Table of Contents:

Introduction to the online version


Preface to the printed version

Copyright Overview

Software Copyright

- History

- Copyrights or Patents?

- Object Code

- RAM Copies

- Beyond Mere Copying

   - Abstraction, Filtration, Comparison

   - Methods of Operation

   - Applying The AFC Test

- Reverse Engineering

- Other Issues

   - New Software from Old

- Summary

Digital Copyright

Patent Overview

Software Patents

Full treatise table of contents

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Chapter 2: Copyright of Computer Programs

III.C. Methods of Operation

The First Circuit got its chance to visit the question of the extent of copyright protection for computer software in Lotus Development v. Borland International. {FN65: 49 F.3d 807, 34 USPQ2d 1014 (1st Cir. 1995)} Before going after Borland, Lotus had sued two small companies over another spreadsheet program, VP-Planner, in the U.S. District Court in Massachusetts. {FN66: 740 F.Supp. 37, 15 USPQ2d 1577 (D. Mass. 1990)} Stephenson Software had adapted an existing spreadsheet system so that it could use 1-2-3 commands and execute 1-2-3 macros, and Paperback Software had distributed it. There was no claim by Lotus that the companies had copied any of Lotus’s source code during the development of VP-Planner. Instead, Lotus claimed that the companies had copied its screen displays and menus.

III.C.1. The Paperback Decision

Lotus claimed copyright infringement because Paperback had copied the “look and feel” of 1-2-3, while Paperback said that there could be no copyright infringement because the 1-2-3 user interface was “functional” and outside the scope of copyright. Judge Keeton rightfully rejected both these arguments. While commentators had discussed “look and feel” copyrights for computer software, the judge found that it was not helpful in determining whether there was an infringement, nor was Paperback’s argument that the user interface was “functional,” since such an expansive defense could read all software out of the copyright laws.

Instead, Judge Keeton developed a three-step process for determining whether something was protected by copyright as “expression,” or unprotected as “idea.”

FIRST, in making the determination of “copyrightability,” the decisionmaker 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 distinguishing between the idea and its expression. . . .

SECOND, the decisionmaker 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 expressing the idea) or instead includes identifiable elements of expression not essential to every expression of that idea.

THIRD, having identified elements of expression not essential to every expression of the idea, the decisionmaker must focus on whether those elements are a substantial part of the allegedly copyrightable “work.” {FN67: 740 F.Supp. at 60-61, 15 USPQ2d at 1593-1594}

The heart of this three-step test is whether something is “essential” to the computer software or not. Judge Keeton found that the labeling of rows and columns in a spreadsheet was essential, since it was present not only in 1-2-3 and VP-Planner, but in other spreadsheets with considerably-different user interfaces like Microsoft Excel. Similarly, he found that the use of the “/” character to indicate the start of a macro was not protected, because there were only a few characters on the keyboard that could be used. But he found the menu structure of 1-2-3, and the words used in those menus for the options, to be protected by copyright because there are a number of alternative structures that could have been used and, in fact, were used in Microsoft Excel.

III.C.2. Borland at the District Court

The decision against Paperback was not appealed, because by the end of the case the defendants had left the spreadsheet market. But Lotus had its sights on another company, Borland, and its Quattro spreadsheet, which provided the same capabilities as 1-2-3 but at a fraction of the price. There was a race to the courthouse, with Lotus filing an infringement suit in Massachusetts, where it could use the Paperback decision as precedent, and Borland filing a declaratory judgment suit in California, hoping to get a finding of noninfringement. The infringement suit prevailed, and the case was assigned to Judge Keeton because of his experience with the Paperback case.

As in Paperback, Lotus did not claim that Borland had copied any part of its source code; it didn’t even contend that the structure of its 1-2-3 spreadsheet had been copied in Borland’s Quattro. Instead, it claimed that the Borland facility that allowed Quattro to execute 1-2-3 macros contained tables that reproduced the menu hierarchy and commands of 1-2-3.

