
USCA1 Opinion

	




          April 19, 1995                            United States Court of Appeals                            United States Court of Appeals                                For the First Circuit                                For the First Circuit                                 ____________________        No. 93-2214                            LOTUS DEVELOPMENT CORPORATION,                                 Plaintiff, Appellee,                                          v.                             BORLAND INTERNATIONAL, INC.,                                Defendant, Appellant.                                 ____________________                                     ERRATA SHEET                                     ERRATA SHEET            The opinion of this  court issued on March  9, 1995, is amended as        follows:            On page 38,  line 16:   Change "See  id. at 562."  to "See id.  at                                            ________               _______        562.  But  see Campbell v.  Acuff-Rose Music, Inc.,  114 S. Ct.  1164,              ________ ________     ______________________        1174 (1994)."                            United States Court of Appeals                            United States Court of Appeals                                For the First Circuit                                For the First Circuit                                 ____________________        No. 93-2214                            LOTUS DEVELOPMENT CORPORATION,                                 Plaintiff, Appellee,                                          v.                             BORLAND INTERNATIONAL, INC.,                                Defendant, Appellant.                                 ____________________                     APPEAL FROM THE UNITED STATES DISTRICT COURT                          FOR THE DISTRICT OF MASSACHUSETTS                     [Hon. Robert E. Keeton, U.S. District Judge]                                             ___________________                                 ____________________                                        Before                                Torruella, Chief Judge,                                           ___________                          Boudin and Stahl, Circuit Judges.                                            ______________                                 ____________________            Gary  L.  Reback,  with whom  Peter  N.  Detkin, Michael  Barclay,            ________________              _________________  ________________        Isabella  E. Fu, Wilson Sonsini  Goodrich & Rosati,  Peter E. Gelhaar,        _______________  _________________________________   ________________        Katherine  L. Parks, and Donnelly Conroy  & Gelhaar, were on brief for        ___________________      __________________________        appellant.            Matthew P. Poppel, et. al, were  on brief for Computer Scientists,            _________________        amicus curiae.            Dennis S. Karjala and Peter S. Menell on brief, amici curiae.            _________________     _______________            Jeffrey  C. Cannon and Baker  Keaton Seibel & Cannon were on brief            __________________     _____________________________        for Computer Software Industry Association, amicus curiae.            Laureen E.  McGurk, David A. Rabin,  Bryan G.  Harrison and Morris            __________________  ______________   __________________     ______        Manning  & Martin were on  brief for Chicago  Computer Society, Diablo        _________________        Users  Group,  Danbury  Area Computer  Society,  IBM  AB Users  Group,        Kentucky-Indiana Personal  Computer Users Group, Long  Island PC Users        Group, Napa Valley PC  Users Group, Pacific Northwest PC  Users Group,        Palmetto Personal Computer  Club, Philadelphia Area  Computer Society,        Inc., Phoenix  IBM PC Users Group,  Pinellas IBM PC Users  Group, Quad        Cities Computer Society, Quattro Pro Users Group, Sacramento  PC Users        Group, San Francisco  PC Users  Group, Santa Barbara  PC Users  Group,        Twin Cities  PC  Users Group,  and  Warner Robbins  Personal  Computer        Association, amici curiae.            Diane  Marie O'Malley  and Hanson  Bridgett  Marcus Vlahos  & Rudy            _____________________      _______________________________________        were on brief for Software Entrepreneurs' Forum, amicus curiae.            Peter  M.C.  Choy  was   on  brief  for   American  Committee  for            _________________        Interoperable Systems, amicus curiae.            Howard B. Abrams, Howard C. Anawalt,  Stephen R. Barnett, Ralph S.            ________________  _________________   __________________  ________        Brown, Stephen L. Carter, Amy B. Cohen, Paul J. Heald, Peter A. Jaszi,        _____  _________________  ____________  _____________  ______________        John  A. Kidwell, Edmund W.  Kitch, Roberta R.  Kwall, David L. Lange,        ________________  ________________  _________________  ______________        Marshall  Leaffer,  Jessica  D. Litman,  Charles  R.  McManis,  L. Ray        _________________   __________________   ____________________   ______        Patterson, Jerome H. Reichman, David A.  Rice, Pamela Samuelson, David        _________  __________________  ______________  ________________  _____        J. Seipp,  David E. Shipley, Lionel S. Sobel, Alfred C. Yen, and Diane        ________   ________________  _______________  _____________      _____        L.  Zimmerman  were on  brief  for  Copyright Law  Professors,  amicus        _____________        curiae.            Henry  B. Gutman, with  whom Kerry  L. Konrad,  Joshua H. Epstein,            ________________             ________________   _________________        Kimberly A. Caldwell, O'Sullivan Graev & Karabell, Thomas  M. Lemberg,        ____________________  ___________________________  __________________        James C. Burling, and Hale and Dorr, were on brief for appellee.        ________________      _____________            Morton David  Goldberg, June M. Besek,  David O.  Carson, Jesse M.            ______________________  _____________   ________________  ________        Feder,  Schwab Goldberg Price  & Dannay, and Arthur  R. Miller were on        _____   _______________________________      _________________        brief  for  Apple  Computer,  Inc.,   Digital  Equipment  Corporation,        International  Business Machines  Corporation, and  Xerox Corporation,        amici curiae.            Jon A. Baumgarten, Proskauer  Rose Goetz &  Mendelsohn, and Robert            _________________  ___________________________________      ______        A. Gorman were on brief for Adobe Systems, Inc., Apple Computer, Inc.,        _________        Computer   Associates   International,    Inc.,   Digital    Equipment        Corporation,  and International  Business Machines  Corporation, amici        curiae.            Herbert  F. Schwartz, Vincent  N. Palladino, Susan Progoff, Fish &            ____________________  _____________________  _____________  ______        Neave, William J. Cheeseman, and Foley Hoag & Eliot, were on brief for        _____  ____________________      __________________        Computer  and  Business  Equipment Manufacturers  Association,  amicus        curiae.                                _____________________                                    March 9, 1995                                _____________________                      STAHL, Circuit  Judge.  This appeal  requires us to                      STAHL, Circuit  Judge.                             ______________            decide   whether  a  computer   menu  command   hierarchy  is            copyrightable subject matter.   In particular, we must decide            whether, as the district court held, plaintiff-appellee Lotus            Development   Corporation's  copyright  in   Lotus  1-2-3,  a            computer  spreadsheet program,  was  infringed by  defendant-            appellant  Borland International,  Inc., when  Borland copied            the Lotus 1-2-3 menu command  hierarchy into its Quattro  and            Quattro Pro  computer spreadsheet  programs.  See  Lotus Dev.                                                          ___  __________            Corp. v. Borland Int'l, Inc., 788 F. Supp. 78 (D. Mass. 1992)            _____    ___________________            ("Borland I"); Lotus  Dev. Corp. v. Borland Int'l,  Inc., 799              _________    _________________    ____________________            F. Supp. 203 (D. Mass. 1992) ("Borland II"); Lotus Dev. Corp.                                           __________    ________________            v.  Borland Int'l,  Inc., 831  F. Supp.  202 (D.  Mass. 1993)                ____________________            ("Borland III"); Lotus Dev. Corp. v. Borland Int'l, Inc., 831              ___________    ________________    ___________________            F. Supp. 223 (D. Mass. 1993) ("Borland IV").                                           __________                                          I.                                          I.                                          __                                      Background                                      Background                                      __________                      Lotus 1-2-3 is  a spreadsheet program  that enables            users  to perform  accounting functions  electronically  on a            computer.   Users manipulate  and control the  program via  a            series of menu commands, such as "Copy," "Print," and "Quit."            Users  choose commands  either  by highlighting  them on  the            screen or by typing their first letter.  In  all, Lotus 1-2-3                                         -3-                                          3            has  469  commands  arranged  into  more than  50  menus  and            submenus.                      Lotus  1-2-3, like  many computer  programs, allows            users to write what are called "macros."  By writing a macro,            a  user  can designate  a series  of  command choices  with a            single  macro keystroke.    Then, to  execute that  series of            commands in  multiple parts  of the spreadsheet,  rather than            typing the whole  series each  time, the user  only needs  to            type  the single pre-programmed  macro keystroke, causing the            program  to  recall  and  perform the  designated  series  of            commands automatically.  Thus, Lotus 1-2-3 macros shorten the            time needed to set up and operate the program.                      Borland released  its first Quattro program  to the            public in  1987, after  Borland's engineers had  labored over            its development for nearly  three years.  