  United States Court of Appeals
      for the Federal Circuit
                 ______________________

              ORACLE AMERICA, INC.,
                 Plaintiff-Appellant,

                            v.

                    GOOGLE INC.,
               Defendant-Cross-Appellant.
                ______________________

                    2013-1021, -1022
                 ______________________

    Appeals from the United States District Court for the
Northern District of California in No. 10-CV-3561, Judge
William H. Alsup.
                ______________________

                  Decided: May 9, 2014
                 ______________________

     E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sut-
cliffe LLP, of New York, New York, argued for plaintiff-
appellant. With him on the brief were MARK S. DAVIES,
ANDREW D. SILVERMAN, KELLY M. DALEY; and ANNETTE L.
HURST, GABRIEL M. RAMSEY, and ELIZABETH C. MCBRIDE,
of San Francisco, California. Of counsel on the brief were
DORIAN E. DALEY, DEBORAH K. MILLER, MATTHEW
SARBORARIA, and ANDREW C. TEMKIN, Oracle America,
Inc., of Redwood Shores, California; and DALE M.
CENDALI, DIANA M. TORRES, SEAN B. FERNANDES, and
JOSHUA L. SIMMONS, Kirkland & Ellis LLP, of New York,
New York. Of counsel were SUSAN M. DAVIES, Kirkland &
2                       ORACLE AMERICA, INC.   v. GOOGLE INC.



Ellis LLP, of New York, New York; MICHAEL A. JACOBS,
Morrison & Foerster LLP, of San Francisco, California;
and KENNETH A. KUWAYTI, of Palo Alto, California.

    ROBERT A. VAN NEST, Keker & Van Nest LLP, of San
Francisco, California, argued for defendant-cross-
appellant. With him on the brief were CHRISTA M.
ANDERSON, STEVEN A. HIRSCH, MICHAEL S. KWUN, and
DANIEL E. JACKSON. Of counsel on the brief were IAN C.
BALLON and HEATHER MEEKER, Greenberg Traurig, LLP,
of East Palo Alto, California; RENNY HWANG, Google Inc.,
of Mountain View, California; and DARYL L. JOSEFFER and
BRUCE W. BABER, King & Spalding LLP, of Washington,
DC.

    MARCIA B. PAUL, Davis Wright Tremaine LLP, of New
York, New York, for amicus curiae Ralph Oman. With
her on the brief were LACY H. KOONCE, III and DEBORAH
A. ADLER.

    WILLIAM A. RUDY, Lathrop & Gage LLP, of Kansas
City, Missouri, for amici curiae Picture Archive Council of
America, Inc., et al. With him on the brief were CAROLE
E. HANDLER and BRIANNA E. DAHLBERG, of Los Angeles,
California.

    GREGORY G. GARRE, Latham & Watkins, LLP, of
Washington, DC, for amici curiae Microsoft Corporation,
et al. With him on the brief was LORI ALVINO MCGILL. Of
counsel on the brief were PAUL T. DACIER, KRISHNENDU
GUPTA, EMC Corporation, of Hopkinton, Massachusetts;
and DOUGLAS LUFTMAN, NETAPP, Inc., of Sunnyvale,
California.

    JARED BOBROW, Weil, Gotshal & Manges LLP, of
Redwood Shores, California, for amici curiae Eugene H.
Spafford, Ph.D., et al. With him on the brief was AARON
Y. HUANG.
ORACLE AMERICA, INC.   v. GOOGLE INC.                      3




    MATTHEW S. HELLMAN, Jenner & Block LLP, of Wash-
ington, DC, for amicus curiae BSA/The Software Alliance.
With him on the brief was PAUL M. SMITH.

   STEVEN T. COTTREAU, Clifford Chance US LLP, of
Washington, DC, for amici curiae, Scott McNealy, et al.

    MEREDITH JACOB, Program on Information Justice
and Intellectual Property, American University, Washing-
ton College of Law, of Washington, DC, for amici curiae
Intellectual Property Law Professors.

    JULIE P. SAMUELS, Electronic Frontier Foundation, of
San Francisco, California, for amici curiae Computer
Scientists. With her on the brief was MICHAEL BARCLAY.
Of counsel on the brief was JASON M. SCHULTZ, NYU
Technology Law and Policy Clinic, NYU School of Law, of
New York, New York.

    JONATHAN BAND, Jonathan Band PLLC, of Washing-
ton, DC, filed a brief for amicus curiae Computer & Com-
munications Industry Association. With him on the brief
was MATTHEW SCHRUERS, Computer & Communications
Industry Association, of Washington, DC.

     CHAD RUBACK, The Ruback Law Firm, of Dallas, Tex-
as, filed a brief for amici curiae Rackspace US, Inc., et al.

    JENNIFER M. URBAN, Samuelson Law, Technology and
Public Policy Clinic, U.C. Berkeley School of Law, of
Berkeley, California for amici curiae Software Innovators,
et al.
                 ______________________

Before O’MALLEY, PLAGER, and TARANTO, Circuit Judges.
4                       ORACLE AMERICA, INC.   v. GOOGLE INC.



O’MALLEY, Circuit Judge.
    This copyright dispute involves 37 packages of com-
puter source code. The parties have often referred to
these groups of computer programs, individually or collec-
tively, as “application programming interfaces,” or API
packages, but it is their content, not their name, that
matters. The predecessor of Oracle America, Inc. (“Ora-
cle”) wrote these and other API packages in the Java
programming language, and Oracle licenses them on
various terms for others to use. Many software develop-
ers use the Java language, as well as Oracle’s API pack-
ages, to write applications (commonly referred to as
“apps”) for desktop and laptop computers, tablets,
smartphones, and other devices.
    Oracle filed suit against Google Inc. (“Google”) in the
United States District Court for the Northern District of
California, alleging that Google’s Android mobile operat-
ing system infringed Oracle’s patents and copyrights. The
jury found no patent infringement, and the patent claims
are not at issue in this appeal. As to the copyright claims,
the parties agreed that the jury would decide infringe-
ment, fair use, and whether any copying was de minimis,
while the district judge would decide copyrightability and
Google’s equitable defenses. The jury found that Google
infringed Oracle’s copyrights in the 37 Java packages and
a specific computer routine called “rangeCheck,” but
returned a noninfringement verdict as to eight decompiled
security files. The jury deadlocked on Google’s fair use
defense.
     After the jury verdict, the district court denied Ora-
cle’s motion for judgment as a matter of law (“JMOL”)
regarding fair use as well as Google’s motion for JMOL
with respect to the rangeCheck files. Order on Motions
for Judgment as a Matter of Law, Oracle Am., Inc. v.
Google Inc., No. 3:10-cv-3561 (N.D. Cal. May 10, 2012),
ECF No. 1119. Oracle also moved for JMOL of infringe-
ORACLE AMERICA, INC.   v. GOOGLE INC.                      5



ment with respect to the eight decompiled security files.
In granting that motion, the court found that: (1) Google
admitted to copying the eight files; and (2) no reasonable
jury could find that the copying was de minimis. Oracle
Am., Inc. v. Google Inc., No. C 10-3561, 2012 U.S. Dist.
LEXIS 66417 (N.D. Cal. May 11, 2012) (“Order Granting
JMOL on Decompiled Files”).
    Shortly thereafter, the district court issued its deci-
sion on copyrightability, finding that the replicated ele-
ments of the 37 API packages—including the declaring
code and the structure, sequence, and organization—were
not subject to copyright protection. Oracle Am., Inc. v.
Google Inc., 872 F. Supp. 2d 974 (N.D. Cal. 2012) (“Copy-
rightability Decision”). Accordingly, the district court
entered final judgment in favor of Google on Oracle’s
copyright infringement claims, except with respect to the
rangeCheck code and the eight decompiled files. Final
Judgment, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-
3561 (N.D. Cal. June 20, 2012), ECF No. 1211. Oracle
appeals from the portion of the final judgment entered
against it, and Google cross-appeals from the portion of
that same judgment entered in favor of Oracle as to the
rangeCheck code and eight decompiled files.
     Because we conclude that the declaring code and the
structure, sequence, and organization of the API packages
are entitled to copyright protection, we reverse the district
court’s copyrightability determination with instructions to
reinstate the jury’s infringement finding as to the 37 Java
packages. Because the jury deadlocked on fair use, we
remand for further consideration of Google’s fair use
defense in light of this decision. With respect to Google’s
cross-appeal, we affirm the district court’s decisions:
(1) granting Oracle’s motion for JMOL as to the eight
decompiled Java files that Google copied into Android;
and (2) denying Google’s motion for JMOL with respect to
the rangeCheck function. Accordingly, we affirm-in-part,
reverse-in-part, and remand for further proceedings.
6                      ORACLE AMERICA, INC.   v. GOOGLE INC.



                      BACKGROUND
                   A. The Technology
    Sun Microsystems, Inc. (“Sun”) developed the Java
“platform” for computer programming and released it in
1996. 1 The aim was to relieve programmers from the
burden of writing different versions of their computer
programs for different operating systems or devices. “The
Java platform, through the use of a virtual machine,
enable[d] software developers to write programs that
[we]re able to run on different types of computer hard-
ware without having to rewrite them for each different
type.” Copyrightability Decision, 872 F. Supp. 2d at 977.
With Java, a software programmer could “write once, run
anywhere.”
    The Java virtual machine (“JVM”) plays a central role
in the overall Java platform. The Java programming
language itself—which includes words, symbols, and
other units, together with syntax rules for using them to
create instructions—is the language in which a Java
programmer writes source code, the version of a program
that is “in a human-readable language.” Id. For the
instructions to be executed, they must be converted (or
compiled) into binary machine code (object code) consist-
ing of 0s and 1s understandable by the particular compu-
ting device. In the Java system, “source code is first
converted into ‘bytecode,’ an intermediate form, before it
is then converted into binary machine code by the Java
virtual machine” that has been designed for that device.
Id. The Java platform includes the “Java development kit
(JDK), javac compiler, tools and utilities, runtime pro-
grams, class libraries (API packages), and the Java virtu-
al machine.” Id. at 977 n.2.




    1   Oracle acquired Sun in 2010.
ORACLE AMERICA, INC.   v. GOOGLE INC.                      7



     Sun wrote a number of ready-to-use Java programs to
perform common computer functions and organized those
programs into groups it called “packages.” These packag-
es, which are the application programming interfaces at
issue in this appeal, allow programmers to use the pre-
written code to build certain functions into their own
programs, rather than write their own code to perform
those functions from scratch. They are shortcuts. Sun
called the code for a specific operation (function) a “meth-
od.” It defined “classes” so that each class consists of
specified methods plus variables and other elements on
which the methods operate. To organize the classes for
users, then, it grouped classes (along with certain related
“interfaces”) into “packages.” See id. at 982 (describing
organization: “[e]ach package [i]s broken into classes and
those in turn [are] broken into methods”). The parties
have not disputed the district court’s analogy: Oracle’s
collection of API packages is like a library, each package
is like a bookshelf in the library, each class is like a book
on the shelf, and each method is like a how-to chapter in a
book. Id. at 977.
    The original Java Standard Edition Platform (“Java
SE”) included “eight packages of pre-written programs.”
Id. at 982. The district court found, and Oracle concedes
to some extent, that three of those packages—java.lang,
java.io, and java.util—were “core” packages, meaning that
programmers using the Java language had to use them
“in order to make any worthwhile use of the language.”
Id. By 2008, the Java platform had more than 6,000
methods making up more than 600 classes grouped into
166 API packages. There are 37 Java API packages at
issue in this appeal, three of which are the core packages
identified by the district court. 2 These packages contain



    2  The 37 API packages involved in this appeal are:
java.awt.font, java.beans,   java.io,  java.lang,   ja-
8                        ORACLE AMERICA, INC.   v. GOOGLE INC.



thousands of individual elements, including classes,
subclasses, methods, and interfaces.
     Every package consists of two types of source code—
what the parties call (1) declaring code; and
(2) implementing code. Declaring code is the expression
that identifies the prewritten function and is sometimes
referred to as the “declaration” or “header.” As the dis-
trict court explained, the “main point is that this header
line of code introduces the method body and specifies very
precisely the inputs, name and other functionality.” Id. at
979-80. The expressions used by the programmer from
the declaring code command the computer to execute the
associated implementing code, which gives the computer
the step-by-step instructions for carrying out the declared
function.
    To use the district court’s example, one of the Java
API packages at issue is “java.lang.” Within that package
is a class called “math,” and within “math” there are
several methods, including one that is designed to find the
larger of two numbers: “max.” The declaration for the
“max” method, as defined for integers, is: “public static int
max(int x, int y),” where the word “public” means that the
method is generally accessible, “static” means that no


va.lang.annotation, java.lang.ref, java.lang.reflect, ja-
va.net, java.nio, java.nio.channels, java.nio.channels.spi,
java.nio.charset, java.nio.charset.spi, java.security, ja-
va.security.acl, java.security.cert, java.security.interfaces,
java.security.spec, java.sql, java.text, java.util, ja-
va.util.jar,    java.util.logging,      java.util.prefs,    ja-
va.util.regex,          java.util.zip,            javax.crypto,
javax.crypto.interfaces,      javax.crypto.spec,     javax.net,
javax.net.ssl,             javax.security.auth,             ja-
vax.security.auth.callback,         javax.security.auth.login,
javax.security.auth.x500, javax.security.cert, and ja-
vax.sql.
ORACLE AMERICA, INC.   v. GOOGLE INC.                      9



specific instance of the class is needed to call the method,
the first “int” indicates that the method returns an inte-
ger, and “int x” and “int y” are the two numbers (inputs)
being compared. Copyrightability Decision, 872 F. Supp.
2d at 980-82. A programmer calls the “max” method by
typing the name of the method stated in the declaring
code and providing unique inputs for the variables “x” and
“y.” The expressions used command the computer to
execute the implementing code that carries out the opera-
tion of returning the larger number.
    Although Oracle owns the copyright on Java SE and
the API packages, it offers three different licenses to those
who want to make use of them. The first is the General
Public License, which is free of charge and provides that
the licensee can use the packages—both the declaring and
implementing code—but must “contribute back” its inno-
vations to the public. This arrangement is referred to as
an “open source” license. The second option is the Specifi-
cation License, which provides that the licensee can use
the declaring code and organization of Oracle’s API pack-
ages but must write its own implementing code. The
third option is the Commercial License, which is for
businesses that “want to use and customize the full Java
code in their commercial products and keep their code
secret.” Appellant Br. 14. Oracle offers the Commercial
License in exchange for royalties. To maintain Java’s
“write once, run anywhere” motto, the Specification and
Commercial Licenses require that the licensees’ programs
pass certain tests to ensure compatibility with the Java
platform.
    The testimony at trial also revealed that Sun was li-
censing a derivative version of the Java platform for use
on mobile devices: the Java Micro Edition (“Java ME”).
Oracle licensed Java ME for use on feature phones and
smartphones. Sun/Oracle has never successfully devel-
oped its own smartphone platform using Java.
10                     ORACLE AMERICA, INC.   v. GOOGLE INC.