While Quattro originally had its own command structure, to allow people to easily move from 1-2-3, Borland had added an emulation extension to a subsequent release of Quattro. The emulation feature allowed the users to configure the menus as they desired. Borland supplied two menus: the original Quattro menus and the 1-2-3 menus, enhanced to add commands that were in Quattro but not in 1-2-3. The screen appearance of Quattro was substantially different from that of 1-2-3; among other things, it had the menus displayed in different locations and in a different style.

Applying his Paperback test, again using Microsoft as an example of a spreadsheet program that did not have an optional menu structure for emulating the 1-2-3 menus, Judge Keeton held that Borland’s emulation interface infringed the copyright in Lotus’s 1-2-3 menus. Borland then removed the emulation interface from Quattro but kept a feature called “Key Reader,” which allowed it to run 1-2-3 macros. It felt safe in doing this, since Judge Keeton, in Paperback, seemed to indicate that such a feature would not infringe Lotus’s copyright when he wrote

copying the menu structure was not the only way to achieve aspects of this desired compatibility. For example, defendants could have instead added a macro conversion capability as the creators of Excel have successfully done (the Microsoft Excel Macro Translation Assistant). {FN68: 740 F.Supp. at 69, 15 USPQ2d at 1600}

Key Reader, and any other program that interpreted 1-2-3 macros, requires a data structure that describes the command hierarchy of 1-2-3. That is because the 1-2-3 macro language is based on the 1-2-3 command hierarchy. A macro consists of a starting “/” followed by the first letter of a 1-2-3 menu entry, then the first letter of an entry in the selected submenu, and so forth until a final menu entry is reached. (Macros can also contain things in addition to 1-2-3 commands, such as conditional statements.) So, if one formatted a block by first selecting the “Range” menu, then the “Format” submenu, then the “Currency” subsubmenu, the corresponding macro would be “/RFC”.

The reason that a data structure describing the command hierarchy of 1-2-3 is needed by any program that interprets 1-2-3 macros is that a particular letter may have different meanings depending on what letters preceded it in the macro, since first letters mean different things in different submenus. For example, the letter F, which meant “Format” in the “Range” submenu, means “File” in the “Print” submenu. It is also necessary to know what letters are valid in each submenu to determine whether a macro is valid.

The data structure used by Key Reader did not contain the full menu entry from 1-2-3 but simply the first letter of each entry required to interpret the macro. However, Judge Keeton did not seem to understand that this information was needed in some form by any program that interpreted 1-2-3 macros and felt that it was simply a different form of the same menu structure – what he referred to as the “phantom menus.” He apparently thought information about the 1-2-3 menu hierarchy was unnecessary to interpret a macro in some instances:

Borland’s Key Reader does not perform one-time translation such as Excel 2.1 does. Rather, Key Reader interprets macros on-the-fly, by reference to “phantom” menus that contain a copy of the Lotus menu tree. {FN69: Lotus Dev. Corp. v. Borland Int’l, Inc., 831 F.Supp. 223, 230, 30 USPQ2d 1081, 1099 (D. Mass. 1993)}

The fact that Excel performs a one-time interpretation of a macro while it is translating it to the Excel macro language, while Key Reader interprets the macro each time it is encountered, does not affect the fact that both need some data structure that contains the first letters of each 1-2-3 command as well as information about where they occur in the menu hierarchy. Judge Keeton’s decision is based on a lack of understanding of how command interpreters work and what information is necessary for their operation. It is unfortunate that the two parties did not provide Judge Keeton with an independent computer science expert who could help him understand the technical aspects of the case, as was done for Judge Pratt in Computer Associates v. Altai. {FN70: Computer Associates v. Altai, , 775 F.Supp. 544, 20 USPQ2d 1641 (E.D.N.Y. 1991)}

III.C.3. Borland at the First Circuit

Unlike Paperback, Borland had the resources for an appeal. In its decision of that appeal, the First Circuit observed that this was a very different question than in past software copyright cases, and that the tests previously developed would not work here:

