White-Smith Music Pub. Co. v. Apollo Co.
United States Supreme Court
209 U.S. 1 (1908)

Mr. Justice Day delivered the opinion of the Court.

[White-Smith, a copyright owner, sued to restrain copyright infringement of two musical compositions, “Little Cotton Dolly” and “Kentucky Babe,” published in the form of sheet music. The defendant, Apollo, was a seller of player pianos and of perforated paper rolls used in them (“piano rolls”).]

The manufacture of player pianos and the use of piano rolls has developed rapidly in recent years in this country and abroad. The record discloses that in the year 1902 from 70–75,000 of such instruments were in use in the United States and that from 1–1.5 million piano rolls were made in this country in that year.

It is evident that the question involved in the use of such rolls is one of very considerable importance, involving large property interests and closely touching the rights of composers and music publishers. The case was argued with force and ability, orally, and upon elaborate briefs.

Without entering into a detailed discussion of the mechanical construction of such instruments and rolls, it is enough to say that they are what has become familiar to the public in the form of mechanical attachments to pianos, such as the pianola, and the musical rolls consist of perforated sheets, which are passed over ducts connected with the operating parts of the mechanism in such manner that the same are kept sealed until, by means of perforations in the rolls, air pressure is admitted to the ducts which operate the pneumatic devices to sound the notes. This is done with the aid of an operator, upon whose skill and experience the success of the rendition largely depends. As the roll is drawn over the tracker board the notes are sounded as the perforations admit the atmospheric pressure, the perforations having been so arranged that the effect is to produce the melody or tune for which the roll has been cut.

The learned counsel for the parties to this action advance opposing theories as to the nature and extent of the copyright given by statutory laws enacted by Congress for the protection of copyright, and a determination of which is the true one will go far to decide the rights of the parties in this case. On behalf of the appellant it is insisted that it is the intention of the copyright act to protect the intellectual conception which has resulted in the compilation of notes which, when properly played, produce the melody which is the real invention of the composer. It is insisted that this is the thing which Congress intended to protect, and that the protection covers all means of expression of the order of notes which produce the air or melody which the composer has invented.

Music, it is argued, is intended for the ear as writing is for the eye, and that it is the intention of the copyright act to prevent the multiplication of every means of reproducing the music of the composer to the ear.

On the other hand, it is contended that while it is true that the copyright statues are intended to reward mental creations or conceptions, the extent of this protection is a matter of statutory law; that it has been extended only to the tangible results of mental conception; and that only the tangible thing is dealt with by the law, and its multiplication or reproduction is all that is protected by the statute.

The decisions, so far as brought to our attention in the full discussion had at the bar and upon the briefs, have been uniformly to the effect that these perforated rolls operated in connection with mechanical devices for the production of music are not within the copyright act. It was so held in Kennedy v. McTammany, 33 Fed. 584. In that case the learned judge said:

I cannot convince myself that these perforated strips of paper are copies of sheet music within the meaning of the copyright law. They are not made to be addressed to the eye as sheet music, but they form part of a machine. They are not designed to be used for such purposes as sheet music, nor do they in any sense occupy the same field as sheet music. They are a mechanical invention made for the sole purpose of performing tunes mechanically upon a musical instrument.

Again the matter was given careful consideration in Stern v. Rosey, 17 App. D.C. 562):

We cannot regard the reproduction, through the agency of a phonograph, of the sounds of musical instruments playing the music composed and published by the appellants, as the copy or publication of the same within the meaning of the act. The ordinary signification of the words “copying,” “publishing,” cannot be stretched to include it.

It is not pretended that the marks upon the wax cylinders can be made out by the eye or that they can be utilized in any other way than as parts of the mechanism of the phonograph.

Conveying no meaning, then, to the eye of even an expert musician, and wholly incapable of use save in and as a part of a machine specially adapted to make them give up the records which they contain, these prepared wax cylinders can neither substitute the copyrighted sheets of music nor serve any purpose which is within their scope. In these respects there would seem to be no substantial difference between them and the metal cylinder of the old and familiar music box, and this, though in use at and before the passage of the copyright act, has never been regarded as infringing upon the copyrights of authors and publishers.

Since these cases were decided Congress has repeatedly had occasion to amend the copyright law. The omission of Congress to specifically legislate concerning them might well be taken to be an acquiescence on the judicial construction given to the copyright laws. In the last analysis this case turns upon the construction of a statute, for it is perfectly well settled that the protection given to copyrights in this country is wholly statutory. Wheaton v. Peters, 8 Pet. 591; Banks v. Manchester, 128 U.S. 244, 253; Thompson v. Hubbard, 131 U.S. 123, 151; American Tobacco Co. v. Werekmeister, 207 U.S. 284.

Musical compositions have been the subject of copyright protection since 1831. When we turn to the consideration of the present Act it seems evident that Congress has dealt with the tangible thing, a copy of which is required to be filed with the Librarian of Congress, and wherever the words are used (copy or copies) they seem to refer to the term in its ordinary sense of indicating reproduction or duplication of the original. Two copies of a book, map, chart, or musical composition, etc., must be delivered at the office of the Librarian of Congress. Notice of copyright must be inserted in the copies of every edition published, if a book, or, if a musical composition, upon some visible portion thereof. An infringer “shall forfeit every sheet thereof, and one dollar for every sheet of the same found in his possession,” evidently referring to musical compositions in sheets. Throughout the Act it is apparent that Congress has dealt with the concrete, and not with an abstract, right of property in ideas or mental conceptions.

What is meant by a copy? We have already referred to the common understanding of it as a reproduction or duplication of a thing. Various definitions have been given by the experts called in the case. The one which most commends itself to our judgment is perhaps as clear as can be made, and defines a copy of a musical composition to be “a written or printed record of it in intelligible notation.”

It may be true that in a broad sense a mechanical instrument which reproduces a tune copies it; but this is a strained and artificial meaning. When the combination of musical sounds is reproduced to the ear it is the original tune as conceived by the author which is heard. These musical tones are not a copy which appeals to the eye. In no sense can musical sounds which reach us through the sense of hearing be said to be copies, as that term is generally understood, and as we believe it was intended to be understood in the statutes under consideration.

A musical composition is an intellectual creation which first exists in the mind of the composer; he may play it for the first time upon an instrument. It is not susceptible of being copied until it has been put in a form which others can see and read. The statute has not provided for the protection of the intellectual conception apart from the thing produced, however meritorious such conception may be, but has provided for the making and filing of a tangible thing, against the publication and duplication of which it is the purpose of the statute to protect the composer.

Also it may be noted in this connection that if the broad construction of publishing and copying contended of by the appellants is to be given to this statute it would seem equally applicable to the cylinder of a music box, with the mechanical arrangement for the reproduction of melodious sounds, or the record of the graphophone, or to the pipe organ operated by devices similar to those in use in the pianola. All these instruments were well known when these various copyright acts were passed. Can it be that it was the intention of Congress to permit them to be held as infringements and suppressed by injunctions? After all, what is the perforated roll? The fact is clearly established in the testimony in this case that even those skilled in the making of these rolls are unable to read them as musical compositions, as those in staff notations are read by the performer. It is true that there is some testimony to the effect that great skill and patience might enable the operator to read this record as he could a piece of music written in staff notation. But the weight of the testimony is emphatically the other way, and they are not intended to be read as an ordinary piece of sheet music, which, to those skilled in the art, conveys, by reading, in playing or singing, definite impressions of the melody.

These perforated rolls are parts of a machine which, when duly applied and properly operated in connection with the mechanism to which they are adapted, produce musical tones in harmonious combination. But we cannot think that they are copies within the meaning of the Copyright Act.

It may be true that the use of these perforated rolls, in the absence of statutory protection, enables the manufacturers thereof to enjoy the use of musical compositions for which they pay no value. But such considerations properly address themselves to the legislative, and not to the judicial, branch of the government. As the Act of Congress now stands we believe it does not include these records as copies or publications of the copyrighted music involved in these cases.

Notes

1. How important a factor was it that “even those skilled in the making of these rolls are unable to read them as musical compositions, as those in staff notations are read by the performer”?

How important a factor was it that “they are not intended to be read as an ordinary piece of sheet music, which, to those skilled in the art, conveys, by reading, in playing or singing, definite impressions of the melody”?

How important a factor was it that “[t]hese perforated rolls are parts of a machine which, when duly applied and properly operated in connection with the mechanism to which they are adapted, produce” a function of the machine?

[The picture at left used to illustrate these perforated rolls as part of a machine is, curiously, not a 70-year old relic from the heyday of Pianolas, but a modern picture circa 1990, which the North West Player Piano Association commissioned for use as its logo, and gave permission for its use here. A color version may be seen at the NWPPA webite, along with more information about how player pianos work.]

2. Is this decision rested purely on statutory construction? The copyright statute then in effect did not define “copy” as a verb or noun. Nor did the following 1909 Act. That waited until 1976, when Congress defined the noun but not the verb. (Do they have different meanings in current copyright law?)

In the absence of a statutory definition, the Court had to decide the common–sense meaning of “copy” and assume that Congress must have intended to adopt that. In deciding the common–sense meaning of the term, was the Court influenced by considerations of the economic value of piano rolls and what effect grant or denial of legal protection against piano rolls would have on the industries affected by the decision — on creative incentives?

3. In 1909, Congress amended the copyright laws so that piano rolls and phonograph records were specifically covered, along with books and sheet music. (The 1909 Act identified specific tangible things, such as books and sheet music, as copyright-protected, unlike the present, 1976 Act which protects kinds of work, such as literary works and musical works, and defines infringement as the unauthorized reproduction, distribution, etc. of a copy of a protected work. In 1909, mechanical reproductions of music joined books and sheet music.) After 1909, therefore, the doctrine of the White-Smith case no longer applied to its specific facts, although its underlying reasoning remained precedential. In 1976, Congress overturned White–Smith’s ruling that a copy of a work must be human–readable (rather than just machine–readable) to fall within the statute. Microfiches and CDs now are “copies” of works encoded or otherwise placed into them. What of EPROMs? Was that resolved in 1976?

4. White–Smith required not only human–readability (in fact) but intent (by the author) to communicate to humans. Was that requirement also dropped in 1976? Is that a separate issue? Does it impact different policies? Is machine language in a ROM chip intended to be human–intelligible, that is, intended to be read by human readers?

5. This is an MP3 file containing a 1916 Scott Joplin performance of the Maple Leaf Rag on a pianola (player piano). Presumably, any copyright in it escaped revival under the Mickey Mouse Forever Act or other similar legislation.

Brown Instrument Co v. Warner, Register of Copyrights
United States Court of Appeals for the District of Columbia
161 F.2d 910 (D.C. Cir. 1947), cert. denied, 332 U.S. 801 (1947)

Edgerton, J.

Appellant manufactures apparatus for mechanically recording such variables as temperature and pressure. The record is in the form of a line drawn by mechanical means on a calibrated graphic chart. The chart occupies a critical position in relation to, and co-acts with, the rest of the apparatus in the drawing of this line. Appellant undertook to copyright such charts. The Register of Copyrights rejected the application. Appellant then brought this suit against the Register for a declaratory judgment and a mandatory injunction. This appeal is from a judgment for the Register.

The evidence supports the findings and the findings require the conclusion. We agree with the court that the opinion of the Seventh Circuit Court of Appeals in Taylor Instrument Companies v. Fawley-Brost Co., 139 F.2d 98 (7th Cir. 1943), cert. denied, 321 U.S. 785 (1944), covers this case and is correct. We think, moreover, that the case is controlled by Baker v. Selden, 101 U.S. 99. That case involved blank forms for use in bookkeeping. They were intended to be written on by hand, and the blank forms now in suit are intended to be written on by a machine, but this difference is immaterial. Neither sort of forms is intended to communicate facts or ideas. Both sorts are intended solely for use in making records of facts.

Articles intended for practical use in cooperation with a machine are not copyrightable. White-Smith Music Pub. Co. v. Apollo Co., 209 U.S. 1 (1908). Both law and policy forbid monopolizing a machine except within the comparatively narrow limits of the patent system. In several patents on recording machines, the necessary printed chart is rightly claimed as one of the operative elements. Since the machines which cooperate with the charts in suit are useless without them, to copyright the charts would in effect continue appellant’s monopoly of its machines beyond the time authorized by the patent law.

Notes

1. Do you agree that anything patentable is by reason of that fact not copyrightable, or vice versa? See Mazer v. Stein, 347 U.S. 201 (1954) (no inconsistency between having design patent and copyright on same lamp). Is what is true for design patents, limited by statute to ornamental aspects of article of manufactures, necessarily true for utility patents?

Should the patentability of an article preclude protection by copyright?

2. A BIOS ROM in a personal computer is a ROM chip on the motherboard of the computer, into which has been encoded the basic input–output software for the computer. That includes the software that boots up the computer when it is turned on. In fact, without the BIOS chip you cannot run the computer; it is “indispensable to the operation of” the computer.

Is a BIOS ROM “a mechanical element of the [machine] of which it is an integral part”? What are the implications?

