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NLWJC - Kagan
Counsel - Box 032 - Folder 003
Lotus v. Borland [7]
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the commands were already available. There is no evidence in
this case that the commands available in 1-2-3 were 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. [d. Borland has submitted in this case a copy of the list of commands
at issue in Ashton-Tate. Borland's Mem. in SUpp. of CrossMol. 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 decisions 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
First 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 Quallro 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
Quanro programs.
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This conclusion may be expressed in a more straight·
forward 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 con·
c1ude that no reasonable jury, applying the law, could find
other than that the Quallro programs infringe 1·2·3. That is,
a reasonable factfinder must conclude that the Quallro pro·
grams 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 judg·
ment 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 under·
stand 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 Quallro programs have a core that
is substantially similar to I ·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 eviden·
tiary sense is now moot.
Borland's Quallro programs infringe Lotus 1·2·3 because
the extent of copying of copyrightable elements of 1·2·3 reno
ders the Qualtro programs substantially similar to 1·2·3. If the
jury finds that Borland also copied other copyrightable ele·
ments, then the Quallro programs will, as a mailer of law, be
even more substantially similar to 1·2·3; that is, the scope of
Borland's infringement will necessarily be broader. For exam·
pie, if the jury finds that Borland copied the Lotus 1·2·3 long
prompts, and if I conclude that the long prompts are copy·
rightable expressive elements of 1·2·3, those two determi·
nations, without any further finding that Borland's long
prompts are su bstantially similar to Lotus' long prompts in
the mixed law·fact sense, support a conclusion that Borland's
Quallro 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
Quallro programs substantially similar to Lotus 1·2·3. Sub·
stantial similarity (in the mixed law· fact sense) is determined
by comparing 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 accu·
rate) explication of the Computer Associates case, Borland
has failed to acknowledge an express conclusion of the Sec·
ond 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 wor,j(, this material
would have no bearing on any potential substantial sim·
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ilarity 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., 1992 WL 139364, at *22, 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 JJorland 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 12-3 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 exttnt 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 previous 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,
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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 wai ver,
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 Quallro 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
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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
eSloppel (or only on estoppel and laches) out of the presence
of the jury, or at a phase of trial after that in which issues
relating to the scope of infringement are finally resolved.
Borland argues that Lotus' intentional concealment of its
belief lliat 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 la ..... 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 copynghted. Borland copied copyrightable elements of 1-2-3 that
constitute a substantial part of that program. Lotus has sued,
and Borland is liable.
1 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
pell~cid. 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
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relations purposes and reported in trade publications anI! position papers. Borland says, for example, thai Lotus characterized the Paperback litigation as involving "99% clones."
Borland argues that the Quattro programs are not clones of I2-3 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 Uudge, if this is
treated 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 laches) 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
(I) 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 copying 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 Con-
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elusions of Law incorporated as a section of a 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 I. 1992. proposed
modifications. deletions. and additions to the draft Order Regulating Trial. Responses may be filed on or before September
15.1992.
UNITED STATES DISTRICT COURT
D. MASSACHUSETTS
Civ. A. No. 90-11662-K
March 20. 1992
LOTUS DEVELOPMENT CORPORATION.
Plaintiff.
-v.BORLAND INTERNATIONAL. INC.,
Defendant.
James C. Burling, Jeffrey B. Rudman. Hale & Dorr, Boston.
Mass .• Henry B. Gutman. Kerry L. Konrad, O·Sullivan. Graev
& Karabell. New York City. for plaintiff·
Laura Steinberg. Sullivan & Worcester. Boston, Mass.,
Lynn H. Pasahow. McCutchen. Doyle. Brown & Enersen. San
Francisco. CaL. David L. Hayes. Fenwick & West. Gary L.
Reback. Wilson. Sonsini. Goodrich & Rosati. Mitchell Zimmerman. Fenwick & West. Palo Alto. Cal.. Peter Erich Gelhaar. Donnelly. Conroy & Gelhaar. Boston. Mass .• for
defendant.
MEMORANDUM AND ORDER
KEETON. District Judge.
In this civil action. the plaintiff. Lotus Development Corporation ("Lotus"). seeks damages and equitable relief for
alleged infringement by defendant. Borland hiternational. Inc.
("Borland"). of the Lotus copyright in its computer software
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program, Lotus 1-2-3. This is the same copyright for the
infringement of which Lotus has obtained relief under this
court's decision in Lotus Dey. Corp. y. Paperback Software
[nt'I, 740 F.Supp. 37 (D. Mass. 1990) (holding that Paperback's VP Planner was an infringing software product).
Lotus contends that on undisputed facts Borland's Quattro
and Quattro Pro (herein, collectively, the "Quattro programs")
are likewise infringing. Borland responds that its products are
materially different from both Lotus 1-2-3 and VP Planner
and that the court should determine on undisputed facts that
the Quattro programs do not infringe the Lotus copyright.
Borland argues that this result follows under the rules and
standards of law applied by this court in Lotus y. Paperback.
In the alternative. Borland contends that this court should
reconsider its rulings of law in the Paperback case and now
hold that the elements of Lotus 1-2-3 it determined previously
to be copyrightable are not copyrightable. Also, Borland contends that in any event it has valid defenses that Paperback
did not have:
Pendfng before the court are cross-motions for summary
judgment, fully briefed and with factual submissions complete
except for confidential materials to be presented to the court
pursuant to a stipulation and protective order.
For the reasons explained in this Memorandum, I conclude
that neither party's motion is supp0rled by the record now
before the court.
The primary contention of Lotus that Borland copied
the Lotus user interface as a whole fails because there is a
genuine dispute of fact as to whether Borland did so. Borland's primary contention that it is entitled to a summary
judgment on copyrightability fails on legal grounds for
reasons explained in Part VI of the Memorandum.
Each party has advanced alternative contentions for summary judgment. Each of the submissions before me, however,
fails to meet the movant's burden of identifying both a clearly
stated legal theory and a clear statement of undisputed facts
sufficient to demonstrate an entitlement to summary judgment. In these circumstances, I conclude that it is appropriate
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to deny the cross-motions for summary judgment. Exp~icitly,
however, I do not preclude the filing of another mOll on by
either party if one can be presented consistently with the rulings stated and explained in this Memorandum.
I. Redacted Submissions
Redacted submissions (Docket Nos. 141 and 147 and certain affidavits, declarations, and exhibits) now before the
court were filed pursuant to this court's practice (for the protection of parties, counsel, and court personnel fro~ risks of
inadvertent disclosure) not to allow protected materials to be
fi led with the Clerk before the judge (not any other person
acting under a delegation of authority) has approved in writing the specific filing.
. .
In this instance, I have concluded that the descnptlOn of the
protected materials, appearing in the redacted filings, is sufficient for me to determine that they are not material to any of
the rulings stated and explained in this Mem~randu.m. If
counsel think otherwise, however, they may, with notIce to
the court and opposing counsel, bring the protected materials
to the next scheduled conference to be presented to the court
for examination during that conference. In light of this ruling,
the parties' motions regarding the submission of confidential
documents (Docket Nos. 140, 156, and 160) are dismissed as
moot.
II. Disposition of the Cross-Motions
for Summary Judgment
This court held in Paperback that the 1-2-3 user interface,
taken as a whole, was copyrightable. That ruling was never
appealed or vacated and continues to have the lim!ted yrecedential force of a district court decision. The applicabIlity of
that precedent to this case is disputed, however, because Borland contends Ihat its allegedly infringing products are materially different from VP Planner (the computer work involved
in Paperback). VP Planner has been described, both in and
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outside this court, as an imitation (or look-alike, or clone) of
1-2-3. The conclusion that the user interface of 1-2-3, as a
whole, was copyrightable was outcome determinative as to a
computer work like VP Planner because, without dispute, the
1-2-3 user interface as a whole was copied. Lotus has maintained, however, both before this court and elsewhere that
there is a distinction between imitations of 1-2-3 and other
products such as Microsoft Excel.
In the present case, unless other issues are dispositive, it
will be necessary to determine on which side of an unmarked
boundary, between imitations of 1-2-3 and products such as
Excel, the Quattro programs fall. I cannot determine on the
record before me that the "1-2-3 interface" (also called the
"emulation interface") of the Quauro programs is indisputably an imitation of the 1-2-3 user interface. Thus, for
Lotus to meet its burden of showing entitlement to a summary
judgment of infringement it must (a) identify expressive elements in 1-2-3 that were indisputably copied in the Quattro
programs, {lJj establish that those expressive elements, either
separatoly or together, are as a matter of law copyrightable,
and (c) establish that the copied expressive elements of the
Quattro programs' emulation interfaces are substantially simi lar to copyrightable elements of the 1-2-3 interface.
The conclusion that the user interface as a whole is copyrightable (which this court reached in Paperback) does not
resolve the further questions that may now have to be
resolved regarding the copying and copyrightability of individual parts or a sum of parts less than the user interface as a
whole. The Lotus motion and supporting submission fail to
focus precisely, even in the alternative, any claim of copyrightability and undisputed copying of something less than the
user interface as a whole. In these circumstances, having concluded that the claim of copying the user interface as a whole
has not been demonstrated, I must conclude also that Lotus
has failed to demonstrate it is entitled to summary judgment.
Similarly. Borland has failed to demonstrate support for its
contention that. even if it copied something from 1-2-3. nothing Borland copied was copyrightable. As far as I am now
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able to determine, a factfinder may find on disputed evidence
that Borland copied the 1-2-3 user interface as a whole. I have
previously determined. and as explained in this Memorandum
now adhere to the view, that the 1-2-3 user interface as a
whole is copyrightable. Moreover, the present record suggests
that a factfinder surely could find that Borland copied some
expressive elements of the 1-2-3 user interface. The outcome
of this case may depend on a more precise focus than Borland
has presented as to what elements Borland copied and
whether one. or more, or some set or sets of those elements
are copyrightable.
One effective way of focusing contentions and considering
whether they present genuine disputes of fact that are material under the court's resolution of contested issues of law is
to consider how any fact questions might be framed for the
factfinder's consideration. Especially is this so when a
demand for jury trial has been filed. Questions to be submitted to the jury must at some point during full preparation for
trial be framed precisely. The trial judge and trial lawyers
may well commence this task early, to aid as well the focusing of arguments on motions for summary judgment. A lawyer
who contends that a genuine dispute exists as to some material fact should be able to frame clearly a "written question! J
susceptible of categorical or other brief answer," proposed for
use in a "special verdict," Fed.R.Civ.P. 49(a). If, when challenged to do so, counsel cannot state precisely any proposed
question of fact that is disputed and material, summary judgment is almost certainly appropriate. If. on the other hand.
counsel can frame even a single disputed and material question of fact. summary judgment is inappropriate.
On the present submissions. I am not able to conclude that
either party has met its burden of showing a basis for summary judgment in its favor. I therefore deny the motions at
this time: however. I conclude that it is appropriate to allow
the parties an immediate opportunity to focus their arguments
more precisely. on the chance this may lead to disposition
without the high costs of trial. and in any event will better
focus issues for trial if a trial is necessary. Therefore. I deny
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the motions now before me, but will allow each party, on the
schedule stated below, to file a new, better focused motion if
the party concludes it can surmount the serious obstacles
identified in this Memorandum.
The claims and defenses in dispute in this case present
issues of law and issues of fact that are independently complex. The relationships among the law and fact issues dramatically enhance complexity. A jury demand and the
reSUlting need for clear and explicit explanations to jurors of
the law they need to understand in order to identify and
resolve material disputes of fact produce still more consequences of significance, and perhaps more complexity as
well. Complexities and their consequences have significant
implications for fundamental issues of fair adjudication. They
present also some pragmatic issues of case management in
both pretrial and trial proceedings. The Order entered at this
time is aimed at creating a context in which the parties and
their attorneys will have incentives to use their adversary presentations in ways that will better focus and illumine issues
for the decislonmakers. judge and jury, and will save the parties. their counsel. and the public from needlessly excessive
litigation costs. Suggestions of counsel in aid of this aim are
invited and encouraged.
III. Entanglement of Law and Fact as to
Copyrightability and Substantial Similarity
A. Basic Methods of Separating Law and Fact
In general, an issue of law is decided by a court-not by a
jury in a jury trial and not by a trial judge as factfinder in a
nonjury trial. Also. in general if reasonable persons can differ about how a fact question should be decided on the evidence received in the trial. the jury decides it in a jury trial.
and the jury decision is final; in a nonjury trial, the judge as
factfinder decides, and the decision is subject to review under
a deferential standard. Fed. R.Civ.P. 52(a) (findings sustained
unless "clearly erroneous").
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These clear and straightforward rules sometimes require
supplementation, however, when the issues of law and fact are
"mixed." If a court can clearly separate law from fact. it may
use either of two basic methods of submitting questions to a
jury. One method asks the jury to answer a mixed law-fact
question; the other, a strictly factual question.
Under the first method. the court submits a combined lawfact question to the jury. To use this method properly the
court must first decide the issues of law so it can give the jury
clear instructions on the law. The jury's answer, if they discharge their responsibility well and truly, decides only fact
questions even though their answer is in form an answer to the
mixed law-fact question.
This first option may be used either for a "special verdict"
under Rule 49(a). or for a "general verdict accompanied by
answers to interrogatories" under Rule 49(b) of the Federal
Rules of Civil Procedure.
The second option open to the trial judge is to frame "special questions" for the jury under Rule 49(a), or "interrogatories" under Rule 49(b), that ask only fact questions. not
mixed law-fact questions.
A charge that directs the jury to return only a general verdict cannot use the second method because the general verdict
is necessarily a mixed law-fact finding (the type required
under the first option). Thus. a verdict "for the plaintiff' or
"for the defendant" does not provide any basis for a reasoned
determination by the court that the verdict rests on findings of
fact supported by evidence and not on a different view from
that of the court about the legal elements of mixed law-fact
determinations.
If only a "special verdict" under Rule 19(a) is to be
returned. and the questions are well framed. the jury need not
have any explanation of the legal rule or rules the court will
apply to determine what judgment to enter in view of the
jury's findings. The judge may choose to explain anyway. but
giving the explanation is a matter of choice rather than necessity.
When two or more questions of fact must be submitted. the
court may submit one or more questions by one of these meth-
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ods and one or more by the other. Also, the court may use a
mixture of general verdict and "interrogatories," Fed. R.Civ.P.
49(b).
When issues of law and fact are easily separable, the court,
when it perceives a need to do so to avoid jury confusion or
bias, may use a "special verdict" form under Rule 49(a) that
strictly submits fact questions; also, the court may cleanly
separate tbe hearings before the court on the legal issues from
those before the jury on the fact questions. A key purpose of
trying a case in this way is to reduce the risk that the jury will
be improperly influenced by evidence and arguments not
admissible in relation to the strictly factual issues submitted
to them.
When law and fact are not easily separable-regardless of
how deep the entanglement may be-it nevertheless remains
exclusively the responsibility of the court to decide the legal
questions.
Ordinarily, it is the responsibility of the factfinder (jury or,
in a nonjury_ !;ase, trial judge) to decide the fact questions, but
exceptions exist, as will be noted in Parts IV, VI, and VII
below.
As part of its prima facie case, a plaintiff must prove substantial similarity between copied copyrightable elements of
the copyrighted work and expressive elements of the allegedly
infringing work. "Substantial similarity," as used in this statement, indicates a degree of similarity between the allegedly
infringing material and what is copyrightable (that is, the
copyrightable part or parts). It is not enough for a plaintiff to
prove great similarity of the allegedly infringing work to
uncopyrightable parts of the copyrighted work.
The similarity to copyrightable parts, it is said, must be
such that an "ordinary observer" would find that there has
been "unlawful appropriation." Concrete Machinery Co. v.
Classic Lawn Ornaments, 843 F.2d 600, 608 (I st Cir.1988).
Thus, the copying must be extensive enough to be "substantial." This is "substantial similarity" in a mixed law-fact evaluati ve sense. Thus, the test for determining whether there is
"substantial similarity" in this sense involves not merely a
ministerial task of measuring by a yardstick or word count,
but a judgmental task of weighing the quantitative measurements along with other relevant factors and coming to an
overall evaluation that applies a legal test for "unlawful
appropriation" to the facts.
The plaintiff must also demonstrate copying of the copyrighted work. Unlike patent law, copyright law never determines that an infringement occurs merely because two works
are similar, or even identical, so long as the works are independently created. Therefore, to be successful, a plaintiff
must demonstrate that the defendant had access to plaintiff's
work. Such access is not disputed in this case. Nevertheless,
to prove copying, plaintiff must show more than access.
Copying can, of course, be proved directly, and there is some
direct evidence of copying in this case. However, once access
is proved, copying can also be proved by demonstrating "substantial similarity." In this context, "substantial similarity"
simply means sufficient similarity of a given element of a
work to an element in the allegedly infringing work to support
a reasoned inference that mllre probably than not the element
was copied from the copyrighted work. This. is not similarity
B. Problems of Entanglement
In order to use a strictly factual special verdict form, a
court must cleanly separate law from fact. Not all mixed
questions of law and fact can be easily separated. Indeed,
there may be instances in which law and fact are so deeply
intertwined that, at least as a practical matter if not strictly in
principle as well, total separation cannot be achieved. In
copyright cases, is "substantial similarity" such an instance?
Is "copy-rightability" such an instance?
I. Substantial Similarity
"Substantial similarity" is not consistently used with a single, settled meaning. In the law of copyright this phrase is
used in at least two distinct senses. For this reason, the use of
the term "substantial similarity," absent some contextual
guidance, may be very misleading.
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in a mixed law-fact sense that includes being similar enough
to constitute "unlawful appropriation." Rather, the elements
of the copyrighted and allegedly infringing work must be
shown to be substantially (i.e., notably) similar in a purely
factual sense. This is "substantial similarity" in an evidentiary
sense. "Substantial similarity" in this sense is one kind of circumstantial evidence of copying.
In this Memorandum, I will try in each instance to indicate
cle~rly (by explicit statement, by context. or by both) to
which usage of substantial similarity I am referring.
2. Consequences of Entanglement
The complexity introduced by the entanglement of law and
fact, bearing on "substantial similarity" (in the mixed law-fact
evaluative sense) and on copyrightability has important consequences, including distinctive problems of adjudication and
case management both during pretrial proceedings and during
trial. Some of these consequences are relevant to the present
case.
-First; ·fashioning appropriate verdict forms and instructions
to the jury is more difficult when law and fact are so entangled that the usual mode of stating an issue is in the mixed
law-fact form.
Second, determining the scope of evidence that is admissible in relation to questions to be decided by the factfinder
(jury or trial judge in a nonjury case) is far more difficult.
Mor~o~e~,. failure of the trial judge to resolve problems of
~dmlssl.bIlJlY, especially in relation to proffered expert opinIon testimony, may substantially impede fair trial because of
risks of jury confusion and the incentives to counsel and
expe~ts to try to influence the jury with arguments on the law
cast I.n the form of opin.ions on the mixed law-fact questions.
Thud, when the applicable law requires the application of
a standard for decisionmaking that is derived from a congres~ional~y ~andated accommodation among conflicting
public policy mterests and thus "reflects a balance of competing claims upon the public interest," Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 431. 104 S.C!. 774,
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783, 78 L.Ed.2d 574 (1984), consequences of the first and
second types are enhanced, sometimes beyond measure. Difficult as the task of applying that balance in particular cases
may be, however. it is not open to a court to ease the task
either by revising that balance. Feist Publications, Inc. v.
Rural Telephone Service Co., _ U.S. _ , III S.Ct. 1282,
113 L.Ed.2d 358 (1991). or by leaving the jury free to revise
that balance. A congressionally mandated balance must be
respected by courts and juries alike.
The mixed law-fact evaluative "substantial similarity" issue
in copyright law inevitably produces the first and second of
these types of consequences, and in particular cases may produce the third as well unless effective measures of judicial
control are used. For example. consider whether or not expert
opinion evidence about the ways in which two computer software programs are similar and dissimilar should be heard by
a jury. One may argue for a negative answer under the authority of Concrete Machinery Co. v. Classic Lawn Ornaments,
Inc., 843 F.2d 600, 608 (1st Cir.1988) (substantial similarity
is to be judged under the "ordinary observer" test "unaided by
expert testimony"). Even if it may be appropriate and useful
to a jury in understanding purely historical facts about characteristics of computer programs to hear expert opinions bearing on historical facts, still opinions that explicitly or
implicitly depend on policy premises inconsistent with the
law (as determined by the trial judge, subject to correction on
appeal) should not be heard by the jury.
Affidav.ts of experts and arguments of counsel before me in
this case illustrate the risks of contentious and potentially
unfair proceedings incident to the strong tendency of witnesses and lawyers to intertwine every statement about factual
similarity with opinions and arguments about what is, or even
should be, the kind of similarity that is legally significant.
These opinions are, of course, opinions on the law. Allowing
a jury to hear them expressed by witnesses and lawyers is
fundamentally inconsistent with the rule that jurors take their
instructions on the law solely from the court.
I Will return to the issue of "substantial similarity" inihe
mixed law-fact evaluative sense in Part IV, below.
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3. Copyrightability
Issues of "copyrightability" in computer software programs
present the third type of consequence of entanglement of law
and fact in a dimension so extreme that the problem is appropriately viewed as one different in kind and not merely
degree. This is one reason, though not the only one, for concluding that at least in the present case, and perhaps more
generally, all questions of law and fact bearing on copyrightability of elements of a computer software program are
to be decided by a court, not a jury. That issue is considered
more fully in Parts IV, VI, and VII, below.
IV. Entanglement of Copyrightability
and Substantial Similarity
The complexity of entanglement of issues in this case
extends not only to issues bearing only on copyrightability,
and to iss~ bearing only on substantial similarity in the.
mixed law-fact evaluative sense, but also to the interdependence of copyrightability and substantial similarity.
The point is illustrated by Borland's argument tlJat Borland
is entitled to summary judgment on the issue of copyrightability, Docket No. 14 \, at I (emphasis added), because the
elements of Qualtro and Qualtro Pro that are alleged to be
substantially similar to elements of Lotus 1-2-3 concern only
the way certain parts of the programs function, not copyrightable expressions. Id. at 4-8.
Borland argues that Concrete Machinery, 843 F.2d at 600,
requires that issues of substantial similarity be addressed first,
to determine whether "there are sufficient articulable similarities to justify a finding that the defendant has copied from
the protected work." Borland's Memorandum, Docket No.
141, at 114 (quoting Concrete Machinery, 843 F.2d at 608)
(citing Arnstein v. Porter, 154 F.2d 464 (2d Cir.1946». (In
this argument, one may note, Borland is using "substantia!
similarity" in the evidentiary sense.) Then, Borland argues,
"the court must determine whether the copying is sufficiently
substantial to constitute 'unlawful appropriation' {'illicit
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copying')." Id. at 114 (quoting Concrete Machinery, 8~ F.2d
at 608). (This argument, it may be noted, focuses both on a
strictly factual question about copying and a mixed law-fact
question about whether the copying is sufficient to constitute
"unlawful appropriation.") "Assuming copying of protected
aspects is established, the trier of fact can then asse~s pursuant to the 'ordinary observer' test whether there IS substantial similarity between the protected expression and the
accused work." Id. (quoting Concrete Machinery, 843 F.2d at
609).
The first step formulated in the Concrete Machinery opinion may be perceived as itself composed of two parts-determining what are the "protected aspects of the copyri~h~ed
work" (that is, the "copyrightability" issue) and determmmg
whether there has been copying of one or more of those
aspects. It is not clear that one of these two need precede the
other in an analysis of the evidence and arguments presented
to a court. Indeed, they may be sufficiently interrelated that
in most cases they are best addressed together-a possibility
at least suggested by the First Circuit's combining the two
into the first "step" of its "two-step" test.
In any event, the argument that First Circuit precedent
requires a particular order of analysis of a given problem is
contrary to a substantial body of precedent in the circuit. For
example, the First Circuit spoke quite early to make clear, ~n
the context of discrimination cases, that the factors analYSIS
set forth in McDonnell-Douglas Corp. v. Greer, 411 U.S. 792,
93 S.Ct. 1817,36 L.Ed.2d 668 (1973), is intended as a useful
guideline and not a mandatory straitjacket. See, e.g., Dance v.
Ripley, 776 F.2d 370, 373 (1 st Cir.1985) ("This circuit, along
with other circuits, has rejected the argument that McDonnell
Doug/as and (Texas Dept. of Community Affairs v.l Burdine
(450 U.S. 248,101 S.Ct. 1089,67 L.Ed.2d 207 (1980) 1set
forth a 'rigid, three-step proof process in Title VII cases.' ")
For like reasons, I conclude that the pattern of analysis and
decisionmaking presented in Concrete Machinery is not meant
10 be a straitjacket. Thus, I conclude that the order of addressing the various elements of a prima f~cie c'llse fash.ioned. in
COllcrete Machinery need not be applied to a case m which
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there are compelling practical reasons for a different order of
proceeding.
Perhaps the procedure discussed in Part V, below, fits the
Concrete Machinery model because the "first" step of that
model is itself two·fold, as noted above. In any event, regard·
less of whether the procedure discussed in Part V precisely
fits the Concrete Machinery model, I conclude, for reasons
explained in Part V, that it is appropriate to consider an order
of proceeding in this case that places issues of substantial
similarity (in the evidentiary sense) ahead of issues of copyrightability.
derance of the evidence) that the alleged copying from 1·2·3
occurred. Lotus may do so either directly or circumstantially.
To demonstrate that the copying was illicit Lotus must also
show substantial similarity in the mixed law·fact evaluative
sense and copyrightability of those elements.
Returning to the question posed above (How might issues
involving substantial similarity in the evidentiary sense be
submitted to the jury?) I take note that one option to be con·
sidered is to begin with the less complex issue of copying and
with a broad focus, then moving toward narrower questions
concerning what elements of Quattro or Quattro Pro were
copied from 1·2·3.
Would it be appropriate to frame the first question on a Verdict Form in a way such as this (with a similar question to fol·
low for the other allegedly infringing work)?
.
V. Sharpening the Focus
In this case, if it is determined that neither a motion for
summary judgment nor a motion for directed verdict should
be sustained, how might issues involving substantial similarity (in the evidentiary sense) be submitted to the jury in a
verdict fornr in the trial of this case?
To establish infringement, Lotus must prove, either directly
or circumstantially, that Borland copied. Circumstantial proof
of copying is made by showing access to the copyrighted
work and substantial similarity (in the evidentiary sense). In
the present case, I conclude that a reasonable trier of fact
could find that the Quattro programs' user interfaces were not
copied in their entirety from Lotus 1·2·3. However, because
access is admitted, the record before me contains both circumstantial proof of copying (e.g., all of the commands in the
Lotus 1·2·3 menu structure appear verbatim in the Quattro
programs' menu structures in similar hierarchies) and direct
proof of copying (e.g., Borland named certain files involved
in the 1-2-3 emulation "123.rsc" and "123.mu"). It does not
necessarily follow, however, that a jury must on this record
find that some particular element was copied from Lotus 1-23 rather than being either independently created or copied
from some other source.
For any elements of 1·2-3 that Lotus wishes to argue were
copied, Lotus must demonstrate (either beyond dispute on
motion for summary judgment, or else at trial by a prepon·
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
I
II is not entirely clear that Lotus contents that part (a) or Ques·
tion I should be answered YES, or that Borland contends that a NO
answer to pari (a) would be material ir part (b) were ~nswered YES. Per·
haps the parties will agree. or one will persuade Ihe court. that part (a)
may be omiUcd.
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160a
(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")?
(I) The menu commands
(2) The menu structure
(3) The command sequence
(4) The long prompts
(5) The macro facility
_ _YES
_ _YES
_ _YES
_YES
_YES
_.NO
_ _NO
_ _NO
_NO
_NO
To avoid any misunderstanding, I state explicitly that I have
not determined that the foregoing draft of Question 1 is
appropriate for use in this case. Nor have I determined what,
if any, explanatory instructions should be given to the jury·
along with such a question. Even if a question of this general
type is to be used, I will inyite submissions by counsel of any
different way of framing the question (and associated instructions) and why that different way would be more appropriate.
Of course, counsel are invited to submit additional specific
elements of alleged similarity about which there is dispute.
Also, I do not suggest that all five elements on the present list
ought to be included.
In particular, the term "macro facility" is not adequately
defined in the parties' present submissions and would require
definition. If "macro facility" means some element or characteristic of the user interface distinct from and not including
the menu commands, menu structure, and command sequence,
Question I(c) might be appropriate as drafted. If, on the other
hand, "macro facility" is to be defined in a broader sense that
includes the menu command, menu structure, and command
sequence elements, as well perhaps as the long prompts, but
does not include other aspects of the 1-2-3 interface and for
that reason is not the same as "the user interface as a whole,"
the foregoing draft of part (c) might be replaced by the following parts (c) and (d):
(c)
Do you find that the Lotus 1-2-3 macro facility as a
whole was copied into some part of the Quattro Pro
macro facility?
_ _YES
_NO
(d) Do you find that some part, and, if so, which of the
following part or parts of the Lotus 1-2-3 macro
facility were copied into some part of the Quattro
Pro macro facility?
(I) The menu commands
(2) The menu structure
(3) The command sequence
(4) The long prompts
_YES
_YES
_YES
_YES
_NO
_NO
_NO
_NO
The purpose of including these alternative drafts in this Memorandum is to begin the process of focusing issues more precisely.
.
An advantage of beginning a Verdict Form with a question
of this type on the subject of copying is that findings of the
jury on the various parts of such a question would enable
counsel and the court to focus more precisely on (a) the legal
elements of "substantial similarity" (in the mixed law-fact
evaluative sense) that are material after taking account of the
jury findings, and (b) the legal (and factual, if any) elements
of copyrightability that are material after taking account of
Ihe jury findings. Surely some of the legal and factual issues
thai cannot be dismissed as immaterial before taking account
of Ihe jury findings would be mooted by the findings. For
example, if a jury finds that the emulation interface as a
whole was copied from the 1-2-3 inlerface a~ a whole, copyrightability questions with respect to less of the user interface
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than the whole might be moot. On the other hand, if the jury
finds that neither the emulation interface nor certain individual elements of it were copied from Lotus J-2-3, but certain other elements were copied, the material copyrightability
questions would be limited, others having been mooted.
I have proposed presenting the question to the jury as one
of "copying" rather than "substantial similarity" even though
access is undisputed. I have done so because a mere finding
of "substantial similarity" in the circumstantial evidentiary
sense may be inconclusive on the issue of copying. That is,
even if "substantial similarity" in the evidentiary sense creates a presumption of copying, it may be that the presumption
is rebuttable and that the jury should be so instructed. If so,
Borland might still persuade the jury that the circumstantial
inference of copying has been rebutted by extrinsic evidence
offered by Borland. I do not at this time decide any of the
questions of law suggested in this paragraph.
Consideration may be given to trying Phase One on copying and commencing Phase Two of trial immediately after'
Phase ~ne, and before the same jury, to address any remaining questions that could properly be submitted to the jury on
issues of "substantial similarity" in the mixed law-fact evaluative sense and "copyrightability."
VI. Framing the Issues of Copyrightability
A good place to begin the exploration of potential options
in this case regarding submission to a jury of issues of copyrightability (if such issues are to be submitted to a jury) is to
consider whether it would be appropriate to submit a single
copyrightability mixed law-fact question. framed in terms of
the applicable legal standard. Before I suggest such a jury
question, I first state the standard for deciding copyrightability that will be used in this case, absent further guidance
from higher authority before the date of trial.
A.
The Standar~ for Deciding Copyrightability
Having fully considered the submissions now before the
court. I conclude that, for reasons stated in the Paperback
Opinion, 740 F.Supp. at 54-62, and supplemented here, the
copyrightability issues in this case should be determined by
the legal standard used there and summarized as follows:
FIRST, in making the determinati.on 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 formulationsome conception or definition of the "idea"-for the purpose of distinguishing between the idea and its
expression.
• • •
SECOND, the decisionmaker must focus upon whether
an alleged expression of the idea is limited to elements
essential to expression of that idea (or is one of only a
few ways of expressing the idea) or instead includes
identifiable elements of expression not essential to every
expression of that idea.
THIRD, having identified elements of expression not
essential to every expression of the idea, the decisionmaker must focus on whether those elements are a substantial part of the a.llegedly copyrightable "work."
Id. at 60-6 I.
