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

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FOR PUBLICATION

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

LOTUS DEVELOPMENT CORPORATION,
        Plaintiff

CIVIL  ACTION  v. NO. 90-11662-K

BORLAND INTERNATIONAL, INC.,
        Defendant


Memorandum and Order
July 31, 1992

By Memorandum and Order of March 20, 1992, the court
dismissed the parties' motions for summary judgment in this
copyright infringement action and invited new motions
compatible with rulings therein announced.  Each party has
renewed its motion for summary judgment and filed further
submissions (Docket Nos. 168-190).*   A hearing on these
motions was held on May 19, 1992, and additional
submissions were filed after that hearing.

The reader may find background information in two earlier
documents issued by this court:  the first, the Opinion in a
related case involving the Lotus 1-2-3 program at issue
here, Lotus Dev. Corp. v. Paperback Software Int'l., 740 F.
Supp. 37 (D. Mass. 1990), and, the second, a Memorandum
issued in this case, Lotus Dev. Corp. v. Borland Int'l Inc.,
788 F. Supp. 78 (D. Mass. 1992) (Memorandum and Order
of March 20).

In the Memorandum and Order of March 20, I concluded
that Lotus had failed to frame adequately its contentions
with respect to the infringement of elements of its user
interface less than the whole interface.  In its renewed
motion for summary judgment, Lotus asserts specifically
that Borland has copied expressive elements of the 1-2-3
interface, including "menu commands," "menu structure,"
"long prompts," and "keystroke sequences."  Although
Lotus continues to argue that its entire user interface
beyond dispute was copied, I adhere to the view that on the
present record a reasonable jury could find that Borland
copied less than the whole 1-2-3 user interface.
Nevertheless, based upon the parties' most recent
submissions, I conclude that, beyond genuine dispute, Fed.
R. Civ. P. 56, Borland copied parts of the 1-2-3 user
interface.  For the reasons stated herein, I deny Borland's
motions for summary judgment and grant, in part, Lotus'
motion for summary judgment.

I.      Definitions and Premises

The Memorandum of March 20 presented for possible use
in this case the following form of jury interrogatory
concerning the extent to which Borland copied the Lotus 1-
2-3 user interface in creating its Quattro programs:

Question 1

(a)     Do you find that the Quattro Pro user interface as a
whole was copied from the Lotus 1-2-3 user interface as a
whole?
        YES/NO

(b)     Do you find that the part of the Quattro Pro user
interface called the "emulation interface" (also called the "1-2-3 compatible interface") as a whole was copied from the
Lotus 1-2-3 user interface as a whole?
        YES/NO

(c)     If NO, do you find that some part, and, if so, which
of the following part or parts of the Lotus 1-2-3 user
interface were copied into some part of the Quattro Pro
"emulation interface" (also called the "1-2-3 compatible
interface")?

   (1)  The menu commands
        YES/NO
   (2)  The menu structure
        YES/NO
   (3)  The command sequence
        YES/NO
   (4)  The long prompts
        YES/NO
   (5)  The macro facility
        YES/NO

The Memorandum of March 20 noted that it was not clear
that Lotus was making a claim of the sort addressed in part
(a) or proposed Question 1 and that ambiguity remained
regarding the meaning of the terms used in parts (c)(1)-(5).
Lotus has in its recent submissions clarified its contentions.

First, Lotus acknowledges that the "native" modes of the  Quattro
programs have user interfaces that differ from that  of 1-2-3.
Thus, the question posed in part (a) of Question 1 is not in
genuine dispute.

Second, Lotus has defined, as it uses them, the terms "menu
commands," "Menustructure," "keystrokes," "keystroke  sequences,"
"long prompts," and "macro language."

In general, except for some blending of argument with  definitions,
the parties appear not to be in dispute about the meaning of these
and other terms defined below.  The  definitions that I use in this
Memorandum, for the purpose  of explaining and analyzing the
contentions of the parties,  are consistent with the submissions of
both Lotus and  Borland, as I understand them.

"Command" refers to an abbreviated description of a  direction that
a user of a software program (whether Lotus  1-2-3, Borland's
Quattro Pro, or another program) may  invoke to cause some
operation to be performed.

"Menu" refers to a display on the computer monitor of a  limited
number of commands available to the user at a given  moment.

"Menu command" refers to a command that appears in a  menu.  In
Lotus 1-2-3, a menu command is ordinarily a  single
English-language word.  In rare instances, it is instead a
representation of an English-language pronunciation (such as
"Xtract").  Menu commands are displayed on the computer monitor by
the 1-2-3 program in a succession of menus.  The menus c ommunicate
to the user, in sequence, the spreadsheet operations available to
the user.

"Command structure" refers to the organization of the  menus and
menu commands.  (Other phrases used with  essentially the same
meaning include "menu command  structure," "menu hierarchy," and
"menu command  hierarchy.")  In Lotus 1-2-3, menu commands are
organized  so that less than a dozen related menu commands are
displayed at any given moment.  This display communicates  to the
user the spreadsheet operations immediately  available.  Each menu
of less than a dozen commands is  linked to preceding/succeeding
menus by the operation of  menucommands.  All command menus are
ultimately linked  to a single main (root/trunk) menu to form a
"menu tree."

"Keystroke sequence" refers to a sequence of keystroke  entries
that a user may invoke.  Keystroke sequences may be generated as
one navigates the menu command hierarchy  performing sequential
spreadsheet operations.

"Long prompt" refers to a displayed multi-word English- language
description of a "highlighted" menu command.  A  "highlighted" menu
command appears on the computer  monitor as a block of inverse
video -- that is, on a  monochrome monitor with a black background
on which  characters are lit, a highlighted word appears as black
letters within a lit block.

"Macro language" refers to a feature by which a user may  define a
very short keystroke sequence as equivalent to a  longer keystroke
sequence.  Thus, a user may invoke the  short keystroke sequence
(a "macro") as a substitute for the  longer keystroke sequence.  In
stating this definition, I omit a sophisticated programming
capability available in 1-2-3 through its macro language feature
that Lotus, as I  understand its submissions, does not contend is
involved in  its claim of infringement in this action.

Having stated the definitions of the components of the user
interface that I will use in this Memorandum, I now state
additional points that I conclude are not in dispute about the
relations among these definitions and associated matters.

The keystroke sequences and macro language have functionality.
Typing ("inputting," in jargon) the first  character of a command
word invokes the command and  causes the operation associated with
the command word to  be performed.  (In many instances, a submenu
associated  with the command word is displayed.)  The menu command
hierarchy is a fundamental part of the functionality of  keystroke
sequences and the macro language.  For example,  the keystroke
sequence "/RFC" directs the computer to  format a range of numbers
to appear as currency values  because the character "/" initiates a
command sequence, the  character "R" implements the "Range"
command, the  character "F" implements the "Format" command, and
the  character "C" implements the "Currency" command.

It may be necessary to enter additional information to invoke a
spreadsheet operation fully.  For example, in order  to implement
an operation formatting a range of numbers as  currency values, it
is necessary to delimit the range of  spreadsheet cells to be
formatted.  In addition, it is  necessary to specify the number of
decimal places to be  displayed.  Variables such as range of cells
and number of  decimal places, for which values must be input each
time an  operation is to be performed, are called "parameters."

The authors of Lotus 1-2-3 made certain predictions about  the
value of each of the relevant parameters likely to be  input for
use with certain spreadsheet operations.  Those  predictions have
been incorporated into Lotus 1-2-3 as  suggestions; a user failing
to specify a value for a parameter where it is necessary to supply
one accepts the suggestion of 1-2-3's authors by default.  The
"/RFC" command set, for example, has associated with it two
"default parameters."  The defau lt for range is "current cell,"
and the default for number of decimal places is two (i.e., dollars
and cents). The user who prefers a different format (for example,
whole dollars rather than dollars and cents) may enter a different
number, zero rathe r than two (the default) to so indicate.  In
similar fashion, the user may supply a range different than the
default value.

The menu structure will not permit the command "Currency" to be
executed without first proceeding through the "Range" and "Format"
commands.  Indeed, inputting a "C" at a different point in the menu
structure may cause a different command, such as "C opy," to execute.