3. Have changes occurred in the copyright laws since Brown that affects its precedential value? 4. What are the prospects for success of my following business plan: I devise a spreadsheet package consisting of my book Spreadsheeting for Numskulls; my user–friendly, ultra–simple spreadsheet program The No–Brainer, which the book explains; and a limited supply of copyrighted forms (they are clearly printed with the legend © 1996, Prof. Stern) on which the program output can be printed. I have devised the program so that users need to use these forms, which provide a “frame” or “grid” for separating the cells of the spreadsheet. Unless users print out the results of their using the program onto my form, the printout just looks like a confusing jumble of numbers running together. I sell the initial package of book–program–sheets dirt cheap, but I charge a hefty price for refills of the copyrighted forms (the old Gillette razor–blade business model, also that of Nintendo and Sega).

My rival, that inveterate intellectual property pirate and free rider, Professor Nefarious, proceeds to market a computer program called No–Brainer Pal. NBP provides the user’s printer with a frame overlay, so that users who buy and use this piratical product can print out the frame along with the spreadsheet cells (as NBP’s directions explain). That makes it possible for users not to compensate me for my technology by buying refills of the copyrighted forms from me. I sue Professor Nefarious for direct and contributory copyright infringement.

Can I protect the integrity of my technology by using the copyright laws?

Apple Computer, Inc. v. Formula International Inc.
United States Court of Appeals for the Ninth Circuit
725 F.2d 521 (9th Cir. 1984)

Ferguson, Circuit Judge:

Formula International, Inc. (Formula) appeals from the district court’s grant of a preliminary injunction in favor of the plaintiff, Apple Computer, Inc. (Apple). The injunction prohibits Formula from copying computer programs having copyrights registered to Apple, from importing, selling, distributing, or advertising those copies, and from using the mark “Pineapple” or any other mark or name confusingly similar to the trademarks used by Apple. Because we find that the district court did not abuse its discretion or rely on erroneous legal premises in issuing the injunction, we affirm.

Facts

Formula is a wholesaler and retailer of electronic parts and electronic kits. In May 1982, Formula entered the computer market, selling a computer kit under the trademark “Pineapple.” The computer was designed to be compatible with application software written for the home computer manufactured by Apple, the Apple II. Included within Formula’s computer kit were two computer programs embodied in semiconductor devices called ROMs (Read Only Memory). Formula concedes for purposes of appeal that the two programs are substantially similar to two programs for which Apple has registered copyrights. Apple also introduced evidence to show that Formula had sold copies of three other programs for which Apple holds the copyright. These three programs are not sold as part of a computer by either Apple or Formula, but are distributed separately.

The computer programs involved in this lawsuit are operating systems programs, that is, programs that are designed to manage the computer system. For example, one program translates instructions written in a higher-level language that is more understandable to the computer user into a lowerlevel object code that the computer understands. As such, the programs are distinguishable from application programs, which are programs that directly interact with the computer user.

Apple brought suit against Formula. Apple moved for a preliminary injunction based on its copyright infringement claims. The district court granted the motion.

Analysis

On the basis of the evidence before the district court, we cannot conclude that the court erred in finding that Apple had demonstrated a likelihood of success on the merits of its copyright infringement claim. Under the Copyright Act, Apple’s certificates of copyright registration constitute prima facie evidence of the validity of Apple’s copyrights, 17 U.S.C. § 410(c), and Formula has the burden of overcoming the presumption of validity.

Formula asserts that the district court erred in granting the preliminary injunction by relying on the legal premise that the Copyright Act extends protection to all computer programs regardless of the function which those programs perform. Formula contends that the computer programs involved in this lawsuit, because they control the internal operation of the computer, are only “ideas” or “processes,” and therefore, unlike application programs, they are not protected by copyright. See 17 U.S.C. § 102(b) (“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.”) (emphasis added). Formula also points to the idea/expression dichotomy recognized in case law, see Baker v. Selden, and contends that a computer program is protected under the Copyright Act only if the program embodies expression communicated to the user when the program runs on a computer.

Formula’s position, however, is contrary to the language of the Copyright Act, the legislative history of the Act, and the existing case law concerning the copyrightability of computer programs. Examination of the legislative history reveals that Formula’s arguments were considered and rejected by Congress when copyright protection was extended to computer programs.

In 1974, the National Commission on New Technological Uses of Copyright Works (CONTU) was established by Congress to consider, inter alia, to what extent computer programs should be protected by copyright law. The 1979 CONTU Final Report recommended that the copyright law be amended “to make it explicit that computer programs, to the extent that they embody an author’s original creation, are proper subject matter of copyright.” CONTU Final Report 1.

Commissioner Hersey dissented from this recommendation, arguing that “[t]he Act of 1976 should be amended to make it explicit that copyright protection does not extend to a computer program in the form in which it is capable of being used to control computer operations.” Hersey’s dissent was based on his belief, similar to the argument advanced by Formula, that “[w]orks of authorship have always been intended to be circulated to human beings and to be used by them — to be read, heard, or seen, for either pleasurable or practical ends. Computer programs, in their mature phase, are addressed to machines.”

Commissioner Nimmer, while concurring in the Commission’s opinion and recommendation, provided a possible line of demarcation for computer programs to be considered in the future if the Commission’s recommendation proved to be too open-ended. Nimmer suggested that it might be desirable to limit copyright protection for software to those computer programs which produce works which themselves qualify for copyright protection.

The majority of the Commission, however, expressly considered and rejected both the Hersey and Nimmer positions:

It has been suggested by Vice-Chairman Nimmer in his separate opinion that programs be copyrighted only when their use leads to copyrighted output. ...This distinction is not consistent with the design of the Act of 1976, which was clearly to protect all works of authorship from the moment of their fixation in any tangible medium of expression.

Further, it does not square with copyright practice past and present, which recognizes copyright protection for which it may be put. The copyright status of the written rules for a game or a system for the operation of a machine is unaffected by the fact that those rules direct the action of those who play the game or carry out the process. Nor has copyright been denied to works simply because of their utilitarian aspects.

It follows, therefore, that there should likewise be no distinction made between programs which are used in the production of further copyrighted works and those which are not. ...That the words of a program are used ultimately in the implementation of a process should in no way affect their copyrightability.

In 1980, Congress accepted the CONTU majority’s recommended statutory changes verbatim. See 17 U.S.C. §§ 101, 117. Among other changes not relevant here, the Copyright Act was amended to add the following definition of “computer program” to 17 U.S.C. § 102(b):

A “computer program” is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result (emphasis added).

As recommended by the CONTU majority, the Act makes no distinction between the copyrightability of those programs which directly interact with the computer user and those which simply manage the computer system.

Formula’s reliance on the idea/expression dichotomy to argue that computer programs are copyrightable only if they provide expression to the computer user is misplaced. The distinction between ideas and expression is intended to prohibit the monopolization of an idea when there are a limited number of ways to express that idea:

The “idea-expression identity” exception provides that copyrighted language may be copied without infringing when there is but a limited number of ways to express a given idea. This rule is the logical extension of the fundamental principle that copyright cannot protect ideas. In the computer context this means that when specific instructions, even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not amount to an infringement.

When other language is available, programmers are free to read copyrighted programs and use the ideas embodied in them in preparing their own works.

CONTU Report at 20. See also Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir. 1983) (“We...thus focus on whether the idea is capable of various modes of expression. If other programs can be written or created which perform the same function as an Apple’s operating system program, then that program is an expression of the idea and hence copyrightable.”).

Further, Formula provides absolutely no authority for its contention that the “expression” required in order for a computer program to be eligible for copyright protection is expression that must be communicated to the computer user when the program is run on a computer. The Copyright Act extends protection to “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S.C. § 102(a). The computer program when written embodies expression; never has the Copyright Act required that the expression be communicated to a particular audience.

Conclusion

The district court did not abuse its discretion or rely on erroneous legal premises in issuing the preliminary injunction.

Notes

1. This opinion provides a convenient summary of the CONTU Report, and the contrasting views of the majority and minority.

2. The court states:

Formula provides absolutely no authority for its contention that the “expression” required in order for a computer program to be eligible for copyright protection is expression that must be communicated to the computer user when the program is run on a computer. The Copyright Act extends protection to “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S.C. § 102(a). The computer program when written embodies expression; never has the Copyright Act required that the expression be communicated to a particular audience.

Does the word “otherwise” in the passage quoted from § 102(a) have any significance in the interpretation to be given the preceding words of the clause? Does it mean that perceived and reproduced have to be understood as things of the same kind as communicated? If so, what is the consequence?

Is the court’s “never” too enthusiastic? See White-Smith Music Pub. Co. v. Apollo Co.

3. The House Report on the 1976 Act clearly states a desire to overturn White–Smith’s ruling that copyright applies only to human–readable material. It is much less clear that Congress intended to address the issue of intended communication to humans as a requirement of copyright. Could that have been what Professor Nimmer had in mind as a dissenting CONTU member?

Did the 1980 amendment, quoted in the opinion above, make that academic?

Neural Networks
[Excerpt from U.S. Cong./Off. Technol. Assessment, Finding a Balance: Computer Software, Intellectual Property, and the Challenge of Technological Change, ch. 4 (1992)]

Neural networks are a special kind of computing architecture. The network consists of a large number of interconnected processing elements, arranged in layers. The relationship between the input and output of the network is determined by the internal details of the network. Signals passing between the layers of the network are modified by multiplying them by “weights.” These weighted signals are received as inputs by the processing elements. The processors compute an output value, which is a function of the sum of the inputs, and passes the output to the next layer of processors.

The weights determine the overall behavior of the network, much as the program code determines the behavior of a conventional computer. However, neural networks are not programmed in the same way as conventional computers. Neural networks are “trained.” The network is presented with input values for which the desired output is known. The network then adjusts the weights until this output is achieved. This process is repeated for a large number of input and output examples, called a training set. Given enough examples, the desired behavior of the network can be achieved for a wide range of inputs. One focus of research on neural network applications has been “pattern recognition” problems such as recognizing handwritten characters: the input is image data, and the output indicates which letter has been “read.”

Because neural networks are different from conventional computers, there is some uncertainty about the application of intellectual property laws. One issue is the copyrightability of the set of weights. For example, do the weights satisfy the Copyright Act’s definition of a computer program? Can the set of weights be said to be a work of authorship? One could argue that the network, and not a human, actually authors the weights. On the other hand, the network could be regarded simply as a tool used by a human author--the author chooses the training set and presents the data to the network. The first copyright registration for a set of neural network weights issued in October 1990.

A second question is whether protecting the weights alone is sufficient to protect the value embodied by the network. Much as two programs can have the same external design or input/output relationship but different program code, two networks can have the same input/output relationship but different sets of weights. The ability of a neural network to “learn” could make it easier to appropriate the value of the network--the input/output relationship--without actually copying the weights. An existing network or conventional program could be supplied with inputs and the output observed. These sets of input and output data could then be used to train a second network, which would have similar behavior to the original network.

Reiss v. National Quotation Bureau, Inc.
United States District Court
276 F. 717 (S.D.N.Y. 1921)

Learned Hand, District Judge.

[Reiss prepared a book of 6000 five-letter arbitrarily coined “words,” such as “ABBRA” or “CADAB.” The words were intended for use as cable code, where the users would agree on their own private meanings. Thus, I send you a cable saying “ABBRA” and you understand that I mean you should buy 150 bales of cotton on my account. The defendants apparently copied Reiss’ book and sold it competitively. Reiss and his assignees sued for copyright infringement. The defendants moved to dismiss on the ground that the copyright clause of the Constitution did not extend to meaningless writings.]

Section 4 of the Copyright Act of 1909 enacts that copyrightable works “shall include all the writings of an author,” and section 5 especially provides against taking the enumeration which it contains as exclusive. The act must therefore be understood as meaning to cover all those compositions which, under the Constitution, can be copyrighted at all. The defendants place themselves, as indeed they must, squarely upon the meaning of § 8, Art. 1. If a series of coined words such as this is not the “writing” of an “author,” as the Constitution uses that word, then the motion succeeds; if not, it fails.

If the defendants’ point is good, it can only be because, to be within the Constitution, the “writing” must already have a meaning. These words [in the code book] have a prospective meaning, but as yet they have not received, it, like an empty pitcher. Suppose some one devised a set of words or symbols to form a new abstract speech, with inflections, but as yet with no meaning, a kind of blank Esperanto. The case would be approaching the plaintiff’s, though not there, because the words would, indeed, express relationship. Mathematics has its symbols, indeed a language of its own, Peanese, understood by only a few people in the world. Suppose a mathematician were to devise a new set of compressed and more abstract symbols, and list them for some conventional meaning to be filled in. Still, we should not be quite at the plaintiff’s words, but again we should not be far away. The distinction is real, but for practical purposes seems to me irrelevant.

Not all words communicate ideas; some are mere spontaneous ejaculations. Some are used for their sound alone, like nursery jingles, or the rhymes of children in their play. Might not some one, with a gift for catching syllables, devise others? There has of late been prose written, avowedly senseless, but designed by its sound alone to produce an emotion. Conceivably there may arise a poet who strings together words without rational sequence — perhaps even coined syllables — through whose beauty, cadence, meter, and rhyme he may seek to make poetry. Music is not normally a representative art, yet it is a “writing.” There are meaningless rhymes — e.g., “Barbara celarent” which boys use in their logic, or to remember their paradigms or the rules of grammar.

Works of plastic art need not be pictorial. They may be merely patterns, or designs, and yet they are within the statute. A pattern or an ornamental design depicts nothing; it merely pleases the eye. If such models or paintings are “writings,” I can see no reason why words should not be such because they communicate nothing. They may have their uses for all that, aesthetic or practical, and they may be the productions of high ingenuity, or even genius. Therefore, on principle, there appears to me no reason to limit the Constitution in any such way as the defendants require.

