Subject: A Friendly Brief For background info, we have forwarded you the Brief that was submitted to the Court by the leading Copyright authorities in the US. Obviously, the Judge opted not to believe them. UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS LOTUS DEVELOPMENT CORPORATION, Plaintiff, Civil Action No. 90-11662-K -against- BORLAND INTERNATIONAL, INC. Defendant. BRIEF AMICUS CURIAE OF COPYRIGHT LAW PROFESSORS Ralph S. Brown Professor of Law, Emeritus Yale Law School Stephen L. Carter Professor of Law Yale Law School Rochelle C. Dreyfuss Professor of Law New York University School of Law Peter A. Jaszl Professor of Law The American University, Washington College of Law Dennis S. Karjala Professor of Law Arizona State University College of Law David L. Lange Professor of Law Duke University School of Law Peter S. Menell Acting Professor of Law University of California at Berkeley, Boalt Hall School of Law L. Ray Patterson Professor of Law University of Georgia School of Law Jerome H. Reichmann Professor of Law Vanderbilt University School of Law Pamela Samuelson Professor of Law University of Pittsburgh School of Law Lloyd L. Weinreb Professor of Law Harvard Law School 1. Purposes of the Brief This brief amicus curiae does not address the merits of the copyright suit between Lotus Development Corporation ("Lotus") and Borland International, Inc. ("Borland"). It speaks only to the nature of the copyright inquiry that we, as professors of law who teach and write about copyright law, think to be appropriate for addressing the issues presented by cases of this general type. We offer our views on this subject out of concern about the overbroad test used in assessing the copyrightability of the Lotus 1- 2-3 user interface and its component parts in Lotus Development Corporation v. Paperback Software International, 740 F. Supp. 37 (D- Mass. 1990). We regard the test employed in that opinion to be inconsistent with the copyright statute, the copyright caselaw, and traditional principles of copyright law. Its use not only has an adverse effect on the development of copyright doctrine, but has substantial potential to have an adverse effect on software development and the software industry. It should not be employed in judging the copyright issues in the Lotus v. Borland dispute. This brief aims to aid the court in constructing a more appropriate framework for resolving the copyright issues presented by the Lotus v. Borland case. Before proceeding with a discussion of this framework, it may be helpful to the court to know that we agree with the view expressed in the Paperback opinion that some computer program user interfaces contain expressive aspects that can properly be protected by copyright law. Not all computer program user interfaces, however, have expressive aspects. Whether a particular user interface, or aspects of such an interface, is expressive enough to be protectable by copyright law should be judged by traditional copyright standards. We understand that the court is currently considering Lotus' motion for summary judgment against Borland. We understand Lotus to be relying heavily on the courts ruling in the Paperback opinion in support of this motion. By setting forth the kind of traditional copyright inquiry that we think should be made in a case of this sort, we hope to alert the court to the possibility that it might need to make some factual inquiries in the Lotus v. Borland matter of a sort that were apparently not made in the Paperback case. II. What Framework Is Appropriate For Addressing the Copyright Issues In a Dispute of This Sort? The principal questions posed by a dispute such as that currently pending in the Lotus v. Borland case are, first, whether the aspect of the program sought to be protected-in this dispute, the Lotus 1-2-3 command hierarchy--is properly regarded as a protectable element of expression, and second, whether there has been an improper appropriation of protected elements of expression, which is generally established by showing that there is substantial similarity in expressive elements between the two works. See, e.g., P. Goldstein, Copyright Law secs. 7.1 and 7.3 (1989); 3 M. Nimmer and D. Nimmer, Nimmer on Copyright secs. 13.01 and 13.03 (1991). As the court properly noted in the Paperback decision, a central problem in copyright infringement litigation is to sort out what in a work is protectable expression and what are unprotectable ideas. The term "idea" has a special and complex meaning in copyright law, one reflected in the long history of copyright caselaw and in the copyright statute. As both sources of authority demonstrate, it is not just highly abstract formulations, such as that of an electronic spreadsheet, that are considered "idea," and consequently beyond the scope of copyright protection in a computer program. Section 102(b) of the Copyright Act of 1976 ("1976 Act") plainly states: "In no case does copyright protection for an original work of authorship extend to any ... procedure, process, system, [or] method of operation.... regardless of the form in which it is described, explained, illustrated, or embodied in such work," any more than it would extend to more abstract elements of the work, such as the ideas, concepts, discoveries, or principles. 