III. Beyond Mere Copying of a Computer Program

Generally, when we think of copyright infringement, we think of somebody duplicating a work, either all of it or at least enough of it as to appropriate much of its value. Sometimes we even remember that a copyright can be infringed by publicly performing or displaying a work without permission, or by translating the work into another language or another form.

But it is possible to infringe a copyright without copying all, or even a major part, of a work. Sometimes a play or movie takes too much of the plot or characterization of a copyrighted work, without copying the actual dialogue. The Second Circuit, in its decision in Computer Associates v. Altai, {FN38: 982 F.2d 693, 23 USPQ2d 1241 (2d Cir. 1992)} has noted that:

as a general matter, and to varying degrees, copyright protection extends beyond a literary work’s strictly textual form to its non-literal components. As we have said, “it is of course essential to any protection of literary property . . . that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations.” {FN39: 982 F.2d at 701, 23 USPQ2d at 1248}

Such cases are very fact-intensive, so it is difficult to draw bright lines on what is infringement and what isn’t. For example, whether something is a fair use depends on many factors and how they are weighted. Judge Learned Hand, who wrote many copyright decisions during his time on the Second Circuit, noted that “nobody has ever been able to fix that boundary, and nobody ever can.” {FN40: Nichols v. Universal Pictures, 45 F.2d 119, 121, 7 USPQ 84, 86 (2d Cir. 1930)} Thirty years later he concluded, “Obviously, no principle can be stated as to when an imitator has gone beyond copying the ‘idea,’ and has borrowed its ‘expression.’ Decisions must therefore inevitably be ad hoc.” {FN41: Peter Pan Fabrics v. Martin Werner, 274 F.2d 487, 489, 124 USPQ 154, 155 (2d Cir. 1960)}

III.A. Structure, Sequence, and Organization

The first appeals court to confront what copyright protects for a computer program beyond direct copying was the Third Circuit, in the case of Whelan Associates v. Jaslow Dental Laboratory. {FN42: Whelan Associates v. Jaslow Dental Laboratory, 797 F.2d 1222, 230 USPQ 481 (3d Cir. 1986)} Rand Jaslow had hired Elaine Whelan to design a dental laboratory management system to handle his administrative and bookkeeping tasks on an IBM Series One minicomputer. It was agreed that Jaslow and Whelan would jointly market the program to other dental laboratories.

After two years, as Jaslow had become more familiar with computers and programming, he implemented a similar program on the IBM personal computer. Unlike the software for the Series One, which was written in EDL (Event Driven Language, an IBM programming system for the Series One), Jaslow’s personal computer implementation was written in Basic. He continued selling both versions and advertised his as a new version for the personal computer. Whelan was not pleased and filed suit for, among other things, copyright infringement.

Clearly, Jaslow’s program was not a mere copy of Whelan’s – they were written in different programming languages for different machines. Moreover, differences in the programming techniques commonly used with the two languages caused significant differences in the two programs. However, the programs were structurally similar, with most of the file structures and the screen outputs virtually identical. Also, “five particularly important ‘subroutines’ within both programs – order entry, invoicing, accounts receivable, end of day procedure, and end of month procedure – performed almost identically in both programs.” {FN43: 797 F.2d at 1228, 230 USPQ at 484}

III.A.1. The Third Circuit’s Whelan Decision

The Third Circuit began by stating:

Title 17 U.S.C. §102(a)(1) extends copyright protection to “literary works,” and computer programs are classified as literary works for the purposes of copyright. The copyrights of other literary works can be infringed even when there is no substantial similarity between the works’ literal elements. One can violate the copyright of a play or book by copying its plot or plot devices. By analogy to other literary works, it would thus appear that the copyrights of computer programs can be infringed even absent copying of the literal elements of the program. {FN44: 797 F.2d at 1234, 230 USPQ at 488-489 (citations omitted)}

But the Third Circuit recognized that the dichotomy between idea and expression, codified in Section 102(b) of the Copyright Act of 1976, limits what might otherwise be found infringing. Jaslow argued that “the structure of a computer program is, by definition, the idea and not the expression of the idea, and therefore that the structure cannot be protected by the program copyright.” {FN45: 797 F.2d at 1235, 230 USPQ at 489} Not accepting that broad limitation, the Third Circuit attempted to devise a “rule for distinguishing idea from expression in the context of computer programs.” {FN46: 797 F.2d at 1235, 230 USPQ at 489}

The Third Circuit then summarized Baker v. Selden {FN47: 101 U.S. 99 (1879)} in the context of this case:

The Court’s test in Baker v. Selden suggests a way to distinguish idea from expression. Just as Baker v. Selden focused on the end sought to be achieved by Selden’s book, the 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. Where there are various means of achieving the desired purpose, then the particular means chosen is not necessary to the purpose; hence, there is expression, not idea.

Consideration of copyright doctrines related to scènes à faire and fact-intensive works supports our formulation, for they reflect the same underlying principle. Scènes à faire are “incidents, characters or settings which are as a practical matter indispensable . . . in the treatment of a given topic. It is well-settled doctrine that scènes à faire are afforded no copyright protection.

Scènes à faire are afforded no protection because the subject matter represented can be expressed in no other way than through the particular scene a faire. Therefore, granting a copyright “would give the first author a monopoly on the commonplace ideas behind the scènes à faire. This is merely a restatement of the hypothesis advanced above, that the purpose or function of a work or literary device is part of that device’s “idea” (unprotectible portion). It follows that anything necessary to effecting that function is also, necessarily, part of the idea, too.