I can find nothing in the American reports remotely relevant. Baker v. Selden, 101 U.S. 99 is too foreign to the case at bar to deserve comment. Higgins v. Keuffel, 140 U.S. 428, turns on quite another point. In Ager v. Collingsridge, 2 Times L.R. 291, however, the point was squarely decided in the plaintiff’s favor, though without comment. In Ager v. P. & O.S.S. Co., L.R. 26 Ch. Div. 637, it appears not even to have been argued by the defendant. Now it is argued that these cases are distinguishable, because they arose under an act of Parliament which was not limited by any Constitution. So, indeed, they were, and if our Constitution embalms inflexibly the habits of 1789 there may be something in the point. But it does not; its grants of power to Congress comprise, not only what was then known, but what the ingenuity of men should devise thereafter. Of course, the new subject-matter must have some relation to the grant; but we interpret it by the general practices of civilized peoples in similar fields, for it is not a strait-jacket, but a charter for a living people.

The motion is denied.

Notes

1. The decision in the Reiss case is often cited as having held that languages are copyrightable. Is that what Judge Hand concluded? Was that held?

2. A computer programming language is a formal system of expression that includes: (1) a set of vocabulary elements; (2) a set of syntax rules for combining the vocabulary elements into statements; and (3) the assignment of meaning to statements that properly combine several vocabulary elements together in accordance with the syntax rules.

Vocabulary elements include operational elements, such as AND, ADD, PRiNt, MOVe, and INCrement. Those elements operate on other vocabulary elements (data objects) such as x, 6, and 3.14159.... Other vocabulary elements (control structures), such as GOTO, DO...WHILE, and JuMP specify flow or sequence of operations. (The three-letter expressions are common assembly language mnemonics for the indicated instructions.)

An example of a syntax rule is that GOTO followed by a line-number or :label constitutes a statement (in BASIC). The meaning assigned to GOTO 120 is that execution of the program jumps unconditionally from wherever it was immediately before that statement to line 120 of the program. See C. Sippl, Microcomputer Dictionary 212 (2d ed. 1981); IEEE Standard Dictionary of Electrical and Electronic Terms 478 (3d ed. 1984). The IEEE Dictionary states that “formal” or “uninterpreted” languages also exist, which lack the third element — an assigned meaning. Id.

Did Reiss’ book describe a language? What is the relationship between Judge Hand’s “kind of blank Esperanto” and an uninterpreted language? Did Reiss’ book describe an uninterpreted language? What kind of blank Esperanto, if any, did it describe? What public policy would be served or disserved by recognizing copyright protection for blank Esperantos or uninterpreted languages?

Suppose that I write a propositional calculus (language) and that 20 years from now you discover that it is convenient for expressing the unification of gravitational and electromagnetic field theories. Does my copyright do more good or more harm to the progress of science and useful arts? See Diamond v. Diehr, 450 U.S. 175 (1981), and Gottschalk v. Benson, 409 U.S. 63 (1972), for different views.

3. Why was Judge Hand opining about whether copyright protection extends to Reiss’ book? Why were the defendants raising the point? What did the Toro court do with such an argument?

Is this a sham or futile issue? Isn’t there always some kind of book or other written document, with a preface or foreword or some comment of some kind, and thus a writing, that will support a copyright of some kind in the document? Isn’t that enough to dispose of the constitutional issue? Therefore, doesn’t a book necessarily always have an author?

Suppose that Reiss secretly possesses a time machine. He advances in time, obtains a PC, and learns how to write programs. He programs his PC to print every possible five-letter word beginning with AAAAA, AAAAB, AAAAC, ... and proceeding through ZZZZX, ZZZZY, and ZZZZZ. (For better results, he may use an algorithm to delete the unpronounceable ones.) Is the resulting document (book) the writing of an author? See Toro. Could Reiss’ notional book be a writing, but one of which he was not the author (because none existed)?

Is a painting made by a chimpanzee a writing? Does it have an author?

Aside from human agency, such as it was, how is the authorship of Reiss in writing his actual code book importantly different from that of the computer or chimpanzee of the preceding paragraphs?

4. Can a work lack authorship because the quality of authorship is too low? Professor Jane Ginsberg suggests that copyrightability should be approached pluralistically:

I argue that the inclusion of [compilations such as directories, indexes, and data bases] endeavors I shall collectively dub works of “low authorship,” within the subject matter of copyright and the delineation of their appropriate scope of protection reflect a misguided — and increasingly untenable — attempt to impose a unitary, personality-based copyright.

Jane C. Ginsburg, Creation and Commercial Value: Copyright Protection for Works of Information, 90 Colum. L. Rev. 1865, 1866-67 (1990). Presumably, low authorship leads to a thin copyright (see Feist). How thin should Reiss’ copyright be? What conduct should infringe it?

5. Why is there so much talk about writings in Reiss and so little about authorship and originality?

Why did Judge Hand say nothing about the doctrine of idea and expression? Was he unaware of the doctrine? See Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir.), cert. denied, 298 U.S. 835 (1936); Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), cert. denied, 282 U.S. 119 (1931). In those opinions he presented a sophisticated analysis of idea/expression that is still in use, including in software cases. See, e.g., Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992).

What did Judge Hand mean by saying that “Baker v. Selden is too foreign to the case at bar to deserve comment”? Do you agree? Was counsel for the defendants asking the right questions and raising the right issues? What is the difference between asking whether Reiss’ book is copyrightable and asking whether the defendants infringed Reiss’ copyright by engaging in the challenged conduct?

Is idea/expression all there is to Baker? As Baker is codified in 17 U.S.C. § 102(b), is there more to it than idea and expression?

6. Another commentator, Professor Ralph Brown, identified three different approaches to copyright protection. See Ralph S. Brown, Eligibility for Copyright Protection: A Search for Principled Standards, 70 Minn. L. Rev. 579 (1985). One approach, legalistically parses the words of the statute and thus identifies the rights granted in § 106.

A second approach, identifiable with David Ladd, a former Patent Commissioner and Register of Copyrights, exalts authorship and entrepreneurship. For Ladd, when an author has created something and an entrepreneur has brought to the market, there should be no constraints on the scope of its protection, other than those of the market. Moreover, there should be reasonable compensation for every use of a work. See David Ladd, The Harm of the Concept of Harm in Copyright, 30 J. Copr. Soc’y 421, 427 (1983).

The third approach (which Brown prefers) focuses on the public interest in acquiring and applying knowledge and technology. Accordingly, Brown considers § 102(b) to be a most important limitation on the scope of the statutory rights. He cautions:

Copyright, made easy in order to provide a capacious shelter for works of enlightenment and diversion, can be too easily bent to evade the limits on the systems of industrial patents or extend monopolies that have no support in any system.

Id. at 609.

Analyze Reiss’ book under each of these approaches in turn. What results?

Assuming that the federal copyright law protects Reiss against the defendants’ actions, what interest, if any, is served here? What interest, if any, is disserved?

7. Does Judge Hand’s analysis extend to authorship, to originality? The Trade-Mark Cases said that copyright was limited to those writings that are “original, and founded in the creative powers of the mind.” Sarony said that copyright was limited to original intellectual conceptions resulting from “intellectual production,...thought, and conception.” Does the Reiss opus meet those tests?

8. Higgins v. Keuffel, 140 U.S. 428 (1891), involved a copyright on a label, which in substance read Water-Proof Drawing Ink. The defendants argued that the Constitution did not authorize copyrights on labels, relying on The Trade-Mark Cases. The Court opined that the Constitution did not authorize copyright protection of a nonpictorial, merely descriptive label, because that would not further the progress of science or useful arts — it “has nothing to do with such progress.” That may be regarded as an alternative holding, however, since the Court went on to hold that, even assuming that Congress had the power to authorize such copyrights, these plaintiffs had failed to comply properly with the notice formalities of the copyright statute, making them ineligible to sue for copyright infringement. Was Judge Hand too cavalier in saying that the Higgins decision “turns on quite another point”?

9. Does this case really present an issue of constitutional law, or one of statutory construction? Did Judge Hand suppose that Congress intended to protect such things as a catalog of meaningless words running from ABABA to ZYZYZ? Does that matter?

10. Do you agree with his rejection of the argument that the English cases were distinguishable because “they arose under an act of Parliament which was not limited by any Constitution”? Are the “general practices of civilized peoples” to be discerned from the English decisions that Judge Hand cites? Do those practices tell us what Congress intended to protect by the U.S. copyright laws?

11. For another code book case, see American Code Co. v. Bensinger, 282 F. 829 (2d Cir. 1922). The court protected a listing of code words, stating, “That a list of [code] words is copyrightable must be conceded.” Id. at 833. The only authority that the court cited for this proposition was its own recent ruling in Jeweler’s Circular Pub. Co. v. Keystone Pub. Co., 281 F. 83 (2d Cir. 1922). What does the treatment of that decision in Feist suggest about its current precedential vitality?

Brief English System v. Owen
United States Court of Appeals for the Second Circuit
45 F.2d 555 (2d Cir.), cert. denied, 283 U.S. 858 (1931)

Before Manton, L. Hand, and Chase, Circuit Judges. Opinion by Chase, J.

Background

The plaintiff, Brief English Systems, Inc., acquired by valid assignment and owns the copyrights sued upon. The certificates are on twelve booklets entitled “The Steno-Short-Type System,” on six booklets entitled “Speedwriting,” and on a book entitled “Speedwriting, The Natural Shorthand,” all by the same author, Emma B. Dearborn, and all concerning a system of shorthand which uses for its symbols or characters only the letters of the English alphabet and punctuation marks.

The validity of the copyrights is not seriously questioned. Their breadth or scope is, however, contested. The plaintiff does not now claim that they include the shorthand system itself, but insists that, by appropriating a substantial portion of that system, together with the copyrighted expression of the mode and manner of teaching it, the defendant has infringed. The defendant denies having taken either the shorthand system itself or the copyrighted exposition of it.

The claimed infringing work is a short- hand textbook written and published by the defendant John P. Owen in 1926, and entitled “Owen a-b-c Shorthand.” It is copyrighted.

Both systems of shorthand employ the letters of the alphabet and punctuation marks for their basic symbols. Owen was formerly a pupil of Emma B. Dearborn. He was a teacher of shorthand before studying with her, and afterwards, for a time, taught the plaintiff’s system under an arrangement mutually agreeable to the parties. After he stopped teaching under this arrangement, and published and taught the system he claims to have devised, this action was brought.

A comparison of the two systems discloses that they are much alike. Being limited to the same basic symbols, which are themselves limited in number, it is but natural that they should be. They differ in many material particulars, but Owen’s system and the Dearborn system of the plaintiff are in general so similar that it may well be said that Owen employed the fundamental idea developed by Miss Dearborn and that his system is merely a variation of it.

In his book, Owen put into 20 so-called lessons the subject matter Miss Dearborn had treated 60. She used words from well–known word lists and so did he. We all know that certain words recur more often than others in the everyday use of the English language and that only a comparatively small number of the total with which the language is enriched are frequently used at all. It was necessary for both authors to teach how these common words, as well as others, should be written in shorthand. Both did so. Whenever the same word is to be written the same way, Owen taught that way. But a comparison of his book with the copyrighted booklets fails to show that he used any substantial part of the Dearborn method of arrangement, style, composition, or literary product, as employed in her books on shorthand, to teach, demonstrate, and explain her method.

Analysis

Insofar as the plaintiff claims to have the exclusive right to the use of a published system of shorthand, this suit must fail. There is no literary merit in a mere system of condensing written words into less than the number of letters usually used to spell them out. Copyrightable material is found, if at all, in the explanation of how to do it.

Without suggesting that anything in its shorthand system that this plaintiff would retain by copyright for itself alone might have been the subject of a valid patent, it may be said that the way to obtain the exclusive property right to an art, as distinguished from a description of the art, is by letters patent and not by copyright. For present purposes it is enough to recognize that the plaintiff’s shorthand system, as such, is open to use by whoever will take the trouble to learn and use it. Baker v. Selden.

From this it follows that the claimed infringement by Owen’s book should be determined exactly as though he had been writing about the Dearborn shorthand system instead of one he claimed to have originated himself. When the copyrighted works and the claimed infringement are examined for piracy, no substantial appropriation of manner, method, style, or literary thought can be perceived.

Once conceded that the defendant Owen could lawfully write about any system of shorthand his ability permitted, his book has nothing of consequence in common with what is covered by the plaintiff’s copyrights. The manner of treatment is substantially dissimilar. Without proof of the kind of appropriation mentioned above, the plaintiff has no cause of action. Baker v. Selden.

Notes

1. Between the time of Reiss and Owen, Judge Learned Hand was elevated to the Second Circuit. Do you think that, by the time he was a panel member in Owen, he had a change of thinking about the issues involved in Reiss? Can you otherwise harmonize the decisions?

2. Is a shorthand system a language? Does it have its own syntax rules and vocabulary, or does it just piggy-back on those of the language that it transcribes (such as English or French)? Is a shorthand system a “kind of blank Esperanto”? If so, then what follows?

3. Does a shorthand system as such have sufficient authorship to satisfy copyright law, putting aside other issues? Is the issue in this case copyrightability or scope of copyright protection? Copyrightability of what? Scope of protection of what copyright?