In reaching this conclusion, I have fully considered amicus
curiae briefs filed in this case, with leave of court. Compared
with the great majority of amicus curiae briefs filed in courts.
two of the amicus submissions in this case are distinctive:
they do not purport to advise the court how the present case
should be decided, and they are not filed on behalf of clients
who have a special interest aligned with that of one or the
other of the parties to the case. Z The amicus submission of the
2
A third amicus brief filed by the Software Entrepreneur's Forum
does take the position that Quallro and Quallro Pro ought to be deter·
mined not to infringe Lotus' copyright. However, that brief suggests find·
�164a
Register of Copyrights concerns issues that I do not reach in
this Memorandum, and I do not discuss it further.
The second amicus submission was filed by eleven professors of law, teachers of courses in the intellectual property
field, who express a concern that the Opinion in Lotus v.
Paperback and the standard of decision developed in that
Opinion, quoted above, give inadequate attention and emphasis to the distinction between a copyrightable expression and
a useful process. Although this distinction is noted in the
Lotus v. Paperback Opinion-e.g., 740 F.Supp. at 53-58I accept the point that no explicit reference to "process"
appears in the standard of decision quoted above. Because I
recognize the value of reminding decision makers (whether
judges or jurors, a point to which I return later in this Memorandum) of the distinction between a useful process and an
original expression, I will add a reference to that distinction,
restating the standard in the following way:
FIRST, in making the determination of "copyrightabiljty,""the decision maker 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 formulationsome conception or definition of the "idea," "system,"
"process," "procedure," or "method "-for the purpose
of distinguishing between the idea, system, process, procedure, or merhod and its expression.
• • •
SECOND, the decision maker must focus upon whether
an alleged expression of the idea, system, process, procedure, or merhod is limited to elements essential to
expression of that idea, sysrem, 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 essenings Ihal oughllo be made ralher Ihan Ihe tegal rule Ihal musl be applied.
Because the court does nOI make findings on mOlions for summary judgment, and even as to other mailers addressed in Ihis Memorandum I am
nOI making findings, I do not address that brief further.
165a
tial 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."
[d. at 60-61 (added words emphasized, other emphasis
deleted). If the answer to the THIRD step is YES, then the
expressive elements of the work, taken together, are copyrightable. Copyright protection extends, of course, only to the
expressive elements-not to anything more. To demonstrate
entitlement to relief, Lotus will be required to prove that Borland copied expressive elements (that is, the particular form
of expression and not just the methodology, process, or idea
of the user interface of Lotus 1-2-3) and that as a result there
is a substantial similarity (in the mixed law-fact evaluative
sense) between expressive elements of 1-2-3 and an allegedly
infringing Borland program.
I need not and do not tarry over whether this refinement of
the stated standard of decision simply makes explicit something that was implicit in Lorus v. Paperback or instead is a
modification of the standard stated there. In any event, laboring as I am in territory that is uncharted, I conclude that the
sources of authority I am bound to respect-constitutional,
statutory, and decisional-leave me the choice and perhaps
even the responsibility to make this refinement and to do so
explicitly.
Apparently, if not explicitly, a premise of Borland's argument is that once some aspect of a "computer program" (as
that phrase is used in the statute, 17 U.S.C. § 101) is determined to be a "process" or "system" (as those words are used
in the statute, 17 U.S.C. § 102(b», no part of that functional
aspect is copyrightable. (It is not entirely clear whether the
argument is that anything "functional" is not "expressive," or
instead that even "expressive" elements of ..,anything that is
"functional" are not "copyrightable." The choice between
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167a
these two different ways of phrasing the argument seems, in
any event, more linguistic than substantive.) Once functionality is demonstrated, Borland argues, the inquiry about copyrightability ends, and no copyright is possible. This premise
of Borland's position is flawed.
The Professors' Amicus Brief might be interpreted as
implicitly if not explicitly supporting Borland's premise. In
any event, Borland broadly asserts that "all systems are
uncopyrightable." Docket No. 141, at 94. Of course, if Borland means only that being a "system" does not make something copyrightable, the point is plainly meritorious but does
not help one decide a case such as this one. But Borland
appears to be asserting more-that if some part of a computer
program is a "system, process, procedure, or method," 17
V .S.C. § 102(b), no copyright of any aspect of that part of the
program is possible. If, in so arguing, Borland means that the
fact that a computer program is a "system" precludes copyrightability of every part and aspect of that program (or even
that if some .part of a program is a "system," copyrightability
is preckJded as to all aspects of that part) the argument is'
deeply flawed. See Kieselstein-Cord v. Accessories By Pearl,
Inc., 632 F.2d 989 (2d Cir.1980) (holding that expressive elements of utilitarian belt buckles were copyrightable). The fallacy becomes apparent as we examine more closely the
proposed bright-line rule that "all systems are uncopyrightable." Even source code and object code would not be
copyrightable if this rule were the law.
It is worth noting that in this discussion I do not depend
upon judicially or academically developed conclusions about
fundamental truths, even though the basic nature of copyright
law is relevant. Rather, the central point is that because courts
are bound by the congressional mandate that something in
computer programs is copyrightable, I must reject Borland's
premise. Of course, if Congress should at some future time
determine that the balance it has struck with respect to the
copyrightability of computer programs is not in the best interests of the programming industry and the public, Congress
(but not this court) is free to change that balance.
In discussing this issue, as shorthand for convenience only
(and with readiness to reconsider should it be suggested that
the shorthand has different substantive implications from the
longer phrase), I will use the term "process" to refer to "system, process, procedure, or method" as that phrase is used in
the statute.
"Process," like "idea," is an abstraction-a creature of the
human intellect. A machine may be constructed of pieces of
metal, wood plastic, and other materials, put together with
nuts, bolts, bearings, and adhesives. A process, on the other
hand, is not composed of materials. Instead it is a set of ideas
about how to do something. The fact that it is an idea about
doing does not make it any less an idea.
Patent law establishes legal rules for process patents that
are different in some respects, and not in others, from the
rules applying to other patents. The mere fact that patent law
allows a means of legal protection for a process, however,
does not establish that there is not also some protection in
copyright law. ·Certainly the area of legal protection under the
separate legal regimes is not co-extensive, but it is equally
clear that there is no particular reason to believe there should
never be any area of overlap. Indeed, precedent recognizes
some overlap. E.g., Mazer v. Stein, 347 V.S. 201, 217, 74
S.C!. 460, 470, 98 L.Ed. 630 (1954) ("We do hold that . . .
patentability . . . does not bar copyright . . . ."). Thus, the
fact that a particular computer program may be protected to
some extent under one of these legal regimes does not mean
it cannot be protected to any extent under the other.
Thinking about copyright protection for computer programs
may begin with the point that a person who conceives a "process" shows or tells-uses some form of communication-to
make the "process" accessible 10 another. Showing and telling
arc modes of expression.
Thus, there is a closely analogous if not precisely identical
dilemma about distinguishing an idea from expressions of the
idea and a "process" from expressions of Ihe "process." I need
not, and do not, repeal here the explanation of that dilemma
and oi statutory :md decisional markers thal.led me in LOlus
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v. Paperback to the formulation of a standard to be applied to
the facts of a particular case to decide whether an aspect of a
computer program is a copyrightable expression.
In a broad sense of the term "process" (or the longer phrase
for which it stands here). every aspect of a "computer program" is part of a process. Nevertheless. we have a statutory
mandate that some aspects of a "computer program" may be
copyrightable. Borland and virtually all others who discuss
the matter recognize that "source code" and "object code"
have copyrightable elements. Yet each "code" is surely a part
of a "system. process. procedure. or method." Imagine the
response you would receive from a good programmer if you
told her that her "source code." or "object code." or both.
lacked "system" and "method" and. either taken together or
separately. simply could not be regarded as an effective "process" or "procedure" for communicating to the computer what
it should do!
Bowing to the congressional mandate and to widely
expressed ~iews about the copyrightability of code. Bor-.
land-lifter full explication of a proposed interpretation of
Baker v. Selden. 101 U.S. 99. 25 L.Ed. 841 (1879). and its
progeny-continues with the point that the "long-standing
copyright principles" applicable to novels. poems. and other
traditional literary works have been applied also to computer
programs to provide significant protection to software developers.
Borland's flawed argument (for a bright-line rule thata finding of "process" defeats "copyrightability," regardless of the
originality of any particular expression that enables a person
other than the creator to use it) must be rejected because it is
fundamentally inconsistent with the congressional balance
struck in the Copyright Act. The argument is in its nature a
one-conclusive-element argument. Expressed in the form of
if-then logical operations of the sort a computer might execute upon pairs of binary values. such an argument asks the
court to conclude (a) "if process, then not copyrightable," (b)
"if idea, then not copyrightable." and (c) "if patent protection
for process. then no copyright protection for process." Arguments of this type. urging courts to adopt an overriding rule
that one element of a total set of interwoven circumstances be
declared the only legally relevant element are like discredited
arguments that courts should select one among all the
antecedents of an event in human affairs and declare it to be
the proximate cause. See W. Page Keeton et al.. Prosser &
Keeton on the Law of Torts 266 (5th ed. 1984). These are
arguments that one aspect of the total circumstances be
treated in law !is overriding and conclusi ve. Arguments of this
type are often encountered in the legal system. but far less
often sustained. Common sense tells us that life and Iife's
experiences are not so neatly separated into discrete categories. without overlap. The legal system aims at reasonable
accommodations among conflicting legitimate interests and
rarely holds that one such interest totally overrides all others.
Moreover. in the present context. respect for the congressional mandates in the Copyright Act requires that Borland's
proposed bright-line rule be rejected.
Borland's argument that Baker v. Selden adopted a brightline rule that governs this case is a gross overstatement not
only of what the Supreme Court did in that case but as well of
what the Court said. The Court did not there face the issues
presented in the present case. Indeed. the Court did not even
address issues of expression within the plot, sequence, organization. or structure of artistic works-issues that were
For example. under those long-standing principles. the
sequence. structure and organization of the program's
code. in addition to the text of the code itself. may be
protected by copyright-under the same rationale that
protects the detailed plot line and structure of a play in
addition to the play's actual dialog.
Docket No. 141 (emphasis added). Borland also concedes, as
it must, that this protection of the sequence. structure, and
organization may extend to the user interface as well as
source code and object code.
�170a
addressed by Learned Hand in his opinions from which I took
guidance in deciding Paperback.
Attributing to the Supreme Court one's own extrapolations
beyond what the Court did and said iS,a form of reasoning a
lower court should not adopt. It is wiser and more in keeping
with the judicial role to recognize candidly that we, not the
Justices of the Court, are doing the extrapolating. In hearing
and deciding Baker v. Selden in 1879 the Court did not, and
indeed could not, foresee computer programs. The Court was
not speaking about computer programs or even about the
kinds' of issues, more readily inferred to be foreseeable in
1879, that were explicitly addressed in Learned Hand's opinions a half-century later and beyond. Attributing to the
Court's decision in 1879 conclusions that counselor courts
may draw today from Baker v. Selden by extrapolation is
being less than fully candid about the extent to which decisions must be and are being made today. Nor can we attribute
to Congress, in its much'more recent action, a manifestation
of intent drawn from a supposed legislative history arguably
appearing in a CONTU report to Congress. Congress speaks
primarily by what Congress says formally by its enactment.
Even though legislative history regarding expressions by
members of Congress during the legislative process is sometimes used by courts in aid of determining the meaning of the
formal enactments of Congress, there is no support for treating as legislative history what another person or entity says 10
Congress. Thus, to be candid about what we are doing and
faithful to congressional as well as precedential guidance, we
cannot say that Baker v. Selden, or the CONTU Commission's
interpretation of that decision, established a bright·line rule,
"if functional, not copyrightable." As with "causation," we
must delve more deeply to understand such concepts as "process," "expression," "copyrightability," and "substantial similarity."
B.
Drafting a Jury Interrogatory to Test Its Viability
In deciding copyrightability issues in the present case I will
apply the standard formulated in Lo,US v. Paperback, with Ihe
171a
refinement described above to take account of the concern
appropriately expressed in the Professors' Amicus Brief. If
"copyrightability" is to be submitted to the jury, then Question 2 of a Verdict Form in which Question I concerned copying might read as follows:
Question 2
In answering this question, you are to apply the following legal standard:
FIRST, in making the determination of "copyrightability" of the user interface of 1-2-3 as a whole, or of
some element or elements of that interface, focus upon
alternatives that counsel may suggest, or that you may
conceive, along the scale from the most generalized conception of that user interface, or some element or elements of that interface, 10 the most particularized, and
choose some formulation-some conception or definition
of the "idea," "system," "process," "procedure," or
"method" of the interface, element, or elements-for the
purpose of distinguishing between the idea, system, process, procedure, or method and its expression.
SECOND, 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, focus on whether those
expressive elements, taken together, are a substantial
part of the allegedly copyrightable "work." If they are,
then you will find those expressive elements, and no
more, copyrightable.
�173a
172a
Applying this standard, do you find by a preponderance
of the evidence that the user interface of Lotus 1-2-3
contained copyrightable elements?
_YES_NO
As one considers this option, it becomes immediately
apparent that its effect is to give the jury virtually uncontrolled discretion. Prohibitions against probing into jury deliberations-e.g., Fed.R.Evid. 606(b)-would preclude courts
from determining whether a jury understood and correctly
applied the court's explanation of the standard in its charge to
the jury. The only judicial control against improper verdicts
would be in decisions whether or not to direct a verdict and
whether or not to grant a motion for judgment notwithstandi ng the verdict.
Might counsel and the court devise some greater measure of
assurance that the jury understands and faithfully applies congressional ~lrectives regarding the scope of copyright protection .wr computer software programs? Would it be a step in
that direction to use the foregoing formulation as part (a) of
a question, with something like the following as part (b)?
(b) If YES, is each of the following a part of the user
interface in which you find expressive elements,
which you also find to be at least part of the basis
for your answering YES to Question 2(a)?
(I) The menu commands
(2) The menu structure
(3) The command sequence
(4) The long prompts
(5) The macro facility
(6) The overall appearance
of some part of the user
interface
_ _NO
_YES
_YES
_YES
_YES
_ _YES
_NO
_NO
_NO
_ _ NO
_ _ YES
_ _ NO
Answers to the subparts of a question of this kind might at
least enable a court, after verdict, to give somewhat more reasoned consideration to the relevance and validity of an argument-such as is advanced by Borland here-that, as
precedent, Lotus v. Paperback. should be limited by the finding that Paperback copied the "user interface as a whole," and
that the present case is materially different because here, even
if the facts are construed most favorably to Lotus, Quattro and
Quatlro Pro are substantially simi lar to less of the user interface of Lotus 1-2-3 than was VP Planner. (I do not now determine the validity of this argument.)
Even if an addition such as part (b) might be useful in some
circumstances, however, it would not eliminate, or even substantially mitigate, another serious problem to which I turn
next.
VII. Should Any Copyrightability Issues
Be Submitted to a Jury?
Is a fact question bearing upon copyrightability to be submitted to a jury if a timely demand for jury trial has been
filed and the fact is genuinely in dispute-that is, reasonable
persons might differ about the answer to the question?
Though debated often, as yet Ihis queslion has nol been
explicitly answered either by statute or by precedents. Cases
that arguably bear upon the question can at the least be distinguished on the facts and thus do not speak directly to the
precise kinds of copyrightability issues that are presented in
this case. E.g., Kregos v. Associated Press, 937 F.2d 700 (2d
Cir. 1991) (reversing summary judgment on issue of "creativity"). Kregos did not involve the distinctive entanglement
problems that are presented in computer-program copyrightability cases.
In Lotus v. Paperback., even though the question as to
whether copyrightability might be a jury issue had been discussed extensively in pretrial conferences, the court was not
required to and did not decide it. The parties removed it from
contention by entering into a stipulation. As 'Part of an agree-
�174a
ment for a phased trial in which Phase One was to be before
the court without a jury. the parties to that case stipulated that
any fact question relevant to copyrightability would be
decided by the court. No such stipulation has been made in
this case. and I now address the issue.
A.
Role of Judge. Jury. and Witnesses
The legal test for determining copyrightability both as formulated in Lotus v. Paperback and as refined in Part VI.
above. is a standard requiring an evaluative mixed law-fact
determination. as distinguished from a bright-line rule calling
for a finding about disputed historical facts such as who did
what. where. and when. Moreover. this standard is far more
heavily loaded with public policy implications than most
other standards more commonly used in law. of which the
negligence standard is an example. Juries applying the copyrightability standard would not be required or even permilled
to explain their reasoning. They would be free as a practical
mailer to rea"ch decisions inconsistent with the balance struck
by Congress. as interpreted by the courts. Inconsistencies
among verdicts could be expected to introduce a lawless element into the administration of justice in copyright cases.
quite inconsistent with the aim of treating like cases alike.
In the circumstances of a particular case. the answer to
Question 2 (or any alternatives to Question 2 we might envision). is an essential premise of a reasoned application of the
accommodation of conflicting policy interests reached by
Congress in determining that computer software programs are
copyrightable. For this reason. I conclude that the application
of the standard to a particular case is a ruling more closely
analogous to traditional judicial lawmaking to fill the interstices of statutes than to traditional factfinding. It is appropriately treated as a ruling of law. Thus. even if a court treats
the answer to Question 2 as a "factfinding." the court may
conclude also that the answer is a finding of a premise facta finding of a fact that serves solely as a premise for a ruling
of law. See Robert E. Keeton. Legislative Facts and Similar
Things: DeCiding Disputed Premise Facts. 73 Minn. L.Rev. I
175a
(1988). Like a finding about whether transporting gasoline on
a public highway. or blasting with dynamite. or cropdusting.
or building an earthen dam is an abnormally dangerous activity. id. at 19-20.57-69. perhaps. this is a finding to be made
not by juries. case by case. but by a lawmaker (Congress. to
the extent that it can do so in broadly applicable statutory
guidelines. and courts to the extent necessary to fill out
details essential to application of those broad guidelines in
particular types of cases).
The position that this kind of finding is a premise factfinding is supported also by the certainty that even if pallerns of
jury verdicts might develop over time and become sufficiently
predictable to be reasonably described as part of the "law" of
copyright. this element of the law would be developed undercover rather than. as is expected of lawmaking through judicial precedents. by "reasoned decision making. candidly
explained." Robert E. Keeton. Judging 1-2 (1990). Moreover.
even if patterns were to develop sufficiently to enable lawyers
to predict outcomes for clients with some confidence. still the
pallerns could not be employed to protect an individual litigant. plaintiff or defendant. against the harsh consequences of
a deviant verdict.
The length and complexity of a jury trial of issues of copyrightability would be affected also by disputes regarding
admissibility of opinion evidence. The affidavits submilled in
this case by the parties. in support of their respective positions on the cross-motions for summary judgment. present
what is in essence a clash of policy arguments by experts.
Moreover. an impartial factfinder may reasonably infer that
the policy pOSitions the experts advance correlate beller with
their respective views about what the law of copyrightability
should be than with considered opinions about the policy
accommodation Congress has struck and courts and juries are
bound by oath to respect. This point is supported by the following passage from Borland's Memorandum (Docket No.
141 ):
More importantly. Borland's witnesses include distinguished industry executives who have years and years
�176a
of actual experience in bringing software products to
market. Galler [a Lotus witness]. in contrast. can only
theorize and speculate about such issues. Unlike Galler,
Borland's experts can authoritatively discuss the consequences to software development of the untoward
extension of copyright law Lotus seeks in this case.
[d. at 28. Thus. the affidavits of experts submitted to this
court for consideration in ruling on the motions for summary
judgment are aimed more at persuading this court to a view of
the law than to the existence or nonexistence of a genuine dispute of fact.
If copyrightability is held to be an issue for jury determination. courts and counsel must work out answers to extraordinarily difficult issues regarding admissibility of opinion
evidence.
No provision of the Copyright Act declares explicitly that
issues of fact bearing on copyrightability shall be submitted
to juries. or instead shall be decided nonjury. Nor does the
Constitutiolf. including the Seventh Amendment. Thus. the
answer io the question who shall decide such issues must necessarily be fashioned by courts. Courts are not free. however,
to fashion whatever answers they may deem best. They must,
instead. seek answers consistent not only with the explicit
constitutional and statutory mandates but also with the implications of those mandates for other issues not explicitly
addressed. A determination that issues of copyrightability are
to be resolved by juries would have such severe adverse
effects on the aim of assuring that like cases are treated alike
and on the complexity and cost of litigation in computer software copyright cases that in practical effect the scope of
copyright protection congress manifestly .intended could not
be achieved. The practical certainty of many outcomes inconsistent with the congressional accommodation among highly
valued but conflicting interests. manifested in the Copyright
Act. weighs heavily in favor of the conclusion that treating
copyrightability issues as exclusively for c.ourts. not juries, at
least in computer software cases. is the decision more compatible with the congressional mandate. So also does the
l77a
object of avoiding the practical certainty of increased length,
complexity. and cost of litigation.
For all these reasons, I reach the tentative conclusion
(which I will be prepared to reconsider as explained in Section B. below) that at least in the circumstances of this case
(and probably more generally. though I need not so determine
here). the issue or issues of copyrightability. including any
fact questions bearing upon them. must be determined by the
court. not the jury.
B.
Reconsideration
Part II. above. alludes to the value of thinking seriously
about the framing of jury questions and instructions well in
advance of trial because the attempt to do so helps sharpen
the focus on issues that are best considered early in the history of the case. Part VII-A tentatively determines that copyrightability issues in this case are to be determined by the
court. not the jury. Before so ruling finally. however. I will
allow each party an opportunity to submit a proposed draft of
any question bearing on copyrightability that it contends.
even in the alternative. is a question that should be submitted
to the jury. If the draft question uses legal jargon rather than
plain English only. the draft must be accompanied by proposed instructions to the jury explaining the jargon. Submissions and responses may be filed on the schedule set in the
Order below.
C.
Ambiguity of the Parties' Contention Regarding
Copyrightability
It is not now apparent which individual elements of 1-2-3
the plaintiff (Lotus) alleges to be copyrightable, nor has either
party made clear its contention about what aspects of various
elements of the 1-2-3 user interface are or are not expressive
aspects.
Lotus' Statement of Material Facts as to Which There is No
Genuine Issue Pursuant to Local Rule 56.1 (Docket No. 149)
includes the following paragraphs:
'.
�178a
32. The selection of which, and how many, commands
to place in each menu level, and the organization of the
successive menu levels into a coherent and intuitive
menu structure; was an important and creative consideration in the development of 1-2-3. 1-2-3 's creators,
particularly Mr. Kapor, devoted substantial effort during
the late stages of the program's development to selecting
the words and structural organization for 1-2-3 's menus.
(Kapor Aff., '11'1172-101.)
33. Thus, the 1-2-3 menu commands, their organization and sequence, the 1-2-3 menu tree, and the overall
user interface reflect an original expression of a spreadsheet program. This expression is not dictated by functional constraints and contains a significant degree of
communicative content to the user. (First Galler Dec.,
11 207.)
Id. at 1111 32, 33.
Borland Icsponds that paragraph 32 is uncontested and
immatefial and that paragraph 33 is contested or non-factual.'
Borland adds, inter alia, that "[tJhe suggestion in the first
sentence of No. 33 that the 1-2-3 commands and command
hierarchy represent copyrightable 'expression' is not a statement of fact but rather constitutes an asserted conclusion of
law," which Borland disputes. Even though contending that
this is an issue of law, Borland has nevertheless resisted trying it separately and first. Thus, I understand Borland's position to be that if the court does not decide this issue for
Borland as a mailer of law, Borland wishes not to be foreclosed from contending, in the alternative, that copyrightabi Iity in general, and this issue in particular, should be
submitted to the jury.
I conclude that a decisionmaker Uudge or jury) cannot
determine the answer to the dispute over Lotus' 11 33 without
making an evaluative application, to this case, of the standard
formulated in Part VI of this Memorandum. One might reasonably argue that an issue such as this, if one for determination by the court, can properly be decided on motion (or
179a
cross-motions) for summary judgment, even if the issue is one
on which reasonable persons may differ in the circumstances
of this case. Nevertheless, even without so deciding now, I
conclude that on the present submissions I am left with a
sense that this is a genuinely disputed and debatable issue.
Unless one of the parties can persuade me otherwise in further
submissions permitted by the attached Order, I will leave this
issue to be decided on a full record developed in a first phase
of trial, and with the benefit of a sharper focus than present
submissions accomplish as to precisely what issues of fact
and law should be decisive of this case.
In particular, the dispute between the parries regarding
paragraph 33 is one I cannot decide on the present submissions. If the menu commands or menu command structure
were dictated solely by functional concerns, then those elements may not be copyrightable. See Brandir Int'l, Inc. v.
Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir.1987)
("conceptual separability" test examines whether expression
exercised independent of functional influences). But the mere
fact that functional concerns were influential does not establish that no copyrightable expression appears in the menu
commands, the command structure, or elsewhere in the user
interface.
VIII. Substantial Similarity Revisited
(Illicit Copying)
It is not enough that an allegedly infringing work contain
matter copied from a copyrighted work. Lotus must demonstrate that similarities between the works are substantial.
However, not all similarities may be taken into account. For
example, the fact that both programs are spreadsheet programs renders them substantially similar in many respects.
Nevertheless, such similarities may form no part of a conclusion that the works are substantially similar in the mixed
law-fact evaluative sense-that is, for purposes of assessing
illicit copying-because the idea (or process) of a spreadsheet
program is not copyrightable. It is naturally to plaintiff's
�180a
advantage to place as many copyrightable elements before the
court and jury on the issue of substantial similarity as possible not only because the sum increases with each added element but also because the whole may be more than the sum of
its parts. Therefore, a determination as to which elements of
Lotus 1-2-3 are copyrightable, alone or together, is interwoven with the issue of substantial similarity.
On the other hand, as I have concluded above, it is by no
means apparent that all copyrightable elements of 1-2-3 have
been copied in the Quattro programs. Lotus, presenting as its
primary contention that Paperbaclc is controlling, has not formulated for the court or for Borland its precise contentions (in
the alternative to its contention that the user interface as a
whole was copyrightable and was copied) as to which elements of 1-2-3, separately or in combination, were copyrightable and were copied.
Borland, on the other hand, at points in its submissions,
appears to contend that it is entitled to summary judgment
both on thejssue of substantial similarity and on the issue of
copyrightability because if anything at all in a computer program's user interface is copyrightable it is only the user interface as a whole, and the elements of the Quattro clOd Quatlro
Pro user interfaces that are like elements of the Lotus 1-2-3
interface are only a very small part of the Quattro and QuatIro. P~o user inlerfaces. This is an argument not likely to prevail 10 any court. Copyrightability is determined by the
characteristics of the allegedly protected work, not by the
~haracteristics of the allegedly infringing work. A copier who
~ncorporat~s a copyrighted short story of twenty pages length
IOtO a multi-volume set of books will not get far with the contention, in litigation between the copyright owner of the short
story and the copier, that the short story is not copyrightable
because it is such a small part of the multi-volume sel. Nor
will the copier win on the substantial similarity issue by
showing that although the entire copyrighted work was copied
it constituted only a very small part of the overall set of books
produced by Ihe copier.
181a
I need not and do not rule at this time on the appropriate
framing of the issues that must be decid~d i.n this case about
the legal significance that may attach to fmdmgs of !act about
the disputed scope of similarities between the user mterfaces
of the different works. To say the least, however, Borland is
not entitled to a summary judgment on this extraordinary
ground it appears to be asserting.
..
I f Borland responds that I have misinterpreted Its SU~~ISsions and it did not mean to assert such an extreme pOSItion,
its future submissions regarding precisely what questions it
proposes to submit to the jury and what expert opini~n~ it
proposes to proffer may clarify its contentions. As to oplOlon
testimony, it seems likely indeed the court should. p.reclude
the expression in the presence of a jury of an OpInion that
"substantial similarity" does not exist when the elements of
the user interfaces that are alike constitute only a small pe~
centage of the allegedly infringing product . .Whether that. IS
correct or not is not a question of fact on which expert Opinion may properly be placed before a jury.
The argument that a little copying-beyond "fair use," 17
U.S.C. § 107- here and there in a very large work s~ould be
allowed to promote the development of great works IS a policy argument Congress has rejected. It shou"d not be heard ~y
a jury. The issue is one of law as to which the court .wllI
recei ve arguments of counsel, outside the presence of the Jury,
both to determine the scope of admissible opinion testimony
and to determine the framing of questions of fact to be submilled to the jury.
Neither, on the other hand, will the jury hear the argument
that copying just the menu terms, or just the me~u s~ruc.ture,
or just a command sequence, is enough to e~tabhsh mfnngemenl. Whether this is so or not IS a question of law t~ be
argued to the court, not the jury. To the extent that stnctly
factual answers from the jury may be helpful to the court and
counsel to focus the legal issues to be argued, however, questions may be framed to elicit those answers.
�182a
ORDER
For the foregoing reasons. it is ORDERED:
(I) The cross-motions for summary judgment (Docket Nos.
30 and 87) are denied.
183a
UNITED STATES DISTRICT COURT
D. MASSACHUSETTS
Civ. A. No. 87-76-K
June 28. 1990
(2) Renewed motions for summary judgment may be filed
by April 10. 1992 and responses by April 20. 1992.
(3) Submissions of both parties pursuant to Part VI of the
foregoing Memorandum shall be filed on the schedule in (2).
LOTUS DEVELOPMENT CORPORATION.
(4) The several motions regarding the submission of confidential materials (Docket Nos. 140. 156. and 160) are dismissed as moot.
-v.-
A conference to consider all pending mailers and to set a
trial date is scheduled.
Plaintiff.
PAPERBACK SOFTWARE INTERNATIONAL
and Stephenson Software. Limited.
Defendants.
Henry B. Gutman. Kerry L. Konrad. John S. Beckerman.
Karen F. Conway. O'Sullivan Graev & Karabell. New York
City. and Thomas J. Dougherty. Skadden. Arps. Slate.
Meagher & F1om. Boston. Mass .• for Lotus Development
Corp.
Lawrence G. Papale. Cannata. Genovese & Papale. San
Francisco. Cal.. and Edward C. Saltzberg. Warner & Stackpole. Boston. Mass .• for Stephenson Software. Ltd.
Paul R. Gupta, David A. Guberman. Barbara O'Donnell,
Brian C. Levey. Nereyda F. Garcia. Kenneth R. Berman.
Sherin and Lodgen, Boston. Mass .• and Walter G. Murphy,
Peter C. Kober, Murphy. DeMarco & O'Neill, P.C .• Boston.
Mass.Jor Paperback Software Intern.
�l84a
185a
OPINION
This Opinion sets forth findings of fact and conclusions of
law that are central to deciding this controversy. Fed.R.Civ.P.
52(a). The court adopts, as additional findings, all proposed
findings to which no party objected. See Docket Nos. 250,
251.
The outcome of this case depends on how this court, and
higher courts on appeal, should answer a central question
about the scope of copyrightability of computer programs. For
the reasons explained in this Opinion, I conclude that this
question must be resolved in favor of the plaintiff, Lotus.
KEETON, District Judge.
The expression of an idea is copyrightable. The idea itself
is not. When applying these two settled rules of law how
can a decisionmaker distinguish between an idea a~d its
expression?
Answering this riddle is the first step-but only the firsttoward disposition of this case in which the court must
decide, among other issues, (1) whether and to what extent
plaint.iff's computer spreadsheet program, Lotus 1-2-3, is
copynghtable, (2) whether defendants' VP-Planner was on
undisputable facts, an infringing work containing elem;nts
substantially similar to copyrightable elements of 1-2-3, and
(3) whether defendants' proffered jurisdictional and equitable
defenses are meritorious.
Phase One of this case was tried to the bench. By agreement of the parties, in Phase One, the court shall
r~~lv~-all legal and factual issues concerning the lia- .
b.. hty,!f a~y, of defendants . . . for the claims oJ copynght tnfnngement brought by plaintiff . . . and all
defenses thereto, including but not limited to all factual
and legal issues concerning the copyrightability of
Lotus' Works [1-2-3, releases 1.0, I A, and 2.0], and
exclud~ng ~nly: (I) issues of fact, if any, requiring jury
determtnatlon concerning defendants' alleged copying of
any protected expression from Lotus' Works in Defendants' Wor~s [VP-Plannerand VP-Planner Plus]; [and]
~2) factual Issues concerning defendants' possible copyIng of the source or object code for Lotus' Works . . . .
Stipulatio~ and Order Regulating Phased Trial, § I(A) (Docket
No. 246).
This case was. originally consolidated wilh Lotus Development
Corporal/on v: ~OSOIC Software. Civil 'Action No. 87-74-K. which
Involves Mosal~ 5 compule~ spreadsheet program The Twin. Although
Phase One of this case was tntended to resolve certain additional legal
and facluallssues concerning the liability of Mosaic Software for plain.
