1 Indeed, if these early cases are representative, there may be no area where it is more important for the court to grasp the fundamentals of the technology—and hence for lawyers to comprehend the basics of computer evidence—than the area of software copyright.
7 For a full discussion of copyright protection for software,
see also § 4.04[1][b] of this Treatise.
9 See inter alia: Williams Electronics, Inc. v. Artic International, Inc., 685 F.2d 870, 215 U.S.P.Q. 405 (3d Cir. 1982) (program embodied in ROM is copyrightable);
Apple Computer, Inc. v. Franklin Computer, 714 F.2d 1240, 219 U.S.P.Q. 113 (3d Cir. 1983), cert dismissed, 464 U.S. 1033 (1984) (object code copyrightable; program in ROM copyrightable; system program copyrightable);
Apple Computer Inc. v. Formula International Inc., 725 F.2d 521, 221 U.S.P.Q. 762 (9th Cir. 1984) (system programs copyrightable);
Tandy Corp. v. Personal Microcomputers, Inc., 524 F. Supp. 171, 214 U.S.P.Q. 178 (N.D. Cal. 1981) (program is subject to copyright; ROM containing program constitutes copy);
Hubco Data Products Corp. v. Management Assistance, Inc., 219 U.S.P.Q. 450 (N.D. Idaho 1983) (object code copyrightable; system program copyrightable);
Midway Manufacturing Co. v. Strohon, 564 F. Supp. 741, 219 U.S.P.Q. 42 (N.D. Ill. 1983) (ROM constitutes copy; object code copyrightable).
13 The traditional distinction between subject matter protectable by copyright, and subject matter not so protectable, has been the idea/expression distinction. Copyright protection is limited to the protection of expression, and cannot preclude use of the embodied ideas.
See, e.g., Mazer v. Stein, 347 U.S. 201 (1954). This distinction is further embedded in the copyright statute. See
17 U.S.C. Section 102(b).
16 The
Whelan view on copyrightability of code structure was not universally adopted. For example, a contrary note was struck by the
Fifth Circuit in Plains Cotton Corp. Association v. Goodpasture Computer Service Company, 807 F.2d 1256, 1 U.S.P.Q.2d 1635 (5th Cir. 1987). Plaintiff association had developed programs to provide its members with information regarding cotton prices, availability, etc. Certain employees of plaintiff left to join defendant, bringing a copy of the programs. Very shortly thereafter defendant was able to market a competitive program quite similar to plaintiff’s in terms of “functional specification, programming and documentation levels.” The main difference was that plaintiff’s program was designed for use on a mainframe computer, whereas defendant’s was designed for a personal computer. Plaintiff claimed infringement by virtue of defendant’s reproduction of the structure of plaintiff’s system as outlined in plaintiff’s detailed specifications. Although there appeared to be evidence of similarity on a level not protected by copyright, in denying plaintiff’s motion for a preliminary injunction, the district court held that defendant had copied no expression.
In affirming, the Fifth Circuit followed Synercom, which it saw as holding that input formats for programs were uncopyrightable ideas. “To the extent that input formats represent a level of computer software design more specific than functional design and more general than line-by-line program design, the issue of their copyrightability is relevant to the issue of whether [defendant] infringes on protected … designs.” Despite plaintiff’s protestations, the Fifth Circuit declined to follow Whelan for two reasons: First, because the record before it was not well developed and second, because defendant in the instant case showed that many similarities were dictated by externalities of the cotton market. Copying expression that is required by such a constraint does not constitute infringement.
However, in affording protection to certain aspects of structure, Whelan stated the rule of the majority of second wave cases. See, e.g., Dynamic Solution, Inc. v. Planning & Control, Inc., which held that to the extent structural similarities between programs were unnecessary to the purpose or function of the programs, they constituted protectable expression.
17 The court defined non-literal aspects as “those aspects that are not reduced to written code.” Slip opin. at 3.
18 The three operating systems were DOS/VSE, MVS, and CMS.
19 Having an interface program such as Adapter therefore saves time, trouble and money, and makes the software in which it is embedded more marketable.
20 Because all Adapter code had been excised in creating Oscar 3.5, there was no copying of literal elements.
21 Altai slip opin. at 15.
22 The court defined a macro as “a single instruction that initiates a sequence of operations or module interactions within the program.”
Id. at 7.
23 Before beginning its analysis, the court noted that its decision was not concerned with infringement through the product of programs (e.g., screen displays), but was confined to infringement by virtue of programs themselves. (The court recognized that where the screen display, apart from the program generating it, is the subject of an audiovisual copyright registration, the display may be protectable regardless of the copyright status of the program.) With this noted, the court went to its analysis.
27 Altai slip opin. at 26.
28 The parameter list “refers to the form in which the information is passed between modules (e.g. for accounts receivable, the designated time frame and particular customer identifying number) and the information’s actual content (e.g., 8/91–7/92; customer No. 3).”
Id. at 6.
29 This is comparable to the novelist “fleshing out the broad outline of his plot by crafting from words and sentences the paragraphs that convey the ideas.”
Id. at 8.
30 The court issued a caveat: “… we are cognizant that computer technology is a dynamic field which can quickly outpace judicial decision making. Thus, in cases where the technology in question does not allow for a literal application of the procedure we outline below, our opinion should not be read to foreclose the district courts of our circuit from utilizing a modified version.”
Altai, 982 F.2d 693, 706.
31 In undertaking this task, the court found the following helpful: “At the lowest level of abstraction, a computer program may be thought of in its entirety as a set of individual instructions organized into a hierarchy of modules. At a higher level of abstraction, the instructions in the lowest level modules may be replaced conceptually by the functions of those modules. At progressively higher levels of abstraction, the functions of higher-level modules conceptually replace the implementations of those modules in terms of lower-level modules and instructions, until finally, one is left with nothing but the ultimate function of the program… . A program has structure at every level of abstraction at which it is viewed. At low levels of abstraction, a program’s structure may be quite complex; at the highest level it is trivial.” England,
Idea, Process or Protected Expression?: Determining the Scope of Copyright Protection of the Structure of Computer Programs, 88 Mich. L. Rev. 866, 897-98 (1990).
32 The merger doctrine holds that where there is merger of idea and expression, copyright does not preclude copying of expression.
33 Altai slip opin. at 33 (emphasis by the court). The court offers as one justification for linking structural economy with the application of the merger doctrine, the essentially utilitarian nature of the program.
35 However, the court noted that the filtering (performed by the lower court on defendant’s program) should actually have been performed on plaintiff’s. In the instant case, that would have caused no different result because they contained no common protectable element.
36 Michael I. Chakansky of Brown, Raysman and Millstein refers to this as the “atomization” of the program.
37 The district court awarded to plaintiff over $300,000 for this infringement.
40 Lasercomb America, Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990);
Qad. Inc. v. ALN Assocs., Inc., 770 F. Supp. 1261 (N.D. Ill. 1991)(presently on appeal). See also the following cases, in which the court espouses the possibility that the defense of copyright misuse may indeed exist:
Hill v. XYQUAD, Inc., 939 F.2d 627 (8th Cir. 1991);
Erickson v. Trinity Theater, 1992 U.S. Dist. Lexis 2690 (E.D.Ill. 1992);
Basic Books Inc. v. Kinko’s Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991);
Broadcast Music, Inc. v. Hearst/ABC, 746 F. Supp. 320 (S.D.N.Y. 1990);
Coleman v. ESPN, Inc., 764 F. Supp. 290 (S.D.N.Y. 1991); and
National Cable Television v. Broadcast Music Inc., 772 F. Supp. 614 (D.D.C. 1991).
41 For a detailed description of the nature of patent protection, and its application to program-related inventions,
see Chapter 3A of this treatise.
42 A patent may be obtained only on a useful development that is both novel, and is not obvious to a person of ordinary skill in the pertinent technology at the time the development was made.
35 U.S.C. §§ 101,
102,
103.
43 For a discussion as to the underlying rationales of these software patentees,
see § 3A.08 of this treatise.
43.2 Viewing
Sega v. Accolade as persuasive, the appellate court found that such reverse engineering constitutes fair use.
43.3 According to the court, literal similarity is similarity at the code level; non-literal similarity is similarity resulting from “paraphrasing or copying the essence or structure of a work just short of literal copying.”
43.4 According to the court, the First Circuit in
Lotus v. Borland would not apply the test to literal elements, whereas the Tenth Circuit in
Gates v. Bando had so applied it.
48 The court analogized this to two differently configured 500 piece puzzles displaying the same uncopyrighted depiction of the American flag, which it also believed the ordinary observer would see as different expressions of the idea of a jigsaw puzzle.
48.3 A patent claim is a single sentence, found at the end of the patent, that describes the boundary of the invention,
i.e., of the patentee’s exclusive right, much as a real estate deed describes the metes and bounds of the real estate owner’s property right.
50 Among those concepts were the need to access existing files, edit work and print work.
51 The court also found the expressions of the ideas different in the two works.
52 The Ninth Circuit did note, however, that the “degree to which unprotected or unprotectable features must be eliminated form a comparison of the two works is difficult to say. Although copyright protection is not afforded to certain elements or a work, such limitations ‘must not obscure the general proposition that copyright may inhere, under appropriate circumstances, in the selection and arrangement of unprotected components.’ ”
960 F.2d at 1476, n.4, quoting from 3
Nimmer, Nimmer on Copyright § 13.03[F][5].
55 Appeals of judgments in (i) patent infringement suits filed in the U.S. district courts, (ii) suits filed in the U.S. Claims Court for compensation for government practice of patents, and (iii) determinations of the International Trade Commission (many of which involve patent claims), are reviewed by—and only by—this court. However, the Federal Circuit has in addition jurisdiction over many other matters not concerned with patents.
56 In determining copyright issues, the Federal Circuit applies the law of the appropriate regional circuit, in this case the Ninth Circuit.
975 F.2d at 837. The Ninth Circuit sustains preliminary injunctions where plaintiff shows either a likelihood of success and the possibility of irreparable injury, or serious questions on the merits and a balance of hardships tipped sharply in plaintiff’s favor. In the case of copyright infringement, likelihood of success raises a presumption of irreparable harm. The Ninth Circuit vacates a preliminary injunction only where a district court abused discretion or based its decision on an erroneous legal standard or clearly erroneous findings of fact.