4. Should this shorthand system have been protected as a nonliteral element of the plaintiff’s book, like its plot? (What is it in the book that can be analogized to plot?)

5. How is the book, B. Kernighan & D. Ritchie, The C Programming Language (1978), like/unlike the plaintiff’s book in the Owen case? What does that suggest? What protection does the doctrine of the Owen case affords the C language book?

Lotus Development Corp. v. Borland Int’l, Inc.
United States Court of Appeals for the First Circuit
49 F.3d 807 (1st Cir.), aff’d by an equally divided Court, 116 S. Ct. 804 (1996)

STAHL, Circuit Judge.

This appeal requires us to decide whether a computer menu command hierarchy is copyrightable subject matter. In particular, we must decide whether, as the district court held, Borland infringed Lotus’ copyright in Lotus 1-2-3, a computer spreadsheet program, when Borland copied the Lotus 1-2-3 menu command hierarchy into its Quattro and Quattro Pro computer spreadsheet programs.

I. Background

Lotus 1-2-3 is a spreadsheet program that enables users to perform accounting functions electronically on a computer. Users manipulate and control the program via a series of menu commands, such as “Copy,” “Print,” and “Quit.” Users choose commands either by highlighting them on the screen or by typing their first letter. In all, Lotus 1-2-3 has 469 commands arranged into more than 50 menus and submenus.

Lotus 1-2-3, like many computer programs, allows users to write what are called “macros.” By writing a macro, a user can designate a series of command choices with a single macro keystroke. Then, to execute that series of commands in multiple parts of the spreadsheet, rather than typing the whole series each time, the user only needs to type the single pre-programmed macro keystroke, causing the program to recall and perform the designated series of commands automatically. Thus, Lotus 1-2-3 macros shorten the time needed to set up and operate the program.

The district court found, and Borland does not now contest, that Borland included in its Quattro and Quattro Pro version 1.0 programs “a virtually identical copy of the entire 1-2-3 menu tree.” In so doing, Borland did not copy any of Lotus’s underlying computer code; it copied only the words and structure of Lotus’s menu command hierarchy. Borland included the Lotus menu command hierarchy in its programs to make them compatible with Lotus 1-2-3 so that spreadsheet users who were already familiar with Lotus 1-2-3 would be able to switch to the Borland programs without having to learn new commands or rewrite their Lotus macros.

Borland achieved compatibility with Lotus 1-2-3 by offering its users an alternate user interface, the “Lotus Emulation Interface.” By activating the Emulation Interface, Borland users would see the Lotus menu commands on their screens and could interact with Quattro or Quattro Pro as if using Lotus 1-2-3, albeit with a slightly different looking screen and with many Borland options not available on Lotus 1-2-3. In effect, Borland allowed users to choose how they wanted to communicate with Borland’s spreadsheet programs: either by using menu commands designed by Borland, or by using the commands and command structure used in Lotus 1-2-3 augmented by Borland-added commands.

Lotus and Borland filed cross motions for summary judgment; the district court denied both motions, concluding that “neither party’s motion is supported by the record.” The district court invited the parties to file renewed summary judgment motions that would “focus their arguments more precisely” in light of rulings it had made in conjunction with its denial of their summary judgment motions. Both parties filed renewed motions for summary judgment. In its motion, Borland contended that the Lotus 1-2-3 menus were not copyrightable as a matter of law and that no reasonable trier of fact could find that the similarity between its products and Lotus 1-2-3 was sufficient to sustain a determination of infringement. Lotus contended in its motion that Borland had copied Lotus 1-2-3’s entire user interface and had thereby infringed Lotus’s copyrights.

The district court denied Borland’s motion and granted Lotus’s motion in part. The district court ruled that the Lotus menu command hierarchy was copyrightable expression because

[a] very satisfactory spreadsheet menu tree can be constructed using different commands and a different command structure from those of Lotus 1-2-3. In fact, Borland has constructed just such an alternate tree for use in Quattro Pro’s native mode. Even if one holds the arrangement of menu commands constant, it is possible to generate literally millions of satisfactory menu trees by varying the menu commands employed.

The district court demonstrated this by offering alternate command words for the ten commands that appear in Lotus’s main menu. For example, the district court stated that “the ‘Quit’ command could be named ‘Exit’ without any other modifications,” and that “the ‘Copy’ command could be called ‘Clone,’ ‘Ditto,’ ‘Duplicate,’ ‘Imitate,’ ‘Mimic,’ ‘Replicate,’ and ‘Reproduce,’ among others.” Because so many variations were possible, the district court concluded that the Lotus developers’ choice and arrangement of command terms, reflected in the Lotus menu command hierarchy, constituted copyrightable expression.

In granting partial summary judgment to Lotus, the district court held that Borland had infringed Lotus’s copyright in Lotus 1-2-3:

As a matter of law, Borland's Quattro products infringe the Lotus 1-2-3 copyright because of (1) the extent of copying of the "menu commands" and "menu structure" that is not genuinely disputed in this case, (2) the extent to which the copied elements of the "menu commands" and "menu structure" contain expressive aspects separable from the functions of the "menu commands" and "menu structure," and (3) the scope of those copied expressive aspects as an integral part of Lotus 1-2-3.

The court nevertheless concluded that while the Quattro and Quattro Pro programs infringed Lotus’s copyright, Borland had not copied the entire Lotus 1-2-3 user interface, as Lotus had contended, and a trial was necessary to determine the scope of Borland’s infringement. Borland then removed the Lotus Emulation Interface from its products. Thereafter, Borland’s spreadsheet programs no longer displayed the Lotus 1-2-3 menus to Borland users. As a result Borland users could no longer communicate with Borland’s programs as if they were using a more sophisticated version of Lotus 1-2-3. Nonetheless, Borland’s programs continued to be partially compatible with Lotus 1-2-3, for Borland retained what it called the “Key Reader” in its Quattro Pro programs. Once turned on, the Key Reader allowed Borland’s programs to understand and perform some Lotus 1-2-3 macros.

With the Key Reader on, people who wrote or purchased macros to shorten the time needed to perform an operation in Lotus 1-2-3 could still use those macros in Borland’s programs. The district court permitted Lotus to file a supplemental complaint alleging that the Key Reader infringed its copyright.

The parties agreed to try the remaining liability issues without a jury. After the close of the first phase of trial, the district court permitted Borland to amend its answer to include the affirmative defense of “fair use.” The district court held that Borland had failed to show that its use of the Lotus 1-2-3 menu command hierarchy in its Emulation Interface was a fair use. The district court found that “each of the Borland emulation interfaces contains a virtually identical copy of the 1-2-3 menu tree and that the 1-2-3 menu tree is capable of a wide variety of expression.” The district court also found that Borland’s Key Reader file included “a virtually identical copy of the Lotus menu tree structure, but represented in a different form and with first letters of menu command names in place of the full menu command names.” In other words, Borland’s programs no longer included the Lotus command terms, but only their first letters. The district court held that “the Lotus menu structure, organization, and first letters of the command names...constitute part of the protectable expression found in [Lotus 1-2-3].” Accordingly, the district court held that with its Key Reader, Borland had infringed Lotus’s copyright. The district court also rejected Borland’s affirmative defense fair use. The district court then entered a permanent injunction against Borland, from which Borland appeals.

This appeal concerns only Borland’s copying of the Lotus menu command hierarchy into its Quattro programs and Borland’s affirmative defenses to such copying. Lotus has not cross-appealed; in other words, Lotus does not contend on appeal that the district court erred in finding that Borland had not copied other elements of Lotus 1–2–3, such as its screen displays.

II. Discussion

On appeal, Borland does not dispute that it factually copied the words and arrangement of the Lotus menu command hierarchy. Rather, Borland argues that it “lawfully copied the unprotectable menus of Lotus 1-2-3.” Borland contends that the Lotus menu command hierarchy is not copyrightable because it is a system, method of operation, process, or procedure foreclosed from protection by 17 U.S.C. § 102(b).

A. Copyright Infringement Generally

To establish copyright infringement, a plaintiff must prove “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist.

To show ownership of a valid copyright and therefore satisfy Feist’s first prong, a plaintiff must prove that the work as a whole is original and that the plaintiff complied with applicable statutory formalities.

In this appeal, we are faced only with whether the Lotus menu command hierarchy is copyrightable subject matter in the first instance, for Borland concedes that Lotus has a valid copyright in Lotus 1-2-3 as a whole (as a computer program literary work) and admits to factually copying the Lotus menu command hierarchy. As a result, this appeal is in a very different posture from most copyright-infringement cases, for copyright infringement generally turns on whether the defendant has copied protected expression as a factual matter. Because of this different posture, most copyright-infringement cases provide only limited help to us in deciding this appeal. This is true even with respect to those copyright-infringement cases that deal with computers and computer software.

B. Matter of First Impression

Whether a computer menu command hierarchy constitutes copyrightable subject matter is a matter of first impression in this court. While some other courts appear to have touched on it briefly in dicta, we know of no cases that deal with the copyrightability of a menu command hierarchy standing on its own (i.e., without other elements of the user interface, such as screen displays, in issue). Thus we are navigating in uncharted waters.

Borland vigorously argues, however, that the Supreme Court charted our course more than 100 years ago when it decided Baker v. Selden. In Baker the Court held that Selden’s copyright over the textbook in which he explained his new way to do accounting did not grant him a monopoly on the use of his accounting system. Borland argues:

The facts of Baker v. Selden, and even the arguments advanced by the parties in that case, are identical to those in this case. The only difference is that the "user interface" of Selden's system was implemented by pen and paper rather than by computer.

To demonstrate that Baker and this appeal both involve accounting systems, Borland even supplied this court with a video that, with special effects, shows Selden’s paper forms “melting” into a computer screen and transforming into Lotus 1-2-3.

We do not think that Baker is nearly as analogous to this appeal as Borland claims. Of course, Lotus 1-2-3 is a computer spreadsheet, and as such its grid of horizontal rows and vertical columns certainly resembles an accounting ledger or any other paper spreadsheet. Those grids, however, are not at issue in this appeal for, unlike Selden, Lotus does not claim to have a monopoly over its accounting system. Rather, this appeal involves Lotus’s monopoly over the commands it uses to operate the computer. Accordingly, this appeal is not, as Borland contends, “identical” to Baker.

C. Altai

Before we analyze whether the Lotus menu command hierarchy is a system, method of operation, process, or procedure, we first consider the applicability of the test the Second Circuit set forth in Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992). The Second Circuit designed its Altai test to deal with the fact that computer programs, copyrighted as “literary works,” can be infringed by what is known as “nonliteral” copying, which is copying that is paraphrased or loosely paraphrased rather than word for word. When faced with nonliteral-copying cases, courts must determine whether similarities are due merely to the fact that the two works share the same underlying idea or whether they instead indicate that the second author copied the first author’s expression. The Second Circuit designed its Altai test to deal with this situation in the computer context, specifically with whether one computer program copied nonliteral expression from another program’s code.

The Altai test involves three steps: abstraction, filtration, and comparison. The abstraction step requires courts to “dissect the allegedly copied program’s structure and isolate each level of abstraction contained within it.” This step enables courts to identify the appropriate framework within which to separate protectable expression from unprotected ideas. Second, courts apply a “filtration” step in which they examine “the structural components at each level of abstraction to determine whether their particular inclusion at that level was ‘idea’ or was dictated by considerations of efficiency, so as to be necessarily incidental to that idea; required by factors external to the program itself; or taken from the public domain.” Finally, courts compare the protected elements of the infringed work (i.e., those that survived the filtration screening) to the corresponding elements of the allegedly infringing work to determine whether there was sufficient copying of protected material to constitute infringement.

In the instant appeal, we are not confronted with alleged nonliteral copying of computer code. Rather, we are faced with Borland’s deliberate, literal copying of the Lotus menu command hierarchy. Thus, we must determine not whether nonliteral copying occurred in some amorphous sense, but rather whether the literal copying of the Lotus menu command hierarchy constitutes copyright infringement.

While the Altai test may provide a useful framework for assessing the alleged nonliteral copying of computer code, we find it to be of little help in assessing whether the literal copying of a menu command hierarchy constitutes copyright infringement. In fact, we think that the Altai test in this context may actually be misleading because, in instructing courts to abstract the various levels, it seems to encourage them to find a base level that includes copyrightable subject matter that, if literally copied, would make the copier liable for copyright infringement. While that base (or literal) level would not be at issue in a nonliteral–copying case like Altai, it is precisely what is at issue in this appeal. We think that abstracting menu command hierarchies down to their individual word and menu levels and then filtering idea from expression at that stage, as both the Altai and the district court tests require, obscures the more fundamental question of whether a menu command hierarchy can be copyrighted at all. The initial inquiry should not be whether individual components of a menu command hierarchy are expressive, but rather whether the menu command hierarchy as a whole can be copyrighted.

D. The Lotus Menu Command Hierarchy: A “Method of Operation”

Borland argues that the Lotus menu command hierarchy is uncopyrightable because it is a system, method of operation, process, or procedure foreclosed from copyright protection by 17 U.S.C. § 102(b), which states: “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.” Because we conclude that the Lotus menu command hierarchy is a method of operation, we do not consider whether it could also be a system, process, or procedure.

We think that “method of operation,” as that term is used in § 102(b), refers to the means by which a person operates something, whether it be a car, a food processor, or a computer. Thus a text describing how to operate something would not extend copyright protection to the method of operation itself; other people would be free to employ that method and to describe it in their own words. Similarly, if a new method of operation is used rather than described, other people would still be free to employ or describe that method.

