Journal of Law, Information and Science
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BRIAN F FITZGERALD[1]
The Lotus 1-2-3 (a computer spreadsheet program) litigation continues to grow exponentially. In the coming months it will wind its way up the steps of the Supreme Court in Washington and present itself to yet another court, this time the highest in the United States.[2] It is rare for copyright issues to be granted certiorari and thus what the Supreme Court has to say on the issue will have far reaching effects for American intellectual property law.
Lurking behind this litigation lies the interminable idea-expression dichotomy. The indeterminacy predicted in this area from the copyright master Learned Hand,[3] lingers on. In two separate actions (Lotus Development Corporation v Paperback Software International[4] and Lotus Development Corporation v Borland International Inc[5]) Judge Robert Keeton of the United States District Court for the District of Massachusetts has held the Lotus 1-2-3 user interface to be a copyrightable expression encompassed by s 102 (a) of the Copyright Act 1976 (17 U.S.C.). The United States Court of Appeals for the First Circuit rejected Keeton J's approach in March of this year in Lotus Development Corporation v Borland International Inc[6] holding that the Lotus 1-2-3 user interface was a "method of operation" and therefore outside the ambit of copyrightable subject matter listed in s 102 (a).[7] The matter as has been intimated now lies at the door of the Supreme Court.
In anticipation of that decision this article outlines the judgments of Keeton J in Paperback and Borland and the Court of Appeals in Borland aiming to provide a background that will allow the reader to fully appreciate the decision of the Supreme Court when it finally arrives.
The two main questions considered in this case were:
i) whether and to what extent the plaintiff's computer spreadsheet program, Lotus 1-2-3, was copyrightable and;
ii) whether the defendants' VP-Planner was, an infringing work containing elements substantially similar to copyrightable elements of 1-2-3, ...[9]
Keeton J commenced his judgment with an excellent overview of the operational aspects of computers[10] and then set about explaining the distinction between literal and non literal aspects of computer programs and the relevance of such a distinction to the case at hand. He explained:
Defendants vigorously dispute .... the copyrightability of any nonliteral elements of computer programs. That is, defendants assert that only literal manifestations of computer programs are copyrightable. Plaintiff, on the other hand, maintains that copyright protection extends to all elements of computer programs that embody original expression, whether literal or nonliteral, including any original expression embodied in a program's "user interface."
One difficulty with plaintiff's argument is the amorphous nature of "nonliteral" elements of computer programs. Unlike the written code of a program or a flowchart that can be printed on paper, nonliteral elements -- including such elements as the overall organization of a program, the structure of a program's command system, and the presentation of information on the screen -- may be less tangibly represented. Whether these elements are copyrightable, and if so, how the nonliteral elements that are copyrightable may be identified, are central to deciding this case.[11]
Judge Keeton then turned to appraise the statutory protection of computer programs. He cited 17 U.S.C. s 102 (a) which provides that copyright exists "...in original works of authorship fixed in any tangible medium of expression ...". "Original" he explained was not to be limited to works that are novel or unique (which is closer to the standard in patent law); originality refers to works created independently by an author regardless of their literary or aesthetic merit.[12] Examples of "works of authorship" he explained were listed in 17 U.S.C. s 102 (a) to include literary works. Keeton J went on to say that after amendments to the Copyright Act 1976, in 1980,[13] computer programs were commonly regarded as coming within the definition of "literary work" in 17 U.S.C s 101.[14] However citing s 102 (b) Keeton J made it clear that copyright protection for an original work of authorship did not extend to any "idea, procedure, process, system, method of operation, concept, principle or discovery."
In developing the meaning of the statute Judge Keeton continued on to assess the object and policy of the Copyright Act 1976. He rehearsed the view that copyright monopolies are not granted for the purpose of rewarding authors, but rather to serve the public welfare by encouraging authors (broadly defined) to generate new ideas and disclose them to the public, being free to do so in any uniquely expressed way they may choose.[15]
Keeton J explained that "in construing the relevant statutory mandates, the court must be faithful to the statutory language and mindful of both the ultimate goal of copyright law -- the advancement of public welfare -- and Congress' chosen method of achieving this goal -- private reward to the individual author." Courts he explained "should not draw the line between copyrightable and non-copyrightable elements of computer programs in such a way as to harm the public welfare" however "drawing the line too liberally in favor of copyright protection would bestow strong monopolies over specific applications upon the first to write programs performing those applications and would thereby inhibit other creators from developing improved products" while "drawing the line too conservatively would allow programmer's efforts to be copied easily, thus discouraging the creation of all but modest incremental advances."[16]
However no matter where the boundary line between copyrightable and non-copyrightable elements of computer programs was to be drawn, for Keeton J. it was clearly the role of the courts to draw the ultimate line. Congress, he explained had "mandated that courts use an evaluative standard in determining this boundary line -- that is, a standard that distinguishes idea from expression and requires that a court, in applying this distinction, be sensitive to the object and policy of copyright law as manifested by Congress."[17]
In summary Keeton J was saying:
i) the purpose of the statute was to enhance public welfare by granting a copyright monopoly;
ii) that this purpose informed the determination of what was copyrightable and;
iii) that it was for the courts after evaluating all the factors to make the final decision on copyrightable subject matter.
