Complete Bookshop/CompleteWorkshop.iso/compute/ruling/amicus.txt

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Subject:  A Friendly Brief For background info, we have forwarded
you the Brief that was submitted to the Court by the leading
Copyright authorities in the US. Obviously, the Judge opted not
to believe them.

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS


LOTUS DEVELOPMENT CORPORATION, Plaintiff,

Civil Action No. 90-11662-K -against-

BORLAND INTERNATIONAL,  INC. Defendant.

BRIEF AMICUS CURIAE OF COPYRIGHT LAW
PROFESSORS

Ralph S. Brown
Professor of Law, Emeritus
Yale Law School

Stephen L. Carter
Professor of Law
Yale Law School

Rochelle C. Dreyfuss
Professor of Law
New York University School of Law

Peter A. Jaszl
Professor of Law
The American University,
Washington College of Law

Dennis S. Karjala
Professor of Law
Arizona State University College of Law

David L. Lange
Professor of Law
Duke University School of Law

Peter S. Menell
Acting Professor of Law
University of California at Berkeley,
Boalt Hall School of Law

L. Ray Patterson
Professor of Law
University of Georgia School of Law

Jerome H. Reichmann
Professor of Law
Vanderbilt University School of Law


Pamela Samuelson
Professor of Law
University of Pittsburgh School of Law

Lloyd L. Weinreb
Professor of Law
Harvard Law School

1.      Purposes of the Brief
This brief amicus curiae does not address the merits of the
copyright suit between Lotus Development Corporation ("Lotus")
and Borland International, Inc. ("Borland").  It speaks only to the
nature of the copyright inquiry that we, as professors of law who
teach and write about copyright law, think to be appropriate for
addressing the issues presented by cases of this general type.

 We offer our views on this subject out of concern about the
overbroad test used in assessing the copyrightability of the Lotus 1-
2-3 user interface and its component parts in Lotus Development
Corporation v. Paperback Software International, 740 F. Supp. 37
(D- Mass. 1990).  We regard the test employed in that opinion to
be inconsistent with the copyright statute, the copyright caselaw,
and traditional principles of copyright law.  Its use not only has an
adverse effect on the development of copyright doctrine, but has
substantial potential to have an adverse effect on software
development and the software industry.  It should not be employed
in judging the copyright issues in the Lotus v.
Borland dispute.

 This brief aims to aid the court in constructing a more
appropriate framework for resolving the copyright issues presented
by the Lotus v. Borland case.  Before proceeding with a discussion
of this framework, it may be helpful to the court to know that we
agree with the view expressed in the Paperback opinion that some
computer program user interfaces contain expressive aspects that
can properly be protected by copyright law.  Not all computer
program user interfaces, however, have expressive aspects.
Whether a particular user interface, or aspects of such an interface,
is expressive enough to be protectable by copyright law should be
judged by traditional copyright standards.

 We understand that the court is currently considering Lotus'
motion for summary judgment against Borland.  We understand
Lotus to be relying heavily on the courts ruling in the Paperback
opinion in support of this motion.  By setting forth the kind of
traditional copyright inquiry that we think should be made in a case
of this sort, we hope to alert the court to the possibility that it
might need to make some factual inquiries in the Lotus v. Borland
matter of a sort that were apparently not made in the Paperback case.

        II.     What Framework Is Appropriate For Addressing the
Copyright Issues In a Dispute of This Sort?

 The principal questions posed by a dispute such as that
currently pending in the Lotus v. Borland case are, first, whether
the aspect of the program sought to be protected-in this dispute, the
Lotus 1-2-3 command hierarchy--is properly regarded as a
protectable element of expression, and second, whether there has
been an improper appropriation of protected elements of
expression, which is generally established by showing that there is
substantial similarity in expressive elements between the two works.
See, e.g., P. Goldstein, Copyright Law secs. 7.1 and 7.3 (1989); 3
M. Nimmer and D. Nimmer, Nimmer on Copyright secs. 13.01 and
13.03 (1991).  As the court properly noted in the Paperback
decision, a central problem in copyright infringement litigation is to
sort out what in a work is protectable expression and what are
unprotectable ideas.

