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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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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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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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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Oracle fundamentally disagrees with Judge Alsup on how to instruct jury on fair use in Google case

On a recent occasion, Judge Alsup has correctly stated what the Federal Circuit ruled to be copyright-protected in this case (unlike in an order earlier in the build-up to the May retrial). But when I read his draft jury instructions on fair use for the upcoming Android-Java copyright retrial, I couldn't believe my eyes because he basically portrayed the "fair use" determination as if copyright was anti-innovative and "fair use" was the way and the light. I'm now even more of a Judge Alsup skeptic than before, and depending on how this case continues, "skeptic" may soon be a gross understatement.

Oracle has just filed a document that makes it very clear that it deems those "fair use" jury instructions to be fundamentally flawed (to put it diplomatically) and between the lines it indicates that Judge Alsup only has two choices: he can either rephrase his instructions so as to be consistent with the Federal Circuit opinion (and mandate) or he can have another appeal, with a high likelihood of him ending up being the loser of the appeal once again. And if another one of his key decisions had to be overruled in this case, it could become a major embarrassment.

When judges ask for "critique" of a draft jury instruction, they expect and get extremely respectful responses. Oracle's response in this case is not disrespectful, but it voices such a fundamental disagreement with the judge that it's clear there's no love lost between them (this post continues below the document):

16-04-14 Oracle Response Re. Fair Use by Florian Mueller

I'm now just going to quote, and comment on, some passages of Oracle's filing that show just how much the Java copyright holder disagrees with the judge:

• "The Court's instructions do not accurately and evenhandedly state the law on fair use."

  COMMENT: I don't want to read too much into that, still I can't help but interpret "not ... evenhandedly" as a way of saying "Your Honor, you want Google to get away with what it's done and short of saying so, you couldn't have made it any more obvious than with those proposed jury instructions."

• "Taken as a whole, the effect of the Court's proposed instructions would be to eliminate the exclusive right to prepare derivative works (or to authorize others to do so)."

  COMMENT: Just like Judge Alsup's non-copyrightability ruling threatened to "vitiate" (that term showed up in the amicus brief of a former U.S. copyright chief) software copyright, Oracle now claims that Judge Alsup's misportrayal of "fair use" law would effectively mean that anyone who creates a derivative work is highly likely to benefit from the fair use exception. Oracle's lawyers' use of "to eliminate" is typical hyperbole and I wouldn't go that far. It's not like those jury instructions would make it absolutely impossible or even highly unlikely for Oracle to prevail in a jury trial, but Oracle would indeed face an uphill battle in a situation in which, also in light of the Federal Circuit opinion, it should normally be on the winning track.

• "If the instructions are given in the proposed form, they would violate the Federal Circuit's mandate and constitute reversible error."

  COMMENT: This announcement of an appeal sounds so strong that I wouldn't even be surprised if Oracle tried to avoid a jury trial based on unacceptable jury instructions and take this to the appeals court as soon as possible. If I were in Oracle's shoes, I would certainly see no point in going into a second trial where the court's jury instructions on "fair use" are a huge issue. Maybe Judge Alsup thinks that this may up the pressure on Oracle to settle but that won't happen. It just won't happen unless Google makes Oracle an offer that is too good to refuse. What's going to happen is that Oracle will, if necessary, litigate for a few more years, or even many more years.

• "The [introductory] instruction is too narrow and one-sided in favor of Google in characterizing copyright as protecting against 'plagiarism' and fair use as progress ('development of new ideas that build on earlier ones'). "

  COMMENT: Here, Oracle comments on the most outrageous part of various problematic parts of the proposed jury instructions. You may wonder why I haven't published Judge Alsup's proposed instructions but that's because I don't think anyone would do the world a favor by publishing them: potential confusion of whomever may read them clearly outweighs any potential benefits.

• "The Court's statement of the 'policy' of fair use [...] is not accurate, contravenes the legislative history, and is unsupported. Copyright protection (not just fair use) 'promotes' progress."

  COMMENT: How can you critize a judge any more harshly than by saying (more diplomatically than how I'm now going to paraphrase it) that he's wrong on the law (this reminds me of a Federal Circuit judge wondering about just how much Judge Alsup got confused last time around), he's disrespecting lawmakers, and he's writing up things that are baseless?

• "The instruction on commercial use should direct a finding in Oracle's favor that Google's use is 'purely' or 'entirely' commercial. The Federal Circuit found that Google copied 'for what were purely commercial purposes.' [...] Counsel for Google admitted at oral argument that Google's purpose was 'entirely commercial.'"

  COMMENT: I expected Oracle to demand that the jury instructions, beyond merely stating the law and the Federal Circuit decision on copyrightability, contain some clear findings. It's one of the (many) things I missed when I read those draft instructions.

• "The Court's proposed definition of transformative use is incorrect. It is inaccurate to instruct that '[a] new use is transformative if it is productive ….'"

  COMMENT: In my observation Judge Alsup's draft instructions describe "fair use" in a way that would make the "fair use" exception almost seem to be a rule on an equal footing with copyright itself as far as software is concerned.