We hold that the Lotus menu command hierarchy is an uncopyrightable “method of operation.” The Lotus menu command hierarchy provides the means by which users control and operate Lotus 1-2-3. If users wish to copy material, for example, they use the “Copy” command. If users wish to print material, they use the “Print” command. Users must use the command terms to tell the computer what to do. Without the menu command hierarchy, users would not be able to access and control, or indeed make use of, Lotus 1-2-3’s functional capabilities.

The Lotus menu command hierarchy does not merely explain and present Lotus 1–2–3’s functional capabilities to the user; it also serves as the method by which the program is operated and controlled. The Lotus menu command hierarchy is different from the Lotus screen displays, for users need not “use” any expressive aspects of the screen displays in order to operate Lotus 1–2–3; because the way the screens look has little bearing on how users control the program, the screen displays are not part of Lotus 1-2-3’s “method of operation.” (As they are not before us on appeal, we take no position on whether the Lotus 1-2-3 screen displays constitute original expression capable of being copyrighted.) The Lotus menu command hierarchy is also different from the underlying computer code, because while code is necessary for the program to work, its precise formulation is not. In other words, to offer the same capabilities as Lotus 1-2-3, Borland did not have to copy Lotus’s underlying code (and indeed it did not); to allow users to operate its programs in substantially the same way, however, Borland had to copy the Lotus menu command hierarchy. Thus the Lotus 1–2–3 code is not a uncopyrightable “method of operation.”

The district court held that the Lotus menu command hierarchy, with its specific choice and arrangement of command terms, constituted an “expression” of the “idea” of operating a computer program with commands arranged hierarchically into menus and submenus. Under the district court’s reasoning, Lotus’s decision to employ hierarchically arranged command terms to operate its program could not foreclose its competitors from also employing hierarchically arranged command terms to operate their programs, but it did foreclose them from employing the specific command terms and arrangement that Lotus had used. In effect, the district court limited Lotus 1–2–3’s “method of operation” to an abstraction.

Accepting the district court’s finding that the Lotus developers made some expressive choices in choosing and arranging the Lotus command terms, we nonetheless hold that that expression is not copyrightable because it is part of Lotus 1-2-3’s “method of operation.” We do not think that “methods of operation” are limited to abstractions; rather, they are the means by which a user operates something. If specific words are essential to operating something, then they are part of a “method of operation” and, as such, are unprotectable. This is so whether they must be highlighted, typed in, or even spoken, as computer programs no doubt will soon be controlled by spoken words.

The fact that Lotus developers could have designed the Lotus menu command hierarchy differently is immaterial to the question of whether it is a “method of operation.” In other words, our initial inquiry is not whether the Lotus menu command hierarchy incorporates any expression. Rather, our initial inquiry is whether the Lotus menu command hierarchy is a “method of operation.” Concluding, as we do, that users operate Lotus 1-2-3 by using the Lotus menu command hierarchy, and that the entire Lotus menu command hierarchy is essential to operating Lotus 1-2-3, we do not inquire further whether that method of operation could have been designed differently. The “expressive” choices of what to name the command terms and how to arrange them do not magically change the uncopyrightable menu command hierarchy into copyrightable subject matter.

Our holding that “methods of operation” are not limited to mere abstractions is bolstered by Baker v. Selden. In Baker, the Supreme Court explained that the teachings of science and the rules and methods of useful art have their final end in application and use; and this application and use are what the public derive from the publication of a book which teaches them. “The description of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art itself. The object of the one is explanation; the object of the other is use. The former may be secured by copyright. The latter can only be secured, if it can be secured at all, by letters-patent.” Lotus wrote its menu command hierarchy so that people could learn it and use it. Accordingly, it falls squarely within the prohibition on copyright protection established in Baker and codified by Congress in § 102(b).

In many ways, the Lotus menu command hierarchy is like the buttons used to control, say, a video cassette recorder (“VCR”). A VCR is a machine that enables one to watch and record video tapes. Users operate VCRs by pressing a series of buttons that are typically labelled “Record, Play, Reverse, Fast Forward, Pause, Stop/Eject.” That the buttons are arranged and labeled does not make them a “literary work,” nor does it make them an “expression” of the abstract “method of operating” a VCR via a set of labeled buttons. Instead, the buttons are themselves the “method of operating” the VCR.

When a Lotus 1-2-3 user chooses a command, either by highlighting it on the screen or by typing its first letter, he or she effectively pushes a button. Highlighting the “Print” command on the screen, or typing the letter “P,” is analogous to pressing a VCR button labeled “Play.”

That the Lotus menu command hierarchy is a “method of operation” becomes clearer when one considers program compatibility. Under Lotus’s theory, if a user uses several different programs, he or she must learn how to perform the same operation in a different way for each program used. For example, if the user wanted the computer to print material, then the user would have to learn not just one method of operating the computer such that it prints, but many different methods. We find this absurd. The fact that there may be many different ways to operate a computer program, or even many different ways to operate a computer program using a set of hierarchically arranged command terms, does not make the actual method of operation chosen copyrightable; it still functions as a method for operating the computer and as such is uncopyrightable.

Consider also that users employ the Lotus menu command hierarchy in writing macros. Under the district court’s holding, if the user wrote a macro to shorten the time needed to perform a certain operation in Lotus 1-2-3, the user would be unable to use that macro to shorten the time needed to perform that same operation in another program. Rather, the user would have to rewrite his or her macro using that other program’s menu command hierarchy. This is despite the fact that the macro is clearly the user’s own work product. We think that forcing the user to cause the computer to perform the same operation in a different way ignores Congress’s direction in § 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 user to perform an operation automatically. As the Lotus menu command hierarchy serves as the basis for Lotus 1-2-3 macros, the Lotus menu command hierarchy is a “method of operation.”

In holding that expression that is part of a “method of operation” cannot be copyrighted, we do not understand ourselves to go against the Supreme Court’s holding in Feist. In Feist, the Court explained:

The primary objective of copyright is not to reward the labor of authors, but to promote the Progress of Science and useful Arts. To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work.

We do not think that the Court’s statement that “copyright assures authors the right to their original expression” indicates that all expression is necessarily copyrightable; while original expression is necessary for copyright protection, we do not think that it is alone sufficient. Courts must still inquire whether original expression falls within one of the categories foreclosed from copyright protection by § 102(b), such as being a “method of operation.”

We also note that in most contexts, there is no need to “build” upon other people’s expression, for the ideas conveyed by that expression can be conveyed by someone else without copying the first author’s expression. (When there are a limited number of ways to express an idea, however, the expression “merges” with the idea and becomes uncopyrightable.) In the context of methods of operation, however, “building” requires the use of the precise method of operation already employed; otherwise, “building” would require dismantling, too. Original developers are not the only people entitled to build on the methods of operation they create; anyone can. Thus, Borland may build on the method of operation that Lotus designed and may use the Lotus menu command hierarchy in doing so.

Our holding that methods of operation are not limited to abstractions goes against Autoskill, Inc. v. National Educ. Serv., 994 F.2d 1476, 1495 n.23 (10th Cir.), cert. denied, 114 S. Ct. 307 (1993), in which the Tenth Circuit rejected the defendant’s argument that the keying procedure used in a computer program was an uncopyrightable “procedure” or “method of operation” under § 102(b). The program at issue, which was designed to test and train students with reading deficiencies, required students to select responses to the program’s queries “by pressing the 1, 2, or 3 keys.” The Tenth Circuit held that, for purposes of a preliminary injunction, “the record showed that [this] keying procedure reflected at least a minimal degree of creativity,” as required by Feist for copyright protection. As an initial matter, we question whether a programmer’s decision to have users select a response by pressing the 1, 2, or 3 keys is original. More importantly, however, we fail to see how “a student selecting a response by pressing the 1, 2, or 3 keys,” can be anything but an unprotectable method of operation.

III. Conclusion

Because we hold that the Lotus menu command hierarchy is uncopyrightable subject matter, we further hold that Borland did not infringe Lotus’s copyright by copying it. Accordingly, we need not consider any of Borland’s affirmative defenses. The judgment of the district court is reversed.


BOUDIN, Circuit Judge, concurring.

The importance of this case, and a slightly different emphasis in my view of the underlying problem, prompt me to add a few words to the majority’s tightly focused discussion.

I.

Most of the law of copyright and the tools of analysis have developed in the context of literary works such as novels, plays, and films. In this milieu, the principal problem--simply stated, if difficult to resolve--is to stimulate creative expression without unduly limiting access by others to the broader themes and concepts deployed by the author. The middle of the spectrum presents close cases; but a “mistake” in providing too much protection involves a small cost: subsequent authors treating the same themes must take a few more steps away from the original expression.

The problem presented by computer programs is fundamentally different in one respect. The computer program is a means for causing something to happen; it has a mechanical utility, an instrumental role, in accomplishing the world’s work. Granting protection, in other words, can have some of the consequences of patent protection in limiting other people’s ability to perform a task in the most efficient manner. Utility does not bar copyright (dictionaries may be copyrighted), but it alters the calculus.

Of course, the argument for protection is undiminished, perhaps even enhanced, by utility: if we want more of an intellectual product, a temporary monopoly for the creator provides incentives for others to create other, different items in this class. But the cost side of the equation may be different where one places a very high value on public access to a useful innovation that may be the most efficient means of performing a given task. Thus, the argument for extending protection may be the same; but the stakes on the other side are much higher.

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. This problem of utility has sometimes manifested itself in copyright cases, such as Baker v. Selden, and been dealt with through various formulations that limit copyright or create limited rights to copy. But the case law and doctrine addressed to utility in copyright have been brief detours in the general march of copyright law.

Requests for the protection of computer menus present the concern with fencing off access to the commons in an acute form. A new menu may be a creative work, but over time its importance may come to reside more in the investment that has been made by users in learning the menu and in building their own mini-programs—macros—in reliance upon the menu. Better typewriter keyboard layouts may exist, but the familiar QWERTY keyboard dominates the market because that is what everyone has learned to use. The QWERTY keyboard is nothing other than a menu of letters.

Thus, to assume that computer programs are just one more new means of expression, like a filmed play, may be quite wrong. The form — the written source code or the menu structure depicted on the screen — look hauntingly like the familiar stuff of copyright; but the substance probably has more to do with problems presented in patent law or, as already noted, in those rare cases where copyright law has confronted industrially useful expressions. Applying copyright law to computer programs is like assembling a jigsaw puzzle whose pieces do not quite fit.

All of this would make no difference if Congress had squarely confronted the issue, and given explicit directions as to what should be done. The Copyright Act of 1976 took a different course. While Congress said that computer programs might be subject to copyright protection, it said this in very general terms; and, especially in § 102(b), Congress adopted a string of exclusions that if taken literally might easily seem to exclude most computer programs from protection. The only detailed prescriptions for computers involve narrow issues (like back-up copies) of no relevance here.

Of course, one could still read the statute as a congressional command that the familiar doctrines of copyright law be taken and applied to computer programs, in cookie cutter fashion, as if the programs were novels or play scripts. Some of the cases involving computer programs embody this approach. It seems to be mistaken on two different grounds: the tradition of copyright law, and the likely intent of Congress.

The broad-brush conception of copyright protection, the time limits, and the formalities have long been prescribed by statute. But the heart of copyright doctrine—what may be protected and with what limitations and exceptions — has been developed by the courts through experience with individual cases. B. Kaplan, An Unhurried View of Copyright 40 (1967). Occasionally Congress addresses a problem in detail. For the most part the interstitial development of copyright through the courts is our tradition.

Nothing in the language or legislative history of the 1976 Act, or at least nothing brought to our attention, suggests that Congress meant the courts to abandon this case-by-case approach. Indeed, by setting up § 102(b) as a counterpoint theme, Congress has arguably recognized the tension and left it for the courts to resolve through the development of case law. And case law development is adaptive: it allows new problems to be solved with help of earlier doctrine, but it does not preclude new doctrines to meet new situations.

II.

In this case, the raw facts are mostly, if not entirely, undisputed. Although the inferences to be drawn may be more debatable, it is very hard to see that Borland has shown any interest in the Lotus menu except as a fall-back option for those users already committed to it by prior experience or in order to run their own macros using 1-2-3 commands. At least for the amateur, accessing the Lotus menu in the Borland Quattro or Quattro Pro program takes some effort.

Put differently, it is unlikely that users who value the Lotus menu for its own sake—independent of any investment they have made themselves in learning Lotus’ commands or creating macros dependent upon them—would choose the Borland program in order to secure access to the Lotus menu. Borland’s success is due primarily to other features. Its rationale for deploying the Lotus menu bears the ring of truth. Now, any use of the Lotus menu by Borland is a commercial use and deprives Lotus of a portion of its reward, in the sense that an infringement claim if allowed would increase Lotus’ profits. But this is circular reasoning: broadly speaking, every limitation on copyright or privileged use diminishes the reward of the original creator. Yet not every writing is copyrightable or every use an infringement. The provision of reward is one concern of copyright law, but it is not the only one. If it were, copyrights would be perpetual and there would be no exceptions.

The present case is an unattractive one for copyright protection of the menu. The menu commands (e.g., print, quit) are largely for standard procedures that Lotus did not invent and are common words that Lotus cannot monopolize. What is left is the particular combination and sub-grouping of commands in a pattern devised by Lotus. This arrangement may have a more appealing logic and ease of use than some other configurations; but there is a certain arbitrariness to many of the choices.