 The term "idea" has a special and complex meaning in
copyright law, one reflected in the long history of copyright
caselaw and in the copyright statute.  As both sources of authority
demonstrate, it is not just highly abstract formulations, such as that
of an electronic spreadsheet, that are considered "idea," and
consequently beyond the scope of copyright protection in a
computer program.  Section 102(b) of the Copyright Act of 1976
("1976 Act") plainly states: "In no case does copyright protection
for an original work of authorship extend to any ... procedure,
process, system, [or] method of operation.... regardless of the form
in which it is described, explained, illustrated, or embodied in such
work," any more than it would extend to more abstract elements of
the work, such as the ideas, concepts, discoveries, or principles. 17
U.S.C. sec. 102(b).  See discussion of this principle in P. Goldstein,
Copyright Law sec. 8.5 (1989).
It has become a basic tenet of copyright law that the term
"idea" is to be used as a metaphor to refer to a number of
unprotectable elements contained in copyrighted works, among
them, those listed in section 102(b) (See Footnote 1).  Although
early on in the Paperback opinion the court seems to have
recognized the metaphoric character of the term "idea," see 740 F.
Supp. at 53, it failed to follow through with this insight in
formulating its test for judging the copyright issues in the case and
applying the test to the Lotus v. Paperback dispute.

 The exclusion of section 102(b) elements from copyright
protection is to be respected, without regard to how original, novel,
unique, nonobvious, or valuable they may be, or how much it might
have cost to develop them.  In some cases, innovative processes,
systems, and methods of operation that can meet the rigorous
standards and procedures set forth in Title 35 of the U.S. Code will
be protectable by patent law, but their inclusion in a copyrighted
work does not mean that copyright protection is available
to them.
 The meaning of section 102(b) can be understood by
examining the legislative history underlying the provision and the
caselaw out of which the provision largely arose.  There are two
aspects of the legislative history of section 102(b) worth noting
here.  First, both the House and Senate Reports on the 1976 Act
reflect that this provision was adopted in part to ensure that
copyright protection for computer programs would not be
construed too broadly.  Although the Paperback opinion quotes the
relevant language from the legislative history, we repeat it here
because we think the court lost sight of it when formulating and
applying its test for judging what was expressive in the Lotus
interface.  "Some concern has been expressed lest copyright in
computer programs should extend to the methodology or processes
adopted by the programmer, rather than merely to the 'writing'
expressing his ideas.  Section 102(b) is intended, among other
things, to make clear that the expression adopted by the
programmer is the copyrightable element in a computer program,
and that the actual processes or methods embodied in the program
are not within the scope of copyright law." H.R. Rep. No. 1476,
94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S. Code Cong.
& Admin.  News 5659, 5670 and S. Rep. No. 473, 94th Cong., 2d
Sess. 54 (1976).

 Secondly, the Reports indicate that section 102(b) was
intended to reflect and be consistent with the copyright caselaw
which has long held that constituent parts of systems, methods, and
the like are unprotectable by copyright law (See footnote 2).  It is
to cases such as Baker v. Selden, 101 U.S. 99 (1879) and its
progeny that courts should look in interpreting section 102(b) and
its exclusion of systems and methods from the scope of copyright
protection available to works of authorship.

 A test for copyright infringement (or a test of the
copyrightability" of a particular element of a work) that regards
only the general purpose or function of a computer program as the
program's unprotectable idea, and regards all other aspects of the
program as presumptively expressive is incompatible with the
copyright statute, traditional principles of copyright law, and the
caselaw properly interpreting it.  Such a test is overbroad, for it
considers more elements of a copyrighted work to be protectable
"expression" than is appropriate.  It is also unduly narrow in that it
forecloses other inquiries that should be made to determine whether
the plaintiff is seeking protection for things that are more properly
considered "idea" (in the larger metaphoric sense) than
"expression."