          B. Google’s Accused Product: Android
    The accused product is Android, a software platform
that was designed for mobile devices and competes with
Java in that market. Google acquired Android, Inc. in
2005 as part of a plan to develop a smartphone platform.
Later that same year, Google and Sun began discussing
the possibility of Google “taking a license to use and to
adapt the entire Java platform for mobile devices.” Copy-
rightability Decision, 872 F. Supp. 2d at 978. They also
discussed a “possible co-development partnership deal
with Sun under which Java technology would become an
open-source part of the Android platform, adapted for
mobile devices.” Id. The parties negotiated for months
but were unable to reach an agreement. The point of
contention between the parties was Google’s refusal to
make the implementation of its programs compatible with
the Java virtual machine or interoperable with other Java
programs. Because Sun/Oracle found that position to be
anathema to the “write once, run anywhere” philosophy,
it did not grant Google a license to use the Java API
packages.
    When the parties’ negotiations reached an impasse,
Google decided to use the Java programming language to
design its own virtual machine—the Dalvik virtual ma-
chine (“Dalvik VM”)—and “to write its own implementa-
tions for the functions in the Java API that were key to
mobile devices.” Id. Google developed the Android plat-
form, which grew to include 168 API packages—37 of
which correspond to the Java API packages at issue in
this appeal.
    With respect to the 37 packages at issue, “Google be-
lieved Java application programmers would want to find
the same 37 sets of functionalities in the new Android
system callable by the same names as used in Java.” Id.
To achieve this result, Google copied the declaring source
code from the 37 Java API packages verbatim, inserting
ORACLE AMERICA, INC.   v. GOOGLE INC.                    11



that code into parts of its Android software. In doing so,
Google copied the elaborately organized taxonomy of all
the names of methods, classes, interfaces, and packages—
the “overall system of organized names—covering 37
packages, with over six hundred classes, with over six
thousand methods.” Copyrightability Decision, 872 F.
Supp. 2d at 999. The parties and district court referred
to this taxonomy of expressions as the “structure, se-
quence, and organization” or “SSO” of the 37 packages. It
is undisputed, however, that Google wrote its own imple-
menting code, except with respect to: (1) the rangeCheck
function, which consisted of nine lines of code; and
(2) eight decompiled security files.
    As to rangeCheck, the court found that the Sun engi-
neer who wrote it later worked for Google and contributed
two files he created containing the rangeCheck function—
“Timsort.java” and “ComparableTimsort”—to the Android
platform. In doing so, the nine-line rangeCheck function
was copied directly into Android. As to the eight decom-
piled files, the district court found that they were copied
and used as test files but “never found their way into
Android or any handset.” Id. at 983.
     Google released the Android platform in 2007, and the
first Android phones went on sale the following year.
Although it is undisputed that certain Android software
contains copies of the 37 API packages’ declaring code at
issue, neither the district court nor the parties specify in
which programs those copies appear. Oracle indicated at
oral argument, however, that all Android phones contain
copies of the accused portions of the Android software.
Oral Argument at 1:35, available at http://www.
cafc.uscourts.gov/oral-argument-recordings/2013-1021/all.
Android smartphones “rapidly grew in popularity and
now comprise a large share of the United States market.”
Copyrightability Decision, 872 F. Supp. 2d at 978. Google
provides the Android platform free of charge to
smartphone manufacturers and receives revenue when
12                      ORACLE AMERICA, INC.   v. GOOGLE INC.



customers use particular functions on the Android phone.
Although Android uses the Java programming language,
it is undisputed that Android is not generally Java com-
patible. As Oracle explains, “Google ultimately designed
Android to be incompatible with the Java platform, so
that apps written for one will not work on the other.”
Appellant Br. 29.
             C. Trial and Post-Trial Rulings
     Beginning on April 16, 2012, the district court and the
jury—on parallel tracks—viewed documents and heard
testimony from twenty-four witnesses on copyrightability,
infringement, fair use, and Google’s other defenses.
Because the parties agreed the district court would decide
copyrightability, the court instructed the jury to assume
that the structure, sequence, and organization of the 37
API packages was copyrightable. And, the court informed
the jury that Google conceded that it copied the declaring
code used in the 37 packages verbatim. The court also
instructed the jury that Google conceded copying the
rangeCheck function and the eight decompiled security
files, but that Google maintained that its use of those
lines of code was de minimis. See Final Charge to the
Jury (Phase One), Oracle Am., Inc. v. Google Inc., 3:10-cv-
3561 (N.D. Cal. Apr. 30, 2012), ECF No. 1018 at 14 (“With
respect to the infringement issues concerning the
rangeCheck and other similar files, Google agrees that
the accused lines of code and comments came from the
copyrighted material but contends that the amounts
involved were so negligible as to be de minimis and thus
should be excused.”).
    On May 7, 2012, the jury returned a verdict finding
that Google infringed Oracle’s copyright in the 37 Java
API packages and in the nine lines of rangeCheck code,
but returned a noninfringement verdict as to eight de-
compiled security files. The jury hung on Google’s fair use
defense.
ORACLE AMERICA, INC.   v. GOOGLE INC.                      13



     The parties filed a number of post-trial motions, most
of which were ultimately denied. In relevant part, the
district court denied Oracle’s motion for JMOL regarding
fair use and Google’s motion for JMOL as to the
rangeCheck files. Order on Motions for Judgment as a
Matter of Law, Oracle Am., Inc. v. Google Inc., No. 3:10-
cv-3561 (N.D. Cal. May 10, 2012), ECF No. 1119. The
district court granted Oracle’s motion for JMOL of in-
fringement as to the eight decompiled files, however. In
its order, the court explained that: (1) Google copied the
files in their entirety; (2) the trial testimony revealed that
the use of those files was “significant”; and (3) no reason-
able jury could find the copying de minimis. Order Grant-
ing JMOL on Decompiled Files, 2012 U.S. Dist. LEXIS
66417, at *6.
     On May 31, 2012, the district court issued the prima-
ry decision at issue in this appeal, finding that the repli-
cated elements of the Java API packages—including the
declarations and their structure, sequence, and organiza-
tion—were not copyrightable. As to the declaring code,
the court concluded that “there is only one way to write”
it, and thus the “merger doctrine bars anyone from claim-
ing exclusive copyright ownership of that expression.”
Copyrightability Decision, 872 F. Supp. 2d at 998. The
court further found that the declaring code was not pro-
tectable because “names and short phrases cannot be
copyrighted.” Id. As such, the court determined that
“there can be no copyright violation in using the identical
declarations.” Id.
    As to the overall structure, sequence, and organiza-
tion of the Java API packages, the court recognized that
“nothing in the rules of the Java language . . . required
that Google replicate the same groupings even if Google
was free to replicate the same functionality.” Id. at 999.
Therefore, the court determined that “Oracle’s best argu-
ment . . . is that while no single name is copyrightable,
Java’s overall system of organized names—covering 37
14                      ORACLE AMERICA, INC.   v. GOOGLE INC.



packages, with over six hundred classes, with over six
thousand methods—is a ‘taxonomy’ and, therefore, copy-
rightable.” Id.
    Although it acknowledged that the overall structure of
Oracle’s API packages is creative, original, and “resem-
bles a taxonomy,” the district court found that it “is
nevertheless a command structure, a system or method of
operation—a long hierarchy of over six thousand com-
mands to carry out pre-assigned functions”—that is not
entitled to copyright protection under Section 102(b) of
the Copyright Act. Id. at 999-1000. In reaching this
conclusion, the court emphasized that, “[o]f the 166 Java
packages, 129 were not violated in any way.” Id. at 1001.
And, of the 37 Java API packages at issue, “97 percent of
the Android lines were new from Google and the remain-
ing three percent were freely replicable under the merger
and names doctrines.” Id. On these grounds, the court
dismissed Oracle’s copyright claims, concluding that “the
particular elements replicated by Google were free for all
to use under the Copyright Act.” Id.
    On June 20, 2012, the district court entered final
judgment in favor of Google and against Oracle on its
claim for copyright infringement, except with respect to
the rangeCheck function and the eight decompiled files.
As to rangeCheck and the decompiled files, the court
entered judgment for Oracle and against Google in the
amount of zero dollars, per the parties’ stipulation. Final
Judgment, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-
3561 (N.D. Cal. June 20, 2012), ECF No. 1211. Oracle
timely appealed from the portion of the district court’s
final judgment entered against it and Google timely cross-
appealed with respect to rangeCheck and the eight de-
compiled files.   Because this action included patent
claims, we have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1).
ORACLE AMERICA, INC.   v. GOOGLE INC.                   15



                         DISCUSSION
                   I. ORACLE’S APPEAL
    It is undisputed that the Java programming language
is open and free for anyone to use. Except to the limited
extent noted below regarding three of the API packages, it
is also undisputed that Google could have written its own
API packages using the Java language. Google chose not
to do that. Instead, it is undisputed that Google copied
7,000 lines of declaring code and generally replicated the
overall structure, sequence, and organization of Oracle’s
37 Java API packages. The central question before us is
whether these elements of the Java platform are entitled
to copyright protection. The district court concluded that
they are not, and Oracle challenges that determination on
appeal. Oracle also argues that the district court should
have dismissed Google’s fair use defense as a matter of
law.
    According to Google, however, the district court cor-
rectly determined that: (1) there was only one way to
write the Java method declarations and remain “interop-
erable” with Java; and (2) the organization and structure
of the 37 Java API packages is a “command structure”
excluded from copyright protection under Section 102(b).
Google also argues that, if we reverse the district court’s
copyrightability determination, we should direct the
district court to retry its fair use defense.
    “When the questions on appeal involve law and prece-
dent on subjects not exclusively assigned to the Federal
Circuit, the court applies the law which would be applied
by the regional circuit.” Atari Games Corp. v. Nintendo of
Am., Inc., 897 F.2d 1572, 1575 (Fed. Cir. 1990). Copyright
issues are not exclusively assigned to the Federal Circuit.
See 28 U.S.C. § 1295. The parties agree that Ninth Cir-
cuit law applies and that, in the Ninth Circuit, whether
particular expression is protected by copyright law is
16                       ORACLE AMERICA, INC.   v. GOOGLE INC.



“subject to de novo review.” Ets-Hokin v. Skyy Spirits,
Inc., 225 F.3d 1068, 1073 (9th Cir. 2000). 3




     3   The Supreme Court has not addressed whether
copyrightability is a pure question of law or a mixed
question of law and fact, or whether, if it is a mixed
question of law and fact, the factual components of that
inquiry are for the court, rather than the jury. Relatedly,
it has not decided the standard of review that applies on
appeal. Ten years ago, before finding it unnecessary to
decide whether copyrightability is a pure question of law
or a mixed question of law and fact, the Seventh Circuit
noted that it had “found only a handful of appellate cases
addressing the issue, and they are split.” Gaiman v.
McFarlane, 360 F.3d 644, 648 (7th Cir. 2004). And,
panels of the Ninth Circuit have defined the respective
roles of the jury and the court differently where questions
of originality were at issue. Compare North Coast Indus.
v. Jason Maxwell, Inc., 972 F.2d 1031, 1035 (9th Cir.
1992), with Ets-Hokin, 225 F.3d at 1073. More recently,
several district courts within the Ninth Circuit have
treated copyrightability as a question for only the court,
regardless of whether it is a pure question of law. See
Stern v. Does, No. 09-1986, 2011 U.S. Dist. LEXIS 37735,
*7 (C.D. Cal. Feb. 10, 2011); Jonathan Browning, Inc. v.
Venetian Casino Resort LLC, No. C 07-3983, 2009 U.S.
Dist. LEXIS 57525, at *2 (N.D. Cal. June 19, 2009); see
also Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 932 F.
Supp. 220, 225 (N.D. Ill. 1996) (Easterbrook, J.) (citing to
Markman v. Westview Instruments, Inc., 517 U.S. 370
(1996), and concluding that whether works are copyright-
able is a question which the “jury has nothing to do
with”). We need not address any of these questions,
because the parties here agreed that the district court
would decide copyrightability, and both largely agree that
ORACLE AMERICA, INC.   v. GOOGLE INC.                     17



    We are mindful that the application of copyright law
in the computer context is often a difficult task. See Lotus
Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807, 820 (1st Cir.
1995) (Boudin, J., concurring) (“Applying copyright law to
computer programs is like assembling a jigsaw puzzle
whose pieces do not quite fit.”). On this record, however,
we find that the district court failed to distinguish be-
tween the threshold question of what is copyrightable—
which presents a low bar—and the scope of conduct that
constitutes infringing activity. The court also erred by
importing fair use principles, including interoperability
concerns, into its copyrightability analysis.
    For the reasons that follow, we conclude that the de-
claring code and the structure, sequence, and organiza-
tion of the 37 Java API packages are entitled to copyright
protection. Because there is an insufficient record as to
the relevant fair use factors, we remand for further pro-
ceedings on Google’s fair use defense.
                    A. Copyrightability
    The Copyright Act provides protection to “original
works of authorship fixed in any tangible medium of
expression,” including “literary works.”          17 U.S.C.
§ 102(a). It is undisputed that computer programs—
defined in the Copyright Act as “a set of statements or
instructions to be used directly or indirectly in a computer
in order to bring about a certain result,” 17 U.S.C.
§ 101—can be subject to copyright protection as “literary
works.” See Atari Games Corp. v. Nintendo of Am., Inc.,
975 F.2d 832, 838 (Fed. Cir. 1992) (“As literary works,
copyright protection extends to computer programs.”).
Indeed, the legislative history explains that “literary
works” includes “computer programs to the extent that



we may undertake a review of that determination de
novo.
18                       ORACLE AMERICA, INC.   v. GOOGLE INC.



