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Look and Feel in Computer Software

Protection In The 1990s

By Jack Russo & Jamie Nafziger
Copyright 1993 by Jack Russo and Jamie Nafziger. All Rights Reserved.

TABLE OF CONTENTS

INTRODUCTION

CONCLUSION

INTRODUCTION

In the 1990s, "look and feel" will remain an important concept for legal protection of computer software. The reason is this: Though functionality alone will never be legally protected (other than in appropriate cases by patent law), the organization and presentation of functionality as part of the overall "look and feel" of a computer program will be protected; "look and feel" best describes the originality and creativity embodied in the overall external characteristics of a computer program.

Though criticized by the defense bar, "look and feel" describes what user interface designers and computer programmers routinely treat as the most important contributions they make to their end-user oriented software products. The term also properly describes what end-users perceive through the use of such software products. We submit that "look and feel" protection -- that is, legal protection for the original, creative, external expression presented as the user interface for a computer program will continue to expand in the 1990s. This expansion will be fueled by software designers and programmers who continue to develop and by a market which continues to demand original, creative, interactive user interfaces that are more graphical, more robust, and more expressive of their functional content.

The following article is divided into three sections. In Section I, we summarize the key legal principles which govern legal protection of the "look and feel" of computer software. In Section II, we describe the historical development of important "look and feel" cases. In Section III, we note the impact of three very recent U.S. Supreme Court cases; all three can be expected to have major influence in the continuing development of the law in this area: Bonito Boats v. Thunder Craft Boats Bonito Boats, Inc. v. Thunder Craft Boats, Inc. 489 U.S. 141, 103 L. Ed. 2d 118, 109 S. Ct. 971 (1989).; Feist Publications v. Rural Telephone Service Feist Publications, Inc. v. Rural Telephone Service Company, Inc. 499 U.S. ___, 113 L. Ed. 2d 358, 111 S. Ct. ___ (1991).; and, Two Pesos v. Taco Cabana. Two Pesos, Inc. v. Taco Cabana, Inc. 505 U.S. ___, 120 L. Ed. 2d 615, 112 S. Ct. ___ (1992). Though federal law will continue to forbid non-patent protection for published functionality alone, our thesis is that the Copyright Act will continue to protect and for inherently distinctive displays, the Lanham Act will begin to protect the originality and creativity contained in the overall "look and feel" of a computer program including the organization and presentation of user visible collections of functions expressed by the software author.

I. KEY PRINCIPLES SUMMARIZED

From the cases which we describe below, the following principles can be readily ascertained; they will guide the discussion which follows:

  • Competitive principles require that ideas alone, when not patented under federal law and when not maintained as a trade secret under state law, may not be protected and cannot be protected by copyright or trademark law.
  • What is "idea" and what is "expression" in particular computer programs will continue to be determined on a case-by-case basis using the "abstractions" test, the merger doctrine, and published industry standards under the copyright "scenes a faire" doctrine. Compare, Lotus Development Corp. v. Borland International, Inc., 799 F. Supp. 203, 216-219 (D. Mass. 1992) (electronic spreadsheet with menus is idea but overall Lotus 1-2-3 menu-oriented user interface is copyrighted expression) with Apple Computer, Inc. v. Microsoft Corporation, 799 F. Supp. 1006, 1022-1026 (N.D. Cal. 1992) (overall desktop metaphor of Apple Macintosh graphical user interface is idea and dissection of particular elements found to be either licensed material or unprotected ideas.)
  • Original expression in the "look and feel" of computer software is protected by copyright. See, Feist Publications, Inc. v. Rural Telephone Service, 499 U.S. ___, 113 L. Ed. 2d 358, 111 S. Ct. ___ (1991).
  • After Feist, what is "original" is determined by the answer to two questions: First, has the work been independently developed, that is, not simply copied from another source? Second, even if independent, does the work have "some" greater than de minimis level of creativity, that is, in the words of Feist: is the work more than "garden variety," not "so mechanical or routine as to require no creativity whatsoever," not "devoid of even the slightest trace of creativity," and not one "in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent"?
  • Original expression in the "look and feel" of computer software, when inherently distinctive, can be additionally protected as trade dress under the Lanham Act; indeed, Lanham Act protection may become the next major vehicle for legal protection of published computer software.

Under the above principles, "look and feel" protection will extend, in our opinion, to all originality in a computer program's user interface including the original expression of the selection, organization and presentation of user visible functions We agree that a single user visible command should not be protected; however, we disagree with Doug Derwin's view that an entire collection of user visible functions should never be protected. The original selection, organization, and presentation of such commands is, as is the original selection, organization and presentation of data, protected by copyright post-Feist. See, Kregos v. Associated Press 937 F.2d 700 (2d Cir. 1991). The presentation of public domain data upheld as copyrightable by the Second Circuit is attached as Appendix I. whether in menus, graphical displays or other visual or sensory metaphors. The general principles, recited above, as well as the underlying federal statutes and the cases interpreting them all support this treatment.

II. HISTORICAL DEVELOPMENT OF "LOOK AND FEEL" PROTECTION

A. Statutory Development

The Copyright Revision Act was enacted in 1976 and became effective on October 1, 1978. Under the Act, and its legislative history, copyright protection for computer software was confirmed; however, the Act itself did not set forth any particulars for the protection of computer software. Instead, Congress designated the Commission on New Technological Uses ("CONTU") to further investigate the area and to set forth recommendations for further legislation.

In 1978, CONTU issued its report and that report recommended additional legislation which later became the Software Copyright Act of 1980. Curiously, the Software Copyright Act added little; it merely set forth some further definitions and it confirmed that computer programs should be accorded copyright protection in both their source and object code form.

The Software Copyright Act of 1980 and the 1976 Copyright Revision Act showed the general intent of Congress to protect computer programs; however, neither Act was explicit in describing whether protection for a computer program extended beyond source code

The 1980 Software Copyright Act added the definition of "computer program" as "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result." 17 U.S.C. Section 101. Such "statements or instructions" include, without question, source code and object code for a computer program; interactive audiovisual displays or "look and feel" of a computer program, however, is not explicitly

covered by this definition. the originality and creativity contained in the audiovisual displays comprising the user interface or overall "look and feel" for the computer program.

B. Initial Videogame-Based Case Law

Notwithstanding the lack of statutory guidance, a foundation for copyright protection dates back to the early 1980s when computer game audiovisual cases were litigated. One of the more celebrated cases was Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607 (7th Cir. 1982). There, in one of the so-called "PAC-MAN" cases, the Seventh Circuit reversed a lower court's denial of Atari's request for a preliminary injunction against the makers of another audiovisual game featuring a creature called "K. C. Munchkin." The copyright at issue was not reported to be one in the underlying code, but rather an audiovisual copyright in the screen display.

In finding that the plaintiff had met its burden of showing a reasonable likelihood of success on the merits, the Seventh Circuit compared the details of the audiovisual display of the two works, finding that a number of similarities in the PAC-MAN and K. C . Munchkin "gobblers" were the deciding factors in Atari's favor on the question of substantial similarity. Id. at 617-18. While noting that there was not identical copying, the Court found that defendant's game had captured the "total concept and feel" of Atari's game. Id. at 620. The "total concept and feel" was adopted by a number of other federal courts See, e.g., Data East USA, Inc. v. Epyx, Inc., 862 F. 2d 204, 208 (9th Cir. 1988). in computer game cases; in general, copyright was extended broadly to protect the audiovisual displays of this new entertainment medium.