 Baker v. Selden, 101 U.S. 99 (1879) is the seminal case out
of which developed a long line of copyright cases in which courts
have held that a set of words and their arrangement could be a
constituent part of a system, and hence outside the scope of
copyright protection.  Selden's claim of copyright infringement
arose because Baker included in his own book about Selden's
bookkeeping system some sample ledger sheets that were
substantially similar in arrangement of columns and headings to
those in Selden's books illustrating the same system.  The principal
issue before the Court was whether someone besides Selden could
"make or use similar ruled lines and headings, or ruled lines and
headings made and arranged on substantially the same system,
without violating the copyright." Id. at 101.

 The Supreme Court concluded that Selden's copyright protected
his explanation of the system, not the system itself or its constituent
parts.  Because the arrangement of words and columns on the
ledger sheets were constituent parts of that system, the Court held
they were unprotectable by copyright law.  "[T]he mere copyright
of Selden's book did not confer upon him the exclusive right to
make and use account-books, ruled and arranged as designated by
him and described and illustrated in said book." 101 U.S. at 107
(emphasis added).  The Court thought it inappropriate to give
Selden indirectly protection for the bookkeeping system that would
have been unavailable had Selden claimed the system directly as a
protectable element of the work (See footnote 3).  Yet, indirect
protection of the system would have been the result if the Court
had construed copyright's reproduction right as giving Selden the
exclusive rights in the arrangement of words and columns
constituting his system.

 As a result of the Court's ruling, the arrangement of
columns and headings of the ledger sheets embodying Selden's
system could be freely copied by others, even by one who included
them in a competing work on the same system.  Although the
choice and arrangement of words in Baker's ledger sheets was
somewhat different from Selden's, the statement quoted above
indicates that the Supreme Court would have ruled no differently
had Baker used exactly the same words and arrangement in his
sample ledger sheets as Selden had used.  This result too is
consistent with traditional copyright principles and section 102(b)
of the copyright statute.  See, e.g., B. Kaplan, An unhurried View
of Copyright Law 64 (1967).

 It is in the nature of a method or system to have constituent
elements, some of which may be quite detailed in character.  In the
"shorthand cases," courts will decline to extend copyright
protection not only to the set of abstract rules that a shorthand
system developer might have devised for condensing words or
phrases, but also to the vocabulary resulting from the
implementation of these rules.  Both are constituent elements of the
system which copyright law will not protect.  See, e.g., Brief
English Systems, Inc. v. Owen, 48 F.2d 555 (2d Cir.), cert. denied,
283 U.S. 858 (1931).  Copyright law will protect the shorthand
system developers' explanation of the system, but not the system
and its constituent parts.
Thus, the fact that a particular element of a copyrighted
work is more detailed dm the most abstract description of a
program's general purpose or function does not automatically mean
it is an "expressive" detail; it may instead be a constituent element
of a system, or some other kind of unprotectable element of the
work.
The Nimmer treatise, in recognition of the distinctive nature of
computer programs, recommends use of a "successive filtering
method" for distinguishing between protectable and unprotectable
elements of copyrighted computer programs.  See 3 M.  Nimmer
and D. Nimmer, Nimmer on Copyright sec. 13.03[F] (1991).  This
method aims at excluding from copyright protection not only
abstract ideas, but also program elements aimed at achieving
efficiency, those dictated by logic or standard programming
practice, other standard techniques or features for programs of that
type, other elements constraining the design arising from external
considerations, and other elements belonging in the public domain.
Only after these unprotectable elements have been filtered out does
the Nimmer treatise regard it as appropriate to conduct an analysis
of substantial similarity in computer program copyright cases.

 Thus, in the Lotus v. Borland case, the court should make
an inquiry as to whether the command hierarchy of the Lotus 1-2-3
user interface is a constituent part of a Lotus menu or command
system or is otherwise an unprotectable element of the program
under a successive filtering analysis.  If the command hierarchy is
part of a system, the court should go on to inquire whether there is
any expressiveness in the command hierarchy over and above the
role of the commands and their arrangement as constituent elements
of the system.  Unless the court can identify such expressive
elements, the command hierarchy should be regarded as beyond the
scope of copyright protection the law affords to the Lotus program.

