LOTUS DEVELOPMENT CORPORATION, Plaintiff, Appellee, v.
BORLAND INTERNATIONAL, INC., Defendant, Appellant.
No. 93-2214
UNITED STATES COURT OF APPEALS FOR THE FIRST CIRCUIT
49 F.3d 807; 1995 U.S. App. LEXIS 4618; 34 U.S.P.Q.2D
(BNA) 1014; Copy. L. Rep. (CCH) P27,367
March 9, 1995, Decided
STAHL, Circuit Judge. This appeal requires us to decide
whether a computer menu command hierarchy is copyrightable subject matter. In
particular, we must decide whether, as the district court held,
plaintiff-appellee Lotus Development Corporation's copyright in Lotus 1-2-3, a
computer spreadsheet [**4] program, was infringed by defendant-appellant
Borland International, Inc., when Borland copied the Lotus 1-2-3 menu command
hierarchy into its Quattro and Quattro Pro computer spreadsheet programs. See
Lotus Dev. Corp. v. Borland Int'l, Inc., 788 F. Supp. 78 (D. Mass. 1992) (
"Borland I"); Lotus Dev. Corp. v. Borland Int'l, Inc., 799 F. Supp. 203 (D.
Mass. 1992) ("Borland II"); Lotus Dev. Corp. v. Borland Int'l, Inc., 831 F.
Supp. 202 (D. Mass. 1993) ("Borland III"); Lotus Dev. Corp. v. Borland Int'l,
Inc., 831 F. Supp. 223 (D. Mass. 1993) ("Borland IV").
I.
Background
Lotus 1-2-3 is a spreadsheet program that enables users to perform accounting
functions electronically on a computer. Users manipulate and control the program
via a series of menu commands, such as "Copy," "Print," and "Quit." Users choose
commands either by highlighting them on the screen or by typing their first
letter. In all, Lotus 1-2-3 has 469 commands arranged into more than 50 menus
and submenus.
Lotus 1-2-3, like many computer programs, allows [**5] users to write what are
called "macros." By writing a macro, a user can designate a series of command
choices with a single macro keystroke. Then, to execute that series of commands
in multiple parts of the spreadsheet, rather than typing the whole series each
time, the user only needs to type the single pre-programmed macro keystroke,
causing the program to recall and perform the designated series of commands
automatically. Thus, Lotus 1-2-3 macros [*810] shorten the time needed to set
up and operate the program.
Borland released its first Quattro program to the public in 1987, after
Borland's engineers had labored over its development for nearly three years.
Borland's objective was to develop a spreadsheet program far superior to
existing programs, including Lotus 1-2-3. In Borland's words, "from the time of
its initial release . . . Quattro included enormous innovations over competing
spreadsheet products."
The district court found, and Borland does not now contest, that Borland
included in its Quattro and Quattro Pro version 1.0 programs "a virtually
identical copy of the entire 1-2-3 menu tree." Borland III, 831 F. Supp. at 212
(emphasis in original). [**6] In so doing, Borland did not copy any of Lotus's
underlying computer code; it copied only the words and structure of Lotus's menu
command hierarchy. Borland included the Lotus menu command hierarchy in its
programs to make them compatible with Lotus 1-2-3 so that spreadsheet users who
were already familiar with Lotus 1-2-3 would be able to switch to the Borland
programs without having to learn new commands or rewrite their Lotus macros.
In its Quattro and Quattro Pro version 1.0 programs, Borland achieved
compatibility with Lotus 1-2-3 by offering its users an alternate user
interface, the "Lotus Emulation Interface." By activating the Emulation
Interface, Borland users would see the Lotus menu commands on their screens and
could interact with Quattro or Quattro Pro as if using Lotus 1-2-3, albeit with
a slightly different looking screen and with many Borland options not available
on Lotus 1-2-3. In effect, Borland allowed users to choose how they wanted to
communicate with Borland's spreadsheet programs: either by using menu commands
designed by Borland, or by using the commands and command structure used in
Lotus 1-2-3 augmented by Borland-added commands.
Lotus filed this action [**7] against Borland in the District of
Massachusetts on July 2, 1990, four days after a district court held that the
Lotus 1-2-3 "menu structure, taken as a whole -- including the choice of command
terms [and] the structure and order of those terms," was protected expression
covered by Lotus's copyrights. Lotus Dev. Corp. v. Paperback Software Int'l,
740 F. Supp. 37, 68, 70 (D. Mass. 1990) ("Paperback"). n1 Three days earlier, on
the morning after the Paperback decision, Borland had filed a declaratory
judgment action against Lotus in the Northern District of California, seeking a
declaration of non-infringement. On September 10, 1990, the district court in
California dismissed Borland's declaratory judgment action in favor of this
action.
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n1 Judge Keeton presided over both the Paperback litigation and this case.
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Lotus and Borland filed cross motions for summary judgment; the district
court denied both motions on March 20, 1992, concluding that "neither party's
motion is supported [**8] by the record." Borland I, 788 F. Supp. at 80. The
district court invited the parties to file renewed summary judgment motions that
would "focus their arguments more precisely" in light of rulings it had made in
conjunction with its denial of their summary judgment motions. Id. at 82. Both
parties filed renewed motions for summary judgment on April 24, 1992. In its
motion, Borland contended that the Lotus 1-2-3 menus were not copyrightable as a
matter of law and that no reasonable trier of fact could find that the
similarity between its products and Lotus 1-2-3 was sufficient to sustain a
determination of infringement. Lotus contended in its motion that Borland had
copied Lotus 1-2-3's entire user interface and had thereby infringed Lotus's
copyrights.