I.
A BACKGROUND STATEMENT ABOUT COMPUTERS, COMPUTER PROGRAMS, AND COPYRIGHTABILITY
Though their influence in our society is already pervasive,
digital computers-along with computer "programs" and "user
interfaces"-are relatively new to the market, and newer still
to litigation over "works" protected by intellectual property
law.
Digital computers (hereinafter referred to as "computers")
are machines currently used to perform three types of functions electronically: (1) arithmetic calculations; (2) logical
operations (e.g., comparing values to determine whether one
is larger); and (3) storage and display of the results. Because
computers can perform millions of operations of these types
in a single second, they can be used to solve problems too
complex, or too repetitioUS and boring, to be solved manually.
Developments to the current state of the art have already
transformed many areas of business, educational, and recreational activity, 'and they support speculations about more
striking achievements in the future.
A personal computer system consists of hardware and software. The hardware includes the central processing unit
("CPU"), which contains the electronic circuits that control
the computer and perform the arithmetic and logical funclirf's claims of copyrighl infringement. that case was severed on the second day of this firsl phase of Irial for reasons nol here relevant. See
Docket No. 174 (February 8, 1990).
�186a
tions, the internal memory of the computer ("random access
memory," or "RAM"), input devices such as a keyboard and
mouse, output ~evices such as a display screen and printer,
and storage devices such as hard and floppy disk drives. The
software incl~des one or more computer programs, usually
~tored magnetically on hard or floppy disks, along with such
lI~ms as instr~ction manuals and "templates," which are
pieces ~f pla.stl~ that fit around the function keys on the keyboard, Idenufymg the specific functions or commands that
can be invoked by those keys. A personal computer system
can also include "firmware," or "microcode":
Microcode is a set of encoded instructions . . . that controls the fine details of the execution of one or more
primitive functions of a computer. Microcode serves as
a substitute for certain elements of the hardware circuitry
that had previously controlled that function.
Samuel~on,
CONTU Revisited: The Case Against Copyright
Protection Jor Computer Programs in Machine-Readable
Form. 1J)84 Duke L.J. 663, 677.
.
Co~puter programs are, in general, divided into two types:
operating system programs and application programs. Operat 109 system programs-such as DOS, XE-NIX, and OSI2are programs that control the basic functions of the computer
hard~are, such as ~he efficient utilization of memory and the
startmg and stoppmg of application programs. Application
pro~rams are programs that permit a user to perform some
particular task s~ch as word processing, database manage~ent, or spreadsheet calculations, or that permit a user to play
Video games.
This case concerns two coinpeting application programsLotus 1-2-3 and VP-Planner-which are primarily spreads.he~t programs, but which also support other tasks such as
limited database management and graphics creation. Programs
s~ch as these, because they can perform several different
kmds of tasks, are called "integrated" application programs.
187a
Congress has defined "computer program" as follows:
A "computer program" is a set of statements or instru~
tions to be used directly or indirectly in a computer m .
order to bring about a certain result.
17 U.S.C. § 101 (1988). This "set of statements or in~truc
tions," in its literal or written manifestation, may be m the
form of object code or source code. It may also be represented, in a partially literal manifestation, by a flowchart. A
copyrightable work designed for use on a co~puter may
include, as well, text that appears, for example, In a problem
manual or a manual of instructions. These elements of text,
however, ordinarily are not referred to in the industry as part
of a "computer program" unless they appear on the computer
screen and serve a purpose like that of the components of
a "help screen" available to a user whenever needed. EI~
ments of this textual type are not at issue in this phase of thiS
case.
Computer programs are typically written in some form of
computer programming "language." The "lowest"-lev~1 c~m
puter programming language is machine la~g.uage, which ,.s.a
binary language written in "bits" (BInary digITS )'. Each. bit IS
equal to one binary decision-that is, to the deSignation of
one of two possible and equally likely ~alues, s~~h as an
"on"-"off' or "yes"-"nO" choice. These bmary deCISions, the
only kind that a typical computer can understand directly,. are
commonly represented by O's and I's. A sequence of eight
bits (which allows 256 unique combinations of bits) is commonly called a "byte" ("by eight"), and 1024 bytes form a
"kilobyte" (commonly referred to as "K," ·e.g., sixty-four
kilobytes is "64K"). Machine language may also be represented in hexadecimal form. rather than in binary form, by the
characters 0-9 and A-F, where "A" represents 10, "S" represents II. and so on through "F," which represents "IS.'.' In
hexadecimal machine language, only two rather than eight
characters are required to allow for 256 unique combinations
(e.g .• 37 instead of 00110111. each of which represents the
55th of 256 combinations; 7B instead of 0111101 \, each of
which represents the 123rd of 256 combina'(ions; EA instead
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188a
of 11101010, each of which represents the 234th of 256 combinations). The computer is able to translate these hexadecimal instructions into binary form. Other versions of machine
language are represented in decimal (0-9) and octal (0-7)
form.
An object program, or object code, is a program written in
machine language that can be executed directly by the computer's'CPU without need for translation. For example, in the
machine language of a certain computer, the instructions to
divide the value in "B" by the value in "C" and add that number to the value in "A" may be represented by the following
sequence of instructions (in binary form):
00 I 00000000 1000 1; 1000000011010010;
1101000000010000.
An "intermediate"-Ievel programming language is assembly language. Rather than in bits, assembly code is written
in simple symbolic names, or alphanumeric symbols, more
easily understandable by human programmers. For example;
the calculation described above may be represented, in the
assembly language of a certain computer, as follows:
LOAD B; DIV C; ADD A.
Because of the primitive nature of assembly language, even
relatively simple computations can require long and complex
programs.
During the early period of computing, "progr~mmers" ordinarily wr~te programs exclusively in machine language.
Today, object code is rarely written directly by computer programmers. Rather, modern programmers typically write computer programs in a "higher"-Ievel programming language.
These programs are called source programs, or source code.
~lthough "source code" has been defined far more broadly
\0 some of the literature in the field, and in some of the
expert testimony in this case, more commonly the term
"source code" refers to a computer program written in some
programming language-such as FORTRAN (FORmula
TRANslation), COBOL (COmmon Business Oriented Language), Pascal, BASIC, or C-that uses complex symbolic
names, along with complex rules of syntax. In a typical
higher-level programming language, for example: the abovedescribed computation-that is, (A) + (B/C)-mlght be represented as follows:
A + B/C.
Unlike machine language, which is unique to each kind of
CPU and which is executed directly by the computer, source
code programming languages are universal to almost all computers. As a consequence, source code is executed indirectly.
Thus, a program written in source code ~ust .be translated
into the appropriate object code for execUlion ID one t~pe ?f
computer, and into a different object code for execullon ID
another type of computer. The translation can be effectuated
by an "interpreter" program or by a "compiler" program. An
"interpreter" program is a simultaneous translator tha~ works
in conjunction with the application program every lime the
application program is run, carrying out the instructions of the
program one step at a time. In contrast, a "compiler" program
translates the program once and for all into machine ~anguage,
after which the translated program can be executed directly by
the CPU without the need for any further resort to the co~
piler. A distinctive "interpreter" or "compiler" program IS
available for each type of source code programming language
and each type of CPU.
A partly literal and partly pictorial manif~station of ~ computer program, still farther removed from .dlrect use.wlth the
computer, is the flowchart. A flowchart IS a graphiC representation of a computer program that is written in symbols,
rather than in bits or symbolic names, and with a syntax that
is graphic rather than grammatical. See, e.g.: Br~yer, The
Uneasy Case for Copyright: A Study of COPYright In Books.
Photocopies. and Computer Programs. 84 Harv.L.Rev. 28 \,
341 n. 235 (\ 970) (providing simple flowchart). A f1owcha~t
can be thought of as a kind of symbolic out~ine or. sc~emat.'c
representation of a computer program's logiC, which IS Written by a programmer once he or she has a conceptualization
of the goals of the program. Creating a flowchart (at least, an
�190a
191a
early draft) is thus, typically an early phase in the development of a software system, which is followed by the translation of the flowchart into source code. See Menell, An
Analysis of the Scope of Copyright Protection for Application
Programs, 41 Stan.L.Rev. 1045, 1051 (1989) (identifying five
stages in the development of most application programs:
(I) defining the desired task; (2) flowcharting; (3) encoding;
(4) debugging; and (5) preparing documentation). On computers and computer programs in general, see Lewis Affidavit, 1111 18-42 (Docket No. 274); Galler Declaration,
1111 8-20 (Docket No. 257); A. Clapes, Software. Copyright &
Competition: The "Look and Feel" of the Law 47-64 (1989);
R. Bradbeer, P. DeBono & P. Laurie, The Beginner's Guide to
Computers (1982); McGraw-Hill Dictionary of Scientific and
Technical Terms (3d ed. 1984).
The parties agree, as a general proposition, that literal manifestations of a computer program-including both source
code and object code-if original, are copyrightable. Stern
Electronics~lnc. v. Kaufman, 669 F.2d 852, 855 n. 3 (2d Cir,
1982) ('!.written computer programs are copyrightable as literary works"); Williams Electronics Inc. v. Artic International,
Inc., 6a5 F.2d 870, 876-77 (3d Cir.1982) (object code copyrightable); Hubco Data Products, Corp. v. Management Assistance Inc., 219 U.S.P.Q. 450, 454 (D.ld.1983) (same); Apple
Computer. Inc. v. Franklin Computer Corp., 714 F.2d 1240,
1243 (3d Cir.1983) (source and object code copyrightable),
cm. dismissed, 464 U.S. 1033, 104 S.Ct. 690, 79 L.Ed.2d 158
(1984); GCA Corp. v. Chance, 217 U.S.P.Q. 718, 720
(N .D.CaI.l982) (same); Midway Manufacturing Co. v. Strohon. 564 F.Supp. 141, 150 (N.D.111.1983) (same); Digital
Communications Associates, Inc. v. Softklone Distributing
Corp., 659 F.Supp. 449, 454 (N.D.Ga.1981) (same). Also. it
appears that flowcharts, if sufficiently detailed and original,
are entitled to copyright protection:
National Commission on New Technological Uses of Copyrighted Works, Final Report and Recommendations 43 (1918)
hereinafter "Final Report"), reprinted in 5 Copyright.
Congress and Technology: The Public Record (N. Henry,
ed.1980), cited with approval in Whelan Associates, Inc. v.
Jaslow Dental Laboratory, Inc., 797 F.2d 1222, 1241 (3d
Cir.1986), cert. denied, 479 U.S. 1031, 107 S.Ct. 877, 93
L.Ed.2d 831 (1987). See also Synercom Technology. Inc. v.
University Computing Co., 462 F.Supp. 1003, 1013 n. 5
(N.D.Tex. 1978) (although taking a very narrow view of the
scope of copyrightability of nonliteral elements of computer
programs, court nevertheless noted in obiter dictum that
"it would probably be a violation to take a detailed description of a particular problem solution, such as a flowchart
. . . and program such a description in computer language ")
(Higginbotham, J.); Data Cash Systems, Inc. v. JS & A Group.
Inc .• 480 F.Supp. 1063, 1067 n. 4 (N.D.1I1.1979) (holding that
copyright protection extends "to computer programs in their
flow chart, source and assembly phases but not in their object
phase," court cuncluded that computer program written in
object code was not copyrightable), afl'd on other grounds.
628 F.2d 1038 (7th Cir.1980) (program at issue not copyrightable because publication without notice forfeited any
copyright protection); Williams v. Arndt. 626 F.Supp. 571, 578
(D.Mass.1985) (violation to take detailed prose description
and program such description in source code).
Defendants vigorously dispute, however, the copyrightability of any nonliteral elements of computer programs. That
is. defendants assert that only literal manifestations of computer programs are copyrightable. Plaintiff, on the other hand.
maintains that copyright protection elttends to all elements of
computer programs that embody original eltpression, whether
literal or nonliteral, including any original expression embodied in a program's "user interface."
One difficulty with plaintiff's argument is the amorphous
nalure of "non literal" elements of computer programs. Unlike
the written code of a program or a flowchart that can be
printed on paper, nonliteral elements-inCluding such elements as the overall organization of a program, the structure
Flowcharts. . . are works of authorship in which copyright subsists. provided they are the product of sufficient
intellectual labor to surpass the "insufficient intellectual
labor hurdle". . . .
�192a
193a
of a program's command system. and the presentation of
information on the screen-may be less tangibly represented.
Whether these elements are copyrightable. and if so. how the
nonliteral elements that are copyrightable may be identified.
are central to deciding this case.
this case does not raise constitutional issues. Rather. the
issues at stake here are issues of statutory meaning. The central question is not whether Congress could render nonliteral
elements such as those of 1-2-3 copyrightable. but whether
it has done so. Banks v. Manchester. Ohio. 128 U.S. 244. 252.
9 S.C!. 36. 39. 32 L.Ed. 425 (1888) ("No authority exists for
obtaining a copyright beyond the extent to w~ich Cong~ess
has authorized it. A copyright cannot be sustamed as a nght
existing at common law; but. as it exists in the United States.
it depends wholly on the legislation of Congress.").
II.
CONSTITUTIONAL CONSTRAINTS
In considering the legal issues relevant to whether nonliteral elements of Lotus 1-2-3 are copyrightable. and if so. to
what extent. one may appropriately begin with a provision of
the Constitution of the United States:
The Congress shall have Power . . . To promote the
Progress of Science . . . by securing fo.· limited Time
to Authors . . . the exclusive Right to their . . .
Writings . . . .
U.S. Cons!.. Art. I. § 8. cl. 8. The copyright law. codified in
Title 17 of the United States Code. rests upon this explicit
grant of legislative authority.
Undet this constitutional mandate. Congress has broad
though not unlimited authority to grant copyright monopolies
as needed to promote progress. If Congress were to determine. for example. that copyright protection is unnecessary to
"promote the Progress of' computer programming-because.
for example. in Congress' view the financial incentives alone
of developing new computer programs (without the added
benefit of copyright) are enough to encourage innovation. or
because incremental innovation might be stifled by expansive
copyright protection-then Congress could. without offending the Constitution. provide no copyright protection for computer programs. At the other extreme. were Congress to find
that strong copyright protection is necessary to promote the
progress of computer programming. Congress could provide
for expansive copyright protection for all aspects of computer
programs. again without having strayed beyond the bounds of
the constitutionally permissible.
Because the constitutional grant of power authorizes
Congress to take either path-or to chart some middle course-
III. CONGRESSIONAL MANDATES AND JUDICIAL
INTERPRETATION
A.
Sources
I.
0/ Guidance
Precedent on Determining Statutory Meaning
In Kelly v. Robinson. 479 U.S. 36. 107 S.Ct. 353. 93
L.Ed.2d 216 (1986) (Powell. J .• joined by Rehnquist. C.J .• and
Brennan. White. Blackmun. O·Connor. and Scalia. JJ.). the
Supreme Court explained the various sources of guid~nce to
which a court should look in determining themantfested
meaning of a statute and the manifestations of congressional
intent:
[T]he "starting point in every case involving construction of a statute is the language itself." Blue Chip Stamps
v. Manor Drug Stores. 421 U.S. 723. 756 [95 S.C!. 1917.
1935.44 L.Ed.2d 539] (1975) (Powell. J .• concurring).
But the text is only the starting point. As Justice O'Connor explained last Term. " . "In expounding a statute. we
must not be guided by a single sentence or member of a
sentence. but look to the provisions of the whole law.
and to its object and policy." ... Offshore Logistics. Inc.
v. rallenlire. 477 U.S. 207. 221 [106 S.C!. 2485. 2493.
91 L.Ed.2d 174] (1986) (quoting Mastro Plaslics Corp.
v. NLRB. 350 U.S. 270. 285 [76 S.C!. 349. 359. 100
L.Ed. 309] (1956) (in turn quoting United Slales v. Heirs
of Boisdore. 8 How. [49 U.S.] 113. 122.(12 L.Ed. 1009]
( 1850))).
�------------------_._-.-
194a
195a
Id. at 43, 107 S.Ct. at 358. Accordingly, to determine whether
Congress has extended copyright protection to non literal elements of computer programs, and if so, to what extent, a court
must examine, first, the relevant language of the copyright
statutes, second, "the provisions of the whole law," and third,
"its object and policy." Jd.
Examination of these sources exposes mandates inconsistent with the principal argument advanced by defendantsthat copyright protection extends only to literal manifestations
of computer programs and not to any nonliteral elements.
Close examination also discloses tbat Congress bas not
explicitly addressed some of tbe questions tbat must be
decided in this case. In these circumstances, it is appropriate
to consider legislative history as well as statutory text.
Act of Mar. 4, 1909, ch. 320, § 4, 35 Stat. 1075, 1076
(emphasis added) (previously codified at 17 U.S.C. § 4,
reprinted in 17 U.S.C.A. App. § 4 (West Supp.1990); recodified 1947; repealed 1976). To clarify the meaning of "all the
writings of an author," Congress also provided a non-exclusive list of examples. Jd. at § 5 (listing the various kinds of
works previously entitled to explicit copyright protection).
Even this generalized statement of the scope of copyrightability along with the explanatory list proved inadequate. In
1912, Congress added "motion pictures" as a further example
of "all the writings of an author." Act of Aug. 24, 1912,
ch. 356, § 5( I )-(m), 37 Stat. 488, 488 (previously codified
at 17 U.S.C. § 5(1)-(m), reprinted in 17 U.S.C.A. App.
§ 5(1)-(m); recodified 1947; repealed 1976), and in 1972,
Congress added "sound recordings" to the list, Act of Oct. 15,
1971. Pub.L. 92-140, § I(b), 85 Stat. 391, 391 (previously
codified at 17 U.S.C. § 5(n), reprinted in 17 U.S.C.A. App.
§ 5(n); repealed 1976).
In 1955, Congress began to consider another major revision
of the copyright law. After twenty years of hearings, study,
debate, and redrafting, that revision was signed into law in
1976. Act of Oct. 19, 1976, Pub.L. 94-553, 90 Stat. 2541
(codified at 17 U.S.C. §§ 101 et seq.). That law-the Copyright Act of I 976-and the 1980 amendments to the Act provide the relevant statutory mandates for this case.
2.
The Statutory Language and the History of
Amendments
a.
Pre-1976 Legislation
The Fjrst Congress extended copyright protection to "any
map, chart, book or books already printed." Act of May 31,
1790, ch. 15, § I, I Stat. 124, 124 (repealed 1831). Congress
quickly expanded this limited scope of copyright protection,
adding designs, prints, etchings and engravings in 1802,
"musical composition" in 1831, "dramatic composition" in
1856, "photographs and the negatives thereof' in 1865, and
"statuary" and "models or designs intended to be perfected
as works of the fine arts" in 1870. Act of Apr. 29, 1802, ch.
36, § 2,2 Stat. 171, 171, repealed by Act of Feb. 3, 1831,
ch. 16, §§ I, 14,4 Stat. 436, 436, 439, amended by Act of
Aug. 18, 1856, ch. 169, II Stat. 138, 139, amended by Act of
Mar. 3, 1865, ch. 126, §§ I, 2, 13 Stat. 540, 540, repealed by
Act of July 8, 1870, ch. 180, § 86, 16 Stat . .198, 212 (repealed
1909).
In 1909, Congress abandoned the effort to list exhaustively
all works in which copyright may subsist, instead adopting a
more generalized approach to copyrightability:
The works for which copyright may be secured under
this title shall include all the writings of an author.
b. The Copyright Act of 1976
Like the Copyright Act of 1909, the Copyright Act of 1976
eschews the prescription of an exclusive list of the kinds of
works that are copyrightable:
Copyright protection subsists, in accordance with this
title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perc.eived, repr~duced, ~r
otherwise communicated, either directly or wtth the aid
of a machine or device.
17 U.S.C. § 102(a) (1988) (emphasis added)'.
�196a
It is axiomatic that the designation "original" is not
intended to be limited to works that are novel or unique.
Rather, the word "original," which was "purposely left undefined" by Congress, refers to works that have been "inde. pendently created by an author," regardless of their literary or
aesthetic merit, or ingenuity, or qualitative value. H.R.Rep.
No. 1476, 94th Cong., 2d Sess. 51, reprinted at 1976 U.S.
Code Congo & Admin. News 5659, 5664 (hereinafter "House
Report"); Hutchinson Telephone CO. V. Fronteer Directory
Co .. 770 F.2d 128, 131 (8th Cir.1985); Puddu V. Buonamici
Statuary, Inc., 450 F.2d 401, 402 (2d Cir.1971) ("originality
has been considered to mean 'only that the work owes its origin to the author' ") (emphasis added; quoting Nimmer. Copyright § 10 at 32 (1971 ed.». See also Bleistein V. Donaldson
Lithographing Co .• 188 U.S. 239, 251, 23 S.Ct. 298, 300, 47
L.Ed. 460 (1903) (Holmes. J.) ("It wC/uld be a dangerous
undertaking for persons trained only in the law to constitute
themselves final judges of the worth or' a work.).
Also, the.liesignation "works of authorship" is not meant to
be limited to traditional works of authorship such as novels or
plays. Rather, Congress used this phrase to extend copyright
to new methods of expression as they evolve:
The history of copyright law has been one of gradual
expansion in the types of works accorded protection, and
the subject matter affected has fallen into two general
categories. In the first. scientific discoveries and technological developments have made possible new forms
of creative expression that never existed before. In some
of these cases the new expressive forms-electronic
music, filmstrips. and computer programs, for example-could be regarded as an extension of copyrighlable
subject matter Congress had already intended to protect.
and were thus considered copyrightable from the outset
without need of new Legislation. In other cases. such as
photographs. sound recordings, and motion pictures.
statutory enactment was deemed necessary to give them
full recognition as copyrightable works.
197a
Authors are continually finding new ways of expressing themselves. but it is impossible to foresee the for~s
that these new expressive methods will take. The bill
does not intend either to freeze the scope of copyrightable subject matter at the present stage of communications technology or to allow unlimited expansion
into areas outside the present congressional intent.
House Report at 5 I, reprinted at 5664 (emphasis added).
To help illumine the meaning of "works of. author~hip."
Congress. as it had done in the 1909 Act. agaan pro~lde~ a
statutory list of examples of those kinds of works that. If onginal. merit copyright protection:
Works of authorship include the following categories: (I)
literary works; (2) musical works, including any accompanying words; (3) dramatic works. including a~y
accompanying music; (4) pantomimes and choreographic
works; (5) pictorial. graphic, and sculptural works; (6)
motion pictures and other audiovisual works; and (7)
sound recordings.
17 U .S.C. § 102(a) (1988). This listing was intended to be
" 'illustrative and not limitative,' and . . . the seven categories do not necessarily exhaust the scope of 'original works
of authorship' that the bill is intended to pr~tect.". ~ouse
Report at 53, reprinted at 5666. Consequently. to addlllO? to
these explicitly-listed items, courts have extended copynght
protection to such works as artistic features of masquerade
costumes, National Theme Productions, Inc. V. Jerry B. Beck.
illC., 696 F.Supp. 1348, 1354 (S.D.Ca1.l988); the arrange~ent
of public-domain legal decisions in reporters, West PubllShillg CO. V. Mead Data Central. Inc., 799 F.2d 1219 (8th
Cir.1986), cert. denied, 479 U.S. 1070, 107 S.Ct. 962, 93
L.Ed.2d 1010 (1987); telephone books, Southern Bell Telephone & Telegraph CO. V. Associated Telephone DireclOry
Publishers. 756 F.2d 80 I (II th Cir.1985); televised news
reports. Pacific and Southern CO. V. Duncan, ?44 F.2d 1490,
1494, reh'g denied, 749 F.2d 733 (11th Ctr.1984). cert.
denied, 471 U.S. 1004, 105 S.Ct. 1867, 85 L.Ed.2d 161
�198a
(1985); blank answer sheets for use with student achievement
and intelligence tests that are designed to be corrected by
optical scanning machines, Harcourt, Brace &: World, Inc. v.
Graphic Controls Corp., 329 F.Supp. 517 (S.D.N. Y.1971)
(applying the 1909 Act); maps, C.S. Hammond &: Co. v. International College Globe. Inc., 210 F.Supp. 206, 216 (S.D.N. Y.
1962) (applying the 1909 Act); and a code book for cable correspondence consisting of 6,325 coined, otherwise meaningless, words of five lellers each, Reiss v. National Quotation
~ureau. Inc., 276 F. 717 (S.D.N.Y.1921) (L. Hand, J.) (applyIRg the 1909 Act).
Although Congress did not include "computer programs" in
this list of examples of "works of authorship," computer programs fall squarely within the statutory definition of literary
works:
"Literary works" are works, other than audiovisual
works, expressed in words, numbers, or other verbal or
numerical symbols or indicia, regardless of the nature
of .the-material objects such as books, periodicals, .
manuscripts, phonorecords, film, tapes, disks, or cards,
in which they are embodied.
17 ':l'S'C. § 101 (1988). See also House Report at 54,
reprinted at 5667 ("(t)he term 'literary works' . . . includes
. . . computer programs") id. at 51, reprinted at 5664 ("computer programs. . . were. . . considered copyrightable from
the outset"); id. at 116, reprinted at 5731 (1976 Act governs
"copyright-ability (sic 1of computer programs").
Like all other works of authorship, however, computer programs. even if certain elements of them are copyrightable, are
not entitled to an unlimited scope of copyright protection.
Most relevant to this case is the following limitation:
In no case does copyright protection for an original work
of authorship extend to an idea, procedure. process. sys.
tem. method of operation. concept. principle. or discovery. regardless of the form in which it is described,
explained, illustrated. or embodied in such work.
199a
17 U.S.C. § 102(b) (1988) (emphasis added). Noting that this
section applies to computer programs, the House Report
declares: "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 the copyright law." House Report at 57,
reprinted at 5670 (emphasis added); see also id. at 54,
reprinted at 5667 (computer programs are copyrightable only
"to the extent that they incorporate authorship in the programmer's expression of original ideas, as distinguished from
the ideas themselves") (emphasis added).
c. CONTU and the 1980 Amendments
Most contemporaneous observers expected that the bill that
eventually became the Copyright Act of 1976 would apply to
computer programs. Toward the end of the twenty-year proCeSs of reconsidering the copyright law. however, Congress
recognized that certain problems raised by computer and other
new technologies were not adequately addressed in the pending bill. See House Report at 116, reprinted at 5731. Accordingly. in 1974. Congress created the National Commission on
New Technological Uses of Copyrighted Works ("CONTU").
Congress gave the Commission the following mandate:
(b) The purpose of the Commission is to study and
compile data on:
(I) the reproduction and use of copyrighted works
of authorship(A) in conjunction with automatic systems capable
of storing. processing, retrieving. and transferring
information. . . .
(c) The Commission shall make recommendations as
to such changes in copyright law or procedures that may
be necessary to assure for such purposes access to copyrighted works. and to provide recognition of the rights of
copyright owners.
"
�200a
201 a
Act of Dec. 31.1974. Pub.L. 93-573. § 201(b)-(c). 88 Stat.
Act of Dec. 12. 1980. Pub.L. 96-517. 94 Stat. 3015, 3028
(codified at 17 U.S.C. § 101). Second. Congress also followed
CONTU's recommendation by amending section 117 to allow
1he owner of a computer program to make additional copies or
adaptations of the program:
1873. 1873-74 (1974).
[I look seven months after enactment of the bill to constitute the Commission and appoint the Commissioners. Because
of this delay. CONTU did not begin its deliberations until
October 1975. and did not release its report and recommendations until July 1978. almost two years after the passage of
the 1976 Act.
CONTU observed a need for copyright protection of creative expression embodied in computer programs:
The cost of developing computer programs is far greater
than the cost of their duplication. Consequently, computer programs . . . are likely to be disseminated only if
. . . [t]he creator can spread its costs over multiple
copies of the work with some form of protection against
unauthorized duplication of the work. . .. The Commission is. therefore satisfied that some form of protection is necessary to encourage the creation and broad
distribution of computer programs in a competitive mar:
kei. . . . [and] that the continued availability of copyright protection for computer programs is desirable.
CONTU. Final Report at 20-21. Concluding. however. that
the Act of 1976 already provided adequate protection,
CONTU did not propose any statutory changes with respect to
copyrightability of computer programs. On the other hand.
CONTU did propose two amendments with respect to permissible copying of computer programs. These proposed
amendments were subsequently adopted by Congress with
only minor modifications and with little additional legislative
history.
First. tracking verbatim CONTU's recommendation.
Congress amended section 101 to include the following definition:
A "computer program" is a set of statements or instructions to be used directly or indirectly .in a computer in
order to bring about a certain result.
Notwithstanding the provisions of section 106 [which
grants the copyright owner the exclusive rights to reproduce the copyrighted work). it is not an infringement for
the owner of a copy of a computer program to make or
authorize the making of another copy or adaptation of
that computer program provided:
( I ) that such a new copy or adaptation is created as
an essential step in the utilization of the computer program in conjunction with a machine and that it is used
in no other manner, or
(2) that such new copy or adaptation is for archival
purposes only and that all archival copies are
destroyed in the event that continued possession of the
computer program should cease to be rightful.
Any exact copies prepared in accordance with the provisions of this section may be leased, sotd, or otherwise
transferred. along with the copy from which such copies
were prepared. only as part of the lease, sale, or other
transfer of all rights in the program. Adaptations so prepared may be transferred only with the authorization of
the copyright owner.
Id. (codified at 17 U.S.C. § 117).
Finally. although the Commission did not address explicitly
the central issue of the present case-whether copyright protection extends to the nonliteral elements of computer programs at issue here-CONTU did re-emphasize, for purposes
of copyrightability of computer programs, the fundamental
distinction between copyrightable expression on the one hand.
and noncopyrightable methods, processes and ideas on the
other. [d. at 37-46. Indeed. although his personal views are
entitled to very little if any weight in the context of the
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court's determination of the statutory mandates, Whelan, 797
F.2d at 1241, n. 37, it is interesting to note that Melville Nimmer, Vice-Chairperson of CONTU, testified about the Commission's intent. in Evergreen Consulting v. NCR Comten,
Inc., No. 82-5946-KN (C.D.Cal. filed 1982). According to
Nimmer, CONTU understood that the proposed repeal of former section 117 would extend copyright protection to nonliteral elements of computer programs:
is, even if an infringer does not copy the words or dialogue of
a book or play, or the score of a musical work, infringement
may be found if there is copying of the work's expression of
setting, characters, or plot with a resulting substantial similarity. Nichols v. Universal Pictures Corp., 45 F.2d 119, 121
(2d Cir.1930) (L. Hand. J.) ("the right cannot be limited literally to the text, else a plagiarism would escape by immaterial variations"). cert. denied, 282 U.S. 902, 51 S.Ct. 216,
75 L.Ed. 795 (1931); Sheldon V. Metro-Goldwyn Pictures
Corp., 81 F.2d 49, 55 (2d Cir.) (L. Hand. J.) ("a play may be
pirated without using the dialogue"), cert. denied, 298 U.S.
669,56 S.Ct. 835,80 L.Ed. 1392 (1936); Detective Comics,
Inc., v. Bruns Publications, Inc., III F.2d 432, 433 (2d
Cir.1940) (defendant's comic book "Wonderman" adjudged to
infringe plaintiff's copyright in the comic book series "Superman" where both comic books' central characters have miraculous strength and speed; conceal their strength, along with
their skin-tight acrobatic costumes, beneath ordinary clothing;
are termed champions of the oppressed; crush guns; stop bullets; and leap over or from buildings); Bradbury v. Columbia
Broadcasting System, Inc., 287 F.2d 478, 482-84 (9th Cir.)
(twenty-two nonliteral similarities between plaintiff's Fahrenheit 451 and The Fireman and defendants' television production), cert. dismissed, 368 U.S. 801, 82 S.Ct. 19, 7
L.Ed.2d 15 (1961); Roth Greeting Cards v. United Card Co.,
429 F.2d 1106 (9th Cir.1970)(substantial similarity between
non literal expressive elements embodied in defendant's cards
and plaintiff's cards); Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157 (9th
Cir.1977) (defendant'S television commercial substantially
similar in locale, characters, and plot to plaintiff's children's
television series); Twentieth Century-Fox Film Corp. v. MCA,
IIIC., 715 F.2d 1327 (9th Cir.1983) (thirteen alleged similarities between plaintiff's motion picture, Star Wars, and defendant's motion picture and derivative television series,
Battlestar: Gal/actica-including totality of selling, characters and their relationships, and elements of plot-were sufficient to create genuine dispute of material fact to defeat
CONTU had no views, and made no recommendations
which would negate the availability of copyright protection for the detailed design, structure and flow of a
[computer) program under the copyright principles that
make copyright protection available, in appropriate circumstances, for the structure and flow of a novel, a play
or a motion picture.
