API Copyright (Oracle v. Google) — Oracle’s Response to Google’s Petition for a Writ of Certiorari

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On December 8th, 2014, Oracle filed its brief in opposition to Google’s petition for a writ of certiorari with the Supreme Court of the United States in the case of copyright protection for certain Java APIs. Many who have been following the case found it curious that Google petitioned the Supreme Court of the United States to consider a different issue than those that were argued before the Court of Appeals of the Federal Circuit (“CAFC”). Undoubtedly, Oracle took notice and wrote in its brief:

Google poses the question whether the lines of code Oracle authored constitute a “method of operation” – and are therefore devoid of all copyright protection – under Section 102(b) of the Copyright Act…In any case, Google never argued to the court of appeals that the lines of code are a “system” or “method of operation” (p.2).

In my view, I think the Supreme Court of the United States should deny Google’s petition for a writ of certiorari. Oracle advanced a number of reasons, but perhaps chief among them is simply that the writ of certiorari is not the appropriate vehicle for deciding this issue because:

  1. The CAFC’s judgment is supported by independent rationale not challenged in Google’s Writ of Certiorari. Specifically, copyright subsists in (1) the original declaring code gave rise to copyright; and (2) the package’s creative structure and organization. Even if we accept Google’s lead argument that “methods of operations” cannot be copyrighted, such argument could not apply to (2).
  2. The question Google presented to the Supreme Court of United States (whether “copyright protection extends to…computer software, including a system or method of operation”) was never made into the CAFC.
  3. This appeal is interlocutory since the CAFC remanded for retrial on whether Google’s copying can be saved on grounds of fair use.

Even if the Supreme Court of the United States decides to grant Google’s petition for a writ of certiorari, they will have to contend with the fact that, as Oracle relying on Lexmark and Lotus asserts, “it is generally well-established that code is copyrightable as long as it is… sufficiently complex and creative to be original.” Without question, no experienced Java programmer will disagree that the Java APIs are a work of art that meets such criteria. Moreover, the Supreme Court will have to consider in its ruling the far-reaching implications for technological innovation. After all, why would anyone invest time and energy to develop a platform such as Java without the ability to exploit its intellectual property rights for profit?

The implications of this case to Canadian copyright jurisprudence is unclear. The Canadian Copyright Act is not drafted in the same way the American Copyright Act is and does not have the Section 102(a) and (b) dichotomy. Moreover, Canadian courts not affirmed the application of the merger doctrine. For more information about the merger doctrine in Canada, see: Apple Computer Inc. v. Mackintosh Computer Ltd. (1986), 10 CPR (3d) 1, para 27.; Deltirna Corp v. Triolet Systems Inc. (2002), 17 CPR (4th) 289 (Ont. CA), leave to appeal to the Supreme Court refused [2002].

“Indemnify”, “Save and Hold Harmless”, and “Defend”

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One commonly finds the following language in the indemnity provisions of a contract:

Acme shall indemnify, defend, and hold harmless Widgetco from…

But what do each of these terms mean? A very well respected authority on contract drafting Ken Adams has written numerous times on this topic and argues that all three terms mean the same thing and, in fact, one would replace the three terms with simply:

Acme agrees to indemnify Widgetco against both losses and liabiliites.

But no matter how I read the reformulated indemnity, it does not seem to imply that Widgetco never has to even dip his hand in his own pocket, a view that the court in Stewart Title Guarantee Co. holds when interpreting the term “save and hold harmless”.

In my view, the words “indemnify”, “save and hold harmless”, and “defend” are terms of art that mean the following (case law below):

  1. “Indemnify”. Means to make a person whole after the fact.
  2. “Save and Hold Harmless”.  Broader than “indemnify” and means the person saved and held harmless should never have to put his hand in his own pocket in respect of a claim.
  3. “Defend”. Arises at the earliest stages of litigation and exists regardless of whether the indemnitee is ultimately found liable.