If Lotus is granted a monopoly on this pattern, users who have learned the command structure of Lotus 1-2-3 or devised their own macros are locked into Lotus, just as a typist who has learned the QWERTY keyboard would be the captive of anyone who had a monopoly on the production of such a keyboard. Apparently, for a period Lotus 1-2-3 has had such sway in the market that it has represented the de facto standard for electronic spreadsheet commands. So long as Lotus is the superior spreadsheet — either in quality or in price—there may be nothing wrong with this advantage.

But if a better spreadsheet comes along, it is hard to see why customers who have learned the Lotus menu and devised macros for it should remain captives of Lotus because of an investment in learning made by the users and not by Lotus. 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.

Thus, for me the question is not whether Borland should prevail but on what basis. Various avenues might be traveled, but the main choices are between holding that the menu is not protectable by copyright and devising a new doctrine that Borland’s use is privileged. No solution is perfect and no intermediate appellate court can make the final choice.

To call the menu a “method of operation” is, in the common use of those words, a defensible position. After all, the purpose of the menu is not to be admired as a work of literary or pictorial art. It is to transmit directions from the user to the computer, i.e., to operate the computer. The menu is also a “method” in the dictionary sense because it is a “planned way of doing something,” an “order or system,” and (aptly here) an “orderly or systematic arrangement, sequence or the like.” Random House Webster’s College Dictionary 853 (1991).

A different approach would be to say that Borland’s use is privileged because, in the context already described, it is not seeking to appropriate the advances made by Lotus’ menu; rather, having provided an arguably more attractive menu of its own, Borland is merely trying to give former Lotus users an option to exploit their own prior investment in learning or in macros. The difference is that such a privileged-use approach would not automatically protect Borland if it had simply copied the Lotus menu (using different codes), contributed nothing of its own, and resold Lotus under the Borland label.

The closest analogue in conventional copyright is the fair use doctrine. See, e.g., Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985). Although invoked by Borland, it has largely been brushed aside in this case because the Supreme Court has said that it is “presumptively” unavailable where the use is a “commercial” one. See id. at 562. But see Campbell v. Acuff-Rose Music, 114 S.Ct. 1164, 1174. In my view, this is something less than a definitive answer; “presumptively” does not mean “always” and, in any event, the doctrine of fair use was created by the courts and can be adapted to new purposes.

But a privileged use doctrine would certainly involve problems of its own. It might more closely tailor the limits on copyright protection to the reasons for limiting that protection; but it would entail a host of administrative problems that would cause cost and delay, and would also reduce the ability of the industry to predict outcomes. Indeed, to the extent that Lotus’ menu is an important standard in the industry, it might be argued that any use ought to be deemed privileged.

In sum, the majority’s result persuades me and its formulation is as good, if not better, than any other that occurs to me now as within the reach of courts. Some solutions (e.g., a very short copyright period for menus) are not options at all for courts but might be for Congress. In all events, the choices are important ones of policy, not linguistics, and they should be made with the underlying considerations in view.

SUPREME COURT OF THE UNITED STATES LOTUS DEVELOPMENT CORPORATION, PETITIONER v. BORLAND INTERNATIONAL, INC. ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FIRST CIRCUIT No. 94-2003.     January 16, 1996 PER CURIAM. The judgment of the United States Court of Appeals for the First Circuit is affirmed by an equally divided Court. JUSTICE STEVENS took no part in the consideration or decision of this case.

Notes

1. For those unfamiliar with spreadsheets, they provide a screen display that is a worksheet for doing financial and other numerical calculations. The screen is a rectangular grid arrangement of boxes (called “cells” in spreadsheet parlance) into which the user places numbers, formulas, or other symbols.

The user can manipulate the information in the spreadsheet by entering “command mode” done by pressing the slash (/) key and then entering a series of keystrokes. A keystroke or keystroke combination is conventionally represented by placing the appropriate symbols between angle brackets ( < and > ).

For example, the keystroke combination < / F R > involves the user’s successively pressing the keys /, then F, and then R. The result of this would be to bring up a list of 1–2–3 worksheets that are available for selection and use. The letters are typically the first letters of words representing the action. Thus, the F and R respectively refer to File and Retrieve.

An important aspect of spreadsheets is macros (i.e., macroinstructions), which are small programs for doing repetitive tasks. An example, described in the court’s opinion in Lotus Development Corp. v. Paperback Software Int’l, 740 F. Supp. 37 (D. Mass. 1990), is:

< / P P R A 1 . F 1 9 Ret A G Q >

This is a command to print the range of the spreadsheet running from cell A1 to cell F19, after aligning, and it tells the printer to “go” and then it “quits” operation.

Unless the order of symbols (keystrokes) exactly follows the syntax rules for 1–2–3, the macro will not work properly. For example, the sequence < / R F > has a different meaning from < / F R >. Rather than concerning file retrieval, < / R F > concerns range formats. Any error in keystrokes or their order will probabaly derail the macro by changing its meaning or turning it into gibberish. Thus, the symbols 123 mean something different from 312 when one is doing arithmetic. The same principle applies to Lotus 1-2-3 macros.

Preparation of 1–2–3 macros is tedious, and users are reluctant to rewrite their library of macros. (Consider the similar problems of a WordPerfect user required to switch to Word for Windows or vice versa.)

2. The command structure of Lotus 1–2–3 is the set of all keystrokes and keystroke sequences that make 1–2–3 do something. It can be represented diagramatically by a drawing resembling a decision tree. The tree represents the permissible paths or patterns of keystrokes that a command or statement in 1–2–3 can have. The following chart shows a small fragment of the command structure of 1–2–3.

3. The most notable departure of the Lotus–Borland opinion from immediately preceding appellate court decisions, for example, Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992), and Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823 (10th Cir. 1993), is its making the outcome turn wholly on a single categorization: is the claimed subject matter a method or not? This 1/0, binary approach contrasts with the more nuanced treatment that earlier courts applied to copyright infringement cases in which the defendant allegedly took an abstract aspect of a computer program (i.e., not a bit–for–bit or instruction–by–instruction copying of code). As the Lotus–Borland court’s description of the Altai mode of analysis indicates, those courts undertake some kind of quantitative evaluation, based on the test that Judge Learned Hand had developed for determining where along the extended idea/expression spectrum a taking had occurred. Here, one deceptively simple act of characterization determines the outcome.

Contrast this approach with the application of fair use, at which Judge Boudin hinted in his concurring opinion. What are the respective advantages and disadvantages of the two approaches? Consider the points suggested in the next to last paragraph of Judge Boudin’s opinion. What other choices are open to Congress?

4. In declining to use the Altai test, the Lotus–Borland court said it thought that test inapplicable because:

In the instant appeal, we are not confronted with alleged nonliteral copying of computer code. Rather, we are faced with Borland’s deliberate, literal copying of the Lotus menu command hierarchy. Thus, we must determine not whether nonliteral copying occurred in some amorphous sense, but rather whether the literal copying of the Lotus menu command hierarchy constitutes copyright infringement.

Is that point well taken? (Put aside at the outset the words, “copying of computer code,” for any partisan of a copyright owner will argue that it is the computer program, not just its code, that the copyright statute purports to protect.) If you have nonliteral copying of a computer program, that means that the defendant copied a relatively abstract aspect of the computer program — as if, by way of analogy, a novelist copied the plot of another novel but not its wording.

But in such a case, the alleged copyist always literally copies the given aspect of the other author’s work, speaking in terms of the level of abstraction corresponding to the taking. For example, Romeo and Juliet is, among other things, a story about a boy and girl who love each other and have problems because their in–laws dislike each other. (That is a very high level of abstraction. Any reasonable commentator would call it idea, not expression.) If you focus on that level, The Cohens and the Kellys and Abie’s Irish Rose each literally copies Romeo and Juliet. That is, they literally copy the element of boy loves girl and their in–laws are antagonistic.

(Indeed, the whole point of the Altai test is to deal with alleged copying of a somewhat abstract aspect of a computer program and determine whether it is too abstract an aspect to be protected by the copyright in the computer program.)

Is there a real difference between approximately copying elements of another work and literally copying a more generic formulation of the other work?

5. Is it possible to have a method or system analysis in which there is a spectrum, akin to that of the idea/expression spectrum for ideas? How would you apply that approach in this case?

What would the Lotus–Borland court say of the foregoing exercise? Consider, for example, this remark:

The “expressive” choices of what to name the command terms and how to arrange them do not magically change the uncopyrightable menu command hierarchy into copyrightable subject matter.

Moreover, the court described its decision as “holding that expression that is part of a ‘method of operation’ cannot be copyrighted” and “holding that methods of operation are not limited to abstractions.” How do you interpret that in respect of accepting an analysis based on an idea/expression continuum?

6. 17 U.S.C. § 102(b) refers to each of these categories of entity: idea, procedure, process, system, method of operation, concept, principle, or discovery. Are they all things of the same kind? Do they each have a spectrum of abstraction, or are some of them 1/0, binary? For example, can aspect of any discovery or concept be sufficiently concrete that it is protectable by copyright? If the things in § 102(b) are not all ejusdem generis with one another, how can you decide whether method should be nuanced or spectrumed (like idea/expression) or 1/0? Is the exclusion of discovery really in § 102(b) for another purpose? Does it exclude something else — something not too abstract but rather belonging to a different realm?

7. A characteristic feature of this opinion is the repeated use of the words “copyrightable” and “uncopyrightable” — as applied to the command structure used in 1–2–3. Is a command structure a work or a work of authorship?

Could you register a command structure in the Copyright Office and get a registration certificate for it?

Is it meaningful to speak of an aspect of a work being copyrightable or uncopyrightable? Is it mainstream? Compare this decision, for example, with Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204 (9th Cir. 1988); accord, Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320, 322–23 (2d Cir. 1996) (ruling that Second Circuit has strong preference for deciding merger of idea and expression as an infringement issue rather than as a copyrightability issue). Why does the Lotus-Borland court keep speaking of what is copyrightable or uncopyrightable, instead of whether the copyright in the work extends to the allegedly copied subject matter? See Morrissey v. Proctor & Gamble Co., 379 F.2d 675 (1st Cir. 1967).

8. This decision illustrates several different possible ways to approach excusing an alleged copyright infringement that constitutes copying of an element or aspect of a computer program that courts consider should not be protected against competitive copying. One approach, that of this decision, is to hold the copied element or aspect of the computer program not to be a writing of an author under Art. I, § 8, cl. 8, or not to be a work of authorship under the statute. A second approach, as in the Altai case is to accept the work (i.e., the computer program) as a work of authorship, but to hold that copyright protection of the work does not extend to the given element or aspect of the work. A third approach is that suggested in the concurring opinion of Judge Boudin — to accept that the work and the given element or aspect of it is prima facie subject to copyright protection, but hold that the affirmative defense of fair use excuses the defendant's copying in the particular factual context of the case.

Mitel, Inc. v. Iqtel, Inc.
United States Court of Appeals for the Tenth Circuit
124 F.3d 1366 (10th Cir. 1997)

Tacha, Circuit Judge

Introduction

Plaintiff Mitel, Inc. (“Mitel”) appeals the denial of its motion for a preliminary injunction in this action for copyright infringement. At issue is the protectability of a set of four-digit numeric instructions known as “command codes.” Mitel created these command codes to access the features of a piece of telecommunications hardware known as a call controller.

Mitel contends that the district court erred in denying its motion for a preliminary injunction based upon the court’s conclusion that Mitel failed to demonstrate a substantial likelihood that it will prevail on the merits of its claim. Specifically, Mitel argues that the district court erred by concluding that (1) Mitel’s command codes are unprotectable under 17 U.S.C. § 102(b) because they are a “procedure process, system, [or] method of operation”; (2) Mitel’s command codes are unprotectable under the scènes à faire doctrine; and (3) Iqtel’s use of the command codes is a fair use under the Copyright Act, 17 U.S.C. § 107. We affirm.

Background

Mitel and Iqtel manufacture competing call controllers. A call controller is a piece of computer hardware that enhances the utility of a telephone system by automating the selection of a particular long distance carrier and activating optional features such as speed dialing. Typically, a long distance carrier purchases a call controller from a manufacturer like Mitel or Iqtel and installs it on the premises of its business customer to automate that customer’s access to the carrier’s long distance service.

I. Mitel’s Call Controller and Command Codes

Mitel began manufacturing the Smart-1 call controller for sale in 1985. In order to activate and manipulate the features of its call controller, Mitel devised an instruction set of over 60 four–digit numeric command codes. Mitel published and copyrighted manuals describing how to program its call controller by using these command codes.

A technician activates features of a call controller by dialing the four-digit command code for a particular controller function on a touch-tone telephone or a computer keyboard connected to the call controller. The numeric value of each digit of a command code is generally limited to the keys on a telephone keypad, i.e., 0-9, *, and #.

Each command code may be broken down into separate parts, the names and particular definitions of which are important to our analysis. The first three digits of a command code are known together as the “register.” For most of Mitel’s codes, two digits of each three-digit register arbitrarily identify the particular function selected. A third digit may identify the particular telephone line to be accessed or the preprogrammed “route” that a call will take through the public telephone network to its destination. Mitel numbers telephone lines and routes sequentially. For example, the register “X27” identifies the function “Time to Auto Answer.” By activating this function a technician may specify the period of time the controller waits before answering an incoming call after it detects ringing. The “X” indicates the number of the telephone line for which the feature will be activated, 1-4 or 5 for all lines. Were a technician to enter 427, the controller would understand that the technician wished to set the period of time to wait before answering calls ringing on line four.