Nimmer Decl. in Evergreen Consulting, 1128, reprinted in
Note,ldea, Process, or Protected Expression?: Determining
the Scope of Copyright Protection of the Structure of Com-'
puter Programs, 88 Mich.L.Rev. 866, 889 (1990). But cf. conflicting views of Commissioner Arthur Miller and Executive
Director Arthur Levine, discussed in id. at 888-90.
3.
Relevant Aspects of the Whole Law of Copyright
a.
.. Nonliteral" Expression
With respect to such things as musical, dramatic, and
motion picture works, and works of "literature" (as contrasted
with "literary" works in the broader statutory sense, see
Samuelson, Reflections on the State of American Software
Copyright Law and the Perils of Teaching It, 13 Colum.-VLA
1.L. & Arts 61, 65 n. 15 (1988», it is crystal clear that, to the
extent original, the literal manifestations of such works are
protected by copyright. Thus, during a period of copyright
protection, one cannot copy an author's book, score, or script
without authorization in law or in fact. It is also well sellled
that a copyright in a musical, dramatic, or motion picture
work, or a work of literature, may be infringed even if the
infringer has not copied the literal aspects of tile work. That
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defendant's motion for summary judgment); Horgan v.
Macmillan, Inc., 789 F.2d 157, 162 (2d Cir.1986) (copyright
in choreography for The Nutcracker ballet may be infringed
by a book of photographs of the ballet if the series of photographs is substantially similar to the ballet). See also Stewart v. Abend, _
U.S. - ' 110 S.Ct. 1750, 1759, 109
L.Ed.2d 184 (1990) (noting that a motion picture may infringe
a book by using "the story's unique setting, characters, plot,
and sequence of events"). This type of copying of nonliteral
expression, if sufficiently extensive, has never been upheld as
permissible copying; rather, it has always been viewed as
copying of elements of an expression of creative originality.
Whelan, 797 F.2d at 1236 ("the purpose or function of a utilitarian work (is] the work's idea, and everything that is not
necessary to that purpose or function (is] part of the expression of the idea"); Williams Electronics, Inc. v. Bally Manufacturing Corp., 568 F.Supp. 1274, 1279-80 (N.D Ill.1983)
(Congress intended to exclude from copyright protection
functional elements of work, leaving only those aspects of
work separable from utilitarian aspects copyrightable).
b.
"Useful Articles"
A "useful article" is defined by the Copyright Act as
an article having an intrinsic utilitarian function that is
not merely to portray the appearance of the article or to
conve~nformation. An article that is normally a part of.
a ),lseful article is considered a "useful article."
17 U.S.C. § 101 (1988). Such articles-or more accurately,
the utilitarian aspects of such articles-are not works of
authorship in which copyright can subsist. House Report at
55, reprinted at 5668. However:
[T]he design of a useful article . . . shall be considered
a pictorial, graphic, or sculptural work [which is copyrightable] . . . if, and only to the extent that, such
design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are
capable of existing independently of, the utilitarian
aspects of the article.
17 U.S.C. § 101 (1988) (defining "pictorial, graphic, and
sculptural works"). Put more broadly, the point is that those
elements of a useful article that can exist independently of the
utilitarian aspects of the article are potentially copyrightable
because those elements are elements of expression that can be
distinguished from the utilitarian functions of the article. See
4.
The Objects and Policies of Copyright Law
The court's final task in divining the statutory mandates is
to look to the "object and policy" of the copyright law. Kelly,
479 U.S. at 43, 107 S.Ct. at 358. This inquiry has received
heightened attention in this case (see Part VII, infra) because
defendants contend that extending copyright protection to
nonliteral elements of computer programs is contrary to the
objects and policies of copyright law as expressed in the
copyright statute and in precedents. Although, of course, disputing defendants' conclusion, plaintiff does not contest the
premise of this contention-that in construing the manifested
meaning of the Copyright Act, the court is directed to look to
.
the "object and policy" of the copyright law.
Copyright monopolies are not granted for the purpose of
rewarding authors. Rather, Congress has granted copyright
monopolies to serve the public welfare by encouraging authors (broadly defined) to generate new ideas and
disclose them to the public, being free to do so in any
uniquely expressed way they may choose. Harper &: Row.
Publishers. Inc. v. Nation Enterprises. 471 U.S. 539, 546,105
S.C!. 2218, 2223, 85 L.Ed.2d 588 (1985). As the Supreme
Court has concluded, "encouragement of individual effort by
personal gain is the best way to advance public welfare
through talents of authors and inventors in 'Science and useful Arts.' .. Mazer v. Stein, 347 U.S. 201,219.74 S.C!. 460,
471,98 L.Ed. 630 reh 'g denied, 347 U.S. 949, 74 S.C!. 637,
98 L.Ed. 1096 (1954). See also Sony Corp. v. Universal City
Studios, Inc., 464 U.S. 417, 432, \04 S.C!. 774, 783, 78
L.Ed.2d 574 (1984) (" 'The immediate effeci'of our copyright
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law is to secure a fair return for an "author's" creative labor.
But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good.' ") (quoting Twentieth Century Music Corp. v. Aiken, 422 U.S. lSI, 156,95
S.CI. 2040, 2043, 45 L.Ed.2d 84 (1975».
In construing the relevant statutory mandates, the court
must be faithful to the statutory language and mindful of both
the ultimate goal of copyright law-the advancement of public welfare-and Congress' chosen method of achieving this
goal-private reward to the individual author. Courts should
not draw the line between copyrightable and non-copyrightable elements of computer programs in such a way as to
harm the public welfare, nor should courts ignore the accommodation struck by Congress in choosing to advance the public welfare by rewarding authors. These mandates leave courts
with a delicate task:
Drawing the line too liberally in favor of copyright protection would bestow strong monopolies over specific
applications upon the first to write programs performing .
tho'se applications and would thereby inhibit other creators from developing improved products. Drawing the
line too conservatively would allow programmer's
efforts to be copied easily, thus discouraging the creation
of all but modest incremental advances.
Menell, Scope of Copyright Protection for Programs, 41
Stan.L.Rev. at 1047-48. See also Note, Scope of Copyright
Protection of Computer Program Structure, 88 Mich.L.Rev.
at 895; Note, Defining the Scope of Copyright Protection for
Computer Software, 38 Stan.L.Rev. 497, 498 (1986).
Rather than itself drawing the boundary line betwe~n copyrightable and non-copyrightable elements of computer programs, Congress has mandated that courts use an evaluative
standard in determining this boundary line-that is, a standard that distinguishes idea from expression and requires that
a court, in applying this distinction, be sensitive to the object
and policy of copyright law as manifested by Congress.
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When statutes establish evaluative standards for deciding
cases, courts-by necessity-must locate boundaries in
unchartered terrain, using the markers that Congress has
placed. At some places a boundary may run straight as a surveyor's sight-line between markers; at others, it may meander
like a stream, moving toward resolution of clashing objects
and policies the markers identify. No marker Congress has
placed may be disregarded or relocated by courts. Even in
those instances where text and context make clear that literal
description of a marker is contrary to manifested meaning (as
where "not" must be inserted or deleted to make sense of the
statutory language) what the court is doing is aptly described
as "locating," not "relocating," the marker Congress mandated. The fewer the markers Congress has placed, the more
critical it becomes that courts assure that no marker escapes
notice.
B.
The Idea-Expression and UsefuL-Expressive Distinctions
Although the statutory mandates are ambiguous in some
critical respects, one point on which they are clear (one
marker of the boundary line) is this: at least some, but clearly
not all, aspects of computer programs, if original, are "works
of authorship" in which copyright can subsist. 17 U.S.C.
§ I 02(a)( I); House Report at 54, reprinted at 5667; CONTU,
Final Report at 21. How can a court determine which aspects
are copyrightable?
The interplay between sections 102(a) and 102(b), illumined by the related legislative history, manifests that the
statute extends copyright protection to expressive elements of
computer programs, but not to the ideas, processes, and methods embodied in computer programs. House Report at 54, 57,
reprillted at 5667, 5670. This dichotomy-which is often
referred to as the "idea-expression distinction," and which
embraces also the process-expression, method-expression, and
useful-expressive distinctions, see Note, Determining the
Scope of Copyright Protection of Computer Program Struc·
ture, 88 Mich.L.Rev. at 866-67-has long been a fundamental part of our copyright law. Baker v. Selden, -WI U.S. 99, 25
L. Ed. 841 (1879). In that seminal case, the Court held that the
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text of a book describing a special method of double-entry
accounting on paper spreadsheets-the now almost universal
T-accounts system-was copyrightable expression, but that
the method itself, which embodied the idea of this particular
kind of double-entry bookkeeping, was not. The Court thus
concluded that Baker did not infringe Selden's copyright
when Baker wrote his own treatise, in his own words, describing the special double-entry method of bookkeeping.
CONTU, too, concluded that the idea-expression distinction
should be used to determine which aspects of computer programs are copyrightable. CONTU, Final Report at 37-46. The
Commission recognized, though, that "[ilt is difficult, either
as a matter of legal interpretation or technological determination, to draw the line between the copyrightable element of
style and expression in a computer program and the process
which underlies it." Id. at 44.
CONTU, of course, was not an official voice of Congress,
and its views are not, without more, attributable to Congress.
Thus, courts_must not treat the CONTU report as legislative.
history,-in the ordinary sense, much less as an authoritative
statement about manifested legislative intent. Whelan, 797
F.2d at 1241-42. The privately held views of Vice-Chairperson Nimmer and Commissioner Miller, and especially the
privately held views of Executive Director Levine, see declarations in Evergreen Consulting, without some manifestation of congressional endorsement, are even less relevant to
the determination of manifested congressional intent. Id at
1241 n. 37.
Congress, however, did not ignore CONTU. Indeed, as
already noted, Congress adopted practically verbatim the
Commission's proposed statutory changes with respect to
computer programs. Thus, the expressed views of the Commission, to the extent not repudiated by Congress, may help
to explain the context in which Congress acted, which in turn
may support inferences about the meaning of any otherwise
ambiguous passages in what Congress declared.
I conclude that, with the Copyright Act of 1976 and the
1980 amendments to that Act, Congress manifested an inten-
tion to use the idea-expression distinction as part of the test
of copyrightability for computer programs. That is, rather
than adopting some other test of copyrightability that made
the idea-expression dichotomy irrelevant (such as defendants'
proposed literal-non literal distinction), Congress chose to
extend copyright protection to original expression embodied
in computer programs, but not to any idea, method, or process
described by that expression. 17 U.S.C. §§ 102(a), 102(b);
House Report at 54, 57, reprinted at 5667,5670.
That conclusion is consistent with the treatment of other
kinds of intellectual works-specifically, with the treatment
of nonliteral elements of expression in musical, dramatic, and
motion picture works, and works of literature. It is also consistent with the treatment of useful articles. That is, as
explained more fully in Part IV(A), infra, I conclude that the
user interface and some other nonliteral aspects of computer
programs are not merely articles "having an intrinsic utilitarian function." 17 U.S.C. § 101 (defining "useful article").
When computer programs include elements-both literal and
nonliteral-"that can be identified separately from, and are
capable of existing independently of, the utilitarian aspects of
the article," id. (defining "pictorial, graphic, and sculptural
works"), they are potentially copyrightable.
Finally, this conclusion is also consistent with the objects
and policies of copyright-to encourage the creation and dissemination of new ideas by protecting, for limited times, the
specific way that an author has expressed those ideas.
IV. THE LEGAL TEST FOR COPYRIGHTABILITY
APPLICABLE TO THIS CASE
A.
Functionality, Useful Articles, and the Useful-Expressive
Distinction
Defendants suggest that the user interface of Lotus 1-2-3 is
a useful. "functionlaIJ" object like the functional layout of
gears in an "H" pattern on a standard transmission. the functional assignment of letters to keys on a standard QWERTY
keyboard, and the functional configuration of controls on a
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musical instrument (e.g., keys of a piano). Lewis Affdvt.
1111 52-54. These "functional" "useful articles," defendants
contend, are not entitled to copyright protection.
A similar analogy was made in Synercom where the court
concluded that a sequence of data inputs for a statistical analysis program was like the "figure-H" pattern of a standard
transmission. 462 F.Supp. at 1013. Synercom, though, was
published less than a month after the publication of the
CONTU report (which it never cites) and well before the 1980
amendments. Since then, congressional and judicial development of the law of copyrightability of computer programs
has advanced considerably, and Synercom s central proposition-that the expression of non literal sequence and order is
inseparable from the idea and accordingly is not copyrightable-has been explicitly rejected by several courts. E.g.,
Whelan, 797 F.2d at 1240, 1248 ("copyright protection of
computer programs may extend beyond the programs' literal
code to their structure, sequence, and organization"); Broderbund Softwar.e, Inc. v. Unison World, Inc., 648 F.Supp. 1127,
I 133 (~D.CaI.1986) ("copyright protection is not limited to .
the literal aspects of a computer program, but rather . . . it
extends to the overall structure of a program, including its
audiovisual displays"). Moreover, even those courts that have
not gone as far as Whelan and Broderbund have still gone
much farther in protecting computer programs than Synercom.
E.g., SAS Institute, Inc. v. S & H Computer Systems, Inc., 605
F.Supp. 816, 830 (M.D.Tenn.1985) ("copying of the organization and structural details" can form basis for infringement); Manufacturers Technologies, Inc. v. CAMS, Inc., 706
F.Supp. 984, 993 (D.Conn.1989) ("screen displays or user
interface" copyrightable); Johnson Controls, Inc. v. Phoenix
Control Systems, Inc., 886 F.2d 1173, 1175 (9th Cir.1989)
(nonliteral aspects such as "structure, sequence and/or organization of the program, the user interface, and the function,
or purpose, of the program", are copyrightable to the extent
that they embody expression rather than idea); Telemarketing
Resources v. Symantec Corp., 12 U.S.P.Q.2d 1991, 1993, 1989
WL 200350 (N.D. Ca1.l989) (holding that "[c)opyright pro-
tection applies to the user interface, or overall structure and
organization of a computer program, including its audiovisual
displays, or screen 'look and feel: " but finding no infringement in this case); Q-Co. Industries v. Hoffman. 625 F.Supp.
608, 615-16 (S.D.N. Y.1985) (similarity of "structure and
arrangement" can form basis of infringement suit, but here,
structural similarities were dictated by functional considerations and hence were non-copyrightable ideas rather than
copyrightable expression); Pearl Systems, Inc. v. Competition
Electronics. Inc .• 8 U.S.P.Q.2d 1520, 1524, 1988 WL 146047
(S.D.Fla.1988) ("Copyright protection of computer software
is not limited to the text of the source or object code"). But
see Softklone. 659 F.Supp. at 455. 465 (rejecting Broderbund s conclusion that audiovisual screen displays are copyrightable. although holding that separate copyright on status
screen display was infringed where "total concept and feel"
was copied); Plains Cotton Cooperative Association v. Goodpasture Computer Service. Inc., 807 F.2d 1256. 1262 (rejecting Whelan's protection for structure. sequence, and
organization, court instead held that sequence and organization, where dictated by market forces, is non-copyrightable
idea rather than copyrightable expression), reh 'g denied, 813
F.2d 407 (5th Cir.), cert. denied, 484 U.S. 821. J08 S.Ct. 80,
98 L.Ed.2d 42 (1987). In any event, Synercom's input formats
are quite different from, and distinguishable from. the nonliteral aspects of 1-2-3 at issue in this case.
Defendant's proposed analogy is also similar to the analogy
drawn by Commissioner Hersey between a computer program
and an object that is designated to do work-for example, the
cam of a drill. CONTU, Final Report at 58-60 (Hersey, C.,
dissenting). His view, however, was in dissent, and not a view
advanced by CONTU. Because Congress adopted CONTU's
recommendations practically verbatim, it is reasonable to
infer that Congress did not adopt Commissioner Hersey's
view.
Moreover, I conclude that defendants' contentions, to the
extent they are similar to Synercom 's central proposition and
to Commissioner Hersey's views in dissent, ate inconsistent
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with the legislative history and statutory mandates explained
above. If, in a context such as that of Synercom or of this
case, an idea and its expression were taken to be inseparable
and the expression therefore not copyrightable, copyright law
never would, as a practical maller, provide computer programs with protection as substantial as Congress has mandated-protection designed to extend to original elements of
expression however embodied. I credit the testimony of
expert witnesses that the bulk of the creative work is in the
conceptualization of a computer program and its user interface, rather than in its encoding, and that creating a suitable
user interface is a more difficult intellectual task, requiring
greater creativity, originality, and insight, than converting the
user interface design into instructions to the machine. See
Galler Dec\. 1111 37, 39; Emery Dec\. 111122, 25-28 (Docket No.
265); Reed Dec\. 111126-27 (Docket No. 290). Defendants'
contentions would attribute to the statute a purpose to protect
only a narrowly defined segment of the creative development
of computer programs, and to preclude from protection even
more significant creative elements of the process. Such a
result is fundamentally inconsistent with the statutory
mandates.
Also, defendants' contention would have the additional
consequence that computer programmers would have little, if
any, more protection for nonliteral elements of expression
embodied in their original works of authorship than is already
provided by trade secret law. If the intellectual effort and creativity embodied in a user interface were protectable only by
trade secret law, the length of protection for computer programs would be very short-merely the time it takes to examine a program and then duplicate the nonliteral elements in a
newly written computer program. This short period of protection is fundamentally inconsistent with the mandates of the
copyright law.
Defendants have advanced their "useful article" (or "functionality") argument in many forms. Never, however, have
they stated every premise that is a step of the reasoning
implicit in the argument. One set of unstated premises is the
assumed meanings of "useful," "article," and "useful article."
Indeed, different forms of their argument have depended on
different assumed meanings for one or more of these three
terms. Some illustrations will clarify this point.
Suppose, first, the form of the argument is this:
A "useful article" is not copyrightable; a "computer program" is an "article," and a good "computer program" is
"useful"; therefore, a good "computer program" is not
copyrightable.
In this illustration, "useful," "artie Ie," and "useful article" are
assumed to have meanings consistent with ordinary usage
(with an exception to be noted below). The proposition that
emerges when the words are interpreted in this way is, of
course, plainly contrary to congressional mandates. Congress
must have had some purpose in defining "computer program"
and declaring that an "owner of a copy of a computer program" may make additional copies, in specified circumstances, without violating copyright laws. 17 U.S.C. §§ 101,
117. The clear implication of the 1980 amendments is that in
some circumstances, at least, a good computer program is
copyrightable. Otherwise, there would have been no need for
Congress to enact these two provisions about a "computer
program" and additional "copies."
It follows that, for this defense argument to make any sense
and also be consistent with congressional mandates, defendants must be proposing that "useful", or "article," or "useful article," or all three, be interpreted in some sense different
from their ordinary meanings. In what sense, though, they
never say.
Suppose, second, a different form of the argument:
A "useful article" is not copyrightable; a "screen display" is an "article," and a good "screen display" is
"useful"; therefore, a good "screen display" is not copyrightable.
Here, the implicit meaning of "article" is being stretched
beyond ordinary usage to apply to what one wpuld ordinarily
think of as just one part of an article, rather than itself an ani-
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c1e. Also, the implicit meaning of "article" stretches beyond
what one would ordinarily think of as something that, as part
of a larger "article," is itself an "article." Thus, the implicit
meaning of "article" is broader still than the statutory mandate that "Ca]n article that is normally a part of a useful article is considered a 'useful article.''' 17 U.S.C. § 101
(emphasis added). Are these expansions of the meaning of
"article" consistent with the text and with the object and policy manifested in the statute? We may be better prepared to
answer after considering one more illustrative form of the
argument.
Suppose, third, this form of the argument:
A "useful article" is not copyrightable; a "user interface"
is an "article," an" a good "user interface" is "useful";
therefore, a good "user interface" is not copyrightable.
Here, the meaning of "article" is plainly stretched beyond
ordinary usage, and especially when we understand "user
interface" in a sense broad enough to include non literal elements s,!ch
the command structure. Moreover, unease that.
we are being led into a departure from statutory text and manifested object and policy grows deeper as we reflect still more
on this illustrative form of the argument.
One problem is that the argument depends on changing the
assumed meaning of one or all of "useful," "article," and
"useful article," to suit the needs of the copier who is advancing the argument as a defense against a claim of copyright
infringement.
An even deeper fallacy of the argument, however, is that it
assumes a meaning of "useful article" in step one ("a 'useful
article' is not copyrightable") that goes far beyond ordinary
meanings of "useful" and "article" combined. That is, not
merely does it assume a descriptive meaning of something
that is an "article" and is also "useful," but in addition it
assumes that the definition of "useful article" includes, as
something built into it, a rule of law: Everything that is a
"useful article" in a descriptive sense is also, by rule of law,
not copyrightable, and under this rule of law, nothing about a
as
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"useful article"-no element, no aspect, no part of it-can
ever be copyrighted. Merely to expose this assumed prescriptive meaning of "useful article," as defendants persistently use the phrase, is to demonstrate that any argument
founded upon this meaning is fundamentally inconsistent with
the mandates of the copyright statute.
It may be quite true, with respect to "useful articles"indeed I believe it to be so-that their utilitarian aspects are
not copyrightable, and that things that merely uller work, such
as the cam of a drill, are not copyrightable. It is not true,
however, that every aspect of a user interface that is "useful"
is therefore not copyrightable. For example, Lotus 1-2-3 is
surely "useful." It does not follow that when an intellectual
work achieves the feat of being useful as well as expressive
and original, the moment of creative triumph is also a moment
of devastating financial loss-because the triumph destroys
copyrightability of all expressive elements that would have
been protected if only they had not contributed so much to the
public interest by helping to make some article useful.
Defendants' contention misses this point by proceeding on
an erroneous assumption about the role of "functionality" in
copyright law. It is true that "functionality" of an article does
not itself support copyrightability. Thus, it never strengthens
a claim for copyright to show that the "work" for which copyright protection is claimed is useful. A congressional mandate
that "proof that an intellectual work is a 'useful article' does
not support the author's claim for copyright" is not, however,
a mandate that "if one who copied the author's work proves
that the work was 'useful' or 'functional,' the author loses all
copyright protection." Transforming a mandate that "proof of
usefulness does nor srrengrhen a copyright claim" to a mandate that "proof of usefulness destroys a copyright claim" is,
to say the least, a remarkable intellectual leap. Defendants
have not advanced such a proposition explicitly. But this is in
fact an implicit premise of their contention-or a consequence
of it, if one takes a hindsight view of having applied their
proposed rule in decisionmaking: In effect, their proposed
rule would work this way: Anything that is useful is a "use-
"
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ful article"; nothing about a "useful article" is ever copyrightable; because 1-2-3 is useful. and is an article. it is not
copyrightable.
A more sensible interpretation of the statutory mandate is
that the mere fact that an intellectual work is useful or functional-be it a dictionary. directory. map. book of meaningless
code words. or computer program-does not mean that none
of the elements of the work can be copyrightable. Also. the
statute does not bar copyrightability merely because the originality of the expression becomes associated. in the marketplace. with usefulness of the work to a degree and in
dimensions not previously achieved by other products on the
market. Brandir International. Inc. v. Cascade Pacific Lumber Co .• 834 F.2d 1142. 1147 (2d Cir.1987) ("[A) copyrighted
work. . . does not lose its protecled status merely because it
subsequently is put to functional use."); NEC Corp. v. Intel
Corp., 645 F.Supp. 590. 595 (N.D.CaJ.l986) ("function performed by defendant's microprograms. . . does not affect
their status..as copyrightable subject matter"). vacated 0/1
grounds-of judge's recusal, see 835 F.2d 1546 (9th Cir.1988).
To hold otherwise would be to deny copyright protection to
the most original and least obvious products of the creative
mind merely because the marketplace accepts Ihem as distinctively "functional." Such a rule would grant copyright
protection for only those products Ihat fall far short of being
the best available. Rather than promoting and encouraging
both the development and disclosure of the best. such a rule
would offer incentives to market only the second. or third or
tenth best. and hold back the best for fear that it is too good
for copyrightability. Copyrightability is not a synonym for
imperfection.
Accordingly. I conclude that a court. in determining
whether a particular element is copyrightable. must not allow
one statutory mandate-that funclionalily or usefulness is not
itself a basis for copyrightability-to absorb and destroy
another statutory mandate-that elements of expression are
copyrightable. Elements of expression. even if embodied in
useful articles. are copyrightable if capable of identification
and recognition independently of the functional ideas that
make the article useful. This mandate may be viewed as a
corollary of the central distinction of copyright law between
idea and expression. which is explored further immediately
below.
B.
The Idea-Expression Riddle: Four Additional Concepts
It is by now plain that an idea is not copyrightable and an
expression may be. It does not follow. though. that every
expression of an idea is copyrightable. To begin to get an
understanding of the legally significant contrasts among an
idea. noncopyrightable expressions of the idea. and a copyrightable expression. we must take account of four more
concepts.
Earlier parts of this Opinion refer to two .of these ~our-:
"originality" and "functionality." The expreSSIon of an Ide~ IS
copyrightable only if it is original-that is. if the expressIOn
originated with the author. 17 U.S.C. § 102(a); see Part
II1(A)(2)(b). supra. Even then the expression of the idea is
not copyrightable if the expression does no more than embody
elements of the idea that are functional in the utilitarian sense.
17 U.S.C. § 102(b); see Part )V(A) supra.
.
The third concept is "obviousness." When a particular
expression goes no farther than the obviou~. it is in~ep.ar~ble
from the idea itself. Protecting an expression of thiS IImlled
kind would effectively amount to protection of the idea. a
result inconsistent which the plain meaning of the statute.
E.H. Tale Co. v. Jiffy Enterprises. Inc .• 16 F.R.D. 571. 573
(E.D.Pa.1954) (small sketch and accompa~ying inst.ruction
"Apply hook to wall" so obvious that it IS not entllied to
copyright protection).
It is only a slight extension of the idea of "obviousness"and one supported by precedent-to reach the fourt~ co.nc~pt:
"merger." If a particular expression is one of a qutte IImtted
number of the possible ways of expressing an id~a. then,
under this fourth concept. the expression is not copYrightable:
When the uncopyrightable subject matler'is very narrow,
so that "the topic necessarily requires." if not only one
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form of expression, at best only a limited number, to permit copyrighting would mean that a party or parties, by
copyrighting a mere handful of forms, could exhaust all
possibility of future use of the substance. In such circumstances it does not seem accurate to say that any particular form of expression comes from the subject matter.
However, it is necessary to say that the subject matter
would be appropriated by permitting the copyrighting of
its expression. We cannot recognize copyright as a game
of chess in which the public can be checkmated ..
Morissey v. Procter & Gamble Co., 379 F.2d 675, 678-79 (1st
Cir.1967) (citations omitted). See also Concrete Machinery
Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 606 (I st
Cir.1988) ("When there is essentially only one way to express
an idea, the idea and its expression are inseparable and copyright is no bar to copying that expression."); Herbert Rosen.
thai Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th
Cir.1971) (idea of a jewel-encrusted life-like bee pin inseparable from'-expression; thus expression not copyrightable'
because-"protecting the 'expression' in such circumstances
would confer a monopoly of the 'idea' upon the copyright
owner"). Cf Atari, Inc. v. North American Philips Consumer
Electronics Corp, 672 F.2d 607, 616 (7th Cir.), cert. denied,
459 U.S. 880, 103 S.C!. 176, 74 L.Ed.2d 145 (1982) (scenes
a faire of literary works-"stock literary devices" such as
"incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a
given topic"-"are not protectible [sic] by copyright");
Landsberg v. Scrabble Crossword Game Players, Inc., 736
F.2d 485, 489 (9th Cir.) (scenes a faire not copyrightable
because granting a copyright "would give the first author a
monopoly on the commonplace ideas behind the scenes a
faire"), cert. denied, 469 U.S. 1037, 105 S.Ct. 513, 83
L.Ed.2d 403 (1984).
If, however, the expression of an idea has elements that go
beyond all functional elements of the idea itself, and beyond
the obvious, and if there are numerous other ways of express-
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ing the non-copyrightable idea, then those elements of expression, if original and substantial, are copyrightable.
C.
Elements of the Legal Test for Copyrightability
A "legal test," as I use the phrase here, is a statement of the
elements of fact, or law, or both fact and law, that must be
addressed by a decisionmaker to decide a question potentially
decisive of some claim or defense. "Copyrightability" of nonliteral elements of Lotus 1-2-3 is essential to the claim of the
plaintiff in this case.
.
As already noted, the legal test for deciding copyrightability, in a factual context such as is presented here, has not
been precisely defined either in the copyright statute or in
precedents interpreting and applying it. Nevertheless, the
statute and the precedents contain many mandates-"markers" of the borderline between copyrightability and non-copyrightability-that narrow the scope of the questions remaining
to be answered to determine what test to apply.
Drawing into one statement the fundamental truths about
ideas and the.ir expression that were sketched above, one may
accurately say that the issue of copyrightability of a "work"
turns not on whether the work expresses ideas but instead on
whether, in addition to expressing one or more ideas, in some
material respect it does more, and in an original way. One
need not totally disentangle the idea from its expression in
order to conclude that a particular aspect is expression.
Indeed. to speak as if it were ever possible completely to disentangle an idea from an expression of that idea is to speak
abstract fiction rather than real-life fact. Disentanglement,
then, is not an "either-or," "0-1," "negative-positive," or
"binary" mailer. It is. instead, a matter of degree.
Still, even if the "idea" cannot be completely disentangled
from its expression, to determine what is copyrightable a
dccisionmaker must understand the meaning of "idea" within
the idea-expression distinction. To do so one must take note
a Iso of another distinction-one between generality and
specificity of conceptualizing the idea. Thus, ~ statement of
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the most significant elements of the legal test for copyrightability, consistent with precedents, begins:
Hand described such "ad hoc" decision making as "fiat," Sinram v. Pennsylvania Railroad Co., 61 F.2d 767, 771 (2d
Cir.1932) (L. Hand, J.). In whatever way this kind of decisionmaking may be described, Hand offered us no formula for
distinguishing between idea and expression like that he
devised for the calculus of reasonable care in United States v.
Carroll Towing Co., 159 F.2d 169, 173 (L. Hand, J.) (articulating the "BPL" formula), reh'g denied, 160 F.2d 482 (2d
Cir.1947). It seems the better part of wisdom, if not valor, not
to press the search for a suitable brightline test of copyrightability where Learned Hand, even after decades of experience in judging, found none.
For all these reasons, as a practical necessity, whether
explicitly or only implicitly, courts apply an abstractions scale
in determining copyrightability. In doing so they make a decision involving choice and judgment of a type that human
minds make regularly in daily affairs, but computers of the
current state of the art cannot make. Z Still, though "judgment"
is required and the answer to be given is not precisely "calculable," analogies to arithmetic calculations and to "scales
of justice" may aid the human mind in choosing and "weighing" factors that properly go into the metaphoric calculus.
In summary, one among the principal elements to be
weighed in determining copyrightability when the ideaexpression distinction applies is to conceive and define the
idea in a way that places it somewhere along the scale of
abstraction (somewhere between the most abstract and the
most specific of all possible conceptions). Illustrations from
the evidence in this case will help to explain in a more concrete way this element of the legal test for copyrightability.
See Part V(C), infra. Before turning to those illustrations,
however, I state in a similarly abstract way, to be explained
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 formulationsome conception or definition of the "idea"-for the
purpose of distinguishing between the idea and its
expression.
As Learned Hand recognized in a 1930 case concerning the
alleged infringement of the copyright of a play:
Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally
well, as more and more of the incident is left out. The
last may perhaps be no more than the most general statement of-what the play is about, and at times might consis(.only of its title; but there is a point in this series of .
abstractions where they are no longer protected, since
otherwise the playwright could prevent .the use of his
"ideas," to which, apart from their expression, his property is never extended. Nobody has ever been able to fix
that boundary, and nobody ever can.
Nichols, 45 F.2d at 121 (citations omitted). See also Shipman
v. RKO, Radio Pictures, 100 F.2d 533, 538 (2d Cir.1938) (L.
