Chapter 4: Copyright Protection of
Software: Functionality, Constraints, and
Merger of Idea and Expression (Continued)

Gates Rubber Co. v. Bando Chemical Industries, Ltd.
United States Court of Appeals
9 F.3d 823 (10th Cir. 1993)

Ebel, Circuit Judge

The defendants appeal from the order of the district court in which it found that the defendants has infringed Gates’ copyright on an engineering computer program. We conclude that the district court erroneously extended copyright protection to certain unprotectable elements of the computer program. We also conclude that the district court failed properly to determine the protectability of many of the elements of Gates’ program which it found to have been copied by the defendants. Accordingly, we remand the copyright claims to the district court for a reconsideration of the programs in the light of the test we set forth herein, which involves a determination of whether there was copying and a determination of whether the copying constitutes actionable infringement through application of the abstraction – filtration – comparison test.


Gates Rubber Co. (“Gates”) manufactures rubber belts for use in industrial machinery. In order to determine the proper rubber belt for a particular machine it is necessary to perform complicated calculations involving numerous variables. The complexity of these calculations is such that they have customarily been performed by an engineer and significant variance in outcome often resulted. In order to facilitate the efficient and accurate selection of belts, and to boost the sales of their products, Gates developed a computer program entitled “Design Flex 4.0” With this program a salesman can input a number of variables and thereby calculate the proper Gates belt for a machine. The program uses published formulas in conjunction with certain mathematical constants developed by Gates to determine belt size. Gates obtained a certificate of copyright registration on its Design Flex program.

The defendant, Bando American (“Bando”), is a division of a Japanese corporation that competes with Gates in the manufacture and sales of industrial belts. In 1989 Bando introduced “Chauffeur,” a computer program similar to Gates’ Design Flex program.

Gates sued Bando in January 1992. In June 1992 the district court issued its opinion finding that the defendants had infringed Gates’ copyright and willfully and maliciously misappropriated trade secrets. The appellants claim that the district court erred when it (i) extended copyright protection to facts and ideas in the Design Flex program, and (ii) granted relief on Gates’ trade secret claim.

This case presents a number of issues that have never been squarely before a panel of this circuit, most notably the proper test to be applied to determine the scope of copyright protection for computer programs. In an attempt to aid the district courts in this determination and to bring clarity to this difficult area of the law, we first set forth what we consider to be the best means to determine the scope of protection. In this first section, we seek to draw together the major issues that must be addressed and we try to organize the issues within a coherent framework for the district courts that must address these claims in the first instance. We next summarize the key judicial decisions that control and illuminate our analysis. We then apply our legal analysis to the facts in this case, finding that in several respects the district court erred in its application.


A. The test for determining whether the copyright
of a computer program has been infringed

In order to prevail on a claim of copyright infringement, the plaintiff must show ownership of a valid copyright and copying by the defendant of protected components of the copyrighted material.

Once the plaintiff has shown that it holds a valid copyright, it must next prove that the defendant unlawfully appropriated protected portions of the copyrighted work. This question involves two separate inquiries: (1) whether the defendant, as a factual matter, copied portions of the plaintiff's program (that is, violated any of the plaintiff's exclusive rights under 17 U.S.C. § 106); and (2) whether, as a mixed issue of fact and law, those elements are protected expression and of such importance to the copied work that the appropriation is actionable.

Although we suggest that it will often be helpful to make an initial determination of whether the defendants copied portions of the plaintiff's program before determining whether the copying involved elements protectable under the copyright law, there may be cases where the issue of protectability can more efficiently be addressed first. The order of the analysis will depend on the individual facts and issues in each case. Of course, even if generalized copying is established in the first instance, it will ultimately still be necessary to establish copying of precisely identified protected elements of a program before copyright infringement can be established.

The court's inquiry does not end with a finding that the defendant copied portions of the plaintiff's program. Liability for copyright infringement will only attach where protected elements of a copyrighted work are copied. Baker v. Selden. “[T]he mere fact that a work is copyrighted does not mean that every element of the work may be protected.” Feist. Accordingly, in order to impose liability for copyright infringement the court must find that the defendant copied protectable elements of the plaintiff's program and that those protectable elements comprise a substantial part of the plaintiff's program when it is considered as a whole.

Determining which elements of a program are protectable is a difficult task. However, an effective test can be formulated. In substantial part, we adopt the “Abstraction – Filtration – Comparison” test. See Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992).

First, in order to provide a framework for analysis, we conclude that a court should dissect the program according to its varying levels of generality as provided in the abstractions test. Second, poised with this framework, the court should examine each level of abstraction in order to filter out those elements of the program that 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 program to determine whether the defendants have misappropriated substantial elements of the plaintiff's program.

We now proceed to examine each of these steps in detail.

1. Abstraction

The first step in the analysis involves dissecting the allegedly infringing program according to the abstractions test, which breaks down a program in a way that parallels the typical development of a program.

However, in and of itself, the abstractions test does not identify the protectable elements of a program. Rather, it is merely one tool that can be utilized to accomplish this task.

Application of the abstractions test will necessarily vary from case to case and program to program. Given the complexity and ever–changing nature of computer technology, we decline to set forth any strict methodology for the abstraction of computer programs. Indeed, in most cases we foresee that the use of experts will provide substantial guidance to the court in applying an abstractions test. However, a computer program can often be parsed into at least six levels of generally declining abstraction: (i) the main purpose, (ii) the program structure or architecture, (iii) modules, (iv) algorithms and data structures, (v) source code, and (vi) object code.

The program's architecture or structure is a description of how the program operates in terms of its various functions, which are performed by discrete modules, and how each of these modules interact with each other. The architecture or structure of a program is often reduced to a flowchart, which a programmer uses visually to depict the inner workings of a program. Structure exists at nearly every level of a program and can be conceived of as including control flow, data flow, and substructure or nesting. Control flow is the sequence in which the modules perform their respective tasks. Data flow describes the movement of information through the program and the sequence with which it is operated on by the modules. Substructure or nesting describes the inner structure of a module whereby one module is subsumed within another and performs part of the second module's task.

The next level of abstraction consists of the modules. A module typically consists of two components: operations and data types. An operation identifies a particular result or set of actions that may be performed. For example, operations in a calculator program might include adding or printing data. A data type defines the type of item that an operator acts upon such as a student record or a daily balance. Algorithms and data structures are more specific manifestations of operations and data types, respectively. An algorithm is a specific series of steps that accomplish a particular operation. Data structure is a precise representation or specification of a data type that consists of (i) basic data type groupings such as integers or characters, (ii) values, (iii) variables, (iv) arrays or groupings of the same data type, (v) records or groupings of different date types, and (vi) pointers or connections between records that set aside space to hold the record's values. These generalized levels of abstraction will not, of course, fit all computer codes. Ordinarily, expert testimony will be helpful to organize a particular program into various levels of abstraction. In any event, as pointed out earlier, the organization of a program into abstraction levels is not an end in itself, but it is only a tool that facilitates the critical next step of filtering out unprotectable elements of the program.

2. Filtration

Once a court has succeeded in identifying the various levels of abstraction of a computer program, it must filter out those elements of the program that are not protected by copyright. The Copyright Act provides that “ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries” are not protectable. 17 U.S.C. 102(b). Accordingly, the court must filter out these unprotectable elements. In order to effectuate the purposes behind the copyright laws, it is also appropriate to apply the doctrines of merger and scenes a faire to filter out unprotectable elements.

One of the fundamental tenets of copyright law is that protection extends only to the author's original expression and not to the ideas embodied in that expression. 17 U.S.C. § 102(b) codifies this tenet by denying copyright to ideas, concepts and principles. Numerous cases have expounded on the idea-expression dichotomy. Distinguishing between ideas and the expression of those ideas is not an easy endeavor, and given the varying nature of computer programs it must necessarily be ad hoc. With the framework provided by the abstractions test, however, we believe that a court can adequately filter out the ideas of a program.

For example, the main purpose or function of a program will always be an unprotectable idea. Likewise, each module may typically be described by its individual purpose or function, and the basic function or purpose of a module will nearly always be an unprotectable idea or process. At the other end of the abstractions spectrum, source and object code, which are the literal elements of a program, will almost always be found to be protectable expression unless the doctrines of merger and scenes a faire come into play. See Altai.

The intermediate levels of abstraction, such as structure, sequence, organization, and the like, are less prone to generalizations. While the structure of one program may be unprotectable because it constitutes an idea, the organization and arrangement of another program may be expressive and thereby protectable. And, of course, within a program certain structural elements may be protectable expression while other elements are unprotectable ideas.

Although it is the idea-expression distinction that has received the primary attention in the cases construing copyright protection, the Copyright Act denies protection to other equally important program elements. When considering utilitarian works such as computer programs one of the most important of these elements is process. 17 U.S.C. § 102(b) denies protection to procedures, processes, systems and methods of operation. (For simplicity, we will refer only to “process.”) The legislative history of the Copyright Act clarifies any ambiguity about the status of processes:

Some concern has been expressed lest copyright in computer programs should extend protection to the methodology or processes adopted by the programmer, rather than merely to the “writing” expressing his ideas. Section 102(b) is intended, among other things, to make clear that the expression adopted by the programmer is the copyrightable element in a computer program, and that the actual processes or methods embodied in the program are not within the scope of the copyright law. [H.R. Rep. No. 1476, 94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670.]