The foregoing description identifies one way in which a  menu
command may be invoked -- that is, by pressing the  letter key
corresponding to the English-language name of  the command.  A
second way of invoking a menu command  is to make use of the
highlighting around a menu command.   The user may use arrow keys
on the keyboard to move the  block of highlighting ("cursor") to an
adjacent menu  command.  Depressing the "Enter" key (or "Return" or
"<-- " key, depending on the keyboard) invokes a highlighted
command.

Because the macro language plays such a central role in the
parties' contentions, and because it is an extraordinarily
sophisticated element of Lotus 1-2-3, I recite some further
examples of the use of the macro language.

A user may define a keystroke sequence with a macro by  inputting
the keystroke sequence in a spreadsheet cell and  assigning a macro
label to that cell.  For example, if a user enters the sequence
"Hello-" (the tilde, "-," stands in for the "Enter" or "Return" or
"<--" key) in spreadsheet cell A1 and assigns the macro label "\H"
to cell A1, then the user may caus e the word "Hello" to appear in
any other cell by invoking the abbreviated keystroke sequence "\H"
instead of the longer sequence "H," "e," "l," "l," "o," "Enter."
(The reverse slash, "\," signifies the "Alt" key, pressed and held
in place while ano ther key is pressed.  Thus, the keystroke
sequence "\H" consists of pressing the "h" key while the "Alt" key
is simultaneously depressed.)

The capability of the program to enter, for example, the  word
"Hello" in any spreadsheet cell when the "\H" keystroke sequence is
entered is functional.  It is not  protectable by copyright, 17
U.S.C. Section 102(b), and it is not the subject of this case.

At a more sophisticated level, a user may construct a macro  that
implements menu commands.  For example, a user may  input the
keystroke sequence "/RFC--" in cell A1 and attach  a macro label
such as "\C" to that cell.  This defines "\C" in the macro
language -- subject to later redefinitions -- as "/RFC--."
Invoking the "\C" keystroke sequence in any cell will cause the
spreadsheet to format that cell to display numeric va lues as
currency values.  The ability of the computer to format the cell
for currency values is  functional.  It is not copyrightable, id.,
and it is not the  subject of this case.  The spreadsheet program
is instructed  to format the cell by the keystroke sequence "/,"
"R," "F,"  "C," "Enter," "Enter."  That sequence invokes the menu
commands "Range," "Format," and "Currency" (and  accepts, by
operation of the "Enter" key twice, two default  parameters).
Thus, the menu commands are an important  part of the functionality
of the macros.  Lotus contends that the menu commands and the
command structure are  copyrightable expressive elements of the
1-2-3 user  interface and that they are copyrightable expressive
aspects  of the macros.  Borland contends that the macros, in
their  entirety, are an uncopyrightable system.  These competing
contentions, as well as others, are addressed below.

II.     Copying

In Borland's Mem. in Supp. of Renewed Mot. for Summ. J.  (Docket
No. 168), Borland states the following:

Furthermore, it is undisputed in the record that Borland did  not
copy the 1-2-3 menu command hierarchy directly from  any 1-2-3
version, including Release 2.01.  Rather Borland  employees
reviewed books about 1-2-3, Release 2.01,  written by
third-parties, which books contain schematic or  menu-tree type
representations of the 1-2-3 menu command  hierarchy.  Borland used
these third-party menu trees to  construct 123-compatible menu
hierarchies in their own  products.

But Borland employees did not copy those menu trees, even  from the
third-party books.  Rather, they viewed the menu  trees and
implemented into their own products the  relationship of functions
depicted in those menu trees.

Id. at 15 (footnote omitted).  Borland contends that, on  these
facts, indisputably Borland did not "copy."  Borland's  contention,
however, is based on its idiosyncratic use of the  word "copy," and
is fundamentally wrong.  Instead,  Borland's admissions establish
beyond dispute that Borland  did copy the menu commands and command
structure of  Lotus 1-2-3.

Borland argues that the menu command hierarchy is a "set  of
functional relationships" that is nowhere displayed in the  1-2-3
user interface.  Thus, Borland argues, it did not and  could not
have "copied" the menu command structure.  That  argument simply
fails.  It is an argument about a fact --  copying or not.  Its
premise bears instead not on the fact -- copying or not -- but upon
the legal issue of copyrightability.  That is, the premise of
Borland's argument is that the menu command structure must be fixed
in a tangible medium to be copy rightable.  See 17 U.S.C.  Sections
101-102.  The admitted fact that the Quattro  programs duplicate
the set of "functional relationships" of  Lotus 1-2-3 and were
designed to do so is conclusive  against Borland on the issue of
copying that set of  functional relationships.  Thus, Borland has
admitted that it intentionally incorporated into its user interface
the 1-2-3 menu commands and menu command hierarchy.

Moreover, I reject Borland's tangible-medium argument as  applied
to this case.  The argument would be relevant, if at  all, to
copyrightability rather than copying, but because  Borland has made
the argument as if it had a bearing on  copying, I will digress
briefly to address it here.  To be the subject of copyright
protection, an expression must be fixed in a tangible medium.  Id.,
Section 102.  All that is required in this regard is that the
expression be embodied in a copy "by or under the authority of the
author" in a form "sufficiently stable to permit it to be
perceived, reproduced, or otherwise communicated for a period of
more than transitory duration."  Id, Section 101.  The output of a
computer program, at least in sofar as it is typical of the
program, predictable from it, and directed by the operation  of the
program, satisfies these requirements.  The menu  command hierarchy
is part of the 1-2-3 program's output, is  directed by the program,
is identical each time the program  runs, and may be perceived
(and, as in this case, duplicated).

It is irrelevant that the hierarchy cannot be perceived in its
entirety at one moment (for example, in one screen display), just
as it is irrelevant that the plot of a novel cannot be perceived
from viewing one page.  The menu command  hierarchy is
copyrightable subject matter.

Borland's argument that it copied from third-party sources  rather
than Lotus is equally without merit.  Borland argues  this point on
the strength of the court's suggestion that  Borland might prove
that it did not copy Lotus' interface by  demonstrating that
instead it copied someone else's.  If  Borland had copied a third
party's independently created menu command hierarchy that
"happened" to duplicate  Lotus' interface, Borland might be
excused (at least from  liability to Lotus, though not perhaps to
the third party).   Here, however, Borland has admitted copying
from sources  that, with or without permission from Lotus, copied
from  Lotus.  Borland was aware that those sources copied from
Lotus -- Borland admits verifying the accuracy of the menu
structure it generated from third-party sources by  comparing the
Quattro programs to 1-2-3.  The fact that  Borland used third-party
sources as a means of copying the  Lotus 1-2-3 menu command
hierarchy in no way excuses  Borland's deliberate imitation of the
Lotus menu structure.

Based on the foregoing, I conclude that, beyond genuine  dispute,
Borland copied the menu commands and menu  command structure of
Lotus 1-2-3.  Moreover, Borland  admits to copying the
functionality of the keystroke  sequences and macro language.  By
its own assertions,  Borland's reason for copying the menu command
structure  was to obtain the benefit of its functionality.  It
follows that in fact Borland has admitted copying aspects of the
keystroke command sequences and macro language that  Lotus contends
are expressive and copyrightable, although  Borland chooses to
describe what it did in another way.

Lotus has identified at this stage one additional element of  its
user interface that it claims Borland copied:  the long  prompts.
It is clear form the record that the long prompts  appearing in the
Quattro programs differ in many instances  from the long prompts in
1-2-3.  On the other hand, in many  other instances there is little
or no difference.  There is  evidence that a Borland employee wrote
the Quattro long  prompts and did not "copy" from 1-2-3; however,
she  admits to looking at 1-2-3 to ensure thatshe correctly
understood the Lotus commands.  A reasonable jury could  find on
the basis of the evidence either way -- that Borland  did or that
Borland did not copy the long prompts of 1-2-3.   Therefore, I
conclude that whether the long prompts were  copied is a question
for the jury.  Moreover, because of this conclusion, it is apparent
that a reasonable jury could find  that Borland did not copy the
1-2-3 interface as a whole.



III.    Copyrightability

Having concluding that Borland copied the menu commands  and menu
command hierarchy as well as the keystroke  sequences and macro
language, I now proceed to determine  whether those aspects of the
1-2-3 user interface, taken  together, are copyrightable.