Mitel’s other registers identify features that do not apply to particular lines or routes. The functions accessed by this latter group are identified by a leading “0” followed by two arbitrary digits that represent the function to be accessed. For example, 006 stands for “RS-232 Baud Rate.” Were a technician to enter 006, the controller would understand that the technician wished to set the speed at which the controller was to communicate with other pieces of computer equipment, a printer for example.

The first digit of a register that is not a line number or a route number often represents a particular group of similar functions, e.g., a first digit of “9” indicates a group of special programming functions. Mitel admits that it arbitrarily selected the particular digit that represents each group of functions.

The final digit of Mitel’s command codes is known as the “description.” The description is a number or symbol (usually 0 through 9, *, or #) that represents a particular setting within each function. The various possible settings for each controller function are referred to as “values.” Thus, for each function, a “value” is assigned to each digit in the range of possible “descriptions.” For example, the possible descriptions and accompanying values for the function 006 (RS-232 Baud Rate) described above are:

Description	Value in Baud
1	110
2	300
3	600
4	1200
5	2400
6	4800
7	9600

Therefore, in order to set the RS-232 Baud Rate at 4800 baud, a technician would press the digits 0066 into a touch-tone telephone keypad. The combination of values and descriptions vary in nature and degree from function to function. Thus, the description “4” stands for the value of “1200 baud” for function 006, but stands for the value of “40 seconds” for the X27 (Time to Auto-Answer) function.

II. Iqtel’s Call Controller, Command Codes, and Copying

Iqtel began manufacturing the IQ200+ call controller for sale in 1994. Iqtel devised an instruction set of command codes to activate the features of its call controller. Although the Iqtel and Mitel call controllers provide many of the same features, to identify features of its controller, Iqtel selected “registers” that were different from Mitel’s “registers.” Iqtel used identical “descriptions” and “values” where the functions of the IQ200+ were the same as Mitel’s Smart-1 controller.

Because Mitel controlled a large share of the call controller market, Iqtel concluded that it could compete with Mitel only if its IQ200+ controller were compatible with Mitel’s controller. Iqtel reasoned that technicians who install call controllers would be unwilling to learn Iqtel’s new set of instructions in addition to the Mitel command code set, and the technicians’ employers would be unwilling to bear the cost of additional training. In addition to its own set of command codes, therefore, Iqtel designed the IQ200+ controller to accept Mitel command codes.

In order to produce a call controller compatible with Mitel’s controller, Iqtel copied Mitel’s command codes in three important respects. First, Iqtel programmed the IQ200+ to accept Mitel command codes and translate them to the corresponding Iqtel command code. Iqtel named this feature the “Mitel Translation Mode.” Second, Iqtel facilitated technicians’ use of this mode by publishing an appendix to its manual that listed and cross-referenced Mitel and Iqtel command codes. Third, in its own command codes, Iqtel copied Mitel’s “values” and the “descriptions” assigned to them for the call controllers’ common functions (as in the baud table shown above).

Iqtel’s IQ200+ proved to be highly competitive with Mitel’s Smart-1 call controller. Mitel commenced this copyright infringement action, sought a preliminary injunction, and the court heard three days of evidence on the matter. The district court denied Mitel’s motion for a preliminary injunction because Mitel failed to demonstrate a substantial likelihood that it will prevail on the merits of its claim.

Resting its decision on several grounds, the court found that Mitel’s command codes are not copyrightable subject matter because they constitute a method of operation under 17 U.S.C. § 102(b), they are unoriginal under 17 U.S.C. § 102(a), and they are dictated by external factors and unprotectable under the scenes a faire doctrine. In addition, the court concluded that if the command codes were protectable, Iqtel’s copying was a fair use of Mitel’s codes. Mitel now appeals these determinations.

Discussion

A plaintiff seeking a preliminary injunction must establish that (1) it has a substantial likelihood of prevailing on the merits, (2) it will suffer irreparable injury unless the injunction issues, (3) its threatened injury outweighs the injury caused the defendant by the injunction, and (4) an injunction would not be adverse to the public interest. We review the denial of a preliminary injunction to determine whether the district court abused its discretion, committed an error of law, or was clearly erroneous in its preliminary factual findings.

In order to establish copyright infringement plaintiff must prove (1) that it owns a valid copyright, and (2) that the defendant copied protectable elements of the copyrighted work. Feist. As to the first element, Iqtel does not appeal the district court’s determination that Mitel owns a valid copyright in the disputed work.

The second element requires us to consider two distinct issues. First we must determine whether, as a factual matter, the defendant copied plaintiff’s work. Second, as a mixed question of law and fact, we must evaluate whether the elements copied by the defendant are protected by copyright. As to the first issue, Iqtel admits that it copied virtually the entire set of Mitel command codes when it created its command set and the Mitel Translation Mode for the IQ200+ call controller. In addition, Iqtel undisputedly published the codes as part of the Mitel-to-Iqtel code translation tables in IQ200+ installation manuals.

Thus, the appeal before us requires us to evaluate whether Mitel is likely to prove that the command codes copied by Iqtel are protected by copyright. If we conclude that the codes are protectable expression, we must then consider whether Iqtel’s copying constitutes a fair use of the command codes under 17 U.S.C. § 107. Before analyzing whether the command codes are protectable, however, we must address the appropriate framework for our analysis.

I. The Analytical Framework

“Copyright protection subsists...in original works of authorship fixed in any tangible medium of expression...from which they can be perceived, reproduced, or otherwise communicated.” 17 U.S.C. § 102(a). Section 102(b) limits the scope of copyright protection by providing that “[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, [or] method of operation...regardless of the form in which it is described, explained, illustrated, or embodied.” 17 U.S.C. § 102(b).

Section 102(b) codifies one of copyright law’s fundamental distinctions—copyright protection extends to an author’s original expression and not to the ideas embodied in that expression. Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 836 (10th Cir.1993). Thus, when considering whether a defendant copied protectable elements of a copyrighted work, we must determine whether or to what extent the copied portions constitute ideas, processes, systems, or methods of operation, on one hand, or protectable expression, on the other. The district court relied alternatively on two means of separating Mitel’s idea from expression: a literal application of § 102(b) and the abstraction-filtration-comparison test.

In recent opinions this court has relied increasingly upon the conceptual framework known as abstraction–filtration–comparison to aid in separating idea from expression and identifying protectable expression. We utilize this approach as follows (Gates):

First, in order to provide a framework for analysis,...a court should dissect the [work] 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 [work] which are unprotectable. Filtration should eliminate from comparison the unprotectable elements of ideas, processes, facts, public domain information, merger material, scènes à 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 [work] to determine whether the defendants have misappropriated substantial elements of the plaintiff’s [work].

Abstraction-filtration-comparison analysis is particularly useful in cases involving copyright in computer programs.

*     The abstractions test is a conceptual tool that helps the court separate idea from expression. Judge Learned Hand first enunciated the approach in Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930): “Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his `ideas,’ to which, apart from their expression, his property is never extended.” The test does not identify protectable expression. “Rather it is merely one tool that can be utilized to accomplish this task.” Gates.

As its initial basis for finding Mitel’s command codes unprotectable, the district court applied the literal language of section 102(b) and concluded that Mitel’s set of command codes is an unprotected method of operation or “a method for achieving a particular result.” Gates. The court based its conclusion upon the finding that Mitel’s command codes comprise the method by which a long distance carrier matches the call controller’s functions, the carrier’s technical demands, and the telephone customer’s choices.

The First Circuit reached a similar conclusion in Lotus Development Corp. v. Borland Int’l, Inc., 49 F.3d 807 (1st Cir.1995), aff’d without opinion by an evenly divided Court, 116 S.Ct. 804 (1996). Lotus concerned whether the commands and the menu trees in which the commands were organized in the spreadsheet program Lotus 1-2-3 constituted copyrightable subject matter. The Lotus court defined “method of operation”:

We think that “method of operation” as that term is used in § 102(b) refers to the means by which a person operates something, whether it be a car, a food processor, or a computer.

Based upon this definition, the First Circuit concluded that the “menu command hierarchy” was not protected by copyright because the hierarchy and its components constituted a “method of operation” unprotectable under 17 U.S.C. § 102(b). The Lotus court concluded that the question whether a work is excluded from protection under section 102(b) logically precedes consideration of whether the individual components of the work are “expressive. Most significantly, the Lotus court held that otherwise protectable expression that is embodied in a method of operation is excluded under section 102(b) from copyright protection because it is part of the method of operation:

Under the district court’s reasoning, Lotus’s decision to employ hierarchically arranged command terms to operate its program could not foreclose its competitors from also employing hierarchically arranged command terms to operate their programs, but it did foreclose them from employing the specific command terms and arrangement that Lotus had used. In effect, the district court limited Lotus 1-2-3’s “method of operation” to an abstraction.

[W]e...hold that [the] expression [in Lotus’s expressive choices in choosing and arranging command terms] is not copyrightable because it is part of Lotus 1-2-3’s “method of operation.” We do not think that “methods of operation” are limited to abstractions; rather, they are the means by which a user operates something. If specific words are essential to operating something, then they are part of a “method of operation” and, as such, are unprotectable.

We conclude that although an element of a work may be characterized as a method of operation, that element may nevertheless contain expression that is eligible for copyright protection. Section 102(b) does not extinguish the protection accorded a particular expression of an idea merely because that expression is embodied in a method of operation at a higher level of abstraction. Rather, sections 102(a) and (b) interact to secure ideas for public domain and to set apart an author’s particular expression for further scrutiny to ensure that copyright protection will “promote the...useful Arts.” U.S. Const., art. I, § 8, cl. 8. Our abstraction-filtration-comparison approach is directed to achieving this balance. Thus, we decline to adopt the Lotus court’s approach to section 102(b), and continue to adhere to our abstraction-filtration-comparison approach.

Notwithstanding our endorsement of abstraction-filtration-comparison analysis, we emphasize that the approach is valuable only insofar as it aids the court in distinguishing protectable elements of a work from those that are unprotectable. Not every case requires an extensive abstraction-filtration-comparison analysis. Rather, “the appropriate test to be applied and the order in which its various components are to be applied ... may vary depending upon the claims involved, the procedural posture of the suit, and the nature of the [works] at issue.” Gates.

Where, as here, the alleged infringement constitutes the admitted literal copying of a discrete, easily-conceptualized portion of a work, we need not perform complete abstraction-filtration-comparison analysis. Mitel does not claim copyright in the names of the functions that are accessed by its command codes or in the idea of using four-digit numeric codes to manipulate the functions of a call controller. Rather, Mitel contends that copyright protection extends only to its selection of particular four-digit numbers that activate and manipulate the functions of the Smart-1 call controller and to the particular “values” assigned to the “description” digit of Mitel’s codes. Thus, we may proceed directly to the protectability analysis that is normally subsumed in the filtration portion of the abstraction-filtration-comparison approach.

II. Protectability Analysis

The district court concluded that Mitel’s command codes contain no protectable expression because the expression in the command codes lacks requisite originality and is not entitled to protection against infringement under the scenes a faire doctrine. We agree with the district court that Mitel’s command codes are largely unoriginal. Further, to the extent that the codes contain original expression, that expression is excluded from protection under the scènes à faire doctrine.

Copyright inheres only in original works of authorship. 17 U.S.C. § 102(a); Feist. “Original, as the term is used in copyright, means only that the work was independently created by the author...and that it possesses at least some minimal degree of creativity.” Feist. Although originality is not a “stringent” requirement, “[t]here remains a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually non-existent.”

Even though the district court discussed originality under section 102(a) and method of operation under section 102(b) together, the court clearly found that Mitel’s command codes lack originality. The district court stated that “the numbers constituting the command codes were arbitrarily chosen and arbitrarily assigned to each function.” Relying on Toro Co. v. R & R Prods., the court concluded that such arbitrariness was insufficient to sustain a finding of originality.

In Toro the Eighth Circuit rejected the copyrightability of a lawn tractor manufacturer’s numbering of replacement parts because the numbers were insufficiently original. When the manufacturer created each part, it assigned the part an arbitrary identifying number. The court held that the arbitrary assignment of numbers to parts lacked any creativity or variation by which one could distinguish authorship. Like the Toro court, the district court in this case concluded that Mitel used such minimal effort and judgment to select the “registers” and “descriptions” that they are unoriginal under section 102(a). We agree.

Mitel’s arbitrary selection of a combination of three or four numbers required de minimis creative effort. Mitel’s own witnesses testified to the arbitrariness of the command codes.* Scott Harper, a Mitel marketer who selected some of the “registers” and “descriptions,” testified that he selected the numbers arbitrarily, without any attempt to place his mark on them. Similarly, John Zabel, a Mitel software design engineer, testified that Mitel’s command codes are arbitrary and largely sequential. Finally, plaintiff’s own expert testified that Mitel’s registers were arbitrary and “real close to random,” and that there is no evidence of anyone trying to “put their mark” on the codes. In addition, the record contains no evidence that particular digits of the “register” representing logical groups of functions were selected in a non-arbitrary manner. We agree with the district court that the random and arbitrary use of numbers in the public domain does not evince enough originality to distinguish authorship.