On July 31, 1992, the district court denied Borland's motion and granted Lotus's
motion in part. The district court ruled that the Lotus menu command hierarchy
was copyrightable expression because
[a] very satisfactory spreadsheet menu tree can be constructed using
different commands and a different command structure from those of
Lotus 1-2-3. In fact, Borland has constructed [**9] just such an
alternate tree for use in Quattro Pro's native mode. Even if one holds
the arrangement of menu commands constant, it is possible to generate
literally millions of satisfactory [*811] menu trees by varying the
menu commands employed.
Borland II, 799 F. Supp. at 217. The district court demonstrated this by
offering alternate command words for the ten commands that appear in Lotus's
main menu. Id. For example, the district court stated that "the 'Quit' command
could be named 'Exit' without any other modifications," and that "the 'Copy'
command could be called 'Clone,' 'Ditto,' 'Duplicate,' 'Imitate,' 'Mimic,'
'Replicate,' and 'Reproduce,' among others." Id. Because so many variations were
possible, the district court concluded that the Lotus developers' choice and
arrangement of command terms, reflected in the Lotus menu command hierarchy,
constituted copyrightable expression.
In granting partial summary judgment to Lotus, the district court held that
Borland had infringed Lotus's copyright in Lotus 1-2-3:
As a matter of law, Borland's Quattro products infringe the Lotus
1-2-3 copyright because of (1) the extent of copying of the [**10]
"menu commands" and "menu structure" that is not genuinely disputed in
this case, (2) the extent to which the copied elements of the "menu
commands" and "menu structure" contain expressive aspects separable
from the functions of the "menu commands" and "menu structure," and
(3) the scope of those copied expressive aspects as an integral part
of Lotus 1-2-3.
Borland II, 799 F. Supp. at 223 (emphasis in original). The court nevertheless
concluded that while the Quattro and Quattro Pro programs infringed Lotus's
copyright, Borland had not copied the entire Lotus 1-2-3 user interface, as
Lotus had contended. Accordingly, the court concluded that a jury trial was
necessary to determine the scope of Borland's infringement, including whether
Borland copied the long prompts n2 of Lotus 1-2-3, whether the long prompts
contained expressive elements, and to what extent, if any, functional
constraints limited the number of possible ways that the Lotus menu command
hierarchy could have been arranged at the time of its creation. See Borland III,
831 F. Supp. at 207. Additionally, the district court granted Lotus summary
judgment [**11] on Borland's affirmative defense of waiver, but not on its
affirmative defenses of laches and estoppel. Borland II, 799 F. Supp. at
222-23.
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n2 Lotus 1-2-3 utilizes a two-line menu; the top line lists the commands from
which the user may choose, and the bottom line displays what Lotus calls its
"long prompts." The long prompts explain, as a sort of "help text," what the
highlighted menu command will do if entered. For example, the long prompt for
the "Worksheet" command displays the submenu that the "Worksheet" command calls
up; it reads "Global, Insert, Delete, Column, Erase, Titles, Window, Status,
Page." The long prompt for the "Copy" command explains what function the "Copy"
command will perform: "Copy a cell or range of cells." The long prompt for the
"Quit" command reads, "End 1-2-3 session (Have you saved your work?)."
Prior to trial, the parties agreed to exclude the copying of the long prompts
from the case; Lotus agreed not to contend that Borland had copied the long
prompts, Borland agreed not to argue that it had not copied the long prompts,
and both sides agreed not to argue that the issue of whether Borland had copied
the long prompts was material to any other issue in the case. See Borland III,
831 F. Supp. at 208.
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Immediately following the district court's summary judgment decision, Borland
removed the Lotus Emulation Interface from its products. Thereafter, Borland's
spreadsheet programs no longer displayed the Lotus 1-2-3 menus to Borland users,
and as a result Borland users could no longer communicate with Borland's
programs as if they were using a more sophisticated version of Lotus 1-2-3.
Nonetheless, Borland's programs continued to be partially compatible with Lotus
1-2-3, for Borland retained what it called the "Key Reader" in its Quattro Pro
programs. Once turned on, the Key Reader allowed Borland's programs to
understand and perform some Lotus 1-2-3 macros. n3 With the Key Reader on, the
Borland programs used Quattro Pro menus for display, interaction, and macro
execution, except when they encountered a slash ("/") key in a macro (the
starting key for any Lotus 1-2-3 [*812] macro), in which case they interpreted
the macro as having been written for Lotus 1-2-3. Accordingly, people who wrote
or purchased macros to shorten the time needed to perform an operation in Lotus
1-2-3 could still use those macros in Borland's programs. n4 The district court
permitted Lotus to file a supplemental complaint [**13] alleging that the Key
Reader infringed its copyright.
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n3 Because Borland's programs could no longer display the Lotus menu command
hierarchy to users, the Key Reader did not allow debugging or modification of
macros, nor did it permit the execution of most interactive macros.
n4 See Borland IV, 831 F. Supp. at 226-27, for a more detailed explanation of
macros and the Key Reader.