57 “After separating the program into manageable components, the court must next filter the unprotectable components of the program from the protectable expression.”
975 F.2d at 839.
58 Examples given by the court were a computer’s mechanical specifications, inter-program compatibility, and demands imposed by the application.
59 “Thus, patent and copyright laws protect distinct aspects of a computer program… . Title 35 protects the process or method performed by a computer program; title 17 protects the expression of that process or method. While title 35 protects any novel, nonobvious, and useful process, title 17 can protect a multiple of expressions that implement that process. If the patentable process is embodied inextricably in the line-by-line instructions of the computer program, however, then the process merges with the expression and precludes copyright protection.”
975 F.2d at 839-40.
61 The court acknowledged that minimal portions of the program may have required accommodation to the microprocessor, but found this to be
de minimis.
62 The registration certificate provided Nintendo with a presumption of originality that Atari did not rebut.
64 37 C.F.R. § 201.2(d)(2). As a result of this case, the Copyright Office has revised that regulation so as to make it more difficult to obtain a copy absent actual or prospective litigation.
65 For a discussion of reverse engineering in the computer program environment, see
§ 3A.02[1] of this Treatise. As explained by the court:
“Computer programs are normally written in a high-level language such as C or FORTRAN. Once written, the program is translated from the high-level language to machine-readable object code. This translation process, called compiling, is performed by a computer as instructed by a compiling program. As mentioned previously, the idea or process expressed in a program is not easily discernible from the object code. Object code is disassembled to facilitate understanding the idea or process expressed. Disassembly is basically the reverse of compilation. Object code is trans lated via a disassembly program to a higher, more intelligible language called assembly language.”
67 The court found as bearing on this point language from a recent U.S. Supreme Court opinion: “[C]copyright does not prevent subsequent users from copying from a prior author’s work those constituent elements that are not original—for example … facts, or materials in the public domain—as long as such use does not unfairly appropriate the author’s original contribution.”
Feist Publications v. Rural Tel. Serv. Co., 111 S. Ct. 1282, 1290 (1991).
72 The court used the Ninth Circuit two-step rule for substantial similarity: In the first step, an objective “extrinsic” test is used to determine similarity of the ideas. In the second step, a subjective “intrinsic” test is used, based on the ordinary observer, to compare expression. In the case of a program, the ordinary observer is a programmer, and expert testimony is admissible on this second step.
74 The provision in question prescribes: “
Exclusivity: LICENSEE agrees to sell the Licensed Product for use only in conjunction with the NES. For a period of two (2) years following the date of first sale by LICENSEE of any Licensed Product pertaining to any particular video game program developed by LICENSEE under this Agreement, LICENSEE will not adapt or offer such video game program or any derivatives of such video game program, for use in any: (a) other home video system; or, (b) home computer system… .”
77 “All computer software exists as electrical pulses, yet Congress explicitly extended copyright protection to computer software as a literary work.” —- U.S.P.Q.2d at —-. The court did not deal with the issue of whether this extension by Congress necessarily meant that copyright applied to all possible representations of a program, or on just what comprises a “copy” of a copyright-protected work.
78 Id. (emphasis by the court).
79 “The program
data is the
result sought by the execution of the program instructions. Thus, the statements that manipulate the data would fall within the statutory definition, while the data that
result from those calculations would not.” —- U.S.P.Q.2d at —-(emphasis by the court). Data is the physical representation of information. Input to, and output from, a computer comprise data. Data is the grist for the mill of the program.
80 —- U.S.P.Q.2d at —- (emphasis by the court).
81 The court used the term “silence” to refer to periods when the console microprocessor was not checking its input pin.
82 “While variable silences in a musical composition might be copyrightable, the silence here is simply the necessary timing to ensure proper data communication.” 1993 U.S. Dist. Lexis at *17—.
84 The court did not elaborate on how this matter related to a motion for summary judgment that the bit stream was not copyrightable.
85 The court believed that requiring second-comers to carefully discern which instructions are necessary for present compatibility, would give the first company into the market a limited amount of time in which to control the market. Thereafter, second-comers would enter the market with compatible games. “Thus, a fair use defense which allows copying for present compatibility balances the incentives for both game developers and console manufacturers.” Slip op. at 24.
88 The applicability of the fair-use doctrine assumes that the copy used by defendant was lawfully obtained.
90 —- F. Supp. —-, —- U.S.P.Q.2d —-(N.D. Cal. 1993).
91 “To the extent that there are many possible ways of accomplishing a given task of fulfilling a particular market demand, the programmer’s choice of program structure and design may be highly creative and idiosyncratic. However, computer programs are, in essence utilitarian articles—articles that accomplish tasks. As such, they contain many logical, structural, and visual display elements that are dictated by the function to be performed, by considerations of efficiency, or by external factors such as compatibility requirements and industry demands. In some circumstances, even the exact set of commands used by the programmer is deemed functional rather than creative for the purpose of copyright.” Slip op. at 6,
quoting, Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir. 1992)(citation omitted from quote).
92 “In other words, there is only one way to express the idea of generating a signal stream that unlocks the NES console.” Slip op. at 4, n.3.
93 For example, the levels could be defined as follows:
(1) a program that authenticates and unlocks a video console and game cartridge;
(2) a program that unlocks the NES game console;
(3) the basic modules; i.e., initialize, hash, and exchange and authenticate;
(4) the functions performed in each module;
(a) for the initialize module: select random seed, send it to cartridge, set up initial values in the master and slave banks;
(b) for the hash module: the specific mathematical transformations used to hash the values in both banks;
(c) for the exchange and authenticate module: determine which values to send, send the values, compare values to those previously calculated;
(5) the basic algorithm used to perform each function in each module;
(6) the line by line instructions used in each module.
Slip op. at 8, n.6.
94 It is difficult to see how the “existence of modules with identical functions” could be the basis for copyright infringement. § 102(b).
96 Atari argued that otherwise Nintendo could change the program in subsequently sold consoles to require more features for verification, thereby locking Atari cartridges out, without affecting the compatibility of Nintendo cartridges.
98 Atari presented two clean room programs. One was designed to transmit the minimal signal stream, while the other was designed to replicate the Nintendo signal stream.
99 The program was able to determine whether it was situated in a cartridge (the “key”) or console (the “lock”). In either event, it authenticated the incoming signal stream notwithstanding that there was no need for the cartridge to authenticate the console. The Atari program was situated only in the cartridge.
101 Slip op. at 12,
citing Altai.
102 The court stated: “Atari did not copy the general idea of console authentication, but instead copied Nintendo’s specific implementation of that idea. At this level of abstraction, there is no merger of idea and expression. In addition, since this expression is not necessary to unlock the NES console, the ‘compatibility’ filter does not eliminate the protected expression at this level of abstraction. Nor has Atari identified any other filter which would be relevant at this level of abstraction.” Slip op. at 13, n.8.
104 The “hash” was the mathematical procedure used by Nintendo, after the transmission of each signal stream, for transforming the 30 variables used to determine the signal stream.
105 In the court’s opinion, Atari’s departure from Nintendo’s order represented a trivial variation, as probative of an attempt to disguise copying as of independent creation. However, the court did not believe that similarity in the order of hashing here was probative of copying, as numerical order seemed a logical choice. Further, the court saw the sequential procession through memory locations to be a common programming practice, and therefore filterable as an external factor. Moreover, citing
Feist, the court questioned whether hashing in numerical order was sufficiently original to qualify for copyright protection. Again it appears that the court mixed the two concepts of substantial similarity.
107 It would appear that this particular instance of copying found by the court is an instance where function was copied.
108.2 Too low a value would incur unnecessary expense; too high a value might also mean increased expense. Thus, the values embodied engineering and business judgment.
108.3 “Merger would be implicated if Compaq’s threshold values were solely predictions of when the hard drives would fail.”
37 U.S.P.Q.2d at 1808 (n.13).
108.4 Copying the threshold values was not commercially feasible because it constituted copyright infringement. Moreover, there was no evidence in the record to show that Procom’s development of its own threshold data was commercially feasible.
110 The district court opinion continually confuses the two aspects of “substantial similarity:” (1) providing one element of an evidentiary basis for proving that copying occurred, and (2) establishing the presence in each work of similar protectable expression in more than a
de minimus amount.
112 Plaintiff’s expert also expressed views reflecting on the credibility of the testimony of the individual that defendant asserted was the programmer of the accused work.
113 “The court will respectfully disagree with the
Altai decision and hold that a program’s behavior can be protected by copyright law.” C.C.H. Computer Cases ¶ 46,765 at 64,743. The court considered the program’s treatment of errors to be an aspect of behavior.
114 The court did not credit the testimony of defendant’s witnesses regarding independent creation, an issue the court addressed after finding substantial similarity.
117 “First, in order to provide a framework for analysis, we conclude that a court should dissect the program according to its varying levels of generality as provided in the abstractions test. Second, poised with this framework, the court should examine each level of abstraction in order to filter out those elements of the program which are unprotectable. Filtration should eliminate from comparison the unprotectable elements of ideas, processes, facts, public domain information, merger material,
scenes a faire material, and other unprotectable elements suggested by the particular facts of the program under examination. Third, the court should then compare the remaining protectable elements with the allegedly infringing program to determine whether the defendants have misappropriated substantial elements of the plaintiff’s program.”
Id. at 1508–1509.
118 In addition to the main idea of the program, the function of a module will almost always be an unprotectable idea.
119 In the court’s view, processes could be found at any level except the top-most level of abstraction (
i.e., the program’s function).
120 In the field of software the court viewed as externally dictated factors hardware standards and mechanical specifications, software standards and compatibility requirements, computer manufacturer design standards, target industry practices and demands, and industry programming practices.
121 “A number of tests have been proposed to give guidance to courts in making this determination. They include ‘total concept and feel,’ ‘fundamental essence or structure,’ and the ‘iterative’ tests. The ‘total concept and feel’ test was developed in different contexts and it is not very helpful in comparing similarities among protected components of computer codes. The other tests are artificially narrow and restrictive. Instead, the comparison must necessarily be an ad hoc determination of whether the infringed portion is a significant or important part of the plaintiff’s code, considered as a whole.”