they incorporate authorship in the programmer’s expres-
sion of original ideas, as distinguished from the ideas
themselves.” H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54,
reprinted in 1976 U.S.C.C.A.N. 5659, 5667.
    By statute, a work must be “original” to qualify for
copyright protection. 17 U.S.C. § 102(a). This “originality
requirement is not particularly stringent,” however. Feist
Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 358
(1991). “Original, as the term is used in copyright, means
only that the work was independently created by the
author (as opposed to copied from other works), and that
it possesses at least some minimal degree of creativity.”
Id. at 345.
    Copyright protection extends only to the expression of
an idea—not to the underlying idea itself. Mazer v. Stein,
347 U.S. 201, 217 (1954) (“Unlike a patent, a copyright
gives no exclusive right to the art disclosed; protection is
given only to the expression of the idea—not the idea
itself.”). This distinction—commonly referred to as the
“idea/expression dichotomy”—is codified in Section 102(b)
of the Copyright Act, which provides:
     In no case does copyright protection for an origi-
     nal work of authorship extend to any idea, proce-
     dure, process, system, method of operation,
     concept, principle, or discovery, regardless of the
     form in which it is described, explained, illustrat-
     ed, or embodied in such work.
17 U.S.C. § 102(b); see Golan v. Holder, 132 S. Ct. 873,
890 (2012) (“The idea/expression dichotomy is codified at
17 U.S.C. § 102(b).”).
    The idea/expression dichotomy traces back to the Su-
preme Court’s decision in Baker v. Selden, 101 U.S. 99,
101 (1879). In Baker, the plaintiff Selden wrote and
obtained copyrights on a series of books setting out a new
system of bookkeeping. Id. at 100. The books included an
ORACLE AMERICA, INC.   v. GOOGLE INC.                     19



introductory essay explaining the system and blank forms
with ruled lines and headings designed for use with that
system. Id. Baker published account books employing a
system with similar forms, and Selden filed suit alleging
copyright infringement. According to Selden, the “ruled
lines and headings, given to illustrate the system, are a
part of the book” and “no one can make or use similar
ruled lines and headings, or ruled lines and headings
made and arranged on substantially the same system,
without violating the copyright.” Id. at 101.
    The Supreme Court framed the issue on appeal in
Baker as “whether the exclusive property in a system of
book-keeping can be claimed, under the law of copyright,
by means of a book in which that system is explained.”
Id. In reversing the circuit court’s decision, the Court
concluded that the “copyright of a book on book-keeping
cannot secure the exclusive right to make, sell, and use
account-books prepared upon the plan set forth in such
book.” Id. at 104. Likewise, the “copyright of a work on
mathematical science cannot give to the author an exclu-
sive right to the methods of operation which he pro-
pounds.” Id. at 103. The Court found that, although the
copyright protects the way Selden “explained and de-
scribed a peculiar system of book-keeping,” it does not
prevent others from using the system described therein.
Id. at 104. The Court further indicated that, if it is neces-
sary to use the forms Selden included in his books to
make use of the accounting system, that use would not
amount to copyright infringement. See id. (noting that
the public has the right to use the account-books and that,
“in using the art, the ruled lines and headings of accounts
must necessarily be used as incident to it”).
    Courts routinely cite Baker as the source of several
principles incorporated into Section 102(b) that relate to
this appeal, including that: (1) copyright protection ex-
tends only to expression, not to ideas, systems, or process-
es; and (2) “those elements of a computer program that
20                       ORACLE AMERICA, INC.   v. GOOGLE INC.



are necessarily incidental to its function are . . . unpro-
tectable.” See Computer Assocs. Int’l v. Altai, 982 F.2d
693, 704-05 (2d Cir. 1992) (“Altai”) (discussing Baker, 101
U.S. at 103-04).
    It is well established that copyright protection can ex-
tend to both literal and non-literal elements of a computer
program. See Altai, 982 F.2d at 702. The literal elements
of a computer program are the source code and object
code. See Johnson Controls, Inc. v. Phoenix Control Sys.,
Inc., 886 F.2d 1173, 1175 (9th Cir. 1989). Courts have
defined source code as “the spelled-out program com-
mands that humans can read.” Lexmark Int’l, Inc. v.
Static Control Components, Inc., 387 F.3d 522, 533 (6th
Cir. 2004). Object code refers to “the binary language
comprised of zeros and ones through which the computer
directly receives its instructions.” Altai, 982 F.2d at 698.
Both source and object code “are consistently held pro-
tected by a copyright on the program.” Johnson Controls,
886 F.2d at 1175; see also Altai, 982 F.2d at 702 (“It is
now well settled that the literal elements of computer
programs, i.e., their source and object codes, are the
subject of copyright protection.”). Google nowhere dis-
putes that premise. See, e.g., Oral Argument at 57:38.
    The non-literal components of a computer program in-
clude, among other things, the program’s sequence, struc-
ture, and organization, as well as the program’s user
interface. Johnson Controls, 886 F.2d at 1175. As dis-
cussed below, whether the non-literal elements of a pro-
gram “are protected depends on whether, on the
particular facts of each case, the component in question
qualifies as an expression of an idea, or an idea itself.” Id.
    In this case, Oracle claims copyright protection with
respect to both: (1) literal elements of its API packages—
the 7,000 lines of declaring source code; and (2) non-literal
elements—the structure, sequence, and organization of
each of the 37 Java API packages.
ORACLE AMERICA, INC.   v. GOOGLE INC.                     21



    The distinction between literal and non-literal aspects
of a computer program is separate from the distinction
between literal and non-literal copying. See Altai, 982
F.2d at 701-02. “Literal” copying is verbatim copying of
original expression. “Non-literal” copying is “paraphrased
or loosely paraphrased rather than word for word.” Lotus
Dev. Corp. v. Borland Int’l, 49 F.3d 807, 814 (1st Cir.
1995). Here, Google concedes that it copied the declaring
code verbatim. Oracle explains that the lines of declaring
code “embody the structure of each [API] package, just as
the chapter titles and topic sentences represent the struc-
ture of a novel.” Appellant Br. 45. As Oracle explains,
when Google copied the declaring code in these packages
“it also copied the ‘sequence and organization’ of the
packages (i.e., the three-dimensional structure with all
the chutes and ladders)” employed by Sun/Oracle in the
packages. Appellant Br. 27. Oracle also argues that the
nonliteral elements of the API packages—the structure,
sequence, and organization that led naturally to the
implementing code Google created—are entitled to protec-
tion. Oracle does not assert “literal” copying of the entire
SSO, but, rather, that Google literally copied the declar-
ing code and then paraphrased the remainder of the SSO
by writing its own implementing code. It therefore as-
serts non-literal copying with respect to the entirety of the
SSO.
    At this stage, it is undisputed that the declaring code
and the structure and organization of the Java API pack-
ages are original. The testimony at trial revealed that
designing the Java API packages was a creative process
and that the Sun/Oracle developers had a vast range of
options for the structure and organization. In its copy-
rightability decision, the district court specifically found
that the API packages are both creative and original, and
Google concedes on appeal that the originality require-
ments are met. See Copyrightability Decision, 872 F.
Supp. 2d at 976 (“The overall name tree, of course, has
22                       ORACLE AMERICA, INC.   v. GOOGLE INC.



creative elements . . . .”); Id. at 999 (“Yes, it is creative.
Yes, it is original.”); Appellee Br. 5 (“Google does not
dispute” the district court’s finding that “the Java API
clears the low originality threshold.”). The court found,
however, that neither the declaring code nor the SSO was
entitled to copyright protection under the Copyright Act.
    Although the parties agree that Oracle’s API packages
meet the originality requirement under Section 102(a),
they disagree as to the proper interpretation and applica-
tion of Section 102(b). For its part, Google suggests that
there is a two-step copyrightability analysis, wherein
Section 102(a) grants copyright protection to original
works, while Section 102(b) takes it away if the work has
a functional component. To the contrary, however, Con-
gress emphasized that Section 102(b) “in no way enlarges
or contracts the scope of copyright protection” and that its
“purpose is to restate . . . that the basic dichotomy be-
tween expression and idea remains unchanged.” Feist,
499 U.S. at 356 (quoting H.R. Rep. No. 1476, 94th Cong.,
2d Sess. 54, reprinted in 1976 U.S.C.C.A.N. 5659, 5670).
“Section 102(b) does not extinguish the protection accord-
ed a particular expression of an idea merely because that
expression is embodied in a method of operation.” Mitel,
Inc. v. Iqtel, Inc., 124 F.3d 1366, 1372 (10th Cir. 1997).
Section 102(a) and 102(b) are to be considered collectively
so that certain expressions are subject to greater scrutiny.
Id. In assessing copyrightability, the district court is
required to ferret out apparent expressive aspects of a
work and then separate protectable expression from
“unprotectable ideas, facts, processes, and methods of
operation.” See Atari, 975 F.2d at 839.
    Of course, as with many things, in defining this task,
the devil is in the details. Circuit courts have struggled
with, and disagree over, the tests to be employed when
attempting to draw the line between what is protectable
expression and what is not. Compare Whelan Assocs., Inc.
v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1236 (3d Cir.
ORACLE AMERICA, INC.   v. GOOGLE INC.                     23



1986) (everything not necessary to the purpose or function
of a work is expression), with Lotus, 49 F.3d at 815
(methods of operation are means by which a user operates
something and any words used to effectuate that opera-
tion are unprotected expression). When assessing wheth-
er the non-literal elements of a computer program
constitute protectable expression, the Ninth Circuit has
endorsed an “abstraction-filtration-comparison” test
formulated by the Second Circuit and expressly adopted
by several other circuits. Sega Enters. Ltd. v. Accolade,
Inc., 977 F.2d 1510, 1525 (9th Cir. 1992) (“In our view, in
light of the essentially utilitarian nature of computer
programs, the Second Circuit’s approach is an appropriate
one.”). This test rejects the notion that anything that
performs a function is necessarily uncopyrightable. See
Mitel, 124 F.3d at 1372 (rejecting the Lotus court’s formu-
lation, and concluding that, “although an element of a
work may be characterized as a method of operation, that
element may nevertheless contain expression that is
eligible for copyright protection.”). And it also rejects as
flawed the Whelan assumption that, once any separable
idea can be identified in a computer program everything
else must be protectable expression, on grounds that more
than one idea may be embodied in any particular pro-
gram. Altai, 982 F.2d at 705-06.
     Thus, this test eschews bright line approaches and re-
quires a more nuanced assessment of the particular
program at issue in order to determine what expression is
protectable and infringed. As the Second Circuit explains,
this test has three steps. In the abstraction step, the
court “first break[s] down the allegedly infringed program
into its constituent structural parts.” Id. at 706. In the
filtration step, the court “sift[s] out all non-protectable
material,” including ideas and “expression that is neces-
sarily incidental to those ideas.” Id. In the final step, the
24                        ORACLE AMERICA, INC.   v. GOOGLE INC.



court compares the remaining creative expression with
the allegedly infringing program. 4
    In the second step, the court is first to assess whether
the expression is original to the programmer or author.
Atari, 975 F.2d at 839. The court must then determine
whether the particular inclusion of any level of abstrac-
tion is dictated by considerations of efficiency, required by
factors already external to the program itself, or taken
from the public domain—all of which would render the
expression unprotectable. Id. These conclusions are to be
informed by traditional copyright principles of originality,
merger, and scenes a faire. See Mitel, 124 F.3d at 1372
(“Although this core of expression is eligible for copyright
protection, it is subject to the rigors of filtration analysis
which excludes from protection expression that is in the
public domain, otherwise unoriginal, or subject to the
doctrines of merger and scenes a faire.”).
     In all circuits, it is clear that the first step is part of
the copyrightability analysis and that the third is an
infringement question. It is at the second step of this
analysis where the circuits are in less accord. Some treat
all aspects of this second step as part of the copyrightabil-
ity analysis, while others divide questions of originality
from the other inquiries, treating the former as a question
of copyrightability and the latter as part of the infringe-
ment inquiry. Compare Lexmark, 387 F.3d at 537-38


     4   Importantly, this full analysis only applies where
a copyright owner alleges infringement of the non-literal
aspects of its work. Where “admitted literal copying of a
discrete, easily-conceptualized portion of a work” is at
issue—as with Oracle’s declaring code—a court “need not
perform a complete abstraction-filtration-comparison
analysis” and may focus the protectability analysis on the
filtration stage, with attendant reference to standard
copyright principles. Mitel, 124 F.3d at 1372-73.
ORACLE AMERICA, INC.   v. GOOGLE INC.                   25



(finding that the district court erred in assessing princi-
ples of merger and scenes a faire in the infringement
analysis, rather than as a component of copyrightability),
with Kregos, 937 F.2d at 705 (noting that the Second
Circuit has considered the merger doctrine “in determin-
ing whether actionable infringement has occurred, rather
than whether a copyright is valid”); see also Lexmark, 387
F.3d at 557 (Feikens, J., dissenting-in-part) (noting the
circuit split and concluding that, where a court is as-
sessing merger of an expression with a method of opera-
tion, “I would find the merger doctrine can operate only as
a defense to infringement in that context, and as such has
no bearing on the question of copyrightability.”). We need
not assess the wisdom of these respective views because
there is no doubt on which side of this circuit split the
Ninth Circuit falls.
    In the Ninth Circuit, while questions regarding origi-
nality are considered questions of copyrightability, con-
cepts of merger and scenes a faire are affirmative
defenses to claims of infringement. Ets-Hokin, 225 F.3d
at 1082; Satava v. Lowry, 323 F.3d 805, 810 n.3 (9th Cir.
2003) (“The Ninth Circuit treats scenes a faire as a de-
fense to infringement rather than as a barrier to copy-
rightability.”). The Ninth Circuit has acknowledged that
“there is some disagreement among courts as to whether
these two doctrines figure into the issue of copyrightabil-
ity or are more properly defenses to infringement.” Ets-
Hokin, 225 F.3d at 1082 (citations omitted). It, nonethe-
less, has made clear that, in that circuit, these concepts
are to be treated as defenses to infringement. Id. (citing
Kregos, 937 F.2d at 705 (holding that the merger doctrine
relates to infringement, not copyrightability); Reed-Union
Corp. v. Turtle Wax, Inc., 77 F.3d 909, 914 (7th Cir. 1996)
(explaining why the doctrine of scenes a faire is separate
from the validity of a copyright)).
    With these principles in mind, we turn to the trial
court’s analysis and judgment and to Oracle’s objections
26                       ORACLE AMERICA, INC.   v. GOOGLE INC.



thereto. While the trial court mentioned the abstraction-
filtration-comparison test when describing the develop-
ment of relevant law, it did not purport to actually apply
that test. Instead, it moved directly to application of
familiar principles of copyright law when assessing the
copyrightability of the declaring code and interpreted
Section 102(b) to preclude copyrightability for any func-
tional element “essential for interoperability” “regardless
of its form.” Copyrightability Decision, 872 F. Supp. 2d at
997.
    Oracle asserts that all of the trial court’s conclusions
regarding copyrightability are erroneous. Oracle argues
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. Specifically, Oracle
argues that the district court erred when it: (1) concluded
that each line of declaring code is uncopyrightable be-
cause the idea and expression have merged; (2) found the
declaring code uncopyrightable because it employs short
phrases; (3) found all aspects of the SSO devoid of protec-
tion as a “method of operation” under 17 U.S.C. § 102(b);
and (4) invoked Google’s “interoperability” concerns in the
copyrightability analysis. For the reasons explained
below, we agree with Oracle on each point.
                 1. Declaring Source Code
     First, Oracle argues that the district court erred in
concluding that each line of declaring source code is
completely unprotected under the merger and short
phrases doctrines. Google responds that Oracle waived
its right to assert copyrightability based on the 7,000 lines
of declaring code by failing “to object to instructions and a
verdict form that effectively eliminated that theory from
the case.” Appellee Br. 67. Even if not waived, moreover,
Google argues that, because there is only one way to write
ORACLE AMERICA, INC.   v. GOOGLE INC.                     27



the names and declarations, the merger doctrine bars
copyright protection.
    We find that Oracle did not waive arguments based
on Google’s literal copying of the declaring code. Prior to
trial, both parties informed the court that Oracle’s copy-
right infringement claims included the declarations of the
API elements in the Android class library source code.
See Oracle’s Statement of Issues Regarding Copyright,
Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D.
Cal. Apr. 12, 2012), ECF No. 899-1, at 3 (Oracle accuses
the “declarations of the API elements in the Android class
library source code and object code that implements the
37 API packages” of copyright infringement.); see also
Google’s Proposed Statement of Issues Regarding Copy-
right, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561
(N.D. Cal. Apr. 12, 2012), ECF No. 901, at 2 (Oracle
accuses the “declarations of the API elements in Android
class library source code and object code that implements
the 37 API packages.”).
    While Google is correct that the jury instructions and
verdict form focused on the structure and organization of
the packages, we agree with Oracle that there was no
need for the jury to address copying of the declaring code
because Google conceded that it copied it verbatim.
Indeed, the district court specifically instructed the jury
that “Google agrees that it uses the same names and
declarations” in Android. Final Charge to the Jury at 10.
    That the district court addressed the declaring code in
its post-jury verdict copyrightability decision further
confirms that the verbatim copying of declaring code
remained in the case. The court explained that the “iden-
tical lines” that Google copied into Android “are those
lines that specify the names, parameters and functionali-
ty of the methods and classes, lines called ‘declarations’ or
‘headers.’” Copyrightability Decision, 872 F. Supp. 2d at
979. The court specifically found that the declaring code
28                      ORACLE AMERICA, INC.   v. GOOGLE INC.