A.      Potential Fact Questions
I stated earlier my tentative conclusion that the  application of
the copyrightability standard is for the court and not a jury.
Borland, 788 F. Supp. at 96.  I invited counsel to respond to that
tentative conclusion.

Lotus has fully endorsed the conclusion that copyrightability
issues, at least in this case, are for the court.  Borland,
however, contends (in the alternative to Borland's own motion for
summary judgment) that questions of  copyrightability are for a
jury.  In response to the court's  invitation, Borland proposes the
following questions to be  answered by a jury:


1. Does the Lotus 1-2-3 menu command hierarchy  comprise a system,
procedure or method of operation?

2. Is the 1-2-3 menu command hierarchy designed and  used as a
system for  performing tasks using a spreadsheet program?

3. Are the command words of 1-2-3 and their order an  inseparable
part of a  system for performing spreadsheet tasks?

4. Does the 1-2-3 menu command hierarchy enable a  person to map
out and  execute a procedure for performing a particular
spreadsheet  task?

5. Is the 1-2-3 menu command hierarchy a means for  issuing
commands to  the computer program to perform spreadsheet tasks?

6. Does the 1-2-3 menu command hierarchy provide a  procedure or
method of operating a spreadsheet program?

7. Was the 1-2-3 menu command hierarchy designed  and arranged
using functional rules or principles?

8. Was the 1-2-3 menu command hierarchy designed  and arranged to
maximize its efficiency and usefulness?

9. Is the 1-2-3 menu command hierarchy fundamental  to a user's
ability to  execute macros written using 1-2-3?

10. Do the command words of 1-2-3 convey  information to the user
other than the choices of functions  that are available?

11. Does the 1-2-3 menu command hierarchy explain to  the user how
to use the 1-2-3 program to perform  spreadsheet tasks.

Liability Questions for the Trier of Fact (Docket No. 95) at  2-5.
Under my rulings, it is irrelevant that the 1-2-3  interface
includes functional elements or "comprises a  system" so long as it
also includes separable expressive  elements.  Thus, five of
Borland's first six questions are  irrelevant.  Question 3, though
relevant, is a mixed law-fact question that will not be asked of a
jury for reasons  previously stated.  Borland, 788 F. Supp. at 94-96.

The seventh and eighth questions are more problematic.   Those
questions may have a bearing on whether the  expressive elements of
1-2-3 are in face separable from the  functional aspects of the
interface.  As stated in the  Memorandum of March 20, "[i]f the
menu commands or  menu command structure were dictated solely by
functional  concerns, then those elements may not be
copyrightable."   Borland, 788 F. Supp. at 97 (citing Brandir
Int'l. Inc. v.  Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d
Cir.  1987)).  Lotus argues that Brandir is not "strictly
applicable" because computer programs are classified as  "literary
works" and not "pictorial, graphic, and sculptural  works" by the
Copyright Act.  The law draws heavily on  analogy, however, and
computer programs, whatever their  formal classification, like
pictorial, graphic, and sculptural works, are useful articles.
Moreover, though insisting that the burden on this question falls
on Borland, Lotus acknowledges that any elements of its program
that were functionally dicta ted are not copyrightable.  Pl.'s Mem.
of L. in Supp. of Renewed Mot. for Summ. J. on Infringement (Docket
No. 171) at 34-35 n.  47.

Nevertheless, I conclude that no reasonable jury could find  that
the menu command hierarchy was limited to one or  even several
alternate designs at the time it was created.  On the basis of the
evidence before me, a factfinder could  conclude that some -- but
only some -- subelements of the  menu command hierarchy were
functionally dictated.  For  these reasons, it is my tentative
conclusion that there may be genuine fact disputes regarding the
subject matter of  Borland's seventh and eighth questions.
Questions seven  and eight, as formulated, however, are
"evidentiary" rather  than decisive or "ultimate" issues
appropriate for use on a  verdict form.   It remains to be
determined whether an  "ultimate question" on the subject matter of
the seventh and  eighth of Borland's suggestions can be formulated
as an  adjudicative fact question of the type that is normally the
province of a jury and does not pose the substantial risks
described in my earlier Memorandum, see Borland, 788 F.  Supp. at
94-96.

Question nine assumes a premise that is fundamentally in  error --
an error that has been systemic in Borland's  arguments throughout
the course of this litigation.  The  problem, which may be
described as a "checked and egg"  problem, is addressed in greater
detail in Section C, below.   At this point, I simply state my view
that question nine  should not be asked of a jury.

The answers to the last two questions are irrelevant.  A "no"
answer to question ten does not preclude a determination that the
command words are expressive even thought the expression may be
limited -- i.e., the words communicate the functions to wh ich they
are assigned.  Similarly, the answer to question eleven is
immaterial.

B.      Legal Issues on Copyrightability

In the Memorandum and Order of March 20, 1992, I  concluded that,
"absent further guidance from higher authority before the date of
trial,"Borland, 788 F. Supp. at 89, I would apply the following
standard for deciding copyrightability issues:

FIRST, in 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." Id. at 90 (quoting Lotus Dev. Corp. v.
Paperback Software  Int'l., 740 F. Supp. 37, 60-61 (D. Mass.
1990)) (all  emphasis omitted).

The Second Circuit has recently issued an opinion that bears
significantly on issues of copyrightability and substantial
similarity.  In Computer Assocs. Int'l. v. Altai, Inc., No.
91-7893, 1992 U.S. App. LEXIS 14305 (2d Cir. June 22,  1992), the
court announced an "Abstraction-Filtration- Comparison" test for
determining "substantial similarity."   The first two steps,
"abstraction" and "filtration," are  designed to define the idea of
the program and to eliminate  it (as well as other noncopyrightable
subject matter) from  further consideration.  The test "serves 'the
purpose of defining the scope of plaintiff's copyright.'"  Id.
(quoting  Brown Bag Software v. Symantec Corp., No. 89-16239,  slip
op. 3719, 3738 (9th Cir. April 7, 1992).  Thus, the first two steps
of the Second Circuit's "substantial similarity" test concern what
other courts and commentators have called "copyrightability."  Only
the third step, "comparison," addresses si milarities between the
copyrighted work and the allegedly infringing work.

To what extent does the Second Circuit's "Abstraction-
Filtration-Comparison" test differ, either substantively or in
methodology, from the combination of copyrightability and
substantial similarity tests tentatively adopted for this case in
my Memorandum and Order of March 20?

I conclude that the standard for determining copyrightability
stated in my Memorandum and Order is compatible with the
abstraction-filtration portion of the Second Circuit's test.  The
Second Circuit founded its abstraction step on the opinions of Ju
dge Learned Hand that were also the foundation of the first step of
the copyrightability test stated in my Memorandum and Order.  The
second step of that copyrightability test parallels the Second
Circuit's "filtration" step.

The third step of the Second Circuit test, "comparison,"  serves
two functions.  The first concerns the issue addressed in the third
step of the "copyrightability" test I have tentatively adopted for
this case -- whether the expressive elements of the allegedly
copyrightable work are a substantial part of i

I conclude that in this respect the two tests are compatible
substantively though different in methodology.  The other function
that the Second Circuit's "comparison" step serves is emphasized in
the term used to identify it -- "comparison."  The c omparison is
between 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 allege dly copyrightable work
that are a substantial part of the allegedly copyrightable work
(i.e., whether there is substantial similarity in the mixed
law-fact sense).  I conclude, again, that in relation to this
comparison, the Second Circuit's test and the combination of the
"copyrightability" and "substantial similarity" tests I have
adopted tentatively are compatible substantively, though different
in methodology.

Borland argues that the decision and reasoning in Computer
Associates are contrary to the Paperback decision, and, as  well,
to my Memorandum and Order of March 20.  In one  respect only,
however, did the Second Circuit explicitly so  indicate.  It
criticized an incentive-based reason stated at  one point in the
Paperback opinion.  The criticized  argument, however, was by no
means essential to the  outcome in Paperback, and acceptance or
rejection of that  argument is not likely to affect the outcome in
this case.  In other respects, my reasoning in Paperback and in my
Memorandum and Order of March 20, 1992 in this case was
substantively consistent with the opinion of Computer  Associates,
as I understand that opinion, though, as I have  explained above,
different in methodology.