The Canadian case, Stewart Title Guarantee Co v. Zeppieri in para. 17 states:

This language imposes two obligations on Stewart Title with respect to a member of the LSUC — to “indemnify” that member and to “save harmless” that member from claims arising under a title insurance policy. The contractual obligation to save harmless, in my view, is broader than that of indemnification. I accept the respondents’ submission that the obligation to “save harmless” means that a LSUC member should never have to put his hand in his pocket in respect of a claim covered by the terms of the 2005 Indemnity Agreement. Accordingly, the 2005 Indemnity Agreement requires Stewart Title to pay for the member’s ongoing costs of defending a claim that falls within the coverage of agreement. This interpretation not only is consistent with the plain meaning of the phrase “indemnify and save harmless”, it also is consistent with the case law, the business sense underpinning the 2005 Indemnity Agreement and the reasonable expectations of the parties

The American Case, Branch Banking & Trust Co v. Syntellect, Inc. states:

As a preliminary matter, both parties blur the distinction between the duty to defend and the duty to indemnify. In one count for breach of contract, the compliant alleges that Syntellect breached both its duty to defend and its duty to indemnify. Similarly, Syntellect’s motion to dismiss operates on the assumption that these two duties are one. However, the duty to defend and the duty to indemnify were two separated duties created by the contract…

The American Case, INA Ins. Co. v. Valley FOrge Ins. Co states:

The duty to defend, however, is not the same as the duty to indemnify. The duty to defend arises at the earliest stages of litigation and generally exists regardless of whether the insured is ultimately found liable. The duty to indemnify depends on whether the indemnitee engaged in actual, active wrongdoing. See Koch v. City of Seattle. The accrual of the obligation to provide a defense does not control the accrual of the obligation to indemnify.

Open Source Licenses Series: GPL version 2

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As a former programmer, I’ve always struggled to untangle the various Open Source Software licenses.  I’m hoping this series will explain, in simple terms, the basics behind such licenses. According to Black Duck Software, the GNU Public License version 2.0 is still the most popular open source software license on the internet and as such, we’ll begin with an introduction to the GPL version 2.0.

GNU Public License (GPL) version 2.0

Link to GPLv2.0 license: here

Background:  The first version of GPL was written by Richard Stallman to address two issues: (1) to ensure software is distributed in source code form; and (2) to ensure subsequent licenses are placed on software that further restricted an individual’s freedom to share and change it. The GPLv2.0 builds on this and adds what Stallman calls the “liberty or death” clause (section 7), explained further below.

Key Provisions in GPLv2.0:

  1. You can copy, modify, distribute GPLv2.0 software if you:
    • accompany it with the source-code;
    • provide a written offer (valid for 3 years) to provide the source code at cost; or
    • for non-commercial distribution, if you pass along the written offer you received if you obtained the object code or executable form.
  2. However, if you modify and subsequently copy and distribute such modifications if you adhere to the following requirements:
    • cause any work you distribute/publish that contains or is derived from the GPLv2.0 program to be licensed as a whole at no charge under GPLv2.0 (aka “copyleft”);
    • cause modified files to carry notices stating you changed the file and the date of any change; and
    • adhere to the requirements in point #1 above.Note: There are special notification requirements for command-line software found in Section 2 of the GPLv2.0
  3. You can only charge a fee for the act of transferring a copy  or offering a warranty protection, but not for the license itself.  In other words, you can sell copies of GPLv2.0 software (or your modifications to it), but those whom you have sold copies to can copy and give away the source code to your software.
  4. If for whatever reason, you are faced with conditions (e.g. court order, patent infringement, etc.) that restrict you from complying with all the requirements of the GPLv2.0, then you must not distribute the GPLv2.0 program (or the modifications).  So for example, if a patent license requires you to pay royalties for each distribution of a certain GPLv2.0 program then you are not permitted to distribute the  program at all.