Borland's objective            was to develop a spreadsheet program far superior to existing            programs, including Lotus 1-2-3.  In Borland's words, "[f]rom            the  time of  its  initial release  .  . .  Quattro  included            enormous innovations over competing spreadsheet products."                      The district court found,  and Borland does not now            contest, that Borland included in its Quattro and Quattro Pro            version  1.0  programs "a  virtually  identical  copy of  the                                       ____________________            entire 1-2-3  menu tree."   Borland III, 831 F.  Supp. at 212                                        ___________            (emphasis  in original).  In  so doing, Borland  did not copy            any  of Lotus's underlying computer  code; it copied only the                                         -4-                                          4            words  and  structure  of  Lotus's  menu  command  hierarchy.            Borland  included the  Lotus  menu command  hierarchy in  its            programs to  make them  compatible with  Lotus 1-2-3  so that            spreadsheet users who were  already familiar with Lotus 1-2-3            would  be able  to  switch to  the  Borland programs  without            having to learn new commands or rewrite their Lotus macros.                      In  its   Quattro  and  Quattro  Pro   version  1.0            programs, Borland achieved compatibility with  Lotus 1-2-3 by            offering its  users an  alternate user interface,  the "Lotus            Emulation Interface."  By activating the Emulation Interface,            Borland  users would  see the  Lotus  menu commands  on their            screens  and could interact with Quattro or Quattro Pro as if            using Lotus  1-2-3, albeit with a  slightly different looking            screen and with  many Borland options not  available on Lotus            1-2-3.  In effect,  Borland allowed users to choose  how they            wanted  to communicate  with Borland's  spreadsheet programs:            either by  using  menu commands  designed by  Borland, or  by            using the  commands and command structure used in Lotus 1-2-3            augmented by Borland-added commands.                      Lotus  filed this  action  against  Borland in  the            District  of Massachusetts on July 2, 1990, four days after a            district  court held  that the  Lotus 1-2-3  "menu structure,            taken as a  whole --  including the choice  of command  terms            [and] the structure and order of those terms,"  was protected            expression covered  by Lotus's copyrights.   Lotus Dev. Corp.                                                         ________________                                         -5-                                          5            v.  Paperback Software  Int'l, 740  F. Supp.  37, 68,  70 (D.                _________________________            Mass.  1990)  ("Paperback").1   Three  days  earlier, on  the                            _________            morning  after the  Paperback decision,  Borland had  filed a                                _________            declaratory judgment  action against  Lotus  in the  Northern            District  of   California,  seeking  a  declaration  of  non-            infringement.   On September 10, 1990,  the district court in            California dismissed Borland's declaratory judgment action in            favor of this action.                      Lotus  and Borland filed  cross motions for summary            judgment; the district court denied both motions on March 20,            1992, concluding that "neither party's motion is supported by            the record."   Borland I, 788  F. Supp. at 80.   The district                           _________            court invited  the parties  to file renewed  summary judgment            motions that would "focus  their arguments more precisely" in            light of rulings it  had made in conjunction with  its denial            of their summary  judgment motions.  Id. at 82.  Both parties                                                 ___            filed renewed motions for summary judgment on April 24, 1992.            In its motion, Borland  contended that the Lotus 1-2-3  menus            were  not  copyrightable  as a  matter  of  law  and that  no            reasonable  trier  of fact  could  find  that the  similarity            between  its  products  and  Lotus 1-2-3  was  sufficient  to            sustain a determination of  infringement.  Lotus contended in                                            ____________________            1.  Judge Keeton presided over both the Paperback  litigation                                                    _________            and this case.                                         -6-                                          6            its motion that Borland had copied  Lotus 1-2-3's entire user            interface and had thereby infringed Lotus's copyrights.                      On  July  31,  1992,  the  district  court   denied            Borland's  motion and  granted Lotus's motion  in part.   The            district court  ruled that  the Lotus menu  command hierarchy            was copyrightable expression because                      [a]  very  satisfactory spreadsheet  menu                      tree can be  constructed using  different                      commands   and    a   different   command                      structure from  those of Lotus 1-2-3.  In                      fact, Borland has  constructed just  such                      an  alternate  tree  for  use  in Quattro                      Pro's native mode.  Even if one holds the                      arrangement of menu commands constant, it                      is   possible   to   generate   literally                      millions  of  satisfactory menu  trees by                      varying the menu commands employed.              Borland  II, 799  F.  Supp.  at  217.    The  district  court            ___________            demonstrated this by offering alternate command words for the            ten  commands that  appear in Lotus's  main menu.   Id.   For                                                                ___            example, the district court stated that "[t]he `Quit' command            could be  named `Exit' without any  other modifications," and            that "[t]he `Copy' command  could be called `Clone,' `Ditto,'            `Duplicate,'    `Imitate,'    `Mimic,'    `Replicate,'    and            `Reproduce,'  among others."  Id.  Because so many variations                                          ___            were possible,  the district  court concluded that  the Lotus            developers'   choice  and   arrangement  of   command  terms,            reflected  in the Lotus  menu command  hierarchy, constituted            copyrightable expression.                                         -7-                                          7                      In granting partial summary judgment  to Lotus, the            district  court  held  that  Borland  had  infringed  Lotus's            copyright in Lotus 1-2-3:                      [A]s a matter  of law, Borland's  Quattro                      products   infringe   the   Lotus   1-2-3                      copyright  because of  (1) the  extent of                      copying  of the "menu commands" and "menu                      structure" that is not genuinely disputed                                             _________                      in this case, (2) the extent to which the                      copied  elements  of the  "menu commands"                      and  "menu structure"  contain expressive                      aspects separable from  the functions  of                      the "menu commands" and "menu structure,"                      and  (3)   the  scope  of   those  copied                      expressive aspects as an integral part of                      Lotus 1-2-3.            Borland II, 799 F. Supp. at  223 (emphasis in original).  The            __________            court  nevertheless concluded  that  while  the  Quattro  and            Quattro Pro programs infringed Lotus's copyright, Borland had            not copied  the entire Lotus  1-2-3 user interface,  as Lotus            had contended.  Accordingly, the court concluded that  a jury            trial  was  necessary to  determine  the  scope of  Borland's            infringement,  including  whether  Borland  copied  the  long            prompts2 of  Lotus 1-2-3, whether the  long prompts contained                                            ____________________            2.  Lotus 1-2-3 utilizes a two-line menu;  the top line lists            the commands from which  the user may choose, and  the bottom            line  displays what Lotus calls its "long prompts."  The long            prompts  explain,  as   a  sort  of  "help  text,"  what  the            highlighted menu  command will do  if entered.   For example,            the  long prompt  for  the "Worksheet"  command displays  the            submenu  that  the "Worksheet"  command  calls  up; it  reads            "Global,  Insert,  Delete,  Column,  Erase,  Titles,  Window,            Status,  Page."   The  long  prompt  for the  "Copy"  command            explains  what  function  the  "Copy"  command will  perform:            "Copy a  cell or range  of cells."   The long prompt  for the            "Quit" command reads, "End 1-2-3 session (Have you saved your            work?)."                                         -8-                                          8            expressive elements,  and to what extent,  if any, functional            constraints  limited the  number  of possible  ways that  the            Lotus menu command hierarchy could  have been arranged at the            time of its creation.  See Borland III, 831 F.  Supp. at 207.                                   ___ ___________            Additionally,  the  district  court  granted   Lotus  summary            judgment on Borland's affirmative  defense of waiver, but not            on its affirmative  defenses of laches and estoppel.  Borland                                                                  _______            II, 799 F. Supp. at 222-23.            __                      Immediately following the district  court's summary            judgment   decision,  Borland  removed  the  Lotus  Emulation            Interface  from   its   products.     Thereafter,   Borland's            spreadsheet  programs  no  longer displayed  the  Lotus 1-2-3            menus to Borland users,  and as a result Borland  users could            no longer communicate with Borland's programs as if they were            using   a   more  sophisticated   version  of   Lotus  1-2-3.            