• "It is also incorrect and confusing to refer to transformative use as any use 'adding value.' [...] It is not about 'added value.' A 'distinct' purpose is critical."

  COMMENT: Oracle is right on this one: just think of a case like Campbell, where a parody of a music song also changed the music style. The "distinct" purpose is a reasonably high hurdle, and Judge Alsup's proposed instructions make it appear a much lower one than it actually is.

• "Additionally, 'little more than plagiarism' [...] is not the test for what is not transformative. Transformation requires 'real, substantial' modification of the original work [...]"

  COMMENT: I already disagreed at the time of the 2012 trial with how Judge Alsup described the concept of transformation to the jury, and things have only gotten worse since then...

• "[R]eferences to SSO [...] must be accompanied by reference to the declaring code, otherwise the instruction misleadingly suggests that declaring code is not protected when the Federal Circuit 'conclude[d]' that both 'are entitled to copyright protection,' [...], and all agree Google copied the declaring code and the SSO."

  COMMENT: On this one, let me refer you once again to the posting I already linked to at the start of this post. The Federal Circuit indeed held both the declaring code and the SSO copyrightable, and Judge Alsup has on at least one recent occasion stated this correctly, so the jury instructions should also make it absolutely clear (as opposed to confusing jurors).

• "[S]pecific reference to a 'computer program' as functional biases the instruction. Finally, as per the Federal Circuit's finding, the jury should beinstructed that 'it is undisputed here that the declaring code and the structure and organization of the API packages are both creative and original.'"

  COMMENT: As I wrote above, the proposed jury instructions suggest that software is always, no matter how creative or original, a second-class citizen in the realm of copyright law.

• "It is incomplete to tell the jury it must 'decide how much weight to give each … factor[].” [...] 'The Supreme Court has said that this [fourth] factor 'is 'undoubtedly the single most important element of fair use.’'"

  COMMENT: The fourth factor is the effect of the infringement on the market for the infringed product (and authorized derivative products of the infringed product)

• "Oracle respectfully notes that 5 pages are insufficient to raise all of its objections to these proposed instructions. Oracle hereby preserves all its objections, which include any deviations from Oracle's already proposed instructions, [...] and any additional objections by way of Oracle's proposed instructions and jury instruction briefing as per the Court's Standing Order."

  COMMENT: By contrast, Google only raised three pseudo-objections to the proposed instructions and had enough space to discuss each of them in excruciating detail.

It's disappointing that there is now a real risk of the retrial being made pointless. I have little hope that Judge Alsup will make major changes to his proposed instructions. I guess he'll do something, but I can't imagine that it would be anything but insufficient. And depending on how insufficient it is, the appeals court may get involved with this case again rather soon...

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New Oracle filing might result in damages theory north of $10 billion in Google copyright case

Last month there was quite some talk on the Internet about Oracle seeking $9.3 billion in damages from Google in the famous Android-Java copyright case that will go to trial again in a month, with the bulk of that amount ($8.8 billion) being a claim for disgorgement of infringer's profits. Since the related documents are all heavily redacted, I'm far from sure that the disgorgement and reasonably royalty figures can be added up: those are more likely alternative theories. Either way, we're talking about roundabout $9 billion that Oracle wants. At those altitudes, a few hundred million dollars more or less don't matter.

Google naturally rejects Oracle's claim, but it has a problem: the court-appointed damages expert, Dr. Kearl, has come up with a very wide range that also includes Oracle's number as a plausible scenario. That's why Google brought a motion--without previously seeking permission from the court--to exclude Dr. Kearl's testimony from the trial. Judge Alsup, who usually appears to be very strict on case management matters, merely gave Google a slap on the wrist and allowed Google to break a couple of rules at the same time (limit of number of motions in limine, page limit) with that additional motion. In exchange, he also allowed Oracle to bring an additional motion in limine.

Oracle has just filed its response to Google's motion. It's not an opposition brief in all respects: Oracle had already opposed Dr. Kearl's renewed involvement with the case and would still like to see his testimony excluded. Oracle is being very consistent up to that point.

But what if Judge Alsup, whose decisions I've struggled to understand on more than one occasion (most recently, I was very surprised about how he dealt with Google's unauthorized motion) and the most important one of which (copyrightability) resulted in a disaster for him, still wants Dr. Kearl to testify? In that case, Oracle at least wants to prevent the "cherry-picking" it accuses Google of. Apparently, Dr. Kearl came up with three numbers, and Google would like to limit that testimony to a number that would amount to Oracle getting nothing.

In its opposition to such cherry-picking, Oracle first argues that a disgorgement analysis should not consider non-infringing alternatives ("NIAs"). Oracle may be right on the law, but as a matter of policy, I disagree with Oracle on this one. Anyway, here's the most interesting passage from Oracle's latest filing:

"Prof. Kearl's Oracle Number is consistent with Oracle's $8.8 billion, and is in fact much larger than Oracle's $8.8 billion if the Court excludes his improper use of NIAs. Presumably Rule 706 experts do not often offer a number larger than the Plaintiff intends to offer."