Interesting Implications:

  1. As a software developer, you can take open source software and modify/copy it for internal use.  You are not obligated to release the source code externally. Only when you start releasing it to other companies or contractors working off-site do you need to adhere to the GPLv2.0 requirements.
  2. Creating modules that statically or dynamically link to GPL as a whole will subject the module to GPLv2.0.  (If your desire is to keep modules clear of GPLv2.0 requirements, consider using the Lesser GPL license that we will discuss at a later date)

APIs are Copyrightable For Now

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I’ve posted previously about my views on whether APIs ought to be copyrightable from an Engineer’s perspective.  The saga continues as Google, on Oct. 6th, petitioned with the US Supreme Court (SCOTUS) for a writ of certiorari to consider, not only whether Java APIs are copyrightable, but also the question of how far-reaching copyright protection extends in software.

To bring readers up to speed:

  • Application Programming Interfaces (APIs) are a set of specifications that define software component inputs, outputs, and operations, allowing software components to communicate. Google used the APIs of Java in their Android operating system, which Oracle asserts copyright to.
  • In August, 2014, Oracle sued Google for copyright infringement, both literal (i.e. copying verbatim of the original expression) and non-literal infringement (i.e. copying the structure, sequence of the Java API package).
  • On May 31, 2014, in a landmark decision,  Judge Alsup of the Northern District of California declared that APIs are not copyrightable. His decision could be summarized as follows: “The method specification [API] is the idea. The method implementation [API Implementation] is the expression. No one may monopolize the idea”.
  • On May 9, 2014, the Court of Appeals for the Federal Circuit (Circuit Judges: O’Malley, Plager, and Taranto)  reversed Judge Alsup’s decision, stating that copyrightability presents a “low bar” that requires only that a work be original and expressive in the sense that  “the author had multiple ways to express the underlying idea”  And since, “[t]he evidence showed that Oracle had unlimited options as to the selection and arrangement of the 7000 lines Google copied”, both the API declarations and the API package organization is copyrightable.  While a plain reading of 17 U.S.C. § 102(b) excludes “systems” and “methods of operations” from copyright protection, the CAFC clarified that such provisions of the Copyright Act, “does not extinguish the protection accorded a particular expression of an idea merely because the expression is embodied in a method of operation”, but rather, Section 102(b)  “serves to clarify the ‘idea/expression dichotomy’ in that copyright extends only to the idea, not the expression”.
  • On October 6, 2014, Google filed a petition for a Writ of Certiorari to have the Supreme Court of the United States consider the question.

Google posed the following question to the Supreme Court of the United States:

Whether copyright protection extends to all elements of an original work of computer software, including a system or method of operation, that an author could have written in more than one way.

The Supreme Court’s answer will have far reaching implications. For instance, systems and methods of operations are generally considered patentable inventions afforded 20 years of protection. If software systems and methods can be couched under copyright protection rather than under patent intention, such software systems and methods would be afforded protection far beyond 20 years (author’s life plus 70 years; or for works of corporate authorship, the earlier of (1) 120 years after creation or (2) 95 years after publication).  Obviously this would blur the line between patent and copyright law and cause much confusion.

Moreover, whether APIs are copyrightable has ramifications on innovation and there are a good policy arguments to be considered on both sides of the matter. On one hand, the ability to copyright APIs provides economic incentives for  authors of APIs to create and release better APIs. On the other hand, others argue that it is the inability to copyright APIs that reduce licensing costs and encourage broad adoption, thereby fostering innovation.

It will be interesting to follow this petition’s developments and to review Oracle’s response on November 7th.

Alberta PIPA: Coming Back to Life

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Last year, the Supreme Court of Canada struck down the Alberta Personal Information Protection Act (PIPA), because it violates a union’s freedom of expression by restricting a union’s ability to collect, use or disclose personal information during the course of a lawful strike. The Supreme Court emphasized the need for balance – specifically, a union’s constitutional right to freedom of expression must be balanced with the privacy interests protected by the privacy legislation.

On January 14th, the Privacy Commissioner of Alberta published a letter she sent to the Alberta Government.  In the letter, the Privacy Commissioner proposes that the legislative response that:

…most directly address the constitutional problem the Court stated would be to add authorizing provisions allowing the collection, use or disclosure of personal information by unions for expressive purposes without consent, in the context of picketing during a lawful strike.