Nonetheless,  Borland's  programs continued  to  be partially            compatible  with Lotus  1-2-3, for  Borland retained  what it            called  the "Key Reader" in  its Quattro Pro  programs.  Once            turned  on,  the Key  Reader  allowed  Borland's programs  to                                            ____________________                      Prior to  trial, the parties agreed  to exclude the            copying of the long  prompts from the case; Lotus  agreed not            to contend that Borland had  copied the long prompts, Borland            agreed not to argue that it had not  copied the long prompts,            and both sides agreed not to argue that the issue  of whether            Borland had copied the long prompts was material to any other            issue in the case.  See Borland III, 831 F. Supp. at 208.                                ___ ___________                                         -9-                                          9            understand and perform  some Lotus 1-2-3  macros.3  With  the            Key  Reader on, the  Borland programs used  Quattro Pro menus            for display,  interaction, and macro  execution, except  when            they encountered a slash  ("/") key in a macro  (the starting            key  for  any   Lotus  1-2-3  macro),  in   which  case  they            interpreted the macro as having been written for Lotus 1-2-3.            Accordingly, people who wrote  or purchased macros to shorten            the  time needed to perform an operation in Lotus 1-2-3 could            still use  those macros in Borland's programs.4  The district            court  permitted  Lotus  to  file  a  supplemental  complaint            alleging that the Key Reader infringed its copyright.                        The parties agreed to  try the remaining  liability            issues without a jury.   The district court held  two trials,            the Phase I trial covering all remaining issues raised in the            original complaint (relating to the  Emulation Interface) and            the  Phase  II  trial  covering  all  issues  raised  in  the            supplemental complaint (relating to the Key Reader).   At the            Phase  I  trial,  there  were  no  live  witnesses,  although            considerable  testimony   was  presented   in  the  form   of            affidavits and deposition excerpts.  The district court ruled            upon evidentiary objections counsel interposed.  At the Phase                                            ____________________            3.  Because  Borland's programs  could no longer  display the            Lotus menu command hierarchy to users, the Key Reader did not            allow debugging or modification of  macros, nor did it permit            the execution of most interactive macros.              4.  See  Borland IV,  831  F. Supp.  at  226-27, for  a  more                     __________            detailed explanation of macros and the Key Reader.                                         -10-                                          10            II  trial,  there  were  two  live witnesses,  each  of  whom            demonstrated the programs for the district court.                      After the close of the  Phase I trial, the district            court permitted Borland  to amend its  answer to include  the            affirmative  defense  of "fair  use."    Because Borland  had            presented all of the evidence supporting its fair-use defense            during the Phase  I trial,  but Lotus had  not presented  any            evidence  on fair  use (as  the defense  had not  been raised            before  the conclusion  of the  Phase I trial),  the district            court  considered  Lotus's  motion  for  judgment  on partial            findings of fact.  See  Fed. R. Civ. P. 52(c).   The district                               ___            court held  that Borland had  failed to show that  its use of            the  Lotus  1-2-3 menu  command  hierarchy  in its  Emulation            Interface was a fair use.   See Borland III, 831 F.  Supp. at                                        ___ ___________            208.                      In  its Phase I-trial  decision, the district court            found that "each of the Borland emulation interfaces contains            a  virtually identical copy of  the 1-2-3 menu  tree and that            the  1-2-3  menu  tree  is  capable  of  a  wide  variety  of            expression."  Borland III, 831 F. Supp. at 218.  The district                          ___________            court also rejected Borland's  affirmative defenses of laches            and estoppel.  Id. at 218-23.                           ___                      In its Phase II-trial decision, the  district court            found that  Borland's Key  Reader file included  "a virtually            identical  copy  of  the   Lotus  menu  tree  structure,  but                                         -11-                                          11            represented in a  different form  and with  first letters  of            menu  command names in place of the full menu command names."            Borland IV, 831  F. Supp. at 228.  In  other words, Borland's            __________            programs no longer included the Lotus command terms, but only            their first letters.  The district court held that "the Lotus            menu  structure,  organization,  and  first  letters  of  the            command names  .  .  . constitute  part  of  the  protectable            expression   found  in   [Lotus   1-2-3]."     Id.  at   233.                                                           ___            Accordingly,  the  district  court  held that  with  its  Key            Reader, Borland had infringed Lotus's copyright.  Id. at 245.                                                              ___            The  district  court  also  rejected   Borland's  affirmative            defenses of waiver, laches,  estoppel, and fair use.   Id. at                                                                   ___            235-45.    The  district   court  then  entered  a  permanent            injunction against  Borland, id.  at 245, from  which Borland                                         ___            appeals.                      This appeal concerns only Borland's copying  of the            Lotus menu  command hierarchy  into its Quattro  programs and            Borland's affirmative  defenses to  such copying.   Lotus has            not cross-appealed; in other words, Lotus does not contend on            appeal  that the district court erred in finding that Borland            had not copied  other elements  of Lotus 1-2-3,  such as  its            screen displays.                                         II.                                         II.                                         ___                                      Discussion                                      Discussion                                      __________                                         -12-                                          12                      On  appeal,  Borland  does  not   dispute  that  it            factually  copied the words and arrangement of the Lotus menu            command hierarchy.  Rather,  Borland argues that it "lawfully            copied  the unprotectable  menus  of Lotus  1-2-3."   Borland            contends  that  the  Lotus  menu  command  hierarchy  is  not            copyrightable because  it is  a system, method  of operation,            process, or procedure foreclosed from protection by 17 U.S.C.               102(b).    Borland  also raises  a  number  of affirmative            defenses.                                         -13-                                          13            A.  Copyright Infringement Generally            ____________________________________                      To  establish  copyright infringement,  a plaintiff            must  prove "(1)  ownership  of a  valid  copyright, and  (2)            copying  of  constituent  elements   of  the  work  that  are            original."  Feist Publications, Inc. v. Rural Tel. Serv. Co.,                        ________________________    ____________________            499 U.S. 340, 361 (1991); see also Data Gen. Corp. v. Grumman                                      ___ ____ _______________    _______            Sys.  Support Corp., 36 F.3d 1147, 1160 n.19 (1st Cir. 1994);            ___________________            Concrete Mach. Co. v. Classic Lawn Ornaments,  Inc., 843 F.2d            __________________    _____________________________            600, 605  (1st  Cir. 1988).   To  show ownership  of a  valid            copyright  and  therefore  satisfy  Feist's  first  prong,  a                                                _____            plaintiff must prove that the work as a whole is original and            that  the   plaintiff  complied  with   applicable  statutory            formalities.   See Engineering  Dynamics, Inc.  v. Structural                           ___ ___________________________     __________            Software,  Inc., 26  F.3d 1335,  1340 (5th  Cir. 1994).   "In            _______________            judicial proceedings, a certificate of copyright registration            constitutes  prima facie  evidence  of  copyrightability  and                         ___________            shifts  the burden to  the defendant  to demonstrate  why the            copyright is not valid."  Bibbero Sys., Inc. v. Colwell Sys.,                                      __________________    _____________            Inc., 893 F.2d 1104, 1106 (9th Cir. 1990); see also 17 U.S.C.            ____                                       ___ ____               410(c); Folio  Impressions, Inc.  v. Byer  California, 937                       ________________________     ________________            F.2d  759, 763 (2d Cir. 1991) (presumption of validity may be            rebutted).                      To  show actionable  copying and  therefore satisfy            Feist's  second prong, a plaintiff must  first prove that the            _____            alleged  infringer copied  plaintiff's copyrighted work  as a                                         -14-                                          14            factual  matter; to  do this,  he or  she may  either present            direct   evidence  of   factual  copying   or,  if   that  is            unavailable, evidence  that the alleged  infringer had access            to  the   copyrighted  work   and  that  the   offending  and            copyrighted works  are so  similar that  the court  may infer            that there was factual  copying (i.e., probative similarity).            