17 U.S.C. sec. 102(b). See discussion of this principle in P. Goldstein, Copyright Law sec. 8.5 (1989). It has become a basic tenet of copyright law that the term "idea" is to be used as a metaphor to refer to a number of unprotectable elements contained in copyrighted works, among them, those listed in section 102(b) (See Footnote 1). Although early on in the Paperback opinion the court seems to have recognized the metaphoric character of the term "idea," see 740 F. Supp. at 53, it failed to follow through with this insight in formulating its test for judging the copyright issues in the case and applying the test to the Lotus v. Paperback dispute. The exclusion of section 102(b) elements from copyright protection is to be respected, without regard to how original, novel, unique, nonobvious, or valuable they may be, or how much it might have cost to develop them. In some cases, innovative processes, systems, and methods of operation that can meet the rigorous standards and procedures set forth in Title 35 of the U.S. Code will be protectable by patent law, but their inclusion in a copyrighted work does not mean that copyright protection is available to them. The meaning of section 102(b) can be understood by examining the legislative history underlying the provision and the caselaw out of which the provision largely arose. There are two aspects of the legislative history of section 102(b) worth noting here. First, both the House and Senate Reports on the 1976 Act reflect that this provision was adopted in part to ensure that copyright protection for computer programs would not be construed too broadly. Although the Paperback opinion quotes the relevant language from the legislative history, we repeat it here because we think the court lost sight of it when formulating and applying its test for judging what was expressive in the Lotus interface. "Some concern has been expressed lest copyright in computer programs should extend to the methodology or processes adopted by the programmer, rather than merely to the 'writing' expressing his ideas. Section 102(b) is intended, among other things, to make clear that the expression adopted by the programmer is the copyrightable element in a computer program, and that the actual processes or methods embodied in the program are not within the scope of copyright law." H.R. Rep. No. 1476, 94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S. Code Cong. & Admin. News 5659, 5670 and S. Rep. No. 473, 94th Cong., 2d Sess. 54 (1976). Secondly, the Reports indicate that section 102(b) was intended to reflect and be consistent with the copyright caselaw which has long held that constituent parts of systems, methods, and the like are unprotectable by copyright law (See footnote 2). It is to cases such as Baker v. Selden, 101 U.S. 99 (1879) and its progeny that courts should look in interpreting section 102(b) and its exclusion of systems and methods from the scope of copyright protection available to works of authorship. A test for copyright infringement (or a test of the copyrightability" of a particular element of a work) that regards only the general purpose or function of a computer program as the program's unprotectable idea, and regards all other aspects of the program as presumptively expressive is incompatible with the copyright statute, traditional principles of copyright law, and the caselaw properly interpreting it. Such a test is overbroad, for it considers more elements of a copyrighted work to be protectable "expression" than is appropriate. It is also unduly narrow in that it forecloses other inquiries that should be made to determine whether the plaintiff is seeking protection for things that are more properly considered "idea" (in the larger metaphoric sense) than "expression." Baker v. Selden, 101 U.S. 99 (1879) is the seminal case out of which developed a long line of copyright cases in which courts have held that a set of words and their arrangement could be a constituent part of a system, and hence outside the scope of copyright protection. Selden's claim of copyright infringement arose because Baker included in his own book about Selden's bookkeeping system some sample ledger sheets that were substantially similar in arrangement of columns and headings to those in Selden's books illustrating the same system. The principal issue before the Court was whether someone besides Selden could "make or use similar ruled lines and headings, or ruled lines and headings made and arranged on substantially the same system, without violating the copyright." Id. at 101. The Supreme Court concluded that Selden's copyright protected his explanation of the system, not the system itself or its constituent parts. Because the arrangement of words and columns on the ledger sheets were constituent parts of that system, the Court held they were unprotectable by copyright law. "[T]he mere copyright of Selden's book did not confer upon him the exclusive right to make and use account-books, ruled and arranged as designated by him and described and illustrated in said book." 101 U.S. at 107 (emphasis added). The Court thought it inappropriate to give Selden indirectly protection for the bookkeeping system that would have been unavailable had Selden claimed the system directly as a protectable element of the work (See footnote 3). Yet, indirect protection of the system would have been the result if the Court had construed copyright's reproduction right as giving Selden the exclusive rights in the arrangement of words and columns constituting his system. As a result of the Court's ruling, the arrangement of columns and headings of the ledger sheets embodying Selden's system could be freely copied by others, even by one who included them in a competing work on the same system. Although the choice and arrangement of words in Baker's ledger sheets was somewhat different from Selden's, the statement quoted above indicates that the Supreme Court would have ruled no differently had Baker used exactly the same words and arrangement in his sample ledger sheets as Selden had used. This result too is consistent with traditional copyright principles and section 102(b) of the copyright statute. See, e.g., B. Kaplan, An unhurried View of Copyright Law 64 (1967). It is in the nature of a method or system to have constituent elements, some of which may be quite detailed in character. In the "shorthand cases," courts will decline to extend copyright protection not only to the set of abstract rules that a shorthand system developer might have devised for condensing words or phrases, but also to the vocabulary