Oracle America, Inc. v. Google Inc.

Filing 912

RESPONSE (re #909 MOTION for Administrative Relief Regarding Statement to Jury ) filed byGoogle Inc.. (Van Nest, Robert) (Filed on 4/13/2012)

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KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[e-mail]
CHRISTA M. ANDERSON - # 184325
[e-mail]
DANIEL PURCELL - # 191424
[e-mail]
633 Battery Street
San Francisco, CA 94111-1809
Telephone:
415 391 5400
Facsimile:
415 397 7188

KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[e-mail]
CHERYL A. SABNIS - #224323
[e-mail]
101 Second Street, Suite 2300
San Francisco, CA 94105
Tel: [phone]
Fax: [phone]

KING & SPALDING LLP
SCOTT T. WEINGAERTNER
(Pro Hac Vice)
[e-mail]
ROBERT F. PERRY
[e-mail]
BRUCE W. BABER (Pro Hac Vice)
1185 Avenue of the Americas
New York, NY 10036
Tel: [phone]
Fax: [phone]

GREENBERG TRAURIG, LLP
IAN C. BALLON - #141819
[e-mail]
HEATHER MEEKER - #172148
[e-mail]
1900 University Avenue
East Palo Alto, CA 94303
Tel: [phone]
Fax: [phone]

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Attorneys for Defendant
GOOGLE INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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ORACLE AMERICA, INC.,

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Plaintiff,

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v.

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Case No. 3:10-cv-03651 WHA
GOOGLE INC.’S OPPOSITION TO
ORACLE AMERICA, INC.’S MOTION
FOR ADMINISTRATIVE RELIEF
REGARDING STATEMENT TO JURY

GOOGLE INC.,

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Defendant.

Dept.:
Judge:

Courtroom 8, 19th Floor
Hon. William Alsup

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GOOGLE’S OPPOSITION TO ORACLE’S ADMINISTRATIVE MOTION RE STATEMENT TO JURY
Case No. 3:10-CV-03561 WHA
649088.01

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The Court should reject Oracle’s “motion for administrative relief,” which is actually just

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an improper motion for reconsideration of the Court’s order deeming admitted the fact that the

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names of the Java API packages at issue in this case are not protected by copyright, as the Court

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found last year in its summary-judgment ruling. Oracle contends that it would be misleading to

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tell the jury that the names are not copyrightable without also telling them that, in some

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circumstances, the structure, selection, and arrangement of those names might be copyrightable.

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But this is exactly the argument that Oracle made last week, in its opposition to Google’s motion

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to deem admitted the non-copyrightability of the names. Oracle Opp’n to Google Admin. Mot.

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[Dkt. 882] at 3-4. There, Oracle argued that “to simply instruct the jury that ‘the names are not

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protected by copyright’” would “risk[ ] being misinterpreted to apply to the selection and

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arrangement of the names.” Id. Oracle’s present motion is devoted solely to rearguing this point.

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That alone is reason enough to deny it.

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Moreover, Oracle’s requested “clarification” is a general statement of copyright law that

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can, and should, wait for jury instructions. Telling the jury at the outset that the structure,

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selection, and arrangement of the API package names might be copyrightable is a vague

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statement of the law whose relevance is contingent on facts the Court and the jury have not yet

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heard. It would not be helpful. It is not a definitive finding, like the Court’s ruling that the names

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themselves are not copyrightable. There are many statements related to the copyrightability of

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the structure, selection, and arrangement of the APIs that might be true, depending on how the

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record develops at trial:

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•

“A copyright, we have seen, bars use of the particular ‘expression’ of an
idea in a copyrighted work but does not bar use of the ‘idea’ itself.”
Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 741 (9th Cir. 1971).
“[I]deas themselves are not protected by copyright and cannot therefore be
infringed.” Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1507 (9th
Cir. 1987).

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Where an idea and the expression merge, and “are thus inseparable,
copying the ‘expression’ will not be barred, since protecting the
‘expression’ in such circumstances would confer a monopoly of the
‘idea.’” Rosenthal Jewelry, 446 F.2d at 742.

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Any elements of the APIs that are "functional requirements for
compatibility" are not protected by copyright. Sega Enters. Ltd. v.
Accolade, Inc., 977 F.2d 1510, 1522 (9th Cir. 1992).

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GOOGLE’S OPPOSITION TO ORACLE’S ADMINISTRATIVE MOTION RE STATEMENT TO JURY
Case No. 3:10-CV-03561 WHA
649088.01

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"Under the scenes a faire doctrine, protection is denied to those elements
of a program that have been dictated by external factors." Baystate Techs.
v. Bentley Sys., 946 F. Supp. 1079, 1088 (D. Mass. 1996).

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Even if the structure, selection, and arrangement of the APIs are
copyrightable under all of the above legal principles, any use of that
structure by Google could be a fair use and therefore not an infringement.

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Simply flagging complex legal issues like these for the jury at the start of trial would raise myriad

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questions and answer none of them. That is what careful and focused jury instructions are for—

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and the sensible time to issue such instructions is at the close of evidence, when any instructions

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can and should be tailored to reflect the evidence actually offered at trial, as well as the Court’s

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conclusions of law on copyrightability. The Court invited the parties to move to deem undisputed

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narrow, identifiable issues that had been conclusively resolved, like the copyrightability of names.

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The Court did not invite the parties to suggest general statements of copyright law.

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The Court should deny Oracle’s motion for reconsideration.
Dated: April 13, 2012

KEKER & VAN NEST LLP

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By:

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/s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

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GOOGLE’S OPPOSITION TO ORACLE’S ADMINISTRATIVE MOTION RE STATEMENT TO JURY
Case No. 3:10-CV-03561 WHA
649088.01