It would be unusual indeed, and it would be the result of the court agreeing with Oracle's legal position that non-infringing alternatives cannot be used to reduce a disgorgement figure.

I don't know what Oracle's lawyers believe to be the number resulting from Dr. Kearl's analysis if adjusted by means of removing NIAs, but I guess they wouldn't say "much larger" (emphasis in original) if we were talking about a 5% or 10% difference. A 5% or 10% difference would be "significantly" larger. Therefore, it is fairly possible that the proposed adjustment to Dr. Kearl's numbers would result in a claim well in excess of $10 billion.

Besides that information I wanted to share something else from Oracle's filing. Oracle refers to a 1985 Ninth Circuit decision, Frank Music Corp. v. MGM, Inc.. In that one, a disgorgement of profits from unauthorized performance of scene from a musical at the (old) MGM Grand was based on multiple revenue streams including increased hotel and casino revenues. While it turned out later that the MGM Grand was still doing well without continued infringement, evidence had been provided that the MGM Grand used shows such as the infringing one to bolster its hotel and gaming revenues. The Ninth Circuit wrote:

"Just because one element could be omitted and the show goes on does not prove that the element was not important in the first instance and did not contribute to establishing the show's initial popularity."

This has some important bearing on Oracle v. Google, where Google argues that it no longer needed the 37 Java API packages or that it could already have removed them in 2010. Oracle argues that "the causal connection here is far stronger, because the revenues Oracle seeks to recover were realized on the infringing work (Android), while the gaming and hotel revenues in Frank were earned separately from the infringing work (the show)."

Here's Oracle's filing:

16-04-08 Oracle Response to Google Motion to Strike Kearl Testimony by Florian Mueller

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Google joins the Fair Standards Alliance: discontinued the bad fight, now fighting the good fight

The following press release by the Brussels-based Fair Standards Alliance would have been nothing more than an April Fools' Day joke a few years ago (this post continues with commentary below the press release):

--- START OF PRESS RELEASE ---

Google Joins Fair Standards Alliance

Brussels, March 31st 2016 – The Fair Standards Alliance (FSA) announced today that Google has become its 19th member.

Launched in November 2015 and based in Europe, the Alliance seeks to promote the licensing of standards-essential patents (SEPs) on fair, reasonable and non-discriminatory (FRAND) terms.

"We are delighted in the vote of confidence that a company such as Google is showing in our growing coalition. FRAND licensing of SEPs is a critical part of ensuring that the innovation ecosystem for 5G and the Internet of Things (IoT) can flourish, and we relish the opportunity to work with Google to further our goals of fair and reasonable SEP licensing on a non-discriminatory basis," said Robert Pocknell, Chairman of the FSA.

Allen Lo, Deputy General Counsel for Patents at Google, said: "Google has joined the FSA to support the leadership that it has demonstrated in showing the way to a fair and principled result."

The FSA believes that the entire innovation ecosystem is threatened by unfair and unreasonable SEP licensing practices. Failure to honour the FRAND commitment that exists in most standardisation licensing creates barriers to market entry, threatens to stifle the full potential for economic growth across major industry sectors, and ultimately curbs consumer choice.

The FSA's member companies, who hold more than 160,000 patents and spend more than 32 billion euros per year on R&D and innovation, include: AirTies, BMW, Cisco, Dell, Fairphone, HP, Intel, ip.acess, Juniper Networks, Lenovo, Micromax, peiker acustic, Sierra Wireless, Telit, u-blox and Volkswagen.

--- END OF PRESS RELEASE ---

This is excellent news for the FRAND cause. Google's economic weight alone exceeds that of all the other FSA members, though they already had a pretty good membership base before. Moreover, I could imagine that this here increases the chances of other heavyweights--Apple and Samsung, I'm looking at you in particular--joining the same organization.

Google's decision to join the FSA comes about a year after it contributed 4G (LTE) patents to Via Licensing's pool, a move that I already credited to "the real Google--not the FRAND abuser." There is an unfortunate history of Google (through Motorola) having tried to gain undue leverage with SEPs, a fact for which a court ordered (and the Ninth Circuit affirmed) it owed Microsoft damages, and no one in the blogosphere fought Google (and Samsung) harder over that kind of behavior. I knew that it was all reactive: Google and Samsung didn't draw first blood (only Motorola did, but that was before anyone would even have imagined that Google would buy it). They just wanted patent peace and sought to protect Android. But the end doesn't always justify the means.

Two major players who have fought the good FRAND fight in court are not FSA members as we speak: Apple and Microsoft. I have consistently supported them and everyone else (also smaller players like India's Micromax) in this regard. I was, of course, disappointed when I saw Apple take positions on reasonable royalties in a non-SEP damages context (including the position it's still defending with regard to design patents) that are not just inconsistent but totally irreconcilable with some of the really good points it has made in connection with SEP royalty demands by others.

When Apple and Google/Motorola entered into a second-class settlement of their patent suits almost two years ago, they said they'd work together on certain aspects of patent policy. So maybe Google can persuade Apple that the FSA's efforts would benefit greatly from being supported by both of the world's most valuable companies.

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