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The parties agreed to try the remaining liability issues without a jury. The
district court held two trials, the Phase I trial covering all remaining issues
raised in the original complaint (relating to the Emulation Interface) and the
Phase II trial covering all issues raised in the supplemental complaint
(relating to the Key Reader). At the Phase I trial, there were no live
witnesses, although considerable testimony was presented in the form of
affidavits and deposition excerpts. The district court ruled upon evidentiary
objections counsel interposed. At the Phase II trial, there were two live
witnesses, [**14] each of whom demonstrated the programs for the district
court.
After the close of the Phase I trial, the district court permitted Borland to
amend its answer to include the affirmative defense of "fair use." Because
Borland had presented all of the evidence supporting its fair-use defense during
the Phase I trial, but Lotus had not presented any evidence on fair use (as the
defense had not been raised before the conclusion of the Phase I trial), the
district court considered Lotus's motion for judgment on partial findings of
fact. See Fed. R. Civ. P. 52(c). The district court held that Borland had failed
to show that its use of the Lotus 1-2-3 menu command hierarchy in its Emulation
Interface was a fair use. See Borland III, 831 F. Supp. at 208.
In its Phase I-trial decision, the district court found that "each of the
Borland emulation interfaces contains a virtually identical copy of the 1-2-3
menu tree and that the 1-2-3 menu tree is capable of a wide variety of
expression." Borland III, 831 F. Supp. at 218. The district court also rejected
Borland's affirmative defenses of laches and estoppel. Id. at 218-23. [**15]
In its Phase II-trial decision, the district court found that Borland's Key
Reader file included "a virtually identical copy of the Lotus menu tree
structure, but represented in a different form and with first letters of menu
command names in place of the full menu command names." Borland IV, 831 F. Supp.
at 228. In other words, Borland's programs no longer included the Lotus command
terms, but only their first letters. The district court held that "the Lotus
menu structure, organization, and first letters of the command names . . .
constitute part of the protectable expression found in [Lotus 1-2-3]." Id. at
233. Accordingly, the district court held that with its Key Reader, Borland had
infringed Lotus's copyright. Id. at 245. The district court also rejected
Borland's affirmative defenses of waiver, laches, estoppel, and fair use. Id. at
235-45. The district court then entered a permanent injunction against Borland,
id. at 245, from which Borland appeals.
This appeal concerns only Borland's copying of the Lotus menu command
hierarchy [**16] into its Quattro programs and Borland's affirmative defenses
to such copying. Lotus has not cross-appealed; in other words, Lotus does not
contend on appeal that the district court erred in finding that Borland had not
copied other elements of Lotus 1-2-3, such as its screen displays.
II.
Discussion
On appeal, Borland does not dispute that it factually copied the words and
arrangement of the Lotus menu command hierarchy. Rather, Borland argues that it
"lawfully copied the unprotectable menus of Lotus 1-2-3." Borland contends that
the Lotus menu command hierarchy is not copyrightable because it is a system,
method of operation, process, or procedure foreclosed from protection by 17
U.S.C. § 102(b). Borland also raises a number of affirmative defenses.
[*813] A. Copyright Infringement Generally
To establish copyright infringement, a plaintiff must prove "(1) ownership of a
valid copyright, and (2) copying of constituent elements of the work that are
original." Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361,
113 L. Ed. 2d 358, 111 S. Ct. 1282 (1991); see also Data Gen. Corp. v. Grumman
Sys. Support Corp., 36 F.3d 1147, 1160 n.19 (1st Cir. 1994); [**17] Concrete
Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 605 (1st Cir. 1988). To
show ownership of a valid copyright and therefore satisfy Feist's first prong, a
plaintiff must prove that the work as a whole is original and that the plaintiff
complied with applicable statutory formalities. See Engineering Dynamics, Inc.
v. Structural Software, Inc., 26 F.3d 1335, 1340 (5th Cir. 1994). "In judicial
proceedings, a certificate of copyright registration constitutes prima facie
evidence of copyrightability and shifts the burden to the defendant to
demonstrate why the copyright is not valid." Bibbero Sys., Inc. v. Colwell Sys.,
Inc., 893 F.2d 1104, 1106 (9th Cir. 1990); see also 17 U.S.C. § 410(c); Folio
Impressions, Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir. 1991)
(presumption of validity may be rebutted).
To show actionable copying and therefore satisfy Feist's second prong, a
plaintiff must first prove that the alleged infringer copied plaintiff's
copyrighted work as a factual [**18] matter; to do this, he or she may either
present direct evidence of factual copying or, if that is unavailable, evidence
that the alleged infringer had access to the copyrighted work and that the
offending and copyrighted works are so similar that the court may infer that
there was factual copying (i.e., probative similarity). Engineering Dynamics,
26 F.3d at 1340; see also Concrete Mach., 843 F.2d at 606. The plaintiff must
then prove that the copying of copyrighted material was so extensive that it
rendered the offending and copyrighted works substantially similar. See
Engineering Dynamics, 26 F.3d at 1341.
In this appeal, we are faced only with whether the Lotus menu command
hierarchy is copyrightable subject matter in the first instance, for Borland
concedes that Lotus has a valid copyright in Lotus 1-2-3 as a whole n5 and
admits to factually copying the Lotus menu command hierarchy. As a result, this
appeal is in a very different posture from most copyright-infringement cases,
for copyright infringement generally turns on whether the defendant has copied
protected expression as a factual [**19] matter. Because of this different
posture, most copyright-infringement cases provide only limited help to us in
deciding this appeal. This is true even with respect to those
copyright-infringement cases that deal with computers and computer software.