Hand, J., concurring) ("Nichols . .. held that there is a point
where the similarities are so little concrete (and therefore so
abstract) that they become only 'theme', 'idea', or skeleton of
the plot. and that these are always in the public domain; no
copyright can protect them. The test is necessarily vague and
nothing more definite can be said about it.") Thirty more
years of experience in judging did not change Learned Hand's
view: "Obviously, no principle can be stated as to when an
imitator has gone beyond copying the 'idea,' and has borrowed its 'expression.' Decisions must therefore inevitably be
ad hoc." Peler Pan Fabrics, Inc. v. Martin Weiner Corp., 274
F.2d 487, 489 (2d Cir.1960) (L. Hand, J.). In another context,
Despite Time Magazine's decision to honor "the computer" as its
1982 "Man of the Year," and despite advances in the field of artificial
intclligence, I take it as a premise or decision making in this case that
computcrs, ror beller or worse, do not yet have the human reelings,
strengths, and railings that lie beyond those we desclibe as logical, or
cognitive, or intellectual in the broadest sense.
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later by illustrations, two more elements that I conclude a
decisionmaker must consider to determine copyrightability of
a computer program like that at issue in this case.
In addition to taking account of the distinction between
generality and specificity, to make use of Hand's abstraction
scale for applying the idea-expression distinction we need to
identify and distinguish between essential and nonessential
details of expressing the idea. Some, but of course not all,
details, are so essential that their omission would result in a
failure to express that idea, or in the expression of only a different and more general idea. Accordingly, two more elements in the legal test for copyrightability are:
test identifies as relevant. I do not suggest that the three elements identified here are an all-inclusive list. They do appear,
however, to be the principal factors relevant to decision of
copyrightability of a computer program such as Lotus 1-2-3.
If the decisionmaker, weighing the relevant factors, determines that the legal test applying the idea-expression distinction is satisfied, copyrightability is established. Issues
may remain, of course. as to whether a copyright was perfected and whether the alleged infringing work, measured by
the "substantial similarly" test, did contain elements that
infringed upon the copyrightable elements of the copyrighted
"work." Also, issues may remain as to whether damages have
been proved, or whether the controversy over infringement is
instead" 'a trivial pother,' a mere point of honor, of scarcely
more than irritation, involving no substantial interest," Fred
Fisher. Inc. v. Dillingham, 298 F. 145, 152 (S.D.N.Y.1924) (L.
Hand, J.) (citations omiued), for which only statutory damages should be awarded. 17 U.S.C. § 504(c) (1988).
SECOND, the decisionmaker must focus upon whether
an alleged expression of the idea is limited to elements
essential to expression of that idea (or is one of only a
few ways of expressing the idea) or instead includes
identifiable elements of expression not essential to every
expression of that idea.
'J:HIRD, having identified elements of expression nol
essential to every expression of the idea, the decisionmaker must focus on whether those elements are a substantial part of the allegedly copyrightable "work."
In addressing this third element of the test for copyrightability, the decisionmaker is measuring "substantiality" not
merely on a quantum scale but by a test Ihal is qualitative as
well. SAS Institute, 605 F.Supp. at 829-30 ("the piracy of even
a quantitatively small fragment ('a rose by any other name
would smell as sweet') may be qualitatively substantial").
By its nature, a legal test that requires weighing of factors
or elements such as these is not a bright-line or an either-or
test. It requires of the decisionmaker, instead, an evaluative
or "judgmental" weighing of all relevant characteristics of the
work in which a copyright is claimed, all relevant characteristics of the allegedly infringing work, and all of the relevant circumstances of their development and use. It requires,
also, not a step-by-step decisionmaking process, but a simultaneous weighing of all the factors or elements that the legal
D.
Incentives and the Role of Advocacy
The advocate of broad copyrightability who understands
that the court will apply a legal test that focuses principally
on these three elements has an incentive to urge that the court
conceive the "idea" in a very generalized sense; then many
different expressions of the idea would be possible, and protection might be claimed for the work. The advocate of freedom to copy-and of narrow .copyrightability-has an
incentive to urge that the court conceive the "idea" in a very
particularized sense; then only one or a few expressions of an
idea defined in such particularized terms would be possible,
and no copyright protection for those few expressions would
be available because the idea and expression would merge
completely, or nearly so. Such extreme positions would fail to
assist the court in determining, for purposes of the first element, where properly to place the idea along the abstractions
scale.
There is risk for each advocate, however, in yielding too
,
readily to these respective incentives. The argument of an
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advocate who presses too far in one or the other of these
directions of generality or specificity in defining the idea will
not only lose the argument advanced but also lose credibility
for later advancing a more sensible alternative that proposes
a less extreme but still favorable position along the scale.
Upon reflection, then, advocates on both sides will be-or at
least should be-encouraged to moderate their ultra-contentious
and extreme positions in favor of more supportable propositions that will more sharply focus the issue for adjudication.
There is an additional risk for the advocate of freedom to
copy who allempts to persuade the court that Hand's abstractions scale, and the three-element test applying it, is irrelevant,
to computer programs. That advocate will be tempted to
define the idea in the most generalized terms, hoping to persuade the court that, because the abstractions scale does not
apply, all of the many different expressions of that idea are
non-copyrightable and everyone is free to copy.
In this case, defendants have in fact advanced such an argument. Yielding only to the near-uniformity of precedent for.
copyrigktability of source code and object code, defendants
have argued that every other form of expression of the
"spreadsheet metaphor" is non-copyrightable. For reasons
now to be explained, neither this extreme contention nor any
of the alternatives the defendants have advanced for noncopyrightability can be sustained.
v.
A.
APPLICATION OF THE LEGAL TEST
TO LOTUS 1-2-3
"Look and Fee/"
In musical, dramalic, and motion picture works, and works
of literature, non literal elements that are copyrightable have
sometimes been described as the "total concept and feel" of
a work, Roth Greeting Cards, 429 F.2d at 1110; Krofft Television, 562 F.2d at 1167, "the fundamental essence or structure" of a work, 3 M. Nimmer & D. Nimmer, Nimmer on
Copyright § 13.03(A][ I] (1989), or "the 'pattern' of the
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work," Chaffee, Reflections on the Law of Copyright; Part I,
45 Colum.L.Rev. 503, 513 (1945). In the context of computer
programs, nonliteral elements have often been referred to as
the "look and feel" of a program, e.g., Telemarketing
Resources, 12 U.S.P.Q.2d at 1993; Samuelson and Glushko,
Comparing the Views of Lawyers and User Interface Designers on the Software Copyright "Look and Feel" Lawsuits, 30
Jurimetrics 121 (1989). Initially, plaintiff too referred to these
. elements as "look and feel," Amended Complaint 11 13
(Docket No. 15), though plaintiff-in trial, at least-has not
rested its contentions primarily on this terminology.
Despite its widespread use in public discourse on the copyrightability of nonliteral elements of computer programs, I
have not found the "look and feel" concept, standing alone, to
be significantly helpful in distinguishing between non literal
elements of a computer program that are copyrightable and
those that are not.
One may argue that the phrase "look and feel" is analogous
to the "Iotal concept and feel" test developed in Roth Greeting Cards, 429 F.2d at 1110, and used in Krofft Television,
562 F.2d at 1167. In these cases, however, the "total concept
and feel" test was not invoked-at least, not explicitly-as an
aid to the court in determining which nonliteral elements were
copyrightable and why. Rather, these courts used the concept,
not in determining copyrightability, but, apparently assuming
copyrightability, in applying the substantial similarity test to
determine whether forbidden copying had occurred. For
ellample, in Roth Greeting Cards, the court considered
whether the "text, arrangement of text, art work, and association between art work and text" of defendant's greeting cards
were substantially similar to (e.g., copied the "total concept
and feel" of) those elements of plaintiff's greeting cards. 429
F.2d at 1109. And in Krofft Television, the inquiry focused on
whether defendant McDonald's, with its television commercials, copied the "total concept and feel" of plaintiff's H.R.
Pufnstuf children's television series by copying its locale
(both occurred in imaginary world with similar trees, caves,
a pond, a road and a castle), fictional characters (both were
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inhabited by talking trees, mayors with disproportionately
large round heads and long wide mouths, "Keystone cops"
characters, crny scientists, and a multi-armed evil creature),
costumes and sets (created for defendant by former employees of plaintiff), voices (executed for defendant by same voice
expert who did the voices for plaintiff's television series), and
plot. 562 F.2d at 1161, 1167 n. 9.
It may be true that the issues of copyrightability and substantial similarity are so interrelated that these precedents are
relevant. The fact remains that they are not directly in point
for determining copyrightability in this case. Moreover, "look
and feel" is a conclusion, and the usefulness and applicability of a precedent depends on the reasons the conclusion was
reached in a particular context, not on the conclusion itself.
Thus, in trying to understand the relevance of "concept and
feel" precedents, we need to look to details of those cases that
appear to have been relied upon in reaching the conclusion,
rather than merely embracing the conclusion without regard
for underlyjllg reasons. As we probe the circumstances of
these p~cedents that closely, we are likely to do something
akin to apply in the three-element test described above.
Lewis Affdvt. 11 92. In both Lotus 1-2-3 and VP-Planner, as in
many other electronic spreadsheet programs, a highlighted
element of the basic screen display resembles an "L" rotated
ninety degrees clockwise with letters across the top to designate columns, and numbers down the left side to designate
rows. See Appendices I (VisiCalc), 2 (1-2-3), and 3 (VP-Planner). Cf. Multiplan, which also has a rotated "L" screen display, but which uses numbers for both columns and rows (Tr.
Ex. (Trial Exhibit) 132). The intersection of each column and
row is a "cell" in which a value (e.g., 31,963), formula (e.g.,
one that adds a column of numbers), or label (e.g., "Cost of
Goods") may be entered.
Both programs utilize a "two-line moving-cursor menu,"
which presents the user with a list of command choices (e.g.,
"file", "copy", "quit") and a moving cursor to use in communicating ("entering") the choice. The menu is called up to
the screen by pressing the slash ("''') key, and is located either
above the rotated "L" (as in 1-2-3, see Appendix 2) or below
the rotated "L" as in VP-Planner, see Appendix 3). Cf. Multiplan, which uses a three-line moving cursor menu (Tr. Ex.
132); Excel, which has "pull-down" bar menus (Tr. Ex. 79).
The top line of the two-line menu contains a series of
words, each of which represents a different command. For
example, the top line of the first, or main, menu in 1-2-3
reads: "Worksheet Range Copy Move File Graph Data Quit".
See Appendix 2; cf. Appendix 3 (main menu in VP-Planner).
The first word of the line is highlighted to signify the command that will be chosen if the "enter" key is pressed; the
highlighting, or "cursor," moves to the right or left if the right
or left cursor key is pressed.
The second line of the menu displays a "long prompt,"
which contains further information abou( the highligh(ed
command. In some cases, the long prompt is a description of
the highlighted command (e.g., for command "Copy", the
long prompt reads: "Copy a cell or range of cells"); in other
cases, the long prompt provides a list of (he menu command
subchoices that will be available if the highlig~ted command
is chosen (e.g., for command "Worksheet", (he long prompt
B.
The User Interface
Plaintiff in the present case, not now pressing any argument
that the phrase "look and feel" is a satisfactory description of
the copyrightable elements of Lotus 1-2-3, suggests that the
copyrightable nonliteral elements are more appropriately
described by the phrase "user interface." According to plaintiff, the "user interface" of 1-2-3 includes such elements as
"the menus (and their structure and organization), the long
prompts, the screens on which they appear, the function key
assignments, [and) the macro commands and language,"
Plaintiff's Post-Trial Brief at 53 (Docket No. 319). I turn now
to examining these elements more closely.
Like manual spreadsheets, Baker, 101 U.S. at 100, the electronic spreadsheet presents a blank form on which numerical,
statistical, financial or other data can be assimilated, organized, manipulated and calculated. GallerDecl. 1111 10 I-I 03;
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reads: "Global. Insert. Delete. Column-Width. Erase. Titles.
Window. Status"; see Appendix 2; cf. Appendix 3 (VP-Planner». In the latter case. if the highlighted command is subsequently chosen. the words that appeared in the long prompt
will now appear as second-level menu command choices on
the top line of the menu. and a new long prompt will take its
place on the second line.
In addition to having the option of selecting a command by
moving the cursor to the command and pressing the "enter"
key. a user may instead press the key representing the first letter of the command word (e.g .• "C" for "Copy". "W" for
"Worksheet"). For this reason. each word representing each
command on a given menu line must start with a different letter. See Galler Affdvt.1I11l05-117; Lewis Decl. 111196-97.
Function keys present an additional way for the user to
communicate with and operate. the programmed computer.
Each program assigns certain frequently-used commands to
the various 'function keys" labelled "Fl". "F2". "F3". etc.) on
the keyboard. For example. in 1-2-3. "FI" corresponds to the·
command "Help", and "F2" to the command "Edit". Galler
Decl. 11 125. VP-Planner. in contrast. assigns the function keys
to the commands on the top line of the menu. Thu3, for example, when VP-Planner is in its main menu mode, "FI" corresponds to the command "Help". "F2" to the command
"Worksheet", "F3" to the command "Range", "F4" to the
command "Copy". and so on. See Appendix 3 (function key
numbers listed before command terms).
Typically, users adapt particular spreadsheets to their specific needs. Suppose, for example. that in order to achieve a
desired result, a user must perform the same sequence of commands repeatedly in order to cause the computer to execute
the same functions repeatedly (e.g .• calculating depreciation
based on certain financial data. or saving the spreadsheet and
printing a copy of it). Rather than going step-by-step through
the same sequence of commands each time there is a need to
perform a particular function. the user may store a sequence
of command terms as a "macroinstruction," commonly called
a "macro," and then, with one command stroke that invokes
the macro. cause the programmed computer to execute the
entire sequence of commands.
In 1-2-3, the command terms within a macro may consist of
menu choices (e.g .• "'C" to copy a cell or range of cells, or
"'PPRA I.FI91 enter)AGQ"-for the command sequence
"Print, Printer, Range. Cell A I to Cell F19, Align, Go,
Quit"-to print the specified range of cells from the spreadsheet). Also a macro may include keyboard commands (such
as function keys. cursor keys. or the "enter" key), and special
macro commands invoked by the command "'X" (e.g .• "XI" is
a macro command that performs an "if-then" logical function). 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. Also. because macro commands are typically invoked by entering the first letter of command choices (e.g .•
"'C" for copying, "'PPRAI.FI9Ienter)AGQ" for printing the
specified range of cells). the first letter of each command
choice on a particular menu is a vital element of the functionality of macros. See Galler Decl. 1111 121-124; Lewis
Affdvt. 1111 109-115.
C.
Elements of the User Interface as Expression
Applying to 1-2-3 the legal test stated in PartIV(C), supra,
I consider first where along the scale of abstraction to conceive the "idea" for the purpose of distinguishing between the
idea and its expression.
At the most general level of Hand's abstractions scale,
Nichols, 45 F.2d at l21-the computer programs at issue in
this case, and other computer programs that have been considered during the course of trial, are expressions of the idea
of a computer program for an electronic spreadsheet. Defendants are quite correct. then. in asserting that the idea of
developing an electronic spreadsheet is not copyrightablethat the core idea of such a spreadsheet is both functional and
obvious, even to computer users who claim no technical competence. Thus, even though programs like VisiCalc, 1-2-3,
Multiplan, SuperCalc4, and Excel are very different in their
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structure. appearance. and method of operation. each is. at the
most basic level. just a different way of expressing the same
idea: the electronic spreadsheet. It does not follow. however.
that every possible method of desi.gning a metaphorical
spreadsheet is obvious. or that no form of expressing the idea
of the spreadsheet metaphor can possibly have such originality in pressing beyond the obvious as is required for copyrightability. or that no special form of metaphorical spreadsheet can possibly be a distinctive expression of a particular
method of preparing financial information.
The idea for a two-line moving cursor menu is also functional and obvious. and indeed. is used in a wide variety of
computer programs including spreadsheet programs. Nevertheless. it does not follow that every possible method of
designing a menu system that includes a two-line moving cursor is non-copyrightable.
Of course. if a particular expression of the idea of an electronic spreadsheet communicates no details beyond those
essential to.s.tating the idea itself. then that expression would .
not be oopyrightable. The issue here is whether Lotus 1-2-3
does go beyond those details essential to any expression of
the idea. and includes substantial elements of expression. distinctive and original. which are thus copyrightable.
The idea for an electronic spreadsheet was first rendered
into commercial practice by Daniel Bricklin. As a student at
Harvard Business School in the late 1970·s. Bricklin envisioned a "magic blackboard" that would recalculate numbers
automatically as changes were made in other parts of the
spreadsheet. Eventually. aided by others. he transformed this
idea into VisiCalc. the first commercial electronic spreadsheet. See Bricklin Affdvt. 1148-96 (Docket No. 217). Bricklin's idea for VisiCalc was a revolutionary advance in the
field of computer programming. Dauphinais Affdvt. 11 98
(Docket No. 280).
Although VisiCalc was a commercial success, implementational characteristics limited the scope and duration of its
marketability as a spreadsheet product. Most notably. VisiCalc was originally programmed for use on the Apple 11 computer. which had limited memory (32K of RAM). limited
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screen display capabilities (only 40 characters per line), and
limited keys available on the keyboard (no function keys and
no up and down cursor keys). When VisiCalc was later rewritten for use on the IBM PC which was introduced in August
1981). it was transferred with minimal changes and without
taking advantage of many of the PC's more extensive
capabilities.
Mitchell Kapor and Jonathan Sachs. the original authors of
1-2-3. exploited this opportunity. Building on Bricklin's revolutionary idea for an electronic spreadsheet, Kapor and
Sachs expressed that idea in a different. more powerful way.
1-2-3 took advantage of the IBM PC's more expansive memory and more versatile screen display capabilities and keyboard. 1-2-3. like many electronic spreadsheet programs
since. could thus be thought of as an evolutionary product that
was built upon the shoulders of VisiCalc.
Just as 1-2-3 expressed the idea of an electronic spreadsheet differently from VisiCalc. so did Microsoft's Excel.
Originally written for the Apple Macintosh computer. it
exploits the enhanced graphics capabilities of the Macintosh,
as well as the mouse input device that is standard with the
Macintosh. Excel has pull-down bar menus rather than a twoline moving-cursor menu, and a very different menu-command hierarchy. Tr. Ex. 79.
As already noted. these three products-VisiCalc, 1-2-3.
and Excel-share the general idea of an electronic spreadsheet but have expressed the idea in substantially different
ways. These products also share some elements, however, at
a somewhat more detailed or specific point along the abstractions scale. One element shared by these and many other programs is the basic spreadsheet screen display that resembles
a rotated "L. u See Appendices I (VisiCalc), 2 (1-2-3), and 3
(VP-Planner). Although Excel uses a different basic spreadsheet screen display that more closely resembles a paper
spreadsheet. there is a rather low limit, as a factual matter, on
the number of ways of making a computer screen resemble a
spreadsheet. Accordingly. this aspect of electronic spreadsheet computer programs, if not present in every expression
of such a program, is present in most expressions. Thus the
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second element of the legal test weighs heavily against treat·
ing the rotated "L" screen display as a copyrightable element
of a computer program. Morrissey, 379 F.2d at 678-79
Another expressive element that merges with the idea of an
electronic spreadsheet-that is, that is an essential detail pre·
sent in most if not all expressions of an electronic spread·
sheet-is the designation of a particular key that, when
pressed, will invoke the menu command system. The number
of keys available for this designation is limited for two rea·
sons. First, because most of the keys on the keyboard relate
either to values (e.g., the number keys and mathematical oper·
ation keys) or labels (e.g., the leller keys), only a few keys
are left that can be used, as a practical maller, to invoke the
menu command system. Without something more, the pro·
grammed computer would interpret the activation of one of
these keys as an attempt by the user to enter a value or label
into a cell. Second, because users need to invoke the com·
mand system frequently, the key designated for this purpose
must be easily accessible. For example, the user should not be
required to ·press two keys at the same time (such as "Shift,"
"AIt," or "Ctrl" along with another key).
As just noted, when all the leller, number, and arithmetic
keys are eliminated from consideration, the number of keys
remaining that could be used to invoke the menu command
system is quite limited. They include the slash key ("''') and
the semi·colon key (";"). The choice of the creators of Visi·
Calc to designate the slash ("I") key to invoke the menu com·
mand system is not surprising. It is one of very few practical
options. Thus the second element of the legal test weighs
heavily against copyrightability of this aspect of VisiCalcand of 1-2-3. This expression merges with the idea of having
a readily available method of invoking the menu command
system.
Other elements of expression a decision maker may regard as
either essential to every expression of an electronic spreadsheet,
or at least "obvious" if not essential, include the use of the "+"
key to indicate addition, the "-" key to indicate subtraction,
the ..... key to indicate multiplication, the ..,.. key within for·
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mulas to indicate division, and the "enter" key to place keys·
stroke entries into the cells. See Dauphinais Affidavit, 11 78.
Each of the elements just described is present in, if not all,
at least most expressions of an electronic spreadsheet com·
puter program. Other aspects of these programs, however,
need not be present in every expression of an electronic
spreadsheet. An example of distinctive details of expression
is the precise "structure, sequence, and organization,"
Whelan, 797 F.2d at 1248, of the menu command system.
Consider first the menu command system of VisiCalc. The
main menu command line reads: "Command: BCDEFGIM·
PRSTVW· ... See Appendix I. Each of these. lellers (or, to use
defendants' experts' preferred terminology, "symbolic
tokens") stands for a different command-in this case: Blank,
Clear, Delete, Edit, Format, Global, Insert, Move, Print,
Replicate, Storage, Titles, Version Number, Window, and .....
for "Label Repeating." Many of these commands invoke sub·
menus which also contain a series of letters, each of which
represents a submenu command choice. See VisiCalc Com·
mand Structure Chart (Tr. Ex. 140, pp. 3-3 and 3-4).
This particular expression of a menu structure is not essen·
tial to the electronic spreadsheet idea, nor does it merge with
the somewhat less abstract idea of a menu structure for an
electronic spreadsheet. The idea of a menu structure-includ·
ing the overall structure, the order of commands in each menu
line, the choice of letters, words, or "symbolic tokens" to rep·
resent each command, the presentation of these symbolic
tokens on the screen (i.e., first letter only, abbreviations, full
words, full words with one or more letters capitalized or
underlined), the type of menu system used (i.e., one·, two·, or
three·line moving.cursor menus, pull·down menus, or com·
mand·driven interfaces), and the long prompts-could be
expressed in a great many if not literally unlimited number of
ways.
The fact that some of these specific command terms are
quite obvious or merge with the idea of such a particular com·
Oland term does not preclude copyrightability for the com·
Oland structure taken as a whole. If particular ~haracteristics
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not distinctive individually have been brought together in a
way that makes the "whole" a distinctive expression of an
idea-one of many possible ways of expressing it-then the
"whole" may be copyrightable. The statutory provisions
regarding "compilation," 17 U.S.C. §§ 101, 103, are not
essential to this conclusion, but do reinforce it. A different
total structure may be developed even from individual components that are quite similar and limited in number. To determine copyrightability, a court need not-and, indeed, should
not-dissect every element of the allegedly protected work.
Rather, the court need on Iy identify those elements that are
copyrightable, and then determine whether those elements,
considered as a whole, have been impermissibly copied. Alar;
Games Corp. v. Oman, 888 F.2d 878, 882-83 (D.C.Cir. 1989)
(rejecting "component-by-component analysis," and ruling
instead that focus must ultimately be on "work as a whole").
It is plain that plaintiff did not impermissibly copy copyrighted elements of VisiCalc. Lotus 1-2-3 uses a very different menu structure. In contrast with VisiCalc's one-line main
menu tkat reads "Command: BCDEFGlMPRSTVW-", the
main menu of Lotus 1-2-3, which uses a two-line moving-cursor menu system, reads: "Worksheet Range Copy Move File
Graph Data Quit". See Appendix 2. Most of the submenus
similarly present a list of up to about ten full-word menu
choices, presented in order of predicted frequency of use
rather than alphabetically. See Lotus 1-2-3 Command Tree
Chart (Tr. Ex. 176, pp. 3-2 and 3-3). Other spreadsheet programs have also expressed their command structures in completely different ways. C/. Multiplan (Tr. Ex. 132, p.
279-374), Framework II (Tr. Ex. 131, pp. QR7-QR8), SuperCalc4 (Tr. Ex. 133, Quick Reference Card Number I), Excel
(Tr. Ex. 79, Reference Guide, p. 90); Symphony (Tr. Ex. 130,
Reference Manual, pp. 127-190); MathPlan (Tr. Ex. 134, pp.
169-380); and PFS: Professional Plan (Tr. Ex. 135).
I conclude that a menu command structure is capable of
being expressed in many if not an unlimited number of ways,
and that the command structure of 1-2-3 is an original and
nonobvious way of expressing a command structure. Emery
Decl. 11 IS. Accordingly, the menu structure, taken as a
whole-including the choice of command terms, the structure
and order of those terms, their presentation on the screen, and
the long prompts-is an aspect of 1-2-3 that is not present in
every expression of an electronic spreadsheet. It meets the
requirements of the second element of the legal test for copyrightability.
Finally, I consider the third element of the legal testwhether the structure, sequence, and organization of the menu
command system is a substantial part of the alleged copyrighted work-here Lotus 1-2-3. That the answer to this question is "yes" is incontrovertible. The user interface of 1-2-3
is its most unique element, and is the aspect that has made
1-2-3 so popular. That defendants went to such trouble to
copy that element is a testament to its substantiality. Accordingly, evaluation of the third element of the legal test weighs
heavily in favor of Lotus.
Taking account of all three elements of the legal test, 1
determine that copyrightability of the user interface of 1-2-3
is established.
VI. COPYING OF LOTUS 1-2-3
As noted at the beginning of this Opinion, the parties' stipulation regulating this first phase of trial reserved for a later,
jury phase, any issues of fact requiring jury determination
with respect to any alleged copying of Lotus 1-2-3. If in this
first phase the court had rejected Lotus' claim of copyrightability of nonliteral elements of the user interface, a jury
phase would plainly have been required under that stipulation
to determine whether any copying of source code or object
code had occurred. Because, however, the court has decided
instead that Lotus prevails on this issue, the court must next
consider whether any issue remains that must be submitted to
a jury before the court considers whether defendants are liable
for tnfringement of Lotus' copyright in 1-2-3.
,
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For the reasons stated below, the answer to that inquiry
must be "no." Not only is the copying in this case so "overwhelming and pervasive" as to preclude, as a matter of law,
any assertion of independent creation, see Midway Manufacturing Co. v. Bandai-America, Inc., 546 F.Supp. 125, 141
n. 11,149 (D.N.J.1982) ("overwhelming and pervasive" copying can preclude, as a matter of law, finding of independent
creation, and can support grant of summary judgment for
plaintiff, but such virtual identity not shown in this case), but
also, defendants in this case have admitted that they copied
these elements of protected expression.
Dr. James Stephenson, founder of defendant Stephenson
Software, is the original developer of the program that was
eventually released as VP-Planner. Like Kapor and Sacks,
Stephenson recognized that VisiCalc, although a "pioneering
spreadsheet approach," Stephenson Affdvt. 11 19 (Docket No.
287), was not sufficient to meet the financial planning needs
of some companies and did not take advantage of technological advances in computer hardware. Accordingly, in Jan-.
uary 19$2, -Stephenson began to develop his own electronic
spreadsheet that he referred to as FIPS ("Financial Information and Planning System"). See id. at 1111 13-59.
By January 1983, Stephenson had developed much of the
user interface for his spreadsheet program including the menu
command hierarchy. See Tr. Ex. 1014. By April 1983,
Stephenson installed at his client's business an operational
version of his spreadsheet program, which had substantially
the same menu hierarchy as the January 1983 version. That
hierarchy is differently expressed from the hierarchy of both
VisiCalc and 1-2-3. See Tr. Ex. 1019; Stephenson Affdvt.
1111 56-60.
Stephenson first saw 1-2-3 in operation in February 1983.
after he had developed the menu hierarchy for FIPS. Through-
Throughout 1984, defendants continued to improve VPPlanner. In the autumn, they recognized the success of 1-2-3
and reached the conclusion that spawned this litigation: VPPlanner, in order to be a commercial success, would have to
be "compatible" with I -2-3. "The only way to accomplish this
result," defendants believed, "was to ensure that the arrangement and names of commands and menus in VP-Planner conformed to that of Lotus 1-2-3." Id. at 11 117(emphasis added).
See generally id. at 1111 99-130. Such compatibility would
allow users to transfer spreadsheets created in 1-2-3 to VPPlanner without loss of functionality for any macros in the
spreadsheet. Also, such compatibility would allow users to
switch from 1-2-3 to VP-Planner without requiring retraining
in the operation of VP-Planner.
To some degree at least, defendants' premises have proved
incorrect in hindsight. That is, first, as Excel has proved, a
spreadsheet program did not have to be exactly compatible
with 1-2-3 in order to be a commercial success. Second, copying the menu structure was not the only way to achieve
aspects of this desired compatibility. For example, defendants
could have instead added a macro conversion capability as the
creators of Excel have successfully done (the Microsoft Excel
Macro Translation Assistant), and could have provided an online help function that would show users the VP-Planner
equivalent for 1-2-3 commands. See Excel Reference Guide at
491, 425-26 (Tr. Ex. 79). See also Morgan Decl. 1111 3-7
(Docket No. 308) (Lotus itself created a "macro conversion
utility" to translate macros among different-language editions
of 1-2-3 (e.g., North American, international English, French,
German. Italian. Spanish. and Swedish»; Turner Decl. 11 10
(Docket No. 309). These points do not weigh significantly in
the present decision. however. because even if VP-Planner
olherwise woutd have been a commercial failure. and even if
out the rest of that year. he continued to improve FIPS.
no other technological ways of achieving macro and menu
changed its name VP-Planner, and began to consider marketing his program. By December 1983, Stephenson entered
into a letter of intent with Adam Osborne regarding publication of VP-Planner. Osborne thereafter organized defendant
Paperback Software. Stephenson Affdvt. 1111 66-82.
compatibility existed, the desire to achieve "compatibility" or
"standardization" cannot override the rights of authors to a
limited monopoly in the expression embodiel\in their intellectual "work."
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Defendants admit that, once these fateful decisions were
made by Stephenson and Osborne, defendants converted VPPlanner into a program more like 1-2-3-indeed, a program
that they have publicly advertised as a "workalike for 1-2-3."
VP Planner Manual 1.11 (1985) (Tr. Ex. 9). It is incontrovertible that, in the process, they copied the expressive elements of 1-2-3 that the court has concluded are copyrightable:
hierarchy. It is true that there are some differences between 12-3 's menu structure and VP-Planner's menu structure. For
example, most VP-Planner menu lines begin with a help ("7")
command, and some additional commands are included at the
end of some menu lines (i.e., "DBase, Multidimensional" on
the "/File Erase" menu line; and "Page #, No Page #,
Row/Col. #, Stop Row/Col. #, Background" on the "/Print
Printer Options Other" menu line). Other differences between
the two programs appear in the start-up screens, the placement on the screen of the menu lines, the exact wording of the
long prompts, the organization of the help screens, the
increased width of the VP-Planner screen, and the ability of
VP-Planner to hide certain columns. See Stephenson Affdv!.
1111 161-176. The works are, nevertheless, substantially,
indeed, strikingly, similar. As Judge Learned Hand held in a
copyright case involving a pattern on a bolt of cloth that was
used to make dresses, infringement may be found despite
some differences between two works:
[M)aking the changes required for macro compatibility meant that we had to revise existing elements of the
[VP-Planner) spreadsheet interface, including the hierarchical menu structure; ensure that keystroke sequences
would bring about the same operational result in both
programs; add certain functional elements found in Lotus
1-2-3 which VP-Planner did not yet support; and discard
certain features which, although beneficial, were inconsistent with the macro compatibility requirement . . . .
Several types of changes were required in the VPPlanne!jlrogram to achieve keystroke macro com pat i- bility. First, the menu structure had to be altered so that
all menu commands would have the same first letter and
be in the same location in the menu hierarchy as in Lotus
1-2- 3.
Stephenson Affdvt. 1111144, 146. See generally id. at 1111 142157. After these changes were made, the VP-Planner manual
could truthfully declare:
VP-Planner is designed to work like Lotus 1-2-3,
keystroke for keystroke. . . . VP-Planner's worksheet
is a feature-for-feature workalike for 1-2-3. It does
macros. II has the same command tree. It allows the
same kind of calculations, the same kind of numerical
information. Everything 1-2-3 does, VP-Planner does.
VP-Planner Manual at xi. 1.11.
The court's comparison of the 1-2-3 menu command hierarchy and the VP-Planner menu hierarchy confirms thai VPPlanner "has the same command tree" as 1-2-3-that is, that
defendants copied the expression embodied in the 1-2-3 menu
the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them; and regard
their aesthetic appeal as the same. That is enough; and
indeed, it is all that can be said, unless protection against
infringement is to be denied because of variants irrelevant to the purpose for which the design is intended.
