ftp.ee.pdx.edu/2014.02.ftp.ee.pdx.edu.tar/ftp.ee.pdx.edu/pub/lpf/borland-amicus-brief

Text File | 1992-11-03 | 24KB | 423 lines

 Final Draft of the Law Professor Amicus Brief for the Lotus v.
                          Borland Case


     Ralph S. Brown, Professor Emeritus, Yale Law School
     Stephen L. Carter, Professor, Yale Law School
     Rochelle C. Dreyfuss, Professor, New York Univ. Law School
     Peter A. Jaszi, Professor, American Univ. Law School
     Dennis S. Karjala, Professor, Arizona State Univ. Law School
     David L. Lange, Professor, Duke University Law School
     Peter S. Menell, Acting Professor, Univ. of California at Berkeley
     L. Ray Patterson, Professor, Univ. of Georgia Law School
     Jerome H. Reichman, Professor, Vanderbilt Law School
     Pamela Samuelson, Professor, Univ. of Pittsburgh Law School
     Lloyd L. Weinreb, Professor, Harvard Law School


     I.   Purposes of the Brief

     This brief amicus curiae does not address the merits of the
copyright dispute 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 court's 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).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.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 to Selden had
he claimed the system directly as a protectable element of the
work.3  Yet indirect protection of the system would have been the
result if the Court had construed copyright's reproduction right
as giving Selden 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," for example, 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 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 than 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 full 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.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 than 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 to
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.--,
111 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

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 functions 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. --, 111 S.Ct. 1282 (1991)
(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).

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.

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.

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.