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n5 Computer programs receive copyright protection as "literary works." See 17
U.S.C. § 102(a)(1) (granting protection to "literary works") and 17 U.S.C. § 101
(defining "literary works" as "works . . . expressed in words, numbers, or other
verbal or numerical symbols or indicia, regardless of the nature of the material
objects, such as books, periodicals, phonorecords, film, tapes, disks, or cards,
in which they are embodied" (emphasis added)); see also H.R. Rep. No. 1476, 94th
Cong., 2d Sess. 54 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5667 ("The term
'literary works' . . . includes computer data bases, and computer programs to
the extent that they incorporate authorship in the programmer's expression of
original ideas, as distinguished from the ideas themselves.").
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[**20]
B. Matter of First Impression
Whether a computer menu command hierarchy constitutes copyrightable subject
matter is a matter of first impression in this court. While some other courts
appear to have touched on it briefly in dicta, see, e.g., Autoskill, Inc. v.
National Educ. Support Sys., Inc., 994 F.2d 1476, 1495 n.23 (10th Cir.), cert.
denied, 126 L. Ed. 2d 254, 114 S. Ct. 307 (1993), we know of no cases that deal
with the copyrightability of a menu command hierarchy standing on its own (i.e.,
without other elements of the user interface, such as screen displays, in
issue). Thus we are navigating in uncharted waters.
Borland vigorously argues, however, that the Supreme Court charted our course
more than 100 years ago when it decided Baker v. Selden, 101 U.S. 99, 25 L. Ed.
841 (1879). In Baker v. Selden, the Court held that Selden's copyright over the
textbook in which he explained [*814] his new way to do accounting did not
grant him a monopoly on the use of his accounting system. n6 Borland argues:
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n6 Selden's system of double-entry bookkeeping is the now almost-universal
T-accounts system.
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[**21]
The facts of Baker v. Selden, and even the arguments advanced by the
parties in that case, are identical to those in this case. The only
difference is that the "user interface" of Selden's system was
implemented by pen and paper rather than by computer.
To demonstrate that Baker v. Selden and this appeal both involve accounting
systems, Borland even supplied this court with a video that, with special
effects, shows Selden's paper forms "melting" into a computer screen and
transforming into Lotus 1-2-3.
We do not think that Baker v. Selden is nearly as analogous to this appeal as
Borland claims. Of course, Lotus 1-2-3 is a computer spreadsheet, and as such
its grid of horizontal rows and vertical columns certainly resembles an
accounting ledger or any other paper spreadsheet. Those grids, however, are not
at issue in this appeal for, unlike Selden, Lotus does not claim to have a
monopoly over its accounting system. Rather, this appeal involves Lotus's
monopoly over the commands it uses to operate the computer. Accordingly, this
appeal is not, as Borland contends, "identical" to Baker v. Selden.
C. Altai
Before we analyze whether the Lotus [**22] menu command hierarchy is a system,
method of operation, process, or procedure, we first consider the applicability
of the test the Second Circuit set forth in Computer Assoc. Int'l, Inc. v.
Altai, Inc., 982 F.2d 693 (2d Cir. 1992). n7 The Second Circuit designed its
Altai test to deal with the fact that computer programs, copyrighted as
"literary works," can be infringed by what is known as "nonliteral" copying,
which is copying that is paraphrased or loosely paraphrased rather than word for
word. See id. at 701 (citing nonliteral-copying cases); see also 3 Melville B.
Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A][1] (1993). When faced with
nonliteral-copying cases, courts must determine whether similarities are due
merely to the fact that the two works share the same underlying idea or whether
they instead indicate that the second author copied the first author's
expression. The Second Circuit designed its Altai test to deal with this
situation in the computer context, specifically with whether one computer
program copied nonliteral expression from another program's code.
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n7 We consider the Altai test because both parties and many of the amici
focus on it so heavily. Borland, in particular, is highly critical of the
district court for not employing the Altai test. Borland does not, however,
indicate how using that test would have been dispositive in Borland's favor.
Interestingly, Borland appears to contradict its own reasoning at times by
criticizing the applicability of the Altai test.
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The Altai test involves three steps: abstraction, filtration, and comparison.
The abstraction step requires courts to "dissect the allegedly copied program's
structure and isolate each level of abstraction contained within it." Altai, 982
F.2d at 707. This step enables courts to identify the appropriate framework
within which to separate protectable expression from unprotected ideas. Second,
courts apply a "filtration" step in which they examine "the structural
components at each level of abstraction to determine whether their particular
inclusion at that level was 'idea' or was dictated by considerations of
efficiency, so as to be necessarily incidental to that idea; required by factors
external to the program itself; or taken from the public domain." Id. Finally,
courts compare the protected elements of the infringed work (i.e., those that
survived the filtration screening) to the corresponding elements of the
allegedly infringing work to determine whether there was sufficient copying of
protected material to constitute infringement. Id. at 710.
In the instant appeal, we are not confronted with alleged nonliteral [**24]
copying of computer code. Rather, we are faced with Borland's deliberate,
literal copying of the Lotus menu command hierarchy. Thus, we must determine not
whether nonliteral copying occurred in some amorphous sense, but rather whether
the literal copying of the Lotus [*815] menu command hierarchy constitutes
copyright infringement.