Peler Pan Fabrics, 274 F.2d at 489, quoted in part with
approval, Concrete Machinery, 843 F.2d at 607. See also Alari
v. Philips, 672 F.2d at 618 ("CA) laundry list of specific differences . . . will not preclude a finding of infringement
where the works are substantially similar in other respects.
. . . When analyzing two works to determine whether they
are substantially similar, courts should be careful not to lose
sight of the forest for the trees. ").
From the perspective of both an expert and an ordinary
viewer, the similarities overwhelm differences. Thus, as in
Peter Pan Fabrics, the two works at issue are substantially
similar. Indeed. by using the option in VP-Planner that allows
a user to move, the menu from the bottom of the screen to the
�240a
top of the screen' a user could easily think 1-2-3 rather than
VP-Planner was the program in use. Certainly purchasers of
a book designed to teach users how to master 1-2-3, which is
distributed with demonstration copies of VP-Planner, would
be likely to overlook the disparities between 1-2-3 and VPPlanner. See L. Ingalsbe, Lotus 1-2-3 with Version 2.0 for the
IBM PC (1987) (Tr. Ex. 215).
Moreover, even if some elements of VP-Planner were very
different, it would not give defendants a license to copy other
substantial elements of 1-2-3 verbatim. If one publishes a
I,OOO-page book of which only a 10-page segment is an unauthorized reproduction of copyrighted material, and if the 10page segment is a qualitatively substantial part of the
copyrighted work, it is not a defense to a claim of infringement that the book is 99% different from the copyrighted
material. Sheldon, 81 F.2d at 56 ("no plagiarist can excuse the
wrong by showing how much of his work he did not pirate");
SAS Institute, 605 F.Supp. at 829-30. Thus, defendants' proof
that VP-Planner has many features that are different from
Lotus 1.2-iis off point. The more relevant question is: does .
it have significant features that are substantially similar? I
conclude, on the record before me, that there is no genuine
dispute of material fact on this question. The answer to this
question must be "yes."
Accordingly, I conclude that it is indisputable that defendants have copied substantial copyrightable elements of plaintiff's copyrighted work. I therefore conclude that, subject to
consideration of other contentions advanced by defendants,
liability has been established.
VII. A POSTSCRIPT ON THE NATURE OF
DECI5IONMAKING IN THIS CASE
A. Policy Arguments and Limitations on the Role of Courts
Although Parts I through VI of this Opinion are sufficient
to demonstrate that defendants have impermissibly copied
copyrightable elements of expression embodied in 1-2-3, it
may be useful to pause, before reaching the merits of defen-
241a
dants' proffered defenses to liability, to consider the j)roper
use of policy in determining statutory meaning.
As noted in Part III(A)(I), supra. the court is directed to
look to the "object and policy" of the law in determining the
manifested meaning of the law. Kelly, 479 U.S. at 43, 107
5.Ct. at 358. The court must, however, be careful that its
weighing of the "object and policy" implicit in the law does
not override the mandates that are either explicit in the statutory text or implicit in the provisions of the whole law.
Defendants' arguments in this case have urged the court to
violate that limitation on the judicial use of policy considerations. That is, in the name of the "object and policy" of
copyright law, defendants have argued: (I) that the ideaexpression distinction creates unnecessary and counter-productive uncertainty that could be avoided by a bright-line test
of copyrightability; (2) that the policy of promoting creativity favors extremely narrow copyright protection in computer
programs for anything beyond source code and object code;
and (3) that the policy of encouraging standardization mandates the conclusion that a user interface is not copyrightable.
Also, in advancing these policy arguments, defendants have
obscured the nature of important issues in the case by strained
analogies and word games.
Policy arguments advanced without focusing on whether
they are inconsistent with the mandates of legislation-along
with strained analogies and word games-are fundamentally
flawed because they do not take account of limitations on the
role of courts, to which counsel as well as courts are obliged
to be sensitive. Courts must enforce the mandates of legislation, and even when answering questions of law not answered
by those mandates, must do so in a way that respects legislative policy choices, whether explicit or implicit.
Each of defendants' policy arguments addressed below suffers from this fatal flaw.
B. Strailled Allalogies and Word Games
The reasoning that lawyers propose in arguments and
judges use in deciding cases often builds on simile, metaphor,
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and allusion. All such reasoning is within the scope of what
we call analogy, in the broadest sense. When strictly logical
deductions from authoritative declarations of law-in constitutions, statutes, and precedents-do not provide answers
to questions of law that must be decided in the case before the
court. the court turns to analogy. Cf. Kelly, 479 U.S. at 43.
107 S.Ct. at 358 ("we must . . . look to the provisions of the
whole law"). Thus, similes, metaphors, and other forms of
allusion are appropriately a part of our efforts to communicate
ideas. They are not to be mistaken, however. for logically
compelled inferences from authoritative declarations. They
are aids to understanding the meaning. not yet authoritatively
determined. of the authoritative declarations as applied to circumstances those declarations did not explicitly address.
"Defendants strongly urged the court to accept an analogy
between a computer program and a "useful article." As
explained in Part IV(A) of this Opinion. that proposed analogy is deeply flawed because of an unstated implicit premise
that the fac! Jhat a computer program is "useful" utterly pre- .
cludes CDpyrightability of any expressive elements in it. In the
same breath, though. defendants concede. that source code
and object code are copyrightable. This concession is itself a
demonstration of the vulnerability of the "useful article" argument. The concession makes clear a flaw in the analogical
argument for treating a computer program that is "useful" as
necessarily nothing more than a "useful article." If no explanation is offered for the exception other than precedent, the
analogy itself is challenged by the precedent.
Thus. labeling a computer program as a "useful article" in
relation to a claim for copyrightability of non literal elements
of the user interface. but not a "useful article" in relation to
a claim for copyrightability of source code and object code,
is engaging in a word game rather than focusing on the merits of the copyrightability issue.
An even more striking word-game argument is defendants
contention that in copying the 1-2-3 user interface, they have
only copied a "language," and that languages are not copyrightable. See, e.g., Deposition of Steven Cook at 153:23-
154: I 0 (Docket No. 327); Kocher Affdvt. 1111 13-18 (Docket
No. 272); Defendants' Post-Trial Brief at 87-103 (Docket No.
325). Although defendants have not explicitly stated all the
essential steps of this argument. by filling the gaps in trying
to understand the argument. one may infer the following elements and corollaries of the argument:
(I) Although expression is copyrightable. the language in
which the expression is written is not copyrightable. Thus, a
book written in English or French may be copyrightable, but
the English and French "languages" are not works in which
copyright may subsist.
(2) Like books, computer programs, written in computer
programming "languages," may be copyrightable, but only the
"sets of statements or instructions," and not the "language" in
which they are written, are copyrightable.
(3) 1-2-3 has a macro capability or facility that allows a
user to "write" her or his own macros. When the user writes
a macro, he or she is actually writing a kind of computer
"program." See 1-2-3 Release IA User's Manual at 117
(macro "facility gives the 1-2-3 user a true programming
capability") (Tr. Ex. 72); 1-2-3 Release 2.0 I User's Manual at
3-10 ("1-2-3 includes a number of macro commands that create a powerful programming language") (Tr. Ex. 72B).
(5) The macro, or "program," that the user writes may be
copyrightable if original and nonobvious. The "language" in
which the macro is written is never copyrightable.
(6) Thus, when defendants copied the menu command hierarchy from 1-2-3, they did not copy a copyrightable element
that embodied expression, but rather, copied only the "macro
facility language" of 1-2-3, a non-copyrightable element in
the public domain.
The vulnerable steps of this argument include, at a minimum:
(I) That "language" has a single, invariable meaning in all
discourse about "languages";
�244a
(2) That not only languages such as English and French but
all other languages as well-including Esperanto. and Reiss'
coined words. 276 F. at 7 J 8. and Pascal-are automatically
ineligible for copyright protection (as to vulnerability of this
. step of the argument. defendants. though invited at trial to do
so. have cited no precedent that supports the contention that
a "language." even if original. is not copyrightable);
(3) That "language" and "sets of statements or instructions"
are opposites. and never the twain shall meet-that is. anything that is a "set of statements or instructions" is not a "programming language." and anything that is a "programming
language" is not "a set of instructions."
Just to state these implicit elements of defendants' argument is sufficient to demonstrate that the argument depends
on arbitrary definitions of words. adopted for undisclosed reasons. In human experience. words have variable meanings;
dictionaries seldom list a single definition for a word. An
argument that depends on the proponents' undisclosed defi- .
nitions pf words-and even different definitions as a word is
used in different steps of the argument-becomes a word
game that obscures the substantive meaning of the argument
and is an obstruction rather than an aid to the court's use of
the adversary process to inform and thus improve decisionmaking.
Having explored the argument fully to try to understand its
true nature. I conclude that defendants' "language" argument
about the macro facility of Lotus 1-2-3. like defendants' "useful article" argument examined in Part IV(a). infra. is totally
without merit.
C. Policy Arguments for Bright-Line Rules
One of the themes in defendants' bundle of policy arguments is a plea for bright-line certainty. Indeed. it is a persistenttheme throughout defendants' submissions: Software
developers would like to know what they may and what they
must not copy. The idea-expression distinction. defendants
argue. fails to achieve this policy goal; therefore. the court
245a
should adopt instead the bright-line Iiteral-nonliteral
distinction.
The yearning for certainty is not unique to this case or to
copyright law. But certainty has a price. It reflects a hope that
the court will apply hard-and-fast rules despite circumstances
that cry out for a judgmental standard of decision making that
takes account of circumstances an impartial observer would
th ink relevant to a "just" disposition of the case.....:which. after
all. is one of the declared objectives of the legal system. E.g.
Fed.R.Civ.P. I ("just. speedy. and inexpensive determination
of every action").
The more deeply one probes. whether as lawyer or judge. or
as an interested observer or critic of the legal system. the
clearer it becomes that in many circumstances hard-and-fast
rules. despite their initial attractiveness and false promise of
certainty. have consequences that offend one's sense of justice. For example. hard-and-fast rules. because they allow for
little or no evaluation and discretion. sometimes fail to take
account of the competing values underlying the relevant law.
and fail even to attempt to find an accommodation that serves
conflicting high-value interests as well as possible. and at the
lowest possible detriment to each. Professionals in law are
forced by the nature of their work to do more probing into the
disadvantages of bright-line rules than other observers generally are likely to do. For this reason. professionals are less
likely than other observers to expect decisionmaking based on
hard-and-fast rules that. in hindsight. seems arbitrarily to disregard relevant circumstances and to deserve the pejorative
label "legalistic."
In this case. defendants have nevertheless proposed a
bright-line rule that would extend copyright only to source
code and object code. and never to nonliteral elements of
computer programs. That proposal must be rejected. Not only
is the proposed distinction contrary to the statutory mandates
discussed throughout this Opinion. but also. it reflects the
false hopes that are endemic to trying to apply brightline rules
where judgmental. evaluative standards are mQ~e appropriate.
Nichols. 45 F.2d at 121; Peter Pan Fabrics. 274 F.2d at 489.
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In any event, as noted in Part II, Congress could have constitutionally drawn defendants' proposed bright-line-providing protection only to computer program code and not to
nonliteral elements of computer programs-but Congress has
not done so. Without a congressional mandate, it would be an
abuse of authority for this court, in deciding this case, to use
a bright-line test of copyrightability that makes the Iiteralnonliteral distinction decisive. Instead, the court must adjudicate within the area of protection mandated by Congress.
D .. Opinion Evidence and Premises of Legal Rulings
Defendants, though disavowing any intent to invite the
court to engage in lawmaking, have gone to extraordinary
lengths in this case to advance policy arguments that a court
can appropriately consider only if, in order to decide the case
sub judice, it must answer previously unanswered questions
about the meaning of relevant constitutional, statutory, and
judicial sources of authority. Whether such a determination of
previouslY'undetermined meaning of an authoritative dec1a;
ration is described as lawmaking, as I believe it to be, or
instead in some other way-for example, as determining what
"old statutes have since become" in circumstances materially
different from those existing when the statute was enacted, R.
Dworkin, Law's Empire, 248-50 (I986)-is of less consequence than how a court goes about deciding meaning for the
case at hand. What "facts" or "evidence" shall the court consider? Shall the court consider expert opinions about what the
circumstances were at the time the statute was enacted, and
how they differ now?
Defendants' submissions have failed to address directly
these basic questions about the appropriate role of courts.
Implicitly, however, they have asked the court to consider
policy arguments as freely as if the court were under no constraints in this respect. Defendants, for example, offered the
following opinion testimony of a witness qualified as an
expert in computer software development:
If the law is interpreted to say that a developer may
not make a new program that can use the data files and
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inputs accepted by existing programs, then computer
advancement as we know it will be slowed. . . .
I believe that such a decision would throw the entire
software industry into confusion. . . . [T)here would be
a chilling effect on development and advancement in
many areas . . . .
This case has implications about whether or not new,
improved programs can read and execute data users created for themselves with an older program. The quantity
of data to be affected by this decision is incomprehensively vast. It is not a case about "cheap copies".
If aspects of screen displays that are governed by
functionality (such as a command language like the 1-23 command structure) are held to be within the scope of
copyright protection, then progress in application and
systems computer programs could be dramatically
slowed in the United States.
Bricklin Affdvt. 1111 176-77, 179-80. See also Samuelson &
Glushko, Comparing the Views of Lawyers and User Interface
Designers, 30 lurimetrics at 137 (concluding on basis of
survey that leading user interface designers oppose strong
copyright protection for elements of a user interface because
such protection would be harmful, rather than helpful, to the
industry).
By rulings during trial, the court received opinion evidence
of this kind into the "record" in the broadest sense, even
though excluding it from consideration in relation to any
material adjudicative fact that might be in dispute. Not surprisingly, defendants, though explicitly invited to do so, were
never able to identify any "adjudicative fact" question, as that
term is used in Rule 201 of the Federal Rules of Evidence, to
which opinion evidence such as this would be relevant. The
court nevertheless received this evidence, over plaintiff's
objection on the ground of irrelevance, because courts are
free to consider "evidence" of this type when deciding "legislative" (or "premise") facts. That is, courts' may consider
�248a
such evidence to resolve disputable assertions of an evaluative nature (either about the past or about the future) or assertions about historical facts, or predictions about future
consequences of adopting one or another rule of law, as
premises for deciding what legal ruling to make. Cf,: F.R.E.
201 (a), Notes of Advisory Committee (explaining "legislative
facts"). See also In re Asbestos Litigation, 829 F.2d 1233,
1245-52 (3d Cir.1987) (concurnng opinion of Becker, J .),
cert. denied, 485 U.S. 1029, 108 S.Ct. 1586,99 L.Ed.2d 901
(1988). This is not to say, however, that either the trial court
that allows the evidence to be received into the record or an
appellate court on review is limited by the rules of admissibility and the standards of review that apply to disputed issues
of "adjudicative" fact. Chastleton Corp. v. Sinclair, 264 U.S.
543, 548, 44 S.Ct. 405, 406, 68 L.Ed. 841 (1924) ("the Court
may ascertain as it sees fit any fact that is merely a ground for
Lockhart v. McCree, 476 U.S.
laying down a rule of law").
162,168-69 n. 3,106 S.Ct. 1758, 1762-63 n. 3,90 L.Ed.2d
137 (I 986U':'We are far from persuaded, however, that the.
'c1early..erroneous' standard of Rule 52(a) applies to the kind
of 'legislative' facts at issue here."). See also Dunagin v. City
of Oxford, Mississippi, 718 F.2d 738, 748 n. 8 (5th Cir.1983)
(en bane) ("legislative" fact discussion by Reavley, J.) ("If the
legislative decision is not binding at this stage, at least it carries great weight. Certainly it cannot be thrust aside by two
experts [who were called as witnesses before the trial court)
and a judicial trier of fact."), cert. denied, 467 U.S. 1259, 104
S.Ct. 3554, 82 L.Ed.2d 855 (1984).
The court having received defendants' proffered evidence
into the record for the limited purpose of considering its
weight, if any, as bearing on premises of any legal ruling the
court might find it necessary to make in deciding the case,
plaintiff responded with sharply contrasting opinions in its
post-trial brief:
ct
First, the tremendous growth and success of the U.S.
software industry is the direct result of the creative and
original efforts of its software developers, laboring under
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the protection of the copyright laws. Innovation has been
the key to market success. . . .
Second, to the extent that defendants attempt to characterize this struggle as pitting large heartless corporate
giants against lonely and defenseless developers working out of their dens and basements, the defendants do
not understand what is at stake here. If the elements of a
computer program at issue here were to lose their copyright protection, the biggest losers of all would be the
small developers. The history of this industry has been
one of creative designers who identify an unfilled need
in the market and then design and build a superior product to fill that need . . . . [T]he developers' ability to
realize substantial rewards for their creative efforts has
depended entirely upon the legal protection copyright
has afforded their work.
If the defendants could rewrite the law, however, those
days would be over. The first time a developer demonstrated an attractive new product at Comdex or Softeach
or some other industry gathering, hundreds of programmers in corporate research laboratories around the world
would set to work creating their own versions of the program to compete with the original. A major firm, with a
staff of talented programmers, could fairly promptly create a clone of almost any new program and, in so doing,
rob the author of much of the value of his creative
efforts. The original author might have a head start, but
that would provide little comfort once the major firms hit
the market with their "new" products. . .. If copying
were legal, the creators would lose out. It is as simple as
that.
It is no accident that the world's strongest software
industry is found in the United States, rather than in
some other jurisdiction which provides weaker protection for computer programs. The system is working, and
there is no reason to change it.
~
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Plaintiff's Post-Trial Brief at 87-89; see also Tarter Decl.
1111 72-73 (Docket No. 289) ("[Ilnterface design represents one
of the most crucial aspects of software design. In order to promote innovation and the evaluation of better software products, it is important that we protect the investment that the
best developers make in interface design."); Clapes, Software.
Copyright, & Competition at 202-03 (arguing that the user
interface, which is often the most important feature of a computer program. requires strong copyright protection to encourage further innovation and advancement).
The opinion testimony offered in this case failed completely to focus on circumstances existing at any time
Congress acted to enact or amend any part of the copyright
law. For this reason, it has little, if any, value in illuminating
issues of law presented in this case. It is relevant. of course.
that both the text and history of the copyright law manifest a
purpose of encouraging innovation and of doing so through
copyright protection. At the time of congressional action.
however-even as late as the 1976 Act and the 1980 amend- .
ments-jt was not possible to know how the computer programming industry would change over the ensuing years. and
what exact scope of protection would best advance the policy
goals in newly developed and now foreseeably developing
circumstances. In light of that uncertainty. shall the court consider expert opinions about what the law ought to be today?
What if those opinions appear to be inconsistent with the
accommodation. struck by the statute now in effect, among
competing and to some extent conflicting public policy justifications for broader or narrower copyright protection?
I conclude that a court would be going well beyond even
the precedents most receptive to consideration of legislative
history if it took into account expert opinions of persons
experienced in the field of computer software development
that are manifestly inconsistent with the accommodation that
Congress struck when it enacted the Copyright Act of 1976
and the most recent amendments of the copyright law. In the
1976 Act. Congress manifested an intention to encourage
innovation in the computer programming field. and to do so
251a
through copyright law that explicitly gives substantial protection to innovative expression in intellectual "works,"
including computer programs. Congress made this decision
despite expert testimony that extending copyright protection
to computer programs might have "disastrous consequences
. . . on standardization in electronic data processing," Copyright Law Revision; Hearings on S. 597 Before the Subcommittee on Patents. Trademarks. and Copyrights of the Senate
Committee on the Judiciary, 90th Congress, I st Session 589
(1967) (Testimony of Professor Anthony Oettinger), despite
academic criticism of the decision to extend copyright protection to computer programs. Breyer. Uneasy Case for Copyright, 84 Harv.L.Rev. at 340-351 (concluding that
"[clomputer programs should not receive copyright protection
at the present time"), and despite explicit proposals that copyright protect ~nly "the instructions themselves" while leaving
others free to otherwise "replicate [another's] program
exactly." Hearings on S. 597 at 571-73 (Statement of
EDUCOM) ("Broad copyright protection for programs is
unwise and improper. . . [Hlad programming been constantly
carried out under the threat of infringement actions charging
plagiarism of existing copyrighted programs. it is doubtful
whether the grouth of programs and programming techniques
of recent years would have been possible."). The 1980 amendments, too, plainly went farther in protecting the interests of
the creators of an original software product than defendants'
experts now propose (and than some experts at the time proposed, e.g., CONTU. Final Report at 56-76 (Hersey. C., dissenting», even though they did not go as far as proposed by
others to whose views Congress then had access.
When a court determines the meaning of the copyright
statute in a new context. different from what could have been
known to even the most prescient observer at the time
Congress acted. the court must respect the congressional mandate-especially with respect to congressional determinations
of premise facts-and is constrained to search not for what
the court might now independently consider to be the best
accommodation of competing interests but instead to deter-
�252a
mine an accommodation in this new context that is consistent
with the accommodation that Congress enacted for the context
to which it spoke. To the extent that expert opinions illumine
the comparison between the context to which Congress spoke
(the circumstances of software development then existing and
predictable future circumstances) and the current context (the
changing circumstances of software development now existing and now predictable for the future) the court may and
should take them into account. To the extent, however, that
expert opinions propose solutions inconsistent with the congressional accommodation, they must be disregarded.
On the basis of the complete record now before me, I conclude that defendants' policy arguments in this case are
inconsistent with the accommodation struck by Congress in
passing the Copyright Act and its amendments. Moreover,
defendants have not demonstrated any significant changes in
the premise facts upon which Congress acted, and upon which
CONTU rested its recommendations. If anything, user interfaces have ~j:_come more expressive and more communicative.
since 19.76 and 1980. I thus conclude that I must disregard
defendants' experts' prediction of doom for the computer programming industry if copyright is extended to thl': user interface and other non literal elements of computer programs that
embody expression, just as Congress disregarded Professor
Oettinger's gloomy prediction of "disastrous consequences"
and Commissioner Hersey's dissent. Rather, this legal issue
must be resolved in such a way as to extend copyright protection, clearly and unequivocally, to those nonliteral elements of computer programs that embody original expression.
E. Defendants' Policy Arguments Founded On the OTSOG
Principle
One more of defendants' policy arguments deserves attention. Despite statutory mandates supporting the conclusion
that elements of the user interface of 1-2-3 are copyrightable,
defendants argue that the need to achieve compatibility and
standardization compels rejection of that conclusion on pol-
253a
icy grounds. Copyrightability of a user interface, theyargue,
will frustrate the public interest in allowing programmers to
achieve innovation by "borrowing" and improving upon ideas
of other programmers, and will undermine attempts to achieve
compatibility and standardization among different programs.
Especially in the vital area of user interfaces, defendants contend, copyrightability will have adverse consequences on
encouraging innovation and on the broader public welfare.
Defendants' general contention-that "Progress of Science
and useful Arts" cannot occur unless authors and inventors
are privileged to build upon earlier progress and earlier innovation-has long been a virtually unchallenged premise in all
branches of the law of intellectual property. An early expression of the point is Newton's declaration: "If I have seen furtther it is by standing on ye sholders of Giants." Sir Isaac
Newton, Letter to Robert Hooke, February 5, 1675/1676,
quoted in R. Merton, On the Shoulders of Giants: A Shandean Postscript 31 (1965).3 This principle, which Merton has
referred to as "OTSOG" (based on the modernized "on the
shoulders of giants"), id. at 270, is also firmly established in
our case law:
In truth, in literature, in science 1\nd in art, there are, and
can be, few if any, things, which in an abstract sense, are
strictly new and original throughout. Every book in literature, science and art, borrows and must necessarily
Newlon's now-famous phrase-"on ye shoulders of Giants"may have been copied. al leasl in ils "Iolal concepl and feel," from
Bernard of Charlres who, according 10 Merton, aUlhored the OTSOG
aphorism in Ihe early Iwelfth cenlury when he laught: "we are like dwarfs
sianding (or silling, for Ihose dwarfs who prefer safely 10 far-ranging
visionl upon Ihe shoulders of giants, and so able 10 see more and see far·
Iher Ihan Ihe ancienIS." Merion, OTSOG al 178-92. As Merion demonSiraies. however, Bernard himself was slanding on Ihe shoulders of
Priscian. a sixlh·century grammarian, who wrOle: ''The younger (e.g., Ihe
more reccnt)lhe scholars,lhe more sharp-sighled." Id. al 194·95 (brackCIS added by Merion). Of course, Prisclan's passage presenls only Ihe
idea; il look Bernard 10 express Ihal idea in Ihe melaphor of giants and
dwarfs.
�254a
borrow, and use much which was well known and used
before.
Emerson v. Davies, 8 F.Cas. 615, 619 (C.C. D.Mass.1845)
(No. 4,436) (Story, J.). See also Ecclesiastes 1:9-10 ("[Tlhere
is no new thing under the sun. Men may say of something,
•Ah. this is new!'-but it existed long ago before our time.").
Defendants. however, attempt to squeeze something from the
OTSOG cornerstone that is not there.
Two possible applications of OTSOG in the field of computer programming are relevant to this case. First, innovation
in computer programming is advanced as each programmer
builds upon the ideas of previous programmers. Second, some
of the innovative ideas may be expressed in a particular way
that is so effective or efficient that the expression becomes
standardized throughout the field even though the idea is
capable of being expressed in other ways-that is, even
though the particular expression is not an essential detail to
every expression of the idea. Although both of these corol- .
laries of OTSOG are important to the future of computer programming. neither was embraced by Congress (as explained
below) in such a way as to override the public interest in conferring upon an author a right to a limited monopoly in the
author's "work."
The metaphorical "shoulders of giants" on which successors may legally stand are not as broad as defendants contend.
The legally relevant shoulders of programming giants are
their ideas-and do not extend to all of their expressions. The
encouragement of innovation requires no more. It is sufficient
that programmers are privileged to borrow and improve upon
previous ideas-such as the ideas for an electronic spreadsheet and a two-line moving cursor menu. Adequate room for
innovation remains even though successors are barred from
copying earlier authors' particular expressions-such as the
particular structure, sequence. and organization of a menu
command system. Pearl Systems, 8 U.S.P. Q.2d at 1525.
Of course, if a previous programmer's idea can be
expressed in only one or a limited number of ways-such as
the rotated "L" screen display or the use of the slash key to
2S5a
invoke the menu command system-then the expression, too,
may be copied. Morrissey, 379 F.2d at 678-79. Where. in c?ntrast, the idea is capable of countless way~ of b~mg
expressed, only inexpensive cloning, and not mnovatJon,
would be advanced by allowing programmers to copy the particular way the ideas have been expressed by others .
The second corollary of the "OTSOG" principle relevant to
this case concerns standardization. Defendants have argued
that 1-2-3, and specifically, 1-2-3's menu structure and macro
command facility, has set a de facto industry standard for all
electronic spreadsheets. Thus. defendants had no choice, they
argue, but to copy these expressive elements from 1-2-3: ~ad
they not copied these elements (including the macro faCIlity).
users who had been trained in 1-2-3 and had written elaborate ~acros to run on 1-2-3 spreadsheets, would be unwilling
to switch to VP-Planner. VP-Planner would be a commercial
failure. Neither the factual nor the legal predicate of the argument is supportable.
First, defendants' argument ignores the commercial success
of Excel, an innovative spreadsheet program that is not compatible with 1-2-3, either in its menu structure or ~n its macro
command facility. Also, defendants argument Ignores the
alternatives to direct copying that were legally available to
them.
As already explained, to the extent that VP-Planner was
concerned with compatibility for macros written originally for
1-2-3, VP-Planner could have provided for a translation
device that could read 1-2-3 macros and convert them, automatically, into macros that could be run on VP-Plann~r.
Microsoft Corporation successfully included such a capability in Excel and Lotus itself has written such a ca.pability for
translating macros among different-language versIOns of 1-23. Defendants have not offered persuasive evidence to show
that they could not have done the same with VP-Planner. That
"[i)t would have been an extremely complicated task" and
would have cost defendants more to do so, Dauphinais Affdvl.
11 163, is not a reason for denial of copyrigh,t protection ~o
1-2-3. Copyright protection always has consequences of thiS
kind.
�256a
257a
Moreover, to the extent that VP-Planner is an incremental
improvement upon 1-2-3 because of its multidimensional
database capabilities, defendants could have (I) sought a
license to use 1-2-3's menu structure and command facility;
(2) offered to sell their new expression of ideas to Lotus for
inclusion in future versions of 1-2-3; or (3) marketed VPPlanner as an "add-in" to 1-2-3.
An "add-in" program is a program designed to .be used in
conjunction with another program. For example, HAL is a
program that is used in conjunction with 1-2-3-a user must
have both HAL and 1-2-3-which allows a 1-2-3 user to enter
commands in simple sentences such as "copy column B to E"
rather than by selecting commands from the menus. Tr. Ex.
176. To encourage the creation of add-in programs (which in
turn, make 1-2-3 a more attractive program to potential customers), Lotus has published a product called Lotus Developer Tools that helps developers write add-in programs. Tr.
Ex. 138. Thus, even if defendants found the first two alternatives unauractive or unattainable (for example, because of
Lotus' nonconsent except on unfavorable terms, see Stewart,
110 S.Ct. at 1764 ("a copyright owner has the capacity arbitrarily to refuse to license one who seeks to exploit the
work"», they could have marketed their multidimensional
database capability as an "add-in" for those users interested
in that capability. Transaction and marketing costs of the third
option would tend to screen out the new product unless its
innovative features made it very attractive to potential users,
but this functional effect of copyright law would be entirely
consistent with the objects and policies of that law as manifested in the copyright statute and judicial precedents. By
instead selling a stand-alone product that completely replaces
I -2-3, defendants have not merely sold and profited from only
their incremental additional expression. Rather, they seek
permission to profit also from copying Lotus' protected
expression.
Defendants' standardization argument is flawed for another
reason as well. As explained above, one object of copyright
law is to protect expression in order to encourage innovation.
It follows, then, that the more innovative the expression of an
idea is, the more important is copyright protection for that
expression. By arguing that 1-2-3 was so innovative that it
occupied the field and set a de facto industry standard, and
that, therefore, defendants were free to copy plaintiff's
expression, defendants have flipped copyright on its head.
Copyright protection would be perverse if it only protected
mundane increments while leaving unprotected as part of the
public domain those advancements that are more strikingly
innovative.
Finally, the entire argument about standardization may be
questioned on a more fundamental ground. Defendants have
cited no statutory provision or precedent that has ever
declared that standardization, when not achieved de jure, is
necessarily in the public's best interest. The court is aware of
no such precedent or legislative mandate. A moment's reflection is enough to disclose that the public interest in extensive
standardization is a sharply debatable issue. See, e.g., Tarter
Decl. 1111 34-45; cf. the QWERTY typewriter keyboard (discussed in Farrell, Standardization and Intellectual Property,
30 Jurimetrics 35, 36-38 (1989». Decisive against defendants' contention, in any event, is that the particular way they
propose that the court resolve this dispute would reduce copyright protection far below the mandate of the copyright act.
VIII. OTHER DEFENSES
A. Lack of Subject Matter Jurisdiction
Section 4 I I of Title 17 provides that an infringement action
may not be brought unless the author has applied for regis(ration of the copyright. If the application is denied, the
infringement action may not be brought unless the author
serves a copy of the complaint on the Register of Copyrights.
"Copyright registration under § 41 I (a) is a [jurisdictional]
condition precedent to filing an infringement action." Quincy
Cablesyslems, Inc. v. Sully's Bar. Inc., 650 F.Supp. 838, 850
(D.Mass.1986).
�258a
259a
Defendants argue that plaintiff's allegations of copyright
infringement in 1-2-3's user interface are, in reality, allegations of copyright infringement in 1-2-3's "screen displays."
Defendants further argue that plaintiff's registration certificate for 1-2-3 covers only the literal code of 1-2-3, that plaintiff has failed to register the "screen displays" of 1-2-3 as
separate audiovisual works, and that this court consequently
lacks jurisdiction over allegations of infringement of the
"screen displays" of 1-2-3.
This contention borders on the frivolous. First, I emphatically reject defendants' premise, based on yet another word
game, that equates the user interface of 1-2-3 with 1-2-3's
"screen displays." In ruling that defendants have infringed
plaintiff's copyright, I have not ruled that defendants are
liable because they copied the "screen displays" of 1-2-3.
Rather, I have concluded that defendants copied protected
nonliteral elements of expression in the user interface and the
underlying computer program.
