How Oracle erred: The "Use/Explanation Distinction" and the future of computer copyright

This book chapter was published in 2017, before the latest developments in the ORACLE v GOOGLE case took place. For the author's current take on ORACLE (and why the Supreme Court should reverse the Court of Appeals), see FAIR USE IN ORACLE: PROXIMATE CAUSE AT THE COPYRIGHT/PATENT DIVIDE (March 12, 2020). Boston University Law Review, Vol. 100, No. 389, 2020. The 2020 article is available here: https://ssrn.com/abstract=3553408. 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 operate a computer. The copyright statute renders “methods of operation” per se uncopyrightable, regardless of the possibility of alternatives. Debates over the conflict between Oracle and Lotus have largely ignored a middle road that supports the Lotus result without the potential for overkill some observers see in Lotus . This middle road is a doctrine known as the “explanation/use” distinction. Laid out in the classic Supreme Court case of Baker v. Selden (1880), and ratifi ed by statutory provisions of the Copyright Act including the much-ignored § 113(b), the “explanation/ use distinction” specifi es that a copyright owner has no power to control behaviors that belong to the domain of utility patent. Like “merger” and “method of operation,” the “explanation/use” doctrine implements the deference that, pursuant to Congressional command and Supreme Court precedent, U.S. copyright law must give to patent law. However, the explanation/use doctrine operates by limiting the scope of the exclusive rights a copyright owner might otherwise possess, not by targeting the copyrightability of what plaintiff produced. This chapter examines justifications for the “explanation/use distinction”, and suggests a two-part test for implementing that doctrine. The chapter argues that a copyright owner should have no prima facie rights over copying behavior where (1) the goals of the copying are “use” (behavior in the realm of utility patent) and (2) the copying is done solely for goals unrelated to the expressiveness of the plaintiff’s work of authorship. (The copying of Oracle and Lotus seem to have been fully indifferent to expressive values; the result might be different in a case where defendant’s goals are mixed.) This two-part test is met by the defendants in Oracle and Lotus. (1) Making a machine operate is clearly utilitarian. And as for (2) indifference to expression, both Lotus and Oracle involve someone copying a computer interface to enable users to interoperate: third-party programmers could use or design Java-enabled programs on Android, and spreadsheet users could use their prior macros on a new spreadsheet program. Interoperability is one of the few areas where indifference to expression is clear: After all, when one wants a spare key made, the elegance or beauty of the key’s shape is irrelevant – all that matters is that the shape fits the lock.