*     According to Mitel, its witnesses used the word “arbitrary” to mean that the command codes could have been written in a variety of different ways, not only the way that was chosen by Mitel’s engineers. Thus, Mitel contends that the expression contained in its command codes is not subject to application of the merger doctrine. Under that doctrine, copyrightable expression is denied protection from infringement because the expression is inseparable from or merged with the ideas, processes, or discoveries underlying the expression. Mitel fails to recognize that originality is an independent requirement that is not satisfied merely because the merger doctrine is inapplicable. The district court did not apply the merger doctrine to deny Mitel’s command codes protection from infringement, and we do not rely on that doctrine to reach today’s holding.

Further, purely sequential elements of the codes are not original under section 102(a). The “descriptions” are strictly sequential and matched with increasing incremental “values.” The concept of numbering registers and descriptions in ascending sequence is analogous to arranging telephone entries in alphabetical order. Both of these arrangements are obvious and insufficiently creative to constitute original expression under section 102. See Feist. Thus, Mitel’s arbitrary assignment of particular numbers to particular functions and its sequential ordering in registers and descriptions "lack[ ] the modicum of creativity necessary to transform mere selection into copyrightable expression." Id. We must also consider the originality of the remaining component of Mitel’s command codes — the content of the “values” created by Mitel and assigned to its “descriptions.” Mitel devised the “values” to set each function at a particular level of operation. For example, the possible “values” or settings for the function 006 (RS-232 Baud Rate) described above are 110 baud, 300 baud, 600 baud, 1200 baud, 2400 baud, 4800 baud, and 9600 baud. As another example, upon the failure of a call sent over a particular telephone network route, the technician can activate the “R58” function which tells the controller how to respond to the failure. The possible values for the function include several combinations of redialing over another route or reattempting the call over the same route again before trying another route.

Unlike the merely arbitrary or sequential registers and descriptions discussed above, Mitel’s values reveal “the existence of ... intellectual production, of thought, and conception.” Feist (quoting Burrow-Giles Lithographic Co. v. Sarony). We find that the effort required of Mitel’s employees to devise appropriate values for the wide variety of individual functions reflects at least the minimal degree of creativity to qualify as an “original” work of authorship. Thus, we must further evaluate whether the expression found in Mitel’s values is protected from infringement or excluded from protection by the scènes à faire doctrine.

B. Scènes à faire

The district court concluded that Mitel’s command codes should be denied copyright protection under the scènes à faire doctrine because they are largely dictated by external factors such as hardware compatibility requirements and industry practices. Under the scènes à faire doctrine, expressive elements of a work of authorship are not entitled to protection against infringement if they are standard, stock, or common to a topic, or if they necessarily follow from a common theme or setting.

Granting copyright protection to the necessary incidents of an idea would effectively afford a monopoly to the first programmer to express those ideas. Furthermore, where a particular expression is common to the treatment of a particular idea, process, or discovery, it is lacking in the originality that is the sine qua non for copyright protection.

We have extended this traditional copyright doctrine to exclude from protection against infringement those elements of a work that necessarily result from external factors inherent in the subject matter of the work. For computer-related applications, these external factors include hardware standards and mechanical specifications, software standards and compatibility requirements, computer manufacturer design standards, industry programming practices, and practices and demands of the industry being serviced. Because these factors concern functional aspects of a work, the scènes à faire doctrine plays a particularly important role in ensuring that copyright rewards and stimulates artistic creativity in a utilitarian work “in a manner that permits the free use and development of non-protectable ideas and processes” that make the work useful.

In its discussion of scènes à faire, the district court properly focused on the factual circumstances surrounding Mitel’s selection of registers, descriptions, and values. A portion of its analysis, however, discussed whether external factors such as market forces and efficiency considerations justified Iqtel’s copying of the command codes. The court’s analytical focus should have remained upon the external factors that dictated Mitel’s selection of registers, descriptions, and values. By excluding expression dictated by external factors from protection against infringement, copyright law secures for public use the “necessary incidents” of ideas and processes and strikes the appropriate balance between competition and protection. Thus, the scènes à faire doctrine identifies and excludes from protection against infringement expression whose creation flowed naturally from considerations external to the author’s creativity.

Nonetheless, in this case the district court correctly found that much of the expression in Mitel’s command codes was dictated by the proclivities of technicians and limited by significant hardware, compatibility, and industry requirements. In particular, the record contains substantial evidence supporting the conclusion that Mitel’s values should be excluded from protection against infringement under the scènes à faire doctrine.

External factors frequently dictated Mitel’s selection of particular values to activate the range of call controller functions. For example, many of the values were selected by Mitel’s product management department in response to customer demand or to ensure compatibility with equipment already installed in the central offices of Mitel’s customers. Frequently, the values were divided in equal increments across a numerical range, and the descriptions and the value increments were matched in ascending steps. Standard programming conventions such as “1” for “on” and “0” for “off” determined some of the descriptions and values. In addition, some of the values for the set of command codes that were actually copied were dictated by the need for compatibility with older-model Mitel call controllers or the limits on the capabilities of the controller itself. Other values were dictated by the limits inherent in the public telephone networks that the call controllers accessed. For example, the vice president of Iqtel, Don Jorgenson, testified that the phone company is able to recognize touch-tone numbers only when the tone lasts 40 milliseconds or longer. Thus, the minimum length of time that a technician can set a touch-tone to last using Mitel’s command code X02 (“DTMF [touch tone] Dialing Rates”) or Iqtel’s command code 17L (“DTMF Tone Length”) is 40 milliseconds. In sum, although Mitel’s values constitute non-arbitrary original expression, they are unprotectable as scènes à faire because they were dictated by external functionality and compatibility requirements of the computer and telecommunications industries.

Consideration of Mitel’s motion for a preliminary injunction did not require the district court to conduct an exacting examination and analysis of every component of every command code. Rather, the district court must determine upon the evidence before it whether the plaintiff is substantially likely to succeed on the merits of its action. The record in this case contains ample evidence that Mitel is not substantially likely to succeed on the merits. The doctrines of originality and scenes a faire render Mitel’s command codes unprotected by copyright. Therefore, we need not consider whether Iqtel’s copying of Mitel’s command codes constituted fair use under 17 U.S.C. § 107.

Conclusion

Mitel has failed to demonstrate that its command codes contain expression that is original and goes beyond the necessary incidents of the ideas which the codes express. We therefore conclude that the district court did not abuse its discretion in denying the preliminary injunction.

Notes

1. This is one of the few reported appellate decisions, thus far, to follow the approach of the First Circuit’s Lotus-Borland opinion.

2. The court’s treatment of Mitel’s “arbitrary” argument is interesting. Mitel argued that its selection of code numbers was “arbitrary,” to show that the defendant could have readily selected any of a number of different choices, as Mitel had done. Mitel made this argument to support its contention that the code numbers were expression rather than idea, and wanted to avoid any argument by the defendant that the code numbers were dictated by function and thus ideas (i.e., § 102(b) subject matter). If the code numbers were dictated by function, they would be unprotected or (to use an alternative formulation) uncopyrightable, as ideas or scènes à faire.

This suggests Catch 22. The court responded to Mitel’s line of argument by finding that such an “arbitrary” choice is mindless and thus unoriginal. Mitel’s engineers did not “try to put their mark on the codes” and the codes were “real close to random.” A chimpanzee rolling dice, or a computer program using a random number generator, or a participant in the exercise of Schrodinger’s cat — does not thereby engage in creation of an original work of authorship. There has been a completely contrary attitude toward arbitrariness as the hallmark of authorship, seen in a line of authority typified by (and relying on) Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987). Thus, compare with the Mitel decision the following passage from Atari Games Corp. v. Nintendo of America, Inc., 975 F.2d 832, 840 (Fed. Cir. 1992):

Nintendo’s 10NES program contains more than an idea or expression necessarily incident to an idea. Nintendo incorporated within the 10NES program creative organization and sequencing unnecessary to the lock and key function. Nintendo chose arbitrary programming instructions and arranged them in a unique sequence to create a purely arbitrary data stream. This data stream serves as the key to unlock the NES. Nintendo may protect this creative element of the 10NES under copyright.

3. There is a curious passage in the Mitel opinion where the court considers protected expression embedded in a system:

We conclude that although an element of a work may be characterized as a method of operation, that element may nevertheless contain expression that is eligible for copyright protection. Section 102(b) does not extinguish the protection accorded a particular expression of an idea merely because that expression is embodied in a method of operation at a higher level of abstraction. Rather, sections 102(a) and (b) interact to secure ideas for public domain and to set apart an author’s particular expression for further scrutiny to ensure that copyright protection will “promote the . . . useful Arts.” U.S. Const., art. I, § 8, cl. 8. Our abstraction-filtration-comparison approach is directed to achieving this balance. Thus, we decline to adopt the Lotus court’s approach to section 102(b), and continue to adhere to our abstraction-filtration-comparison approach.

The court says that even if it finds that the subject matter in question is § 102(b) subject matter, § 102(b) does not extinguish copyright protection for an expression embedded or embodied within the system, method of operation, concept, idea, or discovery. The Yin of 102(a) must be balanced with the Yang of 102(b).

What copyright protection does the statute contemplate for such subject matter when it says, “In no case does copyright protection for an original work of authorship extend to any idea, etc.”? How can there be “unextinguished” copyright protection where copyright protection does not extend? Baker v. Selden allows expression of an idea or art (e.g., verbal description in a book), but can there be expression in the idea or art? Say, in double entry accounting?

Excerpt from Jon O. Newman, New Lyrics For An Old Melody:
The Idea/Expression Dichotomy In The Computer Age,
17 Cardozo Arts & Ent L.J. 691 (1999)

[Judge Newman was a member of the panel that decided the Altai case. This article, adapted from the Sixth Annual Herbert Tenzer Distinguished Lecture In Intellectual Property Law, given at the Benjamin N. Cardozo School of Law, October 22, 1998, was written about six years after that decision.]

In the area of computer programs, I think we might be better off to recognize that, although we need to separate protectable “expression” from unprotectable “ideas,” a somewhat different vocabulary might assist us in properly balancing the ultimate values we seek to advance. Thus, I do not consider it helpful, in considering the protection accorded source code, to ask whether it is the written expression of an idea embodied at some higher level of abstraction within the computer program. I would rather begin the process of labeling the protectable and unprotectable elements of computer programs with terms peculiar to the realm of software. For example, I might move away from referring to source code as the “expression” of an “idea,” a phrasing that all too readily enlists the doctrines and case law developed in cases involving written texts, and instead call these arcane writings what they are called in cyberspace – namely, source code. Then, I could consider which source codes or which portions of source codes were protectable. Also, I might not call the unprotectable aspects of a computer program “ideas,” which again evokes the written text cases, but instead call them something like “program purposes” or “program objectives.” After all, you don’t see many cases involving copyrights in musical works talking about the “expression” of some musical “idea.” Why should we force upon copyright cases involving computer programs the same vocabulary we use for cases involving written texts? ...

By using terms appropriate to the subject matter, I might begin to realize that what is relevant in applying the idea-expression dichotomy to computer programs is not necessarily the same as what is relevant in other areas. Judge Hand observed that with plays, characters and the sequence of incidents were especially important. Well, there are no characters in software, at least not literary characters. There are, I suppose, what might be called “incidents,” but we ought not blithely equate the sequence of incidents that combine to form the plot of a play with the sequence of steps that the computer program instructs the computer to perform on data. ...

These professionals [expert witnesses] would be well advised not to tell me simply that the source code is or is not protectable expression. Their opinions are relevant, but, as with all opinions, what renders them persuasive is not the vehemence of their assertion and not even the credentials of those asserting them; it is the cogency and persuasive force of the reasons they give for their respective positions. These reasons had better relate to the specifics of the computer software field. For example, as Altai indicates, even with its overly structured mode of analysis, it will be very important for me to know whether the essential function being performed by the copyrighted program is a function that can be accomplished with a wide variety of source codes, which will strengthen the case for protection, or, on the other hand, is a function capable of execution with very few variations in source code, or variations of such triviality as to be disregarded, in which event protection will be unlikely. For me, this mode of analysis is essentially what in other contexts we call the merger doctrine – the expression is said to have merged with the idea because the idea can be expressed in such limited ways that protection of the plaintiff’s expression unduly risks protecting the idea itself. ...

However we come out on these broader public policy and even constitutional issues, I hope that as lawyers, commentators, and courts analyzing copyright issues in the computer field under existing statutes, we will recognize that the analysis appropriate to written text is not transferable wholesale to the realm of computer software and hardware, and that seductively phrased “tests” are, at most, only an aid to understanding and not a mechanical process that can readily yield answers. ... I am not sure we ought to have something called an “abstraction-filtration-comparison test.” Moreover, I am quite sure that whatever approaches we develop to help us decide copyright cases in the computer field should not be uncritically imported back into traditional areas of written text, music, or audio-visual works. At a most abstract level, we can continue to recognize that ideas are not copyrightable and that the expression of ideas is copyrightable.

At a less abstract level of thought, however, what we must strive for is a recognition that the differences among modes of expression oblige us to eschew anything like “tests” that can yield answers across all fields. It is at this less abstract level that copyright cases will be decided. We will need the help of all knowledgeable students of copyright so that we can proceed as well as possible to balance the need for creation with the need to copy — all toward the ultimate Progress of Science and the Useful Arts.

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