Trend for Protecting Software is Via Patents

Oracle v. Google: District Court Holds Oracle Code Not Copyrightable

On 31 May 2012, Judge William Alsup of the U.S. District Court for the Northern District of California granted Google’s motion to dismiss Oracle’s copyright infringement claim in Oracle America, Inc. v. Google Inc.

The court found that a portion of Oracle’s Java® application programming interface (API) allegedly used by Google was not protectable under the Copyright Act because it constituted excluded-subject matter under the Act. The court also found that the specific code used by Google was protected by the copyright-merger doctrine, which bars protection of expressions that offer the only—or one of only a few—ways of expressing an idea, instruction, system or method.

In finding that Google did not violate the Oracle’s copyrights, the court recognized the danger of conferring a monopoly by copyright over what Congress expressly warned should be conferred only by patent.

A big blow to Oracle, the decision is a warning to companies that own or develop their own software: that the Copyright Act and the copyright merger doctrine bar copyright protection for essentially functional or interoperability features, regardless of how original and creative the code may be. Consequently, companies that desire to protect their software should consider seeking patent protection for these features.

If you have any questions about this article or the business strategy of filing patents to protect your software company, please contact Robert Axenfeld.

Robert Axenfeld is a principal in Offit Kurman’s Philadelphia office.  He is a registered-patent attorney and inventor.  Axenfeld has a global practice assisting clients with intellectual-property (IP) matters and has over two decades of in-house and private-practice experience in obtaining, litigating, and licensing patents, trademarks, copyrights, and other IP.  If you would like more information about the new rules regarding business-method patents, a patent, or general intellectual property, please feel free to contact Robert at raxenfeld@offitkurman.com or by phone at (267) 338-1320.