Engineering  Dynamics, 26  F.3d  at 1340;  see also  Concrete            _____________________                      ___ ____  ________            Mach.,  843 F.2d at 606.  The  plaintiff must then prove that            _____            the copying  of copyrighted material was so extensive that it            rendered  the offending  and copyrighted  works substantially            similar.  See Engineering Dynamics, 26 F.3d at 1341.                      ___ ____________________                      In this appeal, we are  faced only with whether the            Lotus menu command hierarchy  is copyrightable subject matter            in  the first instance, for Borland concedes that Lotus has a            valid  copyright in  Lotus 1-2-3  as a  whole5 and  admits to            factually copying  the Lotus  menu command  hierarchy.  As  a            result,  this appeal is in a very different posture from most                                            ____________________            5.  Computer   programs   receive  copyright   protection  as            "literary  works."    See  17 U.S.C.     102(a)(1)  (granting                                  ___            protection to "literary works") and 17 U.S.C.   101 (defining                                            ___            "literary works" as "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, phonorecords,  film, tapes, disks, or  cards, in                                                     _____            which  they are  embodied" (emphasis  added)); see  also H.R.                                                           ___  ____            Rep. No. 1476, 94th  Cong., 2d Sess. 54 (1976),  reprinted in                                                             _________ __            1976 U.S.C.C.A.N. 5659, 5667 ("The  term `literary works' . .            . includes computer data bases, and  computer programs to the            extent that  they incorporate authorship in  the programmer's            expression of original ideas, as distinguished from the ideas            themselves.").                                         -15-                                          15            copyright-infringement  cases,   for  copyright  infringement            generally turns on whether the defendant has copied protected            expression as  a factual matter.   Because of  this different            posture,  most  copyright-infringement  cases   provide  only            limited help  to us  in deciding this  appeal.  This  is true            even with respect to  those copyright-infringement cases that            deal with computers and computer software.            B.  Matter of First Impression            ______________________________                      Whether   a   computer   menu   command   hierarchy            constitutes copyrightable subject matter is a matter of first            impression  in this court.  While some other courts appear to            have touched  on it briefly  in dicta, see,  e.g., Autoskill,                                                   ___   ____  __________            Inc.  v. National  Educ. Support Sys.,  Inc., 994  F.2d 1476,            ____     ___________________________________            1495 n.23 (10th Cir.),  cert. denied, 114 S. Ct.  307 (1993),                                    _____ ______            we know of no cases that deal with the copyrightability  of a            menu  command hierarchy  standing on  its own  (i.e., without            other  elements  of  the   user  interface,  such  as  screen            displays,  in issue).   Thus  we are navigating  in uncharted            waters.                      Borland  vigorously  argues,   however,  that   the            Supreme Court charted our course more than 100 years ago when            it decided Baker v. Selden, 101 U.S. 99 (1879).   In Baker v.                       _____    ______                           _____            Selden,  the  Court held  that  Selden's  copyright over  the            ______            textbook in which he  explained his new way to  do accounting                                         -16-                                          16            did not  grant him a  monopoly on the  use of  his accounting            system.6  Borland argues:                        The facts  of Baker v.  Selden, and  even                                    _____     ______                      the arguments advanced by the  parties in                      that case, are identical to those in this                      case.  The  only difference  is that  the                      "user interface" of  Selden's system  was                      implemented  by pen and paper rather than                      by computer.            To  demonstrate that  Baker v.  Selden and  this  appeal both                                  _____     ______            involve accounting systems, Borland even  supplied this court            with a video that, with special effects, shows Selden's paper            forms "melting" into a  computer screen and transforming into            Lotus 1-2-3.                      We do not think  that Baker v. Selden is  nearly as                                            _____    ______            analogous to this appeal as Borland claims.  Of course, Lotus            1-2-3  is a  computer spreadsheet,  and as  such its  grid of            horizontal rows and  vertical columns certainly resembles  an            accounting  ledger or  any  other paper  spreadsheet.   Those            grids, however, are not  at issue in this appeal  for, unlike            Selden,  Lotus does  not claim  to have  a monopoly  over its            accounting  system.    Rather, this  appeal  involves Lotus's            monopoly over the  commands it uses to operate  the computer.            Accordingly,  this  appeal  is   not,  as  Borland  contends,            "identical" to Baker v. Selden.                           _____    ______            C.  Altai            _________                                            ____________________            6.  Selden's system  of double-entry bookkeeping  is the  now            almost-universal T-accounts system.                                         -17-                                          17                      Before we analyze  whether the  Lotus menu  command            hierarchy  is  a system,  method  of  operation, process,  or            procedure, we  first consider  the applicability of  the test            the Second  Circuit set forth in Computer  Assoc. Int'l, Inc.                                             ____________________________            v. Altai,  Inc., 982  F.2d 693 (2d  Cir. 1992).7   The Second               ____________            Circuit  designed its Altai test  to deal with  the fact that                                  _____            computer programs,  copyrighted as  "literary works,"  can be            infringed by what is known as "nonliteral"  copying, which is            copying that  is  paraphrased or  loosely paraphrased  rather            than  word  for word.   See  id.  at 701  (citing nonliteral-                                    ___  ___            copying cases); see also 3 Melville B. Nimmer & David Nimmer,                            ___ ____            Nimmer on  Copyright   13.03[A][1]  (1993).  When  faced with            ____________________            nonliteral-copying  cases,  courts  must   determine  whether            similarities  are due merely to  the fact that  the two works            share  the  same  underlying  idea or  whether  they  instead            indicate  that the  second author  copied the  first author's            expression.   The Second  Circuit designed its  Altai test to                                                            _____            deal   with   this  situation   in   the  computer   context,            specifically  with  whether   one  computer  program   copied            nonliteral expression from another program's code.                                            ____________________            7.  We consider the Altai test because both  parties and many                                _____            of the amici focus on it so heavily.  Borland, in particular,                   _____            is highly  critical of the  district court for  not employing            the  Altai test.   Borland  does not,  however, indicate  how                 _____            using  that test  would  have been  dispositive in  Borland's            favor.  Interestingly, Borland  appears to contradict its own            reasoning at  times by  criticizing the applicability  of the            Altai test.            _____                                         -18-                                          18                      The Altai test involves three  steps:  abstraction,                          _____            filtration,  and comparison.   The abstraction  step requires            courts to  "dissect the allegedly  copied program's structure            and isolate  each level of abstraction  contained within it."            Altai, 982 F.2d at 707.  This step enables courts to identify            _____            the   appropriate   framework   within  which   to   separate            protectable  expression  from  unprotected  ideas.    Second,            courts apply a "filtration" step  in which they examine  "the            structural  components  at  each  level  of   abstraction  to            determine whether  their particular inclusion  at that  level            was `idea'  or was dictated by  considerations of efficiency,            so  as to be necessarily incidental to that idea; required by            factors  external to  the program itself;  or taken  from the            public domain."   Id.  Finally, courts  compare the protected                              ___            elements of the infringed work (i.e., those that survived the            filtration  screening) to the  corresponding elements  of the            allegedly  infringing work  to  determine whether  there  was            sufficient  copying  of   protected  material  to  constitute            infringement.  Id. at 710.                           ___                      In the  instant appeal, we are  not confronted with            alleged nonliteral copying of computer  code.  Rather, we are            faced with Borland's deliberate, literal copying of the Lotus            menu command hierarchy.  Thus,  we must determine not whether            nonliteral  copying occurred  in  some amorphous  sense,  but                                         -19-                                          19            rather whether the literal copying of  the Lotus menu command            hierarchy constitutes copyright infringement.                      