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Berkeley Technology Law Journal Volume 10 Issue 1 Article 1 January 1995 Convergence in the Law of Software Copyright Mark A. Lemley Follow this and additional works at:
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Berkeley Technology Law Journal Volume 10 Issue 1 Article 1 January 1995 Convergence in the Law of Software Copyright Mark A. Lemley Follow this and additional works at: Recommended Citation Mark A. Lemley, Convergence in the Law of Software Copyright, 10 Berkeley Tech. L.J. 1 (1995). Available at: Link to publisher version (DOI) This Article is brought to you for free and open access by the Law Journals and Related Materials at Berkeley Law Scholarship Repository. It has been accepted for inclusion in Berkeley Technology Law Journal by an authorized administrator of Berkeley Law Scholarship Repository. For more information, please contact ARTICLE CONVERGENCE IN THE LA W OF SOFTWARE COPYRIGHT? MARK A. LEMLEY t Table of Contents I. IN TRO D U CTIO N... 1 II. THE HISTORY OF SOFTWARE PROTECTION... 3 A. Establishing Copyright Protection for Software... 4 B. The Problem of Non-Literal Infringement... 6 III. CONVERGENCE: MODERN TRENDS IN SOFTWARE C O PYRIG H T A. Altai and the Filtration Bandwagon B. Difficulties in Applying Altai IV. BEYOND THE PROTECTION DEBATE-PROPOSALS A. The Abstract Nature of Abstraction B. Filtration and the Role of Software Patents C. Comparison: Sliding Scales and Virtual Identity D. Justifications for Copying V. CON CLU SIO N S V I. A PPEN D IX I. INTRODUCTION Courts and commentators have spilled a great deal of ink-and paid an enormous amount in legal fees-over the last 15 years in an effort to determine the appropriate scope of copyright protection for computer software.' To a large extent, this debate has focused on how software 1995 Mark A. Lemley. t Assistant Professor, University of Texas School of Law. I would like to thank Rose Hagan for her advice, and Lisa Launer at HTLJ for her useful suggestions. 1. Numerous articles have tackled these issues. Among them are: David Bender, Computer Associates v. Altai: Rationality Prevails, COMPUTER LAW., Aug. 1992, at 1; Jack E. Brown, Analytical Dissection of Copyrighted Computer Software-Complicating the Simple and Confounding the Complex, 25 ARIz. ST. L.J. 801 (1993); Anthony L. Clapes & Jennifer M. Daniels, Revenge of the Luddites: A Closer Look at Computer Associates v. Altai, COMPUTER LAW., Nov. 1992, at 11; Douglas Derwin, It is Time to Put Look and Feel out to Pasture, 15 HASTINGS COMM. & ENT. L.J. 605 (1993); Audrey F. Dickey, Computer Associates v. Altai and Apple v. Microsoft: Two Steps Back from Whelan?, 8 SANTA CLARA COMPUTER & HIGH 2 HIGH TECHNOLOGY LAW JOURNAL Vol. 10:1 copying should be tested. On one side, broad constructionists have emphasized the need to compare the copyrighted and accused works as a whole, in order to give protection to the total concept and feel of the works. On the other side, narrow constructionists have urged the methodical dissection of copyrighted works into their component parts in order to determine what exactly qualifies for copyright protection. For all intents and purposes, this aspect of the debate is over. In the last three years, virtually all the courts to consider this issue have lined up with the narrow constructionists, engaging in analytic dissection of computer programs in order to determine whether any copyrightable expression has actually been copied. 2 Most commonly, this analytic dissection has taken the form of the abstraction-filtration-comparison test set forth in Computer Associates v. Altai. 3 While there are still a few courts in which the total concept and feel approach remains the law, TECH. L.J. 379 (1993); Donald F. McGahn, Copyright Infringement of Protected Computer Software: An Analytical Method to Determine Substantial Similarity, 21 RUTGERS COMPUTER & TECH. L.J. 88 (1995); Peter S. Menell, An Analysis of the Scope of Copyright Protection for Application Programs, 41 STAN. L. REV. 1045, 1074, 1082 (1989); Arthur R. Miller, Copyright Protection for Computer Programs, Databases, and Computer-Generated Works: Is Anything New Since CONTU?, 106 HARV. L. REV. 977, (1993); J.H. Reichman, Electronic Information Tools: The Outer Edge of World Intellectual Property Law, 17 U. DAYTON L. REV. 797 (1992); Jack Russo & Jamie Nafziger, Software Look and Feel Protection in the 1990s, 15 HASTINGS COMM. & ENT. L.J. 571 (1993); Symposium, Has Look and Feel Crashed?, 11 CARDOZO ARTS & ENT. L.J. 721 (1993); Julian Velasco, The Copyrightability of Nonliteral Elements of Computer Programs, 94 COLUM. L. REV. 242 (1994); Aram Dobalian, Comment, Copyright Protection for the Non-Literal Elements of Computer Programs: The Need for Compulsory Licensing, 15 WHITTIER L. REV (1994); Stephen H. Eland, Note, The Abstraction-Filtration Test: Determining Non-Literal Copyright Protection for Software, 39 VILL L. REV. 665 (1994); Steven R. Englund, Note, Idea, Process, or Protected Expression?: Determining the Scope of Copyright Protection of the Structure of Computer Programs, 88 MICH. L. REV. 866, 881 (1990); Thomas M. Gage, Note, Whelan Associates v. Jaslow Dental Laboratories: Copyright Protection for Computer Software Structure-What's the Purpose?, 1987 Wisc. L. REV. 859, ; W. H. Baird Garrett, Note, Toward a Restrictive View of Copyright Protection for Nonliteral Elements of Computer Programs: Recent Developments in the Federal Courts, 79 VA. L. REV (1993); Mark T. Kretschmer, Note, Copyright Protection for Software Architecture: Just Say No!, 3 COLUM. Bus. L. REV. 823, (1988); David A. Lowe, Comment, A Square Peg in a Round Hole: The Proper Substantial Similarity Test for Nonliteral Aspects of Computer Programs, 68 WASH. L. REV. 351 (1993); Adam E. McKinney, Note, Copyright Protection for Functional Works: Where Does the Fifth Circuit Draw the Line Between Idea and Expression?, 47 BAYLOR L. REV. 249 (1995); Peter G. Spivack, Comment, Does Form Follow Function? The Idea/Expression Dichotomy in Copyright Protection of Computer Software, 35 UCLA L. REV. 723, (1988); Jon S. Wilkins, Note, Protecting Computer Programs as Compilations Under Computer Associates v. Altai, 104 YALE L.J. 435 (1994). 2. See discussion infra section III.A F.2d 693 (2d Cir. 1992). For convenience, I will periodically refer to this as the filtration or dissection approach. 1995 CONVERGENCE IN THE LAW OF SOFTWARE COPYRIGHT the approach is moribund: since Altai was decided, no court has endorsed the broader total concept and feel approach. 4 This does not mean that we can all go home, however. Rather than ending, the debate over software copyright law appears to be shifting its focus. Having finally resolved the debate that has been plaguing software copyright law since its inception, courts are discovering to their chagrin, that deciding what test to apply actually tells you very little about how to apply that test. Despite the convergence of courts on Altai's filtration approach, courts remain fundamentally conflicted in deciding how broadly to protect software copyright.' Further, there remains a good deal of misunderstanding about what exactly it means to abstract and filter a computer program. Part II of this Article traces the history of legal protection for computer software, beginning with trade secret protection. It discusses the relatively quick development of a rule that literal copying of computer programs is prohibited, and the more intractable problem of non-literal infringement. Part III chronicles the convergence of courts and commentators on the filtration test. It then focuses on court decisions since Altai which have attempted to apply this test, and concludes that there is still substantial disagreement among the courts as to how that test should work in practice. Finally, Part IV suggests a unified approach to evaluating non-literal infringement in software copyright cases. This approach focuses on exactly what is alleged to have been copied. It also acknowledges the increasing role of patent law in protecting computer software, and the role of other copyright concerns such as compatibility and fair use. The result of this unified approach is to provide relatively narrow copyright protection for computer programs in most cases of nonliteral infringement. In this part, I examine some of the implications of this unified approach by looking at its effect on recent cases such as Lotus v. Borland 6 and Apple v. Microsoft. 7 II. THE HISTORY OF SOFTWARE PROTECTION As is common in intellectual property law, technological development in the computer industry has outrun the pace of legal change. In the 1960s and early 1970s, federal intellectual property law did not protect computer software. As a result, software vendors attempted to protect their programs in two ways-through trade secrets laws and by 4. Indeed, the one court which has rejected Altai's filtration approach did so because it thought the protection afforded by Altai was too broad, rather than too narrow. See Lotus Dev. Corp. v. Borland Int'l, 49 F.3d 807, 815 (1st Cir. 1995). 5. See discussion infra section III.B F.3d at F.3d 1435 (9th Cir. 1994). 4 HIGH TECHNOLOGY LAW JOURNAL VOL contract. But the vendors faced a problem: if they were selling multiple copies of a program to whomever wanted them, how could the program be a secret? The answer was that, while the program might be widely distributed, in fact all that was sold was a disk containing object code. Object code is virtually impossible for humans to read without machine assistance. 8 Because of this, some courts held quite early in the history of computer software protection that widely distributed programs could in fact retain their trade secret status. 9 This was the purpose of the proprietary rights contract. 