28 U.S.P.Q.2d 1503, 1513.
122 The court described the
Paperback test as “the forerunner of the standard that we adopt in this case.”
Id. at 1514.
125 “… the ‘extrinsic-intrinsic’ test … largely overlaps the ‘abstraction-filtration-comparison’ test we adopt today and it merely adds confusion to the existing plethora of terminology. For purposes of addressing the issue of copyright infringement of computer programs, we think it is better simply to use the terminology addressed in our opinion.”
Id. at 1515, n.18.
126 The allegation that plaintiff spent thousands of hours determining the constants was deemed irrelevant because “sweat of the brow” is not protectable by copyright.
127 Nevertheless, the appellate court endorsed the district court’s reliance on defendant’s use of the constants as strong evidence of factual copying.
128 These terms were defined respectively by the appellate court as “the overall sequence of actions and events in a program,” and “the sequence of actions taken on each piece of information, that is, how the data travels through the program.”
28 U.S.P.Q.2d 1503, 1517.
128.2 E.g., placing the abbreviated form to the left of the long form; use of a cursor to scroll through the entries.
128.3 Organizing a two-column list of abbreviations linked with their long forms.
128.4 Whether to place the menu bar at the top, or at the bottom, of the screen.
128.5 For example, in the menu screen only two of plaintiff’s eleven commands and defendant’s six commands were common, and both were standard terms found in many programs.
128.9 There were only eight joystick positions, and movement of the joystick from one position can only be to a neighboring position. The need to have the control sequence emulate body movement (e.g., throwing) as a matter of pragmatics further limits the number of possible combinations.
128.11 The court conceded that it was “disturbed about exact similarities of certain arbitrary sequences of combinations,” but concluded that the sequences were simply not protectable, so that the “isolated similarities” were not actionable.
128.12 PAC-MAN, Donkey Kong, and Galaxian.
128.13 But the court noted that even under “the more lenient substantial similarity standard,” its conclusion would be the same.
128.14 The court mentioned in passing that a third game of the same genre, “Mortal Combat,” was much more original than plaintiff’s game, and suggested that elements of Mortal Combat were protectable.
128.16 The court also felt that, as a matter of logic, permitting presentation to the jury of both protectable and non-protectable elements would render meaningless the dissection, required in the extrinsic test, of the work into protectable and non-protectable elements.
128.17 GNU Business Information Systems, Inc. v. The Social Secretary, Ltd., 4 CCH Computer Cases ¶ 46,986 (N.D. Ill. 1993).
128.18 The function of both programs was the creation and printing of customized social stationery.
128.19 GNU, 4 CCH Computer Cases ¶ 46,986 at 65,869.
128.22 “These questions and processes are the core of the V-Y Model. The questions prompt managers to evaluate their decision-making landscape. For example, one questions asks if the manager has adequate information to make a good decision himself. The five definitions or processes describe various decision-making approaches, from autocratic (the manager alone) to more democratic (decisions requiring consensus). Presumably, the V-Y Model rules tell a manager which decision-making process to use in a given context, based on the manager’s responses to the eight questions.”
12 F.3d at 531.
128.23 “To determine the scope of copyright protection in a close case, a court may have to filter out ideas, processes, facts, idea expression mergers, and other unprotectable elements of plaintiff’s copyrighted materials… .”
29 U.S.P.Q.2d at 1750.
128.25 “[T]heir paragraphs are about the same size, their phrases are similar, their ideas are presented in the same order; in short, parts of the modified [defendant’s] program are but a transparent, syntactic rearrangement of portions of [plaintiff’s] copyrighted materials. While no longer identical to those materials, the modified [defendant’s] program still bears many telltale signs of its origins. It is still a copy—still a child of infringement.”
12 F.3d at 536.
128.27 12 F.3d at 537. “For example, one process (designated AII) instructs a manager to gather information from subordinates, then make the relevant management decision himself. The process states that the manager “may or may not tell subordinates” the nature of the problem in getting information from them. This makes two separate logical possibilities, so this process could—in a different model—be broken into two different processes. In short, not only does the V-Y model fail to describe all conceivable features of the management decision-making landscape, it also fails to organize and package its managerial truisms in a single, unique, ineluctable way: there are many ways of organizing those same insights.”
12 F.3d at 537.
128.29 The district court order had also enjoined all future modifications. The court of appeals modified this provision so that only future versions substantially similar to plaintiff’s work were enjoined.
130 The court describes a “code generator” as a programming tool that enables programmers to code “sophisticated programs with added speed and relatively little creative or intellectual effort… . With the use of a code generator, which was described as a sort of electronic paintbrush, a programmer can, for example, code a program to display a screen to reflect how he wishes the screen that will be generated by the finished program to look. The programmer—using the cursor and keyboard—‘paints’ upon the screen the features he wants the program-generated screen to display, including the data ‘fields’ that he wishes to be included on the screen. Programs to develop reports and files can also be created this way.” Slip op. at 11.
131 The court regarded file layout (including determination of which items of information to include) as a “crucial element” in the design of software.
132 Defendant referred to no similar software other than plaintiff’s because defendant wanted to duplicate plaintiff’s software.
133 A transaction code is a “randomly selected, alphanumeric sequence of characters that indicates to the computer what steps should be executed in a given situation or ‘transaction’ when the code is transmitted.” Slip op. at 32, n.8.
134 “81. For example, the field definitions of the common files in the two systems are strikingly similar. Almost uniformly, fields present in the file layouts of the RMAX Remote Store System are also included in the UCR System. The data elements appear … in identical order, and in most instances, are the same length. The ordering method utilized in [plaintiff’s] System, however, is not alphabetical or otherwise systematic, nor is it functionally significant… . Thus, there is no reason why the UCR System should have the same data elements in the same order … absent copying.
“82. A specific example, which strongly evidences copying, is the Rental Agreements file in each system. [Plaintiff’s] file contains five ‘late payment’ fields in consecutive order… . ‘LATE.1’, ‘LATE.2’ and ‘LATE.3’ appear as the eighteenth, nineteenth and twentieth fields, respectively, while the ‘LATE.4’ and ‘LATE.5’ fields appear in the forty-third and forty-fourth positions. Obviously, the two latter fields were added some time after the first three ‘LATE’ fields. [Defendant’s] file utilizes the exact same ordering method … a programmer creating a new file from scratch logically would have placed these five files together, rather than placing three together, inserting twenty-three unrelated fields, and then adding another two. The only reasonable explanation for this similarity is that [defendant’s] programmer copied [plaintiff’s] file.”
Slip op. at 30-31.
136 The court found the
Whelan test conceptually overbroad, and based on a “sweat of the brow” theory later rejected by the U.S. Supreme Court.
138 Altai dealt with copying of code.
140 The tests determined accuracy and speed of response regarding categories of word types.
141 The district court opinion does not elaborate on the materials that the defendant’s programmer accessed. For example, it is unclear whether he saw code, flowcharts, or system documentation on the one hand, or merely user documentation.
142 Presence of tests for oral reading, auditory visual match, visual match and visual scanning; sections on testing/diagnosis, profile analysis, and training; student progression from simple to complex subskills; student training in the first three topics of testing, and training in substantially the same way; immediate feedback to students; progression on the attainment of similar criteria; presentation of speed/accuracy profiles in similar manner; graphs used for same purpose and in same way; and “The [defendant’s] program is substantially similar to the important aspects of the Autoskill’s program.” Slip op. at 9-10.
143 It is unclear what defendant had access to. “In this case, there is no question that [defendant] had access to the Autoskill Program. Because Autoskill makes no claim of infringement of the source code, it is not necessary for Autoskill to show that [defendant’s programmers] had access to source code. The tough question here is whether the [defendant’s] Program was substantially similar to the Autoskill Program.” Slip op. at 20. It is not clear to precisely what the court refers in using the term “program.”
145 Respectively, the “oral reading” subtype, “intermodal associative deficit” subtype, “sequential deficit” subtype.
146 There were different approaches to diagnosing subtypes, to presenting profile data on student performance, to test and train, to present material, to present proposed answers to multiple choice tests, and to train.
147 This was the most simple and frequently used pattern.
148 The “Silent Sentence” and “Silent Paragraph” components employed techniques commonly used in reading programs.
149 The court believed it appropriate to rely on expert testimony in making such a determination.
150 Both programs use alternating words and nonsense words; no other program did. In all three tests, speed and accuracy are recorded, and the two programs used that data in the same way for diagnosis and treatment. In both programs, the testing is done on the same three topics and in the same manner as the training. The criteria for moving from one training block to the next are similar in the two programs. One of these criteria was unusual and not used elsewhere. Both programs presented profiles of accuracy and speed in similar and unusual ways.
151 Specifically, it was unique in the way it recorded mastery and speed; the manner of reinforcing student response; and graph presentation to give immediate feedback to users.
152 As seen by the Tenth Circuit, among the similarities found by the trial court were: same name for the four testing categories; similar segmentation of programs into three segments: testing or diagnosis, profile analysis, and training; progression from simple to complex skills; training “in substantially the same way,” necessity of attaining similar criteria for advancement; similar profiles as to speed and accuracy.
153 The court of appeals recognized that “
Altai is just one of the approaches courts have used in analyzing the substantial similarity of computer programs,” and made reference to
Whelan, Gates Rubber, and
Hinshaw. The court found it unnecessary to “decide which is precisely the correct method of analysis for a final copyright judgment.” Slip op. p. 26, n. 17.
154 Excluding, or “casting out” is not something the
Altai test contemplates for the abstraction step; rather it is a result of the filtration step (step 2).
155 The opinion seems to confuse defendant’s argument on this point.
156 Although the Tenth Circuit seemed to adhere to the traditional rule regarding the distinction between idea and expression, the opinion seems to confuse the two. Many of the aspects of “uniqueness” found to exist in plaintiff’s work are not uniqueness of expression.
See slip op. at 37, n.23.
158 The appellate court saw no problem with the district court’s admission of expert testimony regarding legal conclusions, based on the expert’s review of legal materials and the two programs.