A particular example of significance to this case concerns
Borland's argument that the Second Circuit's treatment of
"compatibility" militates against copyrightability of the 1-2-3
interface.  Borland extracts from the Second Circuits  opinion a
determination that aspects of computer software  cannot be subject
to copyright if they are greatly  circumscribed by the hardware or
software with which they  are designed to interact.  That
proposition, even if accepted as Borland has stated it, does not
apply to 1-2-3.  Borland's argument to the contrary must be
rejected for reasons that I explain in Part C, immediately below.

C.      Which came first?

A familiar childhood riddle asks:  Which came first -- the  chicken
or the egg?  As folk riddles often do (and lawyer's  questions on
cross-examination sometimes do), this riddle  strongly suggest that
any answer but one of two identified  options is out of bounds.
Perhaps from another perspective,  however, one may recognize that
the chicken and egg are  one type of organism in different stages
of a life cycle.  Over a long span of time, the form of that life
cycle has evolved from an earlier form in which the chicken and the
egg were not so distinct as they now appear to be.  History,
science, and p hilosophy may provide another answer, or many
others, different from the two suggested in the riddle.

Borland's brief poses a conundrum for this case in a form
analogous to the chicken-and-egg riddle.  Borland asserts  that the
1-2-3 interface is not copyrightable because the  menu command
hierarchy "was dictated by the nature of the  user macros with
which it was designed to interact."  Supp.  Mem. Re:  Additional
Authority (attached to Docket No.  189) at 9 (quoting Computer
Assoc. Int'l v. Altai, Inc., No.  91-7893, slip op. at 50, 1992
U.S. App. LEXIS 14305, at  *67 (2d Cir. June 22, 1992)).  An
implicit premise behind  this argument is that the menu command
hierarchy was  designed to fit the macros.  The subtle suggestion
in that the macros came first -- that they were preexisting.
Necessarily implicit to Borland's argument is the assertion that
neither the final version of the menu command hierarchy nor any
substant ial part of it was preexisting when the macro language was
created.

The thrust of the discussion of "compatibility" in Computer
Associates, however, relies upon proof that what the  program was
designed to fit was already in existence before  the program was
designed to fit it.  Thus, a program  designed to fit hardware
specifications cannot be protected  by copyright unless the program
contains expressive  elements not substantially dictated by the
hardware.   Similarly, a program designed to interact with
preexisting  software, such as the operating system at issue in
Computer  Associates, is not entitled to protection to the extent
that it is considered by the need for compatibility with the
preexisting software.  Thus, the rule makes sense if the  premise
of a preexisting functional limitation is valid.

In this case, however, there is a very simple answer to the
question "Which came first?"  The Lotus 1-2-3 interface --  or at
least a version of it -- was written first.  All user  macros
derive from it.  Thus, Borland is simply wrong  factually to argue
that the 1-2-3 interface was constrained by the macros.  On this
issue, there is no genuine dispute of fact.

I assume in Borland's favor that, like the chicken and the  egg,
the macro language (as opposed to macros defined by  users using
the macro language, which necessarily came  later) evolved
simultaneously with the menu commands that  delimit it.
Nevertheless, it is beyond dispute that the macro language did not
evolve first.

Borland has argued, also, that the need to ensure that the  menu
commands in any given menu begin with a different  letter is a
functional constraint.  Even that argument fails, however, because
of the availability of other symbolic tokens; e.g., A, B, C, ... or
1, 2, 3, ...

It is no doubt true that the macros have functional  significance.
Moreover, as this court found in Paperback,  the menu "system" is a
fundamental part of the functionality  of the macro language and
the macros.  As the Second  Circuit has recognized, however, the
fact that a form of expression takes on functional character does
not remove it  from the protection of copyright.  Brandir Int'l.,
Inc. v.  Cascade Pac. Lumber Co., 834 F.2d 1142, 1147 (2d Cir.
1987); see also Paperback, 740 F. Supp. at 58.

Lotus used the slash character ("/") to initiate a command
sequence; the character "R," to specify the command  "Range"; the
character "F," to specify the command  "Format"; and the character
"C," to specify the command  "Currency."  A user inputting the
characters "/," "R," "F,"  and "C" in sequence (and supplying
necessary additional  parameters) will cause the computer to
perform the  operations associated with the specified commands.

If the keystroke sequence "/RFC--" were stored in a  spreadsheet
cell that had been assigned the macro "\C," then  a user inputting
the "\C" keystroke sequence would cause  the computer to perform
the same operations as would be  invoked by the six-keystroke
sequence "/", "R," "F," "C,"  "Enter," "Enter."  Because the "\C"
keystroke sequence is  invoked by pressing the "c" key with the
"Alt" key depressed as one would use a "Shift" key, it involves
two  keys but perhaps only one "keystroke."  Thus, depending  upon
one's definitions, a saving of either five or six  keystrokes would
result.

Had Lotus preferred, it could have chosen, for example, the
command "Scope" instead of "Range," "Appearance"  instead of
"Format," and "Money" instead of "Currency."   Then the user would
invoke the sequence "/," "S," "A," "M"  to establish a "money"
appearance ($xxx.xx) for a scope of  cells.  In that case, the
parallel to Borland's argument would be that the existence of
"/SAM--" macros in users' files (spreadsheet files with cells
defining macros may be saved for future use) "dictated" the use of
the "Scope,"  "Appearance," and "Money" commands in the menu
command hierarchy.  Obviously, the argument is without  merit --
"Range," "Format," and "Currency" are  demonstrably acceptable
choices.  The fact that Lotus chose  one command set for its first
version may have made it  "necessary" that future versions adopt
the same command  set; however, the initial choice of the command
set was a free choice.

It bears repeating here that Lotus (though not Borland) was
entitled to incorporate in version 2.01 the menu command  hierarchy
that it employed in earlier versions of 1-2-3.   Thus, Borland's
contention that the macros preceded and  dictated the menu command
hierarchy of version 2.01 fails  because that fact is irrelevant.
This is so because Lotus'  exercise of creative expression that is
at issue in this case (the menu command structures of version 1A
and 2.0)  manifestly preceded the users' macros that incorporate
the  1-2-3 command hierarchy.

It may be argued that the macros, by themselves, are  functionally
dictated by the 1-2-3 menu command hierarchy  and so are not
copyrightable independently of the  copyrightability of the menu
command hierarchy.   Moreover, even if some macros are
copyrightable, it may be  that the owner of any copyright in a
macro is the user who  authored the macro and not Lotus.  I am not
faced with  those questions in this case.  In conclude only that
Borland's argument rests on a false proposition.  Thus, to decide
this case I need not and do not decide whether Borland is
prohibited from reading and interpreting the macros that have been
create by users of 1-2-3.  Had Borland created a program that read
users' 1-2-3 macros and converted them to macros for use in the
Quattro programs' native modes, so that they could be interpreted,
executed, modified, debugged, etc. by resort to Borland's c ommand
hierarchy, that would have presented a different case from the one
now before me.

Borland did not obtain the right to expressive aspects of  Lotus'
command hierarchy merely because -- if it be the case  -- the 1-2-3
program revolutionized the spreadsheet market.   The menu command
hierarchy has a functional aspect when  incorporated into the
keystroke sequences and macros.   That functional aspect is
separable from the expressive  aspect that preceded it.  Borland
cannot obtain the right to  use the macros and keystroke sequences
just because the  only means of doing so is by infringing
expressive features  of the Lotus 1-2-3 macro language and
keystroke sequences.

The error of Borland's argument may be demonstrated by a  simple
hypothetical.  If an uncopyrighted movie is made  from a
copyrighted novel (under the authority of an  appropriate license),
the public is free to copy all aspects of expression unique to the
movie; however, the novel does  not enter the public domain.
Similarly, if the macros have  uncopyrightable functional aspects,
Borland does not  infringe the copyright in Lotus 1-2-3 version 1A
by  duplicating the functionality in any way that does not copy
the expressive elements of Lotus 1-2-3 version 1A, but it  must not
infringe upon expressive elements.