The Supreme Court addressed the copyrightability of a utilitarian process in Baker v. Selden. There, the Court considered whether the author of a book describing an accounting system could obtain protection over the system itself through copyright of the book. The Court distinguished the “art” or process from the author's explanation thereof and found the former unprotectable. Other courts have similarly found processes unprotectable. Certain processes may be the subject of patent law protection under Title 35 of the United States Code. Although processes themselves are not copyrightable, an author's description of that process, so long as it incorporates some originality, may be protectable.

Returning then to our levels of abstraction framework, we note that processes can be found at any level, except perhaps the main purpose level of abstraction. Most commonly, processes will be found as part of the system architecture, as operations within modules, or as algorithms.

The Copyright Act also denies protection to discoveries. The Supreme Court squarely addressed the issue of the protectability of facts in its recent opinion in Feist. In Feist, the Court considered the copyrightability of a telephone directory comprised merely of names, addresses, and phone numbers organized in alphabetical order. The Court rejected the notion that copyright law was meant to reward authors for the “sweat of the brow,” and instead concluded that protection only extends to the original components of an author's work. Like ideas and processes, facts themselves are not protectable; however, an author's original compilation, arrangement or selection of facts can be protected by copyright. However, “the copyright is limited to the particular selection or arrangement. In no event may copyright extend to the facts themselves.” Feist. In computer programs facts may be found at a number of levels of abstraction, but will most often be found as part of data structures or literally expressed in the source or object codes.

17 U.S.C. § 102(a) establishes that copyright can only subsist in “original works of authorship.” Originality in the field of copyright requires that the work be independently created by the author and that it possesses a minimal degree of creativity. Feist. Accordingly, in determining copyright infringement, a court must filter out all unoriginal elements of a program, including those elements that are found in the public domain. Unoriginal elements of a program may be found at any level of abstraction.

Once a court has filtered out a program's ideas, processes, facts, and unoriginal elements, it has eliminated most of those elements that are unprotected based on the first principles of copyright law. However, in order to give effect to these principles, the courts have devised two additional filtration doctrines. These are the doctrines of merger and scenes a faire.

Under the merger doctrine, copyright protection is denied to expression that is inseparable from or merged with the ideas, processes, or discoveries underlying the expression. The merger doctrine is applied as a prophylactic device to ensure that courts do not unwittingly grant protection to an idea by granting exclusive rights to the only, or one of only a few, means of expressing that idea. If protection were granted to these expressions, it would so increase the cost of creation for others who seek to build on the work that it would impede progress in the arts. Such a result is contrary to the goals of copyright as embedded in the Constitution.

Under the scènes à faire doctrine, we deny protection to those expressions that are standard, stock, or common to a particular topic or that 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.

The scènes à faire doctrine also excludes from protection those elements of a program that have been dictated by external factors. In the area of computer programs these external factors may include: hardware standards and mechanical specifications, software standards and compatibility requirements, computer manufacturer design standards, target industry practices and demands, and computer industry programming practices.

3. Comparison

After the court has filtered out those elements of the original program that it has found to be unprotectable, it is left with a core of protected elements that can be compared to the alleged infringing program. Ultimately the court must decide whether those protectable portions of the original work that have been copied constitute a substantial part of the original work — i.e., matter that is significant in the plaintiff's program. This is primarily a qualitative rather than a purely quantitative analysis, and must be performed on a case-by-case basis.

B. Review of Key Judicial Precedent

The test that we adopt today is firmly rooted in traditional principles of copyright law.

The Second Circuit in Computer Associates International, Inc. v. Altai built on the case law that proceeded it. The court agreed that copyright can protect the non-literal structures of computer programs. In analyzing the similarity of the computer programs before it, the Altai court utilized a three-part test. The Altai court articulated its test as an “Abstraction–Filtration–Comparison” test.

Under the first prong the court dissected the program and identified the various levels of abstraction in the program. Under the second prong, the court examined the separate elements within the program and eliminated those elements that it found to be either (1) ideas, (2) in the public domain, (3) required by factors external to the program, or (4) dictated by efficiency concerns such that the idea and expression were inseparable. Those unprotectable elements were then filtered out before the two programs were compared.

Finally, in the third prong, the court examined the remaining “core of protectable expression” to determine whether the defendant's program misappropriated substantial portions of the plaintiff's program.

We accept this basic three-part analysis and seek only to elaborate upon the various steps and to clarify the role of the abstraction test. We suggest that a court will often be assisted in determining the factual issue of copying if both programs are first compared in their entirety without filtering out the unprotected elements. Such a preliminary step does not obviate the ultimate need to compare just the protected elements of the copyrighted program with the alleged infringing program. However, an initial holistic comparison may reveal a pattern of copying that is not obvious when only certain components are examined.

The Supreme Court's most recent pronouncements in the area of copyright law came in Feist. Although Feist concerned the protectability of telephone directories rather than computer programs, the Court clarified several principles of copyright law applicable to the area of computers. The Court held that facts are not copyrightable regardless of the effort the author undertook to discover or compile them. In doing so the court rejected the “sweat of the brow” doctrine, which maintained that copyright was meant to protect and reward the efforts of an author. The court established that it is originality, not effort, that is the basis of copyright protection. However, the Court concluded that the original organization, selection, or arrangement in a work that is comprised exclusively of unprotectable facts could nevertheless be protected.

We find in these and other cases that have considered the copyrightability of computer programs that there has begun to be developed a coherent approach to the protectability analysis. The approach that we outline today is consistent with this evolving approach to the copyright protection of computer programs.

C. Applying the Abstraction–Filtration–Comparison
Test to the Computer Programs at Issue in This Case

The district court undertook an analysis similar to that which we set forth today. First, it determined whether, as a factual matter, the Chauffeur program had been copied from the Design Flex program. The court initially found that the defendants had access to the Design Flex program. It then considered the testimony of the expert witnesses and identified a number of similarities between the two programs. The court concluded that “the only explanation regarding the constants, the install files, and the overall data flow and presentation, is that the Chauffeur program was copied from the Design Flex program.”

Next, the court applied the abstractions test to identify “unprotectable ideas.” The court dissected the program and considered whether certain of the elements more closely approximated idea or expression. The court concluded that the merger doctrine and the scènes à faire doctrine were inapplicable. Finally, the court evaluated what it regarded as the protectable elements and determined that they were sufficiently significant to the Design Flex program to conclude that the defendants had infringed on Gates’ copyright in the Design Flex program when it copied such elements.

The copyright issues on appeal all revolve around whether the district court erroneously extended copyright protection to unprotectable elements of the Design Flex program. The appellants argue that the court failed to consider whether three of the elements of the Design Flex program were protectable, and that it applied the wrong legal standard in protecting certain elements of the Design Flex program. The appellants argue that if a proper filtration analysis were conducted, the Chauffeur program would not be found to have infringed any protectable elements of the Design Flex program.

The district court ultimately concluded that the defendants had misappropriated ten elements of the Design Flex program that were protected by Gates’ copyright. They included: menus, constants, sorting criteria, control flow, data flow, the engineering calculation module, the design module, common errors, fundamental tasks, and install files. We conclude that the district court failed to undertake a proper filtration analysis with respect to several elements and that it erroneously found other elements to be protectable. Accordingly, we remand for further consideration by the district court.

1. Constants

Constants are the invariable integers that comprise part of the formulas used to perform the calculations in the programs. The district court failed to consider whether the constants were unprotectable processes or facts or whether they were subject to the merger doctrine. In failing to undergo the filtration process, the court skipped an essential step in the copyright infringement analysis and as a result extended copyright protection to an unprotectable element of Design Flex.

The record reveals that these constants are facts that are unprotectable under copyright law. The constants in the Design Flex program represent scientific observations of physical relationships concerning the load that a particular belt can carry around certain sized gears at certain speeds given a number of other variables. These relationships are not invented or created; they already exist and are merely observed, discovered and recorded. Such a discovery does not give rise to copyright protection. See Feist (“Facts do not owe their origin to an act of authorship. The distinction is one between creation and discovery: the first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence.”).

Gates claims that the constants should be protected because it spent thousands of hours testing the relationships and because engineers ultimately had to determine the best figure to represent the test results. (Gates mischaracterizes the derivation of the constants as having been “created.”) However, this argument amounts to an assertion of the “sweat of the brow” doctrine which has been rejected by the Supreme Court. Feist.

Accordingly, while the constants were probative of the factual question whether the defendants copied from the Design Flex program, they were unprotectable and therefore should have been filtered out before the district court addressed the ultimate question of whether the defendants infringed on Gates’ copyright. Instead, the court relied heavily on the similarity of the constants in the two programs when it concluded that Chauffeur infringed on Gates’ copyright. It noted that the constants “lie at the heart of the dispute,” and gave “special regard to the mathematical constants” in finding that the defendants had violated Gates’ copyright. Because of the court's emphasis on the constants in its reasoning, and our finding that the constants are unprotectable facts, we remand for the district court to consider whether the remaining protectable elements found to have been copied are such a substantial part of the Design Flex program that their misappropriation constitutes copyright infringement.

2. Control and Data Flow

Control flow refers to the overall sequence of actions and events in a program. Data flow is the sequence of actions taken on each piece of information, that is, how the data travels through the program. The district court found that “the flow of these two types of information are closer to the expression of how the task is performed than the idea of undertaking calculation of belts and drives by use of a computer program.” The defendants object that this conclusion is erroneously predicated on the dicta in Whelan that each program has only one idea. They assert that the control and data flow elements occur at such high levels of abstraction that they are inappropriate for copyright protection.