was not entitled to copyright protection under the merger
and short phrases doctrines. We address each in turn.
                        a. Merger
    The merger doctrine functions as an exception to the
idea/expression dichotomy. It provides that, when there
are a limited number of ways to express an idea, the idea
is said to “merge” with its expression, and the expression
becomes unprotected. Altai, 982 F.2d at 707-08. As
noted, the Ninth Circuit treats this concept as an affirma-
tive defense to infringement. Ets-Hokin, 225 F.3d at
1082. Accordingly, it appears that the district court’s
merger analysis is irrelevant to the question of whether
Oracle’s API packages are copyrightable in the first
instance. Regardless of when the analysis occurs, we
conclude that merger does not apply on the record before
us.
    Under the merger doctrine, a court will not protect a
copyrighted work from infringement if the idea contained
therein can be expressed in only one way. Satava v.
Lowry, 323 F.3d 805, 812 n.5 (9th Cir. 2003). For com-
puter programs, “this means that when specific [parts of
the code], even though previously copyrighted, are the
only and essential means of accomplishing a given task,
their later use by another will not amount to infringe-
ment.” Altai, 982 F.2d at 708 (citation omitted). We have
recognized, however, applying Ninth Circuit law, that the
“unique arrangement of computer program expression . . .
does not merge with the process so long as alternate
expressions are available.” Atari, 975 F.2d at 840.
    In Atari, for example, Nintendo designed a program—
the 10NES—to prevent its video game system from ac-
cepting unauthorized game cartridges. 975 F.2d at 836.
Nintendo “chose arbitrary programming instructions and
arranged them in a unique sequence to create a purely
arbitrary data stream” which “serves as the key to unlock
the NES.” Id. at 840. Because Nintendo produced expert
ORACLE AMERICA, INC.   v. GOOGLE INC.                     29



testimony “showing a multitude of different ways to
generate a data stream which unlocks the NES console,”
we concluded that Nintendo’s specific choice of code did
not merge with the process. Id.
     Here, the district court found that, “no matter how
creative or imaginative a Java method specification may
be, the entire world is entitled to use the same method
specification (inputs, outputs, parameters) so long as the
line-by-line implementations are different.” Copyrighta-
bility Decision, 872 F. Supp. 2d at 998. In its analysis, the
court identified the method declaration as the idea and
found that the implementation is the expression. Id.
(“The method specification is the idea. The method im-
plementation is the expression. No one may monopolize
the idea.”) (emphases in original). The court explained
that, under the rules of Java, a programmer must use the
identical “declaration or method header lines” to “declare
a method specifying the same functionality.” Id. at 976.
Because the district court found that there was only one
way to write the declaring code for each of the Java pack-
ages, it concluded that “the merger doctrine bars anyone
from claiming exclusive copyright ownership” of it. Id. at
998. Accordingly, the court held there could be “no copy-
right violation in using the identical declarations.” Id.
    Google agrees with the district court that the imple-
menting code is the expression entitled to protection—not
the declaring code. Indeed, at oral argument, counsel for
Google explained that, “it is not our position that none of
Java is copyrightable. Obviously, Google spent two and a
half years . . . to write from scratch all of the implement-
ing code.” Oral Argument at 33:16. 5 Because it is undis-


    5  It is undisputed that Microsoft and Apple devel-
oped mobile operating systems from scratch, using their
own array of software packages. When asked whether
Google could also copy all of Microsoft or Apple’s declaring
30                      ORACLE AMERICA, INC.   v. GOOGLE INC.



puted that Google wrote its own implementing code, the
copyrightability of the precise language of that code is not
at issue on appeal. Instead, our focus is on the declaring
code and structure of the API packages.
     On appeal, Oracle argues that the district court:
(1) misapplied the merger doctrine; and (2) failed to focus
its analysis on the options available to the original au-
thor. We agree with Oracle on both points. First, we
agree that merger cannot bar copyright protection for any
lines of declaring source code unless Sun/Oracle had only
one way, or a limited number of ways, to write them. See
Satava, 323 F.3d at 812 n.5 (“Under the merger doctrine,
courts will not protect a copyrighted work from infringe-
ment if the idea underlying the copyrighted work can be
expressed in only one way, lest there be a monopoly on
the underlying idea.”). The evidence showed that Oracle
had “unlimited options as to the selection and arrange-
ment of the 7000 lines Google copied.” Appellant Br. 50.
Using the district court’s “java.lang.Math.max” example,
Oracle explains that the developers could have called it
any number of things, including “Math.maximum” or
“Arith.larger.” This was not a situation where Oracle was
selecting among preordained names and phrases to create
its packages. 6 As the district court recognized, moreover,



code—codes that obviously differ from those at issue
here—counsel for Google responded: “Yes, but only the
structure, sequence, and organization. Only the com-
mand structure—what you need to access the functions.
You’d have to rewrite all the millions of lines of code in
Apple or in Microsoft which is what Google did in An-
droid.” Oral Argument at 36:00.
    6   In their brief as amici curiae in support of rever-
sal, Scott McNealy and Brian Sutphin—both former
executives at Sun who were involved in the development
of the Java platform—provide a detailed example of the
ORACLE AMERICA, INC.   v. GOOGLE INC.                    31



“the Android method and class names could have been
different from the names of their counterparts in Java
and still have worked.” Copyrightability Decision, 872 F.
Supp. 2d at 976. Because “alternative expressions [we]re
available,” there is no merger. See Atari, 975 F.2d at 840.
    We further find that the district court erred in focus-
ing its merger analysis on the options available to Google
at the time of copying. It is well-established that copy-
rightability and the scope of protectable activity are to be
evaluated at the time of creation, not at the time of in-
fringement. See Apple Computer, Inc. v. Formula Int’l,
Inc., 725 F.2d 521, 524 (9th Cir. 1984) (quoting National
Commission on New Technological Uses of Copyrighted
Works, Final Report at 21 (1979) (“CONTU Report”)
(recognizing that the Copyright Act was designed “to
protect all works of authorship from the moment of their
fixation in any tangible medium of expression”)). The
focus is, therefore, on the options that were available to
Sun/Oracle at the time it created the API packages. Of



creative choices involved in designing a Java package.
Looking at the “java.text” package, they explain that it
“contains 25 classes, 2 interfaces, and hundreds of meth-
ods to handle text, dates, numbers, and messages in a
manner independent of natural human languages . . . .”
Br. of McNealy and Sutphin 14-15. Java’s creators had to
determine whether to include a java.text package in the
first place, how long the package would be, what elements
to include, how to organize that package, and how it
would relate to other packages. Id. at 16. This descrip-
tion of Sun’s creative process is consistent with the evi-
dence presented at trial. See Appellant Br. 12-13 (citing
testimony that it took years to write some of the Java
packages and that Sun/Oracle developers had to “wrestle
with what functions to include in the package, which to
put in other packages, and which to omit entirely”).
32                       ORACLE AMERICA, INC.   v. GOOGLE INC.



course, once Sun/Oracle created “java.lang.Math.max,”
programmers who want to use that particular package
have to call it by that name. But, as the court acknowl-
edged, nothing prevented Google from writing its own
declaring code, along with its own implementing code, to
achieve the same result. In such circumstances, the
chosen expression simply does not merge with the idea
being expressed. 7
    It seems possible that the merger doctrine, when
properly analyzed, would exclude the three packages
identified by the district court as core packages from the
scope of actionable infringing conduct. This would be so if
the Java authors, at the time these packages were creat-
ed, had only a limited number of ways to express the
methods and classes therein if they wanted to write in the
Java language. In that instance, the idea may well be
merged with the expression in these three packages. 8



     7  The district court did not find merger with respect
to the structure, sequence, and organization of Oracle’s
Java API packages. Nor could it, given the court’s recog-
nition that there were myriad ways in which the API
packages could have been organized. Indeed, the court
found that the SSO is original and that “nothing in the
rules of the Java language . . . required that Google
replicate the same groupings.” Copyrightability Decision,
872 F. Supp. 2d at 999. As discussed below, however, the
court nonetheless found that the SSO is an uncopyrighta-
ble “method of operation.”
     8  At oral argument, counsel for Oracle was asked
whether we should view the three core packages “differ-
ently vis-à-vis the concept of a method of operation than
the other packages.” See Oral Argument at 7:43. He
responded: “I think not your Honor. I would view them
differently with respect to fair use . . . . It’s not that they
are more basic. It’s that there are just several methods,
ORACLE AMERICA, INC.   v. GOOGLE INC.                      33



Google did not present its merger argument in this way
below and does not do so here, however. Indeed, Google
does not try to differentiate among the packages for
purposes of its copyrightability analysis and does not
appeal the infringement verdict as to the packages. For
these reasons, we reject the trial court’s merger analysis.
                       b. Short Phrases
     The district court also found that Oracle’s declaring
code consists of uncopyrightable short phrases. Specifical-
ly, the court concluded that, “while the Android method
and class names could have been different from the
names of their counterparts in Java and still have
worked, copyright protection never extends to names or
short phrases as a matter of law.” Copyrightability Deci-
sion, 872 F. Supp. 2d at 976.
    The district court is correct that “[w]ords and short
phrases such as names, titles, and slogans” are not sub-
ject to copyright protection. 37 C.F.R. § 202.1(a). The
court failed to recognize, however, that the relevant
question for copyrightability purposes is not whether the
work at issue contains short phrases—as literary works
often do—but, rather, whether those phrases are creative.
See Soc’y of Holy Transfiguration Monastery, Inc. v.



that is, routines, within just those three packages that are
necessary to ‘speak the Java language.’ Nothing in the
other thirty-four packages is necessary in order to speak
in Java, so to speak.” Id. Counsel conceded, however,
that this issue “might go to merger. It might go to the
question whether someone—since we conceded that it’s
okay to use the language—if it’s alright to use the lan-
guage that there are certain things that the original
developers had to say in order to use that language,
arguably, although I still think it’s really a fair use analy-
sis.” Id.
34                      ORACLE AMERICA, INC.   v. GOOGLE INC.



Gregory, 689 F.3d 29, 52 (1st Cir. 2012) (noting that “not
all short phrases will automatically be deemed uncopy-
rightable”); see also 1 Melville B. Nimmer & David Nim-
mer, Nimmer on Copyright § 2.01[B] (2013) (“[E]ven a
short phrase may command copyright protection if it
exhibits sufficient creativity.”). And, by dissecting the
individual lines of declaring code at issue into short
phrases, the district court further failed to recognize that
an original combination of elements can be copyrightable.
See Softel, Inc. v. Dragon Med. & Scientific Commc’ns,
118 F.3d 955, 964 (2d Cir. 1997) (noting that, in Feist,
“the Court made quite clear that a compilation of non-
protectible elements can enjoy copyright protection even
though its constituent elements do not”).
     By analogy, the opening of Charles Dickens’ A Tale of
Two Cities is nothing but a string of short phrases. Yet no
one could contend that this portion of Dickens’ work is
unworthy of copyright protection because it can be broken
into those shorter constituent components. The question
is not whether a short phrase or series of short phrases
can be extracted from the work, but whether the manner
in which they are used or strung together exhibits creativ-
ity.
    Although the district court apparently focused on in-
dividual lines of code, Oracle is not seeking copyright
protection for a specific short phrase or word. Instead,
the portion of declaring code at issue is 7,000 lines, and
Google’s own “Java guru” conceded that there can be
“creativity and artistry even in a single method declara-
tion.” Joint Appendix (“J.A.”) 20,970. Because Oracle
“exercised creativity in the selection and arrangement” of
the method declarations when it created the API packages
and wrote the relevant declaring code, they contain pro-
tectable expression that is entitled to copyright protec-
tion. See Atari, 975 F.2d at 840; see also 17 U.S.C. §§ 101,
103 (recognizing copyright protection for “compilations”
which are defined as work that is “selected, coordinated,
ORACLE AMERICA, INC.   v. GOOGLE INC.                    35



or arranged in such a way that the resulting work as a
whole constitutes an original work of authorship”). Ac-
cordingly, we conclude that the district court erred in
applying the short phrases doctrine to find the declaring
code not copyrightable.
                       c. Scenes a Faire
     The scenes a faire doctrine, which is related to the
merger doctrine, operates to bar certain otherwise crea-
tive expression from copyright protection. Apple Comput-
er, Inc. v. Microsoft Corp., 35 F.3d 1435, 1444 (9th Cir.
1994). It provides that “expressive elements of a work of
authorship are not entitled to protection against in-
fringement if they are standard, stock, or common to a
topic, or if they necessarily follow from a common theme
or setting.” Mitel, 124 F.3d at 1374. Under this doctrine,
“when certain commonplace expressions are indispensable
and naturally associated with the treatment of a given
idea, those expressions are treated like ideas and there-
fore [are] not protected by copyright.” Swirsky v. Carey,
376 F.3d 841, 850 (9th Cir. 2004). In the computer con-
text, “the scene a faire doctrine denies protection to pro-
gram elements that are dictated by external factors such
as ‘the mechanical specifications of the computer on which
a particular program is intended to run’ or ‘widely accept-
ed programming practices within the computer industry.’”
Softel, 118 F.3d at 963 (citation omitted).
    The trial court rejected Google’s reliance on the scenes
a faire doctrine. It did so in a footnote, finding that
Google had failed to present evidence to support the claim
that either the grouping of methods within the classes or
the code chosen for them “would be so expected and
customary as to be permissible under the scenes a faire
doctrine.” Copyrightability Decision, 872 F. Supp. 2d at
999 n.9. Specifically, the trial court found that “it is
impossible to say on this record that all of the classes and
their contents are typical of such classes and, on this
36                       ORACLE AMERICA, INC.   v. GOOGLE INC.



