AIPLA Amicus Brief in Support of Neither Party

AIPLA is a national association of more than 9,000 members, primarily attorneys, whose interests and practices lie in the areas of copyright, patent, trademark, trade secret and other intellectual property law. Membership in AIPLA is drawn from private law firms, corporations, universities and government. Attorney members of AIPLA represent both copyright owners and their competitors.

AIPLA does not support either party to this appeal nor have an interest in the outcome of this appeal, except to the extent that the outcome affects copyright law, thereby affecting AIPLA members and the public generally. Rather, AIPLA offers the views of a leading organization of intellectual property attorneys representing a broad range of views. Accordingly, AIPLA's concerns that the First Circuit's reasoning violates basic principles of both copyright law and statutory interpretation are the product of a non-partisan analysis.

The First Circuit accepted the finding of the district court that the Lotus 1-2-3 menu command hierarchy contained expressive elements, but it concluded that the entirety of the menu command hierarchy was a "method of operation" under Section 102(b) and thus did not constitute copyrightable subject matter. Lotus, 49 F.3d at 815-16. Defining "method of operation" as "the means by which a person operates something," id. at 815, the First Circuit determined that, because the Lotus command hierarchy is necessary to operate the Lotus program, it is therefore unprotectible. The First Circuit's approach is an unnecessary departure from the analysis employed by other courts, and it ignores fundamental principles of copyright law, codified by Congress in the Copyright Act.

AIPLA expresses no view as to whether the Lotus 1-2-3 menu command hierarchy is idea or expression, whether the hierarchy constitutes expression which has merged with the idea it embodies, whether any other copyright doctrine may require filtering out of certain expression, nor whether any other defenses are applicable. AIPLA believes, however, that the reasoning used by the First Circuit to reach its ultimate result is incorrect.

I. THE COPYRIGHT ACT PROTECTS COMPUTER PROGRAMS AS LITERARY WORKS

Under Section 101 of the Copyright Act, a computer program is defined 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. That same section of the Act defines "literary works" as:

[W]orks, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied.

The legislative history of the Copyright Act supports this widespread judicial recognition of copyrightable authorship in the non-literal aspects of computer programs. See House Report at 54. When Congress amended the Copyright Act in 1980,[5] it adopted the definition of "computer program" recommended in 1978 by the National Commission on New Technological Uses of Copyrighted Works ("CONTU"), thereby reconfirming that computer programs are to be protected under the same fundamental principles as other literary works.[6]

This approach to the protection of computer programs as literary works has been confirmed more recently in the international context, as Congress has ratified the North American Free Trade Agreement ("NAFTA") and adopted legislation to implement its provisions in the United States. Pub. L. No. 130-182 (Dec. 8, 1993). Among the intellectual property provisions of NAFTA is the commitment of member countries to protect computer programs under copyright law as literary works. NAFTA, Art. 1705(1)(A).

Similarly, the Agreement on Trade-Related Intellectual Property Rights ("TRIPS") which the U.S. adopted in 1994 in connection with the General Agreement on Tariffs and Trade ("GATT"),[7] requires member nations to protect computer programs as literary works. TRIPS, Art. 10(1). In Europe, the 1991 Council Directive on the Legal Protection of Computer Programs, 91/250/EEC, art. 6, 1991 O.J. (L. 122) 42, also mandates literary work protection for computer programs. Thus, Congress has led the world in recognizing that computer programs must be protected in the same manner and to the same extent as other original works of authorship.

II. THE FIRST CIRCUIT MISUNDERSTOOD THE PURPOSE AND MEANING OF Section 102(b)

By interpreting Section 102(b) as an independent, a priori bar to copyright protection for expressive works of authorship -- in this case, the expression of a method of operation -- the First Circuit ignores the balance inherent in the idea/expression dichotomy. This interpretation of Section 102(b) is also inconsistent with the explicit language of the Copyright Act, the intent of Congress as reflected in the legislative history, and the clear consensus of the other appellate courts which have addressed the issue. Further, the First Circuit's approach misunderstands the holding of this Court in Baker v. Selden, 101 U.S. 99 (1869) ("Baker"), which is consistent with the idea/expression dichotomy.

A. The First Circuit Took a Dangerous and Improper Shortcut in Applying Section 102(b), Ignoring the Explicit Language of the Copyright Act

The First Circuit, however, expressly refused to separate the protectible expression which it presumed to exist in the Lotus menu command hierarchy, either by applying the abstraction-filtration-comparison methodology articulated by the Second Circuit in Altai, or by applying any other form of analysis. Rather, it chose a simplistic and novel view of Section 102(b). It saw no need to separate the unprotectible ideas embodied in the Lotus menu command hierarchy from the specific concrete expression which the district court found Lotus had created to embody those ideas. Lotus, 49 F.3d at 815-16.[9] Instead, the First Circuit concluded that, because "users operate Lotus 1-2-3 by using the menu command hierarchy," the expression contained in the Lotus hierarchy is part of the "method of operation" of Lotus 1-2-3 and is thus excluded from copyright protection under Section 102(b) of the Copyright Act. Id. at 816.