Fact intensive works are given similarly limited copyright coverage. Once again, the reason appears to be that there are only a limited number of ways to express factual material, and therefore the purpose of the literary work – telling a truthful story – can be accomplished only by employing one of a limited number of devices. Those devices therefore belong to the idea, not the expression, of the historical or factual work.

Although the economic implications of this rule are necessarily somewhat speculative, we nevertheless believe that the rule would advance the basic purpose underlying the idea/expression distinction, “the preservation of the balance between competition and protection reflected in the patent and copyright laws.” As we stated above, among the more significant costs in computer programming are those attributable to developing the structure and logic of the program. The rule proposed here, which allows copyright protection beyond the literal computer code, would provide the proper incentive for programmers by protecting their most valuable efforts, while not giving them a stranglehold over the development of new computer devices that accomplish the same end. {FN48: 797 F.2d at 1236-1237, 230 USPQ at 490-491 (citations omitted)}

They then applied their rule to the facts of the case:

The rule proposed here is certainly not problem-free. The rule has its greatest force in the analysis of utilitarian or “functional” works, for the purpose of such works is easily stated and identified. By contrast, in cases involving works of literature or “non-functional” visual representations, defining the purpose of the work may be difficult. Since it may be impossible to discuss the purpose or function of a novel, poem, sculpture or painting, the rule may have little or no application to cases involving such works. The present case presents no such difficulties, for it is clear that the purpose of the utilitarian Dentalab program was to aid in the business operations of a dental laboratory. It is equally clear that the structure of the program was not essential to that task: there are other programs on the market, competitors of Dentalab and Dentcom, that perform the same functions but have different structures and designs.

This fact seems to have been dispositive for the district court:

The mere idea or concept of a computerized program for operating a dental laboratory would not in and of itself be subject to copyright. Copyright law protects the manner in which the author expresses an idea or concept, but not the idea itself. Copyrights do not protect ideas – only expressions of ideas. There are many ways that the same data may be organized, assembled, held, retrieved and utilized by a computer. 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 same ideas and functions. The ‘expression of the idea’ in a software computer program is the manner in which the program operates, controls and regulates the computer in receiving, assembling, calculating, retaining, correlating, and producing information either on a screen, print-out or by audio communication. (emphasis added.)

We agree. The conclusion is thus inescapable that the detailed structure of the Dentalab program is part of the expression, not the idea, of that program. {FN49: 797 F.2d at 1238-1239, 230 USPQ at 492-493 (citations omitted)}

III.A.2. Criticism Of Whelan

Almost immediately, the Whelan decision was heavily criticized by commentators for the broad, almost patent-like, protection it gave to computer software. The next appeals court to face the question of the scope of copyright protection for computer programs, the Second Circuit, in Computer Associates v. Altai, {FN50: 982 F.2d 693, 23 USPQ2d 1241 (2d Cir. 1992)} said this about Whelan:

Whelan has fared even more poorly in the academic community, where its standard for distinguishing idea from expression has been widely criticized for being conceptually overbroad. The leading commentator in the field [Professor Nimmer] has stated that, “the crucial flaw in Whelan’s reasoning is that it assumes that only one ‘idea,’ in copyright law terms, underlies any computer program, and that once a separable idea can be identified, everything else must be expression.” This criticism focuses not upon the program’s ultimate purpose but upon the reality of its structural design. As we have already noted, a computer program’s ultimate function or purpose is the composite result of interacting subroutines. Since each subroutine is itself a program, and thus, may be said to have its own “idea,” Whelan’s general formulation that a program’s overall purpose equates with the program’s idea is descriptively inadequate. . . .

In addition to noting the weakness in the Whelan definition of “program-idea,” mentioned above, . . . Whelan’s synonymous use of the terms “structure, sequence, and organization” demonstrated a flawed understanding of a computer program’s method of operation. Rightly, the district court found Whelan’s rationale suspect because it is so closely tied to what can now be seen – with the passage of time – as the opinion’s somewhat outdated appreciation of computer science. {FN51: 982 F.2d at 705-706, 23 USPQ2d at 1252 (citations omitted)}

By limiting the idea of a computer program to its highest-level purpose and considering everything else expression, the Third Circuit extended copyright protection to virtually every aspect of a computer program beyond its intended use. Data structures, program structures, ways of doing calculations, screen displays, output formats, and programming styles all could be protected.

This is far broader protection than can be afforded new computer techniques under the patent laws. Yet copyright law does not require the disclosure of the underlying techniques, the quid pro quo of patent protection, or the demonstration that the technique is novel and nonobvious. It requires only the use of the technique in a program. But Whelan was decided at a time when patent protection for software techniques was still in question. Perhaps then copyright needed to play the role now associated with patents.

A good argument could have been made that Jaslow’s program was a derivative work of Whelan’s – “a work based upon one or more preexisting works, such as a translation, musical arrangement, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.” {FN52: 17 U.S.C. §101} However, the Third Circuit’s decision didn’t consider the implementation of an existing program on a new machine in a new programming language as a derivative work. But this would have recognized that much of what Jaslow did was reimplementing Whelan’s programs – in particular, the file structures, screen images, and at least five key subroutines.

The Third Circuit could have also decided the case on grounds other than copyright, since there was a close business relationship between Whelan and Jaslow. Jaslow had agreed to use its best efforts to market Whelan’s software, and that clearly wasn’t the case when they started marketing their own implementation.

Next section: Abstraction, Filtration, Comparison