Keeton J then returned to the statute. He said that the statute protected expressive elements of computer programs but not ideas, processes or methods embodied in the program; the idea-expression distinction.[18] Keeton J held that the idea-expression dichotomy was relevant to the issue of copyrightability of computer programs,[19] but qualified this saying that not all expression was copyrightable. There were four types of expression, he explained, that were not copyrightable:
The expression of an idea is copyrightable only if it is original -- that is, if the expression originated with the author. s 102(a). Even then the expression of the idea is not copyrightable if the expression does no more than embody elements of the idea that are functional in the utilitarian sense. s 102(b). The third concept is "obviousness." When a particular expression goes no farther than the obvious, it is inseparable from the idea itself. Protecting an expression of this limited kind would effectively amount to protection of the idea, a result inconsistent with the plain meaning of the statute. It is only a slight extension of the idea of "obviousness" -- and one supported by precedent -- to reach the fourth concept: "merger." If a particular expression is one of a quite limited number of the possible ways of expressing an idea, then, under this fourth concept, the expression is not copyrightable:
When the uncopyrightable subject matter is very narrow, so that "the topic necessarily requires," if not only one form of expression, at best only a limited number, to permit copyrighting would mean that a party or parties, by copyrighting a mere handful of forms, could exhaust all possibility of future use of the substance. In such circumstances it does not seem accurate to say that any particular form of expression comes from the subject matter. However, it is necessary to say that the subject matter would be appropriated by permitting the copyrighting of its expression. We cannot recognize copyright as a game of chess in which the public can be checkmated.
When there is essentially only one way to express an idea, the idea and its expression are inseparable and copyright is no bar to copying that expression..... If, however, the expression of an idea has elements that go beyond all functional elements of the idea itself, and beyond the obvious, and if there are numerous other ways of expressing the non-copyrightable idea, then those elements of expression, if original and substantial, are copyrightable.[20]
Keeton J then proceeded to lay down the legal test for copyrightability. His main concern here was not with originality or fixation in a tangible form but with the idea-expression distinction. He explained that "one among the principal elements to be weighed in determining copyrightability when the idea-expression distinction applies is to conceive and define the idea in a way that places it somewhere along the scale of abstraction (somewhere between the most abstract and the most specific of all possible conceptions)."[21] In developing this abstraction test he took inspiration from Learned Hand:
Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his "ideas," to which, apart from their expression, his property is never extended. Nobody has ever been able to fix that boundary, and nobody ever can.[22]
Thirty more years experience in judging did not change Learned Hand's view that the idea-expression distinction was one of a case by case appreciation:
Obviously, no principle can be stated as to when an imitator has gone beyond copying the 'idea,' and has borrowed its 'expression.' Decisions must therefore inevitably be ad hoc.[23]
Keeton J added two further considerations to the legal test of copyrightability besides the abstraction test:
SECOND, the decisionmaker must focus upon whether an alleged expression of the idea is limited to elements essential to expression of that idea (or is one of only a few ways of expressing the idea) or instead includes identifiable elements of expression not essential to every expression of that idea.
THIRD, having identified elements of expression not essential to every expression of the idea, the decisionmaker must focus on whether those elements are a substantial part of the allegedly copyrightable "work."
In addressing this third element of the test for copyrightability, the decisionmaker is measuring "substantiality" not merely on a quantum scale but by a test that is qualitative as well.[24]
In applying this legal test to the Lotus 1-2-3 user interface Keeton J considered the degree of abstraction of the "user interface" of Lotus 1-2-3, "the menus (and their structure and organization), the long prompts, the screens on which they appear, the function key assignments, and the macro commands and language."[25]
He explained the issue at hand was whether Lotus 1-2-3 went beyond those details essential to any expression of the idea of an electronic spreadsheet, and included substantial elements of expression, distinctive and original. In determining this issue Keeton J traced the history of the electronic spreadsheet. The idea had first been developed by Daniel Bricklin who with the aid of others transformed his idea into VisiCalc, the first commercial electronic spreadsheet. "Although VisiCalc was a commercial success, implementational characteristics limited the scope and duration of its marketability as a spreadsheet product. Most notably, VisiCalc was originally programmed for use on the Apple II computer, which had limited memory (32K of RAM), limited screen display capabilities (only 40 characters per line), and limited keys available on the keyboard (no function keys and no up and down cursor keys). When VisiCalc was later rewritten for use on the IBM PC (which was introduced in August 1981), it was transferred with minimal changes and without taking advantage of many of the PC's more extensive capabilities."[26]
"Mitchell Kapor and Jonathan Sachs, the original authors of 1-2-3, exploited this opportunity. Building on Bricklin's revolutionary idea for an electronic spreadsheet, Kapor and Sachs expressed that idea in a different, more powerful way. 1-2-3 took advantage of the IBM PC's more expansive memory and more versatile screen display capabilities and keyboard. 1-2-3, like many electronic spreadsheet programs since, could thus be thought of as an evolutionary product that was built upon the shoulders of VisiCalc. Just as 1-2-3 expressed the idea of an electronic spreadsheet differently from VisiCalc, so did Microsoft's Excel."[27]
