

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 &amp; Rosati,  Peter E. Gelhaar,                                                                             

Katherine  L. Parks, and Donnelly Conroy  &amp; 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 &amp; Cannon were on brief                                                                

for Computer Software Industry Association, amicus curiae.

Laureen E.  McGurk, David A. Rabin,  Bryan G.  Harrison and Morris                                                                              

Manning  &amp; 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  &amp; 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 &amp; 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  &amp; 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 &amp;  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 &amp;                                                                              

Neave, William J. Cheeseman, and Foley Hoag &amp; 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 &amp; 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  &amp; 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 &amp; 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 &amp; 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.

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