*1995 Dennis S. Karjala & Peter S. Menell.

* This article is based on a Brief Amicus Curiae filed by the authors with the First Circuit Court of Appeals in Lotus Dev. Corp. v. Borland Int'l, Inc. The decision is reported at 49 F.3d 807 (1st Cir. 1995). The High Technology Law Journal publishes this brief in nearly the same form as submitted to the court-this version contains a short introduction added by the authors as well as minor changes made to conform to law review style.

Professor of Law, Arizona State University.

Professor of Law, University of California, Berkeley.

1. Lotus Dev. Corp. v. Borland Int'l, Inc., 799 F. Supp. 203 (D. Mass. 1992). An earlier opinion in the case appears at 788 F. Supp. 78 (D. Mass. 1992).

2. 799 F. Supp. at 222.

3. We represented no party to the litigation nor did we act on behalf of any person other than ourselves. We offered our views to the First Circuit Court of Appeals in the spirit of pro bono publico.

4. 101 U.S. 99 (1879).

5. Our brief discusses an issue not directly addressed in a Brief Amicus Curiae of Copyright Law Professors filed in the Lotus case (reprinted in 16 HASTINGS COMM. & ENT L.J. 657 (1994)), namely, whether a copyright in a program extends to a user interface generated by execution of program instructions. We concur with that brief's conclusions, first, that the district court failed to engage in proper analysis under Baker v. Selden and, second, that insofar as the court of appeals chooses to regard user interfaces as nonliteral elements of programs covered by a program copyright, the district court misapplied the test of Computer Assocs. Int'l, Inc. v. Altai, 982 F.2d 693 (2nd Cir. 1992).

6. 17 U.S.C. 101 (1988) (definition of "computer program").

7. NATIONAL COMMISSION ON NEW TECHNOLOGICAL USES OF COPYRIGHTED WORKS, FINAL REPORT 21 (1979) [hereinafter CONTU Report] ("One is always free to make the machine do the same thing as it would if it had the copyrighted work placed in it, but only by one's own creative effort rather than by piracy.").

8. Duncan M. Davidson, Common Law, Uncommon Software, 47 U. PITT. L. REV. 1037, 1080 (1986).

9. In fact, to the extent that a specific piece of code is the only way of bringing about some aspect of this "certain result", one of only a few practical ways of doing so, or an obvious or standard way of doing so from the point of view of an experienced programmer, even that specific piece of code is not protected, and a finding of infringement cannot be based on similarities in these aspects of the code.

[C]opyright protection for programs does not threaten to block the use of ideas or program language previously developed by others when that use is necessary to achieve a certain result. When other language is available, programmers are free to read copyrighted programs and use the ideas embodied in them in preparing their own works . . . .

CONTU Report, supra note 7, at 20 (first emphasis added). This also follows, of course, from the filtering procedure called for by Computer Assocs. Int'l, Inc. v. Altai, 982 F.2d 693 (2nd Cir. 1992).

10. Computer Assocs., 982 F.2d at 703.

11. Id. For a more detailed explication of the distinction between a computer program and its user interface, including some of the early judicial and administrative errors in addressing the issue, see Pamela Samuelson, Computer Programs, User Interfaces, and Section 102(b) of the Copyright Act of 1976: A Critique of Lotus v. Paperback, 6 HIGH TECH. L.J. 209, 264-69 (Appendix) (1992).

12. The issues raised by this case have confounded other courts as well. In both Broderbund Software, Inc. v. Unison World, Inc., 648 F. Supp. 1127 (N.D. Cal. 1986) and Digital Comm. Assocs. v. Softklone Distrib. Corp., 659 F. Supp. 449 (N.D. Ga. 1987), district courts made a similar analytical mistake as the district court in Lotus in applying copyright law to the outputs of computer programs. As with Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37 (D. Mass. 1990), these cases were not appealed. Therefore, the First Circuit will be the first appellate court to address the question of copyright protection for interfaces of this type.

Even if a court were to approach the issue of copyright protection for interfaces as a part of the copyright in the underlying program, it is clear that what a computer program does-the screen displays it generates and the methodology it presents to the outside world for using the program via such devices as keyboards and data entry formats-lies at a higher level of abstraction above literal code than even program structure and organization. The recognition of protection for so-called "structure, sequence, and organization" or "SSO" by the Third Circuit in Whelan, Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222, 1248 (3rd Cir. 1986), cert. denied, 479 U.S. 1031 (1987) caused great controversy, and Computer Associates explicitly reduced the breadth of Whelan. See, e.g., Computer Assocs., 982 F.2d at 711-12 (noting that Feist Pubs., Inc. v. Rural Tel. Serv. Co., 111 S. Ct. 1282 (1991), implicitly undercuts the Whelan rationale and citing with approval critics of Whelan's sweeping scope of protection). However the debate is ultimately resolved concerning the level of detailed program structure that might be covered by a program copyright as a nonliteral element of the program, user interfaces are not nonliteral elements of programs but rather the results of programs. To the extent that Lotus relies on the copyright in its 1-2-3 program for protection of that program's user interface, therefore, its claim should fail. More fundamentally, basic copyright law requires that outputs of computer programs be evaluated solely on the basis of their own merits as expressive works of authorship and not any copyright in the program that produces them. For this reason, too, the district court's attempt to distinguish Baker v. Selden as a precedent predating the congressional mandate to protect computer programs, 799 F. Supp. at 215, is without logical support.

13. Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37 (D. Mass. 1990).

14. In general, we may say that traditional copyright law, following the dictates of Baker v. Selden, has eschewed the protection of function, provided the meaning of the term "function" is understood in a precise way. Copyright does, of course, protect many works that are "useful" to human beings. Maps enable us to go from one place to another; recipes tell us how to bake cakes; accounting books explain how to implement a particular system of accounting. All of these works are copyright protected. They are not, however, "useful articles" within the definition in the Copyright Act, since "[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. . . ." 17 U.S.C. 101 (1988). Although this definition was adopted in an effort to deal with the problem of industrial design-by excluding utilitarian functions other than to inform or portray an appearance from copyright protection and excluding even expressive aspects of useful articles to the extent they are not separable from the utilitarian functions, 17 U.S.C. 101 (1988) (definition of "pictorial, graphic, and sculptural works")-it represents a statutory description of the kind of "usefulness" or "functionality" that has always been excluded from copyright protection, as opposed to the "usefulness" inherent in maps and recipe books that have long been a part of copyright.

The Lotus 1-2-3 user interface is functional in the sense used here, because it has the intrinsic functional goal of permitting users of the program to input and manipulate data in a fast, efficient, and easy-to-master manner. If, by some chance, Lotus has managed to discover the fastest, most efficient, and easiest-to-master means of using spreadsheet programs, recognition of a copyright in its user interface is equivalent to giving Lotus a 75-year patent in an optimal functional tool. If, as is more likely, Lotus has made an important advance toward the goal of an optimal spreadsheet interface, recognition of a copyright in its functional features inhibits, for the same period, further incremental development in these tools, without any showing that the advance would have been sufficient for even a 17-year patent.

15. 101 U.S. 99, 102 (1879). In this case Selden was the author of a book describing a system of accounting that Selden claimed to have invented. The book included sample forms for implementing the system by a user. Baker's books taught how to implement a similar bookkeeping system and included sample forms that were similar to the forms in Selden's book. There was no allegation that any textual explanation from Selden's book was pirated. The claim of infringement was predicated on similarity of Baker's forms to those of Selden.

16. Id. at 102.

17. Id. at 104.

18. Many cases have implemented this aspect of Baker v. Selden. For a more extended discussion and citations, see Samuelson, supra note 11, at 226-27 & n.73.

19. See Dennis S. Karjala, Copyright, Computer Software, and the New Protectionism, 28 JURIMETRICS 33, 39 (1987).

20. Kepner-Tregoe, Inc. v. Carabio, 203 U.S.P.Q. 124, 131 (BNA) (E.D. Mich. 1979) ("[T]here is no societal interest in many variants on a single theme or plot, nor is there the likelihood that by extending broad protection, entry to the market for literary works will be foreclosed.").

21. The effort and creativity that go into unpatentable technological advances can be compared to similar unprotected efforts of historians and other authors:

The urge to compensate for subsequent use of information and ideas is perhaps understandable. An inequity seems to lurk in the idea that much of the fruit of the historian's labor may be used without compensation. This, however, is not some unforeseen byproduct of a statutory scheme intended primarily to ensure a return for works of the imagination. Congress made the affirmative choice that the copyright laws should apply in this way. . . . To ensure the progress of arts and sciences and the integrity of First Amendment values, ideas and information must not be freighted with claims of proprietary right.

Harper & Row Pubs., Inc. v. Nation Enters., 471 U.S. 539, 589 (1985) (Brennan, J., dissenting), quoted with approval in Feist Pubs., Inc. v. Rural Tel. Serv. Co., 111 S. Ct. 1282, 1289-90 (1991).

22. CONTU Report, supra note 7, at 3.

23. Every concrete example of infringement that the CONTU report offers involves direct and literal copying, such as photocopying of printed source code and one-to-one transcription from magnetic tape or disk to paper. CONTU Report, supra note 7, at 22-23. The Report goes on to say that "[m]ost infringements, at least in the immediate future, are likely to involve simply copying," but the problem it predicts for the then-future was a technology that permits programs to be stated orally or permits use of a program without copying. Id. The CONTU Report nowhere refers to copying of "nonliteral elements," much less copying of user interfaces or other results of programs, as potential infringement.

24. Feist Pubs., Inc. v. Rural Tel. Serv. Co., 111 S. Ct. 1282, 1290, 1297 (1991).

25. Computer Assocs. Int'l, Inc. v. Altai, 982 F.2d 693, 703-05 (2nd Cir. 1992).

26. Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir. 1992), amended, 1993 U.S. App. LEXIS 78 (9th Cir.).

