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The Morton Memo - JUne 2014

We have two outstanding articles written by firm attorneys Anna Burnett and Michael Ritter this month. Anna's article cover the ongoing changes in software copyright law while Michael's explains the basics of landlord/tenant law.

The Morton Memo is for you, so kindly email us those topics of interst to you.

>> Oracle v. Google: API Code is Copyrightable    

>> Residential Leases: 3 Tips For Landlords and Tenants


Oracle v. Google: API Code IS Copyrightable

By Anna L. Burnett, Attorney

Data LockA recent decision by the U.S. Federal Circuit Court of Appeals has many in the software development industry worried, although others believe it is a major win for developers, whose creative coding is protectable by copyright. On May 9, 2014, the U.S. Federal Circuit Court of Appeals held that Oracle is entitled to copyright protection for 37 Java application programming interface (API) packages used by Google in its Android operating system. The Federal Circuit's decision reversed a 2012 District Court decision in favor of Google.

 The dispute between tech giants Oracle and Google dates back to 2010, when Oracle sued Google in the Northern District of California on copyright and patent infringement claims, related to the use of the 37 Java APIs used in Google's Android OS. Although the Java programming language is free to use, Google did not have Oracle's permission to reproduce the Java APIs and did not compensate Oracle for using the APIs. In May 2012, the jury in the case found that Google did not infringe on Oracle's patents. Then, having been told by the judge to assume that Oracle's APIs were protectable under copyright laws, the jury found that Google had infringed Oracle's copyrights in the 37 Java APIs and a specific computer routine; that Google had not infringed eight decompiled security files; and it deadlocked on Google’s fair use defense. Following the jury verdict, U.S. District Court Judge William Alsup overruled the jury and held that the structure of the Java APIs used by Google could not be copyrighted. He reasoned that the 37 APIs replicated by Google were free for all to use under the Copyright Act.

The Federal Circuit's May 9 decision, heard by a three-judge panel in Washington, D.C., determined that Judge Alsup erred when ruling in favor of Google that APIs were not copyrightable. The Federal Circuit's decision partially reversed the district court ruling for Google, and instead ruled in Oracle's favor on the copyrightability issue. The Federal Circuit instructed the lower court to reinstate the jury's infringement finding for the 37 Java API packages, and remanded the issue of Google's fair use defense back to the district court.

What is an API?

API is a common term in computer programming, but for you non-developers out there, API is an acronym for application programming interface (API). Generally speaking, an API contains instructions and standards, which specify how software components and programs should interact with each other. APIs provide a defined set of functions, with required parameters, that allow users to interact with various systems without exposing the specifics on how that system works internally. Many software developers use one of several programming languages, as well as APIs, to write applications ("apps") for computers, tablets, smartphones, and other devices. There are hundreds of APIs for doing almost anything you could imagine, and many companies make their APIs freely available to computer programmers so that software can be written for their platforms. Google offers dozens of free APIs for web designers and developers to use when developing apps, such as the APIs for Google Maps and Google+. Facebook, Yelp, and Twitter also offer APIs for developers and designers to use. For example, when you read an article online, and click on the icon to share that article via Twitter, you are using a Twitter API that the website’s developer got directly from Twitter.

Why does Copyright Matter?

At issue in Oracle v. Google is whether Oracle can claim a copyright in its Java APIs and the non-literal structure, sequence and organization ("SSO") of the API packages, and, if so, whether Google infringed Oracle's copyrights. When it implemented the Android operating system, Google wrote its own version of Java. However, Google copied 7,000 lines of declaring source code from 37 Java API packages verbatim, including the non-literal SSO of the API packages.

Copyright is a form of intellectual property protection provided by the laws of the United States to the authors of "original works of authorship," including literary, dramatic, musical, artistic, and certain other intellectual works. The owner of a copyright generally has the exclusive right to do and authorize others to reproduce the work, prepare derivative works based upon the original work, sell copies of the work, lease the work, perform the work publicly, etc. Copyright does not protect ideas, procedures, system, or methods of operation. A work may be protected by copyright laws from the time the work is created in a fixed medium (such as when a work is written, in the case of a book, or recorded, in the case of music). The copyright in a work immediately becomes the property of the author who created the work and only the author can rightfully claim a copyright in the work. The author need not register her work with the U.S. Copyright Office to secure a copyright in the work, although doing so may provide several advantages.

The doctrine of "fair use" is one limitation to a copyright owner's exclusive right to reproduce or authorize others to reproduce a work. There are various reasons for which the reproduction of a particular work may be considered fair, such as criticism, comment, news reporting, teaching, scholarship, and research. The Copyright Act sets out four factors to be considered in determining whether a particular use is fair. Fair use is an affirmative defense to a claim of copyright infringement.