resulting from the implementation of these rules. Both are constituent elements of the system which copyright law will not protect. See, e.g., Brief English Systems, Inc. v. Owen, 48 F.2d 555 (2d Cir.), cert. denied, 283 U.S. 858 (1931). Copyright law will protect the shorthand system developers' explanation of the system, but not the system and its constituent parts. Thus, the fact that a particular element of a copyrighted work is more detailed dm the most abstract description of a program's general purpose or function does not automatically mean it is an "expressive" detail; it may instead be a constituent element of a system, or some other kind of unprotectable element of the work. The Nimmer treatise, in recognition of the distinctive nature of computer programs, recommends use of a "successive filtering method" for distinguishing between protectable and unprotectable elements of copyrighted computer programs. See 3 M. Nimmer and D. Nimmer, Nimmer on Copyright sec. 13.03[F] (1991). This method aims at excluding from copyright protection not only abstract ideas, but also program elements aimed at achieving efficiency, those dictated by logic or standard programming practice, other standard techniques or features for programs of that type, other elements constraining the design arising from external considerations, and other elements belonging in the public domain. Only after these unprotectable elements have been filtered out does the Nimmer treatise regard it as appropriate to conduct an analysis of substantial similarity in computer program copyright cases. Thus, in the Lotus v. Borland case, the court should make an inquiry as to whether the command hierarchy of the Lotus 1-2-3 user interface is a constituent part of a Lotus menu or command system or is otherwise an unprotectable element of the program under a successive filtering analysis. If the command hierarchy is part of a system, the court should go on to inquire whether there is any expressiveness in the command hierarchy over and above the role of the commands and their arrangement as constituent elements of the system. Unless the court can identify such expressive elements, the command hierarchy should be regarded as beyond the scope of copyright protection the law affords to the Lotus program. There are some statements in the Paperback opinion suggesting that the arrangement of commands in the Lotus interface was a part of a system. One statement in particular from that opinion suggests that it may have been a constituent part of the Lotus command system. The opinion describes how the Lotus commands (and some other interface features, such as the function keys) could be combined to form "macros" constituting sequences of functions that a user might wish to perform so that the user would not have to repeat the fill sequence but only direct execution of the macro. Following this description, the court states: "Because macros may contain many menu choices, the exact hierarchy-or structure, sequence, and organization--of the menu system is a fundamental part of the functionality of the macros." 740 F. Supp. at 65 (emphasis added). The court should reflect further on this statement as part of its inquiry in the Borland case to determine whether, under section 102(b) and caselaw it reflects, the aspect of the Lotus program sought to be protected in the litigation with Borland is a constituent part of a system which would put it beyond the scope of copyright protection. Only if and to the extent a defendant has copied expressive aspects of a user interface beyond those that are constituent parts of a system can copyright infringement potentially be found (See footnote 4). Because elements of user interfaces may well be constituent elements of a system or method, we believe that courts should be very careful in cases involving user interface similarities, to make sure that there is something truly "expressive" in a copyright sense about the aspects of the interface at issue in the case. Additionally, the court should find infringement only if the defendant's work is substantially similar to the plaintiff s work as to protected expressive elements which the defendant copied from the plaintiff. See, e.g., P. Goldstein, Copyright Law sec. 7.1 (1989). Even when some aspects of a user interface are expressive enough to be protected against copying, the same may not be true for all aspects of the interface. Traditional copyright standards should be used to determine if a particular aspect that has been copied is expressive. Although the fact that words or symbols can be arranged differently may be relevant to an inquiry as to whether that aspect of a work is "expressive," this factor alone will not suffice to establish the kind of expressiveness required for copyright protection, as the blank form cases rightly hold. See, e.g., Bibbero Systems, Inc. v. Colwell Systems, Inc., 893 F.2d 1104 (9th Cir. 1990). Thus, the fact that a set of commands can be arranged differently does not, of itself, establish that any particular arrangement is "expressive" in a copyright sense. Arranging commands in the order of the frequency with which they will be invoked is an example of an arrangement of commands that would be for functional, rather dm expressive purposes. We therefore believe that care must be taken in computer program user interface cases, just as in the blank form cases, to identify precisely what, if anything, is expressive about a particular arrangement and whether that arrangement is distinguishable from an underlying system of which it may be a part. The blank form cases also indicate that expressiveness is not to be found when words on a form merely communicate to a user the type of information to be filled in. Thus, the fact that command terms "communicate" the choices of functions available in the program does not mean that they are "expressive" for copyright purposes. III. Some Reflections on the Policies Underlying