    While the Altai test may provide a useful framework for assessing the alleged nonliteral copying of computer code, we find it to be of little help in assessing whether the literal copying of a menu command hierarchy constitutes copyright infringement. In fact, we think that the Altai test in this context may actually be misleading because, in instructing courts to abstract the various levels, it seems to encourage them to find a base level that includes copyrightable subject matter that, if literally copied, would make the copier liable for copyright infringement. While that base (or literal) level would not be at issue in a nonliteral-copying case like Altai, it is precisely what is at issue in this appeal. We think that abstracting menu command hierarchies down to their individual word and menu levels and then filtering idea from expression at that stage, as both the Altai and the district court tests require, obscures the more fundamental question of whether a menu command hierarchy can be copyrighted at all. The initial inquiry should not be whether individual components of a menu command hierarchy are expressive, but rather whether the menu command hierarchy as a whole can be copyrighted. {FN71: 49 F.3d at 815, 34 USPQ2d at 1020-1021}

The First Circuit decided that the commands in the menu, and the hierarchy that was part of the macro commands, didn’t qualify for copyright protection because they were a “method of operation”:

    We think that “method of operation,” as that term is used in Section 102(b), refers to the means by which a person operates something, whether it be a car, a food processor, or a computer. Thus a text describing how to operate something would not extend copyright protection to the method of operation itself; other people would be free to employ that method and to describe it in their own words. Similarly, if a new method of operation is used rather than described, other people would still be free to employ or describe that method.

    We hold that the Lotus menu command hierarchy is an uncopyrightable “method of operation.” The Lotus menu command hierarchy provides the means by which users control and operate Lotus 1-2-3. If users wish to copy material, for example, they use the “Copy” command. If users wish to print material, they use the “Print” command. Users must use the command terms to tell the computer what to do. Without the menu command hierarchy, users would not be able to access and control, or indeed make use of, Lotus 1-2-3’s functional capabilities.

    The Lotus menu command hierarchy does not merely explain and present Lotus 1-2-3’s functional capabilities to the user; it also serves as the method by which the program is operated and controlled. The Lotus menu command hierarchy is different from the Lotus long prompts, for the long prompts are not necessary to the operation of the program; users could operate Lotus 1-2-3 even if there were no long prompts. The Lotus menu command hierarchy is also different from the Lotus screen displays, for users need not “use” any expressive aspects of the screen displays in order to operate Lotus 1-2-3; because the way the screens look has little bearing on how users control the program, the screen displays are not part of Lotus 1-2-3’s “method of operation.” The Lotus menu command hierarchy is also different from the underlying computer code, because while code is necessary for the program to work, its precise formulation is not. In other words, to offer the same capabilities as Lotus 1-2-3, Borland did not have to copy Lotus’s underlying code (and indeed it did not); to allow users to operate its programs in substantially the same way, however, Borland had to copy the Lotus menu command hierarchy. Thus the Lotus 1-2-3 code is not a uncopyrightable “method of operation.” {FN72: 49 F.3d at 815-816, 34 USPQ2d at 1021}

It appears that the court thought that there must be some reason why the menu command hierarchy – at least as used by Borland’s Key Reader, where it is not displayed to the user and is stored in a very different form – should not be protectable by copyright. So it looked to Section 102(b)’s listing of things that are not protectable by copyright and decided that “method of operation” was a better fit than “idea, procedure, process, system” or “concept, principle, or discovery.” One of the judges on the panel, in a concurrence, indicated:

    Thus, for me the question is not whether Borland should prevail but on what basis. Various avenues might be traveled, but the main choices are between holding that the menu is not protectable by copyright and devising a new doctrine that Borland’s use is privileged. No solution is perfect and no intermediate appellate court can make the final choice.

    To call the menu a “method of operation” is, in the common use of those words, a defensible position. {FN73: 49 F.3d at 821, 34 USPQ2d at 1026}

But the difficulty is that the court gives no guidance on where to draw the line. Why are the menus a “method of operation,” but a computer program that directs how a computer operates is not?