159 See Slip op. at 42-43.
162 The Microsoft products alleged to infringe were certain versions of its “Windows” software.
163 The Hewlett-Packard product alleged to infringe was its “New Wave” software.
164 A user interface comprises the screen display and the keys available on the keyboard for input.
165 The court explained that on the Macintosh, “the screen displays include icons or symbols to represent programs or information, pull down menus or lists of commands or information, use of windows to display information and the ability to move, re-size, open or close those windows to retrieve, put away or modify information, and a display of text by a proportionally spaced font in all menu items, title bars, icon names and text directories for a consistent and distinctive appearance.”
24 U.S.P.Q.2d at 1017.
166 Apple’s posture was somewhat hampered in that the court, in deciding a number of motions, had already determined these issues adversely to Apple. In litigating those motions Apple had declined to submit any detailed position on these issues. The instant opinion was written in response to Apple’s motion for reconsideration, supported for the first time by a detailed position.
167 The court used the example of a musical composition comprising unprotectable notes.
169 For literary works, the intrinsic test is performed by the trier. A visual display is not a literary work.
24 U.S.P.Q.2d at 1087.
170 I.e., “an interface suggestive of an office environment with a desktop background, implementing through animated graphical images and fanciful symbols… .”
24 U.S.P.Q.2d at 1088.
173 The groupings: windows to facilitate interaction with the information contained therein; icons to facilitate organization of information; icon manipulation to control operation of the computer; menus as a space-saving, convenient way to store information of functions; opening and closing objects to retrieve, transfer and store information; file manager; and program manager.
174 The seven: overlapping rectangular windows with muted background; windows partly on and partly off screen; active window on top; bringing window to top on mouse click; dragging window outline by pressing mouse on title bar; moving window on release of mouse after dragging outline; and redisplaying all newly exposed areas after moving window.
175 Tiling is the division of the screen into rectangles by either horizontal lines or vertical lines, with the lines in either case going entirely across the screen.
176 Switching is a method of having a separate screen display for each job, and using keys on the keyboard to switch from one display to another.
177 “… making the topmost window the active one is no more expression than reading the page to which a book is opened or working on the paper which is on top of a stack.”
24 U.S.P.Q.2d at 1096.
178 Inside the image or outside it, above, below, right or left; and if above or below, right-justified, left-justified, or flush.
179 “A file cabinet, a desk drawer, a bookshelf, a binder, an office safe, even a cardboard box could have served the same function.”
24 U.S.P.Q.2d at 1098.
180 “The idea involved is the use of a common object to represent the place to discard objects … the icon could just as well have been a paper shredder, a toilet, a recycling bin, or perhaps … an open window.”
24 U.S.P.Q.2d at 1098.
181 The court stated that menus are used in GUI’s to store information or functions in a location convenient to reach, but which conserves screen space for other images.
182 This feature was also held unoriginal.
183 The last three of these were also held entitled to only limited protection because of merger.
184 “This item describes but a process, and is no more expression than the fact that when a reader returns to a book that he placed down open to a certain page, it will still be open to that page.”
24 U.S.P.Q.2d at 1101.
185 Also included in this feature was the ability to change the cursor’s appearance, and presenting the title in question in inverse video. The court held that this sounded like a “typewriter manufacturer attempting to copyright the ability of its machine to place letters on paper directly on a roller. This procedure … does nothing more than allow a user to place his own words in a particular space on a computer screen.”
24 U.S.P.Q.2d at 1102. The use of inverse video and changing the cursor were common methods.
186 This feature was held “inseparable from the idea of using icons that are directly manipulated on a computer screen to facilitate the organization of information… . [It] merely allows a user to make order out of chaos, and is associated with no unique, separable artistic expression.”
24 U.S.P.Q.2d at 1102.
187 Thus, the court held that the only items that could be associated with unlicensed artistic expression to be compared under the “virtually identical” standard in intrinsic analysis were the appearance of a gray outline of a moving window; the change of appearance of moving icons; artistic aspects of overlapping windows and icons; presenting different images within the outline of a page icon to indicate objects of different non-directory type; presenting an icon in a folder when the icon is moved atop the folder icon; and presenting in the attributes dialog an object’s icon and characteristics.
187.2 “[S]ubstantial similarity of expression in unlicensed elements cannot be based on the fact that [plaintiff’s and defendants’ GUI’s] all have windows, icons representing familiar objects from the office environment … , menus … , or objects that open and close.”
35 F.3d at 1444, 32 U.S.P.Q.2d at 1092–93.
187.3 “[P]rotection extends only to those components of a work that are original to the author, although original selection and arrangement of otherwise uncopyrightable components may be protectable.”
35 F.3d at 1445.
187.4 For example, “visual displays of [a] karate match conducted by two combatants, one of whom wears red shorts and the other white as in the sport, and who use the same moves, are supervised by a referee and are scored alike as in the sport, are inherent in the sport of karate itself and as such are unprotectable.”
35 F.3d at 1444, 32 U.S.P.Q.2d at 1091 (discussion of
Data East, 862 F.2d 204, 209).
187.5 “[T]he idea of an icon in a desktop metaphor representing a document stored in a computer program can only be expressed in so many ways. An iconic image shaped like a page is an obvious choice.”
35 F.3d at 1444, 32 U.S.P.Q.2d at 1093. Among the other ideas embodied in the Apple GUI that could not be protected by copyright were windows for multiple images; commands consisting of manipulation of icons; use of menus for storage of information and functions; and opening/closing objects to retrieve, store and transfer information.
190 The court tentatively proposed a Verdict Form beginning with the following queries:
“Question 1”
“(a) Do you find that the Quattro Pro user interface as a whole was copied form the Lotus 1-2-3 user interface as a whole?
“(b) Do you find that the part of the Quattro Pro user interface called the ‘emulation interface’ (also called the ‘1-2-3 compatible interface’) as a whole was copied from the Lotus 1-2-3 user interface as a whole?
“(c) If NO, do you find that some part, and, if so, which of the following part or parts of the Lotus 1-2-3 user interface were copied into some part of the Quattro Pro ‘emulation interface’ (also called the ‘1-2-3 compatible interface’)?
(1) The menu commands
(2) The menu structure
(3) The command sequence
(4) The long prompts
(5) The macro facility”
Alternatively to (c) above, and depending on the definition of “macro facility,” the court tentatively suggested:
“(c) Do you find that the Lotus 1-2-3 macro facility as a whole was copied into some part of the Quattro Pro macro facility?
“(d) Do you find that some part, and, if so, which of the following part or parts of the Lotus 1-2-3 macro facility were copied into some part of the Quattro Pro macro facility?
(1) The menu commands
(2) The menu structure
(3) The command sequence
(4) The long prompts”
191 “FIRST, in making the determination of ‘copyrightability,’ the decisionmaker must focus upon alternatives that counsel may suggest, or the court may conceive,
along the scale from the most generalized conception to the most particularized, and choose some formulation—some conception or definition of the ‘idea’—for the purpose of distinguishing between the idea and its expression.
“SECOND, the decisionmaker must focus upon whether an alleged expression of the idea is limited to elements essential to expression of that idea (or is one of only a few ways of expressing the idea) or instead includes identifiable elements of expression not essential to every expression of that idea.
“THIRD, having identified elements of expression not essential to every expression of the idea, the decisionmaker must focus on whether those elements are a substantial part of the allegedly copyrightable work. Substantiality must be measured on a qualitative as well as quantitative scale.”
192 The recast test:
“FIRST, in making the determination of ‘copyrightability,’ the decisionmaker must focus upon alternatives that counsel may suggest, or the court may conceive, along the scale from the most generalized conception to the most particularized, and chose some formulation—some conception or definition of the ‘idea,’ ‘system,’ ‘process,’ ‘procedure,’ or ‘method’—for the purpose of distinguishing between the idea, system, process, procedure, or method and its expression.
“SECOND, the decisionmaker must focus upon whether an alleged expression of the idea, system, process, procedure or method is limited to elements essential to the expression of that idea, system, process, procedure or method (or is one of only a few ways of expressing the idea, system, process, procedure or method) or instead includes identifiable elements of expression not essential to every expression of that idea, system, process, procedure or method.
“THIRD, having identified elements of expression not essential to every expression of the idea, system, process, procedure or method, the decisionmaker must focus on whether those expressive elements, taken together, are a substantial part of the allegedly copyrightable ‘work.’ ”
788 F. Supp. at 90 (emphasis by the court to indicate words added to the test as set forth in
Paperback).
194 Nor was the court willing to accept the CONTU Report, and its comments on
Selden, as legislative intent.
195 “Question 2”
“(a) FIRST, in making the determination of ‘copyrightability’ of the user interface of 1-2-3 as a whole, or of some element or elements of that interface, focus upon alternatives that counsel may suggest, or that you may conceive, along the scale from the most generalized conception of the user interface, or some element or elements of that interface, to the most particularized, and choose some formulation—some conception or definition of the ‘idea,’ ‘system,’ ‘process,’ ‘procedure,’ or ‘method’ of the interface, element or elements—for the purpose of distinguishing between the idea, system, process, procedure, or method and its expression.
“SECOND, focus upon whether an alleged expression of the idea, system, process, procedure, or method is limited to elements essential to the expression of that idea, system, process, procedure, or method (or is one of only a few ways of expressing the idea, system, process, procedure, or method) or instead includes identifiable elements of expression not essential to every expression of that idea, system, process, procedure, or method.
“THIRD, having identified elements of expression not essential to every expression of the idea, system, process, procedure, or method, focus on whether those expressive elements, taken together, are a substantial part of the allegedly copyrightable ‘work.’ If they are, then you will find those expressive elements, and no more, copyrightable.
“(b) If YES, is each of the following a part of the user interface in which you find expressive elements, which you also find to be at least part of the basis for your answering YES to Question 2(a)?
(1) The menu commands
(2) The menu structure
(3) The command sequence
(4) The long prompts
(5) The macro facility
(6) The overall appearance of some part of the user interface”
198 The court found, however, that a reasonable jury could find either way on whether the Lotus long prompts were copied.