A fair reading of the district court opinion suggests that the court recognized that a computer program may contain more than one idea, and that unprotected ideas may be found throughout the program. However, we are more concerned by the district court's failure to examine the control and data flow in light of the process-expression dichotomy. Again, the district court failed to define exactly what it meant by control flow and data flow and the record is unclear. We remand for clarification of the terms “control flow” and “data flow” and for reconsideration of these elements in light of the idea-expression and process-expression dichotomies as they have been set forth in this opinion.

3. Engineering and Design Modules

The program performs its calculations and selects the proper belt through a series of operating instructions contained in modules. The district court concluded:

The modules of the program were also found to be substantially similar. These modules, like chapters of a novel or scenes from a play, performed particular functions — here the engineering calculations and the design aspect of the program (containing the V-belt design algorithms). Concerning the former module, it was noted that behavior was similar, and with the latter the similarity concerned overall structure and organization. With regard to the former module, this falls closer to the expression range because, although the pure engineering aspect in a broad sense may be more likely to be not protected, the relevant engineering modules in the two programs contain particular elements which perform in similar manners. The latter module is somewhat more difficult as it involves algorithms, or procedures for solving given types of mathematical problems. The Court here rejects the argument that while the remaining portion [of the program] is properly protected under copyright law, the algorithms, as a “process” can only be covered by patent law. Such a holding would tend to fragment further the rather tenuous continuity found in copyright law concerning computer programs. This conclusion is supported by the Whelan decision.

The district court identified two modules—the engineering module and the design module—and it found them to be protected for different reasons. The appellant contests this finding, asserting that calculation module, design module, and engineering module are just different names for the same module. Gates has failed to brief this issue. The expert testimony casts doubt on the district court's interpretation that the engineering module and the design module are two separate modules; however, the record is not sufficiently clear to resolve the dispute.

The district court found that the engineering module was expression rather than idea because of “particular elements which perform in similar manners.” However, the district court failed to identify those “particular elements” upon which it based its decision, and it failed to analyze with any particularity whether those elements were ideas, processes, or facts. If, as the district court seems to suggest, the algorithms are “process,” then they would not be protectable under copyright law. There remains the possibility that they are expressions, but the court will then need to address the merger doctrine. Further, defendants have drawn our attention to evidence that was before the district court that tends to show that certain module functions were standard in the industry. There is no indication that the district court analyzed those components of the module under the scènes à faire doctrine. Accordingly, we remand for clarification of the district court's analysis and consideration of the modules in light of the process-expression dichotomy, merger and scènes à faire doctrines. Unless the district court provides us with sufficient detail to understand its ruling, we are unable to provide meaningful review of this finding.

4. Common Errors

Common errors or misbehaviors are instances in which the two programs share similar errors when not performing correctly or as intended. The experts in the instant case identified two such common errors. First, both programs identify that it is impossible to compute a maximum center distance that is less than a minimum center distance, but both programs attempt to do so anyway. Second, both programs will jump to the wrong menu if the cursor happens to be over a certain character during one of the input sequences.

While common errors may often be strong evidence of copying as a factual matter, they do not assist in determining what material is protectable under copyright law. Relying on several cases that have held that “common errors are the strongest evidence of copying,” Gates argues that “the common errors should be considered protectable.” However, none of the cases cited by Gates held that the actual misbehavior or faulty operation of the computer was protected. Rather, the cases stand for the limited proposition that evidence that two programs contain the same unnecessary or defective textual instructions is probative on the issue of copying. None of the cases cited considered the protectability of those instructions. Errors per se are not protectable, although the expression containing the error may be protectable if it otherwise meets the test for protectability set forth in this opinion. That analysis is lacking here. Thus, it is necessary for us to remand on this issue.

5. Fundamental Tasks

We normally would associate the term “fundamental tasks” with the highest level of abstraction — that is, the ideas or purposes underlying a program. In the instant case, the district court found the fundamental tasks of the Design Flex program to be protectable expression, but it failed to explain what it thought the fundamental tasks of the Design Flex program were.

We do not understand what the district court meant, nor do we have the benefit of the district court analysis beyond its mere conclusion that the merger doctrine is not applicable. Accordingly we must remand for further analysis of this element.


The district court failed adequately to filter those portions of the Design Flex program that it found to have been misappropriated. Thus, the court did not eliminate those elements that are unprotectable under copyright law. As a result, the court relied on unprotectable elements within the Gates program in determining that the defendants had infringed Gates' copyright.

Accordingly, we vacate the finding of copyright infringement and remand for reconsideration of the copyright infringement claim in light of this opinion.


1. The Bando opinion covers much the same ground as Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992), which announced the Abstraction – Filtration – Comparison test for determining whether a second computer program infringes the copyright in a first computer program. Bando is used here to set the test forth, because it has less extraneous material in it and is more accessible. The reader with patience is invited to assay Altai, however, to appreciate the pioneer work in this area. For those with less patience, Bando is a convenient substitute.

2. Gates claimed that it spent thousands of hours and large sums of money engaging in trial and error determinations of what to call the best value of a given constant. In all probability, there is some error involved. Gates simply decided to call it quits at a certain point, for each constant. The number selected is thus arbitrary, and it does not correspond exactly to some Platonic archetype or a “true fact.” (It is a little bit false, in that it omits what Gates did not consider worth pursuing further.)

Gates felt that it “created” the particular value of the constant that it selected, just as an artist chooses what shade of green to use in a painting, because it seems “right” or “right enough” to that artist. The court said that “Gates mischaracterizes the derivation of the constants as having been ‘created.’” Do you agree? Why?

3. The court of appeals left it open to the district court to find control flow and data flow to be expressions rather than ideas. Can you determine whether they are ideas or expressions, using the court of appeals' mode of analysis? By another way?

4. The court of appeals commented on, but did not definitively preclude, the district court's finding that the engineering modules were protected expressions and there was copyright infringement because both parties' modules “contain particular elements which perform in similar manners.” Apply that reasoning to a word processing or spreadsheet program. Explain how elements of a computer program that cause it to perform in a particular manner are, for that reason, expressive — or are expressive if the manner is copied in a second computer program.

5. The district court said:

The Court here rejects the argument that while the remaining portion [of the program] is properly protected under copyright law, the algorithms, as a "process" can only be covered by patent law. Such a holding would tend to fragment further the rather tenuous continuity found in copyright law concerning computer programs.

How would the holding tend to fragment further the rather tenuous (fragile?) continuity found in copyright law concerning computer programs? What would be the consequences of such fragmentation?

What if algorithms are not protectable under patent law? Would that advance or impair, or make more tenuous or less tenuous, the applicable legal continuity?

6. The district court is left free to analyze why fundamental tasks are protected expression. Why shouldn't the selection of a particular set of tasks to be performed, out of the whole universe of possible tasks, be considered expressive and thus protectable?

7. For additional glosses on the Altai rule, see the following excerpt from an essay by one of the Second Circuit judges who sat in that case and then the Second Circuit's Softel opinion.

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)

[This article was 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, about six years after the Altai 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.

Softel, Inc. v. Dragon Med. & Sci. Communications, Inc.
United States Court of Appeals for the Second Circuit
118 F.3d 955 (2d Cir. 1997)

Parker, Circuit Judge.

Softel, Inc., a computer software company, brought this action against Dragon Medical and Scientific Communications, Inc. (“Dragon”), its parent Dragon Group, Ltd., and several of its employees (collectively “the defendants”) claiming that the defendants had infringed copyrights Softel held in several of its computer programs, and had misappropriated trade secrets contained within the computer code.

I. Background

Plaintiff Softel is a small New Hampshire corporation engaged in the business of creating and selling computer graphics products. Paul Fiondella is its president and sole shareholder. Dragon is a New Jersey corporation engaged in the business of designing communications programs relating to medical and scientific information. Defendant H. Eugene Hodge is Dragon's president and a shareholder of Dragon; defendant Nina Romanoff is a Dragon employee who produced various films and videotapes for Dragon; defendant John R. Darsee is a medical writer and computer programmer for Dragon.

In January 1983, Fiondella developed Videogram 1.0, a “paint-and-draw” computer graphics program. ("Paint and draw" programs enable the computer user to create graphic images on a computer screen.) Later in 1983, Fiondella developed an improved version of this program, Videogram 2.0. In 1984, Pfizer Laboratories hired Dragon to produce a program which later became known as Heartlab. Darsee saw an advertisement for Videogram 2.0, and called Fiondella with some questions regarding its capabilities. Dragon employee Darsee purchased the software, and some hardware, from Fiondella. Fiondella delivered the goods personally to Dragon's place of business in New York, so that he could explore any potential business opportunities for his company at Dragon. Fiondella and Darsee discussed forming a joint venture to create an “authoring language” and Darsee asked Fiondella to create a simulation of a beating heart for the Heartlab project.

In January 1985, E.R. Squibb & Sons, Inc. hired Dragon to create an interactive videotape program for training purposes. This project was called Azactam. Dragon hired Fiondella to write computer code for this project. Fiondella was careful not to provide his source code to Dragon and imbedded a copyright notice in Softel's portion of the source code and in the executable code delivered to Dragon.