Second, Lconclude that, in any event, plaintiff's registra- .
tion cettificates are sufficient to extend to the "screen displays" of 1-2-3.
By focusing only on "screen displays," defendants have
f ai led to take due notice of the statutory language as it bears
on whether copyrightable elements of computer programs
include the "user interface" and other n<!nliteral aspects.
Depending on the sense in which the phrase "screen display" is used, it may be quite correct to say that
set of statements or instructions. . . to bring about a certain
result," 17 U.S.C. § 101. The screen display. understood in
this narrow sense, is useless for this purpose unless it is integrated with other parts of the computer program so as to
become indirectly part of the means by which the user communicates instructions through the total program to bring
about the desired result. Thus. the copyrightable element is
not. strictly speaking, the screen display, narrowly understood, but the literal and non literal elements of not only the
display but also the distinctive way of creating it. Indeed, the
Softklone court recognized this point:
copyright protection of a computer program does not
extend to screen displays generated by the program.
. . . This distinction results from the fact that the same
screen can be created by a variety of separate and independent computer programs. It is somewhat illogical to
conclude that a screen can be a "copy" of many different
programs.
Softklone, 659 F.Supp. at 455-56.
It is not, though, the screen display itself, in this narrow
sense, that is a copyrightable "computer program"-that is. "a
Therefore, it is this court's opinion that a computer program's copyright protection does not extend to the program's screen displays, and that copying of a program's
screen displays, without evidence of copying of the pro- .
gram's source code, object code, sequence, organization.
or structure, does not state a claim of infringement.
659 F.Supp. at 456 (emphasis added).
Accordingly, just as using different dialogue does not sanitize from claims of infringement a play that copies the plot
and characters from some other copyrighted work with resulting substantial similarity, the fact that the screen display
could easily be created in many other ways-either to perform
the same or to perform very different functions-does not
sanitize it from claims of copyright infringement. The critical question, instead, is whether copyright protection is available against creating and using such a screen displayincluding the manifestation of structure, sequence. and organization in that display-as a part of the "set of statements or
instructions" in a program that is designed "to be used
directly or indirectly in a computer in order to bring about a
certain result."
In any event. it is appropriate to consider "screen displays"
in a broader sense that also includes the structure. sequence.
and organization of the underlying program as manifested in
the menus presented on the screen displays. I conclude t~at
plaintiff's certificates of copynght registration in the "enure
�260a
261a
work" of 1-2-3 are sufficient to extend copyright protection
to the "screen displays," in this broader sense, of Lotus 1-23. See TX 1-233-501 (Tr. Ex. I, covering "entire work" of "12-3"), TX 1-233-502 (Tr. Ex. 2, covering "entire work" of
"1-2-3 Release IA"), and TX 1-694-602 (Tr. Ex. 3, covering
"computer program text" of "1-2-3 Release 2").
The Copyright Office registers different works in different
ways. One registration form may be used for nondramatic literary works (Form TX), different forms are required for
audiovisual works (Forms PA and VA), and a different form
for sound recordings (Form SR). Compendium of Copyright
Office Practices § 604 (1984) (hereinafter "Compendium /I").
See also 37 C.F.R. § 202.3(b)(1) (1989). As Congress recognized, however, the seven distinct categories of copyrightable works that are listed as examples in section \o2(a)
are not mutually exclusive:
[the video game) as an audiovisual work"); M. Kramer Manufacturing Co. v. Andrews, 783 F.2d 421, 442 (4th Cir.1986)
("a copyright in the audiovisual display, which display is created by a computer program, protects not only the audiovisual
from copying, but also the underlying computer program to
the extent the program embodies the game's expression"). See
also. Alari Games v. Oman, 888 F.2d at 882 ("Video games,
case law confirms, rank as 'audiovisual works' that may qualify for copyright protection."); Midway Manufacturing Co. v.
Artie International, Inc., 704 F.2d 1009, 1012 (7th Cir.)
(same), cert. denied, 464 U.S. 823, \04 S.Ct. 90, 78 L.Ed.2d
98 (1983). This form of registration is particularly appropriate
where the chief function, and the bulk of creative expression,
of a particular computer program is the creation of a series of
pictorial images on the computer screen as with video games.
Other authors of computer programs have applied for dual
registrations for computer programs-one "literary" registration to cover the code, and a separate "audiovisual" registration to cover the screen displays. See Softklone, 659
F.Supp. at 455-56. This practice has since been rejected by
the Copyright Office as duplicative. See Library of Congress,
Copyright Office, Registration of Computer Screen Displays,
Docket No. 87-4, 53 Fed.Reg. 21,817 (1988) ("all copyrightable expression owned by the same claimant and embodied in a computer program, including computer screen
displays, is considered a single work and should by registered
on a single application form"); Copyright Office, "Computer
Programs and Related Screen Displays" (Tr. Ex. 1179) (single registration required for computer programs and their
screen displays, including video game computer programs);
Compendium /I at § 607 (single registration covers single unitary work); id. at § 609 (copyright owner may "make only one
basic registration per work"); 37 C.F.R. § 202.3(b)(6) (1989)
(same): Mallufacturers Technologies, 706 F.Supp. at 993;
Broderbund, 648 F.Supp. at 1133.
In any event, when Lotus attempted to register separately
the screen displays of 1-2-3 as an audiovi$~al work, the
The items are. . . overlapping in the sense that a work
falling within one class may encompass works coming
withirrsome or all of the other categories.
House Report at 53, repnnted at 5666. Thus, in registering a
work that defies easy categorization, an author is directed to
use the application form "in the class most appropriate to the
type of authorship that predominates in the work being registered." Compendium /I § 604 (emphasis added); 37 C.F.R.
§ 202.3(b)(2). See also Compendium /I at § 708 ("The appropriate application form is generally determined by the nature
of the authorship in which copyright is claimed."); 37 C.F.R.
§ 202.3(b)(2).
Most computer programs, like 1-2-3, are registered on
Form TX as nondramatic literary works. See Compendium /I
at § 702.0 I ("computer programs" should be registered as
"nondramatic literary works" on Form TX). Some computer
programmers, however-notably authors of video gameshave instead registered for copyright the screen displays created by the program. Stern Electronics, 669 F.2d at 855
(plaintiff "eschewed registration of its program as a literary
work and chose instead to register the sights and sounds of
�262a
~opyright Office denied the. registration. In a letter to plaintiff. Copyright Examiner Julia Huff explained:
textual screen displays embodied within the computer
pro~ram that generates them are covered by the regis-
t~a.lIo~ for the program, without either the need or justification for separate registration for the displays.
Because the displays are considered to be an integral part
of the program, the authorship in the displays appears to
be the same as that contained in the program.
Leiter of ~an. 20, 1987, from Huff to plaintiff (Tr. Ex. 1092).
Accordmgly, I conclude that Lotus has properly registered
1-2-3 for copyright protection, and that this court does have
subject ~auer jurisdiction over all aspects of this infringement SUII.
B. Laches and Equitable Estoppel
~ext, defendants argue that plaintiff is barred from any
rehef under-the equitable doctrines of laches and equitable'
estoppe1.
Defendants have the burden of proving laches. Costello v.
United States, 365 U.S. 265, 282, 81 S.CI. 534, 543. 5
L.Ed.2d 551 (1961). Thus, to prevail on this affirmative
de~ense. defendants must prove by a preponderance of the
eVidence. (I) .th~t plai.ntiff inexcusably and unreasonably
delayed m bnngmg thiS action; and (2) that the delay has
prejudiced defendants. Gardner v. Panama R. Co., 342 U.S.
29,31,72 S.C!. 12, 13,96 L.Ed. 31 (1951); Puerto RicanAmerican Insurance Co. v. Benjamin Shipping Co., 829 F.2d
281, 283 (I st Cir.1987). Defendants have failed to sustain
either part of that burden.
According to defendants, beginning as early as Apri I 30
1985, "the trade press trumpeted Paperback's soon-to-be~
relea.sed spreadsheet product [VP-Planner), making no secret
that II would look and work like Lotus 1-2-3." Defendants'
Post-Trial Brief at 120. VP-Planner was eventually released
on October 30, 1985, but, defendants' charge, Lotus waited
until January 12, 1987,438 days later, to bring suit. [d.
263a
Even if Lotus did wait fourteen-and-a-half months after
learning of VP-Planner's release before commencing this litigation, I find that this delay was neither unreasonable nor
inexcusable. Defendants cite Worcester Brewing Corp. v.
Rueter & Co., 157 F. 217, 219 (I st Cir.1907), for the proposition that a fifteen-month delay barred plaintiff's trademark
infringement damage claim. That case, though, involved a relatively simple claim that defendant infringed plaintiff's trademark "Sterling Ale." Here, as evidenced by the court's
lengthy Opinion, plaintiff's claim of copyright infringement
in nonliteral elements of the USer interface of 1-2-3 was a far
more complicated claim, and one that required much more
time to evaluate and prepare.
In circumstances such as these, a delay of fourteen-and-ahalf months is not only reasonable, but, in fact, is likely to
serve both part and public interests in appropriate use of public and private resources for resolution of disputes. As plaintiff aptly asserts: "Prudent business judgment, Rule II and
basic common sense required Lotus first to ascertain that the
threat to its intellectual property interest was serious and that
its legal position was sound before filing suil." Plaintiff's
Post-Trial Brief at 83. See Manzi Decl. ~~ 8-11 (Docket No.
293); Roulo v. Russ Berrie & Co., Inc .. 886 F.2d 931, 942 (7th
Cir.1989) (twenty-one-month delay in filing infringement suit
reasonable where "delay in filing was due to [plaintiff's)
inquiry into the facts to determine the merit of her claim
against [defendant)"), cert. denied, _ U.S. - ' 110 S.CI.
1124,107 L.Ed.2d 1030 (1990).
Defendants nevertheless argue that, during the fourteenand-a-half-month delay, plaintiff at least had a duty to notify
defendants that plaintiff considered VP-Planner objectionable
and that plaintiff intended to claim proprietary rights in 1-23's user interface. Not only did plaintiff fail to so notify
defendants. defendants assert, but. in fact. plaintiff affirmatively led defendants to infer that VP-Planner was not objectionable. Accordingly, defendants contend, plaintiff is
estopp'!d from recovering against defendant. Defendants'
Post-Trial Brief at 131 n. 66 (citing Precious'Metals Associ·
�264a
265a
ates, Inc. v. Commodity Futures Trading Commission, 620
F.2d 900, 908 (I st Cir.1980) (" 'A person is estopped from
denying the consequences of his conduct where the conduct
has been such as to induce another to change his position in
good faith or such that a reasonable man would rely upon the
representations made.' ") (in turn quoting Bergeron v. Mansour, 152 F.2d 27, 30 (I st Cir.1945»).
In support of this contention, defendants cite a form letter
that plaintiff's Supervisor of the Information Center sent to
Paperback in January 1986 inquiring as to whether Lotus
could use its copy of VP-Planner at any location at plaintiff's
business. Tr. Ex. 201. Defendants argue that this leiter "suggested that Lotus treated VP-Planner as it treated any other
non-objectionable software product." Defendants Post-Trial
Brief at 13 J.
First, defendants have failed to offer any evidence that they
did, in fact, draw that inference. Indeed, Steven Cook, Paperback's former president, testified that the form letter was simply returne~_to plaintiff with the appropriate box checked. and
that Paperback did not even retain a copy of the leiter. Cook
Affdvt. 1124 (Docket No. 299). Second, the court is unable to
fathom how any reasonable person could draw that inference
from Lotus' form letter. In any event, defendants have cited
no authority to support the proposition that Lotus' leller, and
Lotus' failure to notify defendants of its internal investigation
into possible legal action during the fourteen-and-a-half
month hiatus, constitute the kind of actions that support
laches or equitable estoppel.
Another reason that defendants have failed to sustain a
laches defense is that they have failed to demonstrate, any
prejudice.
At the core of defendants' asserted prejudice is the following contention advanced by Paperback's former president:
In light of defendants' belief that their spreadsheet product,
to be successful, had to be compatible with 1-2-3, and defendants' strident insistence that i-2-3's user interface is not
copyrightable, this contention is simply not credible. In hindsight, perhaps, the expense of this lawsuit looms immense, but
the court does not credit the testimony that the mere threat of
a lawsuit, especially one that defendants assert they deemed
frivolous, would have caused defendants' to retreat from marketing a 1-2-3 "workalike" , spreadsheet program. I find that
defendants have not shown that they were prejudiced by any
delay.
Accordingly, I find that defendants have failed to sustain
either element of a laches defense, or an equitable estoppel
defense.
If Lotus had sued Paperback within three or four months
after the release of VP-Planner, then Paperback would
not have continued to market, sell, or develop VP-Planner in its Lotus-compatible form, whether or not the litigation had any merit.
Cook Affdvt. 11 33.
IX. RESERVED RULINGS ON OBJECTIONS
Although ruling on most evidentiary objections during the
trial, the court reserved ruling on some Rule 402 objections
until after the court had an opportunity to consider the relevance of certain evidence in the context of the entire case.
Most notable is evidence proffered by defendants with respect
to VisiCalc, which plaintiff asserted was irrelevant to any
issues raised by this case.
Although I agree that the "VisiCalc story," in the decisionmaking process reflected in this Opinion, has turned out
to be not relevant to any of the equitable defenses, and not
relevant to defendants'. contention that Lotus itself copied
aspects of VisiCalc with 1-2-3, I conclude that the "VisiCalc
story" is relevant for background purposes. See Granite Music
Corp. v. United Artists Corp., 532 F.2d 718, 720-21 (9th
Cir.1976) (admitting evidence of similar musical phrases
appearing in works that predate both plaintiff's and defendant's song proper to show, for background purposes, that certain elements were of such ordinary and common occurrence
that the probability of independent coincidental production
was great). Also, I conclude that this evidence may appropriately be considered for the purpose of deciding premise
�266a
facts upon which the conclusions of law with respect to copyrightability rest. See generally Part VII(D), supra.
With respect to all other reserved evidentiary rulings. the
court concludes that they are moot in view of the findings and
rulings stated in this Opinion. Moreover. even if the court
were to rule explicitly that all of the evidence was admissible.
I find as factfinder that none of this evidence alone, nor all of
it taken together. would change any of the findings and conclusions contained in this Opinion. That is. even when taken
into account. this evidence has so little probative weight that
it does not change any finding. Nevertheless. any party wishing an explicit ruling on any reserved evidentiary objection
may so move on or before July 19, 1990. identifying specifically each objection on which a more explicit ruling is
requested with references. if available, to specific pages in the
transcript of the first phase of this trial.
ORDER
For tlte reasons explained in this Opinion and on the findings and conclusions stated. it is hereby ordered:
(I) Liability for infringement by defendants' is established.
(2) Any party wishing an explicit ruling on any reserved
evidentiary objection may so move on or before July 19.
1990. identifying specifically each objection on which a more
explicit ruling is requested with references, if available. to
specific pages in the transcript of the first phase of this trial.
(3) A conference with respect 10 further proceedings will be
held as specified in Ihe Joint Procedural Order of Ihis dale.
267a
APPENDIX 1
vi.icalc Screen. Kain Kenu
Tr. Ex. 1047, Tab A.1
�269a
268a
APPEND!X 3
APPENDIX 2
1-2-3 Screen. Ha1n Henu. Workabeet b19bl19bted
Tr. Ex. 1047. Tab
~
VP-Plannar Seraan. Ka1n Hanu. Workabaet b19b119bted
Tr. Ex. 1047, Tab A4
�_ _--_._----------------.,----.....
271a
270a
A work is a "Berne Convention work" if-
COPYRIGHT ACT
§ 101. Definitions
Except as otherwise provided in this title. as used in this
title. the following terms and their variant forms mean the
following:
An "anonymous work" is a work on the copies or phonorecords of which no natural person is identified as author.
An "architectural work" is the design of a building as
embodied in any tangible medium of expression, including a
building. architectural plans, or drawings. The work includes
the overall form as well as the arrangement and composition
of spaces and elements in the design, but does not include
individual standard features.
"Audiovisual works" are works that consist of a series of
related images which are intrinsically intended to be shown
by the use of machines or devices such as projectors, viewers,
or electronic equipment. together with accompanying sounds.
if any. regard-less of the nature of the material objects. such as
films or tapes. in which the works are embodied.
The "Berne Convention" is the Convention for the Protection of Literary and Artistic Works. signed at Berne. Switzerland. on September 9. 1886. and all acts. protocols. and
revisions thereto. *
•
Section 2 of the Berne Convention Implementation Act of 1988.
Pub. L. 100-568. 102 Stat. 2853 (Oct 31. 1988). provides the following
declarations:
The Congress makes the following declarations:
(I) The Convention for the Protection of Literary and Artistic
Works. signed at Berne. Switzerland. on September 9. 1886.
and all acts. protocols. and revisions thereto (hereafter in
this Act referred to as the "Berne Convention") are not selfexecuting under the Constitution and laws of the United
States.
(2)
The obligations of the United States under the Berne
Convention may be performed only pursuant to appropriate
domestic law.
(jOOlnOle conlinued)
(I) in the case of an unpublished work. one or more of
the authors is a national of a nation adhering to the Berne
Convention. or in the case of a published work. one or
more of the authors is a national of a nation adhering to
the Berne Convention on the date of first publication;
(2) the work was first published in a nalion adhering
10 the Berne Convention. or was simultaneously first
published in a nation adhering to the Berne Convention
and in a foreign nation that does nol adhere to the Berne
Convention; .
(3) in the case of an audiovisual work(A) if one or more of the authors is a legal entity.
Ihal author has its headquarlers in a nation adhering to
Ihe Berne Convention; or
(B) if one or more of the authors is an individual.
that author is domiciled. or has his or her habitual residence in. a nalion adhering 10 the Berne Convention;
(4) in the case of a pictorial. graphic. or sculptural
work that is incorporated in a building or other structure.
the building or structure is located in a nation adhering
10 the Berne Convention; or
(5) in the case of an architectural work embodied in a
building. such building is erected in a country adhering
to the Berne Convention.
For purposes of paragraph (I). an aUlhor who is domiciled in
or has his or her habitual residence in. a nation adhering to
the Berne Convention is considered to be a national of that
nation. For purposes of paragraph (2). a work is considered to
(3)
The amendments made by this Act. together with the law as
it exists on the date of the enactment of this Act. satisfy the
obligations of the United States in adhering to the Berne
Convention and no further rights or interests shall be recognized or created for that purpose.
�272a
have been simultaneously published in two or more nations if
its dates of publication are within 30 days of one another.
The "best edition" of a work is the edition. published in the
U.nited States at any time before the date of deposit. that the
Library of Congress determines to be most suitable for its
purposes.
A person's "children" are that person's immediate offspring .. whether legitimate or not. and any children legally
adopted by that person.
A "collective work" is a work. such as a periodical issue.
anthology. or encyclopedia. in which a number of contributions. constituting separate and independent works in themselves. are assembled into a collective whole.
A "compilation" is a work formed by the collection and
assembling of preexisting materials or of data that are
select~d. coordinated. or arranged in such a way that the
resultmg work as a whole constitutes an original work of
authorship. The term "compilation" includes collective works.
A "compl!t~r program" is a set of statements or instructions
to be used directly or indirectly in a computer in order to
bring about a certain result.
"Copies" are material objects. other than phonorecords. in
which a work is fixed by any method now known or later
developed. and from which the work can be perceived. reproduced. or otherwise communicated. either directly or with the
aid of a machine or device. The term "copies" includes the
material object. other than a phonorecord. in which the work
is first fixed.
"Copyright owner". with respect to anyone of the exclusive
rights comprised in a copyright. refers to the owner of that
particular right.
The "country of origin" of a Berne Convention work. for
purposes of section 411. is the United States if(I) in the case of a published work. the work is first
pubJished(A) in the United States:
273a
(B) simultaneously in the United States and another
nation or nations adhering to the Berne Convention.
whose law grants a term of copyright protection that is
the same as or longer than the term provided in the
United States:
(C) simultaneously in the United States and a foreign nation that does not adhere to the Berne Convention: or
(D) in a foreign nation that does not adhere to the
Berne Convention. and all of the authors of the work
are nationals. domiciliaries. or habitual residents of. or
in the case of an audiovisual work legal entities with
headquarters in. the United States;
(2) in the case of an unpublished work. all the authors
of the work are nationals. domiciliaries or habitual residents of the United States. or. in the case of an unpublished audiovisual work. all the authors are legal entities
with headquarters in the United States: or
(3) in the case of a pictorial. graphic. or sculptural
work incorporated in a building or structure. the building or structure is located in the United States.
For the purposes of section 411. the "country of origin" of
any other Berne Convention work is not the United States.
A work is "created" when it is fixed in a copy or
phonorecord for the first time: where a work is prepared over
a period of time. the portion of it that has been fixed at any
particular time constitutes the work as of that time. and where
the work has been prepared in different versions. each version
constitutes a separate work.
A "derivative work" is a work based upon one or more preex isting works. such as a translation. musical arrangement.
dramatization. fictionalization. motion picture version. sound
recording. art reproduction. abridgment. condensation. or any
other form in which a work may be recast. transformed. or
adapted. A work consisting of editorial revisions. annotations.
elaborations. or other modifications which. as a whole. represent an original work of authorship. is a "derivative work".
�274a
A "device", "machine", or "process" is one now known or
later developed.
To "display" a work means to show a copy of it, either
directly or by means of a film, slide, television image, or any
other device or process or, in the case of a motion picture or
other audiovisual work, to show individual images nonsequentially.
A work is "fixed" in a tangible medium of expression when
its embodiment in a copy or phonorecord, by or under the
authority of the author, is sufficiently permanent or stable to
permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work
consisting of sounds, images, or both, that are being transmitted, is "fixed" for purposes of this title if a fixation of the
work is being made simultaneously with its transmission.
The terms "including" and "such as" are illustrative and not
limitative.
A "joint work" is a work prepared by two or more authors
with the in~c:ntion that their contributions be merged inio
inseparable or interdependent parts of a unitary whole.
"Literary works" are works, other than audiovisual works,
expressed in words, numbers, or other verbal or numerical
symbols or indicia, regardless of the nature of the material
objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied.
"Motion pictures" are audiovisual works consisting of a
series of related images which, when shown in succession,
impart an impression of motion, together with accompanying
sounds, if any.
To "perform" a work means to recite, render, play, dance, or
act it, either directly or by means of any device or process or,
in the case of a motion picture or other audiovisual work, to
show its images in any sequence or to make the sounds
accompanying it audible.
"Phonorecords" are material objects in which sounds, other
than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later
275a
developed, and from which the sounds can be perceived,
reproduced, or otherwise communicated, either directly or
with the aid of a machine or device. The term "phonorecords"
includes the material object in which the sounds are first
fixed.
"Pictorial, graphic, and sculptural works" include twodimensional and three-dimensional works of fine, graphic, and
applied art, photographs, prints and art reproductions, maps,
globes, charts, diagrams, models, and technical drawings,
including architectural plans. Such works shall include works
of artistic craftsmanship insofar as their form but not their
mechanical or utilitarian aspects are concerned; the design of
a useful article, as defined in tbis section, shall be considered
a pictorial, graphic, or sculptural work only if, and only to the
extent that, such design incorporates pictorial, graphic, or
sculptural features that can be identified separately from, and
are capable of existing independently of, the utilitarian
aspects of the article.
A "pseudonymous work" is a work on the copies or
phonorecords of which the author is identified under a fictitious name.
.
"Publication" is the distribution of copies or phonorecords
of a work to the public by sale or other transfer of ownership,
or by rental, lease, or lending. The offering to distribute
copies or phonorecords to a group of persons for purposes of
further distribution, public performance, or public display,
constitutes publication. A public performance or display of a
work does not of itself constitute publication.
" 'Registration,' for purposes of sections 205(c)(2), 405,
406, 41 O(d), 411, 412, and 506(e), means a registration of a
claim in the original or the renewed and extended term of
copyright. "
To perform or display a work "publicly" means(I) to perform or display it at a place open to the public or at any place where a substantial number of persons
outside of a normal circle of a family and its social
acquaintances is gathered; or
�276a
(2) to transmit or otherwise communicate a performance or display of the work to a place specified by
clause (I) or to the public, by means of any device or
process, whether the members of the public capable of
receiving the performance or display receive it in the
same place or in separate places and at the same time or
at different times.
"Sound recordings" are works that result from the fixation
of a sense of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work, regardless of the nature of the material objects,
such as disks, tapes, or other phonorecords, in which they are
embodied.
"State" includes the District of Columbia and the Commonwealth of Puerto Rico, and any territories to which this
title is made applicable by an Act of Congress.
A "transfer of copyright ownership" is an assignment, mortgage, exclu~~ve license, or any other conveyance, alienation, .
or hYPolhecation of a copyright or of any of the exclusive
rights comprised in a copyright, whether or not it is limited in
time or place of effect, but not including a n('nexclusive
license.
A "transmission program" is a body of material that, as an
aggregate, has been produced for the sole purpose of transmission to the public in sequence and as a unit.
To "transmit" a performance or display is to communicate
it by any device or process whereby images or sounds are
received beyond the place from which they are sent.
The "United States", when used in a geographical sense,
comprises the several States, the District of Columbia and the
Commonwealth of Puerto Rico, and the organized territories
under the jurisdiction of the United States Government.
A "useful article" is an article having an intrinsic utilitarian function that is not merely to portray the appearance of
the article or to convey information. An article that is normally a part of a useful article is considered a "useful article".
277a
The author'S "widow" or "widower" is the author's surviving spouse under the law of the author's domicile at the
time of his or her death, whether or not the spouse has later
remarried.
A "work of visual art" is(I) a painting, drawing, print, or sculpture, existing in
a single copy, in a limited edition of 200 copies or fewer
that are signed and consecutively numbered by the
author, or, in the case of a sculpture, in multiple cast,
carved or fabricated sculptures of 200 or fewer that are
consec~tivelY numbered by the author and bear the signature or other identifying mark of the author, or
(2) a still photographic image produced for exhibition
purposes only, existing in a single copy that ~s signed by
the author, or in a limited edition of 200 copies or fewer
that are signed and consecutively numbered by the
author.
A work of visual art does not include(A)(i) any poster, map, globe, chart, technical
drawing, diagram, model, ap;>lied art, motion picture
or other audiovisual work, book, magazine, newspaper, periodical, data base, electronic infor~at~on s~~
vice, electronic publication, or similar pubhcallo~; (II)
any merchandising item or adver.tising, pr~mollonal,
descriptive, covering, or packagmg m.atenal or ~on
tainer; (iii) any portion or part of any Item descnbed
in clause (i) or (ii);
(8) any work made for hire; or
(C) any work not subject to copyright protection
under this title.
A "work of the United States Government" is a work prepared by an officer or employee of the Uni,ted States Government as part of that person's offiCial dut~es.
�279a
278a
A "work made for hire" is-
(1) literary works;
(I) a work prepared by an employee within the scope
of his or her employment; or
(2) musical works, including any accompanying words;
(2) a work specially ordered or commissioned for use
as a contribution to a collective work, as a part of a
motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an
instructional text, as a test, as answer material for a test,
or as an atlas, if the parties expressly agree in a wrillen
instrument signed by them that the work shall be considered a work made for hire. For the purpose of the
foregoing sentence, a "supplementary work" is a work
prepared for publication as a secondary adjunct to a
work by another author for the purpose or introducing,
concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work,
such as forewords, afterwords, pictorial illustrations,
maps, charts, tables, editorial notes, musical arrange- .
mepts,-'- answer material for' tests, bibliographies,
appendixes, and indexes, and an "instructional text" is a
literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.
(4) pantomimes and choreographic works;
(As amended Dec. 12, 1980, Pub. L. 96-517, § 10(a), 94 Stal.
3028; OCI. 31, 1988, Pub. L. 100-568, § 4(a)( 1), 102 Stal.
2854-55; Dec. 1,1990, Pub. L. 101-650, Title VII, § 703,104
Stal. 5133; June 26,1992, Pub. L. 102-307, Title I, § 102,106
Stal. 266.); OCI. 28, 1992, Pub. L. 102-563, § 3, 106 Stal.
4248.)
§ 102. Subject matter of copyright: In general
(a) Copyright protection subsists, in accordance with this
title in original works or authorship fixed in any tangible
medium of expression, now known or later developed, from
which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or
device. Works of authorship include the following categories:
(3) dramatic works, including any accompanying music;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.
(b) In no case does copyright protection for an original
work of authorship extend to any idea, procedure, process,
system, method of operation, concept, principle, or disco~ery,
regardless of the form in which it is described, explained
illustrated, or embodied in such work.
(As amended Dec. I, 1990, Pub. L. 101-650, Title VII, § 703,
104 Stat. 5133.)
§ 103. Subject matter of ~opyright: Compilations and deriva·
tive works
(a) The subject mailer of copyright as specified by section
102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which
such material has been used unlawfully.
(b) The copyright in a compilation or derivative work
extends only to the material contributed by. t~e author .of
such work, as distinguished from the preexlsllng ~ate.nal
employed in the work, and does not impl.y an~ exclUSive ng~t
in the preexisting material. The copynght In such work IS
independent of, and does not affect or enlarge t~e scope, du.ration, ownership, or subsistence of, any cOPYright protecllon
in the preexisting material.
�-- --
--------
-----------------..----
280a
281a
§ 117. Limitations on exclusive rights: Computer programs·
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
Notwithstanding the provisions of section 106, it is not an
infringement for the owner of a copy of a computer program
to make or authorize the making of another copy or adaptation
of that computer program provided:
(I) that such a new copy or adaptation is created as an
essential step in the utilization of the computer program
in conjunction with a machine and that it is used in no
other manner, or
(2) that such new copy or adaptation is for archi val
purposes only and that all archival copies are destroyed
in the event that continued possession of the computer
program should cease to be rightful.
Any exact copies prepared in accordance with the provisions
of this section may be leased, sold, or otherwise transferred,
along with the copy from which such copies were prepared,
only as part of the lease, sale, or other transfer of all rights in
the program~-Adaptations so prepared may be transferred only
with the authorization of the copyright owner.
(As amended Dec. 12, 1980, P.L. 96-517, § 10(b), 94 Stat.
3028.
•
Section 117 as amended by the Act of Dec. 12. 1980. Pub. L. 96517 (94 Stat. 3015). Prior to this amendment. Section 117 read as fol·
lows:
§
117. Scope of exclusive rights: Use in conjunction with computers
and similar information systems
Notwithstanding the provisions of sections 106 through 116 and 118.
this title does not afford to the owner of copyright in a work any greater
or lesser rights with respect to the use of the work in conjunction with
automatic systems capable of storing. processing. retrieving. or transferring information. or in conjunction with any similar device. machine.
or process. than those afforded to works under the law. whether title 17
or the common law or statutes of a State. in effect on December 31. 1977.
as held applicable and construed by a court in an action brought under
this title.
Civil Action No. 87-0076-K
LOTUS DEVELOPMENT CORPORATION,
Plaintiff.
-vs.PAPERBACK SOFTWARE INTERNATIONAL
and STEPHENSON SOFTWARE, LTD.,
Defendants.
Civil Action No. 87-0074-K
LOTUS DEVELOPMENT CORPORATION,
Plaintif!.
-vs.MOSAIC SOFTWARE. INC.,
Defendant.
�,
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AFFIDAVIT OF MITCHELL D. KAPOR
to do so. (In addition. during the brief period from approximately April to August of 1980 I was employed by PSI in
California).
MITCHELL D. KAPOR. being duly sworn. deposes and says:
.
I. My name is Mitchell D. Kapor and I reside in Brookhne. Massachusetts.
. 2. I make this affidavit to provide testimony in the Phase
I tnal of the above-captioned actions.
. 3. I am the Chairman of the Board and Chief Executive
Officer of ON Technology. Inc.
*
* *
[*]1
8. In Nove~ber 1977. I purchased my first personal
computer. a RadiO Shack TRS-80. and began writing computer programs for use with that computer.
9. In July 1978 I bought an Apple II personal computer
~nd becam~. ~n independent software consultant. specializing
m devel9pmg software for the Apple computer.
10. In early 1979 I formed Micro Finance Systems
("MFS"). a computer software development company.
II. By 1979 I had created. designed and written a com~uter program called Tiny Troll. the first graphics and statis-
lI~s software package for the Apple II personal computer.
Tmy Troll was published by MFS.
. 12. In 1979 I also enrolled in the Accelerated Masters
Program at th~ Sloan School of Management at MIT. eventually complellng three of the requisite four terms of the program.
.
13. In the fall of 1979. while at the Sloan School. I was
approached by the prinCipals of Personal Software Inc.