record, this order rejects Google’s global argument based
on scenes a faire.” Id.
     On appeal, Google refers to scenes a faire concepts
briefly, as do some amici, apparently contending that,
because programmers have become accustomed to and
comfortable using the groupings in the Java API packag-
es, those groupings are so commonplace as to be indispen-
sable to the expression of an acceptable programming
platform. As such, the argument goes, they are so associ-
ated with the “idea” of what the packages are accomplish-
ing that they should be treated as ideas rather than
expression. See Br. of Amici Curiae Rackspace US, Inc.,
et al. at 19-22.
    Google cannot rely on the scenes a faire doctrine as an
alternative ground upon which we might affirm the
copyrightability judgment of the district court. This is so
for several reasons. First, as noted, like merger, in the
Ninth Circuit, the scenes a faire doctrine is a component
of the infringement analysis. “[S]imilarity of expression,
whether literal or non-literal, which necessarily results
from the fact that the common idea is only capable of
expression in more or less stereotyped form, will preclude
a finding of actionable similarity.” 4 Nimmer on Copy-
right § 13.03[B][3]. Thus, the expression is not excluded
from copyright protection; it is just that certain copying is
forgiven as a necessary incident of any expression of the
underlying idea. See Satava, 323 F.3d at 810 n.3 (“The
Ninth Circuit treats scenes a faire as a defense to in-
fringement rather than as a barrier to copyrightability.”).
    Second, Google has not objected to the trial court’s
conclusion that Google failed to make a sufficient factual
record to support its contention that the groupings and
code chosen for the 37 Java API packages were driven by
external factors or premised on features that were either
commonplace or essential to the idea being expressed.
Google provides no record citations indicating that such a
ORACLE AMERICA, INC.   v. GOOGLE INC.                     37



showing was made and does not contend that the trial
court erred when it expressly found it was not. Indeed,
Google does not even make this argument with respect to
the core packages.
     Finally, Google’s reliance on the doctrine below and
the amici reference to it here are premised on a funda-
mental misunderstanding of the doctrine. Like merger,
the focus of the scenes a faire doctrine is on the circum-
stances presented to the creator, not the copier. See Mitel,
124 F.3d at 1375 (finding error to the extent the trial
court discussed “whether external factors such as market
forces and efficiency considerations justified Iqtel’s copy-
ing of the command codes”). The court’s analytical focus
must be upon the external factors that dictated Sun’s
selection of classes, methods, and code—not upon what
Google encountered at the time it chose to copy those
groupings and that code. See id. “[T]he scenes a faire
doctrine identifies and excludes from protection against
infringement expression whose creation ‘flowed naturally
from considerations external to the author’s creativity.’”
Id. (quoting Nimmer § 13.03[F][3], at 13-131 (1997)). It is
this showing the trial court found Google failed to make,
and Google cites to nothing in the record which indicates
otherwise.
     For these reasons, the trial court was correct to con-
clude that the scenes a faire doctrine does not affect the
copyrightability of either the declaring code in, or the SSO
of, the Java API packages at issue.
      2. The Structure, Sequence, and Organization
                  of the API Packages
    The district court found that the SSO of the Java API
packages is creative and original, but nevertheless held
that it is a “system or method of operation . . . and, there-
fore, cannot be copyrighted” under 17 U.S.C. § 102(b).
Copyrightability Decision, 872 F. Supp. 2d at 976-77. In
reaching this conclusion, the district court seems to have
38                      ORACLE AMERICA, INC.   v. GOOGLE INC.



relied upon language contained in a First Circuit decision:
Lotus Development Corp. v. Borland International, Inc.,
49 F.3d 807 (1st Cir. 1995), aff’d without opinion by
equally divided court, 516 U.S. 233 (1996). 9
    In Lotus, it was undisputed that the defendant copied
the menu command hierarchy and interface from Lotus 1-
2-3, a computer spreadsheet program “that enables users
to perform accounting functions electronically on a com-
puter.” 49 F.3d at 809. The menu command hierarchy
referred to a series of commands—such as “Copy,” “Print,”
and “Quit”—which were arranged into more than 50
menus and submenus. Id. Although the defendant did
not copy any Lotus source code, it copied the menu com-
mand hierarchy into its rival program. The question
before the court was “whether a computer menu command
hierarchy is copyrightable subject matter.” Id.
    Although it accepted the district court’s finding that
Lotus developers made some expressive choices in select-
ing and arranging the command terms, the First Circuit
found that the command hierarchy was not copyrightable
because, among other things, it was a “method of opera-
tion” under Section 102(b). In reaching this conclusion,
the court defined a “method of operation” as “the means
by which a person operates something, whether it be a
car, a food processor, or a computer.” Id. at 815. 10 Be-
cause the Lotus menu command hierarchy provided “the
means by which users control and operate Lotus 1-2-3,” it


     9   The Supreme Court granted certiorari in Lotus,
but, shortly after oral argument, the Court announced
that it was equally divided and that Justice Stevens took
no part in the consideration or decision of the case. The
Court therefore left the First Circuit’s decision undis-
turbed. See Lotus, 516 U.S. at 233-34.
     10  The Lotus majority cited no authority for this def-
inition of “method of operation.”
ORACLE AMERICA, INC.   v. GOOGLE INC.                     39



was deemed unprotectable. Id. For example, if users
wanted to copy material, they would use the “Copy”
command and the command terms would tell the comput-
er what to do. According to the Lotus court, the “fact that
Lotus developers could have designed the Lotus menu
command hierarchy differently is immaterial to the
question of whether it is a ‘method of operation.’” Id. at
816. (noting that “our initial inquiry is not whether the
Lotus menu command hierarchy incorporates any expres-
sion”). The court further indicated that, “[i]f specific
words are essential to operating something, then they are
part of a ‘method of operation’ and, as such, are unpro-
tectable.” Id.
    On appeal, Oracle argues that the district court’s reli-
ance on Lotus is misplaced because it is distinguishable
on its facts and is inconsistent with Ninth Circuit law.
We agree. First, while the defendant in Lotus did not
copy any of the underlying code, Google concedes that it
copied portions of Oracle’s declaring source code verbatim.
Second, the Lotus court found that the commands at issue
there (copy, print, etc.) were not creative, but it is undis-
puted here that the declaring code and the structure and
organization of the API packages are both creative and
original. Finally, while the court in Lotus found the
commands at issue were “essential to operating” the
system, it is undisputed that—other than perhaps as to
the three core packages—Google did not need to copy the
structure, sequence, and organization of the Java API
packages to write programs in the Java language.
    More importantly, however, the Ninth Circuit has not
adopted the court’s “method of operation” reasoning in
Lotus, and we conclude that it is inconsistent with bind-
ing precedent. 11 Specifically, we find that Lotus is incon-


    11 As Oracle points out, the Ninth Circuit has cited
Lotus only one time, on a procedural issue. See Danjaq
40                       ORACLE AMERICA, INC.   v. GOOGLE INC.



sistent with Ninth Circuit case law recognizing that the
structure, sequence, and organization of a computer
program is eligible for copyright protection where it
qualifies as an expression of an idea, rather than the idea
itself. See Johnson Controls, 886 F.2d at 1175-76. And,
while the court in Lotus held “that expression that is part
of a ‘method of operation’ cannot be copyrighted,” 49 F.3d
at 818, this court—applying Ninth Circuit law—reached
the exact opposite conclusion, finding that copyright
protects “the expression of [a] process or method,” Atari,
975 F.2d at 839.
     We find, moreover, that the hard and fast rule set
down in Lotus and employed by the district court here—
i.e., that elements which perform a function can never be
copyrightable—is at odds with the Ninth Circuit’s en-
dorsement of the abstraction-filtration-comparison analy-
sis discussed earlier. As the Tenth Circuit concluded in
expressly rejecting the Lotus “method of operation” analy-
sis, in favor of the Second Circuit’s abstraction-filtration-
comparison test, “although an element of a work may be
characterized as a method of operation, that element may
nevertheless contain expression that is eligible for copy-
right protection.” Mitel, 124 F.3d at 1372. Specifically,
the court found that Section 102(b) “does not extinguish
the protection accorded a particular expression of an idea
merely because that expression is embodied in a method
of operation at a higher level of abstraction.” Id.
   Other courts agree that components of a program that
can be characterized as a “method of operation” may


LLC v. Sony Corp., 263 F.3d 942, 954 (9th Cir. 2001)
(citing Lotus for the proposition that delay “has been held
permissible, among other reasons, when it is necessitated
by the exhaustion of remedies through the administrative
process . . . when it is used to evaluate and prepare a
complicated claim”).
ORACLE AMERICA, INC.   v. GOOGLE INC.                   41



nevertheless be copyrightable. For example, the Third
Circuit rejected a defendant’s argument that operating
system programs are “per se” uncopyrightable because an
operating system is a “method of operation” for a comput-
er. Apple Computer, Inc. v. Franklin Computer Corp., 714
F.2d 1240, 1250-52 (3d Cir. 1983). The court distin-
guished between the “method which instructs the com-
puter to perform its operating functions” and “the
instructions themselves,” and found that the instructions
were copyrightable. Id. at 1250-51. In its analysis, the
court noted: “[t]hat the words of a program are used
ultimately in the implementation of a process should in no
way affect their copyrightability.” Id. at 1252 (quoting
CONTU Report at 21). The court focused “on whether the
idea is capable of various modes of expression” and indi-
cated that, “[i]f other programs can be written or created
which perform the same function as [i]n Apple’s operating
system program, then that program is an expression of
the idea and hence copyrightable.” Id. at 1253. Notably,
no other circuit has adopted the First Circuit’s “method of
operation” analysis.
    Courts have likewise found that classifying a work as
a “system” does not preclude copyright for the particular
expression of that system. See Toro Co. v. R & R Prods.
Co., 787 F.2d 1208, 1212 (8th Cir. 1986) (rejecting the
district court’s decision that “appellant’s parts numbering
system is not copyrightable because it is a ‘system’” and
indicating that Section 102(b) does not preclude protec-
tion for the “particular expression” of that system); see
also Am. Dental Ass’n v. Delta Dental Plans Ass’n, 126
F.3d 977, 980 (7th Cir. 1997) (“A dictionary cannot be
called a ‘system’ just because new novels are written
using words, all of which appear in the dictionary. Nor is
word-processing software a ‘system’ just because it has a
command structure for producing paragraphs.”).
   Here, the district court recognized that the SSO “re-
sembles a taxonomy,” but found that “it is nevertheless a
42                      ORACLE AMERICA, INC.   v. GOOGLE INC.



command structure, a system or method of operation—a
long hierarchy of over six thousand commands to carry
out pre-assigned functions.” Copyrightability Decision,
872 F. Supp. 2d at 999-1000. 12 In other words, the court
concluded that, although the SSO is expressive, it is not
copyrightable because it is also functional. The problem
with the district court’s approach is that computer pro-
grams are by definition functional—they are all designed
to accomplish some task. Indeed, the statutory definition
of “computer program” acknowledges that they function
“to bring about a certain result.” See 17 U.S.C. § 101
(defining a “computer program” as “a set of statements or
instructions to be used directly or indirectly in a computer
in order to bring about a certain result”). If we were to
accept the district court’s suggestion that a computer
program is uncopyrightable simply because it “carr[ies]
out pre-assigned functions,” no computer program is
protectable. That result contradicts Congress’s express
intent to provide copyright protection to computer pro-
grams, as well as binding Ninth Circuit case law finding
computer programs copyrightable, despite their utilitari-
an or functional purpose. Though the trial court did add
the caveat that it “does not hold that the structure, se-
quence and organization of all computer programs may be
stolen,” Copyrightability Decision, 872 F. Supp. 2d at
1002, it is hard to see how its method of operation analy-
sis could lead to any other conclusion.
   While it does not appear that the Ninth Circuit has
addressed the precise issue, we conclude that a set of
commands to instruct a computer to carry out desired



     12 This analogy by the district court is meaningful
because taxonomies, in varying forms, have generally
been deemed copyrightable. See, e.g., Practice Mgmt. Info.
Corp. v. Am. Med. Ass’n, 121 F.3d 516, 517-20 (9th Cir.
1997); Am. Dental, 126 F.3d at 978-81.
ORACLE AMERICA, INC.   v. GOOGLE INC.                  43



operations may contain expression that is eligible for
copyright protection. See Mitel, 124 F.3d at 1372. We
agree with Oracle that, under Ninth Circuit law, an
original work—even one that serves a function—is enti-
tled to copyright protection as long as the author had
multiple ways to express the underlying idea. Section
102(b) does not, as Google seems to suggest, automatically
deny copyright protection to elements of a computer
program that are functional. Instead, as noted, Sec-
tion 102(b) codifies the idea/expression dichotomy and the
legislative history confirms that, among other things,
Section 102(b) was “intended to make clear that the
expression adopted by the programmer is the copyrighta-
ble element in a computer program.” H.R. Rep. No. 1476,
94th Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N.
5659, 5670. Therefore, even if an element directs a com-
puter to perform operations, the court must nevertheless
determine whether it contains any separable expression
entitled to protection.
     On appeal, Oracle does not—and concedes that it can-
not—claim copyright in the idea of organizing functions of
a computer program or in the “package-class-method”
organizational structure in the abstract. Instead, Oracle
claims copyright protection only in its particular way of
naming and organizing each of the 37 Java API packag-
es. 13 Oracle recognizes, for example, that it “cannot
copyright the idea of programs that open an internet



   13   At oral argument, counsel for Oracle explained
that it “would never claim that anyone who uses a pack-
age-class-method manner of classifying violates our
copyright. We don’t own every conceivable way of organ-
izing, we own only our specific expression—our specific
way of naming each of these 362 methods, putting them
into 36 classes, and 20 subclasses.” Oral Argument at
16:44.
44                      ORACLE AMERICA, INC.   v. GOOGLE INC.



connection,” but “it can copyright the precise strings of
code used to do so, at least so long as ‘other language is
available’ to achieve the same function.” Appellant Reply
Br. 13-14 (citation omitted). Thus, Oracle concedes that
Google and others could employ the Java language—much
like anyone could employ the English language to write a
paragraph without violating the copyrights of other
English language writers. And, that Google may employ
the “package-class-method” structure much like authors
can employ the same rules of grammar chosen by other
authors without fear of infringement. What Oracle con-
tends is that, beyond that point, Google, like any author,
is not permitted to employ the precise phrasing or precise
structure chosen by Oracle to flesh out the substance of
its packages—the details and arrangement of the prose.
    As the district court acknowledged, Google could have
structured Android differently and could have chosen
different ways to express and implement the functionality
that it copied. 14 Specifically, the court found that “the