C. The Birth of "Look and Feel"

The videogame cases did not entirely answer the more difficult question of the "look and feel" of non-entertainment software products. Would protection extend, for example, to textual and graphical user interfaces for office productivity applications such as word processors, spreadsheets, databases, and operating environments? It was this question that the cases had not answered. It was this question that our article entitled Copyright in the 'Look and Feel' of Computer Software, vol. 2 Computer Lawyer p. 1 (Feb. 1985) did address. The article was co-authored by Jack Russo and Doug Derwin. Contrary to Doug Derwin's recent recantation, he was fully supportive of "look and feel" as the appropriate term for describing the overall presentation of a computer program's user interface. The article was careful in noting that functions and generic features would not be protected and that protection would extend only to original expression presented by audiovisual displays.

"Look and Feel" then took on a life of its own. The legal community began debating and the Copyright Office began receiving all types of registration applications seeking broader protection. Registering the "look and feel" of all computer programs became routine with such registration made either as part of the registration of the underlying object and source code or as a separate registration of the visual displays based on the deposit of video tapes, slides, or photographs representing sample portions of the display.

D. The Copyright Office's Position

While the cases discussed below were making their way through the courts, the Copyright Office had taken a number of differing positions. The Office originally allowed registration of visual displays as separate audiovisual works (on Form PA) or as separate literary works (on Form TX). The Office then changed its position and held that the registration of the underlying program also protected all elements of its audiovisual display.

Ultimately, the Copyright Office held public hearings starting on September 9, 1987 to obtain comments and recommendations on how it should proceed in this area. At these hearings, three separate views emerged as to the proper procedure to be followed in computer software registration cases. To some degree these views also represented the conflict which then existed and which still exists within the industry on the broader question of how the Copyright Act should be interpreted in computer program cases.

The majority view, supported by a number of industry associations, recommended that the Copyright Office continue to allow a single registration to cover the entire work including visual displays. Under this view, the registrant would also have the option of submitting additional deposit material and/or an additional application for visual displays. A modified version of the majority view suggested that the Copyright Office develop a new registration form specifically designed for computer software applications, one which would more specifically cover registration of all aspects of the originality embodied in a computer program. The majority position was supported by the need for a uniform Copyright Office practice, by the need to not prejudice existing registrations and by the desire to allow for flexibility in the future.

A second view, supported mainly by Apple Computer, argued for a requirement of separate registration applications for visual displays and underlying program code. The position was supported by the desire to have independent registrations as evidence of independent copyright protection of subject matter (visual displays) which may exist across differing computer program code and differing computer hardware. In this manner, it was argued, it would be clearer that an infringement of visual displays can occur independent of any infringement of the underlying program code and independent of the particular computer hardware on which the substantially similar visual displays were made to operate.

A third view, supported by some user-oriented associations, suggested that the Copyright Office should not allow any registration of visual displays of computer software. It was argued that such displays are generally functional and, therefore, generally not copyrightable. In response, the Copyright Office noted that each case must be examined separately and that Congress and the Courts (and not the Copyright Office) determine blanket rules for eligibility and ineligibility of subject matter for copyright. Original works of authorship embodying expression are properly the subject matter of copyright regardless of whether such works are presented in the form of visual displays of computer programs.

In June of 1988, the Copyright Office issued a report and internal guidelines which upheld a single registration application practice for protection of all aspects of a computer program's originality including visual displays. 36 Patent, Trademark & Copyright Journal (BNA) at p. 155 (1988). Whether the registration application is made on Form TX (for literary works) or Form PA (for audiovisual works) turns on which aspect of the work "predominates." In either case, however, the applicant can submit deposit material to support the areas

in which protection is sought. By this mechanism, the Copyright Office, in effect, confirmed, at least at the examination and registration levels but for practical purposes even further, that copyright protection can subsist beyond the literal program code for the computer software and to the "look and feel" of the computer software and perhaps even beyond that.

The three views expressed in the Copyright Office roughly correspond to the views also found in the conflicting judicial opinions addressing these same issues: like Apple's position in the Copyright Office, one body of case law provides broad protection; another would provide only limited or narrow protection (as suggested by some of the user associations in the Copyright Office hearings); and the most recent cases appear to take a middle ground approach of protecting certain user interface elements on a case-by-case basis (somewhat similar to the majority view in the Copyright Office). No U.S. Supreme Court case has yet directly resolved the conflicting decisions. We address each group of cases in turn below.

E. Cases Favoring Broad Protection

A number of cases have favored broad protection of computer software. In general, their rationale is that the "idea" of a computer program can be stated narrowly and everything else may be properly considered "expression" subject to copyright protection.

1. Whelan v. Jaslow

Though not strictly a "look and feel" case, the decision in Whelan Associates, Inc. v. Jaslow Dental Laboratory Inc., 797 F.2d 1222 (3d Cir. 1986), extended the scope of copyright protection for computer programs and provided a foundation for a number of later software cases.

In Whelan, the Third Circuit upheld the trial court's finding of copyright infringement based upon the defendant's copying of the "structure, sequence and organization" of plaintiff's software. While recognizing that copyright protection does not extend to the "idea" or functionality of the program, the Court found that similarities in the file structures, screen outputs and certain subroutines, while not comprising a majority of the total number of lines of code in defendant's software, were similarities in "expression," and therefore constituted copyright infringement. Id. at 1238-39.

In so finding, the Court set forth a test for determining the line between unprotectable ideas and the protectable expression of those ideas which test favors finding protectable expression:

[T]he line between idea and expression may be drawn with reference to the end sought to be achieved by the work in question. In other words, the purpose or function of a utilitarian work would be the work's idea, and everything that is not necessary to that purpose or function would be part of the expression of the idea.

797 F. 2d at 1236 (emphasis in original).

In applying the above rule, the appellate court quoted from the District Court record:

Different computer systems may functionally serve similar purposes without being copies of each other. There is evidence in the record that there are other software programs for the business management of dental laboratories in competition with plaintiff's program. There is no contention that any of them infringe although they may incorporate many of the ideas and functions.

797 F. 2d 1238-39.

Thus, the Whelan decision not only extended copyright protection beyond literal copying of the program code itself, to the structure, sequence, and organization of that code, but also formulated a broad test which limited unprotectable "ideas" to only those "necessary to the program's purpose or function" and everything else is or could be protectable expression. Computer software compatibility, ease of use, user training and "industry standards" play no obvious role in this analysis.

2. Broderbund v. Unison World

In Broderbund Software. Inc., v. Unison World, Inc., 648 F. Supp. 1127 (N.D. Cal. 1986), the district court for the Northern District of California followed the precedent set in Whelan of protecting the program's sequence, organization and structure, but the Court applied and extended this principle to the protection of the program's visual displays. While the plaintiff originally made a number of claims pertaining to its greeting card application program called "The Print Shop," only the question of infringement of the audiovisual copyright in the screen displays was tried to the court. Id. at 1129.

In rejecting the argument that the functionality of the program dictated the expression of its user interface, the District Court noted that:

On the "Choose a Font" screen, no mechanical or practical factor compelled [defendant] to use those exact words ("Choose a Font"). He could have written: "Select a Font," or "Indicate a Typeface Preference," or "Which Type Style Do You Prefer," or any combination of these terms. . . .The bottom line is that the designer of any program that performed the same functions as "Print Shop" had available a wide range of expression governed predominantly by artistic and not utilitarian considerations.

Id. at 1134. (Emphasis added.)

On the question of sufficient similarity to justify a finding of infringement, the District Court said "[t]he question is whether the infringing work captures the 'total concept and feel' of the protected work." Id. at 1137. In finding infringement, the Court stated that "[t]he ordinary observer could hardly avoid being struck by the eerie resemblance between the screens of the two programs. In general, the sequence of the screens and the choices presented, the layout of the screens, and the method of feedback to the user are all substantially similar." Id.

Thus, the Broderbund court used the holding in the Whelan case to extend the protection of audiovisual copyrights in computer programs beyond their literal displays. The court also implied, without directly addressing, that a single copyright in the greeting card program would protect all original aspects of the program. Id. at 1135.