Dragon had also contracted to produce videodisc programs with Roche Laboratories. These would come to be known as Melanoma, Kaposi's Sarcoma (“Kaposi”), and Hairy Cell Leukemia. Dragon engaged Fiondella to write code to control the operation of the touchscreen and videodisc player in the program Melanoma, and to retrieve and display graphic images produced by Dragon artists. Fiondella wrote this code in a modular style. ("Modules," or "subroutines," are discrete portions of a program that perform "subtasks.") He also used a manual produced by the hardware manufacturer to interface the hardware and software properly. He billed Dragon on a per diem basis, delivered only the executable version of his program, and imbedded a copyright notice in the executable.

Fiondella also worked on Kaposi, using code that was similar to that used in Melanoma. He employed several design techniques in writing the Kaposi code, including, among others, the use of external files, English language commands, modular structure, and a hierarchical series of menus and a touchscreen. This program also was delivered in executable form only, and with an imbedded copyright notice.

At about the time that Kaposi was finished, Dragon hired Fiondella to work on a project called Sorbinil. Fiondella wrote code for this project and submitted an executable to Dragon. However, as the deadline for the project approached, problems developed with the program. Dragon called Fiondella to ask him to come to Dragon's office in New York and fix the program, but Fiondella was out of town. A friend of Fiondella's went to Dragon's office instead, and managed to fix the immediate problem by following Fiondella's instructions over the telephone.

Unfortunately, additional problems arose. Fiondella himself went to Dragon's premises on June 17, 1985. Fiondella and one of Dragon's freelance computer programmers entered into a heated argument over whose code was causing the problem. The freelance programmer demanded that Fiondella turn over his code, so that the programmer could examine it himself.

When Fiondella refused, the programmer stated that he had the ability to get Fiondella's code off Dragon's computers anyway, because he could “unerase” the code that Fiondella had put on the computers during his visits there and (seemingly) erased upon leaving. Fiondella became enraged. Dragon's president, Hodge, was present at the altercation and decided that because Fiondella had acted unprofessionally, he could no longer work for Dragon. Fiondella successfully fixed the problems with the software shortly after that.

Defendant Darsee then gained access to the code that Fiondella had put on Dragon's computers and seemingly erased.

In June 1985, Dragon produced the third videodisc program for Roche, Hairy Cell Leukemia. Roche wanted two versions: Hairy Cell U.S. and Hairy Cell Europe. Dragon produced an interim version called Hairy Cell Roche for distribution to Roche's European subsidiaries, but did not keep a copy because Dragon considered it to be an interim program.

In 1986, Dragon made a program for Pfizer called Low Back Pain. This program included the Backpain Expert Module. Shortly thereafter, Dragon produced a program called Heartlab for Pfizer. Darsee wrote the code for this program, except for the animation and image retrieval routines, which were Fiondella's. Fiondella was paid for this code.

Defendants admit that Hairy Cell Roche, Low Back Pain, and Heartlab used Fiondella's image retrieval routines.

Late in 1985, Darsee began to develop a paint-and-draw program called Paintbox. The early version of this software included Fiondella's image retrieval routines. Darsee sent a letter to the Kurta Corporation suggesting that Dragon and Kurta co-marketing some of the programs Dragon had developed, including Paintbox. Nothing came of this suggestion.

In May of 1986, Softel sought, and was granted, a copyright registration for a package of programs that included the following: (1) a program written in basic entitled “SHOWPIX.bas,” which is an image retrieval routine; (2) a collection of object code routines called “8068/8 Support Routines,” which included assembly code routines used to retrieve and display images; and (3) the source code for the Kaposi program.

In early 1987, Softel filed this suit alleging, inter alia, that the defendants had infringed copyrights Softel held in its programs and had misappropriated trade secrets in the code.

In 1988, after the commencement of this litigation, Dragon made the following programs, which Softel claims are also infringing: Unasyn, Micro, OB/GYN, Managed Health Care, Heart Command (collectively, the “post-litigation programs”). These programs are written in a different computer language than Fiondella's original code, and are designed to work with different hardware.

The case then went to a bench trial before Judge Cannella in 1991. The Judge found, inter alia, that the defendants' pre-litigation programs infringed Softel's programs, and that the defendants had misappropriated the trade secrets contained within Softel's image retrieval routines. There is no appeal from those findings or the damages ultimately assessed in connection with them. However, the judge rejected Softel's claims of infringement in the post-litigation programs, as well as its trade secret claims. Several years later, the issue of damages was tried. Softel was awarded $34,880.28 compensatory damages on its copyright infringement and trade secret misappropriation claims, as well as punitive damages against Darsee and Dragon for willful trade secret misappropriation. We affirm the trial court's rulings, except that we remand the case for further consideration of Softel's claims that Dragon's post-litigation programs infringed the copyrightable structure of Softel's programs, and that the post-litigation programs misappropriated trade secrets in Softel's programs.

II. Discussion

Copyright Infringement

In any suit for copyright infringement, the plaintiff must establish its ownership of a valid copyright, and that the defendant copied the copyrighted work. Copying may be shown by direct evidence or by showing that (1) the defendant had access to the plaintiff's copyrighted work and (2) that defendant's work is substantially similar to the plaintiff's copyrightable material. Judge Cannella found that Dragon had access to Softel's source code, and that some of this code was copied directly into two of Dragon's pre-litigation programs. Judge Cannella held that these two programs infringed Softel's copyrights. However, Judge Cannella rejected Softel's claim that several of Dragon's post-litigation programs infringed Softel's copyrights as well. He held that the post-litigation programs were not similar to Softel's programs in any way that was copyrightable.

On this appeal, Softel renews its claim that Dragon's post-litigation programs infringed copyrights held by Softel. Softel argues that it claimed in the district court that its software combined certain computer programming design elements in an expressive way and that Dragon had copied that expression, but that Judge Cannella ignored this claim and instead addressed (and rejected) a claim that Softel had not made, to wit, that each of the design elements, taken individually, was protectible expression.

It is well-established in this Circuit that non-literal similarity of computer programs can constitute copyright infringement. We have prescribed an “abstraction-filtration-comparison” method of analysis for determining whether a program has been infringed. Under this analysis, the allegedly infringed program is first broken down and examined at varying levels of abstraction. Second, the allegedly infringed program is “filtered” at each level of abstraction through various copyright doctrines that deny protection to certain types of materials. For example, the scènes à faire doctrine denies protection to program elements that are dictated by external factors such as the mechanical specifications of the computer on which a particular program is intended to run or widely accepted programming practices within the computer industry. Third, the resulting protectible expression is compared with the allegedly infringing program.

Our application of this method of analysis to the facts of Altai demonstrates that an allegation of infringement based on similarities in architecture cannot be ignored merely because many or all of the design elements that make up that architecture are not protectible when considered at a lower level of abstraction. In Altai, the district court held many aspects of the program at issue in that case to be not protectible for various reasons (e.g., because they were in the public domain or were computer scènes à faire). Nevertheless, the court proceeded to a higher level of abstraction and responded to the plaintiff's claim of infringement based on alleged similarities between the two programs’ “organizational charts. In reviewing that claim, the trial court made no effort to remove from its analysis those elements of the program that had been found unprotectible at the lower level of abstraction. Instead, analyzing the program at the higher level of abstraction, it rejected the organizational claim on the grounds that the structure alleged to have been infringed was “simple and obvious to anyone exposed to the operation of the program[s].” This Court approved that approach, adding only that the district court's use of the word “obvious” should be understood to be a holding that the purportedly infringed structure was a scène à faire.

The foregoing approach is consistent with the Supreme Court's decision in Feist, discussed by this Court in Altai. In Feist, the Court made quite clear that a compilation of non-protectible elements can enjoy copyright protection even though its constituent elements do not. A district court in another circuit has illustrated the danger of overlooking this aspect of copyright law with an astute hypothetical:

Suppose defendant copied plaintiff's abstract painting composed entirely of geometric forms arranged in an original pattern. The alleged infringer could argue that each expressive element (i.e., the geometric forms) is unprotectible under the functionality, merger, scènes à faire, and unoriginality theories and, thus, all elements should be excluded prior to the substantial similarity of expression analysis. Then, there would be nothing left for purposes of determining substantial similarity of expression. In this example, elimination of “unprotectible” elements would result in a finding of no copyright infringement, which would be clearly inconsistent with the copyright law's purpose of providing incentives to authors of original works.

Apple Computer, Inc. v. Microsoft Corp., 779 F.Supp. 133, 136 (N. D. Cal.1991), aff'd in relevant part and rev'd and remanded in part, 35 F.3d 1435, 1444 (9th Cir. 1994). Scholars agree.

We now turn to Softel's argument that Judge Cannella's findings and holdings fail to address adequately its claim of structural infringement in the post-litigation programs. Softel points out that in its Post-Trial Memorandum of Law it summarized its claim as follows:

Plaintiff makes no claim that the individual elements used to create the copyrighted code are themselves separately copyrightable in the abstract. What plaintiff claims is that the way the elements are expressed in computer code and the way the elements are integrated with each other constitutes copyrightable matter.

In this same document, Softel also asserted that “plaintiff's authoring language which integrates hierarchical menus, touchscreens, modules, external files and English–language commands is an original expression which is copyrightable.” Finally, in its Trial Memorandum, Softel makes the following statement:

The genius of the structure, sequence and organization of plaintiff's program is the way in which it receives, assembles, calculates, retains, correlates and produces information on screen. Since there are other ways of performing those functions to achieve the same purpose as the Softel program, plaintiff's copyrighted work is a protectable expression of ideas which cannot be infringed with impunity.