 There are some statements in the Paperback opinion
suggesting that the arrangement of commands in the Lotus interface
was a part of a system.  One statement in particular from that
opinion suggests that it may have been a constituent part of the
Lotus command system.  The opinion describes how the Lotus
commands (and some other interface features, such as the function
keys) could be combined to form "macros" constituting sequences
of functions that a user might wish to perform so that the user
would not have to repeat the fill sequence but only direct execution
of the macro.
        Following this description, the court states: "Because
macros may contain many menu choices, the exact hierarchy-or
structure, sequence, and organization--of the menu system is a
fundamental part of the functionality of the macros." 740 F. Supp.
at 65 (emphasis added).  The court should reflect further on this
statement as part of its inquiry in the Borland case to determine
whether, under section 102(b) and caselaw it reflects, the aspect of
the Lotus program sought to be protected in the litigation with
Borland is a constituent part of a system which would put it beyond
the scope of copyright protection.
Only if and to the extent a defendant has copied expressive
aspects of a user interface beyond those that are constituent parts of
a system can copyright infringement potentially be found (See
footnote 4).  Because elements of user interfaces may well be
constituent elements of a system or method, we believe that courts
should be very careful in cases involving user interface similarities,
to make sure that there is something truly "expressive" in a
copyright sense about the aspects of the interface at issue in the
case.  Additionally, the court should find infringement only if the
defendant's work is substantially similar to the plaintiff s work as to
protected expressive elements which the defendant copied from the
plaintiff.  See, e.g., P. Goldstein, Copyright Law sec. 7.1 (1989).
Even when some aspects of a user interface are expressive enough
to be protected against copying, the same may not be true for all
aspects of the interface.  Traditional copyright standards should be
used to determine if a particular aspect that has been copied is
expressive.
Although the fact that words or symbols can be arranged differently
may be relevant to an inquiry as to whether that aspect of a work is
"expressive," this factor alone will not suffice to establish the kind
of expressiveness required for copyright protection, as the blank
form cases rightly hold.  See, e.g., Bibbero Systems, Inc. v. Colwell
Systems, Inc., 893 F.2d 1104 (9th Cir. 1990).  Thus, the fact that a
set of commands can be arranged differently does not, of itself,
establish that any particular arrangement is "expressive" in a
copyright sense.  Arranging commands in the order of the
frequency with which they will be invoked is an example of an
arrangement of commands that would be for functional, rather dm
expressive purposes.
We therefore believe that care must be taken in computer
program user interface cases, just as in the blank form cases, to
identify precisely what, if anything, is expressive about a particular
arrangement and whether that arrangement is distinguishable from
an underlying system of which it may be a part.
The blank form cases also indicate that expressiveness is not
to be found when words on a form merely communicate to a user
the type of information to be filled in.  Thus, the fact that command
terms "communicate" the choices of functions available in the
program does not mean that they are "expressive" for copyright
purposes.

III.    Some Reflections on the Policies Underlying Copyright Law
Copyright law is not, and was never meant to be, a general
misappropriation statute for all products of the human intellect.
Copyright excludes many functional works, such as machines and
useful articles, from its domain.  Even when described or otherwise
embodied in a properly copyrighted work, functional elements of
the work-whether they exist at a highly abstract or highly detailed
level--are still not protectable by copyright law.  Section 102(b)
codifies this rule in its exclusion of such things as processes,
procedures, systems, and methods of operation from the scope of
protection available to protected works from copyright law.
The very fact that ideas are so valuable explains why copyright law,
with its low standards for obtaining protection, will not protect
them and remits them to patent law with its more rigorous
standards, or as in the case of the most fundamental ideas, such as
concepts, principles, and discoveries, to the public domain.
        As Professor Goldstein has observed:

Functional works [such as architectural plans, legal forms,
and computer programs] depend for their value primarily on
the ingenuity, accuracy, and efficiency--the utility-of their
underlying system, concept or method.

