copyrightable APIs? (was RE: namespace protection compatiblewit

Rod Dixon, J.D., LL.M. rod at
Sat Apr 21 15:51:49 UTC 2001

> -----Original Message-----
> From: Lawrence E. Rosen [mailto:lrosen at]
> Sent: Friday, April 20, 2001 11:24 PM
> To: license-discuss at
> Subject: RE: copyrightable APIs? (was RE: namespace protection

> Finally, one CAN use trademark law -- with all its strengths and
> weaknesses -- to prevent third parties from applying your
> trademark to their
> goods, or to prevent third parties from applying your
> certification mark to
> their incompatible goods.  For example, legitimate trademarks or
> certification marks for "Java" or "Windows," (if they exist; I haven't
> searched!) could be used to prevent people from forking Java and Windows
> APIs and still calling those imprecise implementations "Java" or
> "Windows."

Hello Larry,

Good point! Microsoft fought like hell to obtain a federally registered
trademark on "Microsoft Windows." After initial failure, there persistence
eventually paid off. Sun claims to have a common law trademark on various
iterations of "Java," but no federal registration has been obtained. Of
course, Sun used its trademark and license as a basis to file suit against
Microsoft for "implementing" the Java API in an incompatible manner.
Although it looks as if the terms of the settlement agreement allow
Microsoft to continue to support (and, perhaps, promote) third party Java
application development on the Windows platform that is incompatible with
the Sun API, - - but without use of the common law java trademark - - it's
unclear  from the terms whether Microsoft agreed it was paying to license a
copyright interest in Sun's Java API. We know Microsoft did not pay to
license the trademark.
> I hope that other attorneys on this discussion list will help me evaluate
> whether a court challenge to the use of the copyright law to
> protect APIs is
> likely to succeed [SNIP]

I think this is a difficult question to answer in the abstract. Microsoft
seems to have raised the argument indirectly (and quite cautiously) in its
antitrust litigation. Judge Jackson did not give the argument much response,
but during oral argument before the D.C. Circuit, one could have drawn an
inference that the D.C. Circuit might actually be sympathetic to a clearly
presented argument. Hence, I think a court challenge to the use of the
copyright law to protect APIs would be a gamble.  It might be better to
expect that courts will apply the abstraction/filtration test or the
idea/expression dichotomy in cases claiming infringement of the copyright in
a set of APIs in a manner that filters out those claims or flatly rejects

One final note: one might argue that such a use of copyright constitutes
copyright misuse, if faced with a claim of infringement. I do not know
whether Microsoft raised that defense in its answer to the Sun lawsuit. The
downside to this argument is that copyright misuse is a judicial doctrine
without a statutory basis or explicit support from the Supremes. Hence, many
courts reject the defense entirely or limit it to "antitrust-like" issues.


Rod Dixon
Visiting Assistant Professor of Law
Rutgers University Law School - Camden
rod at

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