3. Digital Communications v. Softklone

In Digital Communications Associates, Inc. v. Softklone Distributing Corp., 659 F.Supp. 449 (N.D. Ga. 1987), the plaintiff's predecessor-in-interest had developed a telecommunications program, called CROSSTALK XVI, which allowed users of personal computers to telecommunicate information to other computer users through a modem.

The defendant, Softklone Distributing Corporation ("Softklone"), was created for the purpose of "cloning" popular software products such as plaintiff's CROSSTALK XVI. Softklone's idea and business plan was to create less expensive versions of popular software created with independently written source code, but having the same functions, user interface, and overall look and feel as the more expensive products. Softklone's first product, called "MIRROR," was designed to have and advertised to have the same user interface as plaintiff's CROSSTALK XVI. The justification for this was the opinion of Softklone's legal counsel that "the source and object codes of the CROSSTALK XVI computer program and the CROSSTALK XVI user manual were copyrightable but that use of a similar or identical screen display would not constitute copyright infringement because the status screen was not copyrightable." Id. at 453.

The district court first acknowledged Whelan, holding that copyright protection can extend to non-literal aspects of the program. Id. at 455. The court declined, however, to embrace the argument that the copyright protection subsisting in the underlying program also extended to the visual display of that program, finding instead that the two aspects constitute two separate works of authorship and therefore require two separate copyright registrations. Id. at 455-56.

Most importantly, the Court found that the status screen A copy of the status screen at issue appears as Appendix II to this article., even though only a single display of a number of parameters and commands, was protectable expression and was copyrightable as an arrangement and compilation of such information independent of its underlying program code. The Court noted but distinguished the Synercom case, the same case later embraced by the Fifth Circuit:

It appears that the [Synercom] court concluded that the idea of the format cards, i.e., a particular sequence of data, had merged with the expression of the format cards, i.e., the sequence of the format card....That is, the idea of the sequence of data necessitated a particular expression of that sequence on the format cards. To the court, the format cards evidenced no stylistic creativity above and beyond the sequence of data. In the instant case, however, the arrange- ment of the status screen involves consider- able stylistic creativity and authorship above and beyond the ideas embodied in the status screen. It cannot be said that the idea of the status screen, i.e., using two symbol commands to change the operations of the computer program and reflecting that fact on a screen listing the computer program's parameters/commands with their operative values, could not have been expressed in a large variety of ways. The defendants have never contended that they could not have arranged the parameters/commands in a wide variety of patterns without hampering the operation of their program. The para- meters/commands could have been arranged and delineated in an almost infinite number of horizontal and vertical patterns and groupings that would be substantially dissimilar to the arrangement and grouping utilized by plaintiff. Likewise, the defendants could have used a wide variety of techniques to indicate which symbols the user should type to effectuate a command, e.g., different symbols could have been chosen, or simply highlighting, or capitalizing, or underlining the appropriate symbols in parenthesis or brackets before or after the parameter/command. The modes of expression chosen by the Plaintiff for its status screen are clearly not necessary to the idea of the status screen. Therefore the plaintiff's mode of expression of the status screen does not merge with the idea of the status screen. Id. at 460. (emphasis added.)

Thus, Digital Communications stands for the proposition that static visual displays of computer programs, even though entirely textual in nature, can be protected by copyright even if all of defendant's underlying program code is original and not substantially similar to the plaintiff's program code. The Court's decision required, however, that a copyright registration separate from that on the underlying program code be obtained for the visual displays of the program -- a requirement in direct conflict with the then existing and still current practice within the Copyright Office.

4. Lotus v. Paperback; Lotus v. Mosaic

In January of 1987, Lotus Development filed suit against Paperback Software and separately against Mosaic Software claiming that each defendant had developed an infringing "clone" of the now famous Lotus 1-2-3 spreadsheet software. In a related matter, Software Arts, the developer of the original VisiCalc spreadsheet software filed a separate action against Lotus claiming that Lotus 1-2-3 was an infringement of VisiCalc and that such infringement claims could be brought by Software Arts -- even though Software Arts had conveyed all right, title, and interest in the VisiCalc computer program copyrights to Lotus in an earlier business transaction. The District Court granted Lotus' motion dismissing the Software Arts' action and confirming that Lotus had acquired all rights, including all claims, as part of the transaction.

Mosaic Software, Inc. ("Mosaic") designed, developed and marketed a spreadsheet software product called the "TWIN," along with several other related software products. The name "TWIN" is no coincidence as the product was designed to work like Lotus' 1-2-3 and Mosaic's advertising proclaimed that the "TWIN" software product "offers you so much more, for so much less."

Paperback Software International ("Paperback") published a spreadsheet software product called "VP Planner." Though the name did not suggest it, the packaging for the product made clear that the product "has everything 1-2-3 has ... with more features and with more functions."

While both Mosaic's TWIN and Paperback's VP Planner had most of the same features, commands, macro language, syntax, organization and sequence of menus and messages as Lotus' 1-2-3, their visual displays were not identical to 1-2-3 or to each other. Both TWIN and VP Planner reorganized and placed their

respective menus, sub-menus, prompts and messages on the bottom of the screen.

Paperback differentiated itself further by adding function numbers and letters in front of certain commands and TWIN added an indicator of the amount of internal memory available to the user. Both products can, however, read Lotus files without modification including Lotus macro files and the Lotus user will find much familiarity in the overall "look and feel" of these products.

Lotus' complaints against Mosaic and against Paperback both pled three claims: copyright infringement, false and misleading advertising, and unfair competition. Both actions sought injunctive relief, seizure, impoundment, recovery of profits, actual or statutory damages, punitive damages "in an amount to be determined at trial, but no less than $10,000,000" and reimbursement for attorney's fees and costs.

Both complaints charged that each product "is copied from, and is substantially similar or identical to:"

  • the organization, structure and sequence of
  • the instructions, command and menu language
  • the macro commands and syntax of 1-2-3
  • the organizational and structural expressions of 1-2-3
  • the visual displays and screen images of 1-2-3
  • the content and format of video displays of 1-2-3
  • the sequence of the video displays of 1-2-3
  • the displayed instructions and language of 1-2-3

On June 28, 1990, Judge Keeton of the Federal District Court in Boston entered a 110 page decision upholding the copyright in the user interface of Lotus 1-2-3, an electronic spreadsheet. The Court ruled that "[t]his particular expression of a menu structure is not essential to the electronic spreadsheet idea, nor does it merge with the somewhat less abstract idea of a menu structure for an electronic spreadsheet....the overall structure, the order of commands in each menu line, the choice of letters, words, or 'symbolic tokens' to represent each command, the presentation of these symbolic tokens on the screen, the type of menu system used, and the long prompts -- could be expressed in a great many if not literally unlimited number of ways." Lotus Dev. Corp. v. Paperback Software Int'l, 740 F.Supp. 37, 67 (D.Mass. 1990).

Judge Keeton provided a primer on computer law, on copyright law, and a detailed three-part legal test for copyrightability of the non-literal elements of computer programs:

a. Scale of Abstractions

The Court provided a three-part test:

"FIRST, in making the determination of 'copyrightability,' the decision-maker must focus upon alternatives that counsel may suggest, or the court may conceive, along the scale from the most generalized conception to the most particularized, and choose some formulation -- some conception or definition of the 'idea' -- for the purpose of distin- guishing between the idea and its expression." (Id. at 60; emphasis in original).

This first step may be called: extrapolating a "Scale of Abstractions." The Court considers, in effect, how broad or how narrow copyright protection could be in a particular case. This is required in copyright cases because, unlike patents, there are no written claims in copyright registration applications or in issued copyright registration certificates.

b. Essential Elements of the Idea

The Court then went on to explain how the fact-finder should attempt to distinguish idea from expression:

"SECOND, the decision-maker must focus upon whether an alleged expression of the idea is limited to elements essential to expression of that idea (or is one of only a few ways of expression the idea) or instead includes identifiable elements of expression not essential to every expression of that idea.