Softel supported this theory with the testimony of Fiondella and with cross-examination of the defendants' expert. Fiondella testified that his software used external files, modular programming, and English–language commands, and that “each command in those external command files is translated by the program into the execution of certain modules.” He asserted that “[y]ou would find in the Dragon programs the same structure.” He also testified that the specific commands employed in Dragon's program were functionally identical with the 15 commands employed in Softel's software. He then explained that the menus cued the command files. Finally, in its cross-examination of Dragon's expert, Softel explored the question of whether there were alternative ways to design a program such as Softel's, and whether Dragon's post-litigation programs had “evolved” from Softel's.

Thus, Fiondella testified regarding relationships between all four of the design elements at issue: apparently, the menus cued external files which read English language commands into the main program, where the commands cued modules of code. Standing alone, these allegations may not help answer the question of how many ways existed to design a computer program with the same functionality as Softel's. However, when they are combined with an allegation that the specific commands used by Dragon were nearly identical with Softel's, they do appear to establish at least a colorable claim that there was a modicum of expression in the design of the program and that Dragon infringed that expression. That is, even if there were few ways to design such a program, it does not seem likely that Dragon would have to use an identical structure and copy approximately 15 out of 15 commands.

Softel presented an argument, supported by some evidence, that the manner in which it had combined certain computer design elements was expressive for purposes of copyright law, and that Dragon had copied this expression. Keeping in mind that the requisite level of originality for copyright protection is “minimal” and “extremely low,” Feist, we cannot say that Softel's claim was without merit on its face. However, several aspects of Judge Cannella's opinion reveal that he either ignored or misanalyzed Softel's argument, and consequently failed to perform the Altai analysis at the highest level of abstraction—here, the interrelationships among the four identified elements.

First, the Judge's statements of his understanding of Softel's claims reveal that the Judge understood Softel to be claiming only that each element, taken individually, was expressive. In his findings of fact, Judge Cannella summarized his understanding of Softel's claims as follows:

Plaintiff argues that [certain of Fiondella's programming decisions] constitute the structure, sequence and organization of his copyrighted work and that Dragon's post-litigation programs are infringing because they contain these elements. The elements which plaintiff claims are entitled to copyright protection are the use of the following:

    (1) an external file structure;

    (2) English language command[s];

    (3) functional modules, specifically including those to operate the hardware; and

    (4) a hierarchical series of menus with a touchscreen.

In his conclusions of law, the judge stated an understanding of Softel's claims that was essentially identical to his previous statement. Moreover, the Judge repeatedly stated that Softel sought to preclude Dragon from using any of the design elements, however combined.

Second, the court's findings of fact and conclusions of law address each element individually, but not in relation to each other. For example, the court credited Dragon's expert testimony that each of the four design elements was pervasively used in the computer industry, but did not address the issue of whether the choice and manner of combination of the four elements was commonplace. Similarly, the court found that the programmer at Dragon who was responsible for the post-litigation programs had learned to use external files from another source, and that certain code is required whenever a screen touchpoint is used, but did not address the question of where Dragon's programmer learned to combine external files, or touchpoint finger-finding algorithms, with the other design elements.

Third, the court makes the following statement: “Since each of the elements which plaintiff claims are entitled to copyright protection are filtered out at the second step of the Second Circuit's analysis set forth in [Altai], it is unnecessary for the Court to proceed to the third part of the analysis. If by this statement the district court meant that there is no need to analyze alleged structural similarities between the programs because all of the constituent elements of the allegedly infringed program's structure have been found to be individually unprotectible, then the statement is erroneous, as our discussion of Altai and Feist, above, reveals. If, on the other hand, the district court meant only that there is no need to compare scènes à faire because they are unprotectible in any event, then the statement is not erroneous but provides further evidence that the district court understood Softel to be claiming only that the four design elements were separately protectible.

It is true that the court, in addressing Softel's claim that Dragon's program had “evolved” from Softel's, made two statements that appear to address the issue of the manner in which the design elements are combined. First, it stated that “the post-litigation programs were significantly different from [Softel's program] in the following respects: (1) code; (2) command sets and processing of commands; (3) internal file structure; (4) processing of files; (5) command file interaction structure; and (6) organization of and relationship between modules of code.” Second, it stated that the post-litigation programs “were not in any way derived from plaintiff's copyrighted work.” These statements, however, do not alter the conclusion that the district court ignored or misanalyzed Softel's claim. The court's announcement that it would not engage in Altai comparison analysis, makes it very doubtful that the court had compared Softel's selection and arrangement of commands or code modules that were individually unprotectible when it made the former statement, or that it considered mimicking a structure comprising unprotectible elements to be “derivation” when it made the latter.

Whether the district court ignored Softel's claim or misanalyzed it, its treatment of that claim was inadequate, because it failed to apply the Altai test to the interrelationship among the design elements. Therefore, we vacate the district court's judgment as to Softel's claim of non-literal infringement in Dragon's post-litigation programs and remand so that the district court may enter a finding as to whether the manner in which Softel combined the various design elements in its software was protectible expression, and, if it was, whether Dragon infringed that expression. We express no opinion as to the merit of Softel's claim.

III. Conclusion

The district court's dismissal of Softel's claims of non-literal infringement and trade secret misappropriation are vacated and remanded for further consideration consistent with this opinion. In all other respects, the district court's rulings are affirmed.


1. The Second Circuit's further gloss on Altai in Softel indicates that several motifs found in earlier decisions still have some viability. One is the continuing viability of compilation copyrights, even if the compilation is a selection of scènes à faire, de minimis material, and ideas. Would any and all of the Altai categories, if compiled by a judicicious selector, pass muster as a copyrightable compilation? (What of standard industry practices, which Altai and Bando assimilate to scènes à faire? How does a rival avoid a compilation of standard industry practices embodied in a computer program written for use by those in that industry?)

At any rate, compilations, which have been termed “the black hole of copyright law,” still ride.

2. So, too, does the idea that proving that something can be done in several different ways suggests that any one of them is expressive and thus protectible.

This becomes more significant for purposes of trial tactics when there are several stages of the computer program, A, B, C, and D, which respectively have different possibilities, p, q, r, and s, that could be selected for use. Then, the plaintiff copyright proprietor's selection can be shown by her counsel to be only one out of p × q × r × s possibilities, which at least suggests that copying must have occurred. Of course it may make a difference what the catalog of possibilities are.

For example, suppose that plaintiff's counsel shows that defendant copied all four of these choices of commands in plaintiff's compilation of commands: print, quit, save, open. Instead of the first, defendant could have selected, but obstinately refused these: cause to be printed, send to printer, make a printed copy, and produce as printed matter. And similarly for the others. Then what, and why?

3. The genius of Softel's program, according to Fiondella, was the way it “receives, assembles, calculates, retains, correlates and produces information on screen.” It did this, and Dragon copied that, by this ingenious structure: menu commands cue external files, the files cue their stored English language commands into the main program, the main program then executes code modules (subroutines).

Comment on the novelty and genius of this approach.

4. Later in the opinion, the Second Circuit states that the choice and combination of these four elements in the computer program was what might be (but “we express no opinion as to the merit of Softel's claim”) copyright–protected:

Play the role of Dragon's expert witness and examine yourself on the stand at the remand trial, directing your attention to items (1) to (4)..

5. In a part of the opinion not reproduced here, the Second Circuit stated that the combination of these elements, even if all of them are individually in the public domain, could be protectible as a trade secret, apart from any copyright issue. Do you see any problem of that undercutting § 102(b)'s policies or other copyright policies? Or do those policies apply only to claims of copyright infringement?

Baystate Technologies, Inc. v. Bentley Systems, Inc.
United States District Court
946 F.Supp. 1079 (D. Mass. 1996)

Gorton, District Judge.

Plaintiff, Baystate Technologies, Inc. (“Baystate”), filed a six count complaint against Bentley Systems, Inc. (“Bentley”), alleging, among other things, copyright infringement in violation of 17 U.S.C. § 106. After hearing and evaluating the evidence proffered by the parties during a three-day bench trial, this Court finds for the defendant on all counts.


Both Baystate and Bentley are, at least in part, manufacturers of mechanical computer–aided design (“CAD”) products. In general, CAD software products enable architects, engineers and other design professionals to design and alter designs of buildings, mechanical devices and electronic equipment using computers as drafting devices. They can then produce blueprints and other design drawings through their computers.

Baystate acquired its CAD software, called CADKEY, along with the CADKEY copyrights and trade secrets, from Cadkey, Inc., a Connecticut software company, in June, 1996. Baystate also produces a software program that works with CADKEY known as draft-pak. Bentley manufactures the CAD product Microstation. CADKEY and Microstation are computer programs which perform similar functions and thus are competitive products.

The issues made in this case relate to a data translator which is currently being developed for Bentley. It will, if successful, translate between the CADKEY system and the Microstation system. In general, data translators are common in the CAD market because users of CAD products commonly employ more than one CAD system to perform their necessary tasks and, as a result, often transfer information between various CAD systems. This need has created a demand for translators of all kinds in the CAD market and many companies, including Bentley and, to a limited extent, Baystate, manufacture data translators, often by what is known as “reverse engineering.”