     14 Amici McNealy and Sutphin explain that “a quick
examination of other programming environments shows
that creators of other development platforms provide the
same functions with wholly different creative choices.”
Br. of McNealy and Sutphin 17. For example, in Java, a
developer setting the time zone would call the “setTime-
Zone” method within the “DateFormat” class of the ja-
va.text package. Id. Apple’s iOS platform, on the other
hand, “devotes an entire class to set the time zone in an
application—the ‘NSTimeZone’ class” which is in the
“Foundation framework.” Id. at 17-18 (noting that a
“framework is Apple’s terminology for a structure concep-
tually similar to Java’s ‘package’”). Microsoft provides
similar functionality with “an entirely different structure,
naming scheme, and selection.” Id. at 18 (“In its Windows
Phone development platform, Microsoft stores its time
ORACLE AMERICA, INC.   v. GOOGLE INC.                   45



very same functionality could have been offered in An-
droid without duplicating the exact command structure
used in Java.” Copyrightability Decision, 872 F. Supp. 2d
at 976. The court further explained that Google could
have offered the same functions in Android by “re-
arranging the various methods under different groupings
among the various classes and packages.” Id. The evi-
dence showed, moreover, that Google designed many of its
own API packages from scratch, and, thus, could have
designed its own corresponding 37 API packages if it
wanted to do so.
    Given the court’s findings that the SSO is original and
creative, and that the declaring code could have been
written and organized in any number of ways and still
have achieved the same functions, we conclude that
Section 102(b) does not bar the packages from copyright
protection just because they also perform functions.
         3. Google’s Interoperability Arguments
            are Irrelevant to Copyrightability
    Oracle also argues that the district court erred in in-
voking interoperability in its copyrightability analysis.
Specifically, Oracle argues that Google’s interoperability
arguments are only relevant, if at all, to fair use—not to
the question of whether the API packages are copyrighta-
ble. We agree.
    In characterizing the SSO of the Java API packages
as a “method of operation,” the district court explained
that “[d]uplication of the command structure is necessary
for interoperability.” Copyrightability Decision, 872 F.
Supp. 2d at 977. The court found that, “[i]n order for at


zone programs in the ‘TimeZoneInfo’ class in its ‘Systems’
namespace (Microsoft’s version of a ‘package’ or ‘frame-
work’).”). Again, this is consistent with the evidence
presented at trial.
46                      ORACLE AMERICA, INC.   v. GOOGLE INC.



least some of [the pre-Android Java] code to run on An-
droid, Google was required to provide the same ja-
va.package.Class.method() command system using the
same names with the same ‘taxonomy’ and with the same
functional specifications.” Id. at 1000 (emphasis omitted).
And, the court concluded that “Google replicated what
was necessary to achieve a degree of interoperability—but
no more, taking care, as said before, to provide its own
implementations.” Id. In reaching this conclusion, the
court relied primarily on two Ninth Circuit decisions:
Sega Enterprises v. Accolade, Inc., 977 F.2d 1510 (9th Cir.
1992), and Sony Computer Entertainment, Inc. v. Con-
nectix, Corp., 203 F.3d 596 (9th Cir. 2000).
    Both Sega and Sony are fair use cases in which copy-
rightability was addressed only tangentially. In Sega, for
example, Sega manufactured a video game console and
game cartridges that contained hidden functional pro-
gram elements necessary to achieve compatibility with
the console. Defendant Accolade: (1) reverse-engineered
Sega’s video game programs to discover the requirements
for compatibility; and (2) created its own games for the
Sega console. Sega, 977 F.2d at 1514-15. As part of the
reverse-engineering process, Accolade made intermediate
copies of object code from Sega’s console. Id. Although
the court recognized that the intermediate copying of
computer code may infringe Sega’s copyright, it concluded
that “disassembly of copyrighted object code is, as a
matter of law, a fair use of the copyrighted work if such
disassembly provides the only means of access to those
elements of the code that are not protected by copyright
and the copier has a legitimate reason for seeking such
access.” Id. at 1518. The court agreed with Accolade that
its copying was necessary to examine the unprotected
functional aspects of the program. Id. at 1520. And,
because Accolade had a legitimate interest in making its
cartridges compatible with Sega’s console, the court found
that Accolade’s intermediate copying was fair use.
ORACLE AMERICA, INC.   v. GOOGLE INC.                   47



    Likewise, in Sony, the Ninth Circuit found that the
defendant’s reverse engineering and intermediate copying
of Sony’s copyrighted software program “was a fair use for
the purpose of gaining access to the unprotected elements
of Sony’s software.” Sony, 203 F.3d at 602. The court
explained that Sony’s software program contained unpro-
tected functional elements and that the defendant could
only access those elements through reverse engineering.
Id. at 603. The defendant used that information to create
a software program that let consumers play games de-
signed for Sony’s PlayStation console on their computers.
Notably, the defendant’s software program did not con-
tain any of Sony’s copyrighted material. Id. at 598.
    The district court characterized Sony and Sega as
“close analogies” to this case. Copyrightability Decision,
872 F. Supp. 2d at 1000. According to the court, both
decisions “held that interface procedures that were neces-
sary to duplicate in order to achieve interoperability were
functional aspects not copyrightable under Section
102(b).” Id. The district court’s reliance on Sega and
Sony in the copyrightability context is misplaced, howev-
er.
    As noted, both cases were focused on fair use, not cop-
yrightability. In Sega, for example, the only question was
whether Accolade’s intermediate copying was fair use.
The court never addressed the question of whether Sega’s
software code, which had functional elements, also con-
tained separable creative expression entitled to protec-
tion. Likewise, although the court in Sony determined
that Sony’s computer program had functional elements, it
never addressed whether it also had expressive elements.
Sega and Sony are also factually distinguishable because
the defendants in those cases made intermediate copies to
understand the functional aspects of the copyrighted
works and then created new products. See Sony, 203 F.3d
at 606-07; Sega, 977 F.2d at 1522-23. This is not a case
where Google reverse-engineered Oracle’s Java packages
48                      ORACLE AMERICA, INC.   v. GOOGLE INC.



to gain access to unprotected functional elements con-
tained therein. As the former Register of Copyrights of
the United States pointed out in his brief amicus curiae,
“[h]ad Google reverse engineered the programming pack-
ages to figure out the ideas and functionality of the origi-
nal, and then created its own structure and its own literal
code, Oracle would have no remedy under copyright
whatsoever.” Br. for Amicus Curiae Ralph Oman 29.
Instead, Google chose to copy both the declaring code and
the overall SSO of the 37 Java API packages at issue.
     We disagree with Google’s suggestion that Sony and
Sega created an “interoperability exception” to copyright-
ability. See Appellee Br. 39 (citing Sony and Sega for the
proposition that “compatibility elements are not copy-
rightable under section 102(b)” (emphasis omitted)).
Although both cases recognized that the software pro-
grams at issue there contained unprotected functional
elements, a determination that some elements are unpro-
tected is not the same as saying that the entire work loses
copyright protection. To accept Google’s reading would
contradict Ninth Circuit case law recognizing that both
the literal and non-literal components of a software
program are eligible for copyright protection. See John-
son Controls, 886 F.2d at 1175. And it would ignore the
fact that the Ninth Circuit endorsed the abstraction-
filtration-comparison inquiry in Sega itself.
    As previously discussed, a court must examine the
software program to determine whether it contains crea-
tive expression that can be separated from the underlying
function. See Sega, 977 F.2d at 1524-25. In doing so, the
court filters out the elements of the program that are
“ideas” as well as elements that are “dictated by consider-
ations of efficiency, so as to be necessarily incidental to
that idea; required by factors external to the program
itself.” Altai, 982 F.2d at 707.
ORACLE AMERICA, INC.   v. GOOGLE INC.                  49



     To determine “whether certain aspects of an allegedly
infringed software are not protected by copyright law, the
focus is on external factors that influenced the choice of
the creator of the infringed product.” Dun & Bradstreet
Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d
197, 215 (3d Cir. 2002) (citing Altai, 982 F.2d at 714;
Mitel, 124 F.3d at 1375). The Second Circuit, for example,
has noted that programmers are often constrained in
their design choices by “extrinsic considerations” includ-
ing “the mechanical specifications of the computer on
which a particular program is intended to run” and “com-
patibility requirements of other programs with which a
program is designed to operate in conjunction.” Altai, 982
F.2d at 709-10 (citing 3 Melville B. Nimmer & David
Nimmer, Nimmer on Copyright § 13.01 at 13-66-71
(1991)). The Ninth Circuit has likewise recognized that:
(1) computer programs “contain many logical, structural,
and visual display elements that are dictated by . . .
external factors such as compatibility requirements and
industry demands”; and (2) “[i]n some circumstances,
even the exact set of commands used by the programmer
is deemed functional rather than creative for purposes of
copyright.” Sega, 977 F.2d at 1524 (internal citation
omitted).
    Because copyrightability is focused on the choices
available to the plaintiff at the time the computer pro-
gram was created, the relevant compatibility inquiry asks
whether the plaintiff’s choices were dictated by a need to
ensure that its program worked with existing third-party
programs. Dun & Bradstreet, 307 F.3d at 215; see also
Atari, 975 F.2d at 840 (“External factors did not dictate
the design of the 10NES program.”). Whether a defend-
ant later seeks to make its program interoperable with
the plaintiff’s program has no bearing on whether the
software the plaintiff created had any design limitations
dictated by external factors. See Dun & Bradstreet, 307
F.3d at 215 (finding an expert’s testimony on interopera-
50                      ORACLE AMERICA, INC.   v. GOOGLE INC.



bility “wholly misplaced” because he “looked at externali-
ties from the eyes of the plagiarist, not the eyes of the
program’s creator”). Stated differently, the focus is on the
compatibility needs and programming choices of the party
claiming copyright protection—not the choices the de-
fendant made to achieve compatibility with the plaintiff’s
program. Consistent with this approach, courts have
recognized that, once the plaintiff creates a copyrightable
work, a defendant’s desire “to achieve total compatibil-
ity . . . is a commercial and competitive objective which
does not enter into the . . . issue of whether particular
ideas and expressions have merged.” Apple Computer,
714 F.2d at 1253.
     Given this precedent, we conclude that the district
court erred in focusing its interoperability analysis on
Google’s desires for its Android software. See Copyrighta-
bility Decision, 872 F. Supp. 2d at 1000 (“Google replicat-
ed what was necessary to achieve a degree of
interoperability” with Java.). Whether Google’s software
is “interoperable” in some sense with any aspect of the
Java platform (although as Google concedes, certainly not
with the JVM) has no bearing on the threshold question of
whether Oracle’s software is copyrightable. It is the
interoperability and other needs of Oracle—not those of
Google—that apply in the copyrightability context, and
there is no evidence that when Oracle created the Java
API packages at issue it did so to meet compatibility
requirements of other pre-existing programs.
     Google maintains on appeal that its use of the “Java
class and method names and declarations was ‘the only
and essential means’ of achieving a degree of interopera-
bility with existing programs written in the [Java lan-
guage].” Appellee Br. 49. Indeed, given the record
evidence that Google designed Android so that it would
not be compatible with the Java platform, or the JVM
specifically, we find Google’s interoperability argument
confusing. While Google repeatedly cites to the district
ORACLE AMERICA, INC.   v. GOOGLE INC.                    51



court’s finding that Google had to copy the packages so
that an app written in Java could run on Android, it cites
to no evidence in the record that any such app exists and
points to no Java apps that either pre-dated or post-dated
Android that could run on the Android platform. 15 The
compatibility Google sought to foster was not with Ora-
cle’s Java platform or with the JVM central to that plat-
form. Instead, Google wanted to capitalize on the fact
that software developers were already trained and experi-
enced in using the Java API packages at issue. The
district court agreed, finding that, as to the 37 Java API
packages, “Google believed Java application programmers
would want to find the same 37 sets of functionalities in
the new Android system callable by the same names as
used in Java.” Copyrightability Decision, 872 F. Supp. 2d
at 978. Google’s interest was in accelerating its develop-
ment process by “leverag[ing] Java for its existing base of
developers.” J.A. 2033, 2092. Although this competitive
objective might be relevant to the fair use inquiry, we
conclude that it is irrelevant to the copyrightability of
Oracle’s declaring code and organization of the API pack-
ages.
    Finally, to the extent Google suggests that it was enti-
tled to copy the Java API packages because they had



   15   During oral argument, Google’s counsel stated
that “a program written in the Java language can run on
Android if it’s only using packages within the 37. So if
I’m a developer and I have written a program, I’ve written
it in Java, I can stick an Android header on it and it will
run in Android because it is using the identical names of
the classes, methods, and packages.” Oral Argument at
31:31. Counsel did not identify any programs that use
only the 37 API packages at issue, however, and did not
attest that any such program would be useful. Nor did
Google cite to any record evidence to support this claim.
52                      ORACLE AMERICA, INC.   v. GOOGLE INC.



become the effective industry standard, we are unper-
suaded. Google cites no authority for its suggestion that
copyrighted works lose protection when they become
popular, and we have found none. 16 In fact, the Ninth
Circuit has rejected the argument that a work that later
becomes the industry standard is uncopyrightable. See
Practice Mgmt. Info. Corp. v. Am. Med. Ass’n, 121 F.3d
516, 520 n.8 (9th Cir. 1997) (noting that the district court
found plaintiff’s medical coding system entitled to copy-
right protection, and that, although the system had
become the industry standard, plaintiff’s copyright did not
prevent competitors “from developing comparative or
better coding systems and lobbying the federal govern-
ment and private actors to adopt them. It simply pre-
vents wholesale copying of an existing system.”). Google
was free to develop its own API packages and to “lobby”
programmers to adopt them. Instead, it chose to copy


     16 Google argues that, in the same way a formerly
distinctive trademark can become generic over time, a
program element can lose copyright protection when it
becomes an industry standard. But “it is to be expected
that phrases and other fragments of expression in a
highly successful copyrighted work will become part of the
language. That does not mean they lose all protection in
the manner of a trade name that has become generic.”
Warner Bros., Inc. v. Am. Broadcasting Cos., 720 F.2d
231, 242 (2d Cir. 1983) (“No matter how well known a
copyrighted phrase becomes, its author is entitled to
guard against its appropriation to promote the sale of
commercial products.”). Notably, even when a patented
method or system becomes an acknowledged industry
standard with acquiescence of the patent owner, any
permissible use generally requires payment of a reasona-
ble royalty, which Google refused to do here. See general-
ly In re Innovatio IP Ventures, LLC, No. 11-C-9308, 2013
U.S. Dist. LEXIS 144061 (N.D. Ill. Sept. 27, 2013).
ORACLE AMERICA, INC.   v. GOOGLE INC.                    53