This second step may be called: determining the "Essential Elements of an Idea." In practice, the Court reviews other software products in the same field to determine those shared elements which, in effect, define the particular product area; in this case, the Court noted that most electronic spreadsheet programs include rows, columns, cells, command menus, messages, and macro languages as essential elements of the idea of an electronic spreadsheet -- but the exact manner of expressing the menus, messages, and language differs among the various products.

c. Substantiality of Expression

Finally, the Court explained the last step of the analysis which involves evaluating the resulting product:

"THIRD, having identified elements of expression not essential to every expression of the idea, the decision-maker must focus on whether those elements are a substantial part of the allegedly copyrightable 'work.'"

This third step requires judging whether particular elements individually or, more importantly, when taken as a whole, are not so trivial (in the Court's words "not so obvious") that sufficient originality exists to merit copyright protection. For example, and as found by the Court, each command word in the Lotus macro language would not be substantial enough to protect individually but, the command language, as a whole, is protected: "The fact that some of these specific command terms are quite obvious or merge with the idea of such a particular command term does not preclude copyrightability for the command structure taken as a whole. If particular characteristics not distinctive individually have been brought together in a way that makes the 'whole' a distinctive expression of an idea -- one of many possible ways of expressing it -- then the 'whole' may be copyrightable." Id. at 67.

The Lotus v. Paperback decision clearly confirmed a policy of broad protection of copyright for computer software in all of its various forms of originality. More importantly, the Court's decision opens the door to further expansion of copyright for voice, audio, and other non-traditional forms of user interfaces. In theory, voice, audio, touch and other forms of sensory perception, if original and if "fixed" in some form of expression, can be protected by copyright if, in the Court's words, "the overall structure, the order of commands..., the choice of letters, words, or 'symbolic tokens' to represent each command...." and other features may be expressed in a number of other ways. Id. at 67. Under the above line of cases, copyright is extended broadly without an overly strong concern for competitive principles.

F. Cases Favoring Competitive Principles

A number of the cases took a more strictly competitive approach to determining what is copyrightable "expression" in computer software cases. We discuss these cases below.

1. Synercom Technology v. University Computing

In Synercom Technology Inc. v. University Computing Co., 462 F. Supp. 1003 (N.D. Tex. 1978), the Court issued an early potential blow to copyright protection of visual displays -- even though the case itself did not, strictly speaking, deal with the subject of visual displays. Rather, the Court was faced with the question of whether plaintiff's sequencing of data input formats for a statistical analysis program could be protected by copyright.

The Court rejected the plaintiff's position and held that the sequence and ordering of data input was unprotected idea; in dicta, the Court stated that a further ground for finding no copyright protection was that the plaintiff's input formats were "blank forms" whose idea had merged into its expression. Id. at 1013-14.

The Synercom court analogized the sequence and ordering of the plaintiff's forms to the familiar "H" clutch pattern used in stick shift automobiles. The court reasoned that another automobile maker would be free to come along and create another car using the same "pattern," and that to allow such copying would be "socially desirable" because "admittedly there are many more possible choices of computer formats, but this does not detract from the force of the analogy." Id.

For the Synercom court it was enough that the input formats represented a barrier to third parties who wished to be able to have their programs also use data which had already been formatted for the plaintiff's program; accordingly, the Court gave priority to compatibility and competition. Taken to its limits, the rationale in Synercom would prevent the use of copyright whenever competitors need third party information (such as compatible screen displays) to take advantage of an installed base of users and user training. This is one of the most critical issues in litigation in the recent cases.

2. Plains Cotton v. Goodpasture Computer

In Plains Cotton Co-op v. Goodpasture Computer Service, Inc., 807 F. 2d 1256, 1262 (5th Cir. 1987), the Court of Appeals for the Fifth Circuit affirmed the District Court's denial of a preliminary injunction which plaintiff sought for the purpose of enjoining, prior to trial, "organizational copying" which Defendants submitted were due to the methods of the cotton industry for which the program was designed.

In Plains Cotton, the plaintiff, an agricultural cooperative, had developed computer software called the "Telcot system." The Telcot system operated on a mainframe computer and, through telecommunications, permitted cooperative members to obtain regularly updated displays of information pertaining to cotton prices and availability as well as accounting and order processing. The individual defendants had worked on the development of the Telcot system for plaintiff but "[n]one of these employees was required to sign confidentiality agreements as a condition of his employment with Plains." 807 F. 2d at 1258.

The individual defendants thereafter left Plains and went to work for a company called CXS. Plains and CXS had previously entered an agreement whereby CXS was licensed to create a personal computer version of the Telcot system with both parties becoming joint owners of the resulting work. When the individual defendants left to join CXS, Plains sought to terminate the licensing arrangement. Thereafter, CXS became insolvent and filed for bankruptcy. Apparently, while CXS was bankrupt, Plains and CXS reached an agreement regarding termination and regarding Plains' option to purchase all rights in the software that had been created up to that time. Plains did not exercise this option.

The corporate defendant, Goodpasture Computer Service, Inc. ("Goodpasture") thereafter hired the individual defendants and put them to work on the personal computer version of the Telcot system. Just twenty days after arriving at Goodpasture, the former Plains employees had completed a design of the personal computer version of the Telcot system and just several months later, Goodpasture began marketing it under the name "GEMS."

The District Court found that the four former Plains employees had access to the Telcot system, that one of them had brought a diskette containing Telcot system programming design information to Goodpasture, and that at least one Telcot subroutine had been copied into and as part of the programming for GEMS. Nevertheless, the District Court refused to enter a preliminary injunction because of its finding that the underlying program code for the two programs had not been copied (with the exception of the one subroutine which was replaced as of the date of the preliminary injunction hearing). The Appellate Court affirmed and in doing so, made clear that it was not prepared to embrace a broad scope of protection for software copyrights:

The legal finding by the district court ultimately rests on a judgment about the extent of the protection offered by appellant's copyright. On that issue, we look to our colleague Judge Higginbotham's opinion in Synercom Technology Inc. v. University Computing Co., 462 F. Supp. 1003 (N.D. Tex. 1978). In that case, Judge Higginbotham held that "input formats" of a computer program--the organization and configuration of the information fed to the computer--were ideas, not expressions, and thus were not protected by copyright. 462 F. Supp. at 1014.
To the extent that input formats represent a level of computer software design more specific than functional design and more general than line-by-line program design, the issue of their copyrightability is relevant to the issue of whether GEMS infringes on protected Telcot designs. Appellant urges that we adopt the reasoning of Whelan Associates. Inc. v. Jaslow Dental Laboratory Inc., 797 F. 2d 1222 (3rd Cir. 1986), which admittedly is "at odds with Judge Higginbotham's scholarly opinion." Id. at 1239. Whelan rejects the premise developed in Synercom that "there [is] a difference between the copyrightability of sequence and form in the computer context and in any other context," id. at 1240, holding that the structure, sequence, and organization of computer programs are copyrightable. We decline to embrace Whelan for two reasons. First, the issue is presented to us on review of a denial of a motion for a preliminary in- junction. Thus, the record is only partially developed, and our review is one step removed from the actual merits of the case. Second, appellees presented evidence that many of the similarities between the GEMS and Telcot pro- grams are dictated by the externalities of the cotton market. To that extent, the facts of this case fit squarely within Synercom's powerful analogy to the hypothetical develop- ment of gear shift patterns. 462 F. Supp. at 1013. The record supports the inference that market factors play a significant role in determining the sequence and organization of cotton marketing software, and we decline to hold that those patterns cannot constitute "ideas" in a computer context.