10 Software vendors needed proof that they were not in fact disclosing their trade secrets by selling copies to whoever wanted them. To provide such proof, they created the legal fiction that they were really licensing rather than selling their software. Because the license contained provisions that required customers to keep the software confidential, many courts held that the trade secrets contained therein could be protected. As we shall see, however, the shortcomings of trade secret protection led software vendors to seek alternate avenues to protect their works. A. Establishing Copyright Protection for Software Copyright law was originally established to prevent the unauthorized printing of books. 12 To a large extent, the scheme of copyright protection still shows its literary roots. Copyright law was designed in order to protect physical works of creative authorship which could be used without being copied. The law's assumption that the objects of copyright protection are physical has colored the application of copyright law to computer software cases. Courts repeatedly look-often 8. To be sure, it is possible to reverse engineer object code in some cases to create a kind of rough estimate of what must have been in the original source code. The process, however, is demanding and time-consuming even for expert programmers. See, e.g., Andrew Johnson-Laird, Reverse Engineering of Software: Separating Legal Mythology from Actual Technology, 5 SOFTWARE L.J. 331 (1992). 9. Data General Corp. v. Digital Computer Controls, Inc., 297 A.2d 433, 436 (Del. Ch. 1971) (program with 500 copies sold still qualifies as a trade secret), affd, 297 A.2d 437 (Del. 1972). Courts continue to reach this result. Data General Corp. v. Grumman Systems Support Corp., 825 F. Supp. 340, (D. Mass. 1993); Management Science of Am. v. Cyborg Systems, Inc., TRADE CAS (N.D. Ill. 1977). 10. Most software contracts at this time contained proprietary rights provisions which asserted that the information contained in the accompanying computer software was proprietary to the vendor, and could not be copied or disclosed without the vendor's permission. 11. On the shortcomings of trade secret protection, see discussion infra note See ROBERT MERGES, PETER MENELL, MARK LEMLEY, & THOMAS JORDE, INTELLECTUAL PROPERTY IN THE NEW TECHNOLOGICAL AGE ch. IV, at 1-3 (discussing historical development of copyright law). 1995 CONVERGENCE IN THE LAW OF SOFTWARE COPYRIGHT in vain-to the familiar physical world of copyright to find analogies to apply in the world of computer software. The fundamental principle of copyright law is that unauthorized copying is not permitted. 13 Copying violative of the statute includes not only the literal taking of the words or expression of another, but also what is called non-literal infringement -the taking of the essence of the author's expression without using the author's actual words. Were copyright protection limited to literal infringement, as Judge Hand has noted, a plagiarist could escape by immaterial variations. 4 Indeed, protection for copyrighted works extends beyond even the language or particular creative expression used, to encompass the structure, sequence and organization of a work, and its total concept and feel. 1 6 Furthermore, when copying cannot be proven by direct evidence, it may be inferred from proof of the infringer's access to the copyrighted work plus proof of substantial similarity between the two works. 17 Not all copying rises to the level of copyright infringement, however. There are several important limits on the rights of copyright owners to protect their works. First, and most important, a copyright plaintiff must prove that the defendant has copied protectable expression. 8 In particular, a copyright owner may not lay claim to the ideas within her work, but only to her particular means of expressing those ideas. 19 Further, copyright protection does not extend to any part of the work that consists of unprotectable facts, 2 stock literary or artistic themes, 21 or expression that is not sufficiently creative or original with the copyright owner to qualify for protection.' 2 Finally, copying of protectable expression is only actionable if the copying is substantial. 23 In the computer software context, each of these basic elements of copyright law has had to be painstakingly reestablished. Even after the passage of the 1976 Copyright Act, it was not obvious to the courts that 13. See 17 U.S.C. 106(1) (1995). 14. Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930). 15. See Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, (9th Cir. 1977). 16. Id. at Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir. 1988). 18. See National Comics Pubs. v. Fawcett Pubs., 191 F.2d 594, 600 (2d Cir. 1951) ( [N]o one infringes, unless he descends so far into what is concrete as to invade... [its] expression. ). 19. See Baker v. Selden, 101 U.S. 99 (1879). Section 102(b) of the Copyright Act provides that [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 discovery. 