Cadkey, Inc. (“Cadkey”) was founded by Livingston Davies in the early 1980's. He was at all material times and remains today Chairman of the Board of Directors of Cadkey.

Infotech Enterprises, Ltd. (“Infotech”), located in Hyderabad, India, was founded in 1992 by Mohan Reddy, who has been its Managing Director since that time. Today, it has over 270 employees in India and is engaged in the business of providing software services and products as well as third-party software development. By early 1994, Infotech had developed a software product called Management of Drawings and Engineering Systems (MODES).

In early 1994, Infotech sought to enhance MODES so that it would have the ability to “read” CADKEY data files. Mr. Reddy told Livingston Davies about Infotech's purpose and requested any materials Mr. Davies could provide to assist in the project. He agreed to help Mr. Reddy and transmitted by electronic mail (“e-mail”) a copy of what he thought was Version 5.0 of the CADKEY Part File Tool Kit.

A Part File Tool Kit typically consists of definitions or header files, a library of executable files, and a document that describes the organization of the file data structure and descriptions of the access functions that are included in the library of executable files. Specifically, in this case, the CADKEY Part File Tool Kit (“the Tool Kit”) is a subset of the CADKEY code which allows a user or third party developer to read and write the data files into a non-CADKEY program using the information in the Tool Kit. There are two components to the CADKEY Tool Kit: (1) source code, which comes on a floppy disk, and (2) documentation, which explains the CADKEY data structures and how the CADKEY file format is organized. Baystate has a registered copyright in each component.

Mr. Reddy received Livingston Davies' e-mail and forwarded it to his employees who soon discovered that the Tool Kit was not version 5.0, but actually an earlier, superseded version 4.0. Version 4.0 was not helpful to Infotech and thus was not used. In June, however, Livingston Davies met Mr. Reddy at a CAD industry trade show in the United States and provided Mr. Reddy with a copy of the Tool Kit documentation for version 5.0. Although the Tool Kit documentation delivered to Mr. Reddy bore no cover sheet containing copyright notice to users, it was stamped “confidential” on all pages. Mr. Reddy was also aware of the probability that the documentation was copyrighted because the version 4.0 included a copyright notice.

After Mr. Reddy returned to India with the Tool Kit documentation, Infotech used it as a reference to develop the “read” capability of CADKEY files into MODES. By September 1994, Infotech had completed the development of that CADKEY “read” capability.

Infotech continued to work on its CADKEY project until early September 1996. Although that work proceeded until after Baystate acquired the CADKEY line, no written agreement between Baystate and Infotech was ever executed. In early September 1996, Baystate terminated its relationship with Infotech for reasons discussed below and has withheld payment for services rendered prior to that termination.

Peter Brooks was responsible for development and marketing of Bentley's Microstation product in the mechanical CAD market. Mr. Brooks became interested in developing a CADKEY-to-Microstation translator (“the Translator”). In late 1995, Mr. Brooks contacted Baystate to inquire about their interest, if any, in developing such a translator and/or entering into a partnership to acquire the CADKEY product line. Initially, Robert Bean, president of Baystate, expressed some interest but, after discovering a confidentiality agreement between Baystate and Cadkey which restricted Baystate's use of the CADKEY Tool Kit, someone at Baystate informed Mr. Brooks that Baystate could not develop the Translator without Cadkey's permission.

In late 1995 or early 1996, Mr. Brooks approached Livingston Davies, president of Cadkey, and offered Cadkey $100,000 for permission to use the CADKEY Tool Kit to develop the Translator. Livingston Davies responded that, although under certain circumstances he would be willing to grant such permission, the offer was inadequate and was thus declined.

In or about March 1996, Mr. Reddy introduced himself to Mr. Brooks at a trade show in Cambridge, Massachusetts. Mr. Reddy described Infotech and its experience in the CAD industry and solicited software development work from Bentley. Mr. Brooks was noncommittal at the time, but in June 1996, decided to consider Infotech as a possible developer of the Translator. At trial, Mr. Brooks testified credibly that the business reasons for his decision to hire Infotech included:

Monday, October 06, 2003 In June 1996, Mr. Brooks sent an e-mail to Infotech requesting a proposal for Infotech to develop the Translator for Bentley. He was aware at that time that Infotech did development work for Cadkey and assumed that Infotech had access to proprietary information belonging to Cadkey. He informed Infotech that it could not use any proprietary, third-party information and that no programmers who worked on any Cadkey development could work on the Translator project. Infotech agreed to Bentley's conditions and in July signed a letter agreement which incorporated those conditions and indemnified Bentley against any violation thereof. Infotech began work on the Translator at about that time. Mr. Reddy testified credibly that Infotech has not misused CADKEY proprietary information at any time.

Mr. Reddy also testified that Infotech did not employ programmers on the Translator who had performed substantive work on the CADKEY project, i.e. that a so-called “Chinese Wall,” existed between the two projects. Notwithstanding that claim, a “Dr. Rao” at Infotech supervised both projects and a “Subba Rao” worked as a computer programmer for the Bentley Translator project and apparently did some minimal work on the CADKEY project. Although this Court finds that there was no impropriety on the part of Infotech, it also finds that the CADKEY project and the Bentley Translator project were not kept completely separate.

Baystate began its business relationship with Cadkey in June 1993. At that time Baystate entered into a confidential agreement with Cadkey wherein Baystate was afforded access to proprietary information and trade secrets of Cadkey in connection with the development of draft-pak and its use with CADKEY. In June 1996, Baystate purchased the CADKEY product line from Cadkey. As a result, Baystate obtained all of the trade secrets and copyrights associated with the CADKEY product line previously owned by Cadkey. Baystate also assumed the rights and obligations of Cadkey with respect to the CADKEY development project undertaken by Infotech.

On August 21, 1996, Infotech sent an e-mail transmission to Bentley and mistakenly copied it to Baystate. That e-mail contained portions of the source code for the Translator. Baystate analyzed the unsolicited transmission and came to the conclusion that source code from the CADKEY “header files,” including the data structures contained within those files, had been copied by Infotech into the Translator project. Prior to a complete analysis of the e-mail, Baystate representatives discussed their allegations with Mr. Reddy of Infotech and were assured by him that no CADKEY proprietary information had been used in developing the Translator. Subsequently, Bentley began an advertising campaign which included, as one component, a promise of the future availability of a CADKEY-to-Microstation Translator. Baystate inferred from such advertisements that the development of the Translator was close to completion, concluded that its rights had been violated, and filed this civil action.

At trial, both parties offered the testimony of expert witnesses. The experts agreed that the data structures at issue were, at least to some extent, similar, although defendant's expert opined that such similarity was necessary. Other than the similarity in the data structures, neither expert testified with respect to any similarity between the object code or the source code of the CADKEY program and the proposed Bentley Translator program.


For the purpose of its complaint, Baystate claims proprietary interests in three different products: the CADKEY source code, the Part File Tool Kit source code and the Part File Tool Kit documentation. Baystate's legal interests in those products with respect to each claim will be addressed seriatim.

A computer program such as CADKEY is protectable under the copyright laws. For copyright purposes, a “computer program” is defined as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” 17 U.S.C. § 101 Accordingly, the computer program comprising CADKEY is copyright protected (if the appropriate procedures are followed). But because the data structures at issue in this case do not bring about any result on their own, they are copyright protected, if at all, only as a part of the whole computer program.

The owner of a copyright has the exclusive right to copy, make derivative works and distribute the copyrighted material. 17 U.S.C. § 106. To prove its claim of copyright infringement, a plaintiff must show that: (1) it owns a valid copyright in the disputed item and (2) the alleged infringer copied the copyright–protected work. In the case of computer programs, the alleged infringer must be shown to have copied constituent, original elements of the program. Plaintiff has proven it owns a valid copyright in its CADKEY computer program source code in existence in 1994, the Part File Tool Kit source code and the Part File Tool Kit documentation.

With regard to the second element of proof of a copyright claim, a party must first prove copying by the alleged infringer either through direct evidence or through circumstantial evidence. Because it is often difficult to prove copying directly, most parties offer circumstantial evidence of copying by showing that the defendant had access to the copyright-protected work and that there is a probative similarity between the protected work and the alleged infringing work, i.e. the two works must be similar enough for the finder of fact to infer factual copying. If factual copying is shown, the plaintiff must then prove the copying was extensive enough to render the two works substantially similar.

At the time of the alleged copying, Infotech had access to the CADKEY source code, the Part File Tool Kit Source Code and the Part File Tool Kit documentation, as a result of either its confidential relationship with Cadkey that began in November 1994 or its access to documentation received from Livingston Davies in June 1994. The plaintiff has, therefore, shown access. The alleged “Chinese Wall” at Infotech allegedly built to separate the CADKEY project from the Bentley Translator project crumbled to the point of being incapable of rebutting a finding of access. The copyright infringement issue in this case thus comes down to whether plaintiff Baystate has established a probative similarity between the copyright–protected material and the accused material.