807 F. 2d at 1262 (emphasis added).

In a footnote further explaining the phrase "externalities of the cotton market" which "play a significant role in determining the sequence and organization of cotton marketing software," the Fifth Circuit Court states:

For example, appellees' witnesses testified that their cotton marketing program was de- signed to present the same information as is contained on a cotton recap sheet, within the confines imposed by use of a computer. By contrast, appellant's expert witness admitted on cross-examination that he had no knowledge of the cotton recap sheet, and thus could not comment on whether the similarity between GEMS and Telcot arises from an attempt of both programs to convey the same standardized information to the user.

807 F. 2d at 1262 n. 4.

The Fifth Circuit thus concluded that Plains Cotton had failed to demonstrate that the District Court's factual findings were clearly erroneous or that its findings of law were incorrect. This decision was the first officially reported post- Whelan appellate decision to not find or affirm an infringement based on less than a literal copying of underlying program code.

While finding that defendant's program was "very similar to Telcot on the functional specification, programming and documentation levels," the Court refused to follow Whelan and instead held, that at that early stage of the litigation where no adjudication had yet occurred, the structure, sequence, and organization of the plaintiff's program was not necessarily expression but could, as a factual matter, be found after trial to constitute an unprotectable "idea." Id. at 1262.

Thus, the Fifth Circuit held that whether structure, sequence, or organization of a computer program is protected expression or unprotectable idea must be determined factually on a case-by-case basis by looking at the computer program in the context of the particular industry in which it is employed and whether that industry of necessity demands that the visual displays of such programs be organized in a certain manner because of the custom and practice in the particular industry in which the computer program is designed to operate.

Similar to Synercom, the holding lends support for the argument that software compatibility, ease of use, user training and "standards" play an important role in determining whether copyright will attach to a particular program and, if so, the scope of copyright protection which will be afforded to the particular program.

3. Data East USA v. Epyx

In Data East USA. Inc. v. Epyx Inc., 862 F.2d 204 (9th Cir. 1988), the Ninth Circuit reversed the finding of copyright infringement by the District Court after trial and held that the similarities between the plaintiff's and defendant's respective "Karate" video games were dictated by the functions of the game and not by their expression. The Ninth Circuit stated that:

After careful consideration and viewing of these features, we find that they necessarily follow from the idea of a martial arts karate combat game, or are inseparable from, indispensable to, or even standard treatment of the idea of the karate sport. As such, they are not protect- able. "When idea and expression co- incide, there will be protection against nothing other than identical copying." Krofft, 562 F.2d at 1168. A comparison of the works in this case demonstrates that identical copying is not an issue. Accordingly, we hold that the court did not give the appropriate weight and import to its findings which support Epyx's argument that the similarities result from unprotectable expression....The lower court erred by not limiting the scope of Data East's copyright protection to the author's contribution -- the scoreboard and back- ground scenes. In actuality, however, the backgrounds are quite dissimilar and the method of scorekeeping, though similar is inconsequential. (emphasis in original).

The Ninth Circuit's decision is important for a number of reasons. First, it demonstrates that what is "idea" and what is "expression" is determined on a case-by-case basis with no assurance or certainty of outcome. Second, when the evidence of two competing works is viewable without reference to testimony, the Ninth Circuit will review and may reverse opposing factual findings of the District Court. Third, in the Ninth Circuit's view, even "thin" copyrights -- where expression is close to idea -- are protected against identical copying.

G. Cases Taking An Analytic (Screen-by-Screen) Approach

The more recent cases have taken a more analytic approach in which audiovisual expression is protected on an element-by-element or screen-by-screen basis. This approach correctly discerns those screens and those elements of those screens which are disqualified from copyright protection by doctrines of functionality, merger, scenes a faire, lack of creativity, or lack of originality. However, in the course of analytic dissection, concern exists that courts may fail to appreciate the overall originality and creativity existing in the selection, organization and presentation of the collection of even public domain screens or public domain elements on particular screens or the creative sequencing of such screens from one to another.

1. Manufacturer's Technologies v. CAMS

In Manufacturer's Technologies, Inc. v. CAMS, Inc., 706 F. Supp. 984 (D. Conn. 1989), the Court analyzed the copyright protection which extended to a cost estimating computer program called the "COSTIMATOR." The program contains a series of screens which allow the user to input the necessary information to generate a cost estimate. The defendants, three of which had acted as plaintiff's sales representatives for the COSTIMATOR program, began development of a functionally similar program to sell for $1000 to $2500 (as compared to the $20,000 price for plaintiff's program). Plaintiff brought suit for, among other things, copyright infringement based on the similarity of the screen displays in defendants' software.

The District Court found copyrightability in the screen displays alone without regard to the underlying program code and also found that defendants had infringed the visual display copyrights. The District Court relied upon the Copyright Office's decision, in part, and stated that:

Whether a copyright in a computer program extends to its screen displays has been the subject of some confusion and dis- agreement. Part of this confusion was relieved by a recent decision of the Copyright Office which stated that a single copyright registration of a computer program extends copyright protection not only to the literal elements of the program -- its source and object codes -- but also to the screen displays it generates to the extent that they contain original creative authorship.

Id. at 990-991.

The District Court went on to review the Whelan, Broderbund, and Digital Communications decisions and to hold that:

The Court could require the plaintiff to prove infringement of the program copyrights themselves by showing not only substantial similarity in the program codes (or by showing that portion of the program coding represented by the screen outputs was such a qualitative part of the program itself that the program was infringed). The downfall of such an approach is that if, in fact, the infringing party only reverse engineered the screen displays themselves without having had access to the source or object codes, then the plaintiff's task in showing infringement of the computer program itself, would be dif- ficult, if not insurmountable. Such an approach would afford little, if any protection to the expression that may be encompassed within the user interface or screen displays of a program.

Id. at 993.

Using the above reasoning, the District Court in CAMS treated the copyright registration of the computer program as protecting both the underlying program code as well as independently providing protection for the visual display. As a result, the Court found that though the underlying computer program may not have been copied, the defendants' access to and the similarity of defendants' product to the screen displays of plaintiff's program were sufficient to support a finding of infringement (though the Court did note those areas where the similarities were not sufficient for infringement).

Significantly, the Court rejected the argument that the "external flow and sequencing of the screens" for a cost- estimating program is dictated by functional considerations and the Court pointed to evidence of four different cost estimating programs which all accomplished the same cost-estimating functions but without using similar screen displays or sequences of displays. Id. 994. The District Court concluded that the similarities between the visual displays and the sequence of visual displays constituted an infringement even though there was "no evidence that the defendants had access to the plaintiff's source code nor did plaintiff put forth any evidence of source or object code similarity." Id. at 1000.

2. Apple v. Microsoft and Hewlett-Packard

On March 17, 1988, Apple Computer, Inc. ("Apple") filed suit in the federal district court in San Jose against Microsoft Corporation ("Microsoft") and Hewlett-Packard Company ("H-P"). Apple claimed that version 2.03 of Microsoft's Window's operating environment computer software and H-P's New Wave desktop computer software which operates with Windows, both infringed the audiovisual copyrights in Apple's Macintosh visual displays and images.

Since its introduction in the Apple Lisa personal computer in 1983, the Macintosh "desktop metaphor" has become a hallmark of Apple's approach to non-educational (non-Apple II) personal computers. The desktop metaphor embodied in the Macintosh personal computer built on the work originally developed by Xerox in the sophisticated "Xerox Star" personal computer. Xerox never successfully marketed the Star, and Xerox has since exited the hardware side of the personal computer marketplace.

Apple has been quite successful with the Macintosh. It has also been quite successful in having the Copyright Office register the Macintosh desktop and application software visual displays as audiovisual works and the Macintosh program code as literary works. The registration certificates attached to the complaint showed that Apple attempted to register all aspects of authorship embodied in the Macintosh computer programs including their audiovisual displays.