As a result, enforcement of copyright in these works
inevitably threatens the fundamental precept that copyright
protection shall not extend to any "idea, procedure, process,
system, method of operation, concept, principle, or
discovery." Copyright in functional works is in this respect
like copyright in fact works, which poses the similar danger
of monopolizing elements that should be available for free
use by all.  The important difference is that in protecting
works that are essentially functional in nature, copyright
may contradict the principle that protection for these
utilitarian elements is better left to the more exacting
standards of patent and trade secret law.

P.      Goldstein, Copyright Law sec. 8.5 at 116-117 (1989).
The Paperback opinion, in our view, is insufficiently
attentive to the functional nature of computer programs and some
user interface components, as well as to the implications of this
functionality for the scope of copyright protection available t o such
works.  The opinion further reflects a distressing inclination to
justify copyright protection of the Lotus user interface based on
such factors as the creativity of concepts in the Lotus interface, the
value of the interface, and concerns about whether there would be
sufficient incentives to invest in creation of such works if copyright
protection did not extend to all valuable aspects of the interface.
We realize that the court did not have the benefit of the Supreme
Court's opinion in Feist Publications, Inc. v. Rural Telephone
Service, Inc., -U.S.-, I I I S.Ct. 1282 (1991) when it issued the
Paperback opinion, but in the aftermath of this decision, it is clear
that labor and investment alone do not signify the presence of
copyrightable expression.

 It is well to remember that copyright law is part of a larger
intellectual property system Congress has created to provide
intellectual property protection to certain kinds of creative works to
provide incentives to invest in their creation and dissemination.  All
intellectual property laws aim to balance the interests of innovators,
competitors, and consumers.  Their principal purpose is not to
provide maximum rewards to innovators, but to promote the public
interest through the careful balancing process each intellectual
property law reflects.

  Stretching copyright law beyond the bounds Congress intended
for it to have creates the potential for upsetting the balance of
interests reflected in Congress' larger scheme for granting
intellectual property rights.  This, in turn, can hinder innovation by
overprotecting through copyright something that either should be
left to free copying or to the rigors of other forms of intellectual
property rights.


FOOTNOTES:

Footnote 1:  So basic to copyright law is section 102(b)'s exclusion
from protection of a number of potentially valuable elements of
copyrighted works that the courts have construed it as though it
created a penumbra of unprotectable elements.  Thus, while such
things as facts and fictions are not expressly listed in section 102(b),
it is clear from the copyright caselaw that these aspects of
copyrighted works too are beyond the scope of protection available
from this law.  See, e.g., Feist Publications, Inc. v. Rural Telephone
Service, Inc., - U.S. -, I I I S.Ct. 1282 (199 1) (facts regarded as
"discoveries" under section 102(b)) and P. Goldstein, Copyright
Law sec. 8.5 (1989) (the unprotectability of functions said to be
reflected in section 102(b)'s exclusion of processes, procedures,
systems, and methods of operation).

Footnote 2:  It is also worth observing that the Final Report of the
National Commission on New Technological Uses of Copyrighted
Works (1978) ("CONTU Final Report") also makes reference to
section 102(b), Baker v. Selden, and such cases as Continental
Casualty Co. v. Beardsley, 253 F.2d 702 (2d Cir. 1958) as among
the sources of guidance the Commission expected courts to utilize
in judging copyright infringement claims involving computer
programs.  See CONTU Final Report at 18-22.

Footnote 3:  The Court pointed out that in most instances, useful
arts were embodied in wood, metal, or stone, and what had given
plausibility to Selden's claim was that his useful art was embodied in
a writing.  Nevertheless, the Court stated "the principle is the same
in all.  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."  101 U.S. at 105.

Footnote 4:  A defendant must not only have copied something
from the plaintiff s work, but the defendant's work must also be
substantially similar as to protected elements of expression of the
plaintiff's work.  In addition, other defenses, such as fair use or
estoppel, may be available to the defendant in an appropriate case.