Probative Similarity—Copying

This Court concludes that there exists a probative similarity between the names and organization of the data structures of the Part File Tool Kit source code and documentation, on the one hand, and the Translator as transmitted in the e-mail of August 21, 1996, on the other hand. Furthermore, Infotech has admitted (1) that it “referred” to the Tool Kit documentation when producing the CADKEY “read” capability for MODES and (2) that portion of MODES was used in developing part of the Translator. There was, however, no evidence of probative similarity between any other aspect of the two computer programs. Hence, plaintiff has shown probative similarity only with respect to the names of the so-called data structures as that term is used by the parties, and the organization of the files within the data structures. (Additionally when referring to the names of the data structures, this Court intends to include both the names of the data structures and the names of the files in the data structures.)

Substantial Similarity of the Computer Programs

Having found factual copying, this Court turns to a consideration of substantial similarity. If the data structures are copyright protected and are constituent elements of the CADKEY computer program, then plaintiff has proven copyright infringement by Infotech. The Court concludes, however, that the plaintiff lacks proof of either element, i.e. the data structures at issue are not protected under the copyright laws, nor (even if they were so protected) are they constituent, original elements of the program.

In this case the copied components are the data structure names and the organization of the files within the data structures. To determine the legal consequences of such copying, this Court must consider:

In deciding the issue, this Court adopts and applies the “abstraction-filtration-comparison” test applied in Gates v. Bando and acknowledged in dicta by the First Circuit in Lotus.

i. The Data Structures Are Not Copyright–Protected

Liability for copyright infringement is incurred only when protected elements of a copyrighted work are copied. Gates (citing Baker v. Selden). A fundamental principle of copyright law is that copyright protection extends only to the author's original and creative expression and not to the ideas embodied in that expression. The Copyright Act codifies that principle by denying protection to “any idea, procedure, process, system, method of operation, concept, principle, or discovery....” 17 U.S.C. § 102(b). Courts give effect to those copyright principles by drawing on two established copyright doctrines: the doctrine of merger and the doctrine of scènes à faire.

Part of the copying that took place in this case relates to data structure names or, more specifically, the words and abbreviations used to describe the files contained within the data structures and the data structures themselves. The evidence demonstrated that some of the words and abbreviations or names used in the defendant's program, although not identical in the layman's sense, were very similar to those of the plaintiff's copyrighted program.

Although Baystate's expert testified that the CADKEY data structure names were independently created and were original expression, this Court concludes that his opinion is not decisive of the issue of whether they are copyright protected. In Lotus, the First Circuit held that the words used in Lotus 1-2-3’s menu command hierarchy were not protectable because they were the means by which functions were performed and thus, constituted a “method of operation” excluded from copyright protection. In so holding, the First Circuit concluded that even though the authors of Lotus 1-2-3:

made some expressive choices in choosing and arranging the Lotus command terms, we nonetheless hold that the expression is not copyrightable.... [T]he “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.

Under the merger doctrine, protection is denied to expression that is inseparable from the ideas, processes or facts underlying the expression. When there are only a few means of expressing an idea, process or fact, copyright protection is, therefore, denied to those means of expression. Mohan Reddy testified that the name of a file is typically related to its function. A file that controls or creates color has a name in which some form of the word “color” appears. In that case, the name of a file, “color,” merges with the idea or function of the file, “to create a color,” and is not protected by copyright laws.

With respect to copyright protection afforded to the organization of the data structures, a second doctrine applies. Under the scènes à faire doctrine, protection is denied to those elements of a program that have been dictated by external factors. For computer programs, those external factors include, among other things, compatibility requirements and industry-wide programming practices.

In this case, the court concludes that the selection and organization of the elements in the data files is dictated mainly by external factors. The product being developed is a data translator that is designed to “read” the data files of CADKEY. The process of “reading” the CADKEY data files requires that the elements contained within the data structures of the Translator be organized in the same manner as the elements in the data structures of CADKEY. Without such compatibility, the Translator would not function because it would “misread” the CADKEY data files.

Additionally, the organization of names is, at least partly, a function of efficiency. Walter Anderson, defendant's expert witness, testified that the names and the arrangement of those names serve a functional and necessary purpose in the code of a data translator. They permit a computer programmer who produces a data translator to refer back to the documentation of the “target product” (the program the data translator seeks to read) as he creates the code for the translator.

Significant differences between the names and organization of the names used in the “target product” and the translator would be inefficient for the programmer. For that reason, the data structure names in Infotech's MODES product had to be similar to the data structures in the Part File Tool Kit documentation because the computer programmer needed to refer to the documentation in the process of creating and manipulating the CADKEY “read” capability of MODES. Furthermore, the Part File Tool Kit documentation stresses the necessity of following the CADKEY structures closely:

It is up to the programmer to comply with the CADKEY entity structures and to codify and enforce an internal structure for any user defined entities or else chaos will ensue!

With regard to industry-wide standards, Scott Taylor, an apparently objective and neutral witness, shed at least some light. Mr. Taylor developed many translators, including one which could read CADKEY. It was his practice to use, at least to some extent, both the target product's data structure names and its organization of the data structures. Hence, when he created a data translator which could “read” CADKEY files, he used the CADKEY file names and the organization of data structures as they were described in the Part File Tool Kit documentation. Walter Anderson testified that he used the same method in creating a translator to read AutoCAD files. On the basis of relatively limited evidence of the CAD industry standards, and after applying all of the relevant copyright principles, this Court concludes, therefore, that the data structure names and the organization of those names are not protected expression under the copyright laws.

ii. Application of Abstraction-Filtration-Comparison Test

Even if the data structures at issue were protected under the copyright laws, those parts of the computer program constitute neither a substantial portion nor a significant aspect of the whole copyrighted work. In this case the copyrighted work is the CADKEY program as manifested through the CADKEY source code, the Part File Tool Kit Source Code and the Part File Tool Kit documentation. The burden was on Baystate to demonstrate the significance of the copied data structures, and, in this Court's opinion, Baystate did not meet that burden.

The abstraction-filtration-comparison test consists of three prongs whereby the Court is directed:

During the trial, there was virtually no evidence (and only minimal argument) that anything other than the data structures were copied in this case. This court therefore considers only the copied data structures when applying the abstraction-filtration-comparison test.

First, as taught by the Gates Rubber decision, a computer program:

can often be parsed into at least six levels of generally declining abstraction: (i) the main purpose, (ii) the program structure, (iii) modules, (iv) algorithms and data structures, (v) source code, and (vi) object code.

In applying copyright principles to the different levels of a computer program, the main purpose of the program will almost always be an unprotectable idea, as will be the basic purpose of each module of the program. At the other end of the spectrum, source and object code will almost always be found to be protectable expression. However, the intermediate levels of abstraction are less prone to generalizations. The data structures at issue in this case fall within an intermediate level.

Second, this Court has already decided, supra, that the data structures are not protected elements. For purposes of applying the abstraction-filtration-comparison test, however, this Court will assume arguendo that the data structures are protected. By virtue of that assumption, this Court is impelled to consider the third and final prong of the test.

The expert testimony showed that, although data structures are generally a necessary component of a computer program for organizational and efficiency purposes, the original naming of data structures takes very little of the total time or creative genius necessary to develop a program. Furthermore, data structures are not, by themselves, executable, i.e. a computer cannot read data structures and perform any function. Although the importance of a program component is not strictly a function of quantity, the evidence in this case demonstrates that the subject data structures represent only a small portion of the total program.

As stated previously, if the CADKEY data structures are copyright protectable, they are so only as part of the computer program in which they are embedded. Baystate has failed to prove, by a preponderance of the evidence, that the relative significance of these data structures are substantial to the overall program and its operation. This Court concludes, therefore, that the defendant's work is not substantially similar to plaintiff's work and hence the defendant has not infringed plaintiff's copyright.

Substantial Similarity of the Documentation

One more copyright issue needs to be addressed: whether Baystate's copyright in the Part File Tool Kit documentation was infringed. Because the documentation is not a computer program as such, this Court does not necessarily examine it as it did the CADKEY computer program, supra.

The documentation contained the data structures which were the subject of the experts' comparisons. Infotech admitted that its programmers referred to the Part File Tool Kit documentation before and during their creation of the CADKEY “read” capability component of MODES. Although Mr. Reddy of Infotech acknowledged that such documentation was confidential and he had reason to know of its copyright, he denied that Infotech's use of the documentation as a reference violated any confidence or copyright. Also, although Infotech admitted referring to the documentation, the minimal evidence of copying that was offered by plaintiff was unpersuasive.

With respect to the documentation itself, this Court concludes that there does not exist the substantial similarity between it and the Translator necessary to prove copying by Infotech. The Supreme Court's holding in Baker v. Selden is also instructive. In that case, the Supreme Court held that Selden's copyright in a book, in which he explained his new system of book-keeping, did not grant him an exclusive right to the use of that system. Here, Baystate's copyright of the Part File Tool Kit documentation does not grant it an exclusive right to use the information conveyed in that documentation and thus, Infotech's use thereof does not infringe that copyright.

* * *

This Court concludes that the plaintiff has not met its burden of proving that the data structures are copyright-protected; that the data structures (even if copyright protectable) are constituent and essential elements of the CADKEY computer program; and that there exists a substantial similarity between the Part File Tool Kit documentation and the Bentley Translator.

Judgment will, therefore, be entered in favor of the defendants. Plaintiff is not entitled to the injunctive relief requested and plaintiff's claims are dismissed.


1. This decision represents a workmanlike approach to determining substantial similarity of computer programs using both the Lotus–Borland, First Circuit version of the merger doctrine and the Abstraction – Filtration – Comparison test of Altai and Bando.