In 1985, Apple first tested the strength of its Macintosh copyrights in a matter that never went to litigation. Digital Research, Inc. ("DRI") had introduced a desktop environment called "GEM" which was not unlike the Macintosh. Apple's threat of litigation resulted in an agreement between Apple and DRI whereby DRI purportedly paid Apple a substantial amount, and Apple granted DRI the right to market a revised version of its GEM desktop software. The exact terms of the settlement were never made public, but it is clear that DRI acknowledged the substantial risk of adverse results. DRI still markets the "GEM" windowing software environment though to some degree it has been supplanted by Microsoft's introduction of its "Windows" environment for IBM and IBM-compatible computers.

Like its case against DRI, Apple's case against Microsoft and HP claimed infringement of its graphic user interface.

In an early decision, the District Court found that certain screen displays were licensed by Apple to Microsoft under the terms of a written non-exclusive "license to use these derivative works in present and future software programs." This license agreement was the subject of some intense license negotiations between Apple and Microsoft at a time when Apple was in need of additional software applications from Microsoft. The negotiations are described by John Sculley in his autobiography entitled Odyssey.

In the litigation, Microsoft acknowledged that certain visual displays in its WINDOWS operating environment were licensed from Apple and "are derivative works of the visual displays generated by Apple's Lisa and Macintosh graphic user interface programs." 709 F. Supp. at 927. Upon the court's finding that the license agreement extended beyond a single version of WINDOWS, a large number of screen displays and elements contained therein which might otherwise have been the subject of the copyright infringement action were removed from the controversy by summary judgment in Microsoft's favor with regard to the licensing issue.

Notwithstanding the adverse determination on the license issue, Apple submitted a list of 189 alleged similarities in categories such as:

1. design and appearance of application windows;
2. design and appearance of dialog boxes;
3. menu design and appearance;
4. design and appearance of individual applications ;
5. icon design, appearance, and manipulation; and
6. arrangement and manipulation of application windows.

In discussing the problem of determining idea and expression, the Court noted the "metaphysical line drawing between idea and expression by which courts rationalize their decisions." Apple v. Microsoft, 779 F. Supp. 133, 135. Further, the Court initially accepted Apple's argument in favor of the overall "look and feel" protection for the Macintosh user interface:

Accordingly, the court concludes that even if elements are found 'unprotectable,' they should not be eliminated from the substantial similarity of expressions analysis. Instead, if it is determined that the defendant used the unprotectable elements in an arrangement which is not substantially similar to the plaintiff's work, then no copyright infringement can be found. If, on the other hand, the works are deemed substantially similar, then copyright infringement will be established even though the copyrighted work is composed of unprotectable elements. There is simply no other logical way of protecting an innovative arrangement or 'look and feel' of certain works. Id. at 136.

Upon reconsideration, in its most recent decision, the District Court ultimately rejected Apple's approach and instead stated:

To the extent the individual features of the Macintosh interface are licensed or are unprotectable they are together, or in conjunction with the protectable features, claimed as a copyrightable arrangement - a "look and feel" which constitutes protectable expression apart from its individual elements.

Apple v. Microsoft, 799 F. Supp. 1006, 1022.

The claimed unifying idea of the Lisa and Macintosh works is 'an interface suggestive of an office environment with a desktop background, implementing through animated graphical images and fanciful symbols what has been referred to as a 'desktop metaphor.' Id. [I]f "desktop metaphor" is to have any meaning in the context of a traditional copyright analysis, it should serve merely as a label for that group of "ideas" embodied in the Macintosh interface devoted to utilitarian uses of that computer, or as a shorthand way of describing the purpose or object of the panoply of ideas of multiple windows, iconic representation and manipulation, menus and object opening and closing functions to assist computer users in operation of their machines. "Desktop metaphor" does not describe the single unifying idea of the Macintosh interface, but is simply another name for the type of interface used on the Macintosh and is by no means exclusive to it. Id. at 1026.
3. Lotus v. Borland

In Lotus Development Corp. v. Borland International, Inc., 799 F. Supp. 203 (D. Mass. 1992), Judge Keeton applied the principles enunciated in Lotus v. Paperback but in a more detailed manner with respect to Lotus' contention that Borland's Quattro and Quattro Pro programs infringe its Lotus 1-2-3 spreadsheet program by copying Lotus 1-2-3's menu commands, menu structure, long prompts, and keystroke sequences.

Unlike the Paperback VP Planner and Mosaic TWIN products (which were literally "clones" of the visual displays of the Lotus 1-2-3 spreadsheet program), Borland's Quattro programs had several interfaces. The "native" interfaces had a different interface than Lotus 1-2-3. However, the Quattro programs had an interface available to users called its "1-2-3 interface" or "emulation interface."

To create the emulation interface, Borland employees reviewed books about 1-2-3 written by third-parties, which books contained schematic or menu-tree type representations of the Lotus 1-2-3 menu hierarchy. They used these hierarchies to construct Quattro programs that copied the relationships (though, Borland contends, not the overall presentation) of the Lotus

1-2-3 menu hierarchy. Judge Keeton agreed in a previous ruling that: "It is not enough for a plaintiff to prove great similarity of the allegedly infringing work to uncopyrightable parts of the copyrighted work." 788 F. Supp. at 84.

In his last reported ruling in the matter, Judge Keeton denied Borland's motion for summary judgment and granted, in part, Lotus' motion for summary judgment finding that:

1. "Lotus acknowledges that any elements of its program that were functionally dictated are not copyrightable."
799 F. Supp. at 210.
2. "[T]he fact that a form of expression takes on functional character does not remove it from the protection of copyright." 799 F. Supp. at 213.
3. The "scale of abstractions" available to describe the "idea" of the Lotus 1-2-3 user interface varies from most general to most specific as follows:
(a) "an electronic spreadsheet" to
(b) "a menu-driven electronic spreadsheet" to
(c) a "hierarchical menu-driven electronic spreadsheet" to
(d) a "hierarchical menu-driven electronic spreadsheet whose commands are all accessible through the paths of the menu command hierarchy" to
(e) the most specific implementation by Lotus in Lotus 1-2-3 of such a hierarchical command-driven interface.

Judge Keeton accepts the fourth approach described in sub-paragraph (d) above as the correct statement of the "idea" thus leaving the actual implementation of Lotus 1-2-3 as potentially copyrightable "expression" in the Lotus 1-2-3 interface.

4. "The admitted fact that the Quattro program duplicate the set of 'functional relationships' of Lotus 1-2-3 and were designed to do so is conclusive against Borland on the issue of copying that set of functional relationships. Thus, Borland has admitted that it intentionally incorporated into its user interface the 1-2-3 menu commands and menu command hierarchy." 799 F. Supp. at 208.
5. "Borland did not obtain the right to expressive aspects of Lotus' command hierarchy merely because -- if it be the case -- the 1-2-3 program revolutionized the spreadsheet market." 799 F. Supp. at 214.
6. "[T]he menu commands and menu command hierarchy look the same in both programs....The emulation interfaces are substantially similar in the mixed law-fact sense to the Lotus 1-2-3 user interface. (Returning to the metaphor, one may say that is why they 'feel' the same.)" 799 F. Supp. at 220-221.

Notwithstanding the above findings, the District Court has ordered a jury trial "because the scope of relief available will depend on whether the jury finds for Lotus on disputed factual contentions that the copying of separable expressive elements of the Lotus 1-2-3 user interface into the Quattro programs was greater than the minimum essential to constituting a substantial part of the Lotus 1-2-3 work." 799 F. Supp. at 223.

In effect, the District Court has determined copyrightability, has rejected defenses to the same, and has left to the jury the question of whether the degree of incorporation of the Lotus

1-2-3 menu commands and menu command hierarchy is a substantial enough taking of a competing work to constitute an infringement. Under this approach, Borland can submit the evidence of the importance of software compatibility, ease of use, user training and "industry standards" for evaluating the alleged infringement.