Oracle’s declaring code and the SSO to capitalize on the
preexisting community of programmers who were accus-
tomed to using the Java API packages. That desire has
nothing to do with copyrightability. For these reasons, we
find that Google’s industry standard argument has no
bearing on the copyrightability of Oracle’s work.
                         B. Fair Use
    As noted, the jury hung on Google’s fair use defense,
and the district court declined to order a new trial given
its conclusion that the code and structure Google copied
were not entitled to copyright protection. On appeal,
Oracle argues that: (1) a remand to decide fair use “is
pointless”; and (2) this court should find, as a matter of
law, that “Google’s commercial use of Oracle’s work in a
market where Oracle already competed was not fair use.”
Appellant Br. 68.
    Fair use is an affirmative defense to copyright in-
fringement and is codified in Section 107 of the Copyright
Act. Golan, 132 S. Ct. at 890 (“[T]he fair use defense, is
codified at 17 U.S.C. § 107.”). Section 107 permits use of
copyrighted work if it is “for purposes such as criticism,
comment, news reporting, teaching (including multiple
copies for classroom use), scholarship, or research.” 17
U.S.C. § 107. The fair use doctrine has been referred to
as “‘the most troublesome in the whole law of copyright.’”
Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1170 (9th
Cir. 2012) (quoting Dellar v. Samuel Goldwyn, Inc., 104
F.2d 661, 662 (2d Cir. 1939) (per curiam)). It both per-
mits and requires “courts to avoid rigid application of the
copyright statute when, on occasion, it would stifle the
very creativity which that law is designed to foster.”
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577
(1994) (quoting Stewart v. Abend, 495 U.S. 207, 236
(1990)).
   “Section 107 requires a case-by-case determination
whether a particular use is fair, and the statute notes four
54                      ORACLE AMERICA, INC.   v. GOOGLE INC.



nonexclusive factors to be considered.” Harper & Row
Publishers, Inc. v. Nation Enters., 471 U.S. 539, 549
(1985). Those factors are: (1) “the purpose and character
of the use, including whether such use is of a commercial
nature or is for nonprofit educational purposes;” (2) “the
nature of the copyrighted work;” (3) “the amount and
substantiality of the portion used in relation to the copy-
righted work as a whole;” and (4) “the effect of the use
upon the potential market for or value of the copyrighted
work.” 17 U.S.C. § 107. The Supreme Court has ex-
plained that all of the statutory factors “are to be ex-
plored, and the results weighed together, in light of the
purpose[] of copyright,” which is “[t]o promote the Pro-
gress of Science and useful Arts.” Campbell, 510 U.S. at
578, 575 (internal citations omitted).
    “Fair use is a mixed question of law and fact.” Harper
& Row, 471 U.S. at 560. Thus, while subsidiary and
controverted findings of fact must be reviewed for clear
error under Rule 52 of the Federal Rules of Civil Proce-
dure, the Ninth Circuit reviews the ultimate application
of those facts de novo. See Seltzer v. Green Day, Inc., 725
F.3d 1170, 1175 (9th Cir. 2013) (citing SOFA Entm’t, Inc.
v. Dodger Prods., Inc., 709 F.3d 1273, 1277 (9th Cir.
2013)). Where there are no material facts at issue and
“the parties dispute only the ultimate conclusions to be
drawn from those facts, we may draw those conclusions
without usurping the function of the jury.” Id. (citing
Fisher v. Dees, 794 F.2d 432, 436 (9th Cir. 1986)). Indeed,
the Supreme Court has specifically recognized that,
“[w]here the district court has found facts sufficient to
evaluate each of the statutory factors, an appellate court
‘need not remand for further factfinding . . . [but] may
conclude as a matter of law that [the challenged use]
[does] not qualify as a fair use of the copyrighted work.’”
Harper & Row, 471 U.S. at 560 (citation omitted).
   Of course, the corollary to this point is true as well—
where there are material facts in dispute and those facts
ORACLE AMERICA, INC.   v. GOOGLE INC.                      55



have not yet been resolved by the trier of fact, appellate
courts may not make findings of fact in the first instance.
See Shawmut Bank, N.A. v. Kress Assocs., 33 F.3d 1477,
1504 (9th Cir. 1994) (“[W]e must avoid finding facts in the
first instance.”); see also Golden Bridge Tech., Inc. v.
Nokia, Inc., 527 F.3d 1318, 1323 (Fed. Cir. 2008) (“Appel-
late courts review district court judgments; we do not find
facts.”). Here, it is undisputed that neither the jury nor
the district court made findings of fact to which we can
refer in assessing the question of whether Google’s use of
the API packages at issue was a “fair use” within the
meaning of Section 107. Oracle urges resolution of the
fair use question by arguing that the trial court should
have decided the question as a matter of law based on the
undisputed facts developed at trial, and that we can do so
as well. Google, on the other hand, argues that many
critical facts regarding fair use are in dispute. It asserts
that the fact that the jury could not reach a resolution on
the fair use defense indicates that at least some presuma-
bly reasonable jurors found its use to be fair. And, Google
asserts that, even if it is true that the district court erred
in discussing concepts of “interoperability” when consider-
ing copyrightability, those concepts are still relevant to its
fair use defense. We turn first to a more detailed exami-
nation of fair use.
    The first factor in the fair use inquiry involves “the
purpose and character of the use, including whether such
use is of a commercial nature or is for nonprofit educa-
tional purposes.” 17 U.S.C. § 107(1). This factor involves
two sub-issues: (1) “whether and to what extent the new
work is transformative,” Campbell, 510 U.S. at 579 (cita-
tion and internal quotation marks omitted); and
(2) whether the use serves a commercial purpose.
     A use is “transformative” if it “adds something new,
with a further purpose or different character, altering the
first with new expression, meaning or message.” Id. The
critical question is “whether the new work merely super-
56                       ORACLE AMERICA, INC.   v. GOOGLE INC.



sede[s] the objects of the original creation . . . or instead
adds something new.” Id. (citations and internal quota-
tion marks omitted). This inquiry “may be guided by the
examples given in the preamble to § 107, looking to
whether the use is for criticism, or comment, or news
reporting, and the like.” Id. at 578-79. “The Supreme
Court has recognized that parodic works, like other works
that comment and criticize, are by their nature often
sufficiently transformative to fit clearly under the fair use
exception.” Mattel Inc. v. Walking Mountain Prods., 353
F.3d 792, 800 (9th Cir. 2003) (citing Campbell, 510 U.S. at
579).
     Courts have described new works as “transformative”
when “the works use copy-righted material for purposes
distinct from the purpose of the original material.” Elvis
Presley Enters., Inc. v. Passport Video, 349 F.3d 622, 629
(9th Cir. 2003) (“Here, Passport’s use of many of the
television clips is transformative because they are cited as
historical reference points in the life of a remarkable
entertainer.”), overruled on other grounds by Flexible
Lifeline Sys., Inc. v. Precision Lift, Inc., 654 F.3d 989, 995
(9th Cir. 2011) (per curiam); see also Bouchat v. Baltimore
Ravens Ltd. P’ship, 619 F.3d 301, 309-10 (4th Cir. 2010)
(quoting A.V. ex rel. Vanderhyge v. iParadigms, LLC, 562
F.3d 630, 638 (4th Cir. 2009) (“[A] transformative use is
one that ‘employ[s] the quoted matter in a different man-
ner or for a different purpose from the original.’”)). “A use
is considered transformative only where a defendant
changes a plaintiff’s copyrighted work or uses the plain-
tiff’s copyrighted work in a different context such that the
plaintiff’s work is transformed into a new creation.”
Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165
(9th Cir. 2007) (quoting Wall Data Inc. v. L.A. County
Sheriff’s Dep’t, 447 F.3d 769, 778 (9th Cir. 2006), and
finding that Google’s use of thumbnail images in its
search engine was “highly transformative”).
ORACLE AMERICA, INC.   v. GOOGLE INC.                    57



    A work is not transformative where the user “makes
no alteration to the expressive content or message of the
original work.” Seltzer, 725 F.3d at 1177; see also Wall
Data, 447 F.3d at 778 (“The Sheriff’s Department created
exact copies of RUMBA’s software. It then put those
copies to the identical purpose as the original software.
Such a use cannot be considered transformative.”); Monge,
688 F.3d at 1176 (finding that a magazine’s publication of
photographs of a secret celebrity wedding “sprinkled with
written commentary” was “at best minimally transforma-
tive” where the magazine “did not transform the photos
into a new work . . . or incorporate the photos as part of a
broader work”); Elvis Presley Enters., 349 F.3d at 629
(finding that use of copyrighted clips of Elvis’s television
appearances was not transformative where “some of the
clips [we]re played without much interruption, if any . . .
[and] instead serve[d] the same intrinsic entertainment
value that is protected by Plaintiffs’ copyrights.”). Where
the use “is for the same intrinsic purpose as [the copyright
holder’s] . . . such use seriously weakens a claimed fair
use.” Worldwide Church of God v. Phila. Church of God,
Inc., 227 F.3d 1110, 1117 (9th Cir. 2000) (quoting Weiss-
mann v. Freeman, 868 F.2d 1313, 1324 (2d Cir. 1989)).
     Analysis of the first factor also requires inquiry into
the commercial nature of the use. Use of the copyrighted
work that is commercial “tends to weigh against a finding
of fair use.” Harper & Row, 471 U.S. at 562 (“The crux of
the profit/nonprofit distinction is not whether the sole
motive of the use is monetary gain but whether the user
stands to profit from exploitation of the copyrighted
material without paying the customary price.”). “[T]he
more transformative the new work, the less will be the
significance of other factors, like commercialism, that may
weigh against a finding of fair use.” Campbell, 510 U.S.
at 579.
   The second factor—the nature of the copyrighted
work—“calls for recognition that some works are closer to
58                      ORACLE AMERICA, INC.   v. GOOGLE INC.



the core of intended copyright protection than others, with
the consequence that fair use is more difficult to establish
when the former works are copied.” Id. at 586. This
factor “turns on whether the work is informational or
creative.” Worldwide Church of God, 227 F.3d at 1118;
see also Harper & Row, 471 U.S. at 563 (“The law general-
ly recognizes a greater need to disseminate factual works
than works of fiction or fantasy.”). Creative expression
“falls within the core of the copyright’s protective purpos-
es.” Campbell, 510 U.S. at 586. Because computer pro-
grams have both functional and expressive components,
however, where the functional components are themselves
unprotected (because, e.g., they are dictated by considera-
tions of efficiency or other external factors), those ele-
ments should be afforded “a lower degree of protection
than more traditional literary works.” Sega, 977 F.2d at
1526. Thus, where the nature of the work is such that
purely functional elements exist in the work and it is
necessary to copy the expressive elements in order to
perform those functions, consideration of this second
factor arguably supports a finding that the use is fair.
    The third factor asks the court to examine “the
amount and substantiality of the portion used in relation
to the copyrighted work as a whole.” 17 U.S.C. § 107(3).
Analysis of this factor is viewed in the context of the
copyrighted work, not the infringing work. Indeed, the
statutory language makes clear that “a taking may not be
excused merely because it is insubstantial with respect to
the infringing work.” Harper & Row, 471 U.S. at 565.
“As Judge Learned Hand cogently remarked, ‘no plagia-
rist can excuse the wrong by showing how much of his
work he did not pirate.’” Id. (quoting Sheldon v. Metro-
Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936)). In
contrast, “the fact that a substantial portion of the in-
fringing work was copied verbatim is evidence of the
qualitative value of the copied material, both to the origi-
nator and to the plagiarist who seeks to profit from mar-
ORACLE AMERICA, INC.   v. GOOGLE INC.                      59



keting someone else’s copyrighted expression.” Id. The
Ninth Circuit has recognized that, while “wholesale
copying does not preclude fair use per se, copying an
entire work militates against a finding of fair use.”
Worldwide Church of God, 227 F.3d at 1118 (internal
citation and quotation omitted). “If the secondary user
only copies as much as is necessary for his or her intended
use, then this factor will not weigh against him or her.”
Kelly v. Arriba Soft Corp., 336 F.3d 811, 820-21 (9th Cir.
2003). Under this factor, “attention turns to the persua-
siveness of a parodist’s justification for the particular
copying done, and the enquiry will harken back to the
first of the statutory factors . . . [because] the extent of
permissible copying varies with the purpose and character
of the use.” Campbell, 510 U.S. at 586-87.
     The fourth and final factor focuses on “the effect of the
use upon the potential market for or value of the copy-
righted work.” Harper & Row, 471 U.S. at 566. This
factor reflects the idea that fair use “is limited to copying
by others which does not materially impair the marketa-
bility of the work which is copied.” Id. at 566-67. The
Supreme Court has said that this factor is “undoubtedly
the single most important element of fair use.” Id. at 566.
It requires that courts “consider not only the extent of
market harm caused by the particular actions of the
alleged infringer, but also whether unrestricted and
widespread conduct of the sort engaged in by the defend-
ant . . . would result in a substantially adverse impact on
the potential market for the original.” Campbell, 510 U.S.
at 590 (citation and quotation marks omitted). “Market
harm is a matter of degree, and the importance of this
factor will vary, not only with the amount of harm, but
also with the relative strength of the showing on the other
factors.” Id. at 590 n.21.
     Oracle asserts that all of these factors support its po-
sition that Google’s use was not “fair use”—Google know-
ingly and illicitly copied a creative work to further its own
60                      ORACLE AMERICA, INC.   v. GOOGLE INC.



commercial purposes, did so verbatim, and did so to the
detriment of Oracle’s market position. These undisputa-
ble facts, according to Oracle, should end the fair use
inquiry. Oracle’s position is not without force. On many
of these points, Google does not debate Oracle’s character-
ization of its conduct, nor could it on the record evidence.
     Google contends, however, that, although it admitted-
ly copied portions of the API packages and did so for what
were purely commercial purposes, a reasonable juror still
could find that: (1) Google’s use was transformative;
(2) the Java API packages are entitled only to weak
protection; (3) Google’s use was necessary to work within
a language that had become an industry standard; and
(4) the market impact on Oracle was not substantial.
     On balance, we find that due respect for the limit of
our appellate function requires that we remand the fair
use question for a new trial. First, although it is undis-
puted that Google’s use of the API packages is commer-
cial, the parties disagree on whether its use is
“transformative.” Google argues that it is, because it
wrote its own implementing code, created its own virtual
machine, and incorporated the packages into a
smartphone platform. For its part, Oracle maintains that
Google’s use is not transformative because: (1) “[t]he same
code in Android . . . enables programmers to invoke the
same pre-programmed functions in exactly the same
way;” and (2) Google’s use of the declaring code and
packages does not serve a different function from Java.
Appellant Reply Br. 47. While Google overstates what
activities can be deemed transformative under a correct
application of the law, we cannot say that there are no
material facts in dispute on the question of whether
Google’s use is “transformative,” even under a correct
reading of the law. As such, we are unable to resolve this
issue on appeal.
ORACLE AMERICA, INC.   v. GOOGLE INC.                    61