There is some concern that the Lotus menu contains original expression in the selection of the names for the commands and how they have been placed in the hierarchy. But the First Circuit did not think that was sufficient to give the menu copyright protection:

    The fact that Lotus developers could have designed the Lotus menu command hierarchy differently is immaterial to the question of whether it is a “method of operation.” In other words, our initial inquiry is not whether the Lotus menu command hierarchy incorporates any expression. Rather, our initial inquiry is whether the Lotus menu command hierarchy is a “method of operation.” Concluding, as we do, that users operate Lotus 1-2-3 by using the Lotus menu command hierarchy, and that the entire Lotus menu command hierarchy is essential to operating Lotus 1-2-3, we do not inquire further whether that method of operation could have been designed differently. The “expressive” choices of what to name the command terms and how to arrange them do not magically change the uncopyrightable menu command hierarchy into copyrightable subject matter. {FN74: 49 F.3d at 816, 34 USPQ2d at 1022}

Lotus appealed the decision of the First Circuit to the Supreme Court, which agreed to hear it. But after oral arguments, the Court deadlocked 4-4 (with one justice not voting, presumably because of a potential conflict of interest due to stock ownership). That left the First Circuit’s decision “good law” in that circuit, but did not extend it nationwide.

III.C.4. Tenth Circuit Criticism of Borland

The Tenth Circuit, which had elaborated on Computer Associates v. Altai in its decision in Gates v. Bando considered in their decision in Mitel v. Iqtel {FN75: 124 F.3d 1366, 44 USPQ2d 1172 (10th Cir. 1997)} whether it should adopt the First Circuit’s Lotus approach:

    We conclude that although an element of a work may be characterized as a method of operation, that element may nevertheless contain expression that is eligible for copyright protection. Section 102(b) does not extinguish the protection accorded a particular expression of an idea merely because that expression is embodied in a method of operation at a higher level of abstraction. Rather, sections 102(a) & (b) interact to secure ideas for public domain and to set apart an author’s particular expression for further scrutiny to ensure that copyright protection will “promote the . . . useful Arts.” Our abstraction-filtration-comparison approach is directed to achieving this balance. Thus, we decline to adopt the Lotus court’s approach to section 102(b), and continue to adhere to our abstraction-filtration-comparison approach.

    We are mindful of the concern expressed by the Lotus court that, by its very nature, the abstraction-filtration-comparison approach tends to produce a core of copyrightable protectable expression that, if literally copied, would make the copier liable for infringement. Undoubtedly, the portions of a work to which a court applies abstraction analysis frequently contain a level of abstraction which reveals expression that does not fall within the excluded categories of section 102(b). Although this core of expression is eligible for copyright protection, it is subject to the rigors of filtration analysis which excludes from protection expression that is in the public domain, otherwise unoriginal, or subject to the doctrines of merger and scènes à faire.

    Notwithstanding our endorsement of abstraction-filtration-comparison analysis, we emphasize that the approach is valuable only insofar as it aids the court in distinguishing protectable elements of a work from those that are unprotectable. Not every case requires an extensive abstraction-filtration-comparison analysis. Rather, “the appropriate test to be applied and the order in which its various components are to be applied . . . may vary depending upon the claims involved, the procedural posture of the suit, and the nature of the [works] at issue.” {FN76: 124 F.3d at 1372, 44 USPQ2d at 1177-1178 (citations omitted)}

When one understands that the data structure reflecting the Lotus 1-2-3 command hierarchy is something that is required by any program that interprets 1-2-3 macros, then it is clear that the data structure would be filtered during the abstraction-filtration-comparison test of the Second and Tenth Circuits, because it is dictated by external factors. The First Circuit’s “method of operation” test, which is not clear in its application, is unnecessary.

Next section: Applying The AFC Test

Copyright © 2002, Lee A. Hollaar. See information regarding permitted usage.