B. The First Circuit Approach Ignores the Intent of Congress as Reflected in the Legislative History

Section 102(b) is intended, among other things, to make clear that the expression adopted by the programmer is the copyrightable element in a computer program, and that the actual processes or methods embodied in the program are not within the scope of the copyright law. Section 102(b) in no way enlarges or contracts the scope of copyright protection under the present law. Its purpose is to restate, in the context of the new single Federal system of copyright, that the basic dichotomy between expression and idea remains unchanged.

The CONTU Final Report similarly confirmed the centrality of the idea-expression distinction in the computer context, noting that the "words of a program" are copyrightable even when they "are used ultimately in the implementation of a process." CONTU Final Report at 21. Moreover, the CONTU Report directly expressed the Congressional understanding that copyright in a computer program is not confined to the literal code, but extends to more abstract, non-literal elements as well, provided that they constitute expression, rather than "idea" or "process":

The line which must be drawn [to distinguish protectible from unprotectible elements of a program] is between the expression and the idea, between the writing and the process which is described.

The First Circuit's holding that Section 102(b) absolutely precludes copyright protection for concrete expression, such as the selection and arrangement of the Lotus menu hierarchy -- which the court assumed to be expressive -- without reference to the idea/expression dichotomy, Lotus, 49 F.3d at 816, is contradicted by the legislative history of the Copyright Act and the 1980 Computer Software Amendments.

C. The First Circuit Approach Ignores the Judicial Consensus as to the Meaning of Section 102(b)

More generally, the courts of appeals have consistently interpreted Section 102(b) as neither more nor less than a restatement of the idea-expression dichotomy. See, e.g., CCC Information Services, Inc. v. Maclean Hunter Market Reports, Inc., 44 F.3d 61, 69 & n.12 (2d Cir. 1994), cert. denied, 116 S. Ct. 72 (1995); Whelan, 797 F.2d at 1234 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987); Kepner-Tregoe, 12 F.3d at 533 & n.8 (5th Cir.); Robert R. Jones Associates, Inc. v. Nino Homes, 858 F.2d 274, 277 (6th Cir. 1988); Toro Co. v. R & R Products Co., 787 F.2d 1208, 1211-12 (8th Cir. 1986); Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994), cert. denied, 115 S. Ct. 1176 (1995); Cable/Home Communication Corp. v. Network Productions, Inc., 902 F.2d 829, 842-43 (11th Cir. 1990).

Accordingly, the First Circuit's ruling that Section 102(b) places expressive works of authorship automatically outside the scope of copyright protection is not only unprecedented, it is contradicted by the overwhelming weight of authority, as well as by the statute and its legislative history. As the cases cited above recognize, a proper application of Section 102(b) requires the court to decide as a threshold matter whether the authorship at issue constitutes idea or expression. If it falls on the "expression" side of that line, Section 102(b) does not authorize a court to automatically deny copyrightability. Contrary to the First Circuit's characterization, Lotus, 49 F.3d at 815-16, this separation of idea and expression is not an optional innovation introduced by the Second Circuit's decision in Altai. It is a statutory requirement which the courts are not at liberty to disregard. Moreover, this is so whether the work in question is a presidential memoir, an architectural plan, a film or, as here, computer software.

D. The First Circuit Approach Misinterprets Baker v. Selden and the Merger Doctrine

At issue in Baker were certain ruled ledger sheets for which the author of an accounting text sought copyright protection. This Court denied protection for the ledger sheets, not because the sheets themselves were an "idea" or "process", but because the court found that they must "necessarily be used as incident to" the system of accounting described in Baker's textbook. This Court reasoned that a copyright on the sheets would have extended impermissibly into a monopoly on the unprotectible system itself. It was for this reason the sheets were deemed uncopyrightable. Baker's textbook, however, did not lose its protection. Expression which merely describes or embodies a system, without foreclosing others from describing the same system in a different way, is protectible.

The courts consistently have held that Baker only stands for the proposition that expression merged with idea or process cannot be protected. However, expression which is not merged with an idea is protectible, even if it is part of a functional work. Mazer v. Stein, 347 U.S. 201, 218 (1954). See also Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1345 (5th Cir. 1994) (noting that Baker held ledger sheets were not copyrightable because "they were necessary incidents" to the idea or process embodied in the bookkeeping system); Autoskill, 994 F.2d at 1493 (district court properly dealt with Section 102(b) and the process/expression dichotomy as discussed in Baker by excluding the highest levels of abstraction and considering lower, more detailed levels in filtration analysis); Altai, 982 F.2d at 704-05 (noting that Baker held ledger sheets not copyrightable because they were "necessary incidents" to accounting systems, but Baker offered "scant guidance on how to separate idea or process from expression" or how to distinguish necessarily incident expression).