199 “Thus, the argument goes, the entire interface of [the current version] is a functional system or ‘idea’ and is not copyrightable. This argument is essentially tautological. As applied to any case involving a useful article, an argument of this kind would always define the idea to incorporate all the specifics of the particular expression of that idea in the allegedly copyrightable work. Nothing would be copyrightable under this methodology of analysis.” Slip op. at 41.
200 “To select, at the opposite extreme, the very abstract statement of the idea of 1-2-3 as ‘an electronic spreadsheet’ would be to draw an inappropriately abstract boundary between idea and expression. Thus, I concur in a fundamental principle of the
Computer Associates opinion and reject the contrary proposition in
Whelan.” Slip op. at 41–42.
203 The
Ross district court also held there was nothing innovative in the order of commands. But the
Ross commands numbered well under 100, grouped into less than a dozen functional groups. The Borland court held this bore almost no resemblance to the hundreds of Lotus commands arranged in dozens of menus (although it might bear on the copyrightability of sub elements of the 1-2-3 hierarchy).
209 “The effect is similar to an identical copy of a book with some paragraphs and lengthy footnotes inserted, and some voluminous appendices attached at the end.”
Id. at 212.
210 Each command must state a purpose; each must begin with a different letter than others in the same menu; each menu must have between five and seven commands; commands in a menu dealing with similar functions must be grouped together; frequently used executable operations must be located near the top of the inverted tree; commands must be arranged from left to right in decreasing frequency of use; commands in submenus must be grouped under the menu command to which they relate; and each menu must fit on one line of the display screen.
211 Instead of “Copy,” defendant might have chosen,
e.g., “Replicate,” “Duplicate,” “Ditto,” “Reproduce,” or “Repeat.” Even if there were only two possible words for each command, there would be an astronomical number (2 to the 469th power) of different menu trees with identical structure but variation in names.
212 The court distinguished the mere existence of functional considerations from the existence of functional considerations that limit the number of forms of expression.
213 The feature can be switched “on” or “off” at the user’s option.
214 The court had earlier defined a macroinstruction: “Rather than going step-by-step through the same sequence of commands each time there is a need to perform a particular function, the user may store a sequence of command terms as a ‘macroinstruction’, commonly called a ‘macro’, and then, with one command stroke that invokes the macro, cause the programmed computer to execute the entire sequence of commands.”
Lotus Dev. Corp. v. Paperback Software Int’l, 740 F. Supp. 37, 64, 15 U.S.P.Q.2d 1577, 2 C.C.H. Computer Cases ¶ 46,310 (D. Mass. 1990).
215 The court noted the existence of two different ways to emulate, in a system designed on the basis of a particular menu tree (the first system), the processing effected by a different menu tree (the second system). One way is to translate the instructions written in the second command language into the first command language, and permanently to substitute the latter sequence of instructions for the first in the program. The court referred to this as a “one-time” macro translator. Another way is to incorporate in the program a representation of the second menu command structure. Each time an emulation is required, control is transferred to that second command structure, which then executes the instruction. The court styled this an “on-the-fly” macro translator.
An analogy (not suggested by the court) may be made to English text describing a computational method, and embodying within it a portion of French text describing (in French) a certain mathematical computation that is one sequence of steps in the overall method. A one-time translator would translate the French text into English and then replace the French text permanently with that resulting English text. An on-the-fly translator would incorporate a system for effecting the computation in French each time it was to be made, and then returning the result of each such computation to the English text for whatever further use was to be made of it.
Defendant’s Reader Key system embodied an on-the-fly translator. That is, defendant’s program incorporated plaintiff’s command structure. Each time a “/” command was encountered, control shifted to that portion of the program embodying plaintiff’s command structure. After the command following the “/” was implemented, command transferred back to defendant’s command structure. The court noted that its determination was limited to use of an on-the-fly system, and that no indication should be drawn as to whether copying of plaintiff’s command structure for the purpose of one-time translation would be viewed similarly under copyright law.
217 The court also stated that a user would understand that defendant used a copy of plaintiff’s menu structure when executing a macro.
218.3 A truss is a group of beams that support a roof.
218.4 Plaintiff’s expert testified that 2% of the code was similar; defendant’s expert testified 1% of the code was similar. The opinion contains no discussion of whether there may have been non-literal similarity of code.
218.5 This court denominated the user interface as embodying some of the “non-literal” aspects of the program (as opposed to the literal aspects embodied in the code). Some courts appear to limit the term “non-literal aspects” to characteristics of the code other than actual content (i.e., to the structure, sequence and organization of the code). Such courts would likely consider the characteristics of the user interface to be part of the “look and feel” of the program, as opposed to the non-literal aspects.
218.6 The court put at the high end of this spectrum the “distinctive garb of the computer-generated Ninja,” and at the low end “a simple computer prompt asking the user to fill in the blank.”
218.10 It appears, however, that what the court considered to be the compilation was the interface, not the program.
219 Synercom Technology Inc. v. University Computing Co., 462 F. Supp. 1003, 199 U.S.P.Q. 537, 7 CLSR 1 (N.D. Tex. 1978). An input “format” is the arrangement of data to be input to the computer so that the computer will recognize each item for what it is and for what its form is. As to each item there is a prescribed location (e.g., sixth location in the format), unit (e.g., meters), and particular manner of representation (e.g., six-digit decimal form with two digits to the right of the decimal point). Format is a concept that may be expressed by means of input format forms, which are specially prepared forms permitting insertion of the input data in the proper arrangement and form.
221 Id. at 545. Note that it was not the formats (i.e., the concepts) which were copyrighted, but rather the format forms. Confusion between the two permeates the opinion and makes it more difficult to understand.
225 The court acknowledged there were many more possible format choices than ways to shift gears.
230.08 “The purpose of the SACS input formats is to mediate between the user and the program, identifying what information is essential and how it must be ordered to make the program work. The output formats structure the results of calculations performed by the program informatively to the user. These formats do not self-evidently convey only an idea’. ”
31 U.S.P.Q.2d at 1647.
230.09 “In the middle of the abstraction spectrum sit user interfaces such as that of Lotus 1-2-3, whose menu structure, including its long prompts, contains numerous expressive features.”
31 U.S.P.Q.2d at 1647.
230.14 Specifically, the court deemed the following to be included in the
scenes a faire doctrine: aspects serving functional purposes, and elements dictated by external factors, such as hardware standards, mechanical specifications, software standards, compatibility requirements, design standards, user practices and demands, and computer industry programming practices.
Id. 230.16a 17 U.S.C. § 101. One might also contemplate whether such a program is a “compilation”: “a work formed by the collection and assembling of preexisting materials, or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term ‘compilation’ includes collective works.”
230.16e The court noted that the alternative—requiring 50 pages of code and a filing fee for each program—would impose burdens on applicants and the Office.
230.18 Defendant further alleged that it removed from its service each of the photos as soon as it learned that they were stored there, and that it thereafter monitored the service to prevent the storage of additional photos of plaintiff.
230.19 17 U.S.C. § 106 provides that the owner of a copyright:
… has the exclusive rights to do and to authorize any of the following: … to distribute copies … of the copyrighted work to the public …; … and (5) in the case of … pictorial … works, … to display the copyrighted work publicly.
230.23 In Findings of Fact Nos. 10, 11 the court described an electronic bulletin board:
“An electronic bulletin board consists of electronic storage media, such as computer memories or hard disks, which is attached to telephone lines via modem devices, and controlled by a computer.”
* * *
“Third parties, known as ‘users,’ of electronic bulletin boards can transfer information over the telephone lines from their own computers to the storage media on the bulletin board by a process known as ‘uploading.’ Uploaded information is thereby recorded on the storage media. Third party users can also retrieve information from the electronic bulletin board to their own computer memories by a process known as ‘downloading.’ Video game programs, such as Sega’s video game programs, are one kind of computer programs or information which can be transferred by means of electronic bulletin boards.”
230.25 The court rejected defendants’ argument that the copiers were also used to make back-up copies and for “game development.” “There is no need to make archival copies of ROM game cartridges. This is because the ROM cartridge format is not susceptible to breakdown and because defective cartridges are replaced by Sega … . The copiers are advertised and sold by Defendant’s MAPHIA bulletin board for $350 … . The video game programs advertised by Sega sell for between $30 and $70 … . It is unlikely that customers would purchase a copier to back-up games, which are on reliable cartridges, for this price.” Findings of Fact Nos. 36, 37.
230.26 That Act proscribes “intentionally access[ing] without authorization a facility through which an electronic communication service is provided.”
18 U.S.C. § 2701(a).
230.30 Because of this finding, the court found it unnecessary to address vicarious infringement.
230.32 According to the court, the Internet is a world-wide network of some 60,000 networks (comprising about 7 million computers) with 25 million users (that number doubling each year). Internet services include e-mail, Usenet news groups, file exchanges, and the World Wide Web (a distributed hypertext information service accessed using a web browser).
923 F. Supp. at 1238 n.1.
“The Internet today is a worldwide entity whose nature cannot be easily or simply defined. From a technical definition, the Internet is the set of all interconnected IP networks’—the collection of several thousand local, regional and global computer networks interconnected in real time via the TCP/IP Internetworking Protocol suite …”
907 F. Supp. at 1365 n.2, quoting from Dern,
Internet Guide for New Users 16 (1994).
230.33 The court held that unauthorized public disclosure did not constitute publication for purposes of the fair use defense.
230.34 According to the opinion, Usenet news groups permit users of systems subscribing to the groups to read and post messages on the topic of the group. Once posted, a message is distributed to the computers of all systems which subscribe to that group. There are thousands of Usenet groups, with 50,000 postings each day.
The Usenet is “a worldwide community of electronic BBSs that is closely associated with the Internet and with the Internet community. The messages in Usenet are organized into thousands of topical groups, or Newsgroups … . As a Usenet user, you read and contribute (post) to your local Usenet site. Each Usenet site distributes its users’ postings to other Usenet sites based on various implicit and explicit configuration settings, and in turn receives postings from other sites. Usenet traffic typically consists of as much as 30 to 50 megabytes of messages per day. There is no specific network that is the Usenet. Usenet traffic flows over a wide range of networks, including the Internet and dial-up phone links.”
907 F. Supp. at 1365 n.4, quoting Dern,
supra note 230.32, at 196–97.
