3. Merger doctrine

In ruling that Oracle's declaring code was uncopyrightable, the district court applied the merger doctrine, which states that if "there is only one way to write it," no one can claim exclusive copyright ownership of the expression. (Oracle America, Inc. v. Google Inc., supra, 872 F.Supp.2d, at 998.) As stated supra, only a unique expression of an idea can be copyrighted, not the idea itself. The merger doctrine serves as an exception to this rule: if there is only one way to express the idea, the expression and idea merge, which precludes a copyright.

The appellate court turned to Computer Associates International v. Altai (1992) 982 F.2d 693, 704-05 [119 A.L.R. Fed. 741]), which quoted the seminal copyright case of Baker v. Selden (1879) 101 U.S. 99, 25 L. Ed. 841. In Baker, the author of a book that described a technique for bookkeeping claimed a copyright on all use of his technique by other bookkeepers. The court ruled that the components of Selden's technique "must necessarily be used as incident to" the idea, system, or process described. (Id. at 104.) Therefore, Selden's expression of the bookkeeping technique merged with the underlying idea, which rendered the expression uncopyrightable.

The appellate court faulted the district court's merger analysis because, as stated supra, merger serves only as an affirmative defense to copyright infringement rather than applying to an expression's copyrightability. Therefore, the appellate court found that "merger does not apply on the record before us." (Oracle America, Inc. v. Google Inc., supra, 750 F.3d 1339 at 1360.) The appellate court also found error in the district court's merger analysis when it emphasized Google's options when it copied the 37 Java APIs. Citing Apple Computer, Inc. v. Formula International, Inc., the appellate court pointed out that whether a program may by copyrighted, and the degree of protection it is afforded, are evaluated at the time the program is created rather than at the time of the infringement. (Apple Computer, Inc. v. Formula Int’l, Inc. (1984) 725 F.2d 521, 524, quoting the CONTU Report.) The district court should have looked at the options available to Sun/Oracle when the APIs were written. When Google copied the APIs, it had the option of writing its own declaring code as well as its own implementing code. This precludes merger of the expression with the idea. (Oracle America, Inc. v. Google Inc., supra, 750 F.3d 1339 at 1361.)

4. Abstraction-filtration-comparison test