While the Altai test may provide a useful framework                                _____            for  assessing  the alleged  nonliteral  copying of  computer            code, we find  it to be of  little help in  assessing whether            the literal  copying of a menu  command hierarchy constitutes            copyright infringement.   In  fact, we  think that the  Altai                                                                    _____            test in this context may  actually be misleading because,  in            instructing courts  to abstract the various  levels, it seems            to  encourage  them  to  find  a  base  level  that  includes            copyrightable subject matter that, if literally copied, would            make the  copier liable  for copyright infringement.8   While            that  base (or  literal) level  would not  be  at issue  in a            nonliteral-copying case  like Altai, it is  precisely what is                                          _____            at  issue in  this appeal.   We  think that  abstracting menu            command hierarchies  down to  their individual word  and menu            levels and then filtering idea from expression at that stage,            as  both the  Altai  and the  district  court tests  require,                          _____            obscures  the more  fundamental  question of  whether a  menu            command hierarchy  can be  copyrighted at all.   The  initial                                            ____________________            8.  We  recognize that  Altai  never states  that every  work                                    _____            contains a copyrightable "nugget" of  protectable expression.            Nonetheless, the implication is that for literal copying, "it            is  not necessary  to determine  the level of  abstraction at            which  similarity  ceases to  consist  of  an `expression  of            ideas,' because literal similarity  by definition is always a            similarity as to  the expression  of ideas."   3 Melville  B.            Nimmer  & David  Nimmer,  Nimmer on  Copyright    13.03[A](2)                                      ____________________            (1993).                                         -20-                                          20            inquiry should not be whether individual components of a menu            command hierarchy are expressive, but rather whether the menu            command hierarchy as  a whole  can be copyrighted.   But  see                                                                 ___  ___            Gates  Rubber Co.  v. Bando  Chem. Indus.,  Ltd., 9  F.3d 823            _________________     __________________________            (10th Cir. 1993)  (endorsing Altai's  abstraction-filtration-                                         _____            comparison test  as a way  of determining whether  "menus and            sorting criteria" are copyrightable).            D.    The  Lotus  Menu  Command  Hierarchy:    A  "Method  of            _____________________________________________________________            Operation"            __________                      Borland   argues  that   the  Lotus   menu  command            hierarchy is  uncopyrightable because it is  a system, method            of operation, process, or procedure foreclosed from copyright            protection  by 17  U.S.C.   102(b).   Section  102(b) states:            "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,            regardless of the form in  which it is described,  explained,            illustrated, or  embodied in such work."  Because we conclude            that  the  Lotus  menu  command  hierarchy  is  a  method  of            operation,  we do  not consider  whether it  could also  be a            system, process, or procedure.                        We think  that "method of operation,"  as that term            is used  in   102(b), refers  to the means by  which a person            operates something, whether it be a car, a food processor, or            a  computer.  Thus a text describing how to operate something                                         -21-                                          21            would  not  extend  copyright  protection to  the  method  of            operation itself; other  people would be free to  employ that            method and to describe it in  their own words.  Similarly, if            a new  method of  operation  is used  rather than  described,            other people would still  be free to employ or  describe that            method.                      We hold that the Lotus menu command hierarchy is an            uncopyrightable  "method  of  operation."    The  Lotus  menu            command hierarchy  provides the means by  which users control            and operate Lotus 1-2-3.  If users wish to copy material, for            example, they use the "Copy" command.  If users wish to print            material, they use the  "Print" command.  Users must  use the            command terms to tell the  computer what to do.   Without the            menu command hierarchy, users would not be able to access and            control,  or indeed  make  use of,  Lotus 1-2-3's  functional            capabilities.                      The Lotus  menu command hierarchy  does not  merely            explain  and present Lotus 1-2-3's functional capabilities to            the  user; it also serves as the  method by which the program            is operated and controlled.  The Lotus menu command hierarchy            is  different  from the  Lotus  long  prompts, for  the  long            prompts are not  necessary to the  operation of the  program;            users  could operate Lotus 1-2-3  even if there  were no long                                         -22-                                          22            prompts.9     The  Lotus  menu  command   hierarchy  is  also            different  from the Lotus screen displays, for users need not            "use" any expressive aspects of  the screen displays in order            to  operate Lotus 1-2-3; because the way the screens look has            little bearing on  how users control the  program, the screen            displays   are  not   part  of   Lotus  1-2-3's   "method  of            operation."10    The Lotus  menu  command  hierarchy is  also            different from the  underlying computer  code, because  while            code  is  necessary  for the  program  to  work,  its precise            formulation  is not.    In other  words,  to offer  the  same            capabilities as  Lotus 1-2-3,  Borland did not  have to  copy            Lotus's underlying  code (and  indeed it  did not);  to allow            users to operate its programs in substantially the same  way,            however,  Borland   had  to  copy  the   Lotus  menu  command            hierarchy.     Thus   the   Lotus  1-2-3   code   is  not   a            uncopyrightable "method of operation."11                                            ____________________            9.  As the Lotus long prompts are not before us on appeal, we            take no  position on  their copyrightability, although  we do            note  that a  strong argument  could be  made that  the brief            explanations they provide "merge" with the underlying idea of            explaining such functions.  See Morrissey v. Procter & Gamble                                        ___ _________    ________________            Co.,  379 F.2d 675, 678-79 (1st Cir. 1967) (when the possible            ___            ways  to express an idea are limited, the expression "merges"            with the  idea and is therefore  uncopyrightable; when merger            occurs, identical copying is permitted).            10.  As they are not before us on appeal, we take no position            on  whether  the  Lotus  1-2-3   screen  displays  constitute            original expression capable of being copyrighted.            11.  Because the Lotus 1-2-3 code is not before us on appeal,            we take no position on whether it is copyrightable.  We note,            however, that original computer codes generally are protected                                         -23-                                          23                      The district court held that the Lotus menu command            hierarchy,  with  its  specific  choice  and  arrangement  of            command terms,  constituted an "expression" of  the "idea" of            operating   a   computer  program   with   commands  arranged            hierarchically into menus  and submenus.  Borland  II, 799 F.                                                      ___________            Supp. at 216.  Under the district court's  reasoning, Lotus's            decision to  employ hierarchically arranged command  terms to            operate its program could  not foreclose its competitors from            also  employing  hierarchically  arranged  command  terms  to            operate  their  programs,  but  it did  foreclose  them  from            employing the  specific command  terms  and arrangement  that            Lotus  had used.  In effect, the district court limited Lotus            1-2-3's "method of operation" to an abstraction.                      Accepting the  district  court's finding  that  the            Lotus developers made some expressive choices in choosing and            arranging the  Lotus command terms, we  nonetheless hold that            that  expression is not  copyrightable because it  is part of            Lotus  1-2-3's "method of operation."   We do  not think that            "methods of operation" are  limited to abstractions;  rather,            they  are the means  by which a user  operates something.  If            specific  words are  essential to  operating something,  then            they are  part of a "method  of operation" and, as  such, are                                            ____________________            by copyright.  See, e.g., Altai, 982 F.2d at 702  ("It is now                           ___  ____  _____            well settled that the  literal elements of computer programs,            i.e., their  source  and object  codes,  are the  subject  of            copyright protection.") (citing cases).                                         -24-                                          24            unprotectable.  This is so whether  they must be highlighted,            typed  in, or even spoken, as computer programs no doubt will            soon be controlled by spoken words.                      