The three products -- VisiCalc, 1-2-3, and Excel -- shared the general idea of an electronic spreadsheet but expressed the idea in substantially different ways. The products also shared some elements, however, at a somewhat more detailed or specific point along the abstractions scale. One element shared by these and many other programs was the basic spreadsheet screen display that resembled a rotated "L.". Accordingly, this aspect of electronic spreadsheet computer programs, if not present in every expression of such a program, was present in most expressions. Thus Keeton J concluded the second element of the legal test weighed heavily against treating the rotated "L" screen display as a copyrightable element of a computer program.[28]
He explained another expressive element that merges with the idea of an electronic spreadsheet is the designation of a particular key that, when pressed, will invoke the menu command system. The number of keys available for this designation is limited for two reasons:
First, because most of the keys on the keyboard relate either to values (e.g., the number keys and mathematical operation keys) or labels (e.g., the letter keys), only a few keys are left that can be used, as a practical matter, to invoke the menu command system. Without something more, the programmed computer would interpret the activation of one of these keys as an attempt by the user to enter a value or label into a cell. Second, because users need to invoke the command system frequently, the key designated for this purpose must be easily accessible. For example, the user should not be required to press two keys at the same time (such as "Shift," "Alt," or "Ctrl" along with another key)...As just noted, when all the letter, number, and arithmetic keys are eliminated from consideration, the number of keys remaining that could be used to invoke the menu command system is quite limited. They include the slash key ("/") and the semi-colon key (";"). The choice of the creators of VisiCalc to designate the slash ("/") key to invoke the menu command system is not surprising. It is one of very few practical options. Thus the second element of the legal test weighs heavily against copyrightability of this aspect of VisiCalc -- and of 1-2-3. This expression merges with the idea of having a readily available method of invoking the menu command system.[29]
Keeton J. continued on explaining "other elements of expression a decisionmaker may regard as either essential to every expression of an electronic spreadsheet, or at least "obvious" if not essential, include the use of the "+" key to indicate addition, the "-" key to indicate subtraction, the "*" key to indicate multiplication, the "/" key within formulas to indicate division, and the "enter" key to place keystroke entries into the cells."[30]
However while there was merger in relation to some expressions it was clear that other expressions were sufficiently distinctive to be copyrightable subject matter. In showing this Keeton J contrasted VisiCalc and Lotus 1-2-3. Regarding VisiCalc he said:
The main menu command line reads: "Command: BCDEFGIMPRSTVW-". Each of these letters (or, to use defendants' experts' preferred terminology, "symbolic tokens") stands for a different command -- in this case: Blank, Clear, Delete, Edit, Format, Global, Insert, Move, Print, Replicate, Storage, Titles, Version Number, Window, and "-" for "Label Repeating." Many of these commands invoke submenus which also contain a series of letters, each of which represents a submenu command choice. See VisiCalc Command Structure Chart. This particular expression of a menu structure is not essential to the electronic spreadsheet idea, nor does it merge with the somewhat less abstract idea of a menu structure for an electronic spreadsheet. The idea of a menu structure -- including the overall structure, the order of commands in each menu line, the choice of letters, words, or "symbolic tokens" to represent each command, the presentation of these symbolic tokens on the screen (i.e., first letter only, abbreviations, full words, full words with one or more letters capitalized or underlined), the type of menu system used (i.e., one-, two-, or three-line moving-cursor menus, pull-down menus, or command-driven interfaces), and the long prompts -- could be expressed in a great many if not literally unlimited number of ways.
The fact that some of these specific command terms are quite obvious or merge with the idea of such a particular command term does not preclude copyrightability for the command structure taken as a whole. If particular characteristics not distinctive individually have been brought together in a way that makes the "whole" a distinctive expression of an idea -- one of many possible ways of expressing it -- then the "whole" may be copyrightable... It is plain that plaintiff did not impermissibly copy copyrighted elements of VisiCalc. Lotus 1-2-3 uses a very different menu structure. In contrast with VisiCalc's one-line main menu that reads "Command: BCDEFGIMPRSTVW-", the main menu of Lotus 1-2-3, which uses a two-line moving-cursor menu system, reads: "Worksheet Range Copy Move File Graph Data Quit". Most of the submenus similarly present a list of up to about ten full-word menu choices, presented in order of predicted frequency of use rather than alphabetically. See Lotus 1-2-3 Command Tree Chart. Other spreadsheet programs have also expressed their command structures in completely different ways. Cf. Multiplan, Framework II, SuperCalc4, Excel, Symphony, MathPlan, and PFS: Professional Plan.[31]
The judge explained that a menu command structure "is capable of being expressed in many if not an unlimited number of ways, and that the command structure of 1-2-3 is an original and nonobvious way of expressing a command structure." Accordingly, Keeton J concluded, the menu structure, (including the choice of command terms, the structure and order of those terms, their presentation on the screen, and the long prompts) was an aspect of 1-2-3 that was not present in every expression of an electronic spreadsheet and thereby met the requirements of the second element of the legal test for copyrightability.[32]
As to the third element of the legal test, he further concluded the structure, sequence, and organization of the menu command system was a substantial part of the alleged copyrighted work as it was its most unique element, in fact the aspect that had made 1-2-3 so popular. All three elements of the legal test of copyrightability had thus been established in relation to the user interface of 1-2-3.[33]
Having established copyrightability Keeton J moved on to the second major issue of the case, whether illicit copying had occurred? He held the illicit copying of Lotus 1-2-3 by the defendant to be so overwhelmingly obvious as to prevent any assertion of independent creation; largely due to admissions of the defendant, and the striking similarity of the two programs, to both the expert and lay observer.[34]