4. Brown Bag v. Symantec

In Brown Bag Software v. Symantec Corp., 960 F. 2d 1465, 1476 (9th Cir. 1992), the Ninth Circuit upheld a summary judgment granted by the District Court against a plaintiff seeking protection of the user interface of an outlining software product. Dave Winer was the originator of outlining computer software for a personal computer. His company, Living Videotext, developed products called ThinkTank (for the IBM PC) and MORE (for the Apple Macintosh). These products take the metaphor of outlining and automate it through use of a personal computer. After Living Videotext released ThinkTank and MORE, John Friend developed for Brown Bag a "clone"-like competitive product (originally marketed as shareware) called PC-OUTLINE. For a number of reasons, Living Videotext did not pursue an infringement claim against John Friend or against Brown Bag.

Living Videotext ultimately merged into Symantec and Symantec marketed both ThinkTank and MORE. After the merger, Symantec hired John Friend to revise ThinkTank and MORE to the next level of innovation for an outlining product. John Friend ultimately developed for Symantec an advanced outlining product called GRANDVIEW. After GRANDVIEW was released (and just before Symantec's initial public offering), Brown Bag filed suit in the District Court claiming copyright and trade dress infringement of PC-OUTLINE by Symantec's GRANDVIEW software product.

The District Court granted summary judgment in favor of Symantec on the copyright claims. 12 U.S.P.Q.2d (BNA) 1191 (N.D. Cal. 1989). The District Court's opinion did not address the Lanham Act trade dress issues. The Ninth Circuit affirmed the District Court's ruling on the copyright claims but remanded the action for the District Court's consideration of the Lanham Act claims.

The Ninth Circuit's approach expressly affirms detailed analytical dissection of the copyrightable expression from uncopyrightable features embodied in the user interface:

In particular, the extrinsic test for literary works requires analytical dissection of several "objective components of expression," Shaw, 919 F. 2d at 1361, within a literary work such as plot, theme, character and dialogue. Id. at 1356-57. Similarity of these objective components in two literary works logically gives rise to a triable issue of similarity. Id. at 1357. Likewise, computer programs are subject to Shaw type analytic dissection of various components, e.g., screens, menus, and keystrokes. Because the district court found that Brown Bag made no showing of similarity along these lines with regard to copyrighted components of PC-OUTLINE, summary judgment was not precluded by the rule announced in Shaw.

960 F. 2d at 1477 (emphasis in original).

In evaluating Brown Bag's position that the overall "look and feel" of the programs at issue had to be compared and evaluated, the Ninth Circuit rejected Brown Bag's position because "the record fails to include any evidence indicating that Brown Bag requested the district court to make this analysis." 960 F. 2d at 1476. More importantly, however, the Ninth Circuit noted that:

The degree to which unprotected or unprotectable features must be eliminated from a comparison of two works is difficult to say. Although copyright protection is not afforded to certain elements of a work, such limitations "must not obscure the general proposition that copyright may inhere, under appropriate circumstances, in the selection and arrangement of unprotected components. Nimmer Section 13.03[F][5] at 13-78.44 n. 342; accord, Feist Publications, Inc. v. Rural Telephone Serv. Co., __ U.S. __, 111 S. Ct. 1282, 1289, 1294, 113 L.Ed. 2d 358 (1991); see Nimmer Section 13.03[F][5], at 13-78.45 n. 345 (discussing Ninth Circuit cases).

960 F. 2d at 1476 n. 4 (emphasis added).

We submit that the Ninth Circuit's decision correctly states the proper approach: While analytical dissection can and should be used to evaluate infringement claims in computer software cases, the Court must still consider the overall "look and feel" of the user interface and evaluate whether the selection, arrangement and presentation of the user interface is original, is at least minimally creative, and is copied in whole or in substantial part -- even if such selection, arrangement and presentation is of commands and other functional features which, on their own, are not individually or separately protectable.

III. Supreme Court Developments

How would the Supreme Court decide "look and feel" protection for computer software? In the last three years, the U.S. Supreme Court has decided three cases of importance to computer lawyers: Bonito Boats v. Thunder Craft Boats, Feist Publications v. Rural Telephone Service, and Two Pesos v. Taco Cabana. Though none of these three recent Supreme Court cases directly address protection of computer software user interfaces, these cases have important holdings that will be critical to the further definition of legal protection for computer software including audiovisual user interfaces.

A. Bonito Boats v. Thunder Craft Boats

In Bonito Boats v. Thunder Craft Boats Bonito Boats, Inc. v. Thunder Craft Boats, Inc. 489 U.S. 141, 103 L. Ed. 2d 118, 109 S. Ct. 971 (1989)., the Supreme Court held that a Florida statute protecting boat hull designers from reverse-engineering of their boat hulls conflicted with federal patent law and was therefore preempted.

There, no patent application had been filed on the design or manufacturing process used by Bonito Boats. When the Florida legislature enacted a statute prohibiting use of the direct molding process to duplicate unpatented boat hulls and forbidding knowing sales of hulls so duplicated, the Bonito Boats hull model in question had been on the market for six years.

In its opinion, the High Court held that the Florida statute offered patent-like protection to ideas that were unprotected under federal patent law. In offering protection to ideas that were unpatentable, the Florida statute restricted the public's ability to exploit unpatented designs and conflicted with the strong public policy favoring free competition in ideas which do not merit patent protection. The High Court stated:

From their inception, the federal patent laws have embodied a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy. Bonito Boats, 103 L. Ed. 2d 118, 131.

The Florida statute conflicts with several principles of federal patent law. First, 35 U.S.C. 102(a) and (b) exclude from consideration knowledge already available to the public. Since the boat hulls in question had been sold for six years, they were indisputably already available to the public.

Second, along with requirements of novelty and utility, there is a nonobviousness requirement which "extends the field of unpatentable material beyond that which is known to the public under 102, to include that which could readily be deduced from publicly available material by a person of ordinary skill in the pertinent field of endeavor." Id. at 134, citing Graham v. John Deere Co. of Kansas City 383 U.S. 1 at 15, 15 L. Ed. 2d 545, 86 S. Ct. 684 (1966).

Bonito Boats emphasizes the Court's unwillingness to allow non-patent protection for published functionality:

Congress has considered extending various forms of limited protection to industrial design either through the copyright laws or by relaxing the restrictions on the availability of design patents. See generally Brown, Design Protection: An Overview, 34 UCLA L Rev 1341 (1987). Congress explicitly refused to take this step in the copyright laws See, 17 USC 101 [17 USCS 101]; HR Rep No. 94-1476, p 55 (1976). and despite sustained criticism for a number of years, it has declined to alter the patent protections presently available for industrial design.

Bonito Boats at 145. See, Report of the President's Commission on the Patent System, S Doc No. 5, 90th Cong, 1st Sess, 20-21 (1967); Lindgren, The Sanctity of the Design Patent: Illusion or Reality?, 10 Okla City L Rev 195 (1985).

Under Bonito Boats, all published unpatented functionality is in the public domain and is available to all for use in future works. Competitive principles require this result. Such competitive principles aid future authors of future works.

B. Feist Publications v. Rural Telephone Service

In Feist Publications v. Rural Telephone Service Company Feist Publications, Inc. v. Rural Telephone Service Company, Inc. 499 U.S. ___, 113 L. Ed. 2d 358, 111 S. Ct. ___ (1991)., the Supreme Court held that a publishing company that copied less than 1,500 name, address, and phone number listings from the white pages of a telephone book was not guilty of copyright infringement. The Court emphasized that the individual listings were uncopyrightable facts and that the telephone company had not selected, coordinated, or arranged the facts in an original way sufficient to satisfy minimum copyright requirements.