     Next, while we have concluded that it was error for
the trial court to focus unduly on the functional aspects of
the packages, and on Google’s competitive desire to
achieve commercial “interoperability” when deciding
whether Oracle’s API packages are entitled to copyright
protection, we expressly noted that these factors may be
relevant to a fair use analysis. While the trial court erred
in concluding that these factors were sufficient to over-
come Oracle’s threshold claim of copyrightability, reason-
able jurors might find that they are relevant to Google’s
fair use defense under the second and third factors of the
inquiry. See Sega, 977 F.2d at 1524-25 (discussing the
Second Circuit’s approach to “break[ing] down a computer
program into its component subroutines and sub-
subroutines and then identif[ying] the idea or core func-
tional element of each” in the context of the second fair
use factor: the nature of the copyrighted work). We find
this particularly true with respect to those core packages
which it seems may be necessary for anyone to copy if
they are to write programs in the Java language. And, it
may be that others of the packages were similarly essen-
tial components of any Java language-based program. So
far, that type of filtration analysis has not occurred.
    Finally, as to market impact, the district court found
that “Sun and Oracle never successfully developed its own
smartphone platform using Java technology.” Copyright-
ability Decision, 872 F. Supp. 2d at 978. But Oracle
argues that, when Google copied the API packages, Oracle
was licensing in the mobile and smartphone markets, and
that Android’s release substantially harmed those com-
mercial opportunities as well as the potential market for a
Java smartphone device. Because there are material
facts in dispute on this factor as well, remand is neces-
sary.
   Ultimately, we conclude that this is not a case in
which the record contains sufficient factual findings upon
which we could base a de novo assessment of Google’s
62                       ORACLE AMERICA, INC.   v. GOOGLE INC.



affirmative defense of fair use. Accordingly, we remand
this question to the district court for further proceedings.
On remand, the district court should revisit and revise its
jury instructions on fair use consistent with this opinion
so as to provide the jury with a clear and appropriate
picture of the fair use defense. 17
               II. GOOGLE’S CROSS-APPEAL
    Google cross-appeals from the portion of the district
court’s final judgment entered in favor of Oracle on its
claim for copyright infringement as to the nine lines of


     17  Google argues that, if we allow it to retry its fair
use defense on remand, it is entitled to a retrial on in-
fringement as well. We disagree. The question of wheth-
er Google’s copying constituted infringement of a
copyrighted work is “distinct and separable” from the
question of whether Google can establish a fair use de-
fense to its copying. See Gasoline Prods. Co. v. Champlin
Refining Co., 283 U.S. 494, 500 (1931) (“Where the prac-
tice permits a partial new trial, it may not properly be
resorted to unless it clearly appears that the issue to be
retried is so distinct and separable from the others that a
trial of it alone may be had without injustice.”). Indeed,
we have emphasized more than once in this opinion the
extent to which the questions are separable, and the
confusion and error caused when they are blurred. The
issues are not “interwoven” and it would not create “con-
fusion and uncertainty” to reinstate the infringement
verdict and submit fair use to a different jury. Id. We
note, moreover, that, because Google only mentions this
point in passing, with no development of an argument in
support of it, under our case law, it has not been properly
raised. See SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006) (when a party pro-
vides no developed argument on a point, we treat that
argument as waived) (collecting cases).
ORACLE AMERICA, INC.   v. GOOGLE INC.                     63



rangeCheck code and the eight decompiled files. Final
Judgment, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-
3561 (N.D. Cal. June 20, 2012), ECF No. 1211. Specifical-
ly, Google appeals from the district court’s decisions:
(1) granting Oracle’s motion for JMOL of infringement as
to the eight decompiled Java files that Google copied into
Android; and (2) denying Google’s motion for JMOL with
respect to rangeCheck.
    When reviewing a district court’s grant or denial of a
motion for JMOL, we apply the procedural law of the
relevant regional circuit, here the Ninth Circuit. Trading
Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1357 (Fed.
Cir. 2010). The Ninth Circuit reviews a district court’s
JMOL decision de novo, applying the same standard as
the district court. Mangum v. Action Collection Serv.,
Inc., 575 F.3d 935, 938 (9th Cir. 2009). To grant judg-
ment as a matter of law, the court must find that “the
evidence presented at trial permits only one reasonable
conclusion” and that “no reasonable juror could find in the
non-moving party’s favor.” Id. at 938-39 (citation and
internal quotation marks omitted).
    Oracle explains that the eight decompiled files at is-
sue “contain security functions governing access to net-
work files” while rangeCheck “facilitates an important
sorting function, frequently called upon during the opera-
tion of Java and Android.” Oracle Response to Cross-
Appeal 60-61. At trial, Google conceded that it copied the
eight decompiled Java code files and the nine lines of code
referred to as rangeCheck into Android. Its only defense
was that the copying was de minimis. Accordingly, the
district court instructed the jury that, “[w]ith respect to
the infringement issues concerning the rangeCheck and
other similar files, Google agrees that the accused lines of
code and comments came from the copyrighted materials
but contends that the amounts involved were so negligible
as to be de minimis and thus should be excluded.” Final
Charge to the Jury (Phase One), Oracle Am., Inc. v.
64                      ORACLE AMERICA, INC.   v. GOOGLE INC.



Google, Inc., No. 3:10-cv-3561 (N.D. Cal. Apr. 30, 2012),
ECF No. 1018, at 14.
     Although the jury found that Google infringed Ora-
cle’s copyright in the nine lines of code comprising
rangeCheck, it returned a noninfringement verdict as to
eight decompiled security files. But because the trial
testimony was that Google’s use of the decompiled files
was significant—and there was no testimony to the con-
trary—the district court concluded that “[n]o reasonable
jury could find that this copying was de minimis.” Order
Granting JMOL on Decompiled Files, 2012 U.S. Dist.
LEXIS 66417, at *6. As such, the court granted Oracle’s
motion for JMOL of infringement as to the decompiled
security files.
     On appeal, Google maintains that its copying of
rangeCheck and the decompiled security files was de
minimis and thus did not infringe any of Oracle’s copy-
rights. According to Google, the district court should
have denied Oracle’s motion for JMOL “because substan-
tial evidence supported the jury’s verdict that Google’s use
of eight decompiled test files was de minimis.” Cross-
Appellant Br. 76. Google further argues that the court
should have granted its motion for JMOL as to
rangeCheck because the “trial evidence revealed that the
nine lines of rangeCheck code were both quantitatively
and qualitatively insignificant in relation to the [Java]
platform.” Id. at 78.
    In response, Oracle argues that the Ninth Circuit does
not recognize a de minimis defense to copyright infringe-
ment and that, even if it does, we should affirm the judg-
ments of infringement on grounds that Google’s copying
was significant. Because we agree with Oracle on its
second point, we need not address the first, except to note
that there is some conflicting Ninth Circuit precedent on
the question of whether there is a free-standing de mini-
mis defense to copyright infringement or whether the
ORACLE AMERICA, INC.   v. GOOGLE INC.                    65



substantiality of the alleged copying is best addressed as
part of a fair use defense. Compare Norse v. Henry Holt &
Co., 991 F.2d 563, 566 (9th Cir. 1993) (indicating that
“even a small taking may sometimes be actionable” and
the “question of whether a copying is substantial enough
to be actionable may be best resolved through the fair use
doctrine”), with Newton v. Diamond, 388 F.3d 1189, 1192-
93 (9th Cir. 2003) (“For an unauthorized use of a copy-
righted work to be actionable, the use must be significant
enough to constitute infringement. This means that even
where the fact of copying is conceded, no legal conse-
quences will follow from that fact unless the copying is
substantial.”) (internal citation omitted)). 18
    Even assuming that the Ninth Circuit recognizes a
stand-alone de minimis defense to copyright infringement,
however, we conclude that: (1) the jury reasonably found
that Google’s copying of the rangeCheck files was more
than de minimis; and (2) the district court correctly
concluded that the defense failed as a matter of law with
respect to the decompiled security files.
    First, the unrebutted testimony at trial revealed that
rangeCheck and the decompiled security files were signif-
icant to both Oracle and Google. Oracle’s expert, Dr. John
Mitchell, testified that Android devices call the


   18   At least one recent district court decision has rec-
ognized uncertainty in Ninth Circuit law on this point.
See Brocade Commc’ns Sys. v. A10 Networks, Inc., No. 10-
cv-3428, 2013 U.S. Dist. LEXIS 8113, at *33 (N.D. Cal.
Jan. 10, 2013) (“The Ninth Circuit has been unclear about
whether the de minimis use doctrine serves as an affirma-
tive defense under the Copyright Act’s fair use exceptions
or whether the doctrine merely highlights plaintiffs’
obligation to show that ‘the use must be significant
enough to constitute infringement.’”) (citing Newton, 388
F.2d at 1193; Norse, 991 F.2d at 566).
66                       ORACLE AMERICA, INC.   v. GOOGLE INC.



rangeCheck function 2,600 times just in powering on the
device. Although Google argues that the eight decompiled
files were insignificant because they were used only to
test the Android platform, Dr. Mitchell testified that
“using the copied files even as test files would have been
significant use” and the district court specifically found
that “[t]here was no testimony to the contrary.” Order
Granting JMOL on Decompiled Files, 2012 U.S. Dist.
LEXIS 66417, at *6. Given this testimony, a reasonable
jury could not have found Google’s copying de minimis.
    Google emphasizes that the nine lines of rangeCheck
code “represented an infinitesimal percentage of the 2.8
million lines of code in the 166 Java packages—let alone
the millions of lines of code in the entire [Java] platform.”
Google Cross-Appeal Br. 78-79. To the extent Google is
arguing that a certain minimum number of lines of code
must be copied before a court can find infringement, that
argument is without merit. See Baxter v. MCA, Inc., 812
F.2d 421, 425 (9th Cir. 1987) (“[N]o bright line rule exists
as to what quantum of similarity is permitted.”). And,
given the trial testimony that both rangeCheck and the
decompiled security files are qualitatively significant and
Google copied them in their entirety, Google cannot show
that the district court erred in denying its motion for
JMOL.
    We have considered Google’s remaining arguments
and find them unpersuasive. Accordingly, we affirm both
of the JMOL decisions at issue in Google’s cross-appeal.
         III. GOOGLE’S POLICY-BASED ARGUMENTS
    Many of Google’s arguments, and those of some amici,
appear premised on the belief that copyright is not the
correct legal ground upon which to protect intellectual
property rights to software programs; they opine that
patent protection for such programs, with its insistence on
non-obviousness, and shorter terms of protection, might
be more applicable, and sufficient. Indeed, the district
ORACLE AMERICA, INC.   v. GOOGLE INC.                    67



court’s method of operation analysis seemed to say as
much. Copyrightability Decision, 872 F. Supp. 2d at 984
(stating that this case raises the question of “whether the
copyright holder is more appropriately asserting an
exclusive right to a functional system, process, or method
of operation that belongs in the realm of patents, not
copyrights”). Google argues that “[a]fter Sega, developers
could no longer hope to protect [software] interfaces by
copyright . . . Sega signaled that the only reliable means
for protecting the functional requirements for achieving
interoperability was by patenting them.” Appellee Br. 40
(quoting Pamela Samuelson, Are Patents on Interfaces
Impeding Interoperability? 93 Minn. L. Rev. 1943, 1959
(2009)). And, Google relies heavily on articles written by
Professor Pamela Samuelson, who has argued that “it
would be best for a commission of computer program
experts to draft a new form of intellectual property law for
machine-readable programs.”           Pamela Samuelson,
CONTU Revisited: The Case Against Copyright Protection
for Computer Programs in Machine-Readable Form, 1984
Duke L.J. 663, 764 (1984). Professor Samuelson has more
recently argued that “Altai and Sega contributed to the
eventual shift away from claims of copyright in program
interfaces and toward reliance on patent protection.
Patent protection also became more plausible and attrac-
tive as the courts became more receptive to software
patents.” Samuelson, 93 Minn. L. Rev. at 1959.
    Although Google, and the authority on which it relies,
seem to suggest that software is or should be entitled to
protection only under patent law—not copyright law—
several commentators have recently argued the exact
opposite.       See     Technology   Quarterly, Stalking
Trolls, ECONOMIST, Mar. 8, 2014, http://www.economist.
com/news/technology-quarterly/21598321-intellectual-
property-after-being-blamed-stymying-innovation-
america-vague (“[M]any innovators have argued that the
electronics and software industries would flourish if
68                       ORACLE AMERICA, INC.   v. GOOGLE INC.



companies trying to bring new technology (software
innovations included) to market did not have to worry
about being sued for infringing thousands of absurd
patents at every turn. A perfectly adequate means of
protecting and rewarding software developers for their
ingenuity has existed for over 300 years. It is called
copyright.”); Timothy B. Lee, Will the Supreme Court save
us from software patents?, WASH. POST, Feb. 26, 2014, 1:13
PM, http://www.washingtonpost.com/blogs/the-switch/wp/
2014/02/26/will-the-supreme-court-save-us-from-software-
patents/ (“If you write a book or a song, you can get copy-
right protection for it. If you invent a new pill or a better
mousetrap, you can get a patent on it. But for the last
two decades, software has had the distinction of being
potentially eligible for both copyright and patent protec-
tion. Critics say that’s a mistake. They argue that the
complex and expensive patent system is a terrible fit for
the fast-moving software industry. And they argue that
patent protection is unnecessary because software innova-
tors already have copyright protection available.”).
     Importantly for our purposes, the Supreme Court has
made clear that “[n]either the Copyright Statute nor any
other says that because a thing is patentable it may not
be copyrighted.” Mazer v. Stein, 347 U.S. 201, 217 (1954).
Indeed, the thrust of the CONTU Report is that copyright
is “the most suitable mode of legal protection for computer
software.” Peter S. Menell, An Analysis of the Scope of
Copyright Protection for Application Programs, 41 Stan.
L. Rev. 1045, 1072 (1989); see also CONTU Report at 1
(recommending that copyright law be amended “to make
it explicit that computer programs, to the extent that they
embody an author’s original creation, are proper subject
matter of copyright”). Until either the Supreme Court or
Congress tells us otherwise, we are bound to respect the
Ninth Circuit’s decision to afford software programs
protection under the copyright laws. We thus decline any
ORACLE AMERICA, INC.   v. GOOGLE INC.                    69



invitation to declare that protection of software programs
should be the domain of patent law, and only patent law.
                         CONCLUSION
     For the foregoing reasons, we conclude that the de-
claring code and the structure, sequence, and organiza-
tion of the 37 Java API packages at issue are entitled to
copyright protection. We therefore reverse the district
court’s copyrightability determination with instructions to
reinstate the jury’s infringement verdict. Because the
jury hung on fair use, we remand Google’s fair use defense
for further proceedings consistent with this decision.
    With respect to Google’s cross-appeal, we affirm the
district court’s decisions: (1) granting Oracle’s motion for
JMOL as to the eight decompiled Java files that Google
copied into Android; and (2) denying Google’s motion for
JMOL with respect to the rangeCheck function. Accord-
ingly, we affirm-in-part, reverse-in-part, and remand for
further proceedings.
    AFFIRMED-IN-PART, REVERSED-IN-PART,
              AND REMANDED