Borland's argument that Baker v. Selden, 101 U.S. 99  (1879),
establishes a different rule that controls this case is rejected.
This is not a case like Baker v. Selden in which the system depends
on the use of the copyrighted matter.  Borland has, in fact,
designed a system (Quattro Pro's native mode), sing macros and
keystroke sequences and using an alternate command hierarchy, that
is fully functional.

D.      More on Computer Associates v. Altai

Some further points regarding the Second Circuits opinion  bear
upon its applicability to issues in the present case.

1.      Beyond Program Code to Nonliteral Expression.

The reasoning underlying the Second Circuit's "Abstraction-
Filtration-Comparison" test extends beyond program code  to
nonliteral expression.  That is, although the issue in that case
concerned program code and its structural aspects, the Circuit
based its conclusions on reasons of broader  application.  In
fact,  the court explicitly approved  determinations with respect
to the copyrightability of certain nonliteral, noncode
(nonstructural) aspects of the 1-2-3 spreadsheet in Paperback.  See
Computer Assocs., No. 91-7893, slip op. at 34, 1992 U.S. App. LEXIS
14305, at *46.   Thus, from statements made in the Second Circuit's
opinion,  albeit obiter dicta, I draw support for my conclusion
that  certain expressive elements of the 1-2-3 user interface may
be protected by copyright.

2.  Criticism of Whelan.

Borland's argument that the Second Circuit, with on stroke,
knocked out the "conceptual underpinnings" of Whelan  Assocs., Inc.
v. Jaslow Dental Lab., Inc., 797 F.2d 1222 (3d  Cir. 1986), cert.
denied, 479 U.S. 1031 (1987) and of  Paperback cannot be
sustained.  First, Whelan remains good  authority in the Third
Circuit and may provide guidance for  this court in the same way as
the Second Circuit's opinion in the Computer Associates.  That is,
for courts in the First Circuit, each of these decisions from other
federal circuits is instructive and neither is controlling beyond
the persuasive forc of its reasoning.  Second, and more to the
point, the Second Circuit criticized the Whelan decision for
reasons that in large part do not apply to the rulings I made in
Paperback or to the rulings I have made and now make in this case.

The Second Circuit was critical of Whelan on two principal grounds
-- that it failed to recognize that programs may  have more than
one idea, and that it mistakenly asserted that all that is not idea
is expression.  To resolve those problems, the Second Circuit
formulated its "Abstraction-Filtration-Comparison" test.

In both these respects, the rulings I have made in the present case
are compatible substantively (though not entirely in methodology)
with the Second Circuit's views rather than those of the Third
Circuit, where those two circuit's differ.   For example, as
indicated in the Paperback opinion, I  recognize that the 1-2-3
user interface can be described as  incorporating more than one
idea.  Thus, the Paperback  opinion identifies the idea of an
electronic spreadsheet, the idea of having a readily available
method of invoking the menu command system (which I concluded
merged with its  expression as the "/" command), and the idea of
the two-line  moving cursor menu, among others.

3.  Baker Not Alone Controlling.

In its most recent submissions, Borland once again insists  that 17
U.S.C. 102(b) and Baker v Selden  control this case,  now asserting
that the Second Circuit design supports  Borland's argument.  Once
again, Borland overstates the  point.  Borland is correct in
observing that the Second  Circuit treats Baker as the "starting
point" in analyses of  utilitarian works, including computer
programs.  That view  is compatible with my earlier Memorandum and
Order.  See  Borland, 788 F. Supp. at 92-93.  Borland fails to
note,  however, that the Second Circuit went on to state:

While Baker v. Selden provides a sound analytical  foundation, it
offers scant guidance on how to separate idea  or process from
expression, and moreover, on how to  further distinguish
protectable expression from that  expression which "must
necessarily be used as incident to"  the work's underlying concept.

Computer Assoc., No. 91-7893, slip op. at 24, 1992 U.S.  App. LEXIS
14305, at *32.  The Second Circuit's decision  cannot fairly be
characterized as holding that Baker controlled the outcome in
computer Associates.  The  Second Circuit was sensitive not only to
its duty of fidelity to precedent, but as well to its duty of
fidelity to congressional mandates that came into existence long
after Baker was decided.

4.  "Substantial Similarity" and "Copyrightability."

The Second Circuit referred to its test as on of "substantial
similarity" and did not use the term "copyrightability" for any
part of the test.  I do not understand this difference of
terminology to have substantive implications, however, and more es
cially, not for this case.  Nor do I understand the Second
Circuit's three-step test to be meant as a rigid barrier to
alternate methods of analysis and decision.  The court "advised"
rather than mandated that the courts within the Second Circuit adh
ere to the three-step test announced.   Moreover, a court in the
First Circuit must take account of  some degree of dissonance
between the First and Second  Circuits regarding the methodology of
infringement  analyses.  compare Computer Assocs., supra, with
Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600
(1st Cir. 1988).  Although Concrete Machinery outlines a
methodology different from the three steps of the Second  Circuit's
test, I do not understand the First Circuit to have mandated the
order of analysis it described.  See Borland, 788 F. Supp. at 86.
I adhere to the view stated in my Memorandum and Order of March 20
that, under existing  precedents, prudential concerns about case
management  may have a bearing on the order in which a court
proceeds  with its analysis in a complex copyright infringement
case.   Id.  Thus, I conclude that I may and should proceed to a
copyrightability analysis at this time even though some
potentially material factual questions are still unresolved facts
regarding the long prompts, and facts regarding the  extent to
which the menu commands and command  hierarchy may have been
dictated by functional  considerations.

E.  APPLYING THE STANDARD

1.  The First Step.

FIRST, in 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.

One may describe a number of conceptions of the 1-2-3 user
interface.  A non-exclusive list, commencing with the most
abstract and moving toward the particular, includes:

(1)     Lotus 1-2-3 is an electronic spreadsheet.
(2)     It is a menu-driven electronic spreadsheet.
(3)     Its user interface involves a system of menus, each
menu consisting of less than a dozen commands, arranged
hierarchically, forming a tree in which the main menu is the
root/trunk of the tree and submenus branch off from higher  menus,
each submenu being linked to a higher menu by  operation of a
command.
(4)     It's user interface involves a system of menus,
each menu consisting of less than a dozen commands, arranged
hierarchically, forming a tree in which the main menu and submenus
branch off from higher menus, each submenu being linked to a highe
r menu by operation of a command, so that all the specific
spreadsheet operations available in Lotus 1-2-3 are accessible
through the paths of  the menu command hierarchy.
(5)     Finally, one may conceive of the interface as  that precise
set of menu commands selected by Lotus,  arranged hierarchically
precisely as they appear in 1-2-3.   Under this conception, the
interface comprises the menu of  commands "Worksheet," "range,"
"Copy," "Move," "File,"  "Print," "Graph," "Data," "System," and
"Quit," linked by  operation of the command "Worksheet" to the menu
of  commands "Global," "Insert," "Delete," "Column," "Erase,"
"Titles," "Windows," "Status," and "Page," etc.  (The completion of
this proposed statement of the "idea," listing  all of the more
than 400 commands for which "etc." stands,  would require several
dozen more lines of text.)

Borland argues that the appropriate conception of the "idea"  of
the 1-2-3 interface is the fifth option.  if that were the  case,
of course, there would be no elements of expression in the menu
commands and menu command hierarchy and therefore no copyrightable
aspects in them.  The premise of Borland's argumen t is that an
"idea" of Lotus 1-2-3 version 2.01 is complete compatibility with
earlier versions of 1-2-3, and more precisely with macros generated
for use with earlier versions.  Borland argues that the precise
menu  commands and menu structure are necessary to such  functional
compatibility.  Thus, the argument goes, the  entire interface of
version 2.01 is a functional system or  "idea" and is not
copyrightable.  This argument is essentially tautological.  As
applied to any case involving a useful article, an argument of this
kind would always define the idea to incorporate all the specifics
of the particular expression of th at idea in the allegedly
copyrightable work.

Nothing would be copyrightable under this methodology of
analysis.  The argument is an attempt to win by definition  without
focusing at any time on any substantive issue  concerning the
separation of idea and expression.

To select, at the opposite extreme, the very abstract  statement of
the idea of 1-2-3 as "an electronic spreadsheet" would be to draw
an inappropriately abstract boundary between idea and expression.
Thus, I concur in a  fundamental principle of the Computer
Associates opinion  and reject the contrary proposition in Whelan.