In conclusion the judge made some very interesting comments on judicial technique in copyright adjudication. He explained, one of the themes in the defendants' bundle of policy arguments was a plea for bright-line certainty. The defendant argued: "Software developers would like to know what they may and what they must not copy and the idea-expression distinction fails to achieve this policy goal; therefore, the court should adopt instead the bright-line literal-nonliteral distinction." Keeton J said "the yearning for certainty is not unique to this case or to copyright law, but certainty has a price, it reflects a hope that the court will apply hard-and-fast rules despite circumstances that cry out for a judgmental standard of decisionmaking that takes account of circumstances an impartial observer would think relevant to a "just" disposition of the case." He noted, "the more deeply one probes, whether as lawyer or judge, or as an interested observer or critic of the legal system, the clearer it becomes that in many circumstances hard-and-fast rules, despite their initial attractiveness and false promise of certainty, have consequences that offend one's sense of justice" because "hard-and-fast rules, which allow for little or no evaluation and discretion, sometimes fail to take account of the competing values underlying the relevant law, and fail even to attempt to find an accommodation that serves conflicting high-value interests as well as possible, and at the lowest possible detriment to each." [35] Keeton J concluded:
In any event ... Congress could have constitutionally drawn defendants' proposed bright-line -- providing protection only to computer program code and not to nonliteral elements of computer programs -- but Congress has not done so. Without a congressional mandate, it would be an abuse of authority for this court, in deciding this case, to use a bright-line test of copyrightability that makes the literal-nonliteral distinction decisive. Instead, the court must adjudicate within the area of protection mandated by Congress. [36]
In summary, Keeton J held the Lotus 1-2-3 user interface was copyrightable and had been illicitly copied. Furthermore he highlighted the somewhat indeterminate judicial role in the development of this area of copyright law.
The second Lotus case to be considered, the first instance decision in the current Supreme Court appeal, was argued some two years after Paperback once again before Judge Robert Keeton of the United States District Court for the District of Massachusetts.
The facts and issues in this case mirrored those litigated in Paperback - was the user interface copyrightable and had it been illicitly copied - other than to the extent to which copying had allegedly occurred.
In determining copyrightability Keeton J explained he would apply the three pronged legal test he had developed in Paperback which he formulated in the following way:
FIRST, making the determination of "copyrightability," the decisionmaker must focus upon alternatives that counsel may suggest, or the court may conceive, along the scale from the most generalized conception to the most particularized, and choose some formulation, some conception of the "idea," "system," "process," "procedure," or "method"--for the purpose of distinguishing between the idea, system, process, procedure, or method and its expression.
SECOND, the decisionmaker must focus upon whether an alleged expression of the idea, system, process, procedure, or method is limited to elements essential to expression of that idea, system, process, procedure, or method (or is one of only a few ways of expressing the idea, system, process, procedure, or method) or instead includes identifiable elements of expression not essential to every expression of that idea, system, process, procedure, or method.
THIRD, having identified elements of expression not essential to every expression of the idea, system, process, procedure, or method, the decisionmaker must focus on whether those expressive elements, taken together, are a substantial part of the allegedly copyrightable "work."[38]
As Computer Associates International, Inc. v. Altai, Inc.[39] had been decided since Paperback Keeton J was forced to square the test he had used in Paperback with that pronounced in Altai. He explained the three stage test of Altai saying the first two steps, "abstraction" and "filtration," were designed to define the idea of the program and to eliminate it (as well as other noncopyrightable subject matter) from further consideration. These first two steps of the Altai test he suggested concerned what other courts and commentators had called "copyrightability", only the third step, "comparison," addressed similarities between the copyrighted work and the allegedly infringing work.[40] To what extent did the Altai "abstraction-filtration-comparison" test differ, either substantively or in methodology, from the combination of copyrightability and substantial similarity tests Keeton J wished to invoke?
Keeton J answered this saying his test for determining copyrightability was compatible with the Altai test. The Altai abstraction test he explained was founded on the opinions of Judge Learned Hand that were also the foundation of his first step for determining copyrightability. His second step he claimed paralleled Altai's "filtration" step. However the third step of the Altai test, namely, "comparison", he noted, served to determine whether the expressive elements of the allegedly copyrightable work were a substantial part of it (the third step of Keeton J's copyrightability test) and compare the relevant portions of the allegedly infringing work and the expressive elements of the allegedly copyrightable work to ascertain whether any part of the allegedly infringing work is similar to expressive elements of the allegedly copyrightable work that were a substantial part of the allegedly copyrightable work (whether there was illicit copying, a separate but essential part of the Keeton J test). He concluded that his tests for copyrightability and illicit copying were compatible substantively though different in methodology.[41]
The trial thus resolved itself into an application of the legal test of copyrightability in order to determine whether the Lotus 1-2-3 user interface was merely an idea, process, procedure or method, or protectable expression of an idea, process, procedure or method. Keeton J concluded in much the same way that he had done in Paperback that the Lotus 1-2-3 user interface did contain identifiable elements of copyrightable expression.[42] Having determined the Lotus 1-2-3 user interface was copyrightable subject matter Keeton J then turned to consider whether it had in fact been copied.
In addressing the issue of illicit copying (the third Altai factor) Keeton J asked whether there was substantial similarity[43] between the programs? While the issue was less clear cut as in Paperback, Judge Keeton found illicit copying[44] to have occurred and awarded in part[45] the motion for summary judgment.[46]
In summary, Keeton J once again held that the Lotus 1-2-3 user interface was copyrightable and had been illicitly copied.