While the Altai test may provide a useful framework for assessing the alleged
nonliteral copying of computer code, we find it to be of little help in
assessing whether the literal copying of a menu command hierarchy constitutes
copyright infringement. In fact, we think that the Altai test in this context
may actually be misleading because, in instructing courts to abstract the
various levels, it seems to encourage them to find a base level that includes
copyrightable subject matter that, if literally copied, would make the copier
liable for copyright infringement. n8 While that base (or literal) level would
not be at issue in a nonliteral-copying case like Altai, it is precisely what is
at issue in this appeal. We think that abstracting menu command hierarchies down
to their individual word and menu levels and then filtering idea from expression
at [**25] that stage, as both the Altai and the district court tests require,
obscures the more fundamental question of whether a menu command hierarchy can
be copyrighted at all. The initial inquiry should not be whether individual
components of a menu command hierarchy are expressive, but rather whether the
menu command hierarchy as a whole can be copyrighted. But see Gates Rubber Co.
v. Bando Chem. Indus., Ltd., 9 F.3d 823 (10th Cir. 1993) (endorsing Altai's
abstraction-filtration-comparison test as a way of determining whether "menus
and sorting criteria" are copyrightable).
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n8 We recognize that Altai never states that every work contains a
copyrightable "nugget" of protectable expression. Nonetheless, the implication
is that for literal copying, "it is not necessary to determine the level of
abstraction at which similarity ceases to consist of an 'expression of ideas,'
because literal similarity by definition is always a similarity as to the
expression of ideas." 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright §
13.03[A](2) (1993).
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[**26]
D. The Lotus Menu Command Hierarchy: A "Method of Operation"
Borland argues that the Lotus menu command hierarchy is uncopyrightable because
it is a system, method of operation, process, or procedure foreclosed from
copyright protection by 17 U.S.C. § 102(b). Section 102(b) states: "In no case
does copyright protection for an original work of authorship extend to any idea,
procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained,
illustrated, or embodied in such work." Because we conclude that the Lotus menu
command hierarchy is a method of operation, we do not consider whether it could
also be a system, process, or procedure.
We think that "method of operation," as that term is used in § 102(b), refers
to the means by which a person operates something, whether it be a car, a food
processor, or a computer. Thus a text describing how to operate something would
not extend copyright protection to the method of operation itself; other people
would be free to employ that method and to describe it in their own words.
Similarly, if a new method of operation is [**27] 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. n9 The Lotus [*816] menu command hierarchy is also
different from the Lotus screen displays, for users need not "use" any
expressive aspects of the screen displays [**28] 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." n10 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." n11
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n9 As the Lotus long prompts are not before us on appeal, we take no position
on their copyrightability, although we do note that a strong argument could be
made that the brief explanations they provide "merge" with the underlying idea
of explaining such functions. See Morrissey v. Procter & Gamble Co., 379 F.2d
675, 678-79 (1st Cir. 1967) (when the possible ways to express an idea are
limited, the expression "merges" with the idea and is therefore uncopyrightable;
when merger occurs, identical copying is permitted). [**29]
n10 As they are not before us on appeal, we take no position on whether the
Lotus 1-2-3 screen displays constitute original expression capable of being
copyrighted.
n11 Because the Lotus 1-2-3 code is not before us on appeal, we take no
position on whether it is copyrightable. We note, however, that original
computer codes generally are protected by copyright. See, e.g., Altai, 982 F.2d
at 702 ("It is now well settled that the literal elements of computer programs,
i.e., their source and object codes, are the subject of copyright protection.")
(citing cases).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
The district court held that the Lotus menu command hierarchy, with its
specific choice and arrangement of command terms, constituted an "expression" of
the "idea" of operating a computer program with commands arranged hierarchically
into menus and submenus. Borland II, 799 F. Supp. at 216. Under the district
court's reasoning, Lotus's decision to employ hierarchically arranged command
terms to operate its program could not foreclose its competitors from also
employing [**30] hierarchically arranged command terms to operate their
programs, but it did foreclose them from employing the specific command terms
and arrangement that Lotus had used. In effect, the district court limited Lotus
1-2-3's "method of operation" to an abstraction.
Accepting the district court's finding that the Lotus developers made some
expressive choices in choosing and arranging the Lotus command terms, we
nonetheless hold that that expression is not copyrightable because it is part of
Lotus 1-2-3's "method of operation." We do not think that "methods of operation"
are limited to abstractions; rather, they are the means by which a user operates
something. If specific words are essential to operating something, then they are
part of a "method of operation" and, as such, are unprotectable. This is so
whether they must be highlighted, typed in, or even spoken, as computer programs
no doubt will soon be controlled by spoken words.
The fact that Lotus developers could have designed the Lotus menu command
hierarchy differently is immaterial to the question of whether it is a "method
of operation." In other words, our initial inquiry is not whether the Lotus menu
command hierarchy incorporates [**31] any expression. n12 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.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n12 We think that the Altai test would contemplate this being the initial
inquiry.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Our holding that "methods of operation" are not limited to mere abstractions
is bolstered by Baker v. Selden. In Baker, the Supreme Court explained that
the teachings of science and the rules and methods of useful art have
their final end in application and use; and this application [*817]
and use are what the public derive from the publication of [**32] 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.
Baker v. Selden, 101 U.S. at 104-05. Lotus wrote its menu command hierarchy so
that people could learn it and use it. Accordingly, it falls squarely within the
prohibition on copyright protection established in Baker v. Selden and codified
by Congress in § 102(b).