Arguably, my Opinion in the Paperback decision, where no  sharper
focus was essential to the outcome, is consistent  with accepting a
conception of the idea that falls between  the second and third
formulations above.  See Paperback,  740 F. Supp. at 67 (electronic
spreadsheet having "menu  structure").  In any event, I now
explicitly recognize that for decision of the issues now before me
the selection of  functional operations that the spreadsheet
performs must be  considered part of the idea of the program.
Copyrightability depends on expression distinct from the selection
of the set of spreadsheet operations that can be performed.

I conclude that an appropriate conception of the "idea" or
"system" of the 1-2-3 interface is the fourth of the five
alternative conceptions stated above.

2.  The Second Step.

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 instead  includes identifiable
elements of expression not essential to every expression of that
idea, system, process, procedure,  or method.

Does the Lotus 1-2-3 user interface include identifiable  elements
of expression?  For reasons stated below, I  conclude that it does.

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

This may be easily demonstrated.  Recall the ten commands  that
appear in Lotus' main menu:  "Worksheet," "Range,"  "Copy," "Move,"
"File," "Print," "Graph," "Data,"  "System," and "Quit."  One can
imagine an entirely plausible  spreadsheet in which the "Worksheet"
command has been  named, quite naturally, "Spreadsheet."  Of
course, this  might require changing the "System" command to avoid
two  commands abbreviated "S," perhaps to "DOS."  The "Quit"
command could be named "Exit" without any other  modifications.
the "Copy" command could be called  "Clone," "Ditto," "Duplicate,"
"Imitate," "Mimic,"  "Replicate," and "Reproduce," among others (in
some cases requiring modification of other commands in the menu).
Additional possibilities include "Output" for "Print," "Draw" or
"Chart" for "Graph," "Figures" or "Information" for "Data," "Scope"
for "Range," and "Transfer" or "Relocate" for "Move."

Just these potential modifications of the main menu yield  over 250
combinations of commands in the mainmenu with  ten distinct first
letters.  Changes in submenus increase the number of possible menu
hierarchies geometrically.  Since there are dozens of independent
submenus, the number of possible menu hierarchies is extremely large.

Borland argues that "[t]o old that an idea, plan, method or  art
described in a copyright is open to the public but that it can be
used only by the employment of different words and  phrases which
mean the same thing, borders on the  preposterous."  Borland's
Resp. to Pl.'s Renewed Mot. for  Summ. J. (Docket No. 183) at 19
(quoting Crume v. Pacific  Mut. Life Ins. Co., 140 F.2d 182, 184-85
(7th Cir.), cert.  denied, 322 U.S. 755 (1944)).  This case,
however, unlike Crume, is not a case in which the system "can be
effected  solely by the employment of words descriptive thereof."
Crume, 140 F.2d at 184.  use of just the initial letters of
command words (together with long prompts) or of other  symbolic
tokens would have been a sufficient alternate  method of
implementing the system.  In this case, the  command words chosen
are not necessary to expression of  the system nor are they
necessarily incident thereto.  See  Computer Assocs., No. 91-7893,
slip op. at 30, 1992 U.S.  App. LEXIS 14305, at *40.

Lotus argues that a large number of substantially different
arrangements (hierarchies) could also have been effected.   looking
again at just the main menu, is there any reason that the commands
"Copy" and "Move," for example, could not  have been arranged in
the opposite order?  Borland argues  that the arrangement was
necessary, citing evidence that  Lotus arranged the menu commands
in order of the  expected frequency of use.

It is clear that certain command words have been grouped according
to function; e.g., there are eighteen commands  that affect the
display mode of spreadsheet cells that are  grouped together under
the "Format" command.  Thus, a  jury could find that at least some
aspects of the arrangement of command words, as opposed to the
specific choice of command words, was guided by functional concerns.

This is, however, a disputable fact question that may affect  only
the scope of relief in this case.  See ABKCO Music,  Inc. v.
Harrisongs Music Ltd., 508 F. Supp. 798 (S.D.N.Y.   1981) (court
awarded damages based upon contribution to  success of infringing
work of copyrighted material) (for  subsequent history, see 944
F.2d 971 (2d Cir. 1991)).  I  conclude that it cannot be genuinely
disputed that a large  part of the structure and arrangement of the
menu  commands is not driven entirely by functional
considerations.  There are sufficient non-functional aspects  that
at least hundreds and perhaps thousands of different  expressions
of the function were possible when Lotus chose  the particular
structure of menu commands incorporated  into Lotus 1-2-3.

This may be demonstrated by examining more closely  Borland's
argument that the menus were arranged according  to the predicted
frequency of use of the commands.  I  assume the truth of Borland's
assertion that Lotus predicted  before marketing its spreadsheet
that the "Copy" command  would be used more often than the "Move"
command.   Nevertheless, that is merely a prediction of frequency
of   use.  It did not require Lotus to list "Copy" before "Move."
A user can type a "C" or an "M" with equal ease no matter  which
command is listed first.  If a user prefers to invoke a command by
first highlighting it and then typing "Enter,"  "Move" is only one
keystroke from "Copy"; moreover, the  same "right arrow" key that
takes the cursor from  "Worksheet" to "Copy" moves the cursor from
"Copy" to  "Move."  Thus, the order in which commands are listed in
a  menu has very limited functional value.

In addition, a prediction of frequency of use depends upon  who is
the predicted user and what the predicted uses are.   For example,
a user may work on a spreadsheet without printing any of the work
performed on that day.  Yet, the  user will ordinarily invoke the
"Quit" command appearing at  the end of the main menu at the end of
each session.   Nevertheless, the "Print" command appears before
the  "Quit" command on the menu.

Many users may rarely invoke the "System" command  available in
1-2-3.  That is, the need to invoke a disk  operating system
("DOS")  "shell" from within the  spreadsheet program may be for
most users of 1-2-3 a rare  event.  If the commands in the main
menu of 1-2-3 are listed  in order of predicted frequency of use,
why does the  "System" command "precede" the "Quit" command?  In
fact, what does it mean to say "precede"?  "Q" neither  precedes
nor follows "S" on the keyboard.  "System"  precedes "Quit" as one
moves from left to right within the  main menu using the "right
arrow" key.  It is also true that  "Quit" precedes "System" as one
moves from right to left  using the "left arrow" key.  The 1-2-3
menus are circular (in jargon, they have a "wraparound" feature) --
moving the  cursor one step beyond the "end" of the menu causes the
cursor to come to rest at the opposite "end."  Thus, from  the
default cursor position on teh "worksheet" command,  arguably
"Quit" precedes "System."

For all these reasons, any ex ante prediction of frequency of use
is itself of limited usefulness.  It follows that the  arrangement
of menu commands according to predicted  frequency of use is not a
major functional limitation on the  number of arrangements of menu
commands.

The menu command hierarchy is an integral part of the
functionality of the macros and of the keystroke sequences.
Nevertheless, the fact that the macros and keystroke  sequences
incorporate the menu command hierarchy into  their functionality
does not remove the menu command  hierarchy from the scope of
copyright, if otherwise subject  to copyright protection.
Moreover, the macros and  keystroke sequences are protected to the
extent that it is  necessary to infringe a copyright to use them.
Of course, as I have stated above, it was not necessary to copy
expressive aspects of the macro language and keystroke sequences to
copy their function.

3.  The Third Step.

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."

The question posed by this element of the copyrightability  test is
whether the creativity involved in establishing the  menu commands,
menu command hierarchy, macro  language, and keystroke sequences
was more than trivial.   No reasonable jury could find otherwise.
As Borland has  itself acknowledged, at least implicitly, Lotus
1-2-3 was a  dramatic change and improvement over what was
available  on the market at the time Lotus was created.  Although
a  large portion of that improvement relates to the functional
aspects of Lotus 1-2-3, the features that I have now  concluded are
expressive also played a substantial role.

Borland has maintained that those features are part of an
uncopyrightable system (an argument I now reject for the  reasons
stated), but Borland has never argued that they  were trivial, nor
could it do so persuasively.