27. 799 F. Supp. 1006, 1021 (N.D. Cal. 1992).

28. See LUCA PACIOLA, SUMMA DE ARITHMETICA, GEOMETRIA, PROPORTIONI ET PROPORTIONALITA (1494), discussed in T. BUDD & E. WRIGHT, THE INTERPRETATION OF ACCOUNTS 7 (1930).

29. Baker v. Selden, 101 U.S. 99, 104 (1879).

30. See Peter S. Menell, An Analysis of the Scope of Copyright Protection for Application Programs, 41 STAN. L. REV. 1045, 1057 (1989) [hereinafter Menell, Scope of Copyright Protection] (discussing the process of technological advancement in application programming). The basic methods underlying Visicalc and Lotus 1-2-3 extend back at least to the time of Luca Paciola, as a principal application of spreadsheet analysis is bookkeeping. The key distinctive feature of the Visicalc and Lotus products is the ability simultaneously to calculate and alter tables of information. The basic means by which this ability was brought into accounting-digital processing-was of course the product of neither Visicalc nor Lotus but rather hundreds of predecessors, human and corporate, active in the development of computer science.

31. What the user creates using the Lotus system may, of course, be copyright protected. The user-created products of most spreadsheet and word processing software almost always have no function other than to inform or entertain. They are therefore not "functional" in the sense used to distinguish patent and copyright subject matter. See supra note 14. This product of the end user must be distinguished from the functional interface developed by Lotus to assist the user's creation of such works. The typewriter is a system that also assists in the creation of copyright-protected works, but the machine itself is not protected by copyright, nor is its user interface-the arrangement of the keys.

32. Id.

33. Lotus Dev. Corp. v. Borland Int'l, Inc., 799 F. Supp. 203, 216 (D. Mass. 1992).

34. Id. at 217.

35. Id.

36. Id. at 217-18.

37. Id. at 218-19.

38. That the district court did not apply the proper test in this case is clear. The court repeatedly refers to functionality in elements it found to be protected: "[T]he menu commands are an important part of the functionality of the macros." Id. at 208. "Borland admits to copying the functionality of the keystroke sequences and macro language." Id. at 209. "The menu command hierarchy is an integral part of the functionality of the macros and of the keystroke sequences." Id. at 219.

39. E.g., Stern Elecs., Inc. v. Kaufman, 669 F.2d 852, 854 (2nd Cir. 1982) (spaceships, ground missile bases and fuel depots, and background terrain); Atari, Inc. v. North American Philips Consumer Elecs. Corp., 672 F.2d 607, 617 (7th Cir.), cert. denied, 459 U.S. 880 (1982) (Pac Man characters).

40. See supra note 14.

41. It is worth noting that the Lotus 1-2-3 interface was itself developed at a time when the only judicial decision on the question pointed in the direction of nonprotection under copyright. Synercom Technology, Inc. v. Univ. Computing Co., 462 F. Supp. 1003 (N.D. Tex. 1978).

42. See CONTU Report, supra note 7, at 46.

43. U.S. CONGRESS, OFFICE OF TECHNOLOGY ASSESSMENT, FINDING A BALANCE: COMPUTER SOFTWARE, INTELLECTUAL PROPERTY AND THE CHALLENGE OF TECHNOLOGICAL CHANGE (May 1992); U.S. CONGRESS, OFFICE OF TECHNOLOGY ASSESSMENT, COMPUTER SOFTWARE AND INTELLECTUAL PROPERTY: BACKGROUND PAPER (March 1990).

44. See Peter S. Menell, Tailoring Legal Protection for Computer Software, 39 STAN. L. REV. 1329, 1370-71 (1987); Menell, Scope of Copyright Protection, supra note 30 at 1050 n.20 (1989).

45. See, e.g., Computer Assocs. Int'l Inc. v. Altai, 982 F.2d 693, 712 (2nd Cir. 1992).

46. 797 F.2d 1222 (3rd Cir. 1986), cert. denied, 479 U.S. 1031 (1987).

47. Computer Assocs. Int'l Inc. v. Altai, 982 F.2d 693 (2nd Cir. 1992); see Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 840 n.17 (10th Cir. 1993); Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524-25 (9th Cir. 1992), amended, 1993 U.S. App. LEXIS 78 (9th Cir.); Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 839 (Fed. Cir. 1992); Apple Computer, Inc. v. Microsoft Corp., 799 F. Supp. 1006, 1024-25 (N.D. Cal. 1992); CMAX/Cleveland, Inc. v. UCR, Inc., 804 F. Supp. 337, 352 (N.D. Ga. 1992).

48. Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37 (D. Mass. 1990); Digital Commun.. Assocs. v. Softklone Distrib. Corp., 659 F. Supp. 449 (N.D. Ga. 1987); Broderbund Software, Inc. v. Unison World, Inc., 648 F. Supp. 1127 (N.D. Cal. 1986).