The judgment in the Borland appeal to the Court of Appeals for the First Circuit was handed down in March 1995.
Stahl J delivering the judgment of the Court (with Torruella CJ, Boudin J concurring) explained that the main issue in the case was as to whether the Lotus menu command hierarchy was copyrightable.[48] They held that Baker v Selden was not as the defendant had contended dispositive of the case. The Court explained the case at hand concerned Lotus's monopoly over the commands it used to operate a computer, a completely different issue to that litigated in Baker.
They moved immediately to assess the applicability of the Computer Associates International Inc v Altai Inc[49] abstraction-filtration-comparison test, noting that the appeal at hand did not concern alleged nonliteral copying of computer code but rather Borland's deliberate, literal copying of the Lotus menu command hierarchy. They said "while the Altai test may provide a useful framework for assessing the alleged nonliteral copying of computer code, we find it to be of little help in assessing whether the literal copying of a menu command hierarchy constitutes copyright infringement." In fact, they thought "that the Altai test may actually be misleading in this context because, in instructing courts to abstract the various levels, it seemed to encourage them to find a base level that included copyrightable subject matter that, if literally copied, would make the copier liable for copyright infringement. While that base (or literal) level, they suggested, would not be at issue in a nonliteral-copying case like Altai, it was precisely what was at issue in the Borland appeal." Therefore they claimed "abstracting menu command hierarchies down to their individual word and menu levels and then filtering idea from expression at that stage, as both the Altai and the district court tests required, obscured the more fundamental question of whether a menu command hierarchy could be copyrighted at all; the initial inquiry should not be whether individual components of a menu command hierarchy were expressive, but rather whether the menu command hierarchy as a whole could be copyrighted: Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823 (10th Cir. 1993)."[50] Interestingly then the Altai test was given a cool reception by the First Circuit in the context of the dispute at hand. It will be interesting to see what the Supreme Court does with the Altai test and the Gates Rubber qualification.
The Court moved on to consider whether the menu command hierarchy was excluded from protection by s 102 (b) of the Copyright Act 1976. Borland had argued that it was a "method of operation" which is excluded from copyrightable subject matter pursuant to s 102 (b). The Court responded:
We think that "method of operation," as that term is used in s 102(b), refers to the means by which a person operates something, whether it be a car, a food processor, or a computer. Thus a text describing how to operate something would not extend copyright protection to the method of operation itself; other people would be free to employ that method and to describe it in their own words. Similarly, if a new method of operation is used rather than described, other people would still be free to employ or describe that method.
We hold that the Lotus menu command hierarchy is an uncopyrightable "method of operation." The Lotus menu command hierarchy provides the means by which users control and operate Lotus 1-2-3. If users wish to copy material, for example, they use the "Copy" command. If users wish to print material, they use the "Print" command. Users must use the command terms to tell the computer what to do. Without the menu command hierarchy, users would not be able to access and control, or indeed make use of, Lotus 1-2-3's functional capabilities.
The Lotus menu command hierarchy does not merely explain and present Lotus 1-2-3's functional capabilities to the user; it also serves as the method by which the program is operated and controlled. The Lotus menu command hierarchy is different from the Lotus long prompts, for the long prompts are not necessary to the operation of the program; users could operate Lotus 1-2-3 even if there were no long prompts. The Lotus menu command hierarchy is also different from the Lotus screen displays, for users need not "use" any expressive aspects of the screen displays in order to operate Lotus 1-2-3; because the way the screens look has little bearing on how users control the program, the screen displays are not part of Lotus 1-2-3's "method of operation." The Lotus menu command hierarchy is also different from the underlying computer code, because while code is necessary for the program to work, its precise formulation is not. In other words, to offer the same capabilities as Lotus 1-2-3, Borland did not have to copy Lotus's underlying code (and indeed it did not); to allow users to operate its programs in substantially the same way, however, Borland had to copy the Lotus menu command hierarchy. Thus the Lotus 1-2-3 code is not a uncopyrightable "method of operation." [51]
The Court referred to Keeton J's opinion suggesting he would only hold a very general idea (an abstraction) to be non copyrightable. They said they did not think "methods of operation" were limited to abstractions.[52] They explained, in what is perhaps the most crucial part of the decision, that:
The fact that Lotus developers could have designed the Lotus menu command hierarchy differently is immaterial to the question of whether it is a "method of operation." In other words, our initial inquiry is not whether the Lotus menu command hierarchy incorporates any expression. Rather, our initial inquiry is whether the Lotus menu command hierarchy is a "method of operation."