Copyright Law Copyright law is not, and was never meant to be, a general misappropriation statute for all products of the human intellect. Copyright excludes many functional works, such as machines and useful articles, from its domain. Even when described or otherwise embodied in a properly copyrighted work, functional elements of the work-whether they exist at a highly abstract or highly detailed level--are still not protectable by copyright law. Section 102(b) codifies this rule in its exclusion of such things as processes, procedures, systems, and methods of operation from the scope of protection available to protected works from copyright law. The very fact that ideas are so valuable explains why copyright law, with its low standards for obtaining protection, will not protect them and remits them to patent law with its more rigorous standards, or as in the case of the most fundamental ideas, such as concepts, principles, and discoveries, to the public domain. As Professor Goldstein has observed: Functional works [such as architectural plans, legal forms, and computer programs] depend for their value primarily on the ingenuity, accuracy, and efficiency--the utility-of their underlying system, concept or method. As a result, enforcement of copyright in these works inevitably threatens the fundamental precept that copyright protection shall not extend to any "idea, procedure, process, system, method of operation, concept, principle, or discovery." Copyright in functional works is in this respect like copyright in fact works, which poses the similar danger of monopolizing elements that should be available for free use by all. The important difference is that in protecting works that are essentially functional in nature, copyright may contradict the principle that protection for these utilitarian elements is better left to the more exacting standards of patent and trade secret law. P. Goldstein, Copyright Law sec. 8.5 at 116-117 (1989). The Paperback opinion, in our view, is insufficiently attentive to the functional nature of computer programs and some user interface components, as well as to the implications of this functionality for the scope of copyright protection available t o such works. The opinion further reflects a distressing inclination to justify copyright protection of the Lotus user interface based on such factors as the creativity of concepts in the Lotus interface, the value of the interface, and concerns about whether there would be sufficient incentives to invest in creation of such works if copyright protection did not extend to all valuable aspects of the interface. We realize that the court did not have the benefit of the Supreme Court's opinion in Feist Publications, Inc. v. Rural Telephone Service, Inc., -U.S.-, I I I S.Ct. 1282 (1991) when it issued the Paperback opinion, but in the aftermath of this decision, it is clear that labor and investment alone do not signify the presence of copyrightable expression. It is well to remember that copyright law is part of a larger intellectual property system Congress has created to provide intellectual property protection to certain kinds of creative works to provide incentives to invest in their creation and dissemination. All intellectual property laws aim to balance the interests of innovators, competitors, and consumers. Their principal purpose is not to provide maximum rewards to innovators, but to promote the public interest through the careful balancing process each intellectual property law reflects. Stretching copyright law beyond the bounds Congress intended for it to have creates the potential for upsetting the balance of interests reflected in Congress' larger scheme for granting intellectual property rights. This, in turn, can hinder innovation by overprotecting through copyright something that either should be left to free copying or to the rigors of other forms of intellectual property rights. FOOTNOTES: Footnote 1: So basic to copyright law is section 102(b)'s exclusion from protection of a number of potentially valuable elements of copyrighted works that the courts have construed it as though it created a penumbra of unprotectable elements. Thus, while such things as facts and fictions are not expressly listed in section 102(b), it is clear from the copyright caselaw that these aspects of copyrighted works too are beyond the scope of protection available from this law. See, e.g., Feist Publications, Inc. v. Rural Telephone Service, Inc., - U.S. -, I I I S.Ct. 1282 (199 1) (facts regarded as "discoveries" under section 102(b)) and P. Goldstein, Copyright Law sec. 8.5 (1989) (the unprotectability of functions said to be reflected in section 102(b)'s exclusion of processes, procedures, systems, and methods of operation). Footnote 2: It is also worth observing that the Final Report of the National Commission on New Technological Uses of Copyrighted Works (1978) ("CONTU Final Report") also makes reference to section 102(b), Baker v. Selden, and such cases as Continental Casualty Co. v. Beardsley, 253 F.2d 702 (2d Cir. 1958) as among the sources of guidance the Commission expected courts to utilize in judging copyright infringement claims involving computer programs. See CONTU Final Report at 18-22. Footnote 3: The Court pointed out that in most instances, useful arts were embodied in wood, metal, or stone, and what had given plausibility to Selden's claim was that his useful art was embodied in a writing. Nevertheless, the Court stated "the principle is the same in all. The description of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art itself." 101 U.S. at 105. Footnote 4: A defendant must not only have copied something from the plaintiff s work, but the defendant's work must also be substantially similar as to protected elements of expression of the plaintiff's work. In addition, other defenses, such as fair use or estoppel, may be available to the defendant in an appropriate case.