Rural Telephone Service was the sole provider of telephone service in its service area. As a telephone company operating in Kansas, it was required by the State of Kansas to collect the telephone listing information and publish it in an annual directory. The white pages of Rural Telephone Service's directory consisted of a simple alphabetical list of the names of Rural's subscribers, their towns, and their telephone numbers.

Feist Publications, a publishing company making area-wide telephone directories, paid for the rights to use listings from telephone companies in 11 different service areas near Rural's service area. Rural Telephone Service would not allow Feist to pay to use its listings.

Because Rural would not allow Feist to license its listings, Feist used them without consent. Feist removed several thousand geographically irrelevant listings, then verified and attempted to obtain additional information on the 4,935 remaining listings for use in its directory. Most of Rural's listings did not contain street addresses. Ultimately, most of Feist's listings included the individuals' names, street addresses, towns, and telephone numbers. However, 1,309 of the 46,878 listings in Feist's directory were used directly from Rural Telephone Service's white pages. Rural sued Feist for copyright infringement.

The Supreme Court found that the telephone book as a whole was copyrightable but that the compilation of listings and the individual listings were not copyrightable. The Court's opinion is useful in defining the scope of protection for works comprised of public domain information.

While the facts underlying a compilation cannot be protected by copyright, the author can claim protection of the manner in which the facts are presented. To qualify for copyright protection a work must be original to the author. To be original a work must (1) be independently created by the author and (2) possess at least some minimal degree of creativity.

Compilations of facts can be copyrightable if they possess the requisite originality: "The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers." Id. at 370.

How much creativity is "at least some minimal degree of creativity?" The Court does not define a clear positive test other than to say that the work must contain "some creative spark, no matter how crude, humble or obvious it might be," Id. at 369, citing M. Nimmer & D. Nimmer, Copyright 1.08[C][1]. the work does not need to be novel, but cannot be copied, Id. at 369, citing Sheldon v. Metro-Goldwyn Pictures Corp. 81 F.2d 49, 54 (CA2 1936). and the work must contain "the fruits of intellectual labor." Id. at 369 citing The Trade-Mark Cases, 100 U.S. 82 at 94, 25 L. Ed. 349, 4 S. Ct. 279 (1884).

Rather, the Feist Court defines the minimal "creativity" requirement more in the negative as to what is not sufficient: "works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent," Id. at 377 citing Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251, 47 L. Ed. 460, 23 S. Ct. 298 (1903) (referring to "the narrowest and most obvious limits"). works which are "entirely typical," "garden-variety," "devoid of even the slightest trace of creativity," Id. at 380. "could not be more obvious," and "firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course....not only unoriginal, it is practically inevitable." Id. at 380.

Finally, it should be noted that when a compilation of public domain information is protected, the copyright is relatively "thin" and limited to the selection and arrangement of such information. The Court in Feist explained that,

This protection is subject to an important limitation. The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author. Id. at 371, citing Patterson & Joyce, Monopolizing the Law: The Scope of Copyright Protection for Law Reports and Statutory Compilations, 36 UCLA L Rev 719, 800-802 (1989); Ginsburg, Creation and Commercial Value: Copyright Protection of Works of Information, 90 Colum L Rev 1865, 1868, and n 12 (1990). Others may copy the underlying facts from the publication, but not the precise words used to present them. Id. at 371. This inevitably means that the copyright in a factual compilation is thin. Notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained in an another's publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement. [T]he very same facts and ideas may be divorced from the context imposed by the author, and restated or reshuffled by second comers, even if the author was the first to discover the facts or to propose the ideas. Id. at 371 (emphasis added), citing Ginsburg, supra 90 Colum L Rev at 1868.

Overall, the Feist Court makes clear that copyright rewards originality, not effort. The primary objective of copyright is not to reward the labor of authors, but "[t]o promote the Progress of Science and useful Arts." Id. at 371, citing Art. I, 8, cl 8.; Accord Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156, 45 L. Ed. 2d 84, 95 S. Ct. 2040 (1975).

Under Feist, trivial user interfaces will receive narrow protection; routine or commonplace approaches (such as simple menu selections) may receive no protection whatsoever. However, Feist reaffirms that original creative presentations of even public domain information are protected by copyright.

C. Two Pesos v. Taco Cabana

On January 27, 1992, the Supreme Court granted certiorari to review the following question:

Whether the Mexican style appearance of a Mexican food restaurant constitutes protectable intellectual property equivalent to a federally registered trademark, even where the restaurant did not, and cannot, show that its Mexican 'look' has secondary meaning in the eyes of its customers, so that members of the public associate the restaurant's appearance with that particular restaurant? Taco Cabana International Inc. v. Two Pesos, Inc., 932 F. 2d 1113 (5th Cir. 1991), cert granted, 112 S. Ct. 964 (1992)

In Two Pesos v. Taco Cabana Two Pesos, Inc. v. Taco Cabana, Inc. 505 U.S. ___, 120 L. Ed. 2d 615, 112 S. Ct. ___ (1992)., the Supreme Court answered this question in the affirmative and held that the "look" of a restaurant, when inherently distinctive, and even though comprised of functional items of furnishings and other leasehold improvements, is protected under the Lanham Act. More generally, when trade dress is inherently distinctive it does not have to acquire secondary meaning to be protected under the Lanham Act. "To establish secondary meaning, a manufacturer mush show that, in the minds of the public, the primary significance of the product feature or term is to identify the source of the product rather than the product itself." Taco Cabana, 505 U.S. ___, 120 L.Ed.2d at 622 n. 4 citing Inwood Laboratories, Inc. v. Ives Laboratories, Inc. 456 U.S. 844, 851, n. 11, 72 L. Ed. 2d 606, 102 S. Ct. 2182 (1982).

Taco Cabana operated a chain of restaurants in Texas serving Mexican food. It described its Mexican trade dress as,

A festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme. Id. at 621 citing 932 F.2d 1113, 1117 (CA5 1991).

About seven years after the first Taco Cabana restaurant opened in San Antonio, a Two Pesos restaurant opened in Houston with a very similar motif. Within one year, Taco Cabana's market had expanded enough so that the markets of the two chains of restaurants overlapped in several cities. Taco Cabana sued Two Pesos for trade dress infringement.

"The 'trade dress' of a product is essentially its total image and overall appearance." Id. at 621, n.1, citing 932 F.2d 1113, 1118 (CA5 1991). It "involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques." Id. at n 1 citing John H. Harland Co. v. Clarke Checks, Inc., 711 F2d 966, 980 (CA11 1983); Restatement (Third) of Unfair Competition 16, Comment a (Tent. Draft No. 2, Mar. 23, 1990).

We believe that the Taco Cabana holding may be employed by software authors and software publishers to obtain additional protection for the "look and feel" of computer software. Such protection will arise when non-functional features of a software product are presented in an inherently distinctive way. Such features are subject to trade dress protection under the Lanham Act upon proof of a likelihood of confusion. Such protection extends without proof of access and without proof of copying (though both may be present as they were in the Taco Cabana case). The open question is whether the federal courts will apply in the Lanham Act area similar tests for "functionality" as the courts have applied in determining "idea" versus "expression" under the Copyright Act. Ultimately, original, creative, distinctive user interfaces may be protected by both bodies of federal law.

CONCLUSION

Developers of pioneering software products will continue to seek broad protection of all aspects of their originality and creativity. Competitors will continue to seek to exploit all unpatented functionality, including methods of operation, user learned techniques, and data compatibility. Each new product --indeed, with software, each new version -- presents a new set of facts upon which questions of scope of legal protection and extent of infringement must be examined and re-examined. Though "look and feel" has been attacked by the defense bar, we submit that copyright and Lanham Act protection will remain available for protecting the originality and creativity expressed by software designers and programmers in the user interfaces of their computer software products.

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