In many ways, the Lotus menu command hierarchy is like the buttons used to
control, say, a video cassette recorder ("VCR"). A VCR is a machine that enables
one to watch and record video tapes. Users operate VCRs by pressing a series of
buttons that are typically labelled "Record, Play, Reverse, Fast Forward, Pause,
Stop/Eject." That the buttons are arranged and labeled does not make them a
"literary work," nor does it make them an "expression" of the abstract "method
of operating" a VCR via a set of labeled buttons. [**33] Instead, the buttons
are themselves the "method of operating" the VCR.
When a Lotus 1-2-3 user chooses a command, either by highlighting it on the
screen or by typing its first letter, he or she effectively pushes a button.
Highlighting the "Print" command on the screen, or typing the letter "P," is
analogous to pressing a VCR button labeled "Play."
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 unlabeled VCR buttons. While Lotus could probably have designed a
user interface for which the command terms were mere labels, it did not do so
here. Lotus 1-2-3 depends for its operation on use of the precise command terms
that make up the Lotus menu command hierarchy.
One might argue that [**34] the buttons for operating a VCR are not analogous
to the commands for operating a computer program because VCRs are not
copyrightable, whereas computer programs are. VCRs may not be copyrighted
because they do not fit within any of the § 102(a) categories of copyrightable
works; the closest they come is "sculptural work." Sculptural works, however,
are subject to a "useful-article" exception whereby "the design of a useful
article . . . shall be considered a pictorial, graphic, or sculptural work only
if, and only to the extent that, such design incorporates pictorial, graphic, or
sculptural features that can be identified separately from, and are capable of
existing independently of, the utilitarian aspects of the article." 17 U.S.C. §
101. A "useful article" is "an article having an intrinsic utilitarian function
that is not merely to portray the appearance of the article or to convey
information." Id. Whatever expression there may be in the arrangement of the
parts of a VCR is not capable of existing separately from the VCR itself, so an
ordinary VCR would not be copyrightable.
Computer programs, unlike VCRs, are copyrightable as "literary [**35] works.
" 17 U.S.C. § 102(a). Accordingly, one might argue, the "buttons" used to
operate a computer program are not like the buttons used to operate a VCR, for
they are not subject to a useful-article exception. The response, of course, is
that the arrangement of buttons on a VCR would not be copyrightable even without
a useful-article exception, because the buttons are an uncopyrightable "method
of operation." Similarly, the "buttons" of a computer program are also an
uncopyrightable "method of operation."
That the Lotus menu command hierarchy is a "method of operation" becomes
clearer when one considers program compatibility. Under Lotus's theory, if a
user uses [*818] several different programs, he or she must learn how to
perform the same operation in a different way for each program used. For
example, if the user wanted the computer to print material, then the user would
have to learn not just one method of operating the computer such that it prints,
but many different methods. We find this absurd. The fact that there may be many
different ways to operate a computer program, or even many different ways to
operate a computer program using a set of hierarchically [**36] arranged
command terms, does not make the actual method of operation chosen
copyrightable; it still functions as a method for operating the computer and as
such is uncopyrightable.
Consider also that users employ the Lotus menu command hierarchy in writing
macros. Under the district court's holding, if the user wrote a macro to shorten
the time needed to perform a certain operation in Lotus 1-2-3, the user would be
unable to use that macro to shorten the time needed to perform that same
operation in another program. Rather, the user would have to rewrite his or her
macro using that other program's menu command hierarchy. This is despite the
fact that the macro is clearly the user's own work product. We think that
forcing the user to cause the computer to perform the same operation in a
different way ignores Congress's direction in § 102(b) that "methods of
operation" are not copyrightable. That programs can offer users the ability to
write macros in many different ways does not change the fact that, once written,
the macro allows the user to perform an operation automatically. As the Lotus
menu command hierarchy serves as the basis for Lotus 1-2-3 macros, the Lotus
menu command hierarchy [**37] is a "method of operation."
In holding that expression that is part of a "method of operation" cannot be
copyrighted, we do not understand ourselves to go against the Supreme Court's
holding in Feist. In Feist, the Court explained:
The primary objective of copyright is not to reward the labor of
authors, but to promote the Progress of Science and useful Arts. To
this end, copyright assures authors the right to their original
expression, but encourages others to build freely upon the ideas and
information conveyed by a work.
Feist, 499 U.S. at 349-50 (quotations and citations omitted). We do not think
that the Court's statement that "copyright assures authors the right to their
original expression" indicates that all expression is necessarily copyrightable;
while original expression is necessary for copyright protection, we do not think
that it is alone sufficient. Courts must still inquire whether original
expression falls within one of the categories foreclosed from copyright
protection by § 102(b), such as being a "method of operation."