230.35 However, it had suspended subscribers who violated the terms of their contracts. Although, it might be possible for the provider to screen certain words, or to screen all communications from a particular subscriber.
230.36 The central Church received revenues from churches licensed to use the information, and those churches received revenues from parishioners’ donations for services based on the information.
230.37 Among the measures used were locked cabinets, safes, logging and identification of the materials, limited availability, electronic sensors attached to documents, locked briefcases during transportation, alarms, photo ID’s, security personnel, and confidentiality agreements for all persons with access.
230.40 “Although the Internet is a new technology, it requires no great leap of faith to conclude that because more than 25 million people could have accessed the newsgroup postings from which [defendant] alleges he received the … works, these works would lose their status as trade secrets. While the Internet has not reached the status where a temporary posting on a newsgroup is akin to publication in a major newspaper or on a television network, those with an interest in using the Church’s trade secrets to compete with the Church are likely to look to the newsgroup. Thus, posting works to the Internet makes them generally known ‘to the relevant people—the potential competitors’ of the Church.”
923 F. Supp. at 1256.
230.41 The court saw the second element as a showing that notice is impossible or would render further action fruitless.
230.44 The court did not distinguish between RAM and data storage devices that are less transient in nature.
230.46 1995
907 F. Supp. at 1369. “Plaintiffs’ theory would create many separate acts of infringement and, carried to its natural extreme, would lead to unreasonable liability. It is not difficult to conclude that [the poster] infringes by copying a protected work onto his computer and by posting a message to a newsgroup. However, plaintiffs’ theory further implicates a Usenet server that carries [the poster’s] message to other servers regardless of whether that server acts without any human intervention beyond the initial setting up of the system. It would also result in liability for every single Usenet server in the worldwide link of computers transmitting [the poster’s] message to every other computer. These parties, who are liable under plaintiffs’ theory, do no more than operate or implement a system that is essential if Usenet messages are to be widely distributed. There is no need to construe the Act to make all of these parties infringers.”
Id.The court also analyzed direct infringement by Netcom by analogy to communications common carriers. “In a sense, a Usenet server that forwards all messages acts like a common carrier, passively retransmitting every message that gets sent through it. Netcom would seem no more liable than the phone company for carrying an infringing facsimile transmission … . holding such a server liable would be like holding the owner of the highway … liable for the criminal activities that occur on its roads. Since other similar carriers of information are not liable for infringement, there is some basis for exempting Internet access providers from liability for infringement by their users.”
Id. at 1369 n.12.
The court did note, however, that access providers are not natural monopolies, required to carry all traffic, and that common carriers have statutory exemptions for liability. The court further noted that the federal Information Infrastructure Task Force (“IITF”) recommended that no similar exemption be enacted for direct infringement by service providers.
230.50 To plaintiff’s argument that liability should attach to a party that refuses to delete infringing files, the court responded that liability for direct infringement cannot be based on knowledge.
230.51 Id. at 1373 n.19. The court recognized that the IITF Report recommended strict liability for BBS operators so as not prematurely to deprive the system of an incentive to force content providers to reduce the level of infringement, by requiring indemnification, by purchasing insurance, and (where possible) by screening out infringement. That report also notes that in some instances the identity of the direct infringer is unknown.
230.52 Plaintiffs argued that Netcom’s contracts with subscribers gave Netcom the right to take remedial action against them, and also prohibited copyright infringement and included an indemnity on behalf of Netcom for injury to third parties. Netcom argued it could not possibly screen, a contention that plaintiffs challenged.
230.53 On the first fair use criterion (purpose and character of the use), the court determined that Netcom’s use was commercial, but also benefitted the public. Moreover, defendant received no direct financial benefit from the acts of infringement; Netcom gained nothing from the content of the information available to its subscribers over the Internet. This factor weighed in Netcom’s favor.
The court held that the second factor (nature of work) was not important because Netcom’s use of the works was simply to facilitate their posting to the Usenet, an entirely different purpose than was plaintiff’s use. On the third factor (amount used), although Netcom copied all of the works, it also copied no more than necessary to function as a Usenet server. On the fourth and most important factor (effect on market) there was a genuine issue of fact.
230.55 The court held that the unauthorized reproduction of software in the memory of a computer constituted infringement. It is unclear from the opinion just what the infringing act was.
Defendant was not alleged to have created a derivative work. Accordingly, it would appear that the infringement comprised copying derivative works created by plaintiffs, that plaintiffs should have secured registrations for those derivative works, and that the court should not have entertained this suit until such had taken place.
230.56 United States v. Kenadek, No. CR 94-10221-MLW (D. Mass.); see Andrews,
Computer Ind.
Lit.
Rep, April 6, 1995, at 20293.
230.58 17 U.S.C. § 106 provides that “the owner of copyright … has the exclusive rights to do and authorize … (3) to distribute copies … of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending… .”
230.59 17 U.S.C. § 109(a) provides: “Notwithstanding the provisions of section 106(3), the owner of a particular copy … lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy… .”
230.60 The court noted in another context that certain copies acquired by defendants emanated from two authorized Microsoft distributors, neither of which was authorized to convey stand-alone copies. The opinion does not discuss how these two distributors acquired their copies. If they acquired them from Microsoft or through an authorized distribution chain, and there was an authorized actual sale prior to or upon the acquisition, there had presumably been a “first sale.” However, this accounted for only a small portion of the copies involved.
230.63 They “provided the layout and graphic design of the screens and reports to be generated, selected all of the data that was to be included, and designed the layout and presentation of that data.”
Id. at 1056.
232 740 F. Supp. at 63. Both programs used letters across the top to designate columns, and numbers down the left side for rows. Both had “two-line moving cursor menus,” called up by the “slash” key (“/”), with selection designated by the “Enter” key or the first letter of the selected menu item. In both programs some frequently used commands are executable by function keys, but generally key assignments are different as between the programs. Both had the capability to assign and execute macroinstructions embracing menu choices, keyboard commands and special macroinstructions.
A “column” is a line, generally several spaces wide, that runs vertically down the screen or page. A “row” is a line, which may be several spaces high, that runs horizontally across the screen or page.
A “cursor” is a small highlighted area of the screen, whose location on the screen is controlled by the user, to denote the screen location currently under consideration.
A “menu” is a list of options, typically commands or submenus. It conveys to the user the choices available at a particular point in the program. The program may have many menus. Typically an item is elected from a menu by either moving the cursor to the desired item and depressing the “Enter” key, or by typing the first letter of the desired item (which means that no two items in a given menu can begin with the same letter).
A “command” is an instruction from the user, entered in some manner through the keyboard or other input device, to control processing.
A “macroinstruction” or “macrocommand” is a command that is custom made by the user, utilizing a capability provided by the program, for executing a series of commands with a single or limited number of keystrokes. The use of macroinstructions saves effort and time, and reduces error.
235 740 F. Supp. at 55. For an expansive treatment of
Synercom, see the discussion elsewhere in
§ 4.04[1] of this Treatise.
Synercom held that the idea in that case merged with the expression in that case, and that therefore no copyright protection was available. The Lotus court ignored the fact that this Synercom holding was limited to the facts of that case, and attempted to generalize it into a holding that non-literal sequence and order is inseparable from idea. Synercom neither so held nor so implied.
237 “If the intellectual effort and creativity embodied in a user interface were protectable only by trade secret law, the length of protection for computer programs would be very short—merely the time it takes to examine a program and then duplicate the nonliteral elements in a newly written computer program.”
740 F. Supp. at 56.
239 In this area of the opinion the court goes off on unhelpful tangents. “To hold otherwise would be to deny copyright protection to the most original and least obvious products of the creative mind merely because the marketplace accepts them as distinctively ‘functional.’ Such a rule would grant copyright protection for only those products that fall far short of being the best available.”
740 F. Supp. at 58. First, it is questionable whether copyright theory recognizes degrees of originality. A work is original if it is not copied; to speak of the “most original” is akin to speaking of the “most pregnant.” Perhaps the court meant “most creative.” Secondly, the reference to “least obvious” is unnecessary and unhelpful, as it may confuse the standards for copyright (unrelated to obviousness) with those for patent (one of which is non-obviousness).
240 740 F. Supp. at 58-59. According to the court, protecting such an “obvious” expression would amount to protecting the idea. The court cited little authority for this proposition.
243 In the court’s terminology: “FIRST, in making the determination of ‘copyrightability,’ the decisionmaker must focus upon alternatives that counsel may suggest, or the court may conceive,
along the scale from the most generalized conception to the most particularized, and choose some formulation—some conception or definition of the ‘idea’—for the purpose of distinguishing between the idea and its expression.”
740 F. Supp. at 60 (emphasis by the court).
244 “SECOND, the decisionmaker must focus upon whether an alleged expression of the idea is limited to elements essential to expression of
that idea (or is one of only a few ways of expressing the idea) or instead includes identifiable elements of expression not essential to every expression of that idea.”
740 F. Supp. at 61 (emphasis by the court).
245 “THIRD, having identified elements of expression not essential to every expression of the idea, the decisionmaker must focus on whether those elements are a substantial part of the allegedly copyrightable work.”
740 F. Supp. at 61. Substantiality must be measured on a qualitative as well as quantitative scale.
Id.
246 The court declared that it did not find helpful a discussion of “look and feel.” In its view earlier cases referring to that concept dealt with the issue of infringement, rather than copyrightability. Further, the court regarded the concept as a conclusion, rather than a rationale.
247 The opinion does not elaborate on the basis for the court’s conclusions as to obviousness.
248 This, because the number of keys available for this is limited (in particular, numbers and letters would be unsuitable), and because the frequency with which the menu must be called up requires that it be easily implemented.
249 As set forth by the court, the menu commend system of VisiCalc, the first commercially successful spreadsheet program, displayed at the top of the screen the following main menu command line: “BCDEEFGIMPRSTVW.” Each of the letters in the command line is the first letter of a particular command; for example, “B” stands for “Blank,” and “C” for “Clear.” Some of these commands call up sub—menus, each also consisting of a character string of initials. In each command line the letters are set forth in alphabetical order.