2. The court stated:

For copyright purposes, a “computer program” is defined as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” 17 U.S.C. § 101 Accordingly, the computer program comprising CADKEY is copyright protected (if the appropriate procedures are followed). But because the data structures at issue in this case do not bring about any result on their own, they are copyright protected, if at all, only as a part of the whole computer program.

What does that mean? The point is subtle. The court is saying that a data structure is not a set of instructions that causes a computer to do something. Therefore, a data structure is not a computer program within the meaning of the statute, and thus it is not a work of authorship in itself. To be copyright–protected, therefore, a data structure must qualify as a protected part of a work of authorship (i.e., a work such as the computer program in which it is embodied). To qualify so, the data structure must not be a system under the First Circuit's Lotus–Borland test nor flunk the patterns – abstractions test of Judge Hand as reformulated in Bando and Altai.

The same principle should apply to most of the things that this course addresses. Is an algorithm a computer program? Is a menu? Is the background color of a menu? Is a macro?

3. The court (following Gates v. Bando, which followed a law review article) lumps algorithms in with data structures as “intermediate” subject matter that may, in some circumstances, be copyright-protected. Recall that Bando directed a remand in which the district court could apply the Abstraction – Filtration – Comparison test to determine whether the Gates algorithms were copyright-protected. What do you suppose are the necessary circumstrances?

Can an algorithm ever be anything other than an idea, procedure, process, system, method of operation, or concept? The Copyright Office doesn't think so. In its Circular 31, it maintains that copyright protection is not available for “ideas or procedures for doing, making, or building things; business operations or procedures; mathematical principles; formulas, algorithms, or any concept, process [or] method of operation.”

In Kregos v. Associated Press, 937 F.2d 700 (2d Cir. 1991), the Second Circuit in dictum (it upheld as original Kregos' selection of categories believed useful in predicting baseball results) drew a distinction between soft schemes or algorithms, those infused with taste and opinion, and hard schemes and algorithms, useful for diagnosing a human disease or optimally routing a gas pipeline. Public policy does not care about soft algorithms as much as hard algorithms, and therefore the merger doctrine applies only to the latter. See CCC Info. Servs., Inc. v. MacLean Hunter Market Reports, Inc., 44 F.3d 61 (2d Cir. 1994) (so explaining Kregos).

Short Tutorial Note on How the Merger Doctrine and
Scènes à Faire Differently Address Relevant Market

Copyright law's resistance to awarding exclusive franchises over ideas, systems, and abstractions is not limited to cases of true monopoly power. Even under the merger doctrine, what is termed an art or idea or system need not be a relevant market for monopolization purposes. (In antitrust law, the construct of relevant market defines the subject of legal scrutiny, specifically, the arena in which competition is alleged to have been harmed in an economically meaningful context. See also 35 U.S.C. § 271(d)(5).) Thus Selden's copyright would not monopolize the entire art of bookkeeping; it would only monopolize the art or sub-art of keeping books in accordance with Selden's particular system.

Of course, this may force us into controversies over “what is the art?” — which is a relevant market argument of sorts. Thus, some courts in applying the merger doctrine have found the idea in question to be at such a high level of abstraction that almost unlimited opportunities exist for alternative expression. This would be comparable to holding bookkeeping to be the art at stake in Baker v. Selden, rather than bookkeeping in accordance with Selden's particular system. For an example, see Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983), cert. dism'd by stip., 464 U.S. 1033 (1984). In that case, the court of appeals defined the idea of a compiler program, which was targeted at a particular microprocessor chip (the 6502) and a particular programming language (Basic), as the idea of a compiler for any microprocessor chip and for any language. This led the court to conclude that the merger doctrine did not apply, since many microprocessor chips and many programming languages exist. Of course, users of Apple computers, which utilized a 6502 microprocessor chip and Basic language programs, had no need or ability to compile code for other microprocessor chips and other languages. Apple’s concept of the relevant market for idea/expression purposes is not only inconsistent with Baker v. Selden but it is inconsistent, as well, the Supreme Court's recent approach to relevant market in Eastman Kodak Co. v. Image Technical Services, Inc., 504 U.S. 451 (1992) (tying case in which Court ruled that possible relevant market was replacement parts for Kodak's proprietary imaging machines — in effect, a brand-defined aftermarket).

In the area of literary works and comparable imaginative works, copyright law has developed idea and expression as a continuum. Copyright law has also developed the expedient of treating this issue as a question of scope of protection against infringement, which copyright measures in analog or fuzzy logic terms, rather than as a matter of copyright-eligibility or not, measured in 1/0 digital terms. To be sure, copyright law has not developed the merger doctrine in quite the same way for systems, procedures, processes, and methods of operation as it has for ideas. For these categories of subject matter, the all-or-nothing approach suggested in Baker v. Selden, and used in patent law to address statutory subject matter and nonstatutory subject matter, seems instead to have held sway. Thus, if some aspect of a computer program is considered a system — for example, the syntax and vocabulary of its commands — that aspect of the computer program will be held entirely ineligible for copyright protection. Nonetheless, copyright law's treatment of merger of idea and expression points to a more nuanced approach to eligibility for intellectual property protection.

Moreover, copyright law has an additional conceptual tool for dealing with abstractions and higher-level generalities for copyrightable works. Copyright law has a doctrine akin to the merger doctrine — the doctrine of scènes à faire. This doctrine recognizes that certain genres require certain elements, or at least almost always utilize them. Without these stock elements, those to whom the work is directed may fail to receive cues or may have their expectations disappointed. Can a movie featuring Nazi soldiers as part of the action, as in Casablanca, fail to have them at some point sing Deutschland Über Alles? Can a film with a saloon in the Old West lack a madam or prostitute with a heart of gold? This doctrine has been extended to aspects of computer programs that necessarily result from hardware standards and mechanical specifications, software standards and compatibility requirements, computer manufacturer design standards, programming practices, and practices and demands of an industry being served. These, too, are now part of scènes à faire.*

  *     Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1375 (10th Cir. 1997); Engineering Dynamics, Inc. v. Structural Software, Inc., 46 F.3d 408, 410 n.2 ((5th Cir. 1995); Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 838 (10th Cir. 1993). The Mitel court suggested that scènes à faire and originality were alternative doctrines that could preclude copyright protection of features of a work whose adoption was caused by such external factor or constraints. Thus, even if the copyright owner could convince the court that the facts of the case fell outside the merger doctrine for some reason, nevertheless, scènes à faire or originality might result in a conclusion of no copyright infringement liability. Id. at 1373 n.6.

A similar observation is made in CMM Cable Rep, Inc. v. Ocean Coast Properties, Inc., 97 F.3d 1504 (1st Cir. 1996). The court said that the two doctrines were similar in that they sought to prevent monopolization of ideas. However, merger applied when idea and expression were inseparable but scènes à faire applied where an external common setting (idea) caused use of common elements and thus similarity of expression. Id. at 1522 n.25.

Trademark law has a similar limiting principle against protecting functional features of a work by trademarks. See Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 164-65, 169 (1995). However, the Supreme Court's present concept of functionality in trademark law appears to go beyond scènes à faire to embrace any competitively significant feature even if the competitive significance is slight. See id.

Different courts differ on the extent to which setting must compel, or merely be likely to cause, use of the same elements in the original and accused work before scènes à faire applies. Thus, in one case the Second Circuit said expansively that a motion picture about the South Bronx would need to feature drunks, prostitutes, vermin, and derelict cars to be perceived as realistic, and therefore these features were within the scènes à faire doctrine. (Williams v. Crichton, 84 F.3d 581, 583 (2d Cir. 1996), commenting on Walker v. Time Life Films, Inc., 784 F.2d 44 (2d Cir.), cert. denied, 476 U.S. 1159 (1986).) The same court held that placing a dinosaur zoo on an island far from the mainland was no more than scènes à faire in a dinosaur adventure story. Other courts may view the doctrine somewhat more narrowly.

The rationale of the doctrine of scènes à faire is that exclusivity over scènes à faire is a substantial impediment to the expressions of other persons (and the public's enjoyment of such expressions), even though the impediment is not a complete barricade. By the same token, little benefit to society (indeed, mainly or only detriment) is seen as flowing from grants of copyright exclusivity over scènes à faire. In a business and computer program context, the doctrine of scènes à faire and its policies have been extended to practices and demands of an industry that the computer program serves, so that the concept of expression and scènes à faire are already defined or circumscribed in terms of business functionality. See, e.g., Engineering Dynamics, Inc. v. Structural Software, Inc., 46 F.3d 408, 410 n.2 ((5th Cir. 1995).

In a sense, scènes à faire is a doctrine using an abstraction continuum, just as idea/expression and the ordinary patent doctrine as to natural principles and abstract ideas does. It is less overt under scènes à faire, yet nonetheless the case. Any analytic category, so long as it defines neither a null class nor a universal class, must involve some sort of continuum. For example, consider the Second Circuit's ruling that the scène à faire for a movie about the South Bronx would feature drunks, prostitutes, vermin (rats, in the accused and copyrighted works), and derelict cars. The principle must have a limit, so that something is outside scènes à faire for South Bronx movies. Perhaps, cockroaches, gangs, and muggings are also part of the scène à faire, but having as characters a slumlord with a heart of gold and a policeman who is a Zen Bhuddist and lives in a garage surely goes beyond the South Bronx scène à faire. There must be some expression possible even in a cliche-ridden genre.


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