We also note that in most contexts, there is no need to "build" upon other
people's expression, [**38] for the ideas conveyed by that expression can be
conveyed by someone else without copying the first author's expression. n13 In
the context of methods of operation, however, "building" requires the use of the
precise method of operation already employed; otherwise, "building" would
require dismantling, too. Original developers are not the only people entitled
to build on the methods of operation they create; anyone can. Thus, Borland may
build on the method of operation that Lotus designed and may use the Lotus menu
command hierarchy in doing so.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n13 When there are a limited number of ways to express an idea, however, the
expression "merges" with the idea and becomes uncopyrightable. Morrissey, 379
F.2d at 678-79.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Our holding that methods of operation are not limited to abstractions goes
against Autoskill, 994 F.2d at 1495 n.23, in which the Tenth Circuit rejected
the defendant's argument that the keying procedure used in a computer program
was an uncopyrightable [**39] "procedure" or "method of operation" under §
102(b). The program at issue, which was designed to test and train students with
reading deficiencies, id. at 1481, required students to select responses to the
program's queries "by pressing the 1, 2, or 3 keys." Id. at 1495 n.23. The Tenth
Circuit held that, "for purposes of the preliminary injunction, . . . the record
showed that [this] keying procedure reflected at least a minimal degree [*819]
of creativity," as required by Feist for copyright protection. Id. As an initial
matter, we question whether a programmer's decision to have users select a
response by pressing the 1, 2, or 3 keys is original. More importantly, however,
we fail to see how "a student selecting a response by pressing the 1, 2, or 3
keys," id., can be anything but an unprotectable method of operation. n14
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n14 The Ninth Circuit has also indicated in dicta that "menus, and keystrokes
" may be copyrightable. Brown Bag Software v. Symantec Corp., 960 F.2d 1465,
1477 (9th Cir.), cert. denied, BB Asset Management, Inc. v. Symantec Corp., 121
L. Ed. 2d 141, 113 S. Ct. 198 (1992). In that case, however, the plaintiff did
not show that the defendant had copied the plaintiff's menus or keystrokes, so
the court was not directly faced with whether the menus or keystrokes
constituted an unprotectable method of operation. Id.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**40]
III.
Conclusion
Because we hold that the Lotus menu command hierarchy is uncopyrightable subject
matter, we further hold that Borland did not infringe Lotus's copyright by
copying it. Accordingly, we need not consider any of Borland's affirmative
defenses. The judgment of the district court is
Reversed.
Concurrence follows. BOUDIN, Circuit Judge, concurring. The importance of
this case, and a slightly different emphasis in my view of the underlying
problem, prompt me to add a few words to the majority's tightly focused
discussion.
I.
Most of the law of copyright and the "tools" of analysis have developed in
the context of literary works such as novels, plays, and films. In this milieu,
the principal problem--simply stated, if difficult to resolve--is to stimulate
creative expression without unduly limiting access by others to the broader
themes and concepts deployed by the author. The middle of the spectrum presents
close cases; but a "mistake" in providing too much protection involves a small
cost: subsequent authors treating the same themes must take a few more steps
away from the original expression.
The problem presented by computer programs is fundamentally [**41] different
in one respect. The computer program is a means for causing something to happen;
it has a mechanical utility, an instrumental role, in accomplishing the world's
work. Granting protection, in other words, can have some of the consequences of
patent protection in limiting other people's ability to perform a task in the
most efficient manner. Utility does not bar copyright (dictionaries may be
copyrighted), but it alters the calculus.
Of course, the argument for protection is undiminished, perhaps even enhanced,
by utility: if we want more of an intellectual product, a temporary monopoly for
the creator provides incentives for others to create other, different items in
this class. But the "cost" side of the equation may be different where one
places a very high value on public access to a useful innovation that may be the
most efficient means of performing a given task. Thus, the argument for
extending protection may be the same; but the stakes on the other side are much
higher.
It is no accident that patent protection has preconditions that copyright
protection does not--notably, the requirements of novelty and
non-obviousness--and that patents are granted for [**42] a shorter period than
copyrights. This problem of utility has sometimes manifested itself in copyright
cases, such as Baker v. Selden, 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
[*820] layouts may exist, but the familiar QWERTY keyboard dominates the market
because that is what everyone has learned to use. See P. David, CLIO and the
Economics of QWERTY, 75 Am. Econ. Rev. 332 (1985). 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 [**43] play, may be quite wrong. The "form"--the
written source code or the menu structure depicted on the screen--look
hauntingly like the familiar stuff of copyright; but the "substance" probably
has more to do with problems presented in patent law or, as already noted, in
those rare cases where copyright law has confronted industrially useful
expressions. Applying copyright law to computer programs is like assembling a
jigsaw puzzle whose pieces do not quite fit.
All of this would make no difference if Congress had squarely confronted the
issue, and given explicit directions as to what should be done. The Copyright
Act of 1976 took a different course. While Congress said that computer programs
might be subject to copyright protection, it said this in very general terms;
and, especially in § 102(b), Congress adopted a string of exclusions that if
taken literally might easily seem to exclude most computer programs from
protection. The only detailed prescriptions for computers involve narrow issues
(like back-up copies) of no relevance here.
Of course, one could still read the statute as a congressional command that
the familiar doctrines of copyright law be taken and applied to computer [**44]
programs, in cookie cutter fashion, as if the programs were novels or play
scripts. Some of the cases involving computer programs embody this approach. It
seems to me mistaken on two different grounds: the tradition of copyright law,
and the likely intent of Congress.
The broad-brush conception of copyright protection, the time limits, and the
formalities have long been prescribed by statute. But the heart of copyright
doctrine--what may be protected and with what limitations and exceptions--has
been developed by the courts through experience with individual cases. B.
Kaplan, An Unhurried View of Copyright 40 (1967). Occasionally Congress
addresses a problem in detail. For the most part the interstitial development of
copyright through the courts is our tradition.