250 Some of the parameters noted by the court were overall structure, order of commands in each menu line, choice of letters or words in each line, style of representation, type of menu system (“pull-down,” one or more line moving cursor, or command-driven interfaces), and long prompts.
252 The court viewed the statutory provision on compilation (
17 U.S.C. § 101) as unnecessary to this conclusion, but as reinforcing it.
253 Other spreadsheets have different menu command structures. The court took note in this regard of Multiplan, Framework II, SuperCalc4, Excel, Symphony, MathPlan, and PFS: Professional Plan.
256 Defendant had concluded that to market a package competitive with plaintiff’s 1-2-3, defendant’s package had to be “compatible” with 1-2-3. With such compatibility, users could transfer spreadsheets created with 1-2-3 to defendant’s package without loss of functionality for embedded macros; also, users would not have to be retrained.
The court found that defendant erred in this conclusion, as Excel had successfully competed without exact compatibility with 1-2-3; also, copying the menu structure was not the only way to achieve compatibility.
More importantly, the court held that even if infringement were the only way to achieve compatibility, it would still be unlawful. A desire to achieve compatibility “cannot override the rights of authors to a limited monopoly in the expression embodied in their intellectual ‘work.’ ”
740 F. Supp. at 49.
257 740 F. Supp. at 68. To be sure, there were differences. For example, defendant’s menu lines began with a help “?” command; some of defendant’s menu lines contained additional commands at the end; and defendant’s menu was at the bottom (rather than the top) of the screen. But a “laundry list of specific differences … will not preclude a finding of infringement where the works are substantially similar in other respects … When analyzing two works to determine whether they are substantially similar, courts should be careful not to lose sight of the forest for the trees.”
Id., quoting from
Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 618 (7th Cir.),
cert. denied 459 U.S. 880 (1982).
258 “If one publishes a 1,000 page book of which only a 10-page segment is an unauthorized reproduction of copyrighted material, and if the 10-page segment is a qualitatively substantial part of the copyrighted work, it is not a defense to a claim of infringement that the book is 99% different from the copyrighted material.”
740 F. Supp. at 70.
260 Defendant urged in the name of object and policy that the idea/expression distinction created unnecessary uncertainty that could be avoided by a bright line test; that promoting creativity required narrow copyright protection for programs beyond code; and that encouraging standardization obviated copyright protection for a user interface. “Policy arguments advanced without focusing on whether they are inconsistent with the mandates of legislation … are fundamentally flawed …”
740 F. Supp. at 71.
262 “If anything, user interfaces have become more expressive and more communicative since 1976 and 1980.”
740 F. Supp. at 76–77.
264 Microsoft did this in Excel, and Lotus itself had done it for translating across different versions of 1-2-3.
266 An “add-in” is a program designed for use in conjunction with another program. Lotus had published a product called Lotus Developer Tools to help developers write add-in programs. “Transaction and marketing costs … would tend to screen out the [add-in] unless its innovative features made it very attractive to potential users, but this functional effect of copyright law would be entirely consistent with the objects and policies of that law …”
740 F. Supp. at 79.
270 Id. The court noted that the Copyright Office uses different forms to register different types of works, and that the seven categories of works listed in the statute are not mutually exclusive, as there is overlap.
271 “This form of registration is particularly appropriate where the chief function, and the bulk of creative expression, of a particular computer program is the creation of a series of pictorial images on the computer screen as with video games.”
740 F. Supp. at 81.
271.2 For example, “copy” could instead be called “clone,” “ditto,” “duplicate,” “imitate,” “mimic,” “replicate,” or “reproduce.”
271.3 The court acknowledged that other courts had dealt with the issue of whether the hierarchy plus other elements, such as the user interface (generally a screen display) was protectable by copyright.
271.7 17 U.S.C. Section 102(b) provides: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”
271.8 Accordingly, the court found it unnecessary to consider whether the hierarchy might also be a system, process, or procedure.
271.10 “In effect, the district court limited Lotus 1-2-3’s’method of operation’ to an abstraction.”
Id. at 816.
271.14 49 F.3d at 817. The court was also dismayed by the prospect that affording protection to the hierarchy would foreclose users who wrote macros from using those macros in a different program. “We think that forcing the user to cause the computer to perform the same operation in a different way ignores Congress’ direction in Section 102(b) that methods of operation’ are not copyrightable. That programs can offer users the ability to write macros in many different ways does not change the fact that, once written, the macro allows the users to perform an operation automatically.”
271.19 “It is no accident that patent protection has preconditions that copyright protection does not—notably, the requirements of novelty and non-obviousness—and that patents are granted for a shorter period than copyrights.”
Id. 271.20 “Applying copyright law to computer programs is like assembling a jigsaw puzzle whose pieces do not quite fit.”
Id. at 820.
271.21 It could be argued that Judge Boudin here engages in a rough-hewn form of the
Altai analysis that the majority asserted was not applicable to the instant facts.
271.22 49 F.3d at 821. “Lotus has already reaped a substantial reward for being first; assuming that the Borland program is now better, good reasons exist for freeing it to attract old Lotus customers: to enable the old customers to take advantage of a new advance, and to reward Borland in turn for making a better product. If Borland has not made a better product, then customers will remain with Lotus anyway.”
Id. 271.23 Id. at 822. Judge Boudin observed that certain solutions (for example, a very short-term copyright) are not within the power of courts to implement.
273 Accolade used a device called a “disassembler” or “decompiler,” which reads and stores each bit in the program, and then translates this object code into source code. According to the court, such devices are commercially available and widely used in the software industry.
274 This was presumably done in order to identify that portion of the code responsible for compatibility. The portions of code responsible for the actual game interaction were different among the three games, whereas the code used to establish compatibility was presumably identical or similar in all three programs.
275 In their initial reverse engineering they had noted that “it is possible that some future Sega peripheral device might require it for proper initialization.”
276 The four arguments were: intermediate copying does not infringe unless the end product is substantially similar to the copyrighted work; disassembly of object codes so as to understand ideas and functional concepts embodied therein is lawful because § 102(b) exempts ideas and functional concepts from copyright; disassembly is authorized by § 117; and disassembly of object code so as to understand ideas and functional concepts embodied therein comprises fair use.
277 The court stated that no case cited by either party in support of its position on the lawfulness of intermediate copying, in fact contained a holding on the lawfulness of intermediate copying.
282 Slip op. at 24. “The ideas and functional concepts underlying many types of computer programs, including word processing programs, spreadsheets, and video game displays, are readily discernable without the need for disassembly, because the operation of such programs is visible on the computer screen. The need to disassemble object code arises, if at all, only in connection with operations [sic] systems, system interface procedures, and other programs that are not visible to the user when operating—and then only when no alternative means of gaining an understanding of those ideas and functional concepts exists.”
Id. Quare as to whether this statement embodies the
Whelan view of a program’s “idea.”
284 In Section 906 Congress authorized copying a “mask work” in the course of reverse engineering a chip. According to Sega, that Congressional express authorization constituted a determination that other forms of copying of programs are prohibited. But the court, which stated that a mask work is a physical representation of the program embedded in the chip, found that the SCPA enacted a “sui generis” form of protection apart from copyright. That Congress included in the SCPA an exception for reverse engineering of a mask work says nothing about Congress’ intent with regard to disassembly of programs. In enacting the SCPA, Congress expressly disavowed any intent to affect the scope of copyright protection.
285 Section 107 lists 4 non-exclusive factors to be considered in determining whether there is a fair use: (1) purpose and character of the use; (2) nature of the copyrighted work; (3) amount and substantiality used in relation to the entire copyrighted work; and (4) effect of use on the potential market for or value of the copyrighted work.
286 The court conceded that, by facilitating entry of a new competitor, disassembly undoubtedly “affected” the market for Genesis compatible games indirectly. But video game users typically use more than one game, so that there was no basis for assuming that Accolade’s games significantly affected the market for Sega’s.
288 “We do not intend to suggest that disassembly is always the only available means of access to those aspects of a computer program that are unprotected by copyright. As we noted…
supra, in many cases the operation of a program is directly reflected on the screen display and therefore visible to the human eye. In those cases, it is likely that a reverse engineer would not need to examine the code in order to understand what the program does.” Slip op. at 44.
289 A clean room procedure is one “used in the computer industry in order to prevent direct coping of a competitor’s code during the development of a competing product. Programmers in clean rooms are provided only with the functional specifications for the desired program.” Slip op. at 46.
291 Apparently relying on the rule that the ambit of fair use is more circumscribed for an unpublished work, Sega argued that its programs were unpublished. But the court noted it recently had held that “computer game cartridges that are held out to the public for sale are published works for purposes of copyright.” Slip op. at 48, n.8.
293 Sega claimed trademark infringement and false designation of origin; Accolade counterclaimed for false designation of origin.
294 “Functional features of a product are features ‘which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product.’ ” Slip op. at 63, quoting from Ninth Circuit precedent. A product feature is functional if essential to the use or purpose of the article, or if it affects the cost or quality of the article. A trademark does not protect essentially functional or utilitarian product features.
294.3 “Allowing a computer programmer to hide his ideas, processes and concepts in copyrighted object code defeats the fundamental purpose of the Copyright Act—to encourage the creation of original works by protecting the creator’s expression while leaving the ideas, facts and functional concepts in the free marketplace to be built upon by others.”
The court did, however, find copyright infringement in defendant’s conduct whereby it made copies of plaintiff’s operating system programs by downloading them from the computer of a licensee of plaintiff.
294.10 Facts extracted included such items as a listed boat’s manufacturer, model, length, price, and location, and the url of the web page containing the listing.
294.11 Plaintiff’s claims for a declaration of rights under the state trespass law, and under the terms and conditions of defendant’s website, had earlier been dismissed.
296 “A ‘derivative work’ is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted … .”
17 U.S.C. § 101.
297 In the court’s view, a derivative work must be fixed to be protected by copyright, but need not be fixed in order to infringe. Under the Act, “copies” are material objects in which a work is “fixed” by any method. But the Act’s definition of “derivative work” lacks any reference to fixation. Further, the Ninth Circuit has held that a work need not constitute copyrightable subject matter in order to be a derivative work.
