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Abstract

Ever since the venerable Supreme Court opinion in Baker v. Selden, courts and commentators have overwhelmingly endorsed the rule that copyright and utility patent protections for intellectual creations are mutually exclusive. That is, an intellectual creation may be eligible for copyright or utility patent protection, but not both. Original works of authorship are channeled to the copyright regime, while novel and nonobvious technologies are channeled to the patent system.

The well-established mutual exclusivity rule for copyright and utility patents was recently renounced, as applied to computer program innovations, by the Court of Appeals for the Federal Circuit (CAFC) in Oracle America, Inc. v. Google Inc. One of Google’s defenses against Oracle’s charge of copyright infringement for its reuse of parts of the Java application program interface (API) was that the API’s functionality made it more properly patent, than copyright, subject matter. The CAFC rejected the exclusivity argument and endorsed overlapping copyright/patent protection for APIs.

Oracle is the latest exemplar of the vexing conceptual difficulties that computer programs have posed for both copyright and patent laws over the past fifty-some years. This Article provides an overview of the mutual exclusivity rule that grew out of Baker. It also explains why the CAFC’s Oracle decision is deeply flawed, and why courts should renew their commitment to the mutual exclusivity rule in software copyright cases to ensure that, consistent with long-standing limiting principles of copyright law and Supreme Court precedents, copyright will not be construed to give patent-like protection to program functionality.

This Article also offers concrete suggestions about how courts should approach discerning the proper boundaries of copyright and patent in protecting particular aspects of software. More clarity to the software copyright caselaw can be attained if courts engage in rigorous filtration of unprotectable nonliteral elements of software. When courts interpret software copyright in the shadow of patents, they are less likely to exceed the boundaries articulated by Baker and § 102(b) of the Copyright Act of 1976.

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