F.  Ashton-Tate v. Ross

Borland argues that the Ninth Circuit's decision in Ashton- Tate
Corp. v. Ross, 916 F.2d 516 (9th Cir. 1990), aff'g 728  F. Supp.
597 (N.D. Cal. 1989 (militates in favor of a  conclusion that the
menu commands and command  hierarchy are not copyrightable.  The
Ninth Circuit held that a list of menu commands was not
copyrightable for reasons stated by the district court.  The
district court, in turn, held that a document bearing "a list of
labels for user commands, many of which are common commands that
were already available on other software programs" was not
innovative or novel.  Ashton-Tate Corp. v Ross, 728 F. Supp. 597,
602 (N.D. Cal. 1989).  The relevance of that conclusion to this
case is in some doubt in v iew of the fact that Lotus 1-2-3 is one
of the programs on which the commands were already available.
There is no evidence in this case that the commands available in
1-2-3 where common commands at  the time of Lotus' authorship.

The district court also held that there was nothing  innovative in
the order in which the commands were listed.   Id.  Borland has
submitted in this case a copy of the list of commands at issue in
Ashton-Tate.  Borland's Mem. in  Supp. of Cross-Mot. for Summ. J.
(Docket No. 141) at 85- 86.  That list contains well under one
hundred commands  scrawled on one sheet of paper segregated into
under one  dozen functional groups.  In form, detail, arrangement,
and  content, it bears almost no resemblance to the hundreds of
menu commands arranged in Lotus' dozens of menus.  The  relevance
of the court's conclusion to the case at bar  extends, if at all,
only to the copyrightability of subelements of the 1-2-3 menu
hierarchy, and depends upon factual inquiries that remain to be made.

Finally, the court concluded that in the absence of any
contribution to the user interface other than the command list
(including, especially, any contribution to the program  code), the
contribution of the command list was a mere  contribution of
ideas.  As Judge Learned Hand observed,  however, and many others
have agreed, decisions in which a  line is drawn between idea and
expression have an ad hoc  character.  They tend to be fact
sensitive and case specific.

The absence of other copyrightable contributions in Ashton- Tate
may have caused the court to reach a determination in  that case
with respect to the copyrightability of menu  commands that it
might not have reached had the defendant  contributed other
copyrightable elements.

In the interest of completeness and candor, I note as well  that
courts in one circuit are not bound by the decision s of other
circuits.  I view my obligation as one of determining the law
manifested in the Copyright Act as it would be interpreted and
applied to this case by the Court of Appeals for the Firs t Circuit
and the Supreme Court should this case reach either or both of
those courts.

IV.  Substantial Similarity (Illicit Copying)

For the reasons stated in Part II, above, and supplemented  briefly
here, I cannot conclude that Borland has copied  substantially the
whole of the Lotus 1-2-3 user interface.

In Paperback, although witnesses called attention to "look  and
feel" as a descriptive metaphor, counsel for Lotus did  not base
their contentions on this metaphor and the court in  its decision
did not rely upon it.  740 F. Supp. at 62-63.   One reason the
metaphor did not seem useful in that case is  that the concept of
"look and feel" relates more to  substantial similarity (in the
mixed law-fact sense) than to  copyrightability.  In Paperback, so
much of the 1-2-3 user  interface had been copied that it was not
difficult to resolve questions of substantial similarity in the
mixed law-fact sense.  The difficult questions in that case
centered only around copyrightability of the user interface.

Paperback involved an appropriation by the defendant of the
entire "look and feel" of 1-2-3.  In this case, Borland has
appropriated, to a great extent, the "feel" of the 1-2-3 user
interface and only to a lesser extent the "look" of 1-2-3. Indeed,
Borland has designed an interface that in many  respects looks
substantially different from the 1-2-3 user  interface.  Borland's
colors and pull-down menus are but  two examples of the differences
in "look" in the Quattro  programs.  Of course, the menu commands
and the menu  command hierarchy look the same in both programs.
the "feel," on the other hand, of the emulation modes of the
Quattro programs depends in large part on the keystroke  sequences
one enters to perform spreadsheet operations.   One enters the same
keystroke sequence to perform the  same spreadsheet operations in
both 1-2-3 and Quattro  Pro's emulation mode.  They feel the same.
Thus, an  experienced user accustomed to the 1-2-3 interface needs
to  look seldom, if at all, to achieve the desired result in the
emulation modes of the Quattro programs.

This conclusion may be expressed in a more straightforward  way
without use of any part of the "look and feel  metaphor."  Lotus is
entitled to a judgment of infringement only if Borland appropriated
copyrightable elements of 1-2- 3 and those copyrightable elements,
taken together, make  relevant portions of Borland's program
substantially similar  to 1-2-3.  The evaluation of substantial
similarity (in the  mixed law-fact sense) therefore depends upon
determining  what copyrightable elements of the Lotus 1-2-3 user
interface Borland copied.  Even if I assume, however, that  Borland
did not copy the long prompts, and that some  aspects of the menu
commands, menu command hierarchy,  macro language, and keystroke
sequences of 1-2-3 are not  copyrightable, I conclude that no
reasonable jury, applying  the law, could find other than that the
Quattro programs  infringe 1-2-3.  That is, a reasonable factfinder
must  conclude that the Quattro programs derive from illicit
copying.  The emulation interfaces are substantially similar  in
the mixed law-fact sense to the Lotus 1-2-3 user  interface.
(Returning to the metaphor, one may say that is  why they "feel"
the same.)

I am not able to determine on motion for summary  judgment the
precise scope of Borland's infringement.  Genuinely disputable
factual questions exist that may affect  the scope of substantial
similarity and therefore the nature  and scope of the remedies for
infringement in this case.   Nevertheless, it is clear that Borland
has infringed the 1-2-3 user interface, at least in substantial part.

Lotus argues that questions of substantial similarity in the  mixed
law-fact sense ought not to be put to a jury.  I  understand
Borland to contend otherwise (though it does  not explicitly
address the point in its latest submissions,  perhaps because the
Memorandum and Order of march 20  may have left the impression that
I would submit such  questions to a jury if a genuine dispute of
fact existed).  The scope of issues to be put to the jury is
significantly reduced by my ruling that the emulation modes of the
Quattro  programs have a core that is substantially similar to
1-2-3.   Borland's request that I put questions of fact concerning
substantial similarity in the mixed law-fact sense to a jury  other
than the one I empanel to hear evidence regarding  substantial
similarity in the evidentiary sense is now moot.

Borland's Quattro programs infringe on Lotus 1-2-3  because the
extent of copying of copyrightable elements of  1-2-3 renders the
Quattro programs substantially similar to  1-2-3.  If the jury
finds that Borland also copied other  copyrightable elements, then
the Quattro programs will, as a  matter of law, be even more
substantially similar to 1-2-3;  that is, the scope of Borland's
infringement will necessarily be broader.  For example, if the jury
finds that Borland copied the Lotus 1-2-3 long prompts, and if I
conclude that the long prompts are copyrightable expressive
elements of 1-2-3, those two determinations, without any further
finding that Borland's long prompts are substantially similar to
Lotus' long prompts in the mixed law-fact sense, support a
conclusion that Borland's Quattro programs infringe the long
prompts of 1-2-3.  There would be no need to ask separately whether
the copying of the long prompts would alone, or in combination,
render the Quattro programs substantially similar to Lotus 1-2-3.
Substantial similarity (in the mixed law-fact sense) is determined
by compar ing the copied copyrightable elements of the infringing
work all together with the copyrighted work as a whole.  I have
already determined that this comparison, even if the long prompts
were not copied, requires a determination of infringement.

In reaching these conclusions, I once again reject Borland's
contention that it is entitled to place in evidence at trial all
the elements of Quattro Pro that were not copied from  Lotus.
Despite Borland's otherwise detailed (if not precisely accurate)
explication of the Computer Associates case, Borland has failed to
acknowledge an express conclusion of the Second Circuit that is
contrary to Borland's position:

[I]n some cases, the defendant's program structure  might contain
protectable expression and/or other elements  that are not found in
the plaintiff's program.  Since it is  extraneous to the allegedly
copied work, this material would  have no bearing on any potential
substantial similarity  between the two programs. . . .
Furthermore, by focusing  the analysis on the infringing rather
than on the infringed  material, a court may mistakenly place too
little emphasis on a quantitatively small misappropriation which
is, in reality, a qualitatively vital aspect of the plaintiff's
protected expression.