Concluding, as we do, that users operate Lotus 1-2-3 by using the Lotus menu command hierarchy, and that the entire Lotus menu command hierarchy is essential to operating Lotus 1-2-3, we do not inquire further whether that method of operation could have been designed differently. The "expressive" choices of what to name the command terms and how to arrange them do not magically change the uncopyrightable menu command hierarchy into copyrightable subject matter.[53]
The Court drew support in this conclusion from Baker v. Selden where the Supreme Court explained:
... the teachings of science and the rules and methods of useful art have their final end in application and use; and this application and use are what the public derive from the publication of a book which teaches them. . . . The description of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art itself. The object of the one is explanation; the object of the other is use. The former may be secured by copyright. The latter can only be secured, if it can be secured at all, by letters-patent.[54]
The Court suggested as Lotus wrote its menu command hierarchy "so that people could learn it and use it" then it followed in line with Baker that it was not copyrightable.[55]
The Court reinforced this point as it continued to explain "method of operation" by comparing the buttons on a VCR machine to the Lotus 1-2-3 menu command hierarchy. They said "in many ways, the Lotus menu command hierarchy is like the buttons used to control, say, a video cassette recorder ("VCR"), a machine that enables one to watch and record video tapes." Users, they explained, operated VCRs by pressing a series of buttons that are typically labelled "Record, Play, Reverse, Fast Forward, Pause, Stop/Eject." That the buttons are arranged and labelled the Court suggested does not "make them a "literary work," nor does it make them an "expression" of the abstract "method of operating" a VCR via a set of labelled buttons; the buttons are themselves the "method of operating" the VCR." In comparison "when a Lotus 1-2-3 user chooses a command, either by highlighting it on the screen or by typing its first letter, he or she effectively pushes a button; highlighting the "Print" command on the screen, or typing the letter "P," is analogous to pressing a VCR button labelled "Play." Just as one could not operate a buttonless VCR, it would be impossible to operate Lotus 1-2-3 without employing its menu command hierarchy. Thus the Lotus command terms are not equivalent to the labels on the VCR's buttons, but are instead equivalent to the buttons themselves. Unlike the labels on a VCR's buttons, which merely make operating a VCR easier by indicating the buttons' functions, the Lotus menu commands are essential to operating Lotus 1-2-3. Without the menu commands, there would be no way to "push" the Lotus buttons, as one could push unlabelled VCR buttons."[56]
The Court concluded with a reference to Feist Publications Inc v Rural Telephone Service Co.[57] suggesting the policy of copyright was not to reward authors but to promote the progress of science and the arts and to this end copyright protects an author's right to original expression but encourages others to "build" on the ideas and information conveyed by a work.[58] They concluded that in many cases there was no need to build on another's expression as the idea could easily be expressed differently, however in the situation of a "method of operation" building required use of the precise method of operation already employed; copying was essential unless one was to have to dismantle and rebuild.[59]
There are many interesting points raised by this judgment:
a) What is the exact scope and operation of the Altai abstraction-filtration-comparison test?
b) Will an expressive "method of operation" ever be copyrightable?
c) Is a menu hierarchy really anything like the buttons on a VCR?
d) Can the explanation/use dichotomy from Baker persuasively be applied to menu command hierarchies?
e) If the Copyright Act 1976 says computer programs will be protected by copyright why does the Court turn around and point towards patent law as the more appropriate form of protection?
f) Are the old doctrinal tools simply inadequate for the sophisticated developments in computer software?
It is hoped the Supreme Court will answer some of these questions.
While the judgment of the Court displays tight yet technical argument and leaves one a little unconvinced, the concurring opinion of Boudin J raises many interesting and difficult issues concerning the copyright/patent divide and its relationship to computer software. Many of his insights will no doubt fuel argument before the Supreme Court.
Boudin J commenced by explaining that much of the law of copyright concerned literary works, and served to stimulate creative expression without unduly limiting the access of other authors to the broader themes or ideas underlying the work. He explained if too much protection was given this simply meant the next author had to go further away from the original expression.[60] With computer programs he said the issue was very much different:
The computer program is a means for causing something to happen; it has a mechanical utility, an instrumental role, in accomplishing the world's work. Granting protection, in other words, can have some of the consequences of patent protection in limiting other people's ability to perform a task in the most efficient manner. Utility does not bar copyright (dictionaries may be copyrighted), but it alters the calculus.
Of course, the argument for protection is undiminished, perhaps even enhanced, by utility: if we want more of an intellectual product, a temporary monopoly for the creator provides incentives for others to create other, different items in this class. But the "cost" side of the equation may be different where one places a very high value on public access to a useful innovation that may be the most efficient means of performing a given task. Thus, the argument for extending protection may be the same; but the stakes on the other side are much higher.
It is no accident that patent protection has preconditions that copyright protection does not--notably, the requirements of novelty and non-obviousness--and that patents are granted for a shorter period than copyrights. This problem of utility has sometimes manifested itself in copyright cases, such as Baker v. Selden, [1879] USSC 9; 101 U.S. 99, 25 L. Ed. 841 (1879), and been dealt with through various formulations that limit copyright or create limited rights to copy. But the case law and doctrine addressed to utility in copyright have been brief detours in the general march of copyright law.
Requests for the protection of computer menus present the concern with fencing off access to the commons in an acute form. A new menu may be a creative work, but over time its importance may come to reside more in the investment that has been made by users in learning the menu and in building their own mini-programs--macros--in reliance upon the menu. Better typewriter keyboard layouts may exist, but the familiar QWERTY keyboard dominates the market because that is what everyone has learned to use. The QWERTY keyboard is nothing other than a menu of letters.