The other circuit courts which have dealt with the issue of the protectibility of the non-literal elements of a computer program have adopted some variation of the abstraction-filtration methodology, such as in the Second Circuit's Altai approach. As part of this analysis, once the idea and the expression have been separated in the abstraction step, the expression may be denied protection in the filtration step, inter alia, under Baker and the merger doctrine. Thus, Baker may preclude protection for certain particular expressions under certain circumstances, but it does not, under any analytic approach, authorize a court to invoke Section 102(b) as an alternative to separating idea from expression, or automatically to deny copyright protection for expressive works.

III. THE UNINTENDED RESULT OF THE FIRST CIRCUIT'S EXPANSIVE READING OF SECTION 102(b) COULD ADVERSELY AFFECT COPYRIGHT LAW GENERALLY

The First Circuit's decision also could have unintended but pernicious implications beyond the field of computer software. A similar result could arise for the expressive elements of works considered by a court to be a "system" or "process". The broadbrush wording of the First Circuit's opinion does not suggest any limit to the scope of its view of Section 102(b).

The First Circuit's distortion of Section 102(b), however, is unnecessary to maintain a balance between the competing interests in this case. A legitimate limit is already in place under existing copyright doctrine. It is the idea-expression dichotomy, codified with the passage of Section 102(b), but dismissed by the First Circuit as unnecessary.

FOOTNOTES

In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

2) The legislative history confirms that Congress intended to encompass computer programs within the definition of "literary works" in the Copyright Act: The term "literary works" does not connote any criterion of literary merit or qualitative value: it includes catalogs, directories, and similar factual, reference, or instructional works and compilations of data. It also includes computer data bases, and computer programs to the extent that they incorporate authorship in the programmer's expression of ideas, as distinguished from the ideas themselves. H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N. 5659, 5667 ("House Report") (emphasis added).(return to text)

3) 17 U.S.C. Section 117 permits the owner of a copy of a computer program to make an additional copy of the program for archival purposes, or where the making of such a copy is "an essential step in the utilization of the computer program in conjunction with a machine and . . . is used for no other purpose." The Section 117 exceptions to the copyright owner's exclusive rights clearly contemplate that computer programs are to be afforded copyright protection. See Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1248 (3d Cir. 1983) ("the language of [Section 117] . . . by carving out an exception to the normal proscriptions against copying, clearly indicates that programs are copyrightable and are otherwise afforded copyright protection"), cert. dismissed, 464 U.S. 1033 (1984) ("Apple Computer").(return to text)

4) Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693, 702 (2d Cir. 1992) ("Altai") ("[I]f the non-literal structures of literary works are protected by copyright; and if computer programs are literary works, as we are told by the legislature; then the non-literal structures of computer programs are protected by copyright."). See also Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222, 1248 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987); Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527, 536 n.20 (5th Cir.), cert. denied, 115 S. Ct. 82 (1994); Johnson Controls, Inc. v. Phoenix Control Systems, Inc., 886 F.2d 1173, 1177 (9th Cir. 1989); Gates Rubber Co. v. Bando Chemical Industries, Ltd., 9 F.3d 823, 840 (10th Cir. 1993).(return to text)

5) Computer Software Amendments of 1980, Pub. L. No. 96-517, 94 Stat. 3015, 3028 (1980).(return to text)

6) Computer Software Amendments of 1980, Pub. L. No. 96-517, 94 Stat. 3015, 3028 (1980).(return to text)

7) Computer Software Amendments of 1980, Pub. L. No. 96-517, 94 Stat. 3015, 3028 (1980).(return to text)

8) The legislative history confirms that Congress intended to restate, and not change the law in this regard. Section 102(b) in no way enlarges or contracts the scope of copyright protection under the present law. Its purpose is to restate, in the context of the new single Federal system of copyright, that the basic dichotomy between expression and idea remains unchanged. House Report at 57.(return to text)

9) The court accepted the district court's holding that the command hierarchy was in fact expressive. Lotus, 49 F.3d at 815-16.(return to text)

10) This passage from the House Report also demonstrates that Congress did not intend to draw fine distinctions among the various "exclusions" enumerated in Section 102(b), such as "method," "process" and "idea." Particularly in the context of computer programs, the legislative history uses such terms interchangeably as antonyms for "expression." (return to text)

11) This passage from the House Report also demonstrates that Congress did not intend to draw fine distinctions among the various "exclusions" enumerated in Section 102(b), such as "method," "process" and "idea." Particularly in the context of computer programs, the legislative history uses such terms interchangeably as antonyms for "expression." (return to text)

Respectfully submitted,

AMERICAN INTELLECTUAL
PROPERTY LAW ASSOCIATION
Don W. Martens, President
20001 Jefferson Davis Highway
Arlington, VA 22202
(703) 415-0780

Charles L. Gholz
Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
Suite 400
1755 Jefferson Davis Highway
Arlington, VA 22202-3586
(703) 413-3000

Baila H. Celedonia*
Robert W. Clarida
Cowan, Liebowitz & Latman, P.C.
1133 Avenue of the Americas
New York, NY 10036-6799
(212) 790-9200

Counsel for Amicus Curiae
*Counsel of Record

November 9, 1995