In essence, the Alberta Privacy Commissioner is proposing a pragmatic and narrow carve-out exemption for unions. Given that Manitoba and British Columbia’s version of PIPA is substantially similar to Alberta’s PIPA and would similarly implicate a union’s freedom to expression in the context of picketing during a lawful strike, I  anticipate the Manitoba and British Columbia legislature will amend their respective privacy legislation in due time.

For the Privacy Commissioner’s letter to the Alberta Government, see: here

Warrant Required to Search Computer Content

Posted on by Sam Posted in Business, Law | Comments Off on Warrant Required to Search Computer Content

The Supreme Court on November 7th released their decision R. v Vu, stating that search warrants for specific premises must explicitly grant law enforcement officials the right to search content on computers. Computers, unlike cupboard or drawers on a premises, hold virtually a “universe of information” about individuals; information that even individuals themselves may not be aware of, thus giving rise to privacy protections under section 8 of the Charter.

Interestingly, the Court found the charter-infringing conduct not to be egregious and allowed the evidence to be admitted. Thus, strategically, businesses and individuals may wish to consider:

  1. Keeping electronic records on the computer rather than in paper form, thus requiring a judge to weigh whether a more explicit and invasive search-warrant is necessary; and
  2. Encrypting all harddrive data. R v. Vu is an example of how non-egregious charter violations have been overlooked by the court. Thus, even if law enforcement officials erroneously searched your computer, they would not be able to easily decipher the information contained therein.

Should APIs be copyrightable?

Posted on by Sam Posted in Law | Comments Off on Should APIs be copyrightable?

This summer, I had been following the Oracle v. Google case since last year where Oracle sued Google for infringing on its copyright of over 37 Java APIs (Application Programming Interfaces).  While an American case,  Justice Alsup ruled that the Java APIs were not copyrightable.  Justice Alsup stated:

So long as the specific code used to implement a method is different, anyone is free under the Copyright Act to write his or her own code to carry out exactly the same function or specification of any methods used in the Java API. It does not matter that the declaration or method header lines are identical. Under the rules of Java, they must be identical to declare a method specifying the same functionality — even when the implementation is different. When there is only one way to express an idea or function, then everyone is free to do so and no one can monopolize that expression. And, 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.

As a former engineer at BlackBerry, this decision sits uneasy with me — not from a policy perspective, but from an application of law perspective. I’ll explain why.  The essential aspects of copyright law in this case as follows: (1) Copyright exists at the moment of creation; (2) one can only copyright an expression of idea, but not the idea itself; (3) an exception (“Merger Doctrine”) may exist if there is only one way to express an idea, in such a scenario, the creative work is not copyrightable.

Since the Java APIs are undoubtedly an original creative endeavour and an expression of a programmer’s idea, Justice Alsup is relying on the merger doctrine, and the fact that copyright APIs are too short. But something isn’t right. Google did not have to rely on the Java APIs to express their idea — that is, to develop Java platform/applications. They could have used the C language APIs, the C++ Language APIs, Python Language APIs, or any number of other language APIs to do so.

Then, with respect to Justice Alsup’s remark that copyright protection never extends to short phrases, APIs are a collection of short phrases that work in harmony. There must be consistency of design in order for the APIs to be used intuitively by any software developer. Taken as a whole, the Java API as a collective is not short by any stretch.

Alas, this spring, the Electronic Frontier Foundation submitted an amicus brief to the courts, expressing concern that APIs could be copyrightable. Understandably this will impede innovation. I buy the policy argument; it has merit. But I still maintain the decision was an erroneous application of the law.  To this end, this won’t be the last post on the matter.

Toronto Computer Laws Group: Legal Issues Facing Startup Companies

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On September 26th, 2013, the Toronto Computer Laws Group hosted a session whether three experts (Chad Bayne from Osler, Hoskin & Harcourt; Matthew Leibowitz with Plazacorp Ventures, and Anthony De Fezekas from Miller Thompson LLP) discussed legal issues facing Start-Up companies. The panel shared the following:

1.  Intellectual Property (IP)

One of the primary and first issues entrepreneurs need to consider is ownership of IP.  All work done by employees should be clearly assigned to the company, even if the employees works for free. Not owning your IP could effectively render your startup unacquirable at a later date.