Thus, to assume that computer programs are just one more new means of expression, like a filmed play, may be quite wrong. The "form"--the written source code or the menu structure depicted on the screen--look hauntingly like the familiar stuff of copyright; but the "substance" probably has more to do with problems presented in patent law or, as already noted, in those rare cases where copyright law has confronted industrially useful expressions. Applying copyright law to computer programs is like assembling a jigsaw puzzle whose pieces do not quite fit.[61]
Boudin J then turned his attention to the statute. He suggested that if taken literally s 102 (b) could exclude most computer programs from protection. Alternatively he said it might be argued that the statute was a "congressional command ...that the familiar doctrines of copyright be taken and applied to computer programs in cookie cutter fashion as if the programs were novels or play scripts."[62]
Neither approach was correct. Boudin J explained the broad brush conception of copyright protection had long been laid down in statute but the heart of copyright doctrine had been developed through the courts on a case by case basis; that was the tradition. Case by case development he said was "adaptive"; it allowed the law to change to meet new problems - to adapt.[63]
Boudin J then moved on (in adaptive mode) to look at the case at hand explaining:
The present case is an unattractive one for copyright protection of the menu. The menu commands (e.g., "print," "quit") are largely for standard procedures that Lotus did not invent and are common words that Lotus cannot monopolize. What is left is the particular combination and sub-grouping of commands in a pattern devised by Lotus. This arrangement may have a more appealing logic and ease of use than some other configurations; but there is a certain arbitrariness to many of the choices.
If Lotus is granted a monopoly on this pattern, users who have learned the command structure of Lotus 1-2-3 or devised their own macros are locked into Lotus, just as a typist who has learned the QWERTY keyboard would be the captive of anyone who had a monopoly on the production of such a keyboard. Apparently, for a period Lotus 1-2-3 has had such sway in the market that it has represented the de facto standard for electronic spreadsheet commands. So long as Lotus is the superior spreadsheet--either in quality or in price--there may be nothing wrong with this advantage.
But if a better spreadsheet comes along, it is hard to see why customers who have learned the Lotus menu and devised macros for it should remain captives of Lotus because of an investment in learning made by the users and not by Lotus. Lotus has already reaped a substantial reward for being first; assuming that the
Borland program is now better, good reasons exist for freeing it to attract old Lotus customers: to enable the old customers to take advantage of a new advance, and to reward Borland in turn for making a better product. If Borland has not made a better product, then customers will remain with Lotus anyway.
Thus, for me the question is not whether Borland should prevail but on what basis. Various avenues might be traveled, but the main choices are between holding that the menu is not protectable by copyright and devising a new doctrine that Borland's use is privileged.[64]
Boudin J agreed that the menu was a "method of operation", however he toyed with the idea of invoking a sui generis doctrine of "privileged use" analogous to the fair use doctrine, concluding that as the fair use doctrine "presumptively" did not apply where the use was a commercial one problems may arise. Under this privileged use exemption it appears that Boudin J would allow Borland to use the Lotus menu if they were implementing a more advanced program and simply trying to make it possible for Lotus users to interact with the new program.[65]
In the end Boudin J concurred with the Court that the menu was a "method of operation" and therefore outside copyright protection. He issued the closing injunction:
In all events, the choices are important ones of policy, not linguistics, and they should be made with the underlying considerations in view.[66]
This closing sentence seems to say it all. The judgment of the Court operates as a technical and literal reading of the statute and provides a result that has a surface level persuasiveness. Boudin J seemed to realise this, delving into the deeper policy issues through comparison with patent law but in the end siding with the literal approach of the majority which he discussed in the short compass of a paragraph. One gains the impression that if Boudin J was not a judge of an intermediate court of appeal but rather on the highest court of appeal, the Supreme Court, he would have fashioned a detailed privileged use exemption directed at computer programs.
In summary, the Court of Appeals for the First Circuit held the Lotus 1-2-3 menu command hierarchy to be non copyrightable subject matter because it was a "method of operation" and thereby excluded from copyright protection by s 102 (b).
Lotus's appeal to the Supreme Court will raise many interesting issues.
There is much academic debate world wide as to whether computer programs should be protected by the law of copyright, patent or some sui generis or hybrid category.[67] It has been argued that copyright and patent laws fail to adequately protect computer program "behavior" and that this should be remedied through the development of new laws to meet this situation.[68] The problem with copyright law is the focus of the protection manifested in its duration (life plus fifty years) while with patent law the protection is much shorter (twenty years) and more utilitarian but the precondition of non obviousness is much harder to satisfy.[69] It is clear that the judgment of the Court of Appeals was mindful of the extensive protection copyright bestows and therefore sought to avoid the problem. Boudin J highlighted the utility of computer programs, the way they channel human activity, their relationship with patents, and the possibility of a privileged use exemption but after such a fruitful start in the end took the easy way out.
As a result the program behavior that Lotus 1-2-3 generated was held by the Court of Appeals not to be protected, which raises obvious incentive problems for computer software developers.
The Supreme Court has a tough assignment ahead of it - perhaps it will develop Boudin J's thoughts on a privileged use exemption, perhaps it will revert back to Keeton J's analysis which privileged expression over functionality,[70] hopefully it will not simply tell us the user interface is a "method of operation". At issue are fundamental questions of social welfare which require mature theoretical analysis. Whether the Court can provide a creative solution to this problem within a doctrinal paradigm that is showing its age, remains to be seen.
[1] BA (G.U.) LL.B. (Hons.) (QUT) BCL (Oxon.), LLM candidate Harvard University 1996, Lecturer in Law Griffith University Law School, Brisbane, Australia.
[2] On September 27 1995 the Supreme Court granted the petition for a writ of certiorari: 1995 U.S. LEXIS 5218; 64 U.S.L.W. 3238
[3] Now immortalised by Gerald Gunther's Learned Hand The Man and The Judge Harvard University Press, 1994.