("PSI") to inquire whether MFS was interested in crea;ing a
software program for PSI to publish. market and sell. I agreed
14. Pursuant to a software distribution agreement between
MFS and PSI dated November 3. 1979. I created. designed
and wrote two computer software programs. known as VisiPlot and VisiTrend. which were first published. marketed and
released for [*) sale by PSI in the spring of 1981. VisiPlot
was a graphics program and VisiTrend was a statistical analysis and forecasting program.
15. Through the Data Interchange Format ("DIF"). a file
format and data exchange protocol that I helped design (and
which was eventually released to the public by Software Arts.
Inc.). users of VisiCalc (a spreadsheet product). VisiPlot and
VisiTrend could transfer data between those programs. For
example. data stored in files created using VisiCalc could be
displayed graphically by transferring the data to. and then
using. the VisiPlot program.
16. In the fall of 1981. the software distribution agreement between MFS and PSI was terminated. I sold all rights
to the VisiPlot and VisiTrend products to PSI pursuant to an
Agreement and B ill of Sale. (A true and correct copy of the
Agreement and Bill of Sale is attached as Exhibit A to this
affidavit.)
17. In the Agreement and Bill of Sale. I explicitly
retained rights to two of my own product concepts. "EBS"
and "I-C-L language system and programs". EBS. or Executive Briefing System. a business/professional graphics program. later became Lotus' first product. I-C-L. a concept for
an integrated software package that would include spreadsheet, graphics and other capabilities, served as the foundation for a long process of development resulting in the
eventual creation of Lotus 1-2-3.
[*)
1
ument.
Brackeled aSlerisks indicate beginning of page in original doc.
18. In January 1982, I founded Profe~sional Software
Technology, which in April 1982 was combined with Lotus
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Development Company (another company I had created) to
form Lotus Development Corporation.
opment notes and documents from my files. True and correct
copies of some of these notes, handwritten by me during this
development period, are attached to this affidavit as Exhibits
B through K. These notes are from files that have been maintained. by me or my attorneys since their creation. It was my
usual practice during that time to write on the face of my
notes the date of their creation.
The Conceptual Origins of Lotus 1-2-3
19. T~e original idea for Lotus 1-2-3 came to me in early
1981, while I was developing VisiPlot and VisiTrend. In the
course pf using DIF to transfer data from VisiCalc to VisiPlot-a ~umberso.me process-it occurred to me that a product which, unlike t~ese independent, single-purpose
p~~~ra~s, w~uld ~omblOe spreadsheet and graphing capabilities 10 a smgle, IOtegrated program, could have significant
market appeal.
20. In the early summer of 1981. I met with Jonathan
Sachs ("Sachs"), who was developing various electronic
spreadsheet programs. That June. Sachs joined MFS with what
I understood to be non-exclusive rights to one of his spreadsheet programs.
21. f.fter Sachs joined MFS, it became our mutual goal'
and purpose to create an integrated business software product
for a personal computer which would be centrally organized
arou~d ~he spreadsheet metaphor. and which would be superior
to eXisting products.
22. The result of our efforts to attain that goal. Lotus 1-23, Release 1.0, was first commercially shipped (or "released")
on January 26, 1983.
[*)
23: Throughout the preceding eighteen months. Sachs and
I considered hundreds of alternative ideas for virtually every
aspect of the product. 1-2-3 ultimately evolved from a careful
selection process wherein concepts were often expressed in
one form, later disappeared, and then reappeared in another
guise-either in 1-2-3 itself or, frequently, in a subsequent
Lotus product.
24. The ebb and flow of this continual selection process is
reflected in thousands of pages of contemporaneous devel-
25. From the outset, I intended to create a product that
would have value for, and appeal to, the broadest possible
audience. I wanted the product to attract not only experienced
computer programmers or users, but also individuals who had
no prior computer or spreadsheet experience.
26. To accomplish this, I determined that it was essential
to create a product with a user interface dramatically different
from those provided in then-existing spreadsheet productsone that would be easy for the inexperienced to learn and [*]
to use, while also providing speed, convenience, and advanced
capabilities for the more sophisticated.
27. As my notes of June 18, 1981 (Exhibit B) reflect, early
in the development process of 1-2-3 I perceived the user interface as something distinct and separable from the functionality
that the spreadsheet program would provide to the user-i.t.,
the set of operations and functions that the user could perform
with the software.
28. Indeed, one of my earliest concepts was to provide a
user interface which would permit the user to define his or her
own menus of commands, corresponding to the elements of the
program's underlying functionality that he or she desired to
use. This would, iii effect. allow each user to create an individually customized user interface, even if the user had no
knowledge of the workings of the program's underlying source
code.
29. I had conceived this idea previously in connection
with my work on VisiPlot, as my notes of December 29, 1980
(Exhibit C) reflect.
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30. This concept, which I came to refer to as a User Interface Generator ("UIG"), is reflected in my notes of March 3
and May 29, 1981 (Exhibits 0 and E respectively).
ity to [*) review, by moving the cursor along the words in the
top line, the information concerning each command option in
that menu before selecting any command from that menu.
Prototype Development
31. From the summer of 1981 through the end of the year,
Sachs and I worked on a prototype for a spreadsheet which
* * *
[*)
previous concept for al10wing users also to define their own
menus. (The concept reemerged later in modified fashion.)
40. I determined that a fixed menu structure was more
suitable for the novice spreadsheet users to whom, in large
part, we sought to appeal, because it would provide a framework in which such users could learn to approach the solution
of spreadsheet problems generally. A fixed menu structure
would a~o help to guide the user through the program's capa-'
bilities'and to select appropriate operations to solve specific
app \ication problems.
41. My early thought to include user-defined menus did
survive in one feature of the published version of 1-2-3,
. expressed as the "/XM" command, which allows experienced
users to create their own alternative menus.
42. The fixed menu structure I chose to employ incorporated the two-line moving cursor menu (a concept I first introduced in VisiPlot), which permits the invocation of menu
commands from predetermined arrays of choices, and which
also provides information about those choices to the user,
serving in that respect as a kind of on-line reference.
43. The main elements of the two-line moving cursor
menu are: (a) words representing a set of available command
options displayed in the top line; (b) long prompts displayed
in the second, or lower line, containing i"nformation concerning the commands displayed in the top line; and (c) the abil-
44. I decided to organize these menus hierarchical1y,
meaning that the selection of one command option from the
first level menu could lead in turn to another array of command options on a second level menu (or "submenu"), and so
on, branching out in a sequence of descending menu levels.
This organization enables the novice user to browse through
the menu levels, in order to view the valid sequences of available options (and their corresponding explanations) and to map
out a plan for performing a particular task.
45. This hierarchical organization of command menus can
be described, or visualized, as a "menu tree". Indeed, the
menu structure of Lotus 1-2-3 as released is depicted in the
accompanying user's manual in an index entitled, "1-2-3 and
PrintGraph Command Trees".
46. The choice of words selected to represent commands
and their organization in the menu tree, I believed, would be
critical to the success of the user interface, especial1y for the
novice user. I believed that the words should not only inform,
but also fit into the overal1 approach to spreadsheet problems
reflected in the menu tree. I also believed that the flow of the
menu tree-i.e., its internal logic, moving from level to
level-should be easy for the user to understand and reflect as
[*) closely as possible the user's natural way of thinking, so
that the user would never have to think like a computer.
47. These beliefs were, in part, derived from my familiarity with previous spreadsheet products, which I felt were
deficient in this regard. For example, the alphabet-like menu
structures of some existing products, such as VisiCalc, conveyed too little information to the ~ser, require.d too muc,h
memorization andlor cross-referencing to the printed user s
manual, and-because they were not, to a meaningfu.1 extent,
arranged hierarchically-failed to provide the user with much
insight into an effective approach to the sQlution of spread-
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sheet problems or to harnessing the program's underlying
functionality.
48. I also believed that two-line moving cursor menus
would help the product to appeal to a broader audience
because their usage requires only elementary typing skills. My
sensitivity to this point was heightened because I cannot
touch-type. To invoke the menu commands, the user would
need only to use the cursor movement arrow keys and the
"Enter" or "Return" key on the keyboard. Users could, however, also invoke commands by hitting the key corresponding
to the first letter of the word representing that command on the
menu.
Development of 1-2-3; Functional Specification
49. In developing the final product, Sachs was again primarily responsible for writing the source code of the program.
[.] His primary focus in January and February 1982 was to
reimplement-the "core" of the prototype source code-mean- .
ing tharportion of the code that caused the computer to execute basic spreadsheet operations-in assemlily language for
the IBM PC.
50. Thereafter through July 1982, Sachs and I concentrated on developing the program's design and continued to
experiment with features for the product.
51. During this period, Sachs and I met approximately
once a week at the Lotus office in Central Square in Cambridge, Massachusetts. (Sachs otherwise worked at an office
in Hopkinton, Massachusetts).
52. Our method of collaboration was much the same as it
had been in the prototype stage. At our meetings, Sachs typically demonstrated the latest version of the program, incrementally enhanced from the previous version as a result of his
incorporation of our previous suggestions, comments and
ideas. I would then provide him with my latest ideas for additions or refinements to the product's features, which he would
then incorporate into the next version, if possible.
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53. In addition to defining the functionality the product
would contain, during this period I began the related process
of specifying the user interface in more detail. My ~ot~s of
March 9, 1982 (Exhibit F) contain some of m~ preh.mlOary
thoughts for the 1-2-3 user interface design (ancludlOg the
selection of words to represent individual commands).
• • •
[.]
63. For many of the same reasons, I wanted the software
documentation (i.e., the printed user's manual ~nd ref~rence
guides that accompany the software) to be written ~Ith an
audience of new users in mind, and to address a variety of
user's perspectives, including non-technical, business and ~en
eral users. To do so, I believed the manual should be written
in concise, non-technical language. In addition, I fel~ t.he manual should instruct the user how to accomplish speCIfIC tasks,
rather than simply describe the manner in which the product
performed, as many previous manuals had done.
64. Another issue we considered during this p~ocess was
how to capitalize on the special fur.ction keys prOVIded on the
IBM PC keyboard. These keys could be prog~ammed to perform virtually any specific preassigned funcllon.
65. As early as November 1981, I recognized the p.otential
power of these keys and determined to incorporate theIr usage
in sorpe manner in the final product.
66. As development progressed, Sachs and I di~cussed
many possible uses for these keys. For example, we ultimately
decided to permit the invocation of the "Help" feature by use
of the function keys.
67. I recognized that (he assignment to the function keys
of commands that users were likely to invoke frequen.tly
would complement my overall vision of a product which
would be accessible to novice users (for whom the keys would
be easy to [.] identify), while also allowi,ng advanced users
to speed through the program.
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68. Despite my decision to employ only a fixed menu
structure for the product as a whole, during this time I continued to refine my ideas for user-definable menus. For many
months I considered including a "command language" in the
product, which .would enable the user to automate repetitive
command sequences. This idea ultimately resulted in the
development and incorporation in 1-2-3 of keystroke
"macros". A macro permits a user to store a sequence of
keystrokes which the user can later instruct the computer to
execute by invoking a single command.
74. On my own and collectively with this team. hundreds
of hours were spent refining the menus, and dozens of iterations of menus and their organization were proposed. The process induced intense debate at times .. In the end, the final
decisions were mine.
69. I was aware of the concept of macros from prior experiences with text editor programs. To my knowledge, no other
spreadsheet at the time expressed the macro idea the way we
did in 1-2-3.
70. Although there was much give-and-take on the desirability of including macro capabilities, after lengthy experimentation I ultimately decided to do so in the belief that
sophisticated users would find them valuable.
71. We also considered the selection of commands to provide to the user for construction and operation of macros. The
universe of possible commands was very broad, some of which
could present considerable complexity. Ultimately, we determind to include a set of eight commands that we believed
would be relatively easy for users of some sophistication to
grasp, but [*] would also enhance the functionality of the
macro feature to a meaningful degree.
Development of J-2-3; Menu Structure
72. The essential functionality the product would provide
was settled approximately in August 1982. Our primary focus
then turned to the precise iteration of the menu tree.
73. From August until about October 1982, I met with
Sachs and the other members of our development team.
including lohn Posner, Ezra Gottheil, Mary Goldschmidt and
Steve Miller. several times a week to determine each word
choice. location and menu arrangement.
75. In selecting words for the menus, we struggled to
choose words that would intelligently convey to the user the
purpose of each command and its underlying functionality.
while at the same time ensuring that each word in a particular
menu level began with a unique letter. The first concern was
based on our desire to make the menus as informative and
intuitive as possible. The latter concern derived from the previous design choice to permit the user to invoke menu commands by striking the key corresponding to the first letter of
each word; obviously, if [*] more than one word began with
the same first letter, the program could not determine which
command the user intended by striking the key corresponding
to both.
76. Another factor we considered in organizing the menus
was my belief-based upon the principle of cognitive psychology that indi viduals can retain only seven pieces of information (plus or minus two) at a time-that each menu level
should contain approximately seven items (or fewer), to be
easier to learn and use.
77. I also believed that the hierarchical arrangement of the
menus should reflect a structured approach that communicated
the product's underlying functionality to the user. For example. I felt that commands representing related features should
be grouped together on a single level of the menu tree, with
subsequent dependent commands appearing on lower levels of
the tree.
78. In addition, in organizing the menus I believed that the
commands most likely to be used frequently should be
grouped in a broad menu appearing at the t~p of the ~e~u
structure. Similarly. 1 felt that the commands displayed wlthlO
a given menu level should appear from lefJ to right in declining order of likely frequency of usage.
�292a
79. Because there was no precedent for the menu structure
we envisioned, we had no formal market research or other data
to guide us in making' these determinations. We did, [.] however, conduct a number of informal user tests both internally
at Lotus as well as outside the company. In the end, the menu
tree organization was based largely on my intuition and subjective judgment, informed by feedback from the user tests,
trying as best I could to imagine myself in the rule of a typical user.
80. The numerous possibilities considered in creating the
final Lotus 1-2-3 menu structure are exemplified in my contemporaneous notes of May 29. July 24. and August 18, 1982
(Exhibits I. J. and K respectively). which depict the proposed
menu structure at various stages of development.
81. Attached as Exhibits L through 0 to this affidavit are
true and correct copies of documents maintained in my files
created on or about August 4. August 17. September 22. and
October 4. 1982. respectively. which I recognize as reflecting
the LotllS I :i-3 menu structure as it existed on or about those
dates.
82. As Exhibits I through 0 reflect. there were several
possible choices for almost every word selected. as well as for
its location in the menu trees. For example. the "Copy" command could also have been called "Replicate". "Duplicate".
"Repeat". or "Clone".
83. One example of an instance where both the word used
to represent a command, and its location in the menu tree.
underwent considerable change in the course of development
is that of the "Range" command and the commands branching
from it.
84. Its origin was an idea I had in April 1982 to
[.] include a "named range" feature, whereby the user could
refer to ranges of cells in the worksheet by assigning them
user-defined names (in addition to referencing them by other
means). I thought this feature. not present in any existing
product, would be useful for specifying commonly referred-to
293a
ranges on the worksheet, including tables, data to be graphed,
and areas to be printed.
85. I originally contemplated implementing this feature
through a command called "Name" located on the top menu
level. which, when invoked. would display all ~amed ranges
the user had previously specified horizontally m the cont.rol
panel. A user could select a desired na~~d rang~, by m~vmg
the cursor to the applicable name and stnkmg the Enter k.ey.
which would then invoke a submenu containing the followmg
options: Ac.cept, Exit. Edit, Rename, Delete. and Cancel.
86. Throughout the summer I struggled to simpli~y and
refine the "named range" feature. One alternative I conSidered
was to assign a "Name" command to a function key. either
instead of or in addition to a "Name" menu command.
87. Finally. following numerous meetings and discussions,
in August I decided to replace "Name" in the top menu level
with "Range", and to locate a "Name" menu command-pe~
milling the user to create. modify or delete ~a~ed ranges-m
the branching submenu. The feature permlltmg the ~ser to
select previously-specified named ranges from ~ honzontal
display was [.] assigned to a "Name" funcllon key .. In
September. the command options for the submenu branchmg
further from the "Range Name" commands were selected.
88. During the intensive phase of work on the menu.s from
August to October 1982. another debate erupted regardmg the
"Worksheet Global" command options. These commands were
intended to permit the user to set certain parameters for w~at
we called the "worksheet", including the format, recalculallon
mode, recalculation order and current and default column
widths.
89. These commands initially branched from a co~ma~d
called "Set" located in the top menu level. I became dlssallsfied with this structure because I did not believe it gave sufficient emphasis to the "global" or worksheet-wide nature of
most of the commands; at the same time. some of the com-
"
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mands following "Set" were not, originally, of that same
"global" nature.
90. My initial thought was to replace the "Set" command
with a "Global" command option in the top menu. That, however, created an initial-letter conflict because the word
"Graph" already appeared in that menu.
91. I had long discussions with my development team
regarding alternati ve words to represent the "Global" command. One possibility suggested was "Default". Again, however, we already had chosen the word "Data" to represent the
database branches of the menu tree in the top menu.
[*)
92. I ultimately decided that "Global" was the most
descriptive and appropriate word. To resolve the initial-letter
conflict with "Graph", I moved "Global" from the top menu
to a submenu branching form the "Worksheet" command.
93. A rdated decision was to reorganize the features peruser to set current and default (or worksheet-wide)
column widths, both of which originally branched form the
"Global" command. I felt this was potentially confusing to the
user. The feature allowing the user to set the width solely for
the column he or she was then working in (the "current" column) did not logically fit with the rest of the "Global" commands.
mitting.~e
94. To provide greater clarity and to present a better-structured approach in the menu tree, I broke these features apart,
placing one "Column-Width" command in the submenu
branching form "Global", to represent the capability to alter
widths for all columns in the worksheet, and another "ColumnWidth" command in the same submenu as "Global", to represent the feature pertaining to the current column only. That
way, the user would be unlikely to mistake the effect of a column-width adjustment. since the user would have to select the
"Global" command only in instances when the user desired to
make a global change.
95 It also became necessary to change the sequence of the
"Glob~I" command submenus as Sachs implemented new [*)
functionality. For example, when Sachs initially added the
"iteration" and "Recalculation" features. they both appeared
in the submenu directly branching from the "Worksheet
Global" commands. Because of a shortage of spa~e ~,n the
screen in that menu level. the word "Recalculation was
abbreviated to "Recalc".
96. Ultimately, however, as Sachs contin.~ed to.re~i,ne the
program's functionality, we decided to move Iteratl~~ dow~
one menu level in the sequence. to branch from ~~e Recalc
command. Once this change was made a.nd ad~I!lonal space
was available, I restored "Recalc" to ItS onglRal form"Recalculation" .
97. We also confronted difficulty in choosing a word to
represent the feature that permitted a user to save a. selected
range of cells (including for~~las), rather than an entire work~
sheet, in a separate file. OnglRally, and throughout the ~u~
mer of 1982, this feature was represented by the term FIle
Extract".
98. In September. when we changed the "File ~e1ete"
d option to "File Erase" (to avoid the confhct that
comman
"
d "File
arose when we renamed the "File Current com man
Disk" and. ultimately. "File Directory"). we enco~ntered yet
another initial-letter conflict. since it was not pOSSIble to have
both "Erase" and "Extract" on the same menu level. We could
not find an acceptable alternative for "Erase"; thus. we had to
reconsider "Extract".
[*J
99. One suggestion was "Partial". As i.s reflected in
Exhibit N, I did not think "Partial" was a sall~factory alternative because it was not sufficiently informal1ve. One of the
memb~rs of the team suggested using the non-En.ghsh. word
"Xtract" so we could convey the desired informal1on ~Ithout
conflicli~g keystrokes. "Xtract" is. in fact: the alternal1ve that
we ultimately used.
.
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100. In addition to selecting the words to represent each
command and determining their organization in the menu tree.
from August to October 1982 we also created the corresponding long prompts displayed in the lower line of the
menus. Each of the above-mentioned team members participated.
101. In some instances. we wrote brief textual explanations
for the commands appearing in the menus. In others. we chose
to display the next submenu branching from a particular command. Our decisions in this regard were governed not by a
mechanical principle but by a case-by-case consideration as to
which type of long prompt would be appropriate to a particular
command. with the ultimate goal of providing better information to the user.
* * *
[*]
112. In September 1985. Lotus released a new version or
upgrade of Lotus 1-2-3. called Release 2.0. I was involved in
the deveiopment of Release 2.0 primarily in the roles of product design and project management and oversight.
113. Release 2.0·s enhancements to the features provided in
Release I A resulted in the addition of a number of commands.
and necessitated some changes to the existing menus. For
example. the addition of the "Value" and "Transpose" commands to the submenu branching from the "Range" command
required the abbreviation of the words "Label-Prefix" appearing
in Release I A to the single word "Label" in Release 2.0. to represent the same command. The addition of a "Hidden" command
to the submenu branching from the "Range Format" commands
led to a slight change in the order of items within that submenu.
114. However. the user interface of 1-2-3. Release I A.
expanded and modified as necessary to express new capabilities.
was otherwise essentially incorporated in Release 2.0.
Signed under the penalties of perjury this 27th day of November. 1989.
lsI MITCHELL D. KAPOR
Mitchell D. Kapor
�
Dublin Core
The Dublin Core metadata element set is common to all Omeka records, including items, files, and collections. For more information see, http://dublincore.org/documents/dces/.
Title
A name given to the resource
Elena Kagan
Description
An account of the resource
<div>
<p>Elena Kagan worked as Associate White House Counsel from 1995-1996 and Deputy Assistant to the President for Domestic Policy and Deputy Director of the Domestic Policy Council (DPC) from 1997-1999.</p>
<p>During her work at the White House Justice Kagan worked on many topics including, but not limited to: AIDS, budget appropriations, campaign finance reform, education, health, labor, race, tobacco, Native Americans, and welfare.</p>
<p>In 1999 President Clinton nominated Kagan to the U.S. District Court of Appeals, no hearing was ever scheduled and she was thereby never confirmed.</p>
<p>Note: These records were made available in response to a <a href="http://clinton.presidentiallibraries.us/freedom-of-information-act-requests">Freedom of Information Act (FOIA)</a> request, FOIA 2009-1006-F. This collection contains both records created by Elena Kagan and records concerning Elena Kagan. </p>
<p><strong>Descriptions of the Sub Collections:</strong></p>
<ul><li><strong><a href="http://clinton.presidentiallibraries.us/items/browse?search=&advanced%5B0%5D%5Belement_id%5D=70&advanced%5B0%5D%5Btype%5D=is+exactly&advanced%5B0%5D%5Bterms%5D=Elena+Kagan%27s+White+House+Counsel+Files&range=&collection=&type=&user=&tags=&public=&featured=&exhibit=&submit_search=Search+for+items">White House Counsel Files</a></strong><br /> These records consist of files created and received by Elena Kagan when she served as Associate Counsel to President Clinton from 1995 to 1996. The files include but are not limited to records concerning Amtrak, campaign finance reform, gaming/gambling (especially as it relates to Native Americans), timber, regulatory reform, and welfare. The records include memoranda, notes, correspondence, articles, reports, executive orders, bills, and directives.</li>
<li><strong><a href="http://clinton.presidentiallibraries.us/items/browse?search=&advanced%5B0%5D%5Belement_id%5D=70&advanced%5B0%5D%5Btype%5D=is+exactly&advanced%5B0%5D%5Bterms%5D=Elena+Kagan%27s+Domestic+Policy+Council+Files&range=&collection=&type=&user=&tags=&public=&featured=&exhibit=&submit_search=Search+for+items">Domestic Policy Council Files</a></strong><br />These records contain files created and received by Elena Kagan when she served as Deputy Assistant to the President for Domestic Policy and Deputy Director of the Domestic Policy Council (DPC) from 1997-1999. The files include records concerning domestic policy topics such as AIDS, budget appropriations, campaign finance reform, education, health, labor, race, tobacco, and welfare. The records include memoranda, correspondence, articles, and reports.</li>
<li><strong><a href="http://clinton.presidentiallibraries.us/items/browse?search=&advanced%5B0%5D%5Belement_id%5D=70&advanced%5B0%5D%5Btype%5D=is+exactly&advanced%5B0%5D%5Bterms%5D=White+House+Staff+%26+Office+Files+re+Elena+Kagan&range=&collection=&type=&user=&tags=&public=&featured=&exhibit=&submit_search=Search+for+items">White House Staff Files re Elena Kagan</a></strong><br />These records are compiled from a variety of staff office files including the Chief of Staff, Personnel, Office of First Lady, Counsel, and DPC and include correspondence, memorandum, forms, and reports all concerning or having to do with Elena Kagan.</li>
<li><strong><a href="http://clinton.presidentiallibraries.us/items/browse?search=&advanced%5B0%5D%5Belement_id%5D=70&advanced%5B0%5D%5Btype%5D=is+exactly&advanced%5B0%5D%5Bterms%5D=White+House+Office+of+Records+Management+Files+re+Elena+Kagan&range=&collection=&type=&user=&tags=&public=&featured=&exhibit=&submit_search=Search+for+items">White House Office of Records Management Files (WHORM)</a></strong><br />These records are from the White House Office of Records Management (WHORM) subject file series. The Clinton Presidential Library inherited a document-level index maintained by WHORM during the Clinton Administration which tracked some incoming correspondence and other documents as they were circulated throughout the White House and filed by WHORM. The records contain files created and received by Elena Kagan that were tracked by the WHORM Subject File index. The files include records related to a variety of topics such as memoranda, correspondence, and Domestic Policy Council weekly reports. The records are tracked by an alpha/numeric code, and are listed as such.</li>
<li><strong><a href="http://clinton.presidentiallibraries.us/items/browse?search=&advanced%5B0%5D%5Belement_id%5D=70&advanced%5B0%5D%5Btype%5D=is+exactly&advanced%5B0%5D%5Bterms%5D=Elena+Kagan%27s+1999+Nomination+to+U.S.+Court+of+Appeals&range=&collection=&type=&user=&tags=&public=&featured=&exhibit=&submit_search=Search+for+items">Elena Kagan's 1999 Nomination to U.S. Court of Appeals</a></strong><br />After serving as the Deputy Director of the Domestic Policy Council, Elena Kagan was nominated to serve on the U.S. Appeals Court for the District of Columbia (D.C. Circuit) in1999. Her nomination expired in 2000 without Senate action. The files in this opening contain records from the White House Staff and Office Files, Counsel’s Office and Presidential Personnel, concerning her nomination. The records consist of Senate Judiciary Committee questionnaires, correspondence, law review files, news articles, briefs, and press briefings.</li>
<li><strong><a href="http://clinton.presidentiallibraries.us/items/browse?search=&advanced%5B0%5D%5Belement_id%5D=70&advanced%5B0%5D%5Btype%5D=is+exactly&advanced%5B0%5D%5Bterms%5D=Email+Received+by+Elena+Kagan&range=&collection=&type=&user=&tags=&public=&featured=&exhibit=&submit_search=Search+for+items">Email Received by Elena Kagan</a></strong><br />These records consist of email received by Elena Kagan during her time as Associate White House Counsel from 1995-1996 and Deputy Assistant to the President for Domestic Policy and Deputy Director of the Domestic Policy Council (DPC) from 1997-1999. In addition to the email proper, these messages include forwards, reply chains, and attachments. The attached documents include notes, memorandum, articles, reports, executive orders, bills, and directives. These email concern a myriad of topics including but not limited to Amtrak, campaign finance reform, gaming/gambling (especially as it relates to Native Americans), timber, regulatory reform, welfare and domestic policy topics such as AIDS, budget appropriations, education, health, labor, race, and tobacco.</li>
<li><strong><a href="http://clinton.presidentiallibraries.us/items/browse?search=&advanced%5B0%5D%5Belement_id%5D=70&advanced%5B0%5D%5Btype%5D=is+exactly&advanced%5B0%5D%5Bterms%5D=Email+Sent+by+Elena+Kagan&range=&collection=&type=&user=&tags=&public=&featured=&exhibit=&submit_search=Search+for+items">Email Sent by Elena Kagan</a></strong><br />These records consist of email sent by Elena Kagan during her time as Associate White House Counsel from 1995-1996 and Deputy Assistant to the President for Domestic Policy and Deputy Director of the Domestic Policy Council (DPC) from 1997-1999. In addition to the email proper, these messages include forwards, reply chains, and attachments. The attached documents include notes, memorandum, articles, reports, executive orders, bills, and directives. These email concern a myriad of topics including but not limited to Amtrak, campaign finance reform, gaming/gambling (especially as it relates to Native Americans), timber, regulatory reform, welfare and domestic policy topics such as AIDS, budget appropriations, education, health, labor, race, and tobacco.</li>
<li><strong><a href="http://clinton.presidentiallibraries.us/items/browse?search=&advanced%5B0%5D%5Belement_id%5D=70&advanced%5B0%5D%5Btype%5D=is+exactly&advanced%5B0%5D%5Bterms%5D=Elena+Kagan%27s+Records+re+Native+Americans&range=&collection=&type=&user=&tags=&public=&featured=&exhibit=&submit_search=Search+for+items">Elena Kagan's Records re Native Americans</a></strong><br />These records were created or received by Elena Kagan during her service as Deputy Assistant to the President for Domestic Policy and Deputy Director of the Domestic Policy Council (1997-99). These ten folders were previously opened as part of a Freedom of Information Act request related to Native Americans (FOIA case <a href="http://www.clintonlibrary.gov/Documents/Finding-Aids/2006/2006-0197-F%28seg%203%29.pdf" target="_blank">2006-0197-F</a>).These records consist of memoranda, emails, reports, notes, and clippings.</li>
<li><strong><a href="http://clinton.presidentiallibraries.us/items/browse?search=&advanced%5B0%5D%5Belement_id%5D=70&advanced%5B0%5D%5Btype%5D=is+exactly&advanced%5B0%5D%5Bterms%5D=Additional+Materials+re+Elena+Kagan&range=&collection=&type=&user=&tags=&public=&featured=&exhibit=&submit_search=Search+for+items">Additional Materials re Elena Kagan</a></strong><br />These records were taken from the files of Elena Kagan. They include memos to, from, and relating to Elena Kagan’s work on Domestic Policy issues. The records include some memos from Elena Kagan to President Clinton.</li>
<li><strong><a href="http://clinton.presidentiallibraries.us/items/browse?search=&advanced%5B0%5D%5Belement_id%5D=70&advanced%5B0%5D%5Btype%5D=is+exactly&advanced%5B0%5D%5Bterms%5D=Federal+Email+re+Elena+Kagan&range=&collection=&type=&user=&tags=&public=&featured=&exhibit=&submit_search=Search+for+items">Federal Email re Elena Kagan</a></strong><br />The federal email re: Elena Kagan consists of 114 email messages that were part of the Federal side of the Clinton White House. The email generally consists of summaries of meetings or telephone conversations in which Elena Kagan was a participant.</li>
</ul></div>
Identifier
An unambiguous reference to the resource within a given context
2009-1006-F
Provenance
A statement of any changes in ownership and custody of the resource since its creation that are significant for its authenticity, integrity, and interpretation. The statement may include a description of any changes successive custodians made to the resource.
Clinton Presidential Records: White House Staff and Office Files
Clinton Presidential Records: Automated Records Management System
Clinton Presidential Records: White House Staff and Office Files
Publisher
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Clinton Presidential Library & Museum
Format
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Adobe Acrobat Document
Creator
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Office of the Counsel to the President
Domestic Policy Council
First Lady's Office
White House Office of Records Management
Chief of Staff
White House Office for Women's Initiative and Outreach
Automated Records Management System
Tape Restoration Project
Security Office
Presidential Personnel
Date
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1995-1999
Extent
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2945 folders
Text
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Original Format
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Paper
Dublin Core
The Dublin Core metadata element set is common to all Omeka records, including items, files, and collections. For more information see, http://dublincore.org/documents/dces/.
Title
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Lotus v. Borland [7]
Creator
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Office of the Counsel to the President
Elena Kagan
Identifier
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2009-1006-F
Is Part Of
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Elena Kagan's White House Counsel Files
<a href="http://catalog.archives.gov/id/2524461" target="_blank">National Archives Catalog Description</a>
Provenance
A statement of any changes in ownership and custody of the resource since its creation that are significant for its authenticity, integrity, and interpretation. The statement may include a description of any changes successive custodians made to the resource.
Clinton Presidential Records: White House Staff and Office Files
Format
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Adobe Acrobat Document
Publisher
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Clinton Presidential Library & Museum
Medium
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Reproduction-Reference
Date Created
Date of creation of the resource.
6/11/2010
Source
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Counsel - Box 032 - Folder 003
2524461