Computer Assocs., No. 92-7893, slip op. at 47-48, 1992  U.S. App.
LEXIS 14305, at *64-*65.

That Borland, in developing the Quattro programs, has  added
functional and expressive elements that do not exist  in 1-2-3 is
irrelevant in view of the fact that Borland copied virtually the
whole menu command structure of 1-2-3 into its emulation
interfaces.  Borland's additions have caused some variation in the
manner in which the elements taken from 1-2-3 are expressed in the
Quattro programs.  For  example, in the main menu, the "View"
command, a  command not present in the main menu of 1-2-3, is
interposed between the "System" and "Quit" commands.  A
decisionmaker in this case (whether judge or jury) must  ignore the
added expression to the extent that it does not  change the
expression Borland copied from Lotus.  I  conclude that no
reasonable jury could find for Borland that  Borland did not take
the menu commands, menu command structure, macro language, and
keystroke sequences  substantially as they were.

V.  Borland's Defenses

Lotus has renewed its motion for summary judgment that  Borland's
affirmative defenses fail.  Borland has raised three affirmative
defenses in this action:  waiver, laches, and estoppel.  The issue
of Borland's affirmative defenses was raised and fully briefed by
the parties in conjunction with their prev ious motions for summary
judgment.  Because I  denied both motions on other grounds by
Memorandum and  Order of March 20, there was no need to consider
Borland's  affirmative defenses at that time and I did not do so.
Having concluded that Borland has infringed  Lotus'  copyright in
1-2-3, I proceed to address Lotus' motion for  summary judgment on
Borland's alleged defenses.

A.  Waiver

The parties agree that to succeed in its defense of waiver, Borland
must demonstrate that Lotus voluntarily and  intentionally
relinquished its right to pursue Borland in this action.  Borland's
argument, however, is based upon  Borland's "state of mind" and
Lotus' alleged concealment of  Lotus' "state of mind."  Borland has
not presented any  evidence that Lotus manifested to either Borland
or the  world that it would not pursue Borland in this action.
Borland's allegation that Lotus sought to play down the  import of
the Paperback litigation in its public relations  campaigns by
stating that Paperback involved "99% clones"  does not amount to
waiver, even if proved.  Therefore, I  grant Lotus' motion for
summary judgment on the defense  of waiver.

B.  Laches

The parties agree that to succeed in its laches defense,  Borland
must demonstrate that Lotus delayed unreasonably  in bringing this
action and that as a result Borland suffered undue prejudice.
Borland argues that it expended $18 million developing the Quattro
programs, at least in part because, by not suing earlier, Lotus led
Borland to believe that Lotus would not sue.  Borland has admitted
that it would have developed a spreadsheet program in any event  at
substantial cost.  Nevertheless, Borland argues that the  costs of
releasing the entire spreadsheet constitute  prejudice.  This
argument is plainly without merit.

Borland also argues that its decision to offer a 123- compatible
interface is hard to undo and that it has  expended large sums in
advertising keystroke and macro  compatibility of the Quattro
programs with Lotus 1-2-3.

Without deciding at this time issues regarding alleged undue
delay, I note that the question of prejudice may depend  upon
determinations yet to be made regarding the  appropriate remedy or
remedies for the kind and scope of  infringement that has occurred
in this case.  I take note also that precedents on laches derive
from equity, and I may rule at trial that evidence admissible only
in relation to equitable defenses must be received out of the
presence of the jury, or in a later phase of trial.  I deny Lotus'
motion for summary judgment on the laches defense without prejudice
to Lotus' renewing its arguments in support of the motion at a
later  date.

C.  Estoppel

Estoppel, like laches, has its origins in equity.  Without  finally
ruling on the matter at this time, I take note that it may be
appropriate either to receive evidence bearing solely on estoppel
(or only on estoppel and laches) out of the presence of the jury,
or at a phase of trial after that in which issue s relating to the
scope of infringement are finally resolved.

Borland argues that Lotus' intentional concealment of its  belief
that the Quattro programs infringe 1-2-3 is a ground  for
estoppel.  Borland's argument rests on a premise  borrowed from an
explicit statutory requirement in the law  of patents, that Lotus
owed a duty to Borland to notify  Borland of its infringement.  The
law of copyright has not  imported that requirement.  Thus,
Borland's arguments that Lotus concealed its intentions and that
Borland did not and  could not have known Lotus would sue are
meritless.   Lotus 1-2-3 is copyrighted.  Borland copied
copyrightable  elements of 1-2-3 that constitute a substantial part
of that  program.  Lotus has sued, and Borland is liable.

I reject as well Borland's argument that Lotus' delay in filing
suit is a ground for estoppel.  That argument is merely a
repetition of the argument Borland raised in support of its  laches
defense.

Borland's identification of the alleged Lotus  misrepresentation on
which Borland relied to its detriment is less than pellucid.
Borland refers to affirmative indications by Lotus that it would
not sue, but fails to identify what indications Borland alleges, if
any, other than comments made for public relations purposes and
reported in trade publications and position papers.  Borland says,
for example, that Lotus characterized the Paperback litigation as
involving "99% clones."  Borland argues that the Quattro programs
are not clones of 1-2 -3 and that it reasonably came to believe,
therefore, that Lotus would not sue.  If this is the best argument
Borland can advance for justifiable reliance, the likelihood that
it can present an issue on estoppel for a factfinder (judge, if
this is tr eated as an issue in equity, and jury otherwise) seems
very remote.  Though I will not grant Lotus' motion for summary
judgment at this time, the Order Regulating Trial in this case will
require evidence bearing only on estoppel (or on estoppel and l
aches) to be proffered first outside the presence of the jury.

VI.   Conclusion

It is my conclusion that, as a matter of law, Borland's  Quattro
products infringe the Lotus 1-2-3 copyright  because of (1) the
extent of copying of the "menu  commands" and "menu structure" that
is not genuinely  disputed in this case, (2) the extent to which
the copied  elements of the "menu commands" and "menu structure"
contain expressive aspects separable from the functions of  the
"menu commands" and "menu structure," and (3) the  scope of those
copied expressive aspects as an integral part of Lotus 1-2-3.
Nevertheless, I conclude that a jury trial is essential before
final disposition of this case because the scope of relief
available will depend in part on whether the jury finds for Lotus
on disputed factual contentions that the copy g of separable
expressive elements of the Lotus 1-2-3 user interface into the
Quattro programs was greater than the minimum essential to
constituting a substantial part of the Lotus 1-2-3 work.

In summary, Lotus' Motion for Summary Judgment is allowed in part
and denied in part, as stated in the foregoing  rulings.  Borland's
motion for summary judgment is denied.

Having reached this conclusion, I will state these rulings in the
form of Determinations of Undisputed Facts and  Conclusions of Law
incorporated as a section of draft Order  Regulating Trial, to be
distributed to counsel separately  from this Memorandum and Order.
An Order Regulating  Trial will be entered at or after the
Pre-Trial conference  scheduled for September 23, 1992.  Each party
is invited to  submit, by Memorandum filed on or before September
1,1992, proposed modifications, deletions, and additions to  the
draft Order Regulating Trial.  Responses may be filed on  or before
September 15, 1992.

ORDER

For the foregoing reasons, it is hereby Ordered:

(1)     Plaintiff's Renewed Motion for Summary Judgment  on
Infringement (Docket No. 167) is granted in part and  denied in part.

(2)     Borland's Motion for Leave to Submit Post-hearing
Memorandum (Docket No. 185) is allowed.

(3)     Borland's Motion for Leave to Submit Supplemental
Memorandum Re: Additional Authority (Docket No. 189) is  allowed.

(4)     Borland's Renewed Motion for Summary Judgment  is denied.



Robert E. Keeton
United States District Judge

* Lotus argues that Borland has not filed a renewed motion  for
summary judgment.  There is no docket notation of  Borland's
renewed motion, nor has such a motion been  physically located by
the court.  However, several of  Borland's submissions are
submitted in support of  "Borland's Renewed Motion for Summary
Judgment."  In  this circumstance, and because I conclude that I
must in any  event dey such a motion, I will consider Borland's
"motion"  on its merits.