HP and others filed an amicus brief in support of the petition for rehearing, in which they warned that a company could lose its entire profits over a single patented icon design. CCIA also supported the petition.

  • The Federal Circuit denied the petition, and Samsung went on to petition the Supreme Court. Earlier this year, its petition received broadbased support from industry as well as non-governmental organizations and academia. The issue was certworthy enough on its own but those amicus briefs probably made it particularly easy for the Supreme Court to identify this as a case to take on. There were no amicus briefs against the petition, but that, in all fairness, doesn't mean much: it's generally considered counterproductive to express an interest in the denial of a petition since it may serve to further raise the profile of the matter. I'm sure Apple didn't encourage anyone to file.

When the fourth round of amicus briefs (firstly the ones in support of Samsung's position, then Apple's backers) come in, it would be very surprising if Apple got more support, in qualitative or in quantitative terms, than Samsung on this issue. The economy at large and society at large stand to lose from overcompensation of design patent holders. But Apple, with its vast resources, is now probably making quite an effort to drum up support, and that effort will yield some results.

There are four main categories of stakeholders among the potential amici curiae in this case:

  1. Tech companies: In the past, Apple had virtually no support from that group of stakeholders, and Samsung had plenty. Technology businesses typically don't want their engineering efforts to be undervalued (but that is what an unapportioned disgorgement of infringer's profits would do). Samsung appears to hold more U.S. design patents than any other company, and Samsung itself is now fighting for apportionment. So far, the only tech company (besides Apple) that I've seen enforce a design patent is Microsoft (in its patent spat with Corel), and Microsoft may consider iOS the "lesser evil" among competing operating systems than Android. Then, Microsoft has actually advocated reasonableness in patent remedies (and balanced procedural rules) in a number of cases over the last 10 years, and I'm sure Microsoft wouldn't want to be liable for a disgorgement of infringer's profits if a single Windows icon was ever found to infringe someone else's design patent.

  2. No-tech and low-tech companies: Even product categories that are less multifunctional than smartphones and tablet computers typically embody more than just one patentable design. It is, therefore, hard to imagine that many companies from outside the high-tech sector would support Apple, but we'll see.

  3. Non-governmental organizations: public interest advocates routinely oppose overcompensation of right holders.

  4. The U.S. government: In a high-profile context like this, the administration usually expresses its views, but it doesn't have to (for example, it can also file something that fills a lot of pages without clearly taking anybody's side, or it could even elect not to file anything at all). It's one of the Solicitor General's tasks to represent the United States in court. The Solicitor General is a Department of Justice (DoJ) official, but the DoJ will likely consult with key government agencies such as the United States Patent and Trademark Office (USPTO) and the Department of Commerce on this matter. The USPTO never wants to discourage patentees from filing applications, but it also knows that economically devastating and blatantly unreasonable remedies ultimately hurt the patent system and could result in legislative action. The Department of Commerce has to think about implications for the economy at large, not just one company, albeit the #1 U.S. company by some criteria.

In about five weeks from now, we'll see how successful Samsung's mobilization efforts have been, and two months after that we'll see the fruits of Apple's campaigning.

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