The  fact that Lotus developers could have designed            the Lotus menu command hierarchy differently is immaterial to            the question of  whether it is a  "method of operation."   In            other words,  our initial  inquiry is  not whether the  Lotus            menu   command   hierarchy  incorporates   any  expression.12            Rather, our initial inquiry is whether the Lotus menu command            hierarchy  is a "method of operation."  Concluding, as we do,            that  users  operate Lotus  1-2-3  by  using  the Lotus  menu            command  hierarchy, and  that the  entire Lotus  menu command            hierarchy is essential  to operating Lotus  1-2-3, we do  not            inquire further  whether that method of  operation could have            been designed differently.   The "expressive" choices of what            to  name the  command terms  and how  to arrange them  do not            magically  change the uncopyrightable  menu command hierarchy            into copyrightable subject matter.                      Our  holding that  "methods of  operation"  are not            limited to mere abstractions is bolstered by Baker v. Selden.                                                         _____    ______            In Baker, the Supreme Court explained that                _____                      the  teachings of  science and  the rules                      and  methods  of  useful art  have  their                      final end  in  application and  use;  and                      this  application  and use  are  what the                                            ____________________            12.  We  think that  the  Altai test  would contemplate  this                                      _____            being the initial inquiry.                                         -25-                                          25                      public derive from  the publication of  a                      book  which  teaches  them.  .  .  .  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.  The object of the one                      is explanation; the  object of the  other                      is  use.   The former  may be  secured by                      copyright.    The  latter  can   only  be                      secured, if it can  be secured at all, by                      letters-patent.            Baker v. Selden, 101  U.S. at 104-05.   Lotus wrote its  menu            _____    ______            command hierarchy so that  people could learn it and  use it.            Accordingly, it  falls  squarely within  the  prohibition  on            copyright  protection  established  in  Baker  v.  Selden and                                                    _____      ______            codified by Congress in   102(b).                      In many  ways, the Lotus menu  command hierarchy is            like  the  buttons used  to  control, say,  a  video cassette            recorder ("VCR").   A VCR  is a  machine that enables  one to            watch and record video tapes.  Users operate VCRs by pressing            a  series of  buttons  that are  typically labelled  "Record,            Play, Reverse,  Fast Forward,  Pause, Stop/Eject."   That the            buttons  are arranged  and  labeled  does  not  make  them  a            "literary work," nor does it make them an "expression" of the            abstract "method of  operating" a  VCR via a  set of  labeled            buttons.  Instead, the buttons  are themselves the "method of            operating" the VCR.                      When a  Lotus 1-2-3 user chooses  a command, either            by  highlighting  it on  the screen  or  by typing  its first            letter, he or  she effectively pushes a button.  Highlighting                                         -26-                                          26            the  "Print" command on the screen, or typing the letter "P,"            is analogous to pressing a VCR button labeled "Play."                      Just as one could not  operate a buttonless VCR, it            would be impossible to  operate Lotus 1-2-3 without employing            its menu command hierarchy.  Thus the Lotus command terms are            not  equivalent to the labels  on the VCR's  buttons, but are            instead  equivalent to  the buttons  themselves.   Unlike the            labels  on a VCR's buttons, which merely make operating a VCR            easier by  indicating the buttons' functions,  the Lotus menu            commands are essential to operating Lotus 1-2-3.  Without the            menu  commands, there  would be  no way  to "push"  the Lotus            buttons,  as one  could push  unlabeled VCR  buttons.   While            Lotus could probably have designed a user interface for which            the command  terms were mere labels,  it did not do  so here.            Lotus 1-2-3 depends for  its operation on use of  the precise            command terms that make up the Lotus menu command hierarchy.                      One might  argue that  the buttons for  operating a            VCR  are not  analogous  to  the  commands  for  operating  a            computer program  because VCRs are not copyrightable, whereas            computer programs are.   VCRs may not be  copyrighted because            they  do not  fit within  any of the    102(a)  categories of            copyrightable  works;  the closest  they come  is "sculptural            work."  Sculptural works, however,  are subject to a "useful-            article" exception whereby "the design of a useful  article .            .  . shall be considered  a pictorial, graphic, or sculptural                                         -27-                                          27            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."   17  U.S.C.    101.   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."  Id.   Whatever expression there may be  in the                           ___            arrangement of the parts of a VCR is  not capable of existing            separately  from the VCR itself, so an ordinary VCR would not            be copyrightable.                      Computer programs, unlike  VCRs, are  copyrightable            as "literary works."   17 U.S.C.   102(a).   Accordingly, one            might argue, the "buttons" used to operate a computer program            are not like the buttons used  to operate a VCR, for they are            not subject to  a useful-article exception.  The response, of            course, is that the arrangement of buttons on a VCR would not            be  copyrightable even  without  a useful-article  exception,            because  the   buttons  are  an  uncopyrightable  "method  of            operation."   Similarly, the "buttons" of  a computer program            are also an uncopyrightable "method of operation."                      That the Lotus menu  command hierarchy is a "method            of operation"  becomes  clearer when  one  considers  program            compatibility.  Under Lotus's theory, if a user  uses several            different programs, he or  she must learn how to  perform the                                         -28-                                          28            same operation in a different way for each program used.  For            example, if the  user wanted the computer to  print material,            then the  user would  have to  learn not  just one  method of            operating  the  computer  such   that  it  prints,  but  many            different methods.  We find this absurd.  The fact that there            may  be many different ways to operate a computer program, or            even many different  ways to operate a computer program using            a set of hierarchically arranged command terms, does not make            the actual method of operation chosen copyrightable; it still            functions  as a method for operating the computer and as such            is uncopyrightable.                      Consider  also  that  users employ  the  Lotus menu            command  hierarchy in  writing  macros.   Under the  district            court's holding, if  the user  wrote a macro  to shorten  the            time needed  to perform a  certain operation in  Lotus 1-2-3,            the user  would be  unable to use  that macro to  shorten the            time  needed  to  perform  that  same  operation  in  another            program.  Rather,  the user would have to  rewrite his or her            macro  using  that  other program's  menu  command hierarchy.            This is despite the fact that the macro is clearly the user's            own  work product.  We  think that forcing  the user to cause            the computer to perform the same operation in a different way            ignores  Congress's direction  in    102(b) that  "methods of            operation" are  not copyrightable.   That programs  can offer            users the ability to write macros in many different ways does                                         -29-                                          29            not  change the fact that, once written, the macro allows the            user to  perform an  operation automatically.   As the  Lotus            menu command  hierarchy serves as  the basis for  Lotus 1-2-3            macros, the  Lotus menu  command  hierarchy is  a "method  of            operation."                        In  holding  that  expression  that is  part  of  a            "method  of  operation"  cannot  be copyrighted,  we  do  not            understand  ourselves  to  go  against  the  Supreme  Court's            holding in Feist.  In Feist, the Court explained:                       _____      _____                      The primary objective of copyright is not                      to reward  the labor  of authors,  but to                      promote  the  Progress  of   Science  and                      useful  Arts.   To  this  end,  copyright                      assures  authors  the   right  to   their                      original   expression,   but   encourages                      others to build freely upon the ideas and                      information conveyed by a work.            Feist, 499 U.S. at 349-50 (quotations and citations omitted).            _____            We  do not think  that the Court's  statement that "copyright            assures  authors  the  right to  their  original  expression"            indicates that all  expression is necessarily  copyrightable;            while   original  expression   is  necessary   for  copyright            protection,  we do  not  think that  it is  alone sufficient.            Courts must  still inquire whether  original expression falls            within  one  of  the  categories  foreclosed  from  copyright            protection  by     102(b),   such  as  being  a  "method   of            operation."                      