Oracle v. Google and the May 9 Decision

Oracle argued that its Java API packages are entitled to protection under the Copyright Act because they are expressive and could have been written and organized in any number of ways to achieve the same functions. Oracle further argued that Google was free to recreate the Java functionality, but could not do so by copying the literal code itself or the non-literal SSO. Google countered that the interoperability of the Java APIs was key to the entire software ecosystem that had later developed around Java, and the interoperability considerations rendered the APIs wholly functional and therefore not entitled to copyright protection. Oracle argued that questions of interoperability with other, later-developed software are not properly part of the copyrightability analysis because they do not constrain the author’s choices when the author is creating the work. Rather, those are questions, if at all, for a fair use analysis.

The Federal Circuit agreed with Oracle and reversed Judge Alsup by finding the 37 Java APIs and the non-literal SSO are protected by U.S. copyright laws. In reaching its decision, the Court first restated two long-standing principles of copyright law: that copyright protection extends only to the creative expression in a work of authorship, not the functionality or idea of the work; and that protection extends not just to the literal aspects of the work, but also to non-literal aspects. As the Court also noted, the Copyright Act expressly mandates that software is a "work of authorship" covered by copyright law, so there was no real dispute that the literal aspects of Oracle’s software, the 7,000 lines of code of the APIs, were protected by copyright law.

The Federal Circuit also cited cases finding that protection for the non-literal SSO can be protected so long as it "qualifies as an expression of an idea [rather than] an idea itself." See, Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173 (9th Cir. 1989). Thus the question for the Oracle APIs was, in the Federal Circuit's view, whether the software's SSO was just an idea, or contained separable, protectable expression. Ultimately, the Court held the SSO of the Java APIs was protectable, rejecting Google's arguments that it had to copy the Java SSO in order to ensure interoperability.

The Court remanded to the district court on fair use because it believed there were material issues of fact as to whether Google's use was transformative, whether Google's use of the APIs had any negative market impact on Oracle, and whether interoperability might be relevant to the second and third fair use factors.

What does this mean for the future of software development?

Some in the software development community are pleased with the Federal Circuit's ruling, believing innovators in the industry will be protected and that the ruling ensures developers will be rewarded for their breakthroughs. Others are not pleased with the ruling, and worry that Oracle's win will have a chilling effect on entrepreneurs and developers. As the majority of programming is derivative by nature, a copyright on APIs could limit work and progress for software. Additionally, APIs give developers a lot of flexibility in creating new apps and encourage them to collaborate with one another; however, the Court's ruling could lead some to become overprotective of their work and less willing to share.

Following the Court of Appeals decision, the case will return to the District Court for the Northern District of California for a new trial to determine whether Google's use of the Java APIs in Android is covered by fair use and to determine possible damages owed to Oracle. However, based on the importance of the underlying issues, it is likely Google will seek a hearing from the full court, or appeal to the Supreme Court for review if necessary.

Anna Burnett is an attorney with the firm and works int he area of intellectual property and trademarks in particular. She can be reached at Her direct number is (314) 808-3508.

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Residential Leases: 3 Tips For Landlords and Tenants

By Michael H. Ritter, Attorney

Most of us will be either a landlord or tenants at some point. Both landlords and tenants have much at stake when negotiating residential leases. When neither party is represented by a broker or attorney, landlords and tenants can avoid costly mistakes by following a few simple tips.

Tip #1: Use a Form Lease Agreement

By using a form lease agreement, the landlord and tenant can usually cover all the required issues in leasing residential property. Ideally, the parties will use the California Association of Realtors (CAR) form lease agreement. However, obtaining this form is usually not possible without the involvement of a licensed real estate broker. Some trustworthy lease forms are available online but make sure they are specific to the State of California. Landlord-tenant law in California is mostly statutory so the lease agreement should be written to comply with our state’s laws.

Tip #2: Understand the Basics of Landlord-Tenant Law in California

Nearly all the law pertaining to landlords and tenants is in the California Civil Code. Reading and understanding the Code can be difficult but there are many resources available that summarize the law for laypersons. Before entering into a lease either as a landlord or tenant, it is wise to understand how California law affects one’s rights and responsibilities. Many people are surprised by the strict requirements in handling, for example, security deposits and evictions.

Tip #3: Get Help When Needed

One critical mistake many landlords and tenants make is trying to handle disputes themselves. Often, the problem can be resolved with a full understanding of how the law applies. For example, knowing the rules about the obtaining and returning of security deposits can prevent headaches. However, some disputes are best left to experts. For example, evictions (also known as unlawful detainer actions) require specific pleading and notice to be successful and should be handled by an attorney specializing in this area. Other situations such as rent control and abandonment of the premises are complex and may require legal counsel.

Landlords and tenants can work together well if both approach the lease properly. Most problems can be avoided if a form lease is used and both sides have a basic understanding of the law. When disputes arise, both landlords and tenants should get help in the form of accurate information or legal advice.

Mike Ritter is an attorney with the firm and works in the area of real estate and cell phone site leases in particular. He can be reached at His direct number is (760) 917-1123.