2. Relationship of Founders

Entrepreneurs need to be clear on who exactly is the founder, and who is not?  After that, how much of the company does each founder own? Do founders earn shares today, or over time? Do each founders get credit for kickstarting the venture over the last 2 years in their basement?  How are founders kicked out? These are all essential questions. Startups are close knit environments where when founders don’t get along, and one of the founders get kicked out, a legal dispute often ensues.

3.  Legal Budget – Focus on the Essentials

Legal costs for a startup doesn’t have to be expensive.  Often what a startup actually needs is different form what a startup thinks its needs. To get a company off the ground, a startup will need a lawyer to assist with:

  • Shareholder Agreements
  • Advice on Intellectual Property
  • Terms of Service and a Privacy Policy
  • Possibly Minute Books

With these legal documents in place, the startup should focus on your business until the  first customer comes knocking. Until then, it’s noses to the grindstone!




Ontario Law Bar Exams Advice

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The results of the 2013 Ontario Solicitor and Barrister licensing exams were released last week (I passed!).  A few anxious incoming 3Ls have asked about my experience. Reflecting back on the process, here’s my advice for next year’s candidates:

  1. Don’t believe the rumours that “everyone passes” the bar. This is simply not true.  The Ontario Bar is not a cakewalk, and I know a number of people who have failed.  Sometimes it’s because of bad luck, but often it’s because students underestimate how challenging the bar can be.
  2. Start early. This is especially true if you have not taken some of the substantive courses covered on the bar exam. The material is dense, and my average pace was approximately 15 pages per hour for new material.
  3. Understanding the material is crucial. We had heard stories from upper years that they “knew a guy” who just skimmed the materials the night before and passed. While I don’t know the full circumstances, I can tell you that it can be very confusing to apply the law when you don’t understand the material. It’s also extremely puzzling to know where in your index to look when the same term shows up multiple times in different areas of law.
  4. Don’t rely exclusively on Indices. Indices are created by your peers and everyone relies on different trigger words. Make sure you know how the law is laid out in your bar materials so that when the Index fails you, there is a Plan B. I had an extra copy of the Table of Contents always sitting on the desk.
  5. Glossing over the Ethics section. While a lot of ethics may appear common sense, they are rooted in principles and ROPC that may be less common sense than you think.  Tactically, Ethics is tested on both the Solicitor and the Barrister exam, so if you study hard for Ethics, you get twice the value.

My Exam Strategy
Target Timing Per Question : 1.5 minute per question

Step 1:
Read the question and cross out the ridiculous answers you know are off-mark.  This will be apparent to you if you understand the material.  If I know the answer and I am reasonably confident, I don’t bother consulting the Bar materials. I check the answer off and bank some time on the clock.

Step 2: Consult the Index.  I’ll look up a maximum of 2 key trigger words. If it shows up, I will flip open my Bar materials to find the appropriate section. If not, proceed to step 3.

Step 3: Consult the Table of Contents and find the appropriate section in the Bar materials.  Again, this is where understanding the material really helps.

Step 4:  At the 1.5 minute mark, if I still can’t locate where in the Bar materials the answer is found, I take a guess.  I refuse to stew on a question.  Once you get behind the clock, it is difficult to catch-up.  Moreover, it is easy to get stuck on a difficult question and never get to the easy questions that are within reach.

Good luck to the class of 2014.




Interviewing: Throw Me a Hard One

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This week, I helped represent my law firm at a career fair for law students at my school. Over a hundred first year law students showed up in pristine suits, looking to impress. Only two years ago, I was in their very shoes. Manning the booth for close to 2+ hours and speaking with dozens of students, I started to understand what it was like for interviewers during the law school recruitment process.  Too many law students play it too safe.

Interviewers are answering the same questions over and over again. They yearn for challenge, to be delighted from the monotony of parroting the same answers to the very same questions. Make it fun for them, and they just might remember you. Along the way, one might even discover answers to questions everyone else wanted to know, but was too afraid to ask.