[4] 740 F.Supp. 37 (D.Mass. 1990)
[5] 799 F.Supp. 203 (D.Mass. 1992)
[6] [1995] USCA11 37; 49 F.3d 807 (1st Cir. 1995).
[7] A "method of operation" is excluded from the subject matter eligible for copyright protection by s 102 (b).
[8] 740 F.Supp. 37 (D.Mass. 1990)
[9] Ibid. at 42.
[10] Ibid. at 42-46.
[11] Ibid. at 45-6.
[12] Ibid. at 48. See also Bleistein v Donaldson Lithographing Co. [1903] USSC 41; 188 US 239, 251 (1903) per Holmes J.
[13] See his discussion of these amendments at 50-51, which as he noted were an implementation of the recommendations of CONTU's Final Report (1978).
[14] Ibid. at 49.
[15] Ibid at 52, citing Harper & Row, Publishers, Inc. v. Nation Enterprises [1985] USSC 128; 471 U.S. 539, 546 (1985).
[16] Ibid. at 53.
[17] Ibid. at 53.
[18] See Baker v Selden [1879] USSC 9; 101 US 99 (1879)
[19] Supra n. 8 at 54.
[20] Ibid at 58-9.
[21] Ibid. at 61.
[22] Nichols v Universal Pictures Corporation, 45 F.2d 119, 121 (2nd Circ. 1930). See also Shipman v. R.K.O. Radio Pictures, 100 F.2d 533, 537 (2nd Cir. 1938) (L. Hand, J., concurring: "Nichols . . held that there is a point where the similarities are so little concrete (and therefore so abstract) that they become only 'theme', 'idea', or skeleton of the plot, and that these are always in the public domain; no copyright can protect them. The test is necessarily vague and nothing more definite can be said about it.")
[23] Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960).
[24] Supra n. 8 at 61.
[25] Ibid. at 63.
[26] Ibid at 65
[27] Ibid. at 66.
[28] Ibid. at 66.
[29] Ibid. at 66.
[30] Ibid. at 66
[31] Ibid. at 67.
[32] Ibid. at 68.
[33] Ibid. at 68.
[34] Ibid. at 68-70.
[35] Ibid. at 73.
[36] Ibid. at 73
[37] 799 F.Supp. 203 (D.Mass. 1992)
[38] Ibid at 211.
[39] [1992] USCA2 1158; 982 F.2d 693 (2d Cir. 1992).
[40] 799 F Supp 203, 211 (D. Mass. 1992).
[41] Ibid. at 211-12.
[42] Ibid. at 217.
[43] On the use of "substantial similarity" as evidence in the two stage Arnstein test (infra n. 44) see P. Goldstein Copyright: Principles Law and Practice, (1989) Little Brown & Co. Boston Volume 2 at 4-5.
[44] Copying is proved by firstly showing the idea has been copied (by expert evidence if necessary) and then by showing the expression of that idea has been copied (the lay audience test). These have been labelled the extrinsic (objective) and the intrinsic (subjective) tests respectively: see Arnstein v Porter 154 F.2d 464 (2d Cir. 1946); Marty Krofft Television Productions v McDonald's Corporation [1977] USCA9 1191; 562 F.2d 1157, 1164-5 (9th Cir. 1977); Broderbund Software Inc v Unison World Inc 648 F.Supp. 1127 (D.N.D. Cal. 1986).
[45] The factual degree of copying was further considered by Judge Keeton in Lotus Development Corporation v Borland International Inc 831 F.Supp. 202 (D.Mass. 1993).
[46] 799 F.Supp. 203, 220-1 (D.Mass. 1992).
[47] [1995] USCA11 37; 49 F.3d 807 (1st Cir. 1995).
[48] Ibid at 813.
[49] [1992] USCA2 1158; 982 F.2d 693 (2d Cir. 1992)
[50] Supra n. 47 at 814-5.
[51] Ibid. at 815-6.
[52] Ibid. at 816.
[53] Ibid. at 816.
[54] Baker v. Selden, [1879] USSC 9; 101 U.S. 99, 104-05 (1879).
[55] [1995] USCA11 37; 49 F.3d 807, 817 (1st cir. 1995).
[56] Ibid at 817.
[57] [1991] USSC 50; 499 U.S. 340 (1991)
[58] Ibid. at 349-50.
[59] [1995] USCA11 37; 49 F.3d. 807, 818 (1st Cir 1995).
[60] Ibid. at 819.
[61] Ibid. at 819-20.
[62] Ibid. at 820.
[63] Ibid. at 820
[64] Ibid. at 821.
[65] Ibid. at 821.
[66] Ibid. at 822
[67] For an excellent introduction to these issues see: "Symposium: Toward A Third Intellectual Property Paradigm" (1994) 94 Columbia LR 2307.
[68] P Samuelson, R Davis, M Kapor, J Reichman "A Manifesto Concerning the Legal Protection of Computer Programs" (1994) 94 Columbia LR 2308.
[69] Ibid at 2346; W Gordon "Assertive Modesty: An Economics of Intangibles" (1994) 94 Columbia LR 2579 at 2580-1.
[70] 740 F.Supp. 37, 57-8 (D.Mass. 1990). But cf. P. Samuelson "A Critique of Lotus v Paperback" (1992) 6 High Tech. LJ 209.
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