We also  note that  in most contexts,  there is  no            need to "build" upon other people's expression, for the ideas                                         -30-                                          30            conveyed by that expression  can be conveyed by  someone else            without  copying the  first  author's expression.13   In  the            context of methods of operation, however, "building" requires            the use of the precise method of operation already  employed;            otherwise,   "building"   would  require   dismantling,  too.            Original developers are not the only people entitled to build            on the methods of  operation they create; anyone can.   Thus,            Borland may  build  on the  method  of operation  that  Lotus            designed and  may use  the Lotus  menu  command hierarchy  in            doing so.                      Our holding  that  methods  of  operation  are  not            limited to  abstractions goes against Autoskill,  994 F.2d at                                                  _________            1495  n.23,   in  which   the  Tenth  Circuit   rejected  the            defendant's  argument that  the  keying procedure  used in  a            computer  program  was   an  uncopyrightable  "procedure"  or            "method  of operation" under   102(b).  The program at issue,            which  was designed to  test and train  students with reading            deficiencies,  id.  at  1481,  required  students  to  select                           ___            responses  to the program's queries "by pressing the 1, 2, or            3  keys."  Id.  at 1495 n.23.   The Tenth  Circuit held that,                       ___            "for purposes of the preliminary injunction, . . . the record            showed  that [this]  keying  procedure reflected  at least  a            minimal  degree  of creativity,"  as  required  by Feist  for                                                               _____                                            ____________________            13.  When  there are a limited  number of ways  to express an            idea,  however, the  expression  "merges" with  the idea  and            becomes uncopyrightable.  Morrissey, 379 F.2d at 678-79.                                      _________                                         -31-                                          31            copyright protection.  Id.  As an initial matter, we question                                   ___            whether  a  programmer's  decision  to have  users  select  a            response by pressing  the 1, 2, or 3 keys  is original.  More            importantly,  however,   we  fail  to  see   how  "a  student            select[ing] a response by pressing the 1, 2, or 3 keys," id.,                                                                     ___            can be anything but an unprotectable method of operation.14                                         III.                                         III.                                         ____                                      Conclusion                                      Conclusion                                      __________                      Because  we  hold  that  the  Lotus   menu  command            hierarchy is uncopyrightable subject matter, we further  hold            that Borland  did not  infringe Lotus's copyright  by copying            it.   Accordingly,  we  need not  consider  any of  Borland's            affirmative defenses.  The judgment of the district court is                      Reversed.                      _________                                                       Concurrence                                                       ___________            follows.              ________                                            ____________________            14.  The  Ninth  Circuit has  also  indicated  in dicta  that            "menus,  and keystrokes"  may  be copyrightable.   Brown  Bag                                                               __________            Software v. Symantec  Corp., 960 F.2d 1465,  1477 (9th Cir.),            ________    _______________            cert. denied,  BB Asset  Management, Inc. v.  Symantec Corp.,            _____ ______   __________________________     ______________            113 S. Ct. 198 (1992).  In that case, however,  the plaintiff            did  not show that  the defendant had  copied the plaintiff's            menus or keystrokes, so the court was not directly faced with            whether  the menus or keystrokes constituted an unprotectable            method of operation.  Id.                                  ___                                         -32-                                          32                 BOUDIN, Circuit Judge,  concurring.   The importance  of                         _____________            this  case, and a slightly  different emphasis in  my view of            the underlying problem,  prompt me to add a few  words to the            majority's tightly focused discussion.                                          I.                 Most of the law of copyright and the "tools" of analysis            have  developed  in the  context  of literary  works  such as            novels, plays,  and  films.   In this  milieu, the  principal            problem--simply  stated,  if   difficult  to  resolve--is  to            stimulate  creative expression without unduly limiting access            by  others to the broader themes and concepts deployed by the            author.  The middle of the spectrum presents close cases; but            a "mistake" in providing too much protection involves a small            cost:  subsequent authors treating  the same themes must take            a few more steps away from the original expression.                 The   problem  presented   by   computer   programs   is            fundamentally different in one respect.  The computer program            is  a means  for  causing  something  to  happen;  it  has  a                  _____            mechanical  utility, an  instrumental role,  in accomplishing            the world's work.   Granting protection, in other  words, can            have  some  of  the  consequences  of  patent  protection  in                                                   ______            limiting other people's ability to perform a task in the most            efficient  manner.      Utility  does   not   bar   copyright                                         -31-                                         -31-            (dictionaries  may  be   copyrighted),  but  it  alters   the            calculus.                 Of course, the argument for protection is  undiminished,                                         ___            perhaps  even enhanced,  by utility:  if we  want more  of an            intellectual product,  a temporary  monopoly for the  creator            provides  incentives for  others to  create other,  different            items in this class.  But the "cost" side of the equation may            be different where  one places  a very high  value on  public            access  to a useful innovation that may be the most efficient            means of performing  a given  task.  Thus,  the argument  for            extending protection may be  the same; but the stakes  on the            other side are much higher.                  It   is  no   accident   that   patent  protection   has            preconditions  that  copyright protection  does not--notably,            the  requirements of  novelty  and non-obviousness--and  that            patents  are granted  for a  shorter period  than copyrights.            This problem  of utility  has sometimes manifested  itself in            copyright cases, such as Baker v. Selden, 101 U.S. 99 (1879),                                     _____    ______            and been  dealt with through various  formulations that limit            copyright or create limited rights to copy.  But the case law            and  doctrine addressed  to  utility in  copyright have  been            brief detours in the general march of copyright law.                   Requests  for the protection  of computer  menus present            the  concern with  fencing off  access to  the commons  in an            acute form.  A new menu may be a creative work, but over time                                         -32-                                         -32-            its importance may come to reside more in the investment that            has been made by users  in learning the menu and  in building                             _____            their own  mini-programs--macros--in reliance upon  the menu.            Better   typewriter  keyboard  layouts  may  exist,  but  the            familiar QWERTY keyboard dominates the market because that is            what everyone has learned to use.  See P. David, CLIO and the                                               ___           ____________            Economics  of  QWERTY, 75  Am. Econ.  Rev.  332 (1985).   The            _____________________      _______________            QWERTY keyboard is nothing other than a menu of letters.                 Thus, to assume that computer programs are just one more            new means of  expression, like  a filmed play,  may be  quite            wrong.   The  "form"--the written  source  code or  the  menu            structure depicted  on the  screen--look hauntingly like  the            familiar stuff of copyright; but the "substance" probably has            more  to  do with  problems presented  in  patent law  or, as            already noted,  in those rare  cases where copyright  law has            confronted   industrially   useful  expressions.     Applying            copyright  law  to computer  programs  is  like assembling  a            jigsaw puzzle whose pieces do not quite fit.                 All of this  would make  no difference  if Congress  had            squarely confronted the issue,  and given explicit directions            as to  what should be done.  The Copyright Act of 1976 took a            different course.  While Congress said that computer programs            might be  subject to  copyright protection,  it said  this in            very  general terms;  and, especially  in    102(b), Congress            adopted a string  of exclusions that if taken literally might                                         -33-                                         -33-            easily   seem   to  exclude   most  computer   programs  from            protection.   The only  detailed prescriptions  for computers            involve narrow  issues (like back-up copies)  of no relevance            here.                 