Nothing in the language or legislative history of the 1976 Act, or at least
nothing brought to our attention, suggests that Congress meant the courts to
abandon this case-by-case approach. Indeed, by setting up § 102(b) as a
counterpoint theme, Congress has arguably recognized the tension and left it for
the courts to resolve through the development of case law. And case law
development is adaptive: it allows new [**45] problems to be solved with help
of earlier doctrine, but it does not preclude new doctrines to meet new
situations.
II.
In this case, the raw facts are mostly, if not entirely, undisputed. Although
the inferences to be drawn may be more debatable, it is very hard to see that
Borland has shown any interest in the Lotus menu except as a fall-back option
for those users already committed to it by prior experience or in order to run
their own macros using 1-2-3 commands. At least for the amateur, accessing the
Lotus menu in the Borland Quattro or Quattro Pro program takes some effort.
Put differently, it is unlikely that users who value the Lotus menu for its
own sake--independent of any investment they have made themselves in learning
Lotus' commands or creating macros dependent upon them--would choose the Borland
program in order to secure access to the Lotus menu. Borland's success is due
primarily to other features. Its rationale for deploying the Lotus menu bears
the ring of truth.
Now, any use of the Lotus menu by Borland is a commercial use and deprives
Lotus of a portion of its "reward," in the sense that an infringement claim if
allowed would increase Lotus' profits. But this [**46] is circular reasoning:
broadly speaking, every limitation on copyright or privileged use diminishes the
reward of the original creator. Yet not every writing is copyrightable or every
use an infringement. The provision of reward is [*821] one concern of
copyright law, but it is not the only one. If it were, copyrights would be
perpetual and there would be no exceptions.
The present case is an unattractive one for copyright protection of the menu.
The menu commands (e.g., "print," "quit") are largely for standard procedures
that Lotus did not invent and are common words that Lotus cannot monopolize.
What is left is the particular combination and sub-grouping of commands in a
pattern devised by Lotus. This arrangement may have a more appealing logic and
ease of use than some other configurations; but there is a certain arbitrariness
to many of the choices.
If Lotus is granted a monopoly on this pattern, users who have learned the
command structure of Lotus 1-2-3 or devised their own macros are locked into
Lotus, just as a typist who has learned the QWERTY keyboard would be the captive
of anyone who had a monopoly on the production of such a keyboard. Apparently,
for a period Lotus 1-2-3 [**47] has had such sway in the market that it has
represented the de facto standard for electronic spreadsheet commands. So long
as Lotus is the superior spreadsheet--either in quality or in price--there may
be nothing wrong with this advantage.
But if a better spreadsheet comes along, it is hard to see why customers who
have learned the Lotus menu and devised macros for it should remain captives of
Lotus because of an investment in learning made by the users and not by Lotus.
Lotus has already reaped a substantial reward for being first; assuming that the
Borland program is now better, good reasons exist for freeing it to attract old
Lotus customers: to enable the old customers to take advantage of a new advance,
and to reward Borland in turn for making a better product. If Borland has not
made a better product, then customers will remain with Lotus anyway.
Thus, for me the question is not whether Borland should prevail but on what
basis. Various avenues might be traveled, but the main choices are between
holding that the menu is not protectable by copyright and devising a new
doctrine that Borland's use is privileged. No solution is perfect and no
intermediate appellate court can [**48] make the final choice.
To call the menu a "method of operation" is, in the common use of those
words, a defensible position. After all, the purpose of the menu is not to be
admired as a work of literary or pictorial art. It is to transmit directions
from the user to the computer, i.e., to operate the computer. The menu is also a
"method" in the dictionary sense because it is a "planned way of doing
something," an "order or system," and (aptly here) an "orderly or systematic
arrangement, sequence or the like." Random House Webster's College Dictionary
853 (1991).
A different approach would be to say that Borland's use is privileged because,
in the context already described, it is not seeking to appropriate the advances
made by Lotus' menu; rather, having provided an arguably more attractive menu of
its own, Borland is merely trying to give former Lotus users an option to
exploit their own prior investment in learning or in macros. The difference is
that such a privileged use approach would not automatically protect Borland if
it had simply copied the Lotus menu (using different codes), contributed nothing
of its own, and resold Lotus under the Borland label.
The closest [**49] analogue in conventional copyright is the fair use
doctrine. E.g., Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539,
85 L. Ed. 2d 588, 105 S. Ct. 2218 (1985). Although invoked by Borland, it has
largely been brushed aside in this case because the Supreme Court has said that
it is "presumptively" unavailable where the use is a "commercial" one. See id.
at 562. But see Campbell v. Acuff-Rose Music, Inc., 127 L. Ed. 2d 500, 114 S.
Ct. 1164, 1174 (1994). In my view, this is something less than a definitive
answer; "presumptively" does not mean "always" and, in any event, the doctrine
of fair use was created by the courts and can be adapted to new purposes.
But a privileged use doctrine would certainly involve problems of its own. It
might more closely tailor the limits on copyright protection to the reasons for
limiting that protection; but it would entail a host of administrative problems
that would cause [*822] cost and delay, and would also reduce the ability of
the industry to predict outcomes. Indeed, to the extent that Lotus' menu is an
important standard in the industry, it might be argued that any use ought to be
deemed privileged.
In sum, the majority's result persuades me and its formulation is as good, if
not better, than any [**50] other that occurs to me now as within the reach of
courts. Some solutions (e.g., a very short copyright period for menus) are not
options at all for courts but might be for Congress. In all events, the choices
are important ones of policy, not linguistics, and they should be made with the
underlying considerations in view.