A victory on both fronts for Oracle would have made application program interfaces (APIs) – used by software programs to communicate with each other – copyrightable, leading to Google having to pay the software company significant damages.

But with Google securing wins on both the patent and copyright issues, Managing IP asked lawyers what Oracle could have done differently.

Here’s what they said.

Lesson 1: Leave some on the table

Oracle’s copyright claims involved 37 packages in the Java API, charging that Google replicated “the structure, sequence and organization” of the overall code for those packages.

In the decision, Judge William Alsup said the Copyright Act allows anyone to write code to carry out the same function so long as the specific code to implement a method is different. Because Java requires identical method specifications to carry out the same function, he wrote, it could not be owned.

“Any other declaration would carry out some other function,” Alsup said. “When there is only one way to write something, the merger doctrine bars anyone from claiming exclusive copyright ownership of that expression.”

The judge essentially deemed the code functional, said Michael Lasky of Burr & Forman. To get around this, Lasky said Oracle (then Sun Microsystems) could have made it possible to provide other ways to link APIs with each other.

“Let’s suppose Oracle’s copyrighted code is by far the best way, and others are cumbersome,” Lasky continued. “They could have said: We worked hard to develop this, but we haven’t blocked the world from doing it, too.”

“The lesson is: Don’t take it all. Leave some on the table,” he said.

Lesson 2: Register critical parts of your works as copyrights

Lasky said one common failing by copyright owners is registering entire works under one copyright registration. This leaves them subject to de minimus arguments in court – that is, that the infringed part is so small as to be insignificant.

Of the 37 API packages Oracle asserted, the jury found nine lines (or 3%) of code infringed. Oracle could have registered its most critical lines of code – perhaps the 100 lines surrounding those nine lines – separately early in product development, Lasky said.

If the infringed portion isn’t identified until litigation is underway, there’s no harm in registering anyway, he added.

“If I were in Oracle’s shoes, I would have even after the fact gone back and registered the portion copied,” Lasky said. “That stamp of approval from the Copyright Office looks very powerful in the eyes of the jury.”

Oracle’s nine lines were unearthed during legal discovery.

Lesson 3: File patents and file them early

One critical part of the decision states that copyrights aren’t the most suitable protection for computing codes.

While Alsup did not dispute that Oracle’s methods were creative, he made a distinction between patents and copyrights.

“Inventing a new method to deliver a new output can be creative, even inventive, including the choices of inputs needed and outputs returned. The same is true for classes,” he wrote. “But such inventions – the concept and functionality level – are protectable only under the Patent Act.”

David Newman of Arnstein & Lehr said this was the key question Alsup had to answer.

“It’s possible that maybe Oracle could have filed a lot more patents instead of trying to rely on the copyright statute to protect its code,” he said. “It’s been pretty clear you can get patents on most parts of software.”

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