17 U.S.C. 102(b) (1995). 20. Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d Cir. 1980). 21. Nichols v. Universal Pictures Crop., 45 F.2d 119, 121 (2d Cir. 1930). 22. Feist Publication v. Rural Telephone Service, 111 S. Ct (1991). 23. See Jarvis v. A & M Records, 827 F. Supp. 282, 288 (D.N.J. 1993). 6 HIGH TECHNOLOGY LAW JOURNAL VOL. 10:11 the copyright laws protected computer programs at all. 24 The Congressional Commission on New Technological Uses of Copyrighted Works (CONTU) recommended that the copyright statute be amended to provide protection for computer programs. CONTU's recommendations were adopted essentially verbatim by Congress in 1980.' Even after the 1980 amendments, establishing copyright protection for the literal text of computer programs was a protracted process. Courts separately considered and affirmed the copyrightability of source code, 26 object code, 27 microcode or firmware, 28 applications programs, 29 and operating systems. 3 A similar debate occurred over the literal copyrightability of program outputs, such as video game displays. 3 In each case, courts found the literal elements of computer programs copyrightable only over vigorous opposition. Nonetheless, by the mid- 1980s it had been firmly established that computer programs were literary works that could not be literally copied, and that program outputs were audiovisual works that could not be literally copied. Courts then turned to the thornier question of non-literal infringement. B. The Problem of Non-Literal Infringement The difficulty with non-literal copyright infringement is that when only concepts and not actual language have been copied, courts are put to the test of distinguishing idea from expression. This is not a problem that arises only in the computer context. Indeed, Judge Learned Hand commented early and often on the arbitrariness of any such determination. 32 Two factors make the idea-expression dichotomy particularly difficult to apply in computer cases, however. First, 24. See, e.g., Apple Computer v. Franklin Computer, 545 F. Supp. 812 (E.D. Pa. 1982), rev'd, 714 F.2d 1240 (3d Cir. 1983). 25. See, e.g., H.R. Rep. No. 1307,96th Cong., 2d Sess. 23 (1980) U.S.C.A.A.N. 6460, The 1980 amendments changed the Copyright Act by adding a definition of computer program to section 101, and by adding section 117, which grants certain rights to the users of computer programs. CONTU did not, however, add computer programs to the list of protectable works, instead considering them to be both literary and audiovisual works. 26. Williams Electronics v. Artic Int'l, 685 F.2d 870, (3d Cir. 1982). 27. Franklin Computer, 714 F.2d at NEC Corp. v. Intel Corp., 10 U.S.P.Q.2d 1177, (N.D. Cal. 1989). 29. Williams Electronics, 685 F.2d at Franklin Computer, 714 F.2d at Stern Electronics v. Kaufman, 669 F.2d 852, 857 (2d Cir. 1982); see also Manufacturers Technologies, Inc. v. Cams, Inc., 706 F. Supp. 984, (D. Conn. 1989). 32. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) ( 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. ); see also Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930) (discussing levels of abstraction at which copyrightability may be tested). 1995 CONVERGENCE IN THE LAW OF SOFTWARE COPYRIGHT computer programs are written for a utilitarian purpose. 3 3 Expression in the code or structure and organization of a program is normally only incidental to that purpose. Courts must therefore identify and protect that incidental material, while leaving the functional aspects of the program free for all to duplicate. Second, computer programs are technically complex and inaccessible to the lay person, a category which includes most federal judges. Judges are therefore forced to rely on second-hand knowledge and testimony about the programming process to a far greater extent than in other literary cases. These problems have driven a number of courts to search for rules to help them evaluate non-literal infringement in software cases. Two such rules grew to prominence early in the history of computer copyright cases. First, some courts solved the problem of non-literal infringement by refusing to protect computer programs against non-literal infringement at all. The clearest example of this approach was Judge Higginbotham's decision in Synercom Technology v. University Computing Co.' In that case, Synercom had designed a series of input formats which would accept data from users in conjunction with a program which analyzed engineering problems with the design of buildings. EDI, the defendant, wrote a program in a different language which accepted information in the same formats as Synercom's program. The court held that the sequencing and ordering of data inputs constituted the idea of Synercom's program, rather than its expression, and therefore found no infringement in the copying of those sequences. 3 Judge Higginbotham explained that [hlere... the
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