Of  course,  one  could  still read  the  statute  as  a            congressional   command  that   the  familiar   doctrines  of            copyright  law be taken and  applied to computer programs, in            cookie cutter fashion, as if the programs were novels or play            scripts.    Some of  the  cases  involving computer  programs            embody  this  approach.  It  seems  to  me  mistaken  on  two            different grounds:  the tradition  of copyright law,  and the            likely intent of Congress.                 The  broad-brush conception of copyright protection, the            time limits, and the formalities have long been prescribed by            statute.   But the heart  of copyright doctrine--what  may be            protected and with what limitations and  exceptions--has been            developed by  the courts through  experience with  individual            cases.   B. Kaplan, An Unhurried View of Copyright 40 (1967).                                ______________________________            Occasionally Congress addresses a problem in detail.  For the            most part  the interstitial development of  copyright through            the courts is our tradition.                 Nothing in  the language  or legislative history  of the            1976  Act, or  at  least nothing  brought  to our  attention,            suggests that Congress meant the courts to abandon this case-            by-case  approach.   Indeed,  by setting  up    102(b)  as  a                                         -34-                                         -34-            counterpoint  theme, Congress  has  arguably  recognized  the            tension and left  it for  the courts to  resolve through  the            development  of  case  law.   And  case  law  development  is            adaptive:   it allows new problems to  be solved with help of            ________            earlier doctrine, but  it does not preclude  new doctrines to            meet new situations.                                         II.                 In this case, the raw facts are mostly, if not entirely,            undisputed.   Although the inferences to be drawn may be more            debatable,  it is very hard to see that Borland has shown any            interest in the Lotus  menu except as a fall-back  option for            those users already committed to it by prior experience or in            order to run their own macros using 1-2-3 commands.  At least            for  the amateur,  accessing the  Lotus menu  in the  Borland            Quattro or Quattro Pro program takes some effort.                 Put differently, it is unlikely that users who value the            Lotus menu  for its  own sake--independent of  any investment            they  have made  themselves  in learning  Lotus' commands  or            creating macros dependent upon them--would choose the Borland            program  in  order  to  secure  access  to  the  Lotus  menu.            Borland's success  is due primarily  to other features.   Its            rationale for  deploying the  Lotus  menu bears  the ring  of            truth.                 Now,  any  use  of  the  Lotus  menu  by  Borland  is  a            commercial  use  and deprives  Lotus  of  a  portion  of  its                                         -35-                                         -35-            "reward," in the sense that an  infringement claim if allowed            would  increase  Lotus'  profits.     But  this  is  circular            reasoning: broadly speaking, every limitation on copyright or            privileged use diminishes the reward of the original creator.             Yet  not every  writing  is copyrightable  or  every use  an            infringement.   The  provision  of reward  is one  concern of            copyright  law, but  it is  not the  only one.   If  it were,            copyrights  would   be  perpetual  and  there   would  be  no            exceptions.                 The present  case is  an unattractive one  for copyright            protection  of the menu.   The menu  commands (e.g., "print,"                                                           ____            "quit") are  largely for  standard procedures that  Lotus did            not invent and are common words that Lotus cannot monopolize.            What is  left is the particular  combination and sub-grouping            of  commands in a pattern devised by Lotus.  This arrangement            may have  a more  appealing logic and  ease of use  than some            other configurations; but there is a certain arbitrariness to            many of the choices.                 If Lotus is  granted a monopoly  on this pattern,  users            who  have learned  the command  structure  of Lotus  1-2-3 or            devised their own  macros are  locked into Lotus,  just as  a            typist  who  has learned  the  QWERTY keyboard  would  be the            captive of anyone  who had  a monopoly on  the production  of            such  a keyboard.  Apparently,  for a period  Lotus 1-2-3 has            had such  sway in the market  that it has represented  the de                                                                       __                                         -36-                                         -36-            facto standard for electronic  spreadsheet commands.  So long            _____            as Lotus is the superior spreadsheet--either in quality or in            price--there may be nothing wrong with this advantage.                 But if a better  spreadsheet comes along, it is  hard to            see why customers who have learned the Lotus menu and devised            macros for it should  remain captives of Lotus because  of an            investment  in learning made by  the users and  not by Lotus.            Lotus  has  already reaped  a  substantial  reward for  being            first; assuming  that the Borland program is now better, good            reasons exist for freeing it to  attract old Lotus customers:            to  enable the  old  customers to  take  advantage of  a  new            advance,  and to reward Borland  in turn for  making a better            product.   If  Borland has  not made  a better  product, then            customers will remain with Lotus anyway.                 Thus, for me the question is not whether  Borland should            prevail  but  on  what  basis.    Various  avenues  might  be            traveled, but the main choices  are between holding that  the            menu  is not  protectable  by copyright  and  devising a  new            doctrine that Borland's  use is privileged.   No solution  is            perfect  and no  intermediate  appellate court  can make  the            final choice.                 To  call the  menu a  "method of  operation" is,  in the            common use of those words, a defensible position.  After all,            the purpose  of the menu  is not to be  admired as a  work of            literary or pictorial art.  It is to transmit directions from                                         -37-                                         -37-            the user to the computer, i.e., to operate the computer.  The                                      ____  __________            menu is also a "method" in the dictionary sense because it is            a "planned way of doing something," an "order or system," and            (aptly  here) an "orderly or systematic arrangement, sequence            or the like."  Random  House Webster's College Dictionary 853                           __________________________________________            (1991).                 A different approach  would be to say that Borland's use            is privileged  because, in the context  already described, it            is  not seeking  to appropriate  the advances made  by Lotus'            menu;  rather, having  provided  an arguably  more attractive            menu  of its  own, Borland  is merely  trying to  give former            Lotus users an  option to exploit their  own prior investment            in learning  or in  macros.   The difference is  that such  a            privileged  use  approach  would  not  automatically  protect            Borland  if  it  had  simply  copied  the  Lotus menu  (using            different codes), contributed nothing  of its own, and resold            Lotus under the Borland label.                 The  closest analogue  in conventional copyright  is the            fair use doctrine.   E.g., Harper & Row, Publishers,  Inc. v.                                 ____  _______________________________            Nation Enters.,  471 U.S.  539 (1985).   Although invoked  by            ______________            Borland,  it has  largely  been brushed  aside  in this  case            because the Supreme Court has said that it is "presumptively"            unavailable where the use is a "commercial" one.   See id. at                                                               _______            562.   But see Campbell v. Acuff-Rose Music, Inc., 114 S. Ct.                   _______ ________    ______________________            1164, 1174 (1994).  In my view, this is something less than a                                         -38-                                         -38-            definitive  answer;  "presumptively" does  not  mean "always"            and, in  any event, the doctrine  of fair use  was created by            the courts and can be adapted to new purposes.                 But  a privileged  use doctrine would  certainly involve            problems of its own.  It might more closely tailor the limits            on  copyright protection  to  the reasons  for limiting  that            protection;  but it  would  entail a  host of  administrative            problems that  would  cause cost  and delay,  and would  also            reduce  the  ability of  the  industry  to predict  outcomes.            Indeed,  to  the  extent that  Lotus'  menu  is an  important            standard in the  industry, it  might be argued  that any  use            ought to be deemed privileged.                 In  sum,  the majority's  result  persuades  me and  its            formulation  is as good, if  not better, than  any other that            occurs  to  me now  as  within the  reach  of  courts.   Some            solutions (e.g., a very short copyright period for menus) are                       ____            not options  at all for courts but might be for Congress.  In            all  events, the  choices are  important ones of  policy, not            linguistics,  and they  should  be made  with the  underlying            considerations in view.                                                                           -39-                                         -39-
