How Oracle Erred: The “Use/Explanation Distinction” and the Future of Computer Copyright

Boston University School of Law Public Law & Legal Theory Paper No. 17-10
Copyright in an Age of Limitations and Exceptions Ruth Okediji, Ed. Cambridge University Press (2017)
March 20, 2017

Abstract

PREFACE
This article was written prior to the victory for the ORACLE v GOOGLE defendant based on "fair use". That result does not change the relevance of the earlier copyright decisions of the ORACLE court, which are the topic of my article. Moreover, the late resolution of the copyright claim underlines one of the article's main points, namely, that early dismissal of over-reaching claims of computer copyright infringement is preferable to resolution on the basis of doctrines such as "fair use" which are typically resolved far later in the game.

SUMMARY OF ARTICLE
In Oracle v. Google (2015), the Federal Circuit addressed whether the " method header " components of a dominant computer program were uncopyrightable as " merging " with the headers' ideas or function. Google had copied the headers to ease the ability of third-party programmers to interact with Google's Android platform. The court rebuffed the copyrightability challenge; it reasoned that because the plaintiff's expression might have been written in alternative forms, there was no " merger " of idea and expression. But the Oracle court may have been asking the wrong question. In Lotus v. Borland (1995), the owner of a dominant spreadsheet program sought to prevent a new competitor's program from making available a set of " command menu " headers based on the dominant program's menus. The defendant also wrote its own, original command menus, but provided the copied menus as an option to relieve customers who, migrating from the dominant spreadsheet, would otherwise have had a substantial burden to master new terms and rewrite macros. In assessing the legality of the copying in Lotus , the First Circuit started its inquiry not with a question about how the plaintiff's program might have been written, but rather with how the program actually was written. It then identified the menu commands as " methods of operation " because they were necessary to make the actual program.

Wendy J. Gordon
William Fairfield Warren Distinguished Professor
Professor of Law

Boston University School of Law
765 Commonwealth Avenue
Boston, MA 02215

wgordon@bu.edu