However, the court noted that “[e]ven if we were to rely on the Copyright Act’s definition of ‘fixed,’ we would similarly conclude that the resulting display is not ‘embodied’ …”
964 F.2d at 968.
298 “The Game Genie merely enhances the audiovisual displays (or underlying data bytes) that originate in Nintendo game cartridges. The altered displays do not incorporate a portion of a copyrighted work in some concrete or permanent
form.”
964 F.2d at 968 (emphasis by the court).
302 The court asserted that technology often moves forward by improving rather than replacing. It noted the existence of third party spell-checkers used in connection with word processing programs. “These applications, as well as countless others, could not be produced and marketed if courts were to conclude that the word processor and spell-checker combination is a derivative work based on the word processor alone.”
964 F.2d at 969.
304 The court looked to the four nonexclusive fair use factors set out in
17 U.S.C. § 107: purpose and character of use (including whether commercial); nature of copyrighted work; substantiality of portion used; and effect of use on potential market for work.
306 On the potential injury point, the court concluded that the district court did not commit clear error in concluding that plaintiff had not issued, or considered issuing, altered an version of its work, and failed to show the reasonable likelihood of such a market.
308 Because it found no evidence of similarity of, or plaintiff’s access to, the code, the court rejected plaintiff’s claim that code had been copied. The opinion focused on the allegation that screen displays were copied.
309 The court stated that only two courts had decided whether copyright in a program provided protection to its screen displays.
Broderbund held affirmatively, and
Softklone held negatively. The court believed that the Copyright Office’s determination in June 1988 not to issue separate registrations for program and display called into doubt
Softklone’s holding.
310 The court was troubled by the fact that more than one program can generate the same screen display.
311 The court saw as the only (and unacceptable) alternative to this a requirement to prove infringement of the program copyright by showing substantial similarity of code. As seen by the court, the problem there was that if defendant “reverse engineered the screen displays” without access to code, plaintiff would be unable to show infringement, so that little protection would be given screen displays.
313 The format was: a heading at the top of each screen with underscored program name; listing the available tools at the bottom of each screen; and listing functions or selections in the middle of the screen.
314 This comprised: use of space bar to move cursor down list of selections; use of backspace key to move cursor up; use of return key to implement selection; and use of number selection to edit entry.
315 Unwarranted because “unlike a patent, a copyright gives no exclusive right to the art disclosed… .”
Id. at 1329.
316 The screen display showed this just below the underscored program title (left side for department, and right for tooling).
317 This was found necessarily incident to listing the shops to which rates must be assigned.
318 Items sought included: part number, part name, customer name, job number, number of pieces, machining ratio, and scrap rate.
319 This form suggests that identifying a job entails more than simply naming the person requesting the estimate, and also that certain attributes of the part must be considered when identifying the job.
320 See e.g.,
Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 9 U.S.P.Q.2d 1322 (9th Cir. 1988);
Williams Electronics Inc. v. Artic Int’l, Inc., 685 F.2d 870 (3d Cir. 1982);
Stern Electronics, Inc. v. Kaufman, 669 F.2d 852, 213 U.S.P.Q. 443 (2d Cir. 1982);
Atari, Inc. v. North Am. Philips Consumer Electronics Corp., 672 F.2d 607, 214 U.S.P.Q. 33 (7th Cir. 1982),
cert. denied sub nom. North Am. Consumer Elecs. Corp. v. Atari, 103 S. Ct. 176 (1982);
Midway Mfg. Co. v. Dirkschneider, 543 F. Supp. 466, 214 U.S.P.Q. 417 (D. Neb. 1981);
Midway Mfg. Co. v. Strohon, 564 F. Supp. 741, 219 U.S.P.Q. 42 (N.D. Ill. 1983);
Midway Mfg. Co. v. Bandai-America, Inc., 216 U.S.P.Q. 812 (D.N.J. 1982);
Atari, Inc. v. Amusement World, Inc., 547 F. Supp. 222, 215 U.S.P.Q. 929 (D. Md. 1981);
Bally/Midway Mfg. Co. v. United States International Trade Com., 219 U.S.P.Q. 97 (Fed. Cir. 1983);
Atari, Inc. v. Williams, 217 U.S.P.Q. 746 (E.D. Cal. 1981); Nintendo of Am. v. Bay Coin Distribs., 1982 Copr. L. Dec. ¶ 25,409 (E.D.N.Y. 1982); Atari, Inc. v. Armenia, Ltd., 1981 Copr. L. Dec. ¶ 25,328 (N.D. Ill. 1981).
322 The three “waves” of copyright protection cases are the code content cases (first wave), the program structure cases (second wave), and the “look and feel” cases (third wave).
323 He did not create the software and stated it would require another ten to twenty hours to “perfect” it.
Id. at 1522.
324 This witness defined systems level design as “defining the types of functions for the software to perform and how it will perform those functions.”
Id., n.3.
330 Payroll, human resources and security.
331 Plaintiff asserted that the purpose of the report was to emphasize similarities, not differences.
333 Section 410(c) provides: “In any judicial proceeding the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. …”
334-338 [Reserved].
339 See, e.g.,
Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 9 U.S.P.Q.2d 1322 (9th Cir. 1988);
Williams Electronics Inc. v. Artic International, Inc., 685 F.2d 870 (3d Cir. 1982);
Stern Electronics, Inc. v. Kaufman, 669 F.2d 852 (2d Cir. 1982),;
Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 214 U.S.P.Q. 33 (7th Cir. 1982),
cert. denied sub nom. North American Consumer Electronics Corp. v. Atari, 103 S. Ct. 176 (1982);
Midway Mfg. Co. v. Dirkschneider, 543 F. Supp. 466, 214 U.S.P.Q. 417 (D.Neb. 1981);
Midway Mfg. Co. v. Strohon, 564 F. Supp. 741, 219 U.S.P.Q. 42 (N.D. Ill. 1983);
Midway Mfg. Co. v. Bandai-American, 216 U.S.P.Q. 812 (D. N.J. 1982);
Atari, Inc. v. Amusement World, Inc., 547 F. Supp. 222.
215 U.S.P.Q. 929 (D. Md. 1981);
In re Certain Coin-Operated Audio-Visual Games, 714 F.2d 1117, 219 U.S.P.Q. 97 (Fed. Cir. 1983);
Atari, Inc. v. Williams, 217 U.S.P.Q. 746 (E.D. Cal. 1981); Nintendo of American v. Bay Coin Distributors, 1982 Copy. L. Dec. par. 25,409 (E.D. N.Y. 1982); Atari, Inc. v. Armenia, Ltd., 1981 Copy. L. Dec. par. 25,328 (N.D. Ill. 1981).
340 Ashton-Tate Corp. v. Fox Software, Inc., CV 88-6837 TJH (C.D. Cal., Order of dismissal dated 11 Dec. 1990, filed 12 Dec. 1990).
341 Rudolph, Palitz v. Ashton-Tate Corp., USDC CD Cal. No.-6749-WMB, filed Dec. 17 1990.
342 “In Aftermath of Ruling, DBASE User Files Class Action,”
Comp. Ind. Litigation Repr., p 12369 (Jan. 14, 1991).
343 United States of America v. Borland International, Inc. and Ashton-Tate Corporation (N.D. Cal Civ. No. C 91-3666 MHP, filed 10/17/91).
344 56 Fed. Reg. 56096 (31 Oct. 1991).
345 Section IV of the Consent Decree, entitled “Injunction,” provides:
“A. Defendants are hereby enjoined and restrained from initiating or making any claim or counterclaim that asserts claims of copyright infringement in the command names, menu items, menu command hierarchies, command languages, programming languages and file structures used in and recognized by Ashton-Tate’s dBASE family of products, standing alone and apart from other aspects of those computer programs.
“B. Nothing in paragraph IV.A. shall preclude Defendants from asserting in any litigation the legal right to use the command names, menu command hierarchies, command languages, programming languages, and file structures or from asserting copyright protection in and copyright infringement of the computer program code (including its structure, sequence and organization) and other aspects of the user interface of Ashton-Tate’s dBASE family of products.
“C. Should the district court in the Boston action dismiss Lotus Development Corporation’s claims for copyright protection in its menu command hierarchy, Borland shall seek prompt resolution of the Los Angeles action in a manner consistent with the Boston court’s disposition and paragraph IV.A. above. Notwithstanding the foregoing, within a period of ninety (90) days from the entry of this Final Judgment, Borland shall use its best efforts to resolve the Los Angeles action in a manner consistent with paragraph IV.A. above; provided, however, that Borland shall dismiss with prejudice its claims in the Los Angeles action with in fifteen (15) days following the dismissal with prejudice of Fox’s counterclaims in the Los Angeles action.
346 Apple Computer, Inc. v. Microsoft Corp. and Hewlett-Packard Co., No. 88-20149-RPA (N.D. Cal. filed March 17, 1988).
349 “The mere fact that the Macintosh system software was designed so that the Macintosh interface could be used in conjunction with a variety of application programs written for the Macintosh computer, should not open the door to a construction at odds with the usual principles of contract law and the agreement’s evident purpose.”— F. Supp. at — (footnote omitted).
350 These defenses were (for Microsoft) license; waiver/estoppel; failure to state a claim for contributory infringement; uncopyrightable subject matter by virtue of functionality; lack of originality; uncopyrightable subject matter by virtue of
scenes a faire; lack of substantial similarity; preemption of the unfair competition claim; (for H-P) indispensable and unoriginal expression; fraud on the Copyright Office; uncopyrightable subject matter by virtue of functionality; and limited scope of protection.
351 The parties argued the effect of the December 1990 short opinion in Ashton-Tate Corp. v. Fox Software, Inc., but the Apple court saw that opinion as “unhelpful.”
353 The court initially declined to dismiss this claim, leaving the record open for Xerox to substantiate its allegations of a real and reasonable fear. However, a month later the count was dismissed.
354 Specifically,
17 U.S.C.§ 103(a), which states that protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work where such has been used unlawfully; Sec. 106(2), which grants to the copyright holder the exclusive rights to prepare derivative works; and Sec. 409(9), which requires an application to register a compilation or derivative work must include an identification of preexisting work that it is based on or incorporates.
356 The government purchased all right, title and interest